BIG ANNOUNCEMENT-BLOG BECOMES WEBSITE

From today the blog will be in the form of a website at

www.domaintimes.info

It will contain case notes on interesting decisions, links to domain name decisions of mine and lots of news about domain names , especially the arbitration of domain name disputes.

Do have a look at the site, let me know what you think of it, give the address to your friends and colleagues and consider contributing a comment or view of your own.

With best wishes.

Neil Brown

See also www.neilbrownqc.com

'SUCKS CASES' DEBATE CONTINUES

Today we welcome our first independent contributor to the discussion of domain name decisions. Aaron Newell has made a contribution on the recent decision in Societe Air France v Mark Allaye-Chan ,WIPO Case No D2009-0327 concerning the domain name
airfrance-suck.com. Aaron's contribution is welcome as this site is not meant to be a vehicle solely for my own opinions, but is meant to be a platform where contending views may be expressed and debate encouraged.

The decision that Aaron has commented on raises again the question whether the so called ‘sucks’ cases can give rise to confusing similarity with the trademarks and then in turn whther the trademark owner can show that the domain name registrant has no right or legitimate interest in such a domain name and registered and used it in bad faith.

It is the second ‘sucks’ case concerning Air France, the first being a three person panel decision in 2005: Societé Air France v. Virtual Dates, Inc, WIPO Case No. D2005-0168 where the domain name in question was the similar . In that case, a majority of the panel decided in favour of the trademark owner, citing significantly that ‘ far from all international customers (being) familiar with the pejorative nature of the term “sucks”, … a large proportion of internet users … are likely to be confused by “-sucks” domain names’.

There was, however, a dissent in that case, the dissenting panellist Mr J M Samuels holding that:

‘ The term “sucks,” … is clearly pejorative in nature and, thus, at least in my view, sufficient to avoid a determination of confusing similarity…(for) …it is likely that a substantial percentage of potential customers of Air France are familiar with the English language and, thus, would be aware of the pejorative nature of “sucks.”
… I note that a recent UDRP panel held that “[t] hough there are some decisions to the contrary, the weight of authority, and the clear trend of recent cases, firmly support the position [that adding a pejorative term to a trademark or service mark dispels the likelihood of confusion].” The decision referred to is FMR Corp. v. Native American Warrior Society, WIPO Case No. D2004-0978 (emphases added)’

The recent decision, Societe Air France v Mark Allaye-Chan (supra)
the subject of Aaron’s commentary, however, holds that:

‘This view (that “sucks” domain names are confusingly similar to the trade mark) is the majority view of previous panels, and may even be the consensus view. See e.g., Sermo, Inc. v. CatalystMD LLC, WIPO Case No. D2008-0647, Footnote 5; Air Austral v. Tina Yi Tong Investment Ltd., WIPO Case No. D2009-0020 (emphases added)’.

It is apparent, therefore that there is room for debate on this issue and that the recent decision and Aaron’s commentary are valuable additions to that discussion.

We invite other contributors to add to the debate.

The Hon Neil Brown QC

Aaron Newell's contribution commences here.



Airfrance-suck.com – Transfer

To English speaking internet users, “sucks” domain names contain an inherent indication that they will be used for criticism purposes. While some businesses may adopt self-deriding marketing plans to appeal to younger consumers or put a humourous spin on their advertising, it’s a rare and brave business that will promote itself ironically with statements that it’s bad at whatever it does.

You’d think this would be even less likely for an airline. If an airline is promoting itself by saying it “sucks”, then it’s communicating that it’s bad at flying. To tread a little carefully: an airline is not likely to hold itself out as a business that might be able to deliver the services advertised. You expect that from a law firm. You want more reassurance from an airplane.

Societe Air France v Mark Allaye-Chan (WIPO No D2009-0327) is interesting because the Respondent did not manage to upload a criticism website at his domain name before the dispute was lodged. He registered the domain name in January of this year, and Air France was quick to act, initiating proceedings in March. It’s possible that the Respondent had a valid gripe with Air France. It’s also possible that he saw an opportunity to secure a domain name that might be immune to the UDRP, and for which he could name his price in negotiations.

If an actual “gripe site” had been uploaded with genuine criticism, the Respondent probably would have walked away with his domain name, as this could have been a legitimate interest. But in this case the Respondent had no website, had used a privacy registration service and a redirect to Google, and therefore gave Air France sufficient material for successful arguments for the second and third limbs of the UDRP.

As to whether the domain name was confusingly similar to “AIR FRANCE”, the Panel noted the following:

Previous panels who encounter “sucks” cases have found that domain names can be confusingly similar to the trade mark for various reasons, including because the disputed domain name is highly similar to the trade mark; or because the domain name may not be recognized as negative (for example, for non-English speaking Internet users). This view (that “sucks” domain names are confusingly similar to the trade mark) is the majority view of previous panels, and may even be the consensus view.…It is in any event the Panel’s preferred view in these circumstances, particularly because the Complainant originated in France, and may have a significant number of non-English speaking customers who will not automatically recognize “suck” as a pejorative term.
As Internet users may not immediately recognize the disputed domain name as involving negative connotations, and because the “-suck” component (when added to the well known trade mark of AIR FRANCE) is not the most prominent or obvious feature of the name, the Panel finds that the disputed domain name is confusingly similar to the Complainant’s trade mark.

As suggested above, English speakers will, in the absence of a rare and misguided ironic marketing plan, know what a “sucks” domain name is getting at. Similarly, for non-English speakers one has to query whether the Panel’s position is tenable.

For most jurisdictions (excluding the US), disputes regarding domain names that resolve to criticism sites are assessed on the basis of initial interest confusion. The idea is that internet users will type in “airfrance.com”, assuming it will resolve to an official Air France website. Air France then suffers damage if this website is not official, but rather resolves to a criticism site or to a competitor. In these situations the argument is that the domain name owner is using the trade mark owner’s reputation for his own purposes (critical and commercial), which fits into the broader definition of “cybersquatting”.

The logic does not fit as nicely when the domain name is not substantially identical to the trade mark. For example, an English speaker is not going to type “airfrance-suck.com” in a pursuit to buy tickets to Paris. A non-English speaker is even less likely to do this: they don’t know what sucks means, may have never used or noticed the word before, so how are they going to land at this domain name accidentally when shopping for airline deals? They’re surely not randomly typing hyphens and English words. And if the domain name owner’s Google rating is that high, it arguably has a legitimate interest: a successful criticism site.

On a strict comparison between the terms “AIR FRANCE” and “AIR FRANCE SUCKS”, someone who doesn’t recognise “SUCKS” as being pejorative might think it’s simple brand extension, or even laudatory. In this sense in a vaccuum and on a pure side-by-side comparison the trade mark and the domain name are similar. But it’s more difficult to say that they are confusing because non-English speaking internet users will go to airfrance-suck.com instead of a valid Air France domain name. In the realm of normal internet use, this similarity is not likely to be confusing for speakers of English (who recognise what’s going on) or for speakers of other languages (who won’t care because they’re not using or typing this word in the first place). In Air France the Panel arrived at the contrary position, and in the absence of actual use of the domain name by the Respondent (over a brief three month period), this was the deciding factor in the dispute.

Aaron Newell

HOW TO DISPROVE BAD FAITH- THE VALUE OF A PLAUSIBLE EXPLANATION

One of the most difficult tasks for the domain name panelist is to reach a decision on the issue of bad faith in the face of conflicting arguments and evidence, i.e. in those cases that are defended and where the Respondent flatly denies that it either registered or used the domain name in bad faith.

Often the conflict will be resolved by the conclusion the panelist comes to on whether the explanation given by the Respondent for registering and using the domain name is plausible.

One case I have just been re-reading where the panel accepted the explanation given by the Respondent as plausible is the 2007 decision in Referral Experts LLC v. Adaptive Marketing, WIPO Case D2007-0436 decided on May 22, 2007.

In that case, the Respondent registered the domain name lookmybest.com and used it to refer potential customers to plastic surgeons.

The Complainant’s trademark was LOOKINGYOURBEST.COM and it used the trademark in its business which was also to refer customers to plastic surgeons.

The Complainant said the Respondent had registered and was using the domain name in this way deliberately to confuse people and in bad faith.This was denied by the Respondent which said it was not trying to engender confusion with the Complainant, but used domain names such as the present disputed one, that were evocative of its business that related to plastic surgery.

Although this might look suspicious to some people, the panel decided that there was no bad faith because:

1. the parties were competitors;

2. the domain name was made up of common English words that are descriptive or suggestive in the context of plastic surgery;

3. the Complainant’s mark was not famous and thus not ‘a compelling target for imitation’.

Thus the Respondent had presented ‘plausible reasons for using common, appropriate English words in the domain name’ and as the burden of proof is on the Complainant it had not proved this element.

Again , this case shows the importance of parties putting detailed evidence and argument forward to enable the most favourable inference to be drawn.

OKI DATA RIDES AGAIN

OKI DATA RIDES AGAIN

The Honourable Neil Brown QC FCIArb

From the moment of its decision, the Oki Data case or, to give it its full title, Oki Data Americas, Inc. v. ASD, Inc. WIPO Case No. D2001-0903 (“Oki Data”) , was understood to be a significant decision in the field of arbitration of domain name disputes.

Eight years later, it is still riding high. Indeed, two recent decisions show that it is still one of the leading cases and that it has considerable practical application.

Oki Data reflects the practical situation that arises in domain name disputes where the Respondent has acquired the domain name first and, when the dispute arises, claims that its use of the name is legitimate.

The essential question in Oki Data was whether an offering of goods or services by a reseller may be regarded as bona fide for the purposes of paragraph 4(c) (i) of the Uniform Domain Name Dispute Resolution Policy (“the UDRP”). Paragraph 4(c) (i) of the policy provides that a Complainant who is endeavouring to obtain the transfer of a domain name must prove that the Respondent, the registrant of the domain name, does not have a right or legitimate interest in the domain name. However, the registrant of the domain name may show that he has such a right or interest by proving he was using the domain name for a bona fide offering of goods or services before he was notified of the dispute.

