Overview : Domain Name Disputes
What are Domain Names?
One of the brilliant structural features of the Internet is the domain name system, DNS. While the content currently available on the Internet is equally accessible simply by using numeric IP addresses, people use the domain names as shortcuts to remember and sort there countless resources.
While every resource has its own unique IP address, there may be several shortcuts that lead to the same IP address. For example, your browser requests the same file from the same IP address when you use mincovlaw.com or canadacopyrightlaw.com in your address bar.
Because the domain names generate recognition of the websites with which they are associated, they have become a very important asset. Indeed, nobody uses http://188.8.131.52 to check their Facebook, although it is exactly the IP address that the browser connects to when the user types http://facebook.com.
Business Value of Domain Names
The obvious value of domain names for the visibility of their websites and brands, coupled with the ease of their registration on the first-come-first-registered basis resulted in many bad faith registrations by unrelated parties of domain names confusingly similar to someone else’s trademarks. This activity received the term “cybersquatting”.
Trademark owners were noticeably upset when they realized that someone else has registered a domain name consisting of their trademark followed by “.COM”. When they tried to explain to the cybersquatters that registration of the domain name infringed their trademark rights, cybersquatters would suggest to settle the dispute by selling the domain name to the trademark owners.
The cybersquatters perfectly realized that in most cases, trademark owners would not find it reasonable to incur the expenses of a full-blown litigation to enforce their trademark rights against the bad faith registrants, and would prudently buy the domain names for a reasonable amount.
Many trademark owners were discouraged by the fact that the court practice in various jurisdictions varied and led to unexpected results.
When the number of domain name disputes was in the hundreds, it became clear that courts are not always the most appropriate venue to settle domain name disputes. Thus, in 1999 ICANN, the authority responsible for the domain name system (DNS), came up with a limited administrative procedure that was very simple, robust and relatively inexpensive, the Uniform Domain Name Resolution Policy, UDRP.
UDRP allows trademark owners to enforce the transfer of domain names confusingly similar to their trademarks from those who have registered and used the domain names in bad faith.
The policy is very straightforward. In order to succeed, the complainant must prove that:
- the domain name in question is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- the domain name registrant has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
UDRP contains the following non-exhaustive list of circumstances evidencing registration and use of a domain name in bad faith:
- registration of a domain name primarily for the purpose of selling, renting or transferring the domain name registration to the complainant or to a competitor of the complainant for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name;
- registration of a domain name in order to prevent the trademark owner from reflecting it in a corresponding domain name;
- registration of a domain name for the purpose of disrupting the business of a competitor; or
- use of the domain name with an intention to attract for commercial gain, Internet users to the domain name registrant’s website or other on-line location, by creating a likelihood of confusion with the complainant’s trademark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website.
UDRP has many advantages compared to traditional litigation:
- The dispute is usually resolved within 2 months;
- The dispute is handled not by a court, but by one or three panelists provided by the dispute resolution provider (the two most notable domain name resolution providers are the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center and the National Arbitration Forum (NAF);
- The filing fee is usually in the range of $1,300 and $2,000 depending on the forum and the number of panelists;
- Parties do not need to attend;
- All evidence is filed electronically;
- The procedure is not usually linked to laws of a specific jurisdiction;
- The enforcement of the transfer is virtually automatic, unless the domain name provider receives notice that a court proceeding has been commenced within 10 days of the UDRP decision.
It also has a few limitations:
- The complainant must have rights in a trademark in order to be able to use UDRP;
- The only remedy is the transfer or cancellation of the domain name, so no damages can be awarded;
- Costs are not recoverable;
- Injunctions are not available;
- UDRP does not deal with the content of the website: nothing prevents the former registrant from using the same content using a different domain name.
UDRP deals with the following general top-level domains (gTLDs):
Many countries are also relying on variations of UDRP with respect to their national domains (ccTLDs).
A large number of these countries have delegated the dispute resolution to the domain name resolution providers that deal with the gTLDs. For example, disputes over French and Spanish national domain names under their respective national UDRP variations is are handled by WIPO Arbitration and Mediation Center.
.CA domain names and key differences between CDRP and UDRP
Canada also has its national domain name resolution policy, CDRP, that deals with .CA domain names.
It does not rely on the general domain name resolution providers and instead uses the Canadian Internet Registration Authority (CIRA) to handle these disputes.
While recently, CDRP has been revised to make it more similar to UDRP, there are still several key differences between UDRP and CDRP:
- CDRP only deals with disputes in the .CA domain;
- CDRP is only available to those claimants that meet CIRA’s Canadian Presence requirements, which includes Canadian citizens and permanent residents; corporations and other forms of companies existing under the laws of Canada or any of its provinces or territories; and if these requirements are not met, to any person who owns a corresponding registered trademark in Canada.
- CDRP relies on the Canadian Trade-Marks Act and Canadian trademark law to assess the issue of confusion;
- Unlike UDRP, CDRP covers trade names, as well as trademarks;
- If the complaint fails and the registrant proves, on a balance of probabilities, that the complaint was commenced for the purpose of attempting, unfairly and without colour of right, to cancel or obtain a transfer of a domain name, the panel may award an amount of up to $5,000 to the registrant to defray the costs incurred by the registrant in preparing for, and filing material in the proceeding;
- the default number of panelists is 3, which can be converted to a single-member panel only if the registrant does not file a response;
- the fees are as follows: $1,000 to file a complaint. Then, if the case is not settled, the complainant is to pay the fees for the panelists: $3,000 for a three-member panel, or $1,750 for a one-member panel;
- the period for implementing the CDRP decision is 30 days, not 10 as in the case of UDRP;
While UDRP and CDRP offer great advantages over traditional litigation, sometimes court action can be a better option. This is the case when the claim extends beyond the mere transfer of a specific domain name, or when the claimant is seeking damages or a court order preventing the defendant from performing certain acts.
For example, if the trademark owner wishes to prevent posting of certain infringing content on a website under a particular domain name, UDRP will only go as far as to transfer the domain name, if it is confusingly similar to the complainant’s registered trademark. This would not prevent the defendant from using the same content by association with another website, or even no website at all, by simply using the same IP address. If the defendant persists, court action may be the only solution for the plaintiff to obtain an injunction to prohibit the defendant from using the infringing content.
Similarly, if the registration and use by the defendant of a domain name that is confusingly similar to the trademark of the complainant caused damage, then – based on availability of evidence and the jurisdiction in which the defendant resides – it may be better to file a court action, instead of administrative proceedings.
In most cases, however, a combination of the two procedures may be the best solution.
With UDRP / CDRP it be possible to resolve the domain name issue quickly and inexpensively. If the tribunal orders that the domain name be transferred to the complainant, then the complainant will be able to better assess the battlefield after the defendant has lost one of the infringement tools (the domain name).
This will normally have one of the two consequences: either the defendant will stop further infringing activities; or it will take further steps, making the intention to infringe upon the trademark owner’s rights even more apparent, which will be valuable evidence in court.
Each situation is different. If you believe that someone is unlawfully using your trademark in a domain name, you should consult a lawyer.