January 2008 IP Alert Resolving Domain Name Disputes: A Primer I. Introduction A few years ago, if a child searching for information about Hannah Montana accidentally visited the website Disneychanel.com (as opposed to DisneyChannel.com), the child would be disappointed. If the child’s parent wanted to investigate family-friendly programming and went to parentstelevisioncouncil.com, the parent would not find the information sought (but rather would be directed to a website of a targeted program instead). If that person wanted information about a luxury sports car and went to porshe.com (as opposed to Porsche.com) or wanted to find a luxury handbag and went to LuisVuitton.com (as opposed to LouisVuitton.com), the person would not find the expected high quality sites. Instead these web travelers were being directed to sites where enterprising but not necessarily scrupulous entities awaited. The companies behind the valid websites faced lost revenues, and tarnishing of their trademarks and goodwill as consumers spent money on such “typo domains.” However today, if those domains are accessed, individuals will either be automatically linked to the appropriate website, or the sites will display a “not found” notice with sufficient information to direct individuals to the appropriate website. The companies behind the valid websites no longer need to be as concerned with imposters, because they have learned to assertively protect their brands online. But no business with an image or a brand to protect can afford to let down its guard for very long. Danger lurks in every corner of the Internet. With the explosion of Internet use and the burgeoning presence of commercial entities online in the past 15 years, it is not surprising that innumerable disputes have erupted over domain names. While the technologies supporting the Internet are sophisticated and complex, procedures for registering domain names are remarkably simple and inexpensive. It is largely a first-come, first-served system. A sophisticated, well-funded enterprise is not needed to register a domain name. A high school student without a job could be as dangerous as a multibillion-dollar competitor. Anyone can register a “dot-com” domain name not currently in use for as little as $6.95 a year. Many companies eager to enhance their image and facilitate operations by launching a website have discovered their most obvious choice of domain name taken by another – often by a cybersquatter, an enterprising “investor” who preemptively amasses names in hopes of profiting down the road, or by a typosquatter, an entity seeking to capitalize on the innocent mistakes of Internet users who fail to accurately type in the domain name for the site they wish to visit. Other companies have discovered their bottom lines and goodwill jeopardized by sites with similar sounding names – sites to which their customers are often misdirected. It was not always clear where companies victimized by such conduct could turn. But new laws, universal dispute resolution policies and forums have brought a semblance of 0.AlertJan08 order to the growing battlefield over domain names. It is essential to grasp these developments, if one is to avoid the perils of cyberpiracy, or defend against a cybersquatting claim. II. Birth of the Internet and Domain Names The system of registering domain names for websites in use today was designed by University of Wisconsin researchers in the 1980s. By the 1990s, Internet use exploded in the commercial sector. A domain name is simply an address. It is an alias for the long IP or Internet protocol string of numbers – where web pages are located and e-mail is directed. However, unlike the name of your street or town, a domain name can be chosen by the addressee. In Internet lexicon, the letters after the “dot,” such as “.com,” “.edu,” and “.gov,” are termed “top- level” domain names, while the name directly to the left of the dot is called a “second-level” domain name. The Internet Corporation for Assigned Names and Numbers (ICANN) is the organization responsible for the global coordination of the domain name system. Until December 1999, Network Solutions, Inc. was the sole registrar overseeing the registration of second-level domain names. By 2000, ICANN had accredited several more registrars, but they all followed Network Solutions’ general first-come, first- served, no-questions-asked policy for selecting domain names. It was not long before the inevitable happened. Companies eager to build a presence on the web discovered that the most logical domain name for them to use – their company or product name – was owned by someone else. Where the company and the website owner were at cross-purposes with conflicting values, litigation often ensued. Litigation also arose when the entity holding the domain name appeared to be merely “parking” it to collect revenues or otherwise exploit the name. Example: When Hasbro Toys tried to register the domain name Candyland.com, it was