Journal of Intellectual Property Rights Vol 9, September 2004, pp 424-439

Domain Name Disputes and Evaluation of The ICANN’s Uniform 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. 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 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 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. In some cases, a function as a trademark and was entitled to famous name will be registered by another; equal protection as a trademark20; thirdly, in other cases, a mark that is similar to16, or the two marks were identical, save for the a commonly mistyped version of a famous word, INDIA, and there was every name will be used. The dispute might arise possibility of an Internet user being between direct competitors, between those confused that both domain names came in similar lines of business, or between those from a common source. This was who simply wish to indulge in ‘passing off’ particularly so since Yahoo! Inc itself had of the name’s fame17. used regional names after the word Yahoo!; In the Indian case of Yahoo! Inc v fourthly, the disclaimer used by Akash Akash Arora & Anr18, the Delhi High Arora was of no relevance because, due to Court dealt with a matter of a similar the nature of Internet use, the defendants nature. The case involved a petition by appropriation of the plaintiff’s mark as a Yahoo! Inc, seeking injunctive relief domain name and home page address could against the defendants who were not be adequately communicated by a attempting to use the domain name disclaimer; and lastly, dictionary words yahooindia.com for Internet related could attract distinctiveness. services. The defendants contended that In a similar case before the Bombay High firstly, there could be no passing off Court, in the matter of Rediff plaintiff’s services because the service Communication Limited v Cyberbooth, rendered by them could not be said to be A.I.R. 2000 Bom. 27, the plaintiff had filed goods within the meaning of the Trade a case of passing off against the defendant, and Merchandise Marks Act, 1958 ,which who had adopted the domain name only dealt with goods and not services, radiff.com as part of their trading style, and secondly, Yahoo was a dictionary which was alleged to be deceptively similar 428 J INTELLEC PROP RIGHTS, SEPTEMBER 2004

to the domain name of the plaintiff, However, the Arbitration Center dismissed rediff.com. The Court findings in favour of the case, as both the parties had legitimate the plaintiff held that since both, the plaintiff interest in the domain name and the and the defendant had a common field of complainant had failed to prove “bad faith” activity, both operated on the net, and both on the part of the defendant. provided information of a similar nature, In a similar matter, which came up and both offered a chat line therefore, there before the Delhi High Court, in the is every possibility of an Internet user case of Online India Capital Co Pvt Ltd getting confused and deceived in believing & Anr v Dimensions Corporate23, the that both domain names belong to one plaintiffs had filed a case of passing off common source and connection although against the defendant, who had adopted the two belong to two different persons. The the domain name mutualfundindia.com, Court was satisfied that the defendants have which was alleged to be deceptively adopted the domain name radiff.com with similar to the plaintiffs’ domain name, the intention to trade on the plaintiff’s mutualfundsindia.com. However, the reputation and accordingly the defendant Court relying upon few other cases24, was prohibited from using the said domain dismissed the plaintiffs’ contentions, as name. the plaintiffs had failed to prove that their domain name had acquired a secondary Cyber Twins meaning, which is a prima facie When both the domain name holder and requirement to grant a protection to a the challenger have a legitimate claim to a descriptive name. domain name then they are known as cyber twins. The cases involving cyber twins are Reverse Domain Name Hijacking the most difficult ones, because, but for the In certain cases, the complainant may try domain name dispute, the law of trademark to over extend the scope of their famous and unfair competition might otherwise name, and thereby might indulge in ‘reverse allow each party to enjoy concurrent use of domain name hijacking (RDNH)’. RDNH is the name21. an attempt by a trademark holder, in bad In the case of Indian Farmers Fertiliser faith, to take control of a domain name from Cooperation Ltd v International Foodstuffs another, who is not in breach of trademark Co22, before the WIPO Arbitration and laws, and who has a legitimate interest in Mediation Center, the dispute was relating the name. The Rules for the Uniform to the domain name iffco.com. The Domain Name Dispute Resolution Policy defendants had registered the domain name (UDRP) make explicit reference to RDNH. iffco.com and had been using it with good Rule 15(e) of the UDRP provides that where faith. The complainant had domain names a complaint was brought in bad faith, such related to iffco.com and had a legitimate as in an attempt at RDNH, or primarily to interest in the domain name. The harass the domain name registrant (which complainant had alleged the defendant of many would consider RDNH), then the diverting the net surfers to its own website. panel is required to “declare in its decision GHOSH: DOMAIN NAME DISPUTES AND EVALUATION OF ICANN’S UDRP 429

