1

Domain Name DisputesDomain Name Disputes

Rami OlwanRami OlwanBibliotheca AlexandrinaBibliotheca Alexandrina

IP and the Digital Age WorkshopIP and the Digital Age Workshop 20-2220-22 December 2008December 2008

2

Outline Definition and types of domain names Why domain names are important? ICANN and its functions Conflicts over domain names Resolving conflicts

3

What is a domain name and DNS?

A human- friendly form of internet address, and is commonly used to find a certain web site.

Before having the Domain Name System (DNS) , it was difficult for people to remember numbers, and to overcome this, a new system was created to translate IP numbers to letters. The system that we use when we surf the net is called the DNS.

4

Types of Domains Names gTLDs: (There are currently 21 gTLDs) .com, .edu, .aero, .org .int, .mil, .gov, .net.coop, .pro, .info, .museum, .tel, .cat,.jobs.name,.travel .asia, .mobi, .biz, .apra

ccTLDs: (WIPO is responsible for 56 ccTLDs).AU (Australia), .BS (Bahamas), .CY (Cyprus).GT (Guatemala), .NA (Namibia) .PH (Philippines), .SH (St. Helena), .ES (Spain) .TT (Trinidad and Tobago), .TV (Tuvalu), .VE (Venezuela), .WS (Western Samoa) ….

5

Why domain names are important? Domain name are important assets to business since more

effective search is done through brands, products, and services related to domain names than through a search engine.

Having the right domain name allow customers to visit a business, and this increases website traffic and business for these corporations.

Usually customers can predict the domain name related to a company or a famous mark. If the domain names does not resolve to the intended corporation, this may lead to confusion in the mind of the public and loss of revenues.

6

ICANN ICANN stands for the Internet Corporation for Assigned

Names and Numbers. ICANN is a public benefit, non-profit entity, international

organization responsible for the management and oversight of the coordination of the Internets domain name system and its unique identifiers.

ICANN was created through a Memorandum of Understanding (MoU) between the U.S. Department of Commerce and ICANN to transition management of the DNS from the U.S. government to the global community.

7

Types of Conflicts There are different conflicts that occur over domain names,and the main ones are as follows:

1)Registering a domain names identical to a trademark (cybersquatting).2)Registering a domain name confusingly similar to a Trademark (typosquatting).3)Registering a domain name to express disatisfaction with a trademark or a corporation (cyber-smearing).4) Other conflicts may arise such as : competing use, non competing

use and internationalized domain names ….

8

9

10

11

12

13

14

Resolving Domain Name Disputes

Conflicts over domain names can be resolved as follows:

1) Negotiating (may lead to transfer if the registrant agrees)2) UDRP (gTLDs and certain ccTLDs).3) Registrars domain names dispute policies (ccTLDs).4) Local courts (applying traditional trademarks laws orcases) 5) Arbitration and Mediation (in the even that both parties, agree).

15

What is the UDRP?

The UDRP is the Uniform Domain Name Dispute Resolution Policy, adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) on August 26, 1999. Domain name registrants of gTLDs are required to submit to a mandatory administrative proceeding, according to the registration agreement singed between the registrant and the registrar (entity responsible for registering the domain name).

16

Approved Dispute Resolution Providers

ICANN approved the following dispute resolution providers: 1) e-Resolution (ceased working in December 2001 for financial reasons).2) Asian Domain Name Dispute Resolution Center (ADNDRC).3) WIPO Arbitration and Mediation Center (WIPO).4) CPR Institute for Dispute Resolution (CPR). 5) National Arbitration Forum (NAF).

17

Requirements for a Remedy under the UDRP

UDRP Paragraph 4(a)

The three requirements for Complainant to obtain a

remedy:

(i) domain name is identical or confusingly similar to

Complainant’s trademark or service mark.

(ii) Registrant has no right or legitimate interest in

respect of domain name.

(iii) domain name was registered and is being used

in bad faith.

18

Examples of “Bad Faith” Circumstances indicate that defendant’s main purpose was to

sell DN to TM owner for more than the direct costs of registration

History of registering DNs to prevent TM owners from registering

Registering a DN in order to disrupt the business of a competitor

attempting to divert Internet users to Defendant’s site for commercial gain by creating confusion concerning source or sponsorship

False whois details and pornography

19

Examples of “Legitimate Interests” Pre-dispute use or demonstrable preparations to use the DN in bona fide offering of goods or services.

Defendant was commonly known by the name.

Legitimate, noncommercial or fair use of the DN without intent to misleadingly divert or tarnish.

The list is not exclusive, and the panelists decide based on the facts and circumstances of each case.

20

UDRP Advantages Mandatory procedure- contractual basis (domain names registration

agreement). No Jurisdiction problem (either the principal office of the registrar or the the

domain name holder address shown in Registrar’s who is database, see the rules of the UDRP)

Quick results (14 days within the appointment of the panelist). Low costs ($ 1500: Panelist 1000,Center 500) Direct enforcement (The registrar will enforce the outcome of the

proceedings unless the registrant file a case with a competent court within 10 business days).

language is not a problem, proceedings can be conducted in different languages (11 languages are recognized under WIPO)

No need to appoint a lawyer (can do it yourself).

21

UDRP Disadvantages No Discovery and monetary remedies. No Attorneys’ Fees Awards. Unpredictable outcomes. Inconsistent decisions. Forum shopping. Excessive Impediments to freedom of speech Too much power for trademarks owners; domain name

owners too little.

22

Improved UDRP? Disputes Assigned randomly to licensed providers. Establish an internal appellate process with every provider. add discovery system. Recognize criticism as a legitimate use under the UDRP. Define clearly what is considered “confusingly similar” and other

concepts that may cause disagreement between panelists. Broaden the scope of the UDRP to protect trade names and other

identifier (see next slide). The second WIPO process (2002) recommended to provide

protection for geographical identifiers and names and acronyms of IGOs (Not for trade names, personal names and International nonproprietary names for phamaceutical identifiers (INNs).

23

References 1. Background materials WIPO Advanced Workshop on Domain Name Dispute Resolution, Geneva, October 19 and 20, 2006. William Fisher, Conflicts over domain name, internet law program, Rio de Janeiro, Brazil, March 2003.

2. Websites - ICANN at http://www.icann.org- WIPO at http://www.wipo.int - IANNA at http://www.ianna.org

24

Thank you

25

Any questions or comments ?