Uniform Domain Name Dispute Resolution Research Articles

The procedure for resolving domain disputes

The article is devoted to a complex scientific study of the procedure for consideration and resolution of domain disputes. The article discloses the legal nature of the domain name, features of judicial and extrajudicial dispute resolution. It has been established that the subject of domain disputes is the illegal use of other people’s trademarks, commercial names, other commercial designations, and copyright objects in domain names. It has been proven that the procedure for resolving domain disputes can be judicial or extrajudicial; in the case of a judicial procedure for the protection of rights to a domain name, disputes are considered by a court, in an out-of-court case, by an arbitrator of the WIPO Mediation and Conciliation Center (or another similar structure). It has been proven that a significant problem in law enforcement is legal uncertainty regarding the legal regime of a domain name. It has been established that a domain dispute arises regarding the legality of the use of a domain name by a certain person. It is justified that a domain and a domain name are not identical concepts; a domain name is a unique name of a part of the hierarchical address space of the Internet, in relation to which domain disputes arise. It is substantiated that the determining factor for the protection of the violated right by the court is the correct identification by the plaintiff of the object of the intellectual property right, for the protection of which a case has been initiated in court, and which is reflected in the content of the domain, since in case of failure to indicate such an object, the court may refuse to satisfy the claim , because the domain itself as an object does not receive legal protection.It has been established that the out-of-court procedure for resolving domain disputes is a convenient mechanism for the prompt protection of rights to a trademark that is displayed in someone else’s domain name without the right holder’s permission and thereby creates confusion with the right holder’s trademark, providing undue influence on consumers.It has been established that the reason for the occurrence of domain disputes is: the domain name is identical or deceptively similar to the trademark to which the plaintiff has intellectual property rights; the owner of the domain name has no rights or legal interests in the domain name; such domain name is registered or used in bad faith.It has been proven that when resolving domain disputes, special methods of protecting domain name rights are used – re-delegating domain name rights to the plaintiff or canceling domain name registration.It has been established that the judicial procedure for resolving domain disputes is universal and can be applied to the protection of rights to any object of intellectual property rights that can be reflected in a domain name (it concerns not only trademarks, but also commercial names, geographical indications, copyright objects, etc.). It is justified that such an approach is expedient to apply in relation to the out-of- court procedure for resolving domain name disputes, however, the relevant provisions must be approved by ICANN, making appropriate changes to Uniform Domain Name Dispute Resolution Policy.

A practical guide to filing domain name complaints

This article first provides an overview of the background and functioning of different domain name dispute resolution procedures before providing tips and tricks for practitioners to make more efficient use of these procedures. These tips and tricks not only relate to the procedure itself but also to writing a clear and concise domain name complaint. This article is limited to alternative dispute resolution (ADR) procedures and will not discuss the case law of ordinary courts on domain names. The main focus of this article is the Uniform Domain Name Dispute Resolution Policy (UDRP), the world’s most important domain name dispute resolution policy. Given the background of the authors, who are based in the Netherlands, the UDRP is mainly compared to policies that play a role in Dutch, Benelux and European practice. Many cybercriminals cleverly use official-looking domain names that are slightly different from the official domain name (and trade mark), through which they can impersonate the trade mark owner. The scams associated with impersonations are numerous. Scammers frequently provide instructions for payment to a finance department while using email addresses purporting to relate to the manager (CEO fraud). In the Port of Rotterdam, there are many cases of so-called terminal spoofing: scammers pretend to be the owner of a tank terminal and send emails to foreign parties in which they offer oil in return for a deposit. The same domain name that is used for the email address is often linked to a website that purports to be the official website of a specific tank terminal, including pictures of the tank storage and the actual address. It often results in the actual tank terminal owner, unaware of what has happened, having to deal at the gate of the terminal with angry and deceived buyers.2