A seller of goods would usually be able to show that he was making a bona fide offering of the goods being sold because the seller would own the goods, perhaps even as the manufacturer, or be expressly authorized by the owner to sell them and probably to use the trademark embodied in the domain name to sell them.
But could a “reseller” of goods also say that he was using the domain name to sell goods of a particular brand and that this also was a bona fide activity giving him a right or legitimate interest in the domain name? A reseller means in this context a person not necessarily effecting the first sale of the goods, but rather a second or subsequent sale, say as an agent or a former agent or an online retailer and one who might not even be connected with the trademark owner . That situation often arises in the case of automobile spare parts, or automobiles themselves, where a firm obtains genuine ( but sometimes non-genuine) parts and sells then by using the brand name, which is a trademark, much to the annoyance of some trademark owners who might want to control the price, distribution and service of their products.
If a reseller could succeed in its claim that such a transaction was bona fide, it will have shown that it has a right or legitimate interest in the domain name and thus in one blow defeat the Complainant’s case.

Oki Data basically said, yes, a reseller may do so, subject to some very strict conditions. The respondent, ASD Inc., was a company that was an authorised Oki Data dealer and sold Oki Data products. Indeed, Oki Data listed it on it own website as an authorized dealer. But it took exception to ASD Inc. using the domain name and said this was a done without its permission and even that the registration and use of the domain name was in bad faith. But it was the point of whether ASD Inc had a right or legitimate interest in the domain name that is our main concern. Oki Data said that ASD Inc. did not have any right or legitimate interest in the domain name because it had no license or trademark rights to use the domain name. ASD Inc. replied that it did have such a right or legitimate interest that came from its authorization to sell and repair Oki Data equipment and from the fact that it did not deal in the equipment of Oki Data’s competitors.

The panel ruled first that the issue was whether Respondent’s offering of goods and services “may be characterized as "bona fide.” ” To be bona fide, the panel continued, the registrant of a domain name had to satisfy four “requirements”. These were:
One. “Respondent must actually be offering the goods or services at issue…”, for example, Oki Data equipment.
Two. “Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods (emphasis added)”.
Three. “The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.”
Four. “The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.”

The panel concluded that the respondent had met those requirements.

“In this case,” it said, “Respondent’s conduct meets all these factors. Respondent is an authorized seller and repair center, is using the okidataparts.com site to promote only OKIDATA goods and services, and prominently discloses that it is merely a repair center, not Oki Data itself. It has not registered numerous okidata-related domain names, and has not improperly communicated with Oki Data customers.”
Since then, the Oki Data decision has been applied and followed in several cases and the author has cited it, for example, in Control Techniques Limited v. Lektronix Ltd., WIPO Case No. D2006-1052.

Recent decisions show that the Oki Data ruling is alive and well, that in appropriate cases it provides a valuable tool for registrants of domain names who want to defeat the trademark owner’s claim and they show that practitioners would be wise to use these decisions when the issue arises in UDRP cases, as it often does. Naturally, care must be taken by all concerned to ensure that the facts of individual cases are carefully weighed before any decisions are reached.

In the first of these recent decisions, ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc., WIPO Case No. D2008-0936, decided on November 7, 2008, Oki Data was accepted as “the prevailing view” on this question. In the ITT Case case, to show their right or legitimate interest in the domain name, the Respondents relied on paragraph 4(c) (i) of the Policy and argued that they had used the disputed domain names in connection with a bona fide offering of goods and services, i.e., the sale of surplus products that the trademark owner had previously sold to the United States Government and which bore its trademark, together with related “testing, repair, and warranty services”. There was no evidence of “a distribution or authorized reseller agreement between the Complainants and the Respondents (which might be expected to include trademark licensing provisions). Thus, the Respondents could best be characterized as unauthorized resellers.”

Most of the Oki Data conditions were present in that case, but a question mark remained over whether the respondent domain name registrant was using the domain name to sell only the goods of the trademark owner or other goods as well. If it was the former, Oki Data would apply and the respondent would have established a right or legitimate interest in the domain name. If the latter, the registrant would have failed.

However, the respondent domain name registrant was successful also on this point. The Respondent’s website carried a link to other products, but the panel found that the Complainant had not made out that they were competing products. Nor had it been shown that there was a risk of “bait and switch” enticement because of the limited reference on the website to other products. This minor addition through the link to other products accordingly did not “change the character of the Respondents’ website as one concerned overwhelmingly with (the trademark products)…” to one that was really promoting competing products.

Thus the case was one where all of the Oki Data conditions were present and the decision was applicable, thus giving rise to a bona fide offering of goods and services and a right or legitimate interest in the disputed domain name.

One might say, therefore, that the ITT Case was the classic case of the application of the Oki Data principles; the case came within Oki Data, the respondent used it to show a right or legitimate interest in the domain name and the Complaint failed.
The second decision is Daimler AG v. William Wood, WIPO Case No. D2008-1712, decided on February 25, 2009. But in that case, the Respondent failed to show that all the Oki Data principles had been complied with. Accordingly, it could not make out a right or legitimate interest in the domain name and the Complaint succeeded.
In the Daimler Case, some Mercedes Benz aficionados registered the domain name and used it for a web site that was part discussion forum and part sales outlet, initially for Mercedes Benz parts.

The WIPO panel found as factual matters that the respondent’s website contained statements indicating that both of those activities were being undertaken. Thus, the website said:
“Since we began in February 1999 our foremost priority has been providing a free exchange of technical information and ideas regarding Mercedes-Benz vehicles. We also provide informative Do-It-Yourself articles complete with detailed pictures, descriptions, part's, and instructions.”
But it also said:
“Need Mercedes parts? Check out FastLane and AllPartsExpress. We’ve got Mercedes parts AND lots of other parts available in our on-line catalogs. MercedesShop is supported by the parts we sell. ”
In addition to this commercial element, the website also carried links that enabled brands of parts other than Mercedes to be purchased, tyres for other brands as well as Mercedes Benz and some other products like insurance.
The website also carried a purported but indistinct disclaimer in the following terms:
“MercedesShop recognizes that ‘Mercedes’, ‘Mercedes-Benz’, the three pointed star and various model numbers are registered trademarks of Daimler AG. These terms are used for identification purposes only. MercedesShop is not affiliated in any way with Daimler AG.”

The panel came to consider whether the Complainant had made out the second of the three elements that it had to establish, namely whether the respondent domain name holder had a right or legitimate interest in the domain name. In particular, the panel had to decide whether, as had been claimed by the Respondent, the domain name had been used in connection with a bona fide offering of goods and services.
The Respondent of course was not authorized by Mercedes Benz to use its trademark in the domain name. It was selling Mercedes Benz parts in a commercial operation and as such was a reseller in the sense that it was reselling parts that Mercedes Benz or its authorized manufacturer had originally sold. Was this reselling activity bona fide?

The Oki Data decision had said in effect that it was, or could be bona fide, provided that four conditions or requirements were met. To recapitulate, the four conditions were:
One. “Respondent must actually be offering the goods or services at issue…”, for example, Mercedes Benz parts.
Two. “Respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods (emphasis added)”.
Three. “The site must accurately disclose the registrant’s relationship with the trademark owner; it may not, for example, falsely suggest that it is the trademark owner, or that the website is the official site, if, in fact, it is only one of many sales agents.”
Four. “The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.”

The panel then came to apply the Oki Data principles to the facts of the case and said that there was “no doubt that the Respondent is selling non-MERCEDES parts on its website. It is offering parts for other brands of automobile, other brands of automobiles as well as Mercedes, tyres sold by TireRack.com, and insurance sold by ING Insurance. Accordingly, it cannot be said that it is using the site “to sell only the trademark goods”. It has therefore not satisfied the second requirement.”
The panel then contributed to the developing chain of authority on this question by adding that this conclusion was “… consistent with other UDRP decisions on analogous facts, such as Control Techniques Limited v. Lektronix Ltd., WIPO Case No. D2006-1052.
In that case the panel had said: “Applying the Oki Data principles and this important qualification on those principles, to the facts of the present case, it is clear that the Respondent cannot rely on it to show a bona fide offering of goods and services, or, consequently, a right or legitimate interest in the domain name. That is so because the websites to which the domain names and resolve, promote the repair of and spare parts for, Control Techniques products, but they also promote them for other and rival brands.”

Likewise, the website in the Mercedes Case was promoting goods other than Mercedes Benz parts and had not satisfied the second Oki Data condition.

The panel in the Mercedes Benz Case went on and considered some further issues that had been raised in the case and which deserve comment.

“ Sophisticated ” buyers

The first was that the “Oki Data case related to domain name use by an authorized sales or service agent. The Respondent argues that the website hosted at the disputed domain name is of a different type, manifesting a ‘brand culture’ with sophisticated users. The Respondent refers to the extensive use of the Respondent’s discussion forum, and states that “Respondent’s site is a leading independent source of information about the Complainant’s product”. It states that the Complainant is trying “to shoehorn this situation into a ‘reseller UDRP’ case, [which] demonstrates the unfitness of the Policy to factually complex and disputed situations” ”.

In other words, it was being argued that although the Oki Data case might exclude some resellers from showing that they had a right or legitimate interest arising from the process of reselling because they sold goods in addition to the trademarked goods, the reseller might still be able to have the benefit of the Oki Data principle if his customers were ‘sophisticated’ people who knew what brand they were dealing with and were loyal followers of it.

The panel did not accept that argument and stuck to the pure Oki Data proposition and its strict requirements , observing that the abuse at which the requirement struck “… occurs equally with sophisticated purchasers who, initially intending to buy a MERCEDES branded or approved product, might change their minds at the point of sale if offered a generic alternative. Accordingly, the Respondent cannot rely on the alleged sophistication of its customers to justify offering for sale non-MERCEDES products.”

Nor did the element of the discussion forum that was present on the site save the day for the domain name registrant; “… the fact that a website has a substantial legitimate element, either in the form of sales of trademark products or a widely used discussion forum, does not mitigate the wrong of misappropriation of goodwill through potential bait-and-switch selling.”

‘Aftermarket’ parts.