that the complaint was brought in bad faith ⎯Thirdly, the speed at which an Internet and constitutes an abuse of the site can be created, and the ease at which administrative proceeding.” In some of the it can be reached, may make the need to cases before the panel, bad faith is clear, resolve a dispute urgent. such as where the complainant’s behaviour ⎯Fourthly, the cost of registering a is plainly malicious and the claim brought domain name is extremely low in 25 without any basis . However, this will not comparison with the economic damage be the norm, and while the UDRP lists that it may cause, or the cost of factors illustrative of bad faith on the part of litigation28. a registrant to assist identifying bad faith on their part, no such factors are listed as Because of these factors, since 1995 indicating bad faith on the part of the there has been available an alternative, complainant in the RDNH context. specially designed dispute resolution However, this slight lacuna has been policy (DRP) for resolving domain name disputes [at least as regards generic TLDs overcome by panels, which have stated that 29 bad faith in this context is bringing a claim (gTLDs)] that is intended to be time and despite actual knowledge of a legitimate cost efficient in comparison with Court right or lack of bad faith on the part of the proceedings. But over the time, there was registrant26, or where it should have been a call for a new entity to manage the domain name system30. In response to obvious that the complaint had no real 31 prospect of success27. such concerns, ICANN was formed , and WIPO was entrusted with developing UDRP. Analysis of UDRP With the approval of other Member States of the United Nations, WIPO The Background Domain name disputes have a number of undertook this process, issuing its characteristics that make traditional Court findings to ICANN in April 1999 in its proceedings unsuitable for their resolution: report “The Management of Internet Names and Addresses: Intellectual ⎯Firstly, the Internet being a global system, Property Issues: Final Report of the there is no settled rule as to where WIPO Internet Domain Name Process”32. jurisdiction lies, so that a single case may After a series of resolutions and involve several different municipal Courts conferences, ICANN adopted the Final asserting jurisdiction, with the result that a Report and approved the UDRP33 and the whole series of actions may have to be accompanying Rules for the UDRP34 in brought in relation to trademarks in different October 199935. The UDRP improves countries. upon the NSI policies in three significant respects: ⎯Secondly, a similar volume of Court proceedings may be required if the same ⎯First, the domain name is not placed name has been registered in multiple ‘on hold’ or affected in any way until the ccTLDs. end of proceedings36. 430 J INTELLEC PROP RIGHTS, SEPTEMBER 2004

⎯Second, there is a far greater burden on ⎯eResolution Consortium (eRes), complainants, who must show both that Canada (Note: not accepting proceedings the registrant lacks any legitimate commenced after 30 November 2001); interests in the name, and is using the and registered name in bad faith37. ⎯The Asian Domain Name Dispute ⎯Third, the policy is wider in that it is Resolution Centre (ADNDRC), Beijing, applicable where the domain name is and Hong Kong (approved effective 28 ‘confusingly similar’ to the relevant mark February 2002). (and not just where it is identical), and applies to service marks as well as All these dispute resolution providers trademarks38. follow the ICANN accredited UDRP in dispute resolution. WIPO has been, by far Evaluation the most popular dispute resolution provider The UDRP is available for complaints since the introduction of the UDRP. regarding any domain name within the Proceedings are initiated by the ‘.com’, ‘.net’ and ‘.org’ TLDs (along with complainant, by filing a complaint with the seven new gTLDs). This is one of the ICANN-approved dispute mandatory, ICANN requires all approved resolution service providers. The registrars dealing in those TLDs to complainant can opt for either a one- incorporate the policy in its agreement person panel or a three-person panel. The with domain name registrants39. Of these provider selects the panellist in one- three TLDs, particularly ‘.com’, accounts person panel42. Both the respondent and for the vast majority of all domain names complainant have discretion in the choice registered40, this makes the UDRP by far of panellists for three-person panels, but the most important single domain name- the complainant still chooses the related procedure available worldwide. provider43. Once the provider verifies that Domain name holders are required to the complaint complies with basic UDRP submit to a mandatory administrative requirements, it sends the complaint to proceeding directed by one of the the domain name registrant, who must approved dispute resolution providers. respond within twenty days. The The dispute resolution providers that have respondent has the discretion of opting been approved by ICANN are41: for a three-person panel if the complainant has requested a one-person ⎯WIPO, Geneva (approved effective panel, but the respondent will be required from 1 December 1999); to pay one-half of the applicable fees for ⎯National Arbitration Forum (NAF), the three-person panel (otherwise the Minneapolis, USA(approved effective complainant is fully responsible for the from 13 December 1999); fee). Upon receiving the registrant’s ⎯Centre for Public Resources Institute response, the provider has five days to for Dispute Resolution (CPRIDR), USA appoint an arbitration panel of one or (approved effective from 22 May 2000); three members, which must issue a GHOSH: DOMAIN NAME DISPUTES AND EVALUATION OF ICANN’S UDRP 431