EXTRAJUDICIAL REMEDIES FOR THE RIGHT TO A DOMAIN NAME

Today, each member of the business industry in one way or another presents his company, his product or services he provides on the World Wide Web. The main purpose of the company in the internet is to create and use its own website to provide information about their product and to find a potential buyer, as well as demonstrate their advantages and how they differ from their competitors. The main purpose of registeringa specific «domain name» is to create favorable (convenient) conditions for the buyer who wanted to get acquainted with the company or its range. After all, if a domain name is associatively similar to the name of an individual company, then it will be much easier for the buyer to find the website of such a company than through a search using search engines.Business representatives do not always succeed, especially if the name (trademark, brand) of the company is widely known, or if such a company has become a «victim» of unfair competition. This creates controversy over which parties are interested in resolving as quickly and cheaply as possible.This is greatly facilitated by the work of the World Intellectual Property Organization and a number of documents, among which the leading are «Principles for Dispute Resolution on Identical Domain Names» and «Principles of Uniform Rules for Dispute Resolution on Domain Names» (UDRP), adopted by ICANN. However, their analysis, as well as the analysis of law enforcement practice, allow us to speak not only about the effectiveness, but also about certain shortcomings of the proposed ICANN procedure for resolving disputes over domain names, which entail ambiguous dispute resolution practices.The analysis of the regulation of protection of rights to the domain name is carried out with the prescriptions of the «Principles for the resolution of disputes about the same domain names» and the «Uniform Domain Name Dispute Resolution Rules» (UDRP) adopted by ICANN. An attempt is made to highlight the advantages and disadvantages of an out-of-court procedure for resolving disputes over domain names and suggested possible ways to improve such a system in Ukraine.

THE CONCEPT OF A CYBERSQUATTING AND ITS KINDS

The phenomenon of cybersquatting and its kinds are explored in the article. A cybersquatting is addressed as a civil wrongdoing. A definition of the term “cybersquatting” has been proposed. Depending on the signs that are used by cybersquatters the classification of a cybersquatting into brand, personal, sectoral, geography, copyright and typesquatting has been conducted. The outlined kinds of a cybersquatting have been addressed. Based on the research of the phenomenon of cybersquatting it is substantiated a conclusion that the implementation of the conception of the Uniform Domain Name Dispute Resolution Policy, which was made by the World Intellectual Property Organization and approved by the Internet Corporation for Assigned Names and Numbers, is the best way to fight with cybersquatting

A CONCEPT OF A BRAND CYBERSQUATTING AND WAYS TO COMBAT IT

The article presents an exploration of the phenomenon of a brand cybersquatting and ways to combat it. A definition of the term “brand cybersquatting” as a kind of a cybersquatting is proposed. The foreign and Ukrainian court practice of domain disputes resolution is addressed.The effectiveness of ways to combat a brand cybersquattingis analyzed. It is argued that a priority of trademarks over domain names and the means for fighting with a brand cybersquatting that are applied by the Administrator of a domain zone .UA are not effective. A concept of a good faith domain names use that is expressed in the Uniform Domain Name Dispute Resolution Policy is analyzed. It is substantiated a conclusion about the efficiency of implementation in the Ukrainian legislation this concept because it is an effective mechanism to combat a brand cybersquatting, using which a violation of domain names holders’ interests is excluded.

SZANSE ARBITRAŻU W ROZWIĄZYWANIU SPORÓW NA TLE DOMEN INTERNETOWYCH

The Chances of the Arbitration in the Solutions of Disputes Regarding Internet Domain NamesSummaryThe paper deals with the Polish alternative dispute resolution (ADR) for internet domain names, which was introduced in January 2003 together with the establishment of a special Court of Arbitration. The Court acts within the Polish Chamber of Informatics, Technology and Telecommunication and it is based on a procedure drawn upon the well known UDRP (Uniform Domain Name Dispute Resolution Policy). The latter is actually applied by the main international organizations, e. g. such as Worldwide Intellectual Property Organisation.The analysis focuses on the main procedural issues, such as type of conflicts that can be an object of the court examination, claims to be raised by the plaintiff, legal validity of the verdicts. Similarly to UDRP, the Polish proceedings provide only to the domain name’s cancellation or its transfer for the benefit of the entitled person. The decision rendered by the Court acquires its full juridical force only after the ascertainment of its enforceability by an ordinary civil court. This means, that theoretically each proceedings concluded with a decision of the Court of Arbitration, should be followed by a compulsory formal examination in front of an ordinary court. Due to this, the Polish ADR seems to bring more juridical safety than the above-mentioned UDRP, yet the proceedings might be in practice protracted. In addition, such „enforced” decision would possess validity in law, in respect of the establishment of all facts, which could be further used as a ground to potential claims for damages or unjustified enrichment.