Secondly, what about ‘aftermarket’ parts where although they were parts for the major brand covered by the website, in this case Mercedes Benz, they were made by manufacturers other than Mercedes Benz? Could they not continue to be sold under the banner of the domain name, including the Mercedes Benz trademark and thus justify the continued use of the domain name?
Aftermarket parts had in fact been considered in Volvo Trademark Holding AB v. Peter Lambe WIPO Case No. D2001-1292 and Toyota Motor Sales, U.S.A., Inc. v. Pick Pro Parts Inc WIPO Case No. D2005-0562.
The panel did not strictly decide this issue, but it certainly gave no blanket exemption because of the sale of aftermarket parts. After all, on the facts of the present case, “… the Respondent (was) not simply offering aftermarket parts for MERCEDES cars, but also parts for many other brands of automobile, identified by their brand names.”

“Special circumstances”

Thirdly, the panel considered whether special circumstances might still give rise to a right or legitimate interest in a domain name when the registrant was reselling and in particular reselling the products of the trademark owner’s competitors, but still enable the reseller to rely on the Oki Data principle.

Several special circumstances were relied on, including a refashioning of some of the earlier notions advanced by the Respondent along the lines that its website was “a popular and heavily used site (that had generated)… testimonials that confirm the reputation of the website as a source of information…” and the length of time that it had operated.

However, the panel said, there was really no good faith that had been shown here by the respondent. Indeed, the history of the Respondent and his associates had shown “an increasingly commercial use of the disputed domain name” up to and including the sale of brands of automobiles themselves other than Mercedes Benz. Indeed the history showed that “… the legitimate elements of the website (such as the forum, and the sale of MERCEDES parts, and perhaps afterparts for MERCEDES automobiles) cannot redeem the flagrant use of the MERCEDES trademark to sell parts for a wide range of competing automobiles and the other commercial activities that have no connection with Mercedes Benz. The Respondent has chosen to use a successful website for an illegitimate purpose. He has chosen to increase the website traffic and his sales and revenue, by offering parts for a wide range of automobile brands, as well as other products. In doing so, he has forfeited any rights or legitimate interest in the disputed domain name that may once have existed (as recognised in the Prior Decision) and may have continued to exist if the website had remained confined to spare parts for MERCEDES automobiles.”

Whether special circumstances can be shown in other cases will depend, of course, on the facts of any such cases.

The conclusion of the Mercedes Benz Case was thus that the second of the Oki Data principles had not been shown and that consequently the Oki Data principle itself could not be relied on to show a right or legitimate interest in the domain name.
As the Complainant had thus established that the registrant had no right or legitimate interest in the domain name element and also the two other elements, the identicality of the domain name to, or its confusing similarity with, the trademark and bad faith in the registration and use of the domain name, the Complainant had made out its case on all three issues and the domain name was transferred to Daimler, the owner of Mercedes Benz.

Conclusion.

Finally, it should be noted that another question arose in ITT Manufacturing Enterprises, Inc., ITT Corporation v. Douglas Nicoll, Differential Pressure Instruments, Inc. That question was whether the Oki Data principle should apply only in the case of an authorized reseller such as an agent of distributor, which was in fact the case in Oki Data itself, where the Respondent was an authorised reseller for the Oki Data company. On that question, the panel found that the issues were similar ‘whether or not there is a contractual relationship between the parties. Therefore, the Panel follows the precedents of Volvo Trademark Holding AB v. Auto Shivuk and Dr. Ing. h.c. F. Porsche AG v. Del Fabbro Laurent, finding that the Oki Data criteria are appropriate here to assess the rights or legitimate interests of the unauthorized reseller for purposes of this element of the Policy.”
The recent cases therefore show that Oki Data continues to have a practical application in domain name dispute arbitration.

Hon Neil Brown QC FCIArb

SUBSTITUTION OF ADVERTISEMENTS INTO INTERNET PORTAL SITE

SUBSTITUTION OF ADVERTISEMENTS INTO INTERNET PORTAL SITE

Illegality of Program that Substitutes or Inserts Different Advertisements Contained within an Internet Portal Site

On September 23, 2008, the Seoul High Court, 4th Civil Division ruled (2007 Ra 618) that developing and distributing software that deletes advertisements contained within an internet portal site and substitutes them with another’s advertisements, or inserts another’s advertisements in the empty spaces of an internet portal site constitutes interference with another’s business.

The plaintiff to this case was the operator of Korea’s largest internet portal site. The defendant to this case developed and distributed software that deletes advertisements contained within the plaintiff’s internet portal site, substitutes them with third parties’ advertisements, and also inserts third parties’ advertisements in the empty spaces of the plaintiff’s internet portal site. Installation of the defendant’s software occurred only upon confirmation of the user, and could be fully uninstalled at any time. Additionally, the advertisements substituted and inserted by the defendant’s software expressly stated that the advertisements originated from the defendant. As a result, the plaintiff filed for a preliminary injunction prohibiting the defendant from developing and distributing the software.

The court found that by replacing the advertisements provided by the plaintiff with its own advertisements and by using the empty spaces within the internet portal site, the defendant’s software caused the plaintiff’s internet portal site to have the appearance as if the defendant’s advertisements were those of the plaintiff’s. The court further found that when considering that the advertisements provided by the plaintiff were replaced in their entirety, and that the defendant was placing the advertisements of its customers at the top of its keyword search results, the defendant was taking away the benefits of such placement and therefore was severely interfering with the plaintiff’s business profits. The court opined that the defendant was taking advantage of the plaintiff’s reputation and customer drawing power without permission, and was free riding on the plaintiff’s long term efforts and investment in developing its internet portal site, and therefore was interfering with the plaintiff’s business. The court did not accept the plaintiff’s other claims of copyright infringement and violations of the Unfair Competition Prevention and Trade Secret Act.

Criminal charges were also brought against the defendant for violations under the Unfair Competition Prevention and Trade Secret Protection Act. However, the court found the defendant free of charge, ruling that the defendant’s business activities could not be seen to be utilizing the distinctiveness of the plaintiff’s trademark (Seoul Central District court, 2008 GoHap 312, issued January 16, 2009).

The ruling of this case is significant in that it is the first case regarding the illegality of programs that make unauthorized changes to websites operated by third parties.

Editor's not :I am indebted to the author of this article for permission to republish it here : Jae Hoon Kim of Lee & Ko; jhk@leeko.com; www.leeko.com.

Cybersquatting cases hit record in 2008

Cybersquatting cases hit record in 2008

From Reuters

GENEVA (Reuters) - Companies and celebrities ranging from Arsenal football club to actress Scarlett Johansson filed a record number of "cybersquatting" cases in 2008 to stop others from profiting from their famous names, brands and events, a United Nations agency said on Sunday.

Web sites in dispute in 2008 included references to Madrid's 2016 Olympics bid, the British Broadcasting Company (BBC), Yale University, Research in Motion's Blackberry as well as Arsenal and Johansson, and company names such as eBay, Google and Nestle.

The most common business sector in which complaints arose was pharmaceuticals, due to websites offering sales of medicines with protected names. Other top sectors for complaints were banking and finance, Internet and telecommunications, retail, and food, beverages and restaurants.

The World Intellectual Property Organization (WIPO) handled 2,329 cases under its dispute procedure for Internet page names.

The Internet Corporation for Assigned Names and Numbers (ICANN), which manages the system of Web addresses with endings like .com and .gov, is preparing to launch many new series of suffixes.

These new generic top-level domain names (gTLDs) will allow a vast increase in the number of Web addresses, providing new scope for trademarked names to be abused -- or at least making it harder for the trademark owners to monitor them.

"The creation of an unknowable and potentially vast number of new gTLDs raises significant issues for rights holders, as well as Internet users generally," WIPO Director-General Francis Gurry said in a statement.

The founder of the World Wide Web said on Friday the names system had become mired in politics and commercial games.

"It would have been interesting to look at systems that didn't involve domains," Tim Berners-Lee, who drafted a proposal 20 years ago that led to the Web, told an anniversary celebration.

Gurry said his U.N. agency was working with ICANN, a not-for-profit corporation based in California, on "pre- and post-delegation procedures" to check the proposed new suffixes and help avoid future litigation.

For instance a new suffix ".apple" could well upset the computer, phone and entertainment company Apple.

How such suffixes are used and by whom would be important -- a fruit-growing company using the .apple suffix would not have the same effect as a company registering a Website "ipod.apple."

Gurry told a news conference that trademarks that had no other meaning, such as Sony and Kodak, were stronger and easier to defend than those based on general words or names, which could be ambiguous.

(Reporting by Jonathan Lynn; Editing by Laura MacInnis)

© Thomson Reuters 2009 All rights reserved

Registration of domain name not proof of common law trademark.

Registration of domain name not proof of common law trademark

Buying a domain name does not constitute a right or legitimate interest in the domain name

It is, of course, well known that a Complainant in a UDRP proceeding must establish a trademark. It is equally well known that the trademark may be a registered one, which it usually is, or a common law or unregistered one.

But if the trademark relied on by the Complainant is a common law or unregistered trademark, it must be proved by evidence satisfactory to the panellist.

It is not enough to assert these issues; they must be proved.

A recent case re-enforces this principle and shows that Complainants sometimes fail in proving this point.

The case was Alexey Kistenev v. Jinsu Kim
Case No. D2008-1870 decided on 2 March 2009 and concerned one of a growing number of valuable domain names formed around the expression Bit Torrent, in this case , which the Respondent had bought for USD 17,500.

The Bit Torrent process as the panellist in this case described it is:

“…software and services designed to help users locate and download torrent files (files based on a peer-to-peer file sharing protocol initially developed by BitTorrent). “


The Complainant claimed that it owned another domain name, and that this gave it trademark rights sufficient to mount its claim for .

Not so, said the panellist.

