WIPO / ICANN Adjudication for Domain Name Disputes

Posted by on Nov 19, 2013

After a great deal of hue and cry, the US government asked the World IP Organization (WIPO) to come up with a way to regulate internet domain name disputes. After much debate, the idea of a non-profit corporation with a mandate to regulate domain names came about.  This corporation was called ICANN: Internet Corporation for Assigned Names & Numbers.

ICANN has steadily shed any pretense at oversight or external control.  The US Department of Commerce has repeatedly given it more power and less oversight.  In October, 1999, ICANN approved the Uniform Domain Name Dispute Resolution Policy (“The Policy.”)  This administrative procedure is mandatory in the case of domain name disputes.

Basically, if you ever apply to register a domain name, this policy is incorporated by reference and you must agree, via adhesion contract, to abide by it.  The Policy is primarily concerned with trademarked domain names, which are the most valuable, and the most fought over.

The Basics

Registrants must undergo a mandatory proceeding before a provider if there is a dispute that involves trademarks.  The complainant must show each of these things to initiate a proceeding:

i) your domain name is identical or confusingly similar to a trademark or service mark in which complainant has rights.

ii) you have no rights or legitimate interests in respect of the domain name.

iii) your domain name has been registered and is being used in bad faith.

The rules then go on to describe non-exhaustive guidelines for establishing bad faith, and are summarized here (using our own terminology) for brevity’s sake:

a)  cybersquatting – holding the domain name for ransom by registering it for the purpose of forcing the complainant to pay you a large sum of money for it; also selling it to a direct competitor qualifies.

b)  prevention – you demonstrate a pattern of registering domain names to prevent trademark holders from using them.

c)  harassment – your goal is to disrupt the business of a competitor.

d)  confusion – your goal is to attract page views and clicks (and profit off same) by creating a likelihood of confusion with the complainant’s mark.

Safe Harbors

You can protect yourself by demonstrating any of these things:

a) before hearing about the dispute you used or were preparing to use the domain for the bona fide offering of goods and services.

b)  you (as individual, business, or other entity) have been commonly known by the domain name even if you have no trademark or service mark rights in same.

c) you are making legitimate and noncommercial or fair use of the domain name, without intent of commercial gain to misleadingly divert consumers or to tarnish the trademark at issue.

Other Issues

The ICANN has an approved list of Providers for hearing disputes.  The actual dispute will be heard by an administrative panel of one person.  You, the defendant, may opt to expand the panel to three people.  Multiple disputes may be consolidated.  The complainant pays the cost of the dispute, unless you elect a three-person panel, in which case all fees shall be split.  The sole remedies are cancellation of the domain name or forced assignment of it to the complainant (no money damages.)  Any dispute may be brought before a competent court prior to or following the administrative panel hearing, and the panel will defer to the judgment of the court.  Significantly, if you provide notice of a court proceeding within 10 days of a panel decision, the panel will stay (delay) their judgment until the court case gets resolved.  This is important because it prevents frivolously brought or wrongly decided disputes from shutting down valuable websites.