A Critical and Comparative Review of auDRP and UDRP Domain Name Decisions

Domain names are simplified internet addresses which provide a shorthand way to connect to webpages on the internet. The exponential increase in the use of the internet has led to a growing number of disputes relating to the registration and use of domain names. This has also led to the development of legal and quasi‐legal rules relating to the management of domain names and domain name disputes. The Uniform Domain Name Dispute Resolution Policy (“UDRP”), which was implemented in 1999, provides the international legal framework for the resolution of domain name disputes concerning generic top‐level domains (“gTLDs”), such as “.com”. National authorities provide corresponding policies for the resolution of domain name disputes concerning country code top‐level domains (“ccTLDs”), such as “.au”. The relevant national policy governing .au domain name disputes is the .au Dispute Resolution Policy (“auDRP”), which came into force in 2002. Both the auDRP and UDRP have proven to be an effective mechanism for the quicker and cheaper resolution of domain name disputes. While there has been considerable academic discourse on the UDRP, there has been very little commentary written on the auDRP. The aim of this paper is to fill the gap in knowledge on the auDRP by providing a critical and comparative review of key decisions under both the international and Australian domain name policies.

ADR in Cyberspace: The Need to Adopt Global Alternative Dispute Resolution Mechanisms for Addressing the Challenges of Massive Online Micro-Justice

This paper discusses the potential of alternative dispute resolution mechanisms for solving Internet-related disputes and to address the challenges of Massive Online Micro-Justice, i.e. an online justice system that aims at solving a massive amount of micro Internet-related disputes affecting citizens and companies alike around the globe that are presently submitted to online platforms and decided by them. In particular, this paper discusses the challenges faced by online platforms to deal with the myriad of micro cases they are confronted with on a daily basis by reference to the massive (and ever-growing) amount of removal requests which have been submitted to Google following the (highly mediatised) confirmation by the Court of Justice of the European Union of the Right to Be De-indexed (better known under a misnomer, i.e. the Right to Be Forgotten). On this basis, this paper pleads for the development of global policies governing online alternative dispute resolution mechanisms which is critical to avoid fragmentation and which is necessary to maintain equitable access to justice in cyberspace. In this respect, this paper discusses the use of the Uniform Domain Name Dispute Resolution Policy (UDRP) as a possible source of guidance for such global dispute resolution mechanism.

Are We Getting Good Decisions by Top - Level Domain Name Dispute Resolution Providers?

Internet Corporation for Assigned Names and Numbers (ICANN) has offered unique solution to deal with disputes regarding the registration of internet domain names (so called trademark dilemma) in 1999. Uniform domain name Dispute Resolution Policy (UDRP) delimits procedural rules to solve such disputes and to create non – binding decision (binding between involved parties) which approves / rejects the transfer of the domain name to new (trademark) owner.This paper has to focus on the question whether we are getting good decisions or the decisions in similar cases are decided more or less randomly. It is necessary to focus on such question also because of the fact that ICANN is planned to be transferred to the global multi - stakeholder community this year. Is the decision making process ready for such a big change or is it easily suggestible? To try to answer this question it will be necessary to go through the history and activities of ICANN and to focus mainly on UDRP process. Comparison of the convenient trademark dilemma cases or statistics will try to show defects of the rules, which are pointing at problems not only recently but already for quite a long time.The conclusion then is to articulate possible future development and to offer some recommendations of what is necessary to pay attention to.

Disputes Resolution in “Cyber-State”: To Duello or to Arbitrate

The growing name of the cyber world demands more strict laws to be created. And these regulations will become more complex and intricate with the development of internet. The only online arbitration model shaped by the Online Dispute Resolution (ODR) society is The Uniform Domain-Name Dispute Resolution Policy (UDRP). The issues related to the domain name have been very efficiently tackled by the E-arbitration (UDRP). Social networking problems such as Control, Non Money Value dispute and the Enforcement Ability are almost similar to the problems in issues related to the domain name. In this research will study the UDRP- based legal frame work Social Network Dispute Resolution. We will also discuss the resemblances between problems related to social network and domain name and will use them in the implementation of UDRP system to solve social network issues.