decision within two weeks. The domain each of the existence of a legitimate holder has ten days to appeal an adverse interest47 and the presence of bad faith48. decision to a court of mutual jurisdic- tion (either the jurisdiction of the registrar Bias Towards Trademark Holders or the jurisdiction of the domain holder, The UDRP has proven to be extremely whichever is selected by the popular with trademark holders. Within complainant). The remedies available to a 10 months of its availability (from complainant are limited to the transfer or December 1999), more than 1000 cancellation of the domain name and no decisions had been published, and by monetary damages are awarded. May 2002 (25 months) that figure had Proceedings are then conducted and the reached 4750, concerning 8200 domain 49 decision is made by an appointed expert, names . However, the policy has not or by a panel of three such experts where proven to be so popular with registrants either party so requests. and some commentators. This is because, As the context requires, the proceedings while the Policy has generally been 50 are quick and inexpensive in comparison properly applied , at times, all three of with traditional methods. There is no the substantive elements of the Policy discovery, hearing or trial. The decision is have been confused, conflated, or made on the basis of the submissions of the ignored. Some decisions have been made complainant and registrant/respondent, on grounds that do little short of violence which are limited in scope44. Decisions must to the language of the requirements. In be published online45. The typical every instance, the flawed application of proceedings, from complaint to decision, the policy has favoured the complainant. last less than 45 days. Average costs are The clearest example of the erosion of the around $1500 (to be paid by the first element of the policy can be seen in complainant). relation to the gripe sites.

To succeed under the UDRP, a com- The general approach towards gripe plainant must show three elements46: sites was established in Wal-Mart Stores

(i) that the domain name is identical or Inc v Walsucks51, concerning the domain confusingly similar to a trademark or name www.walmartcanadasucks.com. service mark of the complainant; Despite noting that “users, including (ii) that the registrant has no rights or potential customers of complainant, are legitimate interests in the domain not likely to conclude that complainant is name; and the sponsor of the identified websites”, (iii) that the registrant has registered and the panel found the first element of a used the name in bad faith. claim under the UDRP, i.e., confusing similarity, on the quite astonishing basis It is the second and third elements that that “it is likely that such users will distinguish the UDRP from trademark choose to visit the sites, if only to satisfy law. The Policy includes a non- their curiosity”. This is an illogical exhaustive list of factors indicative of reasoning, and is also extending the rights 432 J INTELLEC PROP RIGHTS, SEPTEMBER 2004

of trademark holders to uses that are not will wish to use the most complainant confusingly similar. friendly, dispute resolution provider. Perhaps, the proper place for this Further, studies have shown that WIPO55, dispute to be resolved was a Court of the leading provider, which is a body of law and not the UDRP. The correct the United Nations and whose very approach was displayed in CompUSA reason for being is to promote the Management v Customized Computer protection of intellectual property rights, Training52. The CompUSA case through its influence, rewards the dispute concerned protest sites at the domain resolution providers, with those findings names www.stopcompusa.com and in favour of complainants, by being given www.bancompusa.com. The panel in that more cases (and so more fees), while the case held : more registrant-friendly panellists are “There is absolutely no confusion or starved of them for fear of deterring similarity, much less identity, between business56. The harsh reality of this the domain names and the trade- ‘forum-shopping’ was demonstrated by marks held by complainant. No one the closure of eResolution, the most could confuse ‘COMPUSA’ or anyone registrant-friendly of the 4 original (sic) of the registered trademarks, providers57. and ‘STOPCOMPUSA.COM’ and ‘BANCOMPUSA.COM’ … a large Vague Definition company, faced with criticism from an The UDRP was created to establish a individual, has attempted to use this uniform means of administering domain process and procedure to stifle that name conflicts. It is difficult to provide criticism. If the actions and conduct consistent standards, however, when of respondent are wrongful, then its key terms are both vague and complainant has access to the Courts of unfamiliar and perhaps intentionally so, law, where the truthfulness of the given the variety of existing trademark allegations made by respondent can be laws and concepts. Several reported challenged. Use of this forum by compla- decisions have revealed that different inant in this context is inappropriate and panellists have given seriously conflic- constitutes ‘cyberbullying’53”. ting interpretations of these terms. Some critics are even of the opinion Consequently, even after 7,324 decisions, that by allowing complainants to choose domain name registrants are still the provider and since, the complainants somewhat unclear as to which types of also pay the panellist’s fees54, panellists uses would constitute ‘bad faith’ as have a strong incentive to develop a opposed to ‘rights or legitimate interests’. reputation for deciding cases in favour of Both parties have relied on the complainants. It would be pertinent to ambiguities of the guidelines to assert note that providers publish statistics as to their respective contentions. win/lose records, serving as indirect One unresolved issue is how broadly advertising to trademark holders, who the term ‘use’ can be construed within the GHOSH: DOMAIN NAME DISPUTES AND EVALUATION OF ICANN’S UDRP 433

