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Journal of Intellectual Property Rights Vol 9, September 2004, pp 424-439 Domain Name Disputes and Evaluation of The ICANN’s Uniform Domain Name Dispute Resolution Policy Sourabh Ghosh* W B National University of Juridical Sciences, LB-12, Sector- III, Salt Lake City, Kolkata- 700 098 Received 1 December 2003, revised 22 July 2004 The proliferation of the Internet has led to an explosion in the number of registered domain names. With the ‘.com’ burst, there has been an increase in the number of domain name dis- putes leading to an anarchy in this special branch of intellectual property. ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) is an international dispute resolution proce- dure that enables trademark holders to challenge the registrant of an Internet domain name, bring the name to binding arbitration and, if the challenge is successful, gain control of the name. The policy was defined in October 1999 and the first case was decided in December 1999. Since then, UDRP has gone a long way in resolving domain name disputes. However, an analysis of the decided cases under the UDRP regime tells a different story. The present paper critically analyses some of those decided cases and also highlights the lacunae in the UDRP and also provides some suggestions for the improvement of UDRP. Keywords: Domain names, UDRP, ICANN, cyber squatters, cyber twins, cyber parasites The phenomenal growth of the Internet as accessible computers actually read a a commercial medium has brought about series of Internet Protocol (IP) numbers a new set of concerns in the realm of rather than domain names3. Because these intellectual property1. As the Internet numbers are random and difficult grows in prominence as a venue for to remember, the US Government business, the Courts will be called upon developed a system which links each IP to apply traditional legal principles to number to a specific domain name4. This new avenues of commerce. Domain name system is commonly referred to as the disputes present such cases2. domain name system. The proliferation of the Internet has led The Indian Trademark law, as to an explosion in the number of embodied in the Trademarks Act, 1999, registered domain names - those trendy allows concurrent use of the same ‘.com’ web addresses that have all but trademark by multiple parties, provided transformed modern business. However, such use does not create a likelihood of it is interesting to note that Internet- consumer confusion5. On the Internet, however, concurrent use of the same _____________ 6 *Email: [email protected] name is precluded . This restriction has GHOSH: DOMAIN NAME DISPUTES AND EVALUATION OF ICANN’S UDRP 425 led to a spate of disputes between domain of domain names. Instead, domain name is a name holders, trademark owners, and proxy for the IP address, which is like a private individuals. According to the telephone number, although there is no logi- latest available information (as of January cal correspondence between the IP number 2003), the estimated number of users with and the domain name8. When logging onto registered domain names is 171.6 million the Internet through a ‘server’, the server throughout the world. Roughly 30 % of interprets the domain name into its corre- registered domain names have ‘.net’ (61.9 sponding IP address. Thus, a domain name million), around 24 % have ‘.com’ (40.5 such as search.msn.co.in, should map onto million) and around 1 % have ‘.org’ (1.11 an IP address such as 207.46.176.53. This is million) as top level domain. The called the domain name system. remaining 40 %, or about seventy million domain names, can be divided into 250 Classification of Domain Names different types throughout the world7. Domain names are divided into hierar- There are many cases of domain name chies. A specific domain name can be ‘pirates’ or ‘squatters’, who hold a do- divided into a top-level domain (TLD); a main name for ransom. In yet other cases, second level domain (SLD) and a sub- the parties might be mere ‘twins’, both domain (SD). having a legitimate right to use the same Using law.harvard.edu as an example, the name in different areas or contexts. From general template for domain names is as this stems the problem of ‘reverse domain follows: name hijacking’. www. law. harvard. edu rd nd st 3 2 1 What are Domain Names? SD SLD TLD A domain name is the Internet equivalent of a telephone number or address. For Again, top-level domains can be instance, the domain name for the Harvard classified into generic and country code University is www.harvard.edu. To send an TLDs. The top-level of the hierarchy e-mail to the Department of Law of appears after the last dot (‘.’) in a domain Harvard, one would have to enter name. In harvard.edu, the top level [email protected] into an e-mail domain name is ‘.edu’. Among the programme, where law is the e-mail various TLDs the ‘.com’ name is the most account, @ is a sign literally meaning “at”, common TLD name, and is used to and harvard.edu is the domain name. In indicate that the domain name is owned essence, it is like telling the software: send by a commercial enterprise. Other e-mail to the Department of Law at the common top-level domain names include domain harvard.edu ‘.org’ (for non-profit organizations), ‘.net’ (for network and Internet related Domain Name System organizations), ‘.edu’ (for colleges and Machines communicating over the Inter- universities), and ‘.gov’ (for government net, however, do not actually ‘talk’ in terms entities). 