Trademark Protection in Social Media: A Battle Won by Technology

Conflict and differences of platform and nature in real world and cyberspace is the basis of further issues of trademark in cyberspace (Goldman, 2005). While Internet fast development, creates more challenges to trademark protection among others using metatag or domain name tasting by cybersquatters, it also establishes technology related protection over the mark for example discouraging add grace period (AGP) (Patrick and Lonardo, 2009). Most of scholars established the fact that the emergence of social media website namely among others Youtube, Twitter and Facebook, posed more challenges as well as opportunity of with its different platform setup (Kaplan and Haenlein 2010). Infringement by username and pages, Hashtag and channel, prove that trademark infringement is too hot to handle (Strand, 2011). Social media somehow manage it ‘technology style’ in protecting trademark through username and pages verification or numbers of followers’ calculation, among other’s. The discussion by scholars went on but none yet to compare and proved that technological innovation is powerful tools for trademark protection or even it is a better one.This paper intended to find whether it is true that trademark protection in cyberspace via legal means for example, Anticybersquatting Consumer Protection Act, (ACPA) Lanham Act and Uniform Domain Name Dispute Resolution Policy (UDRP), is losing its grip as Internet itself with further innovations has created more rooms for infringement, as well as new methods of protection for trademarks. This study will provide avenue for trademark law to be revisited. Legal protections in different setting need thorough and empirical methods to suits the nature and platform. Thus may concede that handling issues in cyberspace is best left to ‘the owner of the field’. Technology expert will be enlightened as to capitalize the tools in order to maintain harmony between law and technology. It is vital to examine how social media directly and indirectly provide more avenues for trademark infringements and whether it is covered under trademark law scope available. More importantly how technology played vital role in trademark protection as it posed more challenges to the same. Comparison and contrast to domain name is the best option available to measure how law evolvement and technology involvement through innovations operates in order to protect trademark in cyberspace.

Can Alternative Dispute Resolution Mechanisms Become the Default Method for Solving International Intellectual Property Disputes?

This essay explores how the use of alternative dispute resolution (ADR) mechanisms can be promoted to solve international IP disputes. It presents the case of internet domain name dispute resolution and focus particularly on the Uniform Domain Name Dispute Resolution Policy (UDRP) and the way in which this policy has been adopted as a model by legislators. On this basis, it analyzes how, and under what conditions, other types of IP ADR systems can be developed in light of the UDRP, and will explore whether ADR systems can become the default method for solving international IP disputes.

Novel Remedies for Intellectual Property Rights Infringement Online

The paper explores the failure of traditional civil remedies, as well as newer “three strikes” and Internet filtering remedies, to tackle intellectual property rights infringement on the Internet. Although the “three strikes” and Internet filtering/blocking measures were introduced in response to inadequacy of traditional remedies, over the decade of practical applications they have not achieved significant success, as well. Principal socio-legal reasons for such failures are reviewed and analyzed. Main reasons are found to be that traditional remedies and first generation new remedies are tailored to “offline” environment. Existing remedies are more suited to traditional legal interactions, where the parties are clearly identifiable and jurisdictional collisions are well defined. The way of action of existing remedies is inherently offline. They are ill adapted to the requirements of the online environment, such as difficulty to identify anonymous parties in multiplejurisdictions, and hence, high enforcement costs, as well as legal and technological complexity. It should be noted that online environment requires swift enforcement in view of the dynamic technological change. Based on this analysis, key features of the efficient online remedy design are identified. In the second part of the paper, a case study of successful enforcement of trademark rights online is presented. Example of rare success in enforcing legal liability for infringement of intellectual property rights is the special remedy of domain name seizure and takeover, implemented through the alternative and online dispute resolution procedure – the Uniform Domain Name Dispute Resolution Policy (UDRP). Domain seizure/takeover remedy implemented through the existing UDRP system works at the supranational level and successfully operates as an online instrument dealing with trademark rights infringement in the domain names. The author considers expansion of this special remedy and the domain seizure through the UDRP to cover copyright and related rights infringement as a viable addition to the existing remedies for the rights holders to deal with the online infringements. The former (that is a special sanction of domain seizure and take-over) may be relatively easily adopted by the judiciary both as an interim measure and as a final remedy; however, this would address only part of the challenges that enforcement of intellectual property rights faces online. Only the combination of the special sanctions and the online dispute resolution mechanism, capable to enforce such sanctions, address most inadequacies of traditional offline remedies (especially high cost, slowness and complexity, competence of the dispute resolution authority, as well as risks of political and legal abuses). This may be achieved through expansion of the existing UDRP system; however, it may need an additional supranational legal framework. The paper recognizes limitations of any rights enforcement instruments online, which are predefined by the nature of the online environment – its extraterritorial nature and span over jurisdictions, which may willingly tolerate infringement of intellectual property rights. These limitations would set the limits over the effectiveness of the novel remedies. Nevertheless, the domain seizure and take-over sanction made available for other infringements of the intellectual property rights online (chiefly copyright and related rights infringement) and enforced through relatively easily expandable UDRP system would complement the existing offline remedies and would expand the enforcement instrumentary for the rights holders, thus, enabling marginalization of the most popular intellectual property rights infringements online.

