UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY
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A PAPER DELIVERED AT THE STATE BAR
OF CALIFORNIA
Section Education Institute
January 19, 2008
BY
THE HON NEIL BROWN QC
Australia
Hyatt Regency Mission Bay -- San Diego
The Purpose Of This Paper
The purpose of this paper is to give an outline on the process for the arbitration of disputes over internet domain names under the Uniform Domain Name Dispute Resolution Policy (the UDRP).
Attention will also be given to a few specific issues where comment has been requested and which it is felt will be of particular interest to legal practitioners representing clients in proceedings under the UDRP.
The Resolution of Disputes
The main thesis of this paper is that 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.
One of the things that I will not be referring to in any detail 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 resolved in the courts in proceedings for 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, i.e. 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 ICANN dispute resolution policy, the UDRP, giving jurisdiction to the mechanism and its Rules made 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.
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. For example, I have a domain name which is
Domain names need not have websites but they often lead to websites. They might also be registered just to keep them in reserve for the future, the consequences of which can sometimes be an issue in domain name dispute cases.
A domain name 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
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, global in the sense that it does not make allegiance to any particular country or generic because it is generalized or covering a group or class. 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.
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 .us or .au.
It is often commented on that it is strange that .us is not used more frequently in the United States, for it is the United States country code. The reason why the .us country code is not used more frequently is that the United States, being the most active user of the internet, has always regarded .com and its related domains as being the US domains and they have therefore become the more valuable and highly sought after internet addresses.
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.
When you register a domain name, you enter into a registration agreement with the authorised company or agent 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’. The Policy covers:
‘…a dispute between you (i.e. the party registering the domain name) and any party other than us (the accredited 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 and 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 sets up a mechanism under which the following steps take place to resolve the dispute.
First, the aggrieved party makes a complaint.
The complaint is made on the appropriate documentation to one of the three 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. Usually, the entire proceedings are over within two months from the filing of the Complaint.
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.
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. Often, this delinquent conduct by the party who registered the domain name is referred to as abusive registration and it is also said that the Policy is aimed solely against abusive registrations.
The decision made in the course of this process 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 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 register the same contentious name 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. 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 cases and the result are public and posted on the provider’s 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
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.
I therefore 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 . The respondent Mr. Mandanice had spelt ‘sony’ correctly, but had added ‘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 that 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
The third case has another variation: Sydney Airport Corporation Limited v. John Crilly . In that case, the respondent had registered the domain name
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 ordered to be transferred to the complainant. As another example of the same issue, see Chung, Mong Koo and Hyundai Motor Company v. Individual .
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 Complainant, 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 when the trademark had not even been registered at the time he was registering the domain name.
But the Complainant 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.
My two colleagues and I 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.
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 it 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.
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 it does not own the trademark, for a licence does give rights in a trademark.
The second element that the complainant must establish is 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 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 has been using it in bad faith. The complainant 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 the domain names they have registered.
Categories Of Cases
You will see from the cases I have mentioned that domain name cases cover a great variety of types. First, there is the blatant taking of someone else’s name. Secondly, there is the deliberate misspellings of business names to trap the unwary. Thirdly, there are the cases where a trademarked name is used and a product or product line is added on, as in
Fourthly, there are the cases, as in The Deutsche Post Case where the complainant is saying that even if it does not have a registered trademark over the name, it has an unregistered or common law trademark and the respondent argues that it 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, it 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. American parties and lawyers are keen on this defence because of the American commitment to freedom of speech embodied in the First Amendment to the Constitution and there are cases decided by American arbitrators where greater credence is given to it than might be given by panelists from 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 a complainant, who does not have a registered trademark, can nevertheless establish a common law or unregistered trademark. It is sufficient if the complainant can establish an unregistered trademark and, to do so, he or she will have to show that his or her name has been used to sell goods or services.
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 Hillary Clinton seems to confirm the notion that they can establish a trademark in their own name if, not that they are famous but that, 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.
Proving the common law trademark
An interesting question has arisen as to whether panelists with a common law background are more likely to find in favour of a common law trademark than panelists with a European, civil law background. Here, I can make several points. First, it should not be assumed that a panel consisting of one or three panellists from a common law background will accept automatically that a case has been made out for an unregistered trademark. It has to be proved and as panelists we are sometimes struck by the lack of vigour in adducing evidence to make out such a substantial issue. The panel will scrutinise the evidence closely and will sometimes rule that the evidence is inadequate and reject the claim. See, for example, the recent decision in River Island Clothing Co. Limited v. Name Administration Inc. (BVI), WIPO Case No. D2007-1293, concerning the domain name
So the most important thing the attorney can do is collect the evidence and, if anything, err on the side of putting too much evidence in, rather than not enough.
Always remember the consequence of not proving the common law trademark if there is no registered trademark, which is essentially that the claim will fail, because the complainant in a UDRP case must prove all of the three constituent elements required by the Policy.
As an illustration of how disastrous this result can be, see David Pecker v. Mr. Ferris; WIPO Case No. D2006-1514.
Secondly, panelists with a common law background will be just as careful in scrutinising evidence on this issue as panelists with a civil law background.