context of ‘bad faith’. The panel in decisions, although the legal effect of Telstra Corporation Limited v Nuclear these decisions remains unclear64. The Marshmallows58, determined that regis- case of Weber-Stephen Products Co v tration alone may be sufficient to Armitage Hardware & Building Supply65 establish bad faith in particular involved a trademark lawsuit brought by circumstances, despite the lack of any a manufacturer against a retailer other overt action. However, in Loblaws who had registered webergrills.com and Inc v Yogeninternational59, the panel various other domain names incor- found that inactive use was insufficient porating the manufacturer’s trademarks. evidence of ‘bad faith’ and allowed the The manufacturer had initiated a UDRP respondent to retain the name. It noted proceeding one day prior to filing the that the domain name may have been lawsuit. The retailer asked the Court to registered in bad faith, but concluded that declare the UDRP proceeding non- the requisite bad faith usage had not been binding and to stay the Court case established by the display of a standard pending UDRP resolution. Relying ‘under construction’ page60. largely upon the language of the UDRP

Appeals to Court itself, the Weber court noted that the In terms of external constraints, policy contemplates the possibility of although the policy is designed to be soft- parallel legal proceedings, and that it does law, supplementing rather than replacing not intend UDRP panel decisions to be national Courts, in practice it is much binding on Courts. The Court held that it ‘harder’, as the chances of Courts actually was not bound by the outcome of UDRP reviewing the decisions are in practice proceedings, and it granted the requested very limited61. The opportunities for stay. appeal to a Court from a panel decision are limited: the ten-day time limit Generic Names effectively meaning only those registrants Generic words generally are not with legal representation during the initial protected under trademark law due to the proceedings will have the time to do so, commonness of the word and the interest and whether they will have any cause of in preserving the word’s utility in action is doubtful (although in the US, multiple contexts. Although, the word ACPA specifically provides for such an may be incorporated into a trademark action)62. Domain name registrants have with another word or phrase, the generic taken advantage of the right to seek word itself is normally considered to be judicial review in a small, but significant in public domain. In the case of number of cases. The empirical evidence registration of domain names, generic is that only 73 of the nearly 7,324 UDRP words are normally allowed and in case decisions to date have been challenged in of a dispute, the first person to register a municipal Court63. the word is considered to have a better At least two US Courts thus far have title over others. The panel reiterated held that they are not bound by UDRP such reasoning in CRS Technology Corp 434 J INTELLEC PROP RIGHTS, SEPTEMBER 2004

v Condenet, Inc66, (concierge.com), dec- involving a variety of claims and factual laring that the first person or entity to assertions. Administrative panels gene- register the domain name should prevail rally prohibit in-person hearings, in circumstances such as these where the including teleconferences, videocon- domain name is a generic word. ferences, and web conferences. The Administrative panels do not process includes no testimony, cross- consistently apply trademark law to examination, briefing, or argument; generic words, however in J Crew Int’l v moreover, the arbitration grants no power crew.com, (crew.com)67, the panel split in for discovery aside from the ability to a decision over rights to the generic word request additional documents. Rebuttals ‘crew’ in response to a complaint by J are limited to the discretion of the Crew, a leading retailer of men’s and panellists. The UDRP has no mechanism women’s apparel. The respondent had for evidentiary review; therefore, facts, registered or acquired more than 50 such as trademark rights, may be merely domain names consisting of trademarks alleged. Photocopies of trademark or other generic words primarily for the certificates, copies of advertisements, or purpose of selling, renting, or otherwise letterhead are usually attached to a transferring the names. The majority of complaint as exhibits, but the documents the panel determined that the domain need not be authenticated. More difficulty name, crew.com is identical to the arises when the complainant owns a trademark ‘crew’. It concluded that, given common-law mark and cannot provide the respondent’s speculative behaviour any registration at all. Often the panellist and awareness of the trademark, the must make a determination on the validity domain name should be transferred to the or existence of alleged trademark rights complainant. The dissenting panellist despite the fact that many panellists have contended that the majority seems to no particular expertise in trademark law. assume that a trademark owner has some The panel in Document Technologies sort of God-given right to use the Inc v International Electronic Communi- trademark to the exclusion of others and cations Inc (htmlease.com) noted the lim- warned that the majority’s decision ited capacity of UDRP proceedings68. “creates a dangerous and unauthorized Responding to the complainant’s conten- situation whereby the registration and use tion that cross-examination of the respon- of generic words as domains can be dent’s evidence would prove bad faith prevented by trademark owners wishing registration and use, the panel said that to own their generic trademarks in gross.” such a matter should be resolved in “a forum, like a United States Court, that Procedure permits for a more probing, searing Although efficiency is often lauded as search for the truth. This proceeding is one of the benefits of the UDRP, the not conducive to such credibility deter- proceeding’s truncated nature may not be minations given the lack of discovery suitable for relatively complex cases and, in the normal course, the lack of live GHOSH: DOMAIN NAME DISPUTES AND EVALUATION OF ICANN’S UDRP 435