Como Resolver Disputas Sobre Nomes de Domínio na Internet

ABSTRACT: The present article describes the UDRP - Uniform Domain Name Dispute Resolution Policy - the rules and procedures for which were approved in 1999. The UDRP procedure is the primary method used to resolve disputes between domain name registrants and trade or service mark holders on the internet. The article further touches on aspects of the Arbitration and Mediation Center of the World Intellectual Property Organization, and the scenario Brazil is facing with the new rules governing disputes over domain names containing the extension .br.

Reflections on the uniform domain name dispute resolution policy as it enters its second decade

On 24 October 1999, the Internet Corporation for Assigned Names and Numbers (ICANN) implemented the Uniform Domain Name Dispute Resolution Policy (UDRP) as a dispute resolution procedure for resolving domain name disputes. The UDRP has been a very popular method for resolving disputes, and since its inception the principal UDRP global dispute resolution provider – the WIPO Arbitration and Mediation Center, has administered over 20,000 proceedings under the UDRP (or UDRP-related policies). This article examines the core principles which have emerged in UDRP jurisprudence and practice, and outlines some of the major criticisms and suggestions for reform as the UDRP enters its second decade.

Trade mark law's increment through the Uniform Domain Name Dispute Resolution Policy

Legal Context: This article discusses the changes independent Internet policy is imposing upon trademark law. The argument centres on the idea that the polymorphous nature of the trademark right is slowly drifting away from the traditional notions of goodwill and consumer protection, pertinent in trademark law philosophy; instead and because of the nature of domain names, existing and new policies focus on the protection of the word, creating an anti-competitive and hostile environment for users and entrepreneurs. Key Points: This article elaborates on the thesis that the trademark right is being distorted through ICANN’s UDRP in three critical ways: by paying emphasis on the protection of words, by simplifying the confusion test and by dismissing the ‘fair use’ doctrine. Especially, in relation to the latter, the article suggests that the UDRP itself along with UDRP panels fail, on the one hand, to protect critical speech whilst, on the other, redefine the nominative fair use of the mark. Practical Significance: If traditional trademark practice centres on the idea that trademark law’s evolution occurs through incremental judicial making, this article suggests that currently trademark law interpretations are also taking place through independent UDRP panels. This creates a substantial division between offline and online trademark law interpretations, an issue that becomes clear in the case of nominative use. However, the main issue is that because of these new ‘online doctrinal approaches’ the trademark right creates an intolerable environment for new entrants and shifts the focus of the protection to the mark rather than the consumer.