Thirdly, from what I have observed, quite a few European panelists seem to know a lot about the unregistered trademark and they write about it at least as if it were not an alien concept.
In fact they may be quite familiar with common law trademarks. The Rules on the new .eu, for example, seem to contemplate that some at least of the civil law countries have unregistered trademarks, for the Rules deal with how they are to be proved.
So I think that if a case for a common law trademark is presented and supported by proper evidence and argument, it has just as much prospect of being accepted if the panelist is from a civil law background than if he or she has an exclusively common law background.
Legitimate interest
There are also cases on whether domain name registrants can establish a legitimate interest in a domain name because they were formerly agents or distributors for a trademark owner.
Bad Faith
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, registered 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 it diverted hits on its 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.
Who conducts the UDRP proceedings?
The approved organizations that provide dispute resolution services under the UDRP are as follows.
1. The World Intellectual Property Organisation (WIPO) which has handled some 9000 cases.
2. The National Arbitration Forum [the NAF] (Minneapolis, USA) which has handled 6400 cases; and
3. The Asian Domain Name Dispute Resolution Centre [ADNDRC]. It has three offices, which are in Beijing, Hong Kong and Seoul. ADNDRC is a joint undertaking between the China International Economic and Trade Arbitration Commission (CIETAC) and the Hong Kong International Arbitration Centre (HKIAC). Over 117 cases have been handled since ADNDRC was approved on 28 February 2002.
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.
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 respondents 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 able to obtain only the transfer of the domain name to itself or cancellation of the domain name, but that may be all that the complainant wants or needs. It may be that it does not want damages or it may be that the prospective respondent has no assets and that it is pointless pursuing it for damages. But if the complainant can get the domain name transferred to itself within two 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 7 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 panels, but in about 8 % of cases there are three member panels.
The providers of dispute resolution services, WIPO, NAF and the ADNRDC, naturally strive for independence and impartiality and the panelist is not allowed to see the papers until signing an undertaking that there is no conflict of interest and that the panelist 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 manages the case through the case managers employed by the provider.
Requesting a Three Person Panel
It has been suggested that the complainant’s attorney and in some cases the respondent’s attorney should on occasions ask for three person panel in the hope that a three person panel might help bring about a result more favourable than the possible result from a one person panel.
This course of action may be advantageous where the complainant or respondent wants a thorough examination of the issue and the real debate that could be expected to be generated before a three person panel.
A party nominee may be very persuasive and may be able to win the other two panelists or one of them over to the side making the request.
On the other hand, that prospect may be somewhat overdone.
If the parties want it, however, the machinery is certainly there to enable it to be done. It is another unique feature of the UDRP process that a party can control a major part of the process, namely the constitution of the tribunal and the ICANN Rules under the UDRP and the Supplemental Rules of the providers make detailed provision for determining the composition of the tribunal.
The ICANN Rules give an option to the parties to have a one or a three member panel.
Rule 6 (b) stipulates that the provider appoints a one person panel if neither the Complainant nor Respondent asks for a three person panel.
If either party does so request, the provider must appoint a three person panel.
The procedure for doing this is set out in Rule 6(e). That Rule requires the provider to endeavour, i.e. to try to appoint one panelist from each list received from the Complainant and the Respondent of proposed appointees.
The Complainant is to submit a list of three nominees under Rule 3 (b)(iv) and the Respondent who wishes a three member panel or if the Complainant has requested one, is to submit a list of three under Rule 5(b) (v).
If it cannot secure appointments from the two lists, the provider makes the appointments from its own panel.
As to the third member, who is presumed to be the Chair, (but who is not said to be so in the ICANN Rules) the provider submits a list of 5 nominees to the parties, who have 5 days to consider it and express a preference and the provider is then to balance reasonably the preferences. The parties in practice strike names from the list and return it.
The NAF Supplemental Rules, however, require the NAF to endeavour to appoint the Chair not from either of the two lists of three nominees submitted by each party.
Rule 9 (c) of the NAF Supplemental Rules says that if the Complainant had requested a three member panel, but the Respondent has defaulted, the Complainant may convert it to a one member panel. But the selection of the one panel member is then made by the NAF and must not be of a panellist on the list of three submitted by the Complainant.
Rule 7 (a) of the WIPO Supplemental Rules provides that the three person lists are to be submitted in order of preference. Rule 7 (b) provides that the third panellist is to be the presiding panellist. Under Rule 7(b)(ii), the parties may agree on the presiding panellist.
Rule 7 (c) (ii) provides that if Respondent defaults or does not pay the fee, WIPO appoints both the second and the presiding panellist.
So there are rules to achieve the objectives of the parties. But important as these Rules are, they are no substitute for collecting and presenting a good case.
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 it registered the domain name and just sat on it, showing that it never needed it for its 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 may be 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 seven years of the UDRP show?
1. Online resolution does work.
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.
3. Are the panelists truly independent? Yes, they are. I have never seen or heard of any sign to the contrary.
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.
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.
Website : www.neilbrownqc.com
Email : nabrownqc@yahoo.com.
Telephone (03) 9534 5436; 0400 123 254;
International calls: + 61 3 9534 5436 and (mobile telephone)
+61 400 123 254.
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