testimony.” The minimal evidentiary re- both parties’ jurisdictional laws altoge- quirements of UDRP proceedings render ther. A complainant from New Zealand the system difficult to evaluate. with offices in London challenged a registration made in Australia by an Choice of the Law Australian citizen. The panellist, who was The UDRP provides little guidance as from the United States, declared that the to which laws should prevail when two UDRP specifies “no mandatory body of parties belong to different jurisdictions law to follow in making a decision” and with contradictory rules. The only explicit that he would therefore apply US law: “I reference in the rules to choice of law determine that it is not feasible for any questions can be found in provision 15(a): given arbitrator or panel to be familiar “A panel shall decide a complaint on the with all bodies of trademark and unfair basis of the statements and documents trade law in all countries reached by the submitted and in accordance with the Internet, and that it is therefore sufficient policy, these rules and any rules and for this proceeding that I am reasonably principles of law that it deems familiar with US trademark law.” applicable”69. As national trademark laws enforce different standards for such uses Solutions to the Problem as parody or criticism, panellists may be Many of the current problems with the left with the burden of trying to balance UDRP would be resolved if panels were one nation’s laws and interests against given less discretion, which would be another’s. achieved if the policy were clearer. The Several cases demonstrate the UDRP needs to be amended to clarify ambiguity of the choice of law question. the position relating to geographical In Excelentisimo Ayuntamiento de indicators and personal names (that they Barcelona v Barcelona.com Inc are beyond the scope of the policy); gripe (barcelona.com)70, a conflict existed sites (that criticism is a legitimate between US law’s limits on protection of interest, and that the concept of geographical names and Spanish law’s tarnishment is not suitable for the UDRP) provision for such protection. The panel and bad faith (that it is a separate element ruled to transfer the domain name from that the complainant must prove). Future the US travel agent registrant to the City problems, and in particular inconsistent Government of Barcelona, declaring that decisions, could be avoided if an appeal the holder “is definitely taking advantage level was added to the system. If the of the normal confusion of the public decisions of an appeal panel served as which by using a Barcelona route in binding precedent for all panels, problems Internet would normally expect to reach of interpretation could be swiftly some official body or representative of resolved. The idea of an appeal level was the city of Barcelona itself.” In Tourism initially rejected as unnecessary due to and Corporate Automation Ltd v TSI Ltd the availability of appeal to Courts, and (tourplan.com)71, the panellist dismissed too complicated for the streamlined 436 J INTELLEC PROP RIGHTS, SEPTEMBER 2004

