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.