too late. The name was registered to an adult entertainment provider. Hasbro ultimately sued and won rights to the name. III. Uniform Domain Name Dispute Resolution Policy (UDRP) In order to address the growing number of conflicts between owners of domain names and those claiming a legitimate interest in the domain name, a procedure was born to address such disputes, regardless of the geographic location of the parties. Administered by ICANN, UDRP establishes how disputes over domain name registrations are resolved in the global top-level domains (.biz, .com, .info, .name, .net, .org and .aero, .coop, and .museum.). When Internet users register a name in one of these domains, they are required to sign a Registration Agreement in which they agree to abide by the UDRP terms. Under UDRP, owners of trademarks, whether registered or not, may file complaints with an accredited resolution service provider. Registration with WHOIS, a database of registered domain names, is mandatory, and the entry of false information can be construed by the courts or the ADR neutral as evidence of bad faith. 2 0.AlertJan08 a. Elements of UDRP Claim In order to have the offending name canceled, suspended or transferred, the claimant must establish: 1. That he has a legally recognized trademark in a name that is identical or confusingly similar to the domain name; 2. That the current registrant of the domain name has no legitimate rights in the name; 3. Some evidence of bad faith or abuse. The UDRP does not apply to personal names, unless such names are protected by trademark law. The World Intellectual Property Organization (WIPO), a United Nations agency, has become internationally recognized as the leading ADR forum for domain name disputes. Resolving a domain name dispute through WIPO is much faster than litigation in the courts. From filing the claim to decision normally takes about two months with many of the procedures conducted online. The cost is considerably lower as well. For resolution of a dispute involving up to five domain names, with a single panelist, the current cost is $1,500; for three panelists, $4,000. For six to ten domain names, the cost increases to $2,000 for a case involving a sole panelist to $5,000 for a case involving three panelists. Unlike in litigation, there are no damages awarded, and no injunctive relief is available. Rather, if the complainant prevails, the domain name will be canceled, or transferred to the complainant. If the claim is denied, the respondent may keep the domain name. Under UDRP, a WIPO decision may be appealed to the courts, although such appeals are uncommon. While the domain name may be kept by the original owner, this does not permit the owner to use the domain as he or she desires. Trademark law still prevents the owner from using the domain in a manner that conflicts with the rights of the trademark holder. For example, while the domain name owner of Sweeps.com was able to keep the domain (and use it in connection with sweepstakes and other games) (See WIPO Decision Case No. D2001-0031), the owner would probably not be able to change the use of his domain to sell vacuum cleaners, which would interfere with the complainant’s trademark rights in the mark “Sweeps” for retail services selling vacuum cleaners. b. Other Arbitration Forums Other currently operational ICANN accredited dispute resolution forums are the Asian Domain Name Dispute Resolution Centre (ADNDRC), with offices in Beijing, Hong Kong and Seoul, and the National Arbitration Forum. The National Arbitration Forum is a private arbitration service that conducts many of the domain name disputes involving U.S.-based complainants. It has helped resolve thousands of domain name disputes since approved by ICANN in 1999 – disputes involving such well-known parties as Google, Dell and Hillary Clinton. 3 0.AlertJan08 c. Country Code Top-Level Domains A country code top-level domain (ccTLD) is a two letter, Internet top-level domain generally used or reserved for a country or a dependent territory. These domains do not generally fall within the scope of WIPO’s function, but rather are within the realm of the Internet Assigned Numbers Authority (IANA), which is currently contracted to ICANN. IANA is responsible for determining an appropriate trustee for each ccTLD, and administration and control is then delegated to that entity, which is responsible for the policies and operation of the domain. Individual ccTLDs have varying requirements and fees for registering subdomains (e.g., some may require a local presence - the Canadian (ca) and German (de) domains – while others may have open registration - the Tuvalu (tv) domain, which has been used often by the entertainment industry for television-related domains). While WIPO controls the UDRP procedure for many top-level domains, each of the ccTLDs have their own independent authorities dealing with such disputes (e.g., Czech Arbitration Court, Centro risoluzione dispute domini and MFSD Srl.