“ The Complainant argues that it owns and has used the domain name , and that there are many visitors to this site. However, the mere use of a domain name, even if assumed for a long period of time and with many visitors, does not necessarily give rise to a trademark right. For example, the site found at “www.cars.com” appears to be extremely successful and has been in service for quite some time, but related trademark applications have been denied registration before the United States Patent and Trademark Office. The provided record and submissions in the proceeding are in this Panel’s view insufficient to establish that the Complainant has the requisite rights to the claimed TORRENTREACTOR mark. Perhaps if the provided record had contained stronger evidence of the claimed mark having acquired secondary meaning as an identifier of the Complainant’s goods and services, the outcome might have been different. The onus is ultimately on the Complainant to make its case, particularly in relation to the threshold issue of rights in a mark, and here the Complainant has not succeeded in doing so. If the Complainant is confident that he has rights in TORRENTREACTOR, the Panel suggests that he obtain a trademark registration, which would put many of the related issues to rest.”

So the claim failed because the Complainant could not prove the first of the 3 UDRP elements.

Goodbye $17, 500.

The panel went on to consider the other 2 UDRP elements.

The Respondent had claimed that he had a right or legitimate interest in the domain name because he had bought it,

Not so, said the panellist:

“The Respondent’s assertion that he has a right or legitimate interest in the disputed domain name because he paid USD17,500 for it in an auction is not particularly relevant. Domain names are often traded and auctioned off for profit depending on the amount of traffic associated with it, and it is often the case that domain names that are confusingly similar to an already operating domain name or existing trademark fetch a higher price among cybersquatters and domain name traders.”

There would also have been a finding of bad faith against the Respondent.

Thus, although the Respondent failed on the second and third elements, the Complaint was denied as the Complainant had failed on the first element.

$US 5.1 MILLION FOR A DOMAIN NAME

$US 5.1 MILLION FOR A DOMAIN NAME


The US toy firm TOYS R US has just paid $US 5.1 million for the domain name toys.com.A high price, but not a record.

See the whole story at http://news.bbc.co.uk/2/hi/technology/7923433.stm.

Can your website include a link to another website?

The Cleveland Plain Dealer, 11 February 2009, reports the settlement of a claim brought by law firm Jones Day against a small internet site.

The clain sought to stop the site from including links to lawyers in Jones Day to follow up their real estate purchases,which was the activity in which the internet site engaged.

The court action had brought criticism on the grounds that it was a regular practice of the internet to contain links to other websites and that this was inportant from the dissemination of information and for free specch.

The case has now been settled and the internet site will be allowed to continue to have links to the Jones Day lawyers, but must do so by using the firm's web address as, for example, in www.jonesday.com/dpmalone.

The Cleveland Plain Dealer report is, in part , as follows :

" BlockShopper posts information from public records on residential sales in 11 U.S. markets. It adds to that brief articles about transactions involving lawyers, doctors and other buyers and sellers whose names show up in Google searches.
Jones Day sued BlockShopper in August after it posted articles about Dan Malone Jr. and Jacob Tiedt, lawyers at its Chicago office who had recently bought condos. The articles linked to the lawyers' profile pages on the firm's 2,300-attorney site.
Jones Day asserted that the links could give viewers the mistaken impression that it endorsed BlockShopper or was affiliated with it.
Critics scoffed, saying that Jones Day's position was an attack on Blockshopper's First Amendment rights and jeopardized the common practice of linking from one Internet site to another.
...BlockShopper ... offered to "make the link more literal" by including the law firm's Web address -- the terms agreed to this week, ( BlockShopper) said.

...Under the settlement,... BlockShopper can publish links to Jones Day but they can't be "embedded links." Those are defined as hyperlinks that are placed on a word or name.

Instead, BlockShopper will have to place the Web address next to references to the firm. In other words, instead of writing Daniel P. Malone Jr. is an associate in the Chicago office of Jones Day," BlockShopper must write "Malone (www.jonesday.com/dpmalone) is an associate . . ."
BlockShopper is permitted to use "deep links" to any Jones Day site. Those are links that directly access a specific page beyond the home page, such as attorneys' biographical pages.
While the settlement may seem like a fig leaf, it still rankles digital rights proponents who say BlockShopper did nothing illegal.
...Paul Levy, a lawyer with the consumer group Public Citizen, encouraged people to "replicate the lesson to Jones Day" by posting hyperlinks to the firm "as a way of daring, 'Big boy, try it again.'"
While the case was pending, BlockShopper agreed to remove links to the condo-buying associates in Chicago.
Now those postings will go back up, along with listings of property transactions by other Jones Day lawyers, (BlockShopper) said. "

With acknowledgement to The Cleveland Plain Dealer.

Need for evidence to show service mark in a personal name

Need for evidence to show service mark in a personal name:

A recent WIPO decision underlines what some practitioners and parties in UDRP proceedings forget- that to win these cases, you need evidence; assertions are not enough.

The decision is also another decision ( although there are cases to the opposite effect) that registration of a trademark in a State registry, rather than the Federal USPTO, at least in the USA, may not be enough to succeed in UDRP procededings.

The decision is Yost Properties LLC v. Viralt-shirts.com, WIPO Case No. D2008-1776.

Read the whole decision, but note the following two important aspects, both dealt with under Identical or Confusingly Similar.

1. The Complainant showed only a service mark registration in the State of Oregan and there was nothing to show that this carried a presumption of validity and no evidence that it had been used in commerce.

2. Moreover, the Complainant had not satisfied the test for cases where the claim is for a service mark in a personal name.

As the panellist said :

" This panelist, either as sole panelist or as part of a three-member panel, has addressed in a number of administrative proceedings under the Policy the hurdles that must be overcome for an individual to establish service mark rights in a personal name. See, e.g., Marvin Lundy and Law Offices of Marvin Lundy, LLP v. Scott E. Diamond, WIPO Case No. D2001-1327; Planned Parenthood Federation of America, Inc. and Gloria Feldt v. Chris Hoffman, WIPO Case No. D2002-1073; Charles Rapier v. Dark Moon Management, WIPO Case No. D2004-0221; Fields for Senate v. Toddles Inc., WIPO Case No. D2006-1510; Laughton Marketing LLC v. Boris Soposki, WIPO Case No. D2008-0718. ...Complainant has not presented any documentary evidence of use in commerce of the personal name argued to constitute a service mark. There is no persuasive basis in the provided record upon which the Panel might reasonably determine that Complainant has established service mark rights in ROGER YOST in the present proceeding."

Accordingly, the Complaint failed.

Lesson to be learned : make sure the evidence is there to establish all elements of the Policy that must be proved.

What's in a name ? Domain Names are not 'gambling devices', says Court.

Kentucky court blocks move to seize gambling domains

With Acknowledgement to The Associated Press

Wednesday, January 21, 2009

Kentucky may not seize 141 online casinos' Internet domain names in an attempt to block them from operating within the state's borders, an appeals panel ruled Tuesday.
In a 2-1 opinion, a three-judge panel of the Kentucky Court of Appeals said an Internet domain name is not a gambling device. That left the Franklin County Circuit Court without jurisdiction in the matter.
"It stretches credulity to conclude that a series of numbers, or Internet address, can be said to constitute a 'machine or any mechanical or other device ... designed and manufactured primarily for use in connection with gambling,'" Judge Michelle Keller wrote in the majority opinion. "We are thus convinced that the trial court clearly erred in concluding that the domain names can be construed to be gambling devices subject to forfeiture."
The state sued the Web sites after determining that they allowed Kentuckians to gamble illegally and asked a judge to either force the sites to block Kentucky users or allow the state to take possession of the domain names. Kentucky already allows gambling on horse racing and bingo and has a state lottery.
Attorneys for the state and the Web sites have estimated that about 13,000 people in Kentucky use the online casinos.
Gov. Steve Beshear spokeswoman Jill Midkiff said officials had received the ruling late Tuesday, were still studying it and had not decided what the state's next step would be.
The appellate panel also ruled the circuit court cannot hold a hearing on whether Kentucky may seize the domain names. Keller's opinion said it's up to the General Assembly — not the courts nor the state Justice Cabinet — to bring domain names into the definition of illegal gambling devices.
Jeremiah Johnston, president of the Washington D.C.-based Internet Commerce Association, said he was pleased by the ruling. Still, Johnston said the court did not address whether the state had the authority to involve itself in seizing domain names of internationally based companies.
"That wild card is still out there," Johnston said. "In the end, it's a positive ruling, so we'll take it."

WHAT'S IN A NAME ? DOMAIN NAMES ARE NOT GAMBLING DEVICES

Kentucky court blocks move to seize gambling domains

The Associated Press
Wednesday, January 21, 2009

Kentucky may not seize 141 online casinos' Internet domain names in an attempt to block them from operating within the state's borders, an appeals panel ruled Tuesday.
In a 2-1 opinion, a three-judge panel of the Kentucky Court of Appeals said an Internet domain name is not a gambling device. That left the Franklin County Circuit Court without jurisdiction in the matter.

"It stretches credulity to conclude that a series of numbers, or Internet address, can be said to constitute a 'machine or any mechanical or other device ... designed and manufactured primarily for use in connection with gambling,'" Judge Michelle Keller wrote in the majority opinion. "We are thus convinced that the trial court clearly erred in concluding that the domain names can be construed to be gambling devices subject to forfeiture."

The state sued the Web sites after determining that they allowed Kentuckians to gamble illegally and asked a judge to either force the sites to block Kentucky users or allow the state to take possession of the domain names. Kentucky already allows gambling on horse racing and bingo and has a state lottery.
Attorneys for the state and the Web sites have estimated that about 13,000 people in Kentucky use the online casinos.

Gov. Steve Beshear spokeswoman Jill Midkiff said officials had received the ruling late Tuesday, were still studying it and had not decided what the state's next step would be.

The appellate panel also ruled the circuit court cannot hold a hearing on whether Kentucky may seize the domain names. Keller's opinion said it's up to the General Assembly — not the courts nor the state Justice Cabinet — to bring domain names into the definition of illegal gambling devices.

Jeremiah Johnston, president of the Washington D.C.-based Internet Commerce Association, said he was pleased by the ruling. Still, Johnston said the court did not address whether the state had the authority to involve itself in seizing domain names of internationally based companies.

"That wild card is still out there," Johnston said. "In the end, it's a positive ruling, so we'll take it."