procedure72. However, the appeal to ⎯it is biased in favour of trademark national Courts option has proven holders, ineffective, and an appeal level would not ⎯it provides practically no privacy greatly complicate the process if it were protection for the name, address and kept to a similar timescale as the initial phone no. of registrants, 73 procedure , and if appeals were limited ⎯it creates an enormous potential for to resolving inconsistencies and questions reverse domain name hijacking, thereby 74 of interpretation . Even with an internal threatening registrants to surrender their appeals system, the external constraint of domain names, appeals to national courts need to be ⎯it provides little guidance as to which made more practical. The decision of the laws should prevail when two parties panel could still take effect within 10 belong to different jurisdictions, days, unless the registrant notifies the ⎯it provides for minimal evidentiary provider of his intention to bring a Court requirements for the proceedings, thereby action. The registrant could then have rendering the system difficult to evaluate, perhaps 30 days to file in Court. The ⎯it fails to protect fundamental free-speech power of providers to control the interests including parody and criticism of allocation of cases to particular panellists corporations,and should be eliminated. Instead, each ⎯its key terms are both vague and provider should be made to operate a unfamiliar. ‘cab-rank’ rule, where panellists are allocated cases in a certain order, subject Although, the UDRP has shortcomings, to availability and conflicts of interest75. some more acute than others, inconsistent This would require a certain amount of and sometimes uninformed decisions, policing by ICANN, but would not be vague terminology, a significant market time-consuming, requiring a simple check gap among providers suggesting of published decisions to ensure that all inequalities of service, and insufficient panellists were hearing approximately the data to review the justice of decisions or same number of cases. process, nevertheless, it has done a commendable job. Conclusion and Suggestions After a thorough review of the existing It is an undisputed fact that UDRP case laws and well researched documents on serves an important function to resolve the topic, it is proposed that the following domain name disputes in an out-of-court suggestions may be considered: proceeding that can be implemented on ⎯Demand advanced payments before an international basis. The question is registration of a domain name, thus whether the process is as fair and effec- greatly increasing the cost of mass tive as it should be, and astonishingly, the domain name speculation, answer is somewhat elusive. The UDRP ⎯Provide more precise definitions and has certain flaws in its present form and it provide more examples for terms such as can be demarcated as follows: bad faith and legitimate interests, GHOSH: DOMAIN NAME DISPUTES AND EVALUATION OF ICANN’S UDRP 437

⎯Recommend a choice of law provision 10 See InterNIC, Domain Name Instructions, to guide disputes among complainants http://www.rs.internic.net/reg/domain-name.html 11 See ICANN, Uniform Domain Name Dispute and respondents of diverse jurisdictions, Resolution Policy, [hereinafter UDRP] Rule ⎯Provide guidelines for evidentiary 4(b)(i). See also Nathenson, supra note 10, at documentation, especially for common 925 law mark owners, 12 See Joshua Quittner, Billions registered, Wired, (Oct., 1994), 50 [Quittner had regis- ⎯Provide guidelines for the refusal of tered mcdonalds.com in his name and had cases. demanded a huge ransom from McDonalds Corp. for releasing the name] 13 For example, Procter & Gamble has registered References over 150 domain names, i.e., diarrhea.com, 1 Kenneth Sutherlin Dueker, Note, Trademark badbreath.com, laundry.com, etc. See Your- law lost in cyberspace: Trademark protection NameHere.com - A Trendy Address for a for Internet addresses, Harvard Journal of Hefty Price, Cleveland Plain Dealer, Law & Technology, 9 ,1996, 483 (Oct. 1996), 6 2 Intermatic Inc v Toeppen, 947 F Supp. at 14 [1999] F.S.R. 1 1229. See also Adam Chase, A premier on re- 15 (1915) 32 RPC 273 at 283 cent domain name disputes, Virginia Journal 16 See Comp. Exam’r Agency v Juris Inc, No. of Law & Technology, 3 (Spring 1998), 3, 96-0213-WMB (CTx), 1996 WL 376600 http://vjolt.student.virginia.edu (C.D. Cal. May 22, 1996). See also Levi 3 See Thomas v Network Solutions Inc, 176 F. Strauss Files Suit over use of Levis.com as 3d 500, 502 (1999) Internet Domain Name, Intellectual Property 4 See id, at 503. See also Daniel Kalosieh, Net- Litigation Reporter, (Apr. 1996), 18 work Solutions and the alleged privatisation 17 See, e.g., Toys “R” Us v Akkaoui, 40 U.S.P.Q. of the domain name system, West Virginia 2d (BNA) 1836 (N.D. Cal. Oct. 1996) Journal of Law & Technology, 5 (Dec. 2000), 18 I.A. No. 10115/1998 in Suit No. 2469/1998 13, http://www.wvu.edu/~wvjolt/Arch/Kalos /Kalos.htm 19 Reddaway v Banham [1896] AC 199, Ellora 5 The Trade Marks Act, Sec. 11(1) (1999) Industries v Banarsi Dass & Ors [1981] 6 See ICANN, Uniform Domain Name Dispute PTC 46 Resolution Policy , http:// www.icann.org/udrp/ 20 Cardservice International Inc McGee 42 udrp-policy-24oct99.htm USPQ 2d 1850 7 Count Host, Distribution of top level domain 21 See also Sun Microsystems v Astro-Med, 39 names, http://www.isc.org/ds/WWW-200301/ U.S.P.Q. 2d (BNA) 1144 (N.D. Cal. June 14, dist-bynum.html 1996) 8 Nathenson Ira S, Showdown at the Domain 22 (2001) WIPO Case No. D2001-1110 (if- name Corall: Property rights and personal ju- fco.com) risdiction over squatters, poachers and other 23 2000 PTC 396 parasites, University of Pittsburg Law Review, 24 In this case the Court relied upon Office 58, 1997, 911, 918 Cleaning Services Ltd v Westminister Window 9 There are currently 243 ccTLDs. For a current and General Cleaners Ltd., LXIII RPC 39; J listing of ccTLDs, see IANA listing, R Kapoor v Micronix India, 1994 Supp.(3) http://www.iana.org/in-notes/iana/ assign- S.C.C. 215 and drew a distinction with the ments/country-codes. For a listing of agencies case of Yahoo Inc Akash Arora, 1999 PTC and dispute policies for each country’s (19) 201, where the domain name involved ccTLD, see Geoffrey Gussis, Global Top- was not descriptive in nature Level Domian Dispute Resolution Policies, 25 Smart Design LLC v Carolyn Hughes, (2000) http://www.digidem.com/legal/domain.html WIPO Case No. D2000-0993 438 J INTELLEC PROP RIGHTS, SEPTEMBER 2004