New gTLDs – Pandora's Box is open

In a world with over 1.6 billion Internet users, the expansion of generic Top-Level Domains (gTLDs) continues to be a key issue for legal right holders and Internet users generally. Originally, expansion of gTLDs was largely motivated by the recognition that there is a conflict between domain names and trademark owners with similar marks, which belong to different geographical locations, or to different goods and/or services classification. This expansion has, in the past, been relativity ‘controllable’. However, in June 2008, the board of the Internet Cooperation for Assigned Names and Numbers (ICANN) approved the concept of introducing new gTLDs in unlimited numbers. This development is significant to legal right holders in many ways, and is expected to create further controversy in an unsettled area of law, that of property rights over domain names and their relationship with other legal rights. This paper reviews the manner in which ICANN is handling the expansion of gTLDs from a legal right holders' perspective. The paper will examine the application of the Uniform Domain Name Dispute Resolution Policy (UDRP), arguing that over the past 10 years the UDRP has exhibited significant inconsistencies in the making of decisions and that the issues of interpretation of the policy and the use of precedent can only be resolved by a unitary appeal procedure. ICANN's new proposal of introducing a Uniform Rapid Suspension System (URS) is still pending consideration and it is unknown at this juncture whether this will be used in conjunction with the UDRP or otherwise.

Can these things be resolved?

This is a report of a presentation on 5th July 2006 by David Tatham. It focuses on introducing the Uniform Domain Name Dispute Resolution Policy (UDRP) and on the ADR procedure of the (then) newly launched .eu domain. The first part provides an excellent introduction to lawyers who may be unaware of the UDRP being used for domain name disputes. In addition, it provides an interesting snapshot of dispute resolution in relation to the .eu domain immediately following the 2006 ‘Land Rush’. The first part begins with a discussion of the history of internet dispute resolution since the inception of the UDRP in 1999. His figures suggest that by July 2006, there had been almost 15,000 decisions relating to disputes over top-level domain names; and the number of disputes has only increased since that time. This increase is due to the overall growth in internet users, the utilization of automated...

Sealing the cracks: a proposal to update the anti-cybersquatting regime to combat advertising-based cybersquatting

Recent years have seen a resurgence in the practice of cybersquatting, and in particular cybersquatting that monetizes domain names through pay-per-click advertisements. Existing statutory and administrative anti-cybersquatting tools were not designed to cope with the advertising-based model of cybersquatting. As a result, brand owners lack effective tools to combat modern cybersquatting. (1) Where cybersquatters originally monetized their domain name portfolios by ransoming small numbers of domain names to brand owners, they now use pay-per-click advertisements spread over massive portfolios. Technological advances in the domain name system will continue to increase the opportunities for cybersquatters to expand these portfolios. (2) Existing statutory and administrative anti-cybersquatting tools are out-dated and ineffective. The Uniform Domain Name Dispute Resolution Process is procedurally incapable of coping with large portfolios of infringing domain names and substantively out of sync with national IP laws. Traditional litigation is too expensive and inefficient to offer a workable solution for brand owners. (3) Both administrative and legal remedies for cybersquatting have inherent flaws that cannot practically be remedied. A new anti-cybersquatting regime must therefore allow them to work together. The UDRP should be procedurally updated to allow limited discovery and facilitate large-scale cases, and an optional choice of law clause should be introduced to bring UDRP panel decisions more in line with national IP laws. Likewise, those laws should be revised to give explicit deference to UDRP decisions in litigation arising from the same facts as the UDRP action. Cybersquatting can injure a mark's distinctiveness and online recognition, and contextual advertisements can divert customers from the targeted brand's website. If anti-cybersquatting tools do not keep pace with cybersquatters' strategies, these problems will make it increasingly difficult for brand owners and customers to connect in the domain name system. The proposed revisions to the anti-cybersquatting regime will enable brand owners to protect their domain names more efficiently and to deter cybersquatters.

Territorialism versus Universalism: International Intellectual Property Law in the Internationalized Domain Name System

This paper explores how the present international intellectual property law can be applied to resolve the new conflicts arising from the internationalized domain name system (DNS), in which non‐Latin characters are permissible for direct use in domain names. It also analyzes the two approaches to address this issue: one approach that territorializes the rights and disputes on the borderless Internet, and another that universalizes the rights on the global medium. By presenting a comprehensive study with respect to the relevant international intellectual property law and practices, this paper attempts to research whether a balanced solution to the conflict between the legal system and the technical system could be sought out through maintaining the principle of territoriality of intellectual property protection, and it also examines the alternative procedure built in the DNS for the resolution of intellectual property controversies, namely the Uniform Domain Name Dispute Resolution Policy, and assesses whether the alternative procedure that actually supersedes the principle of territoriality is consistent with the existing international intellectual property law and interoperable with the internationalized DNS.