White SW Computer Law Intellectual Property, Information Technology & Telecommunications Newsletter

What do Venus and Serena Williams, Julia Roberts, Madonna and Louis Vuitton Malletier have in common. They have used an effective domain name resolution policy to their advantage. Have you?

Domain name registries with an effective dispute resolution policy assist their customers by providing an alternative approach to domain name disputes.

You should check the relevant policy before registering a domain name to assess the procedures that must be followed if someone wants to challenge your domain name ownership. If you are going to spend a lot of money developing and publishing a website, you do not want another party to be able to easily obtain an order that you surrender your domain name to them.

Accredited registrars for the .com, .net and .org domains require their customers to accept the ICANN Uniform Domain Name Dispute Resolution Policy ( “the Policy” ), which sets out the grounds on which complaints may be initiated and the relief available and ICANN's Rules for the Uniform Dispute Resolution Policy, which outline the procedures the parties are to follow.

Under the Policy, a mandatory “administrative proceeding” must be conducted before an approved dispute resolution service provider if it is alleged that:

• the domain name is identical or confusingly similar to a trade or service mark in which the complainant has rights;
• the registrant has no rights or legitimate interests in that domain name; and
• the domain name has been registered and used in bad faith.

Orders may be made that the domain name registration be cancelled or transferred to the party challenging the domain name registration, if these matters are proved.

The party challenging the domain name registration must establish that the registration was made in bad faith by proving, amongst other things:

• the domain name owner has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the party challenging the domain name registration who is the owner of the corresponding trade mark or to their competitor, for an amount in excess of their costs directly related to the domain name; or
• the domain name owner registered the domain name in order to prevent the owner of the trade mark from using their trade mark as a domain name, if the domain name owner has engaged in a pattern of such conduct; or
• the domain name owner registered the domain name primarily for the purpose of disrupting the business of a competitor; or
• by using the domain name, the domain name owner has intentionally attempted to attract, for commercial gain, Internet users to the web site or another on-line location, by creating a likelihood of confusion with an existing domain name.

Any of the following, amongst other things, may negate bad faith:

• use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services, before any notice of the dispute was received; or
• the party being challenged was commonly known by the domain name, even if they had not acquired trade mark rights; or
• the party being challenged is making a legitimate non-commercial or fair use of the domain name, without intent for: commercial gain, or misleadingly diverting consumers, or to tarnishing the trade mark at issue.

The Policy provides for a fast and cost-effective decision making process, which will normally take about 5 weeks. The steps involved are:

• The dispute resolution provider forwards the complaint to the domain name owner within 3 days of receipt.
• The domain name owner then has 20 days (may be extended in exceptional cases) in which to prepare its response.
• After the 20 day period, an administrative panel is appointed by the dispute resolution provider. The panel may consist of one (the default position) or three members, at the request of either party.
• Unless there are exceptional circumstances, the final decision must be made within 14 days of the appointment of the panel. The decision is to be made on the basis of the complaint, the response and any rules and principles of law that the panel deems applicable. A hearing at which representations are made in person will only be held in exceptional circumstances.
• Written reasons for the decision are prepared and sent to the parties as well as being posted on a website operated by the dispute resolution service provider.

There are currently four approved dispute resolution service providers and the fees payable for them to act in a dispute concerning a single domain name, range from US$950 to US$2,000 for a decision by a single member panel and from US$2,500 to US$4,500 for a three member panel. The party challenging the domain name registration must bear these costs, except where the domain name owner elects to have a three-member panel in which case the domain name owner must pay half.