CZECH ARBITRATION COURT LAUNCHES NEW UDRP DISPUTE RESOLUTION SERVICE

The following is a news release from the Czech Arbitration Court

CAC has launched its UDRP Service

12 January 2009

The Czech Arbitration Court (CAC) is launching its Uniform Dispute Resolution Policy (UDRP) service on 12 January 2009 by running two initiatives designed to streamline the process and to save complainants and respondents both time and money. The CAC’s UDRP Service is available at www.adr.eu .

In January 2008 ICANN, the Internet Corporation for Assigned Names & Numbers, approved the CAC application to become an international provider of UDRP services. CAC has then undertaken a 10 month consultation of intellectual property owners and the legal representatives of both complainants and respondents.

The UDRP features an expedited procedure that is mandatory upon all registrants of generic Top Level Domains including .com, .org, .net, .biz, .info and .mobi. It is designed to settle disputes arising from the abusive registration of domain names.

The foundation of CAC’s UDRP service is a unique electronic platform that could revolutionise the process of filing a complaint. This platform will incorporate the results of two test projects using trial data that have been running across five continents during December 2008 featuring:

1. Electronic filing of documents supported by hard-copy signature (partial electronic filing)
2. Full electronic UDRP, or e-Filing, with users authenticating their documents with a unique Chess Card

After the tests, a formal Pilot Programme, open to all interested parties who can file complaints using Partial or full e-filing will run from January – March 2009. The results of the Pilot will be presented to ICANN for consideration.

Zbynek Loebl, head of the UDRP Implementation Team for the CAC which is a non-profit organisation based in Prague, said, “Our aim is to lessen the burden on both complainants and respondents by utilising the functionality of the internet. The preparation of a UDRP complaint or response is cumbersome and time-consuming. Currently at least four copies must be prepared and sent out by registered courier. We believe that e-filing will reduce the administrative burden and cut costs without compromising security. We are grateful to ICANN for being open to our aim and we are pleased that other UDRP providers are considering the benefits of e-filing”.

An additional innovative feature of the CAC’s UDRP service is the option for Class Complaints with the filing of a single complaint on behalf of multiple complainants. Vit Horacek, CAC’s Board member responsible for the UDRP implementation said, “We believe that the option of a Class Complaint could be very attractive to trade mark owners who wish to tackle serial cybersquatters who focus on a business sector”.

The CAC is glad to announce that persons who file the first three UDRP complaints on the CAC’s on-line platform (starting on 12 January 2009 at www.adr.eu) will be awarded electronic-only gold, silver and bronze medals respectively, accompanied by small hard-copy gifts.

Further Notes:

1. About the Czech Arbitration Court: The CAC is a non-profit organisation based in Prague, attached to the Economic Chamber of the Czech Republic and Agricultural Chamber of the Czech Republic. Established in 1949, CAC manages domestic and international commercial disputes related to IP and technology matters. In 2007, CAC administered over 2,000 arbitration proceedings. Since 2005, the CAC has administered almost 1,000 .eu ADR cases for EURid, the registry operator for .eu and the European Commission. Proceedings are manged in 21 of the 22 official EU languages (the exception being Maltese) using an innovative on-line platform.
2. About the Electronic filing of documents supported by hard-copy signature: A filing Party – either a Complainant or Respondent - who has filed a submission using CAC’s on-line platform, will be sent a hard-copy Signature Page listing all their documents. The Filing Party confirms on this Signature Page that documents locked in the on-line case file are correct then prints the number of copies of the Signature Page prescribed by the UDRP Rules, signs and returns it to CAC‘s Service Center. Finally, the Service Center prints the whole submission and delivers it to the CAC.
3. About Electronic UDRP: Complainants and Respondents can submit filings using a simple and secure electronic platform without the use of paper. In order to verify the authenticity of documents, users will be issued with a unique CHESS CARD.
4. About Class Complaints: A single person representing multiple Complainants may file a single (Class) Complaint against a single domain name holder in respect of multiple disputed domain names. This new procedural option is governed by Section 4 (a) of the CAC’s UDRP Supplemental Rules, which requires the following conditions to be met:
   • The Class Complaint is based on legal arguments applicable equally, or substantially in the same manner, to all the disputed domain names;
   • the person representing the different Complainants joined in the Class Complaint must provide evidence that it he is authorised to act on behalf of each of the Complainants.
5. Picture editors: An image of the CHESS CARD is provided below:

   

Testing the CAC's UDRP Platform

We are delighted to present you an easy and flexible possibility how to familiarize yourself with our new UDRP on-line platform.

You can access our Test Platform which is available on: http://udrp.expert4me.com/. All you need to do is to click onto the on-line platform in the main menu, register your name and details and then follow the instructions.

If you have any technical difficulties, please contact the UDRP Support Team who you can reach by e-mailing support@expert4me.com.

There are several important points to note about the Test Platform:

• The Log-in information you receive for the Test Platform will not work on the Live Platform.
• The Test Platform is not protected by a digital certificate issued by a recognized international certification service provider. The Live Platform has received a digital certificate from Verisign.
• We do not want you to use data from live UDRP cases on the Test Platform. Data from old cases with the names changed or dummy cases is all that you need.
• You can request the Chess Card which will enable you to test full eFiling on the Test Platform. However, for the purposes of your testing, you will only be sent a soft copy. (On the Live Platform, participants willl be sent a hard copy of the Chess Card).
• Do not test the option to pay by a credit card, you would need real data and this is outside the scope of your review. This payment option has been implemented though and the users will be able to use it in the Live Platform.
• Everything that you submit on the Test Platform will be treated as Test Data. The Platform will not generate emails to third parties, ICANN or registrars although for the sake of your testing, it will appear as if such emails have been sent and confirmations received.
• There will be no administrator to administer your test cases, no decisions will be issued n the Test Platform etc. The Test Platform serves only for you to get used to the on-line platform before you start using the Live Platform.

In addition to your testing our Test Platform you can participate in one of our training webinars – please click on the section Webinars in the left-hand menu to know when will the webinars be organized and how to register for them.

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SPEECH TO IAMA NATIONAL CONFERENCE ON DOMAIN NAMES

DOMAIN NAME DISPUTES AND THE
UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY


**********


A PAPER DELIVERED AT THE
NATIONAL CONFERENCE OF THE INSTITUTE OF
ARBITRATORS AND MEDIATORS AUSTRALIA




BY

THE HON NEIL BROWN QC













27 May 2006 Novotel Palm Cove
Far North Queensland
Australia
The Main Thesis Of This Paper

The purpose of this paper is to give you some idea of the nature of internet domain names and more particularly, as we are an organisation concerned with arbitration and mediation, to give you an outline of the way in which disputes about domain names are resolved.

Most aspects of human life give rise to disputes and domain name are no exception. So disputes about domain names, which are usually disputes about who is entitled to own (or, more precisely, lease) the domain name, have to be resolved.

In fact, the main thesis of this paper is to argue that as the internet itself is new, so, disputes about the ownership of domain names have given rise to a new and unique method of resolving them, a method operating outside the courts and a method that has been widely accepted and very successful. I also argue in the paper that this is also a method of resolving disputes that could usefully be considered for application to other forms of dispute.

Because I will be looking at this unique method of resolving disputes, I should say that one of the things that I will not be referring to in any detail in this paper is the resolution of domain name disputes in the law courts and through the normal law. They can of course be resolved in the courts and they are. It was held quite early in the piece, in a case called British Telecommunications plc v One in a Million Ltd [1999] 1WLR 903 that in appropriate cases, the wrongful appropriation of someone else’s name and using it in a domain name amounted to passing off and possibly breach of trademark. Such a case could be taken through the normal courts and if proved, would result in the Plaintiff obtaining orders enabling him to take the domain name from the cybersquatter and also obtaining injunctions and damages from the party who had wrongly used the domain name. That is still so and cases can be and are brought in the regular courts claiming, uncompetitive and misleading and deceptive conduct, passing off and breach of trademark.

Cases are also brought in the regular courts for other matters connected with domain names, for example, infringement of copyright by unlawfully extracting data on domain name registrants from the records of a registrar.

But we are not concerned in this paper with the resolution of domain name disputes in the courts. We are interested in the unique method of resolving them that has been developed outside the courts, a method that has all the features that proceedings in the law courts do not have, ie it is novel, modern, quick, economical, online, with no appeal and very final.

This system is known as the Uniform Domain-Name Dispute Resolution Policy (UDRP). It has been adopted since 1999 by the registrars who register all of what are called generic Top Level Domains or gTLDs, (.com, .net, .org, .coop, .aero, .biz, .info, .museum, .name, and .pro) and who are registrars accredited by ICANN – the Internet Corporation for Assigned Names and Numbers which administers the internet.

ICANN has described its dispute resolution system in the following way:

‘Dispute proceedings arising from alleged abusive registrations of domain names (for example, cybersquatting) may be initiated by a holder of trademark rights. The UDRP is a policy between a registrar and its customer and is included in registration agreements for all ICANN-accredited registrars.’

So when you register your domain name with an accredited registrar, you sign a registration agreement and that agreement will incorporate the dispute resolution policy giving jurisdiction to the UDRP and the mechanism under it for resolving disputes.

So what we will be doing in this paper is looking at this unique dispute resolution scheme for domain names that is designed to resolve disputes about abusive registrations of domain names, one such abuse being cybersquatting.

You would have noticed already that one of the basic principles of the scheme is that complaints under the scheme may only be started by parties who have an interest in a trade or service mark. The scheme therefore essentially deals with complaints by trademark owners that someone else is trespassing on their trademark by registering a domain name.

But first we should have a look at what domain names are and how they come to be involved in disputes.


What Is A Domain Name?

A domain name is an internet address; an address that can find its way through the internet and convey a letter to someone or lead to a website that can be used for conveying information.

I have a domain name which is . IAMA has a domain name which is .

You will notice that it is not www.neilbrownqc.com or www.iama.org.au. Neither of those descriptions is a domain name. They both use a domain name, of course, but they are website addresses, which invite the system to go through the world wide web and find the domains which have been given the names or . Thus the domain name is .

You will also notice something about IAMA’s domain name, which that it is not , but meaning that it is not a generic domain but an Australian Second Level Domain.