426 J INTELLEC PROP RIGHTS, SEPTEMBER 2004 In addition to these generic domain domain names have assumed much the names, a top-level domain name same role in virtual space, as trademarks in corresponding to a two-letter country code real space. These factors have fuelled the of ISO 3166 has been assigned to every drive for domain names and thereby, country9. For instance, ‘.in’ indicates a resulting in the consequential disputes. domain in India, and ‘.fr’ indicates a French domain. Domain Name Disputes Domain name disputes tend to fall into Domain Name Registration four categories: (i) cyber squatters, (ii) cyber Unlike country code top-level domain parasites, (iii) cyber twins, and (iv) reverse names, which are issued by authorities in domain name hijacking. each country, generic top-level domains are issued by Registrars, which are accredited Cyber Squatters by Internet Corporation for Assigned Names The term, cyber squatter, refers to and Numbers (ICANN), a non-profit someone who has speculatively registered organization, which administers and is or has acquired the domain name primarily responsible for IP address space allocation, for the purpose of selling, renting, or protocol parameter assignment, domain otherwise transferring the domain name name system management and the root registration to the complainant, who is the server system management. Currently, there owner of the trademark or service mark or are 157 such Registrars around the globe. to a competitor of that complainant, for Until April 1999, Network Solutions Inc valuable consideration in excess of the was the only authority, which could issue documented out-of-pocket costs directly domain names for the ‘.com’, ‘.net’. ‘.edu’, related to the domain name11. Sometimes ‘.gov’, etc., generic TLDs. Currently, it parties register names expecting to auction costs $100 for an initial two years of use, them off to the highest bidder. This practice with $50 for each additional year. The has led to the emergence of domain name domain name is limited to twenty-six brokers12. Yet other squatters indulge in characters including the TLD, but the use of insatiable activities, eating up all names that a shorter, and more user-friendly name is are even remotely related to their business to recommended10. preempt other squatters13. In the case of British Telecommuni- 14 Comments cations v One in a Million , the As a species of intellectual property defendants had registered as domain created by the digital age, domain names are names, a number of well-known trade most widely known and discussed. Unlike names, associated with large telephone numbers, domain names ending corporations, including sainsburys.com, in ‘.com’ are unique for the entire world. marksandspencer.com, and britishtele- They are easy to remember and use, and it is com.com, with which they had no precisely for this reason that they have connection. They then offered them to the assumed a key role in e-commerce. Thus companies associated with each name for GHOSH: DOMAIN NAME DISPUTES AND EVALUATION OF ICANN’S UDRP 427 an amount, much more than they had paid word which was not distinctive and since for them. The Court of Appeal findings the defendants has been using a for the plaintiff, traced the origins of disclaimer, there could be no chance of passing off back to the 16th century and deception and therefore no passing off. quoted A G Spalding & Bros v A W The Court treated the matter as one of Gamage Ltd15: “passing off” and concluded that “Nobody has any right to represent his appropriation of ‘yahoo’ name by the goods as the goods of somebody else. It is defendants justified, bringing of this action also sometimes stated in the proposition and thereby granted an injunction against that nobody has the right to pass off his the defendants. The Court gave the goods as the goods of somebody else.” following reasoning; firstly, there were several cases where services had been Cyber Parasites included with the scope of passing off. Like cyber squatters, cyber parasites also Accordingly, services rendered had come to expect to gain financially; however, unlike be recognized for an action in passing off19; squatters, such gain is expected through the secondly, a domain name served the same use of the domain name.

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