26 Goldline International v Gold Line, (2000) gTLDs; NetNames, DomainStats (2002), WIPO Case No. D2000-1151; Nestle v Pro http://www.domainstats.com Fiducia, (2000) WIPO Case No. D2001-0916; 41 Approved Providers for Uniform Domain Deutsche Welle v DiamondWare Ltd, (2001) Name Dispute Resolution Policy, http://www. WIPO Case No. D2000-1202 .org/udrp/approvedproviders.htm 27 Smart Design v Hughes, (2000) WIPO Case 42 See, e.g., WIPO, Domain Name Panellists No. D2000-0993; Sydney Opera House v (2002), http://arbiter.wipo.int/domains/panel/ Trilynx, (2000) WIPO Case No. D2000-1224; panelists.html GLB Serviços Interativos S A v Ultimate 43 See UDRP Rules, 3(b)(iv), 5(b)(iv) Search Inc (aka Ult. Search Inc) (2002) 44 WIPO limits submissions to 5000 words. See WIPO Case No. D2002-0189 WIPO, Supplemental Rules for UDRP (1999), 28 WIPO, The Management of Internet Names http://arbiter.wipo.int/domains/rules/ supple- and Addresses: Intellectual Property Issues: mental.html Final Report of the WIPO Internet Domain 45 See UDRP Rules, 16(b) Name Process, para. 132(i)-(iv). (1999), 46 See UDRP Rule, 4(a) http://wipo2.wipo.int/process1/report/finalrep 47 See UDRP Rule, 4(c) ort.html 48 See UDRP Rule, 4(b) 29 The first ccTLD dispute resolution policy was 49 See ICANN, Statistical summary of introduced by Nominet (the ccTLD registry proceedings under UDRP, 2002, http://www. for the UK) in April 1997. See also E Taylor, icannorg/udrp/proceedings-stat.htm Keeping Your Good Name, Business Net- works (Aug./Sept. 2001), 38 50 Badgeley R, Improving ICANN in ten easy 30 Walker L, ICANN’s Uniform Domain Dis- steps, University of Illinois Journal of Law, pute Resolution Policy, Berkeley Technology Technology &Policy, 2001, 109-12

Law Journal, 15, 2000, 289, 296-297 51 (2000) WIPO Case No. D2000-0477 31 See Stewart I, The Best Laid Plans, Federal 52 (2000) NAF Case No. FA95082 Communication Law Journal, 53, 2001, 509, 53 Supra note 51 512; see ICANN, About ICANN, (2001), 54 In single-panellist cases, respondents may http://www.icann.org/general/abouticann.htm elect to have a three-person panel, but as they 32 WIPO, ‘First WIPO Internet Domain then have to split the (increased) costs with Name Process: Archive’ (1999), the complainant, few do so, and less than 10% http://wipo2.wipo.int/process1.htm of decisions are made by three-person 33 http://www.icann.org/dndr/udrp/policy.htm panels; M Geist, Fair.com? (2001), 34 http://www.icann.org/dndr/udrp/uniform- http://aix1.uottawa.ca/ ~geist/geistudrp.pdf rules.htm 55 See WIPO, General Information (2001), 35 See ICANN, Timeline for the Formulation http://www.wipo.int/aboutwipo/en/index.html and Implementation of the Uniform Domain- 56 See Geist M, Fundamentally Fair.com? Name Dispute Resolution Policy, (2002), (2002), http://aix1.uottawa.ca/~geist/fairup- http://www.icann.org/udrp/udrp-schedule.htm date.pdf; Mueller M, Rough Justice (2000), 36 The variation on the UDRP for the Belgium http://dcc.syr.edu/roughjustice.pdf ccTLD includes this element, which surely 57 See Geist, id [It has been found that com- invites abuse in the same way as NSI’s poli- plainants won 82% with WIPO and 83% with cies did NAF; but only 63% with eResolution. As a 37 See UDRP Rule 4(a)(ii),(iii) result, WIPO and NAF received 279 new 38 See UDRP Rule 4(a)(i) cases between them in Feb 2001, while 39 See ICANN, UDRP: General Information eResolution received only 3] (2002), http://www.icann. org/udrp.htm 58 (telstra.org) WIPO Case No. D2000- 40 It is difficult to obtain accurate domain 0003 (commenced Jan 12, 2000), name data, but one estimate is that of 30 mil- http://arbiter.wipo.int/domains/decisions/html/ lion domain names, 27 million are d2000-0003.html [The complainant was Tel- GHOSH: DOMAIN NAME DISPUTES AND EVALUATION OF ICANN’S UDRP 439