I can use my website to receive emails. So, if someone wants to write me a letter by email delivered to that website, it must be addressed to neilbrown@neilbrownqc.com. If it is addressed as neilbrown@hotmail.com it will go unclaimed and be returned, as there is nobody of that name at Hotmail or, if there is, it is not me. The only people there are those who have been given as their address.

It follows that a domain name need not have a website. But clearly, if you are in business and you want a website to promote your wares, your domain name will lead to your website, for there would not be much point in having a domain name you just allow to remain dormant and do not use.

So, domain names often lead to websites. But not always. They may be used as an address with a whole string of email addresses attached to them.

They might also be registered just to keep in reserve for the future, the consequences of which can sometimes be an issue in domain name dispute cases.

Thus, if you had looked a few weeks ago at Yahoo’s site, you would have seen that if you register a domain name for a website it will costs you $ 8.96 a month. If you register a domain name and use it for email addresses it will cost you $34.95 a year. But if you register it, not to use it at all, but just to keep it, it will only cost you $2.99 a year, or at least for the first year, as it is wise to read the small print on these good deals.

So our domain name is chosen.

It is a domain and a name or more precisely a name and a domain. It technically consists of the Top Level Domain which is the <.com >part and the name, which is the part.

The Top Level Domain may be any one of a number of domains which are designated by suffixes. The most common of course is ‘com’.

The ‘.com’ suffix is known as a global or generic Top level Domain or gTLD, generic because it is generalized or covering a group or class, or global in the sense that it does not make allegiance to any particular country. There are other generic top level domains as well as .com and they are:

.org, .net, .biz, .info, .name .aero, .coop, .museum, .pro jobs and .travel

There is another proposed one, .xxx, but that is another story .

I will not go through all of them, but .com is intended for use by commercial businesses, .org by the non-commercial community and .net by internet service providers.

There are also country code (ccTLD) Top-Level Domains, such as .au or .nz.

The Australian domain space, designated by the ‘.au’ abbreviation, is divided into several Second Level Domains ( or 2LDs) as they are called. They are :

asn.au, com.au, net.au, id.au, org.au, edu.com, gov.au, csiro.au, info.au and conf.au.

There are rules on who and what may register a domain name under each of these Second Level Domains.

It is of course up to the person who registers the domain name to decide whether it is registered as a generic Top Level Domain domain or a country code domain. Parties often want the international cachet that goes with .com or .net, but they also often want the connection with a country that goes with having a country code. Sometimes, they have no connection with a country but try to get the country code because they believe it is good for business; the obvious one is to have the domain name registered in Tuvalu, because the country code for Tuvalu is .tv and the domain name is thought to be a valuable commodity.


How Do Domain Name Disputes Arise?

Disputes of course may be about anything, but the particular disputes with which we are concerned are defined for us in the document called the ICANN Uniform Domain Name Dispute Resolution Policy.

To cut a very long story short, ICANN is the Internet Corporation for Assigned Names and Numbers which is a company with an international Board of Directors and which supervises the internet and ensures that it runs smoothly.

It prides itself on its wide consultation, so that its website, for example, says: ‘Over eighty governments closely advise the Board of Directors via the Governmental Advisory Committee’.

When you register a domain name, you enter into a registration agreement with the authorised company arranging the registration. That registration agreement in turn contains an agreement to abide by ICANN’s Uniform Domain Name Dispute Resolution Policy or UDRP and its procedural rules.

It is that UDRP document that sets up the compulsory dispute resolution process to resolve disputes over domain names. As the Policy itself says, it is ‘mandatory’.

As I asked the question, what disputes are we concerned with, the answer is to be found in this binding Policy, which tells us that it covers:

‘…a dispute between you and any party other than us (the registrar) over the registration and use of an internet domain name registered by you.’


We are therefore dealing with a new method of resolving disputes between the person who registers a domain name on the one hand and, on the other hand, any other party apart from the company that arranged the registration with ICANN for a fee.

Now, ‘…any other party’ is a very wide expression. Clearly, it includes a party that claims you should not have registered that name, that you have no right to the name, that you have stolen the name or misappropriated it and that it should be returned.

So most disputes are between such a party and the party who has registered the domain name, called the registrant.

Next, that party cannot just complain about it, but must have a real dispute about ‘the registration and use’ of the domain name.

So the dispute resolution process we are concerned with, the UDRP, is for real disputes about both the fact that the domain name has been registered in the first place and also about the way the domain name has been used after it was registered.

There are many factors that will determine if the dispute is a real one. For example, if a trademark owner knew that you had used his trademark or business name by registering it as a domain name and yet he stood by and did nothing about it for five years, you might be excused for thinking that he really did not object to what you were doing, that there was really no problem and therefore no real dispute. Cases brought under the Policy sometimes actually end with that conclusion being reached and the case therefore fails.


The Mechanism Adopted By The UDRP To Resolve The Dispute

The Policy then sets up a mechanism under which the following steps take place to resolve the dispute.

The aggrieved party makes a complaint.

The complaint is made on the appropriate documentation to one of the providers of dispute resolution services approved by ICANN.

The respondent, the party who registered the domain name and against whom the complaint is being made, is then given a chance to defend the complaint and justify the registration of the domain name.

A panelist or an arbitrator is appointed by the provider to decide the case, but to decide it on the papers filed by both sides and not by having a hearing with witnesses. It is this process of dealing with the case online and on the papers, but without complicated pleadings and without a hearing with witnesses and arguments, that is the great asset of the system. It results directly in keeping the costs down and in keeping the procedural steps to a minimum so that decisions can be given promptly and the whole case disposed of in a short period of time.

After the arbitrator or the panelist considers the evidence and the submissions put in by both sides, he or she gives a written decision with reasons which is made public by delivering it to the parties and posting it on the provider’s website.

That is another difference from the usual arbitration, where the outcome of the proceedings is usually known only to the parties and the decision is confidential or private as between them.

The issue that the arbitrator will be deciding under the UDRP scheme is in effect whether the registration of the domain name is legitimate or whether the registration has involved some transgression by the registrant such as a breach of the trademark rights that the complainant has over the same name.

The decision is final and there is no appeal. The only order that the tribunal may make under the UDRP procedure is to cancel the registration of the domain name or transfer it to the complainant.

The tribunal cannot award damages or grant any other form of injunction.

Clearly the complaint will almost always ask for a transfer of the domain name away from the respondent to itself. There is not much point in asking for cancellation of the registration of the domain name when another party or even the Respondent itself could just go away and register the same contentious name again. So complainants usually ask for the domain name to be transferred to themselves even if they do not intend to use them. For example, Yahoo has been successful in getting the transfer away from cybersquatters of the deliberate misspelling of many variations of the spelling of the word ‘Yahoo!’ which have been registered as domain names. There is no value to Yahoo in using. So, after it is transferred to Yahoo!, Yahoo! would just keep it and pay the registration fee to prevent the cybersquatter coming back or a new cybersquatter emerging and taking the same name, when the dispute resolution process would have to be gone through again.

Three Examples Of The Type Of Case Brought Under The UDRP

Let us look at three actual disputes in ascending order of substance and difficulty to show you the sort of disputes that are arbitrated under this scheme. They are also useful in that they illustrate some of the categories into which domain name disputes regularly fall. I will give you some other categories later.

I have taken three cases where I have been the arbitrator.

I can speak openly about them because unlike the situation in other arbitrations, the details of the case and the result are public and posted on the providers’ website.

The first one is Go Daddy Software, Inc v. Henry Tsung . This is what you might call a straightforward dispute, because Mr Tsung had registered the domain name which was virtually the same as the trademark of the well-known company Go Daddy Inc that operates in domain name registration, web hosting and related fields. It is of course nothing to the point that that was the industry in which it worked. It could just as well have been motor cars or hotel management. What Mr. Tsung had done was take the Go Daddy trademark, the name Go Daddy and turn it into a domain name, but by making one change in the spelling, i.e. spelling it ‘godadday’. It was therefore a clear case of typosquatting, misspelling a trademark in the hope that innocent users of the internet who are looking for Go Daddy will type ‘godadday’ into their computers by mistake. That intention is reinforced by the fact that when you typed the erroneous name, you are directed to a website that was not the official Go Daddy site but a site pushing a collection of rival products by competitors in the same fields as Go Daddy. Not only was that so, but once they got hold of him, the website trapped the user into a bewildering array of all sorts of blandishments from online gambling to dating services and real estate agents. In some such cases, the links lead to pornography sites.

It was clear therefore that all of this was being done by Mr. Tsung having deliberately created a domain name that was similar to the Do Daddy trademark, that the name was confusing because of the spelling mistake, that he had no right to use the company’s name and that in doing this he had acted in bad faith and for improper motives.

After considering some other cases, The Toronto Dominion Bank v. Boris Karpachev , where the respondent had registered and to confuse everyone with the trademark T D WATERHOUSE and also the decision in Yahoo! Inc v. Eitan Zviely et al , where the respondent had registered Jahu, Jaghoo and Yahjoo in domain names to create confusion with the name Yahoo!, I ordered the domain name to be transferred to the complainant Go Daddy Inc, which now has a domain name that it does not use, but at least no one else can use it to sow confusion.

The second case is Sony Kabushiki Kaisha, also trading as Sony Corporation v. Richard Mandanice . Here, the respondent had registered as a domain name which of course was not a deceptive case of slightly changing the spelling in the hope that some internet users would make a mistake, as in the Go Daddy Case. The respondent Mr Mananice had spelt ‘sony’ correctly, but had added on ‘z5’ which was a special Sony mobile telephone that could be used in connection with the internet and email and which had been launched in 2000. What Mr. Mandanice was clearly trying to do was to attract internet users who were seeking, not the Sony site but a site promoting a particular Sony product. Hits on the site were then diverted not to the Sony site but to another website, www.free-for-all.com which supplies sexually explicit material. It is well known that someone is paid a fee each time a hit arrives at such a site, for someone sooner or later will buy a video or another product on the site. It is clear therefore that the domain name was confusingly similar to the SONY trademark, that Mr. Mandanice had no right to use their name and that the whole thing was got up to make money improperly and was therefore done in bad faith by trapping people into thinking that by typing into their computers, they would be going to the Sony site whereas in fact they ended up in Aladdin’s cave.

This case had another feature in that Mr. Mandanice was a serial cybersquatter, having registered over 50 domain names including and . He had also been involved in 7 UDRP cases, all of which he had lost and in all of which the domain name had been transferred to the complainant trademark owner.

The third case has another variation: Sydney Airport Corporation Limited v. John Crilly . In that case, the respondent had registered the domain name , making it plural, so that it was like Go Daddy in the sense that it was a misspelling. However, the additional factor was that it looked as if an attempt might be made to show that the website to which the domain name diverted visitors was a sort of information site on Sydney airports or at least on airports in general, so as to give it an air of respectability. The complaint however, was not defended and in substance the references to be found were not about airports at all, but were at best about travel agents, cheap air tickets and what I called in the decision ‘the usual blandishments ranging from dating services and cosmetic surgery to digital cameras and used cars’.

So there was no public interest in what the respondent was doing; he was trying to confuse people with the domain name; it was virtually the same as the official Sydney Airport name and after luring visitors into his domain, he was trying to sell things to them. So again the domain name was transferred to the complainant.

Another unsuccessful attempt to drum up a sort of public interest element and where at least there was no attempt to make money by diverting visitors to salacious websites is Chung, Mong Koo and Hyundai Motor Company v. Individual .

In that case, the Respondent had registered the domain names and . Mr. Chung, the first complainant was the Chairman CEO and part-owner of Hyundai, the second complainant. The Respondent had built a website to which hits on the domain name were directed. The site carried some derogatory remarks about Mr. Chung and urged viewers not to buy Hyundai, which it described on the site as ‘junk’. Again, the case was undefended, but even if it had been defended it would have been hard to show that such abuse could be described as legitimate criticism or the exercise of free speech and as serving some sort of public interest. It was none of those things because it was just abuse. So the case simply became a regular one, where the company and its chief had never consented to their names being used in this way and where some improper exercise was under way, either to damage Hyundai or to build up a visitors list to use later on for some other improper purpose. So Hyundai now have two other domain names in their collection.

All of the cases I have mentioned so far were undefended, but they illustrate the issues that arise in these cases time and time again.

Some of the defended ones, however, pose more difficult questions.

One of these is a very recent one I did as Chairman of a panel of three: Deutsche Post AGv.NJDomains . There were many issues of fact and law in that case, which was hotly defended, but in essence, the German Post Office was claiming that it had a trademark over the word ‘Post’ and that therefore the respondent could not legitimately register the domain name .

It certainly had 14 registered trademarks, in Germany, the European Community the US and internationally. But with one exception they were all registered after the domain name was registered. Now that is not fatal, but it is obviously hard to prove that when a respondent registered a domain name, he did it from bad motives or to spite a trademark owner, when the trademark had not even been registered at the time he was registering the domain name.

But it had one other trademark that was registered before the domain name. This was not merely of the word ‘Post’, but was predominantly a hunting horn or perhaps a post horn, which the German Post Office has taken as its logo together with the word ‘ Post’. So it was able to mount an argument that the domain name had been registered to copy and trade off its trademark ‘Post’ logo and that the respondent had then used it to sow confusion in the minds of people who saw it, that they were really seeing the domain name of the German Post Office when of course they were not.

We unanimously rejected that argument, because the substance of the trademark was not the word Post used in the domain name but the logo itself together with the word. If you asked an objective bystander if the single word ‘Post’ was the same as this predominantly pictorial representation of the horn and if he or she was confused between the two, the bystander would say ‘No’ because the two are just so different.

Moreover, the German Post Office was really overstating its case. It was saying that it also had an unregistered trademark in the word Post’ which really could not be so, for ‘Post’ is a generic word of universal application and does not bring to mind an association with the German Post Office to the exclusion of everyone else, for example Australia Post, which had already lost a similar domain name case . One of the principles that has clearly emerged through the development of this area of the law is that generic words cannot be the basis for a common law trademark unless they attract another particular meaning that associates them with the party claiming the trademark, as with Apple computers, Orange telephone or Dell Computers.

This argument was developed further in the decision.

The Complainant could not establish this intimate association between itself and the word ‘Post’. Moreover, the respondent, the party who had registered the domain name, had a very persuasive case in defence. It freely admitted that it had registered the domain name and a series of others, but asserted that it had done so to enable people to pay for the use of the domain name as an email address. In fact, this argument had the air of truthfulness about it, as over the years, the Respondent had acquired 30, 000 clients who were paying to use ‘@post’ as their email addresses.

The Respondent therefore succeeded in that case, as the Complainant could
not show that it had a trademark to support its claim and the Respondent itself had a legitimate explanation as to why it had registered the domain name and how it had been using it since then, all of which was quite persuasive.

From listening to my remarks on those cases, you would have seen that a number of principles are starting to emerge. Perhaps it is time to try to clarify what a complainant must prove if he is to succeed in prising a domain name out of the hands of another party who has registered it.

What Has To Be Proved By A Complainant In A UDRP Proceeding?

There are essentially three things that the complainant must prove.

The first is that he has rights in a trademark or service mark over the name at issue and that the domain name is either the same as that trademark or at least similar to it and confusingly similar. In other words, when Mr. Mandanice registered the domain name , it was not identical to the trademark, because the trademark was ‘SONY’, not ‘SONY-z5’. But it was similar to the trademark and confusingly so, because anyone who saw would assume that this was an official domain name of Sony.

Note that I have said that the complainant must show rights in a trademark. It is not enough to show that the complainant has simply applied for a trademark without it having been registered, for that gives no rights at all for the purposes of these proceedings. However, it is sufficient for the complainant to show a licence to use the trademark even if he does not own it, for a licence does give rights in a trademark.

The second element that the complainant must establish is the reverse side of the coin, i.e. that the respondent has no rights or legitimate interests in respect of the domain name. If, for instance, before the dispute arose it was actually using the name as its business name, that would be a legitimate interest. If it were the respondent’s own personal name, that also would be a legitimate interest.

If it was using the domain name as a genuine public interest site or an information site, that also would be legitimate. But at the end of the examination of the evidence, the complainant who, after all, is asking for a pretty draconian remedy, cancellation or transfer of someone else’s domain name, has to show on the balance of probabilities that the respondent, the party who registered the domain name, has no rights in the name or legitimate interest in it.

The third thing that the complainant must show is that the respondent registered the domain name in bad faith and that he has been using it in bad faith. He must show both of these things.

So you will see that there is quite a burden on complainants. They have to show all three of those elements.

Most domain name cases are won by complainants, but that is because most of them are not defended. When they are defended and the respondent puts up a spirited defence based on fact, they often win and are allowed as a result of winning to keep their domain name.

Categories Of Cases

You will see from the cases I have mentioned that domain name cases cover a great variety of types.

Let me see if I can categorise them, although, as each case depends on its own facts and as there are now thousands of decisions, they tend to be what a Judge once referred to as ‘a wilderness of single instances.’

First, there is the blatant taking of someone else’s name.

Two: the deliberate misspellings of business names to trap the unwary, like the ‘Yahoo !’ and ‘Go Daddy’ cases.

Thirdly, there are the cases where a trademarked name is used and a product or product line is added on, as in or another one . This latter case is noteworthy for the explanation given by the respondent registrant of the domain name as to why he had chosen ‘delltechnologies’ for his domain name. The explanation was that a dell was a ‘secluded valley,” leading the arbitrator who decided the case to observe that ‘Mr. Mbowe (he was the Respondent in that case) may frolic in dells to his heart’s content, (but) under the Policy he cannot use Dell’s trademark as part of his domain name’.

Fourthly, there are the cases, as in the Deutsche Post Case where the complainant is saying that even if he does not have a registered trademark over the name, he has an unregistered or common law trademark and the respondent is arguing that he also has as much right to use a common or generic name like ‘post’ or ‘rollerblade’ as anyone else and certainly as much right as the complainant. If the respondent can make out a persuasive case to that effect, he can win such a case.

Fifthly, there are the cases where the respondent actually admits that the domain name has been registered to reflect or reproduce the name of the complainant, but where it has been done to create a criticism site or public discussion site. Whether this will satisfy the tribunal depends on the facts and, as you have seen in the weak fact situations like the Sydney Airports Case and the Hyundai Case, in some cases this defence will not succeed because it is not persuasive on the facts.

The Americans are keen on this defence and there are cases decided by American arbitrators where greater credence is given to it than would be given by other jurisdictions .

There are other cases where the facts will decide who came first, the domain name registrant or the trademark registrant and what is the consequence of the domain name not having been registered until after the trademark. Generally it is very hard to prove that someone registered a domain name to cause trouble for the trademark owner or in bad faith when the trademark was not registered until after the domain name.

There are also cases on whether as a matter of fact a complainant, who has not been able to establish a registered trademark, can nevertheless establish a common law or unregistered trademark. It is sufficient if the complainant can establish an unregistered trademark.

Under that heading there is a nice and interesting group of cases on whether an entertainer or sportsperson or politician can establish an unregistered or common law trademark in his or her own name and hence stop the irritating practice of admirers or others registering domain names in the names of their heroes or victims.

A recent case brought by Senator Hilary Clinton seems to confirm the notion that they can establish a trademark in their own name, not because they are famous but because in addition to that, they earn income from trade or commerce under the name, as Senator Clinton did as the author of several books that had big sales and produced income.

There are also very interesting cases establishing these rights brought by Julia Roberts, Jeanette Winterson, Nick Cannon, Nicole Kidman and very recently Cedric Kyles. See also Robert Downey Jr. v. Mercedita Kyamko WIPO Case No. D2004-0895, Morgan Freeman v. Mighty LLC WIPO Case No. D2005-0263 and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com"
WIPO Case No. D2000-0847 to the same effect.

Then there is the countervailing argument put by some people that they are entitled to register domain names in their heroes’ names because they are entitled to establish fan sites even if the celebrities do have trademarks in their own names. There are cases on this that are listed here for you to follow up if you are interested.