stra Corporation Limited, the largest company 67 J Crew Int’l v crew.com, WIPO Case No. listed on the Australian stock exchange, and D2000-0054 (commenced Feb. 16, 2000), the respondent was Nuclear Marshmallows, http://arbiter.wipo.int/domains/decisions/html an unregistered business name of an unidenti- /d2000-0054.html fiable business entity with an Australian ad- 68 Document Technologies Inc v International dress] Electronic Communications Inc (htmlease. 59 presidentschoicesocks.com, eResolution Case com) WIPO Case No. D2000-0270 (com- No. AF-0164 (commenced Apr. 3, 2000), menced April 17, 2000), http://arbiter.wipo. http://www.eresolution.ca/services/dnd/decisi int/domains/decisions/html/d2000-0270.htm ons/0164.htm 69 ICANN, Rules for Uniform Domain Name 60 The panel distinguished its opinion from Tel- Dispute Resolution Policy, http://www.icann. stra in that the complainant did not deliber- org/udrp/udrp-rules-24oct99.htm ately conceal contact information or register the complainant’s actual mark (“President’s 70 Excelentisimo Ayuntamiento de Barcelona v Choice” as opposed to “President’s Choice Barcelona.com Inc, WIPO Case No. D2000- Socks”) 0505 (commenced June 9, 2000), 61 See Helfer L and Dinwoodie G, Designing http://arbiter.wipo.int/domains/decisions/html Non-National Systems: The Case of the /d2000-0505.html. UDRP, William & Mary Law Review, 43, 71 Tourism and Corporate Automation Ltd v TSI 2001 141, 201-210 Ltd (tourplan.com) AF-0096 (commenced 62 See id, at 205 Feb. 7, 2000), http://www.eresolution.ca/ ser- 63 Jones P, The UDRP-Court Challenge vices/dnd/decisions/0096.htm. Database (2002) UDRPlaw.net, http://www. 72 WIPO, The Management of Internet Names udrplaw.net/UDRPappeals. htm and Addresses: Intellectual Property Issues: 64 Sorkin David E, Judicial Review of ICANN Final Report of the WIPO Internet Domain Name Process, (1999), http://wipo2.wipo.int/ Domain Name Dispute Decisions, 18 SANTA process1/report/finalreport.html 167. 221 CLARA COMP. & HIGH TECH. L J 35 (2001) 65 Weber-Stephen Prods Co v Armitage Hard- 73 Gey P, Bad Faith Under ICANN’s UDRP, ware & Bldg Supply, 54 U.S.P.Q.2d 1766 European Intellectual Property Review, 23, (N.D. Ill. 2000). See Weber-Stephen 2001, 507, 520 [The author suggests that an Prods Co v Armitage Hardware, No D2000- appeal would add 2 months at most] 0187 (WIPO May 11, 2000), http://arbiter. 74 See Bernstein D, Domain name dispute reso- wipo.int/domains/decisions/html/2000/ lution: A model for the future? (2000), d2000-0187.html http://arbiter.wipo.int/events/conferences/2000/ 66 CRS Technology Corp v Condenet Inc presentations/bernstein/doc.html (concierge.com), Arb Forum Case No. 75 See Nominet.uk, The Dispute Resolution Ser- FA0093547 (commenced Feb. 3, 2000), vice, (2002), http://www.nominet.org.uk/ drs/ http://www.arbforum.com/domains/decisions/ basic-guide.pdf,m [This is the system oper- 93547.html ated by the UK ccTLD]