Then there are cases on whether a domain name registrant can establish a legitimate interest in the domain name because he was formerly an agent or a distributor for the trademark owner.

And there is no end of cases on what particular conduct constitutes bad faith, all of which depend on their own facts. Even if all other elements are proven, the complainant still must show that the respondent, who registered the domain name, did it and then used it in bad faith. Often the bad faith argument revolves around the fact that the respondent was deceptive or misleading or that he diverted hits on his website to a competitor of the complainant or to a pornography site, all of which have been held to be bad faith. There is even an issue, immortalized in an Australian case with the delightful name, Telstra v. Nuclear Marshmellows, as to whether registering a domain name, and lying low and doing nothing, can show bad faith by itself, which in an appropriate case it can.

There are many other issues which are analysed on the very useful WIPO Overview (supra) and which give an indication of the prevailing views of panelists who decide these cases. Although their decisions are not binding or conclusive they are persuasive and are contributing to a body of jurisprudence on these issues. The Overview is based on a review of 7000 cases and is therefore a practical guide to the likely decision on a particular issue. It is a very valuable resource for parties and lawyers getting involved in this field and it promotes consistency in decisions. This result is enhanced by the fact that the Overview itself is cited and quoted in decisions and is itself becoming something of an authority. I have noticed myself citing it on several occasions and it certainly adds lustre to the decisions.

Who conducts the UDRP proceedings?

Of the approved organizations that provide dispute resolution services under the UDRP, the World Intellectual Property Organisation (WIPO), the United Nations agency, is the most active and the pre-eminent in the field. Since the system started in 1999, WIPO has handled, as at 5 April 2006, 8478 cases.

It has also been the intellectual powerhouse for stimulating debate on this area of the law of intellectual property and has been responsible more than any other body for developing its jurisprudence.

The other approved providers of dispute resolution services in the generic fields are:

1. The National Arbitration Forum [the NAF] (Minneapolis, USA) which has handled 6400 cases.

2. Asian Domain Name Dispute Resolution Centre [ADNDRC]. It has two offices, which are in Beijing and Hong Kong. ADNDRC is a joint undertaking between the China International Economic and Trade Arbitration Commission (CIETAC) and the Hong Kong International Arbitration Centre (HKIAC). 117 cases have been handled since ADNDRC was approved on 28 February 2002.

3. CPR Institute for Dispute Resolution [CPR] (New York). It has had 138 cases.

The complainant determines which organization it will go to, to initiate the proceedings. At least so far as WIPO is concerned, 70-80% of cases are disputes about .com domain names and the remaining 20 % account for all other generic Top Level Domains.

As well as being the provider of dispute resolution services for the generic Top Level Domains under the UDRP, WIPO also provides those services for 45 of the county code Top Level Domains. The most frequently used of those codes has been Tuvalu.

In almost half of WIPO cases, the complaints have been brought by parties who are domiciled in the United States. Only a slightly lesser number of respondent are also domiciled in the United States.

The Outcome

In between 60 and 70 % of cases, the Respondent does not defend the complaint.

Since 1999, complainants have won 83 % of cases, leading to the transfer of the domain name from the respondent to the complainant and in only 1 % of cases has the registration of the domain name been cancelled. In 16 % of cases, the Respondent has won and been allowed to keep the domain.

As I said at the outset, a complainant using the UDRP process is only able to obtain transfer of the domain name to itself or cancellation of the domain name, but that may be all that he wants or needs. It may be that he does not want damages or it may be that the prospective defendant is a man of straw and that it is pointless pursuing him for damages. But if the complainant can get the domain name transferred to himself within a couple of months through the UDRP procedure and for US$1500 (for a single panelist to decide the case) with a guarantee that there is no appeal and that the order is self-executing, this makes the UDRP overwhelmingly attractive. The success rate of 83% that I have just mentioned makes the UDRP process even more attractive. So there is no wonder that it remains after 6 years the preferred method of resolving domain name disputes.

Selection of Panelists - How the Providers of Dispute Resolution Services go about their Task

All providers of dispute resolution services maintain panels of arbitrators from which they choose the particular panelist who will conduct the arbitration.

An important task is the selection of the panelist who will conduct the arbitration.

Most are one member or single panelists, but in about 8 % of cases there are three member panels.

The providers of dispute resolution services like WIPO naturally strive for independence and impartiality and usually the panelist is not allowed to see the papers until signing an undertaking that there is no conflict of interest and that the panellist will act impartially.

So the provider will consider all sorts of factors before offering the case to a particular panelist.

The providers naturally have regard to the requirements of experience and also to factors such as where the panelist resides, so that, for example, they avoid having a single panel member who resides in one of two countries involved in a particular case.

Factors such as whether the panelist has taken a declared position on the disputed issue will also be considered in deciding whether to appoint the panelist.

After the panel is appointed, the provider managers the case through the case managers employed by the provider.

Some Recurring Issues

These are some of the positions taken by parties in UDRP cases and they deserve consideration.

One such issue is where the respondent says of the complainant, in effect, well I know now that he had a trademark, but when I registered the domain name I did not know he had a trademark in that name. This is not a defence, but of course it may well go to the respondent’s bona fides and the overall judgment that the panel makes of the respondent’s conduct.

In any event, the respondent might go on, I live in Egypt and how was I expected to know that the complainant had registered the trademark in the USA? The answer is that the respondent is seeking a world wide coverage though the internet by using the domain name and has to take account of the fact that there may be trademarks registered overseas.


When it is said against a respondent that he registered the domain name and just sat on it, showing that he never needed it for his business or never intended to use it for a legitimate purpose, the respondent often replies that the website was ‘under construction’ and it would have been up and running in time, showing his legitimate use of the domain name, if only the complaint had been made a month later. These cases are resolved on the facts and the panelist will go thoroughly into the question of whether the facts and the respondent’s conduct show that he was legitimate or whether he was just engaging in a piece of deception.

I was faced with this problem recently. I resolved it, as other panelists do, by making a judgment as to whether the explanation that was given was probably true or probably not and I decided it was probably not .

The fact that there were negotiations for the sale of the domain name is an indication that the registration was not legitimate but was done only with an eye on its resale value. Here the difficult question is often: who initiated the negotiations? That again is a matter for the panelist to decide on the facts.

What does six years of the UDRP show?

1. Online resolution does work. Obviously not in all cases, especially where the case can only be resolved by seeing the witnesses and making judgments about them. But with that exception, online resolution does work. In any case, there is power under the Rules to ask the parties for more information and I have used this power twice. So it is possible, even in a difficult case, for the panellist to have access to all or virtually all of the evidence that a court would have before it.

2. The process has its own discipline, for if the public and practitioners see cases being lost because they are not prepared or presented properly, they will make sure that they improve next time and present a better case. This is helped by judgments being posted on the website of all of the providers, so it is possible to see why one case was successful and conversely why another case was lost.

3. Are the panellists truly independent? Yes, they are. I have never seen or heard of any sign to the contrary.

4. The process is fast, taking only a couple of months and cheap compared with litigation and although the complainant will not recover damages, it will get what is more useful, the domain name. The UDRP process is free from the complications that unfortunately still bedevil the court process. The case is often decided from a remote and in a necessarily detached way free from the agitation that is so often associated with litigation.

Accordingly, there is a very strong case for applying this inline method of dispute resolution of domain name disputes to other types of dispute.

Administration of the Domain Name Process in our Region.

Australia

As ICANN tells us ‘registration of domain names within two-letter country-code top-level domains (ccTLDs) such as .au, .ca, .jp, and .uk are administered by country-code managers’.

For Australia, the country code top level domain is .au and the company that administers it is au Domain Administration (auDA) which is at 107 Faraday Street, Melbourne VIC 3053. See also the reference below to auDA’s website.

WIPO is one of four approved providers of dispute resolution services for .au domain names.

The four providers in alphabetical order are:

• LEADR - Association of Dispute Resolvers

• The Chartered Institute of Arbitrators - Australian Branch (CIArb)

• The Institute of Arbitrators and Mediators Australia (IAMA)

• World Intellectual Property Organisation.

But here again the number of cases handled by WIPO is notable and significant because what it really means is that this is the number of complainants who choose WIPO and initiate their proceedings there.

WIPO has handled 25 cases since 2002 when the system started , rather than 1999 when the gTLD system started.

The other providers have handled the following numbers of cases.

LEADR- 28

The Chartered Institute of Arbitrators 1

IAMA 4


It should also be noted that the .au Dispute Resolution Policy, although substantially the same as the general ICANN Uniform Domain Name Resolution Policy contains some differences. Thus, although under the ICANN Policy, a complainant must prove that the contentious domain name is identical or confusingly similar to the Complainant’s trade or service mark, under the Australian policy the Complainant may rely on a trade or service mark or just a name, meaning a company or business name or a personal name that may not be a trademark.

Secondly, although under the UCANN Policy, a complainant must prove that the domain name was both registered in bad faith and used in bad faith, under the Australian policy the Complainant need only prove that that the domain name was registered or used in bad faith.

Elsewhere in the region it is a matter of studying the particular country, as they may differ both in the eligibility to register a domain name and the dispute resolution policy that applies.

Two examples are as follows.

Malaysia:

The Kuala Lumpur Regional Arbitration Centre has been appointed the .my (Malaysia) domain name dispute resolution service provider by the Malaysian Network Information Centre (MYNIC), which administers the .my domain. It has handled 7 cases, 4 of which have gone to a decision.

Singapore:

The Singapore Domain Name Dispute Resolution Service (“SDRP Service”) manages the dispute resolution mechanism under the SDRP, and is run by a Secretariat (“SDRP Secretariat”) jointly operated by the Singapore Mediation Centre and the Singapore International Arbitration Centre. The service has handled 10 cases.

Conclusion

The UDRP seems to me to have been such a success that we should study its policy and rules and see if they can be used as precedents for the resolution of other types of disputes. I am certain that they can be.

© N A Brown 2006

The Hon N A Brown QC, PO Box 2140 St Kilda West, VIC., Australia 3182.
Tel (03) 9534 5436; 0400 123 254; nabrownqc@yahoo.com.