Domain Name Dispute Resolution

Ultimate resolution of any dispute over ownership of things is in the courts, of course. However, the international nature of domain names can present daunting obstacles to resolution through litigation. First you have to find a court with jurisdiction over at least one of the parties involved, either the domain name owner/registrant, the domain name registrar, or the administrator of the Top Level Domain (TLD) -- the dot-thing at the end of a domain name -- under which the name is registered. Then you have to find a law or set of laws on which to base a claim. Since November of 1999 the United States has had a relatively clear statute addressing the matter of domain name rights with respect to trademark rights (Anticybersquatting Consumer Protection Act), but that is not the case everywhere in the world.

Most disputes over domain names involve the dot-com, dot-org, or dot-net TLDs, because these are the most valuable and most sought after. Fortunately, the international body that administers these TLDs, the Internet Corporation for Assigned Names and Numbers (ICANN), has a clear policy regarding ownership of domain names, and that policy reflects (and in many cases influences) the theory of ownership rights that is more and more widely being written into national and local laws. ICANN enforces its Uniform Domain Name Dispute Resolution Policy (UDRP) upon its authorized registrars, who are contractually bound to follow its rules, and it provides an accessible, inexpensive, and speedy process for resolving disputes that often makes litigation unnecessary or unwise (although it does not prevent anyone from pursuing a judgment in the courts). ICANN states its UDRP this way:

The party initiating the dispute must show that

• "the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

• "the current registrant has no rights or legitimate interests in respect of the domain name; and

• "the disputed domain name has been registered and is being used in bad faith."

So that the current registrant whose right is being challenged need show that only one of those things is not true.

(Note that the policy leaves out the word "registered" in connection with "trademark or service mark." In reality, not all trademark registrations throughout the world are equally significant, and trade names, company names, and celebrity names that may not be able to be registered as trademarks or service marks still may have as much identification and recognition value with the public as any commercial brand name.)

The process under ICANN's UDRP is accessible because it is carried out over the Internet, using the mails and the fax machine only when they are necessary. The policy pointedly discourages appearances in person before the Administrative Panel deciding the dispute. The process is inexpensive because there is a set fee almost always paid by the party initiating the dispute, and the only other expenses are in preparing and delivering supporting documentation and something similar to a legal brief in support of the claim of each party. And the process is speedy in that it is designed to take place within in 42 days, and the record shows that no dispute submitted to the process has ever taken much longer than that.

The key concept of ICANN's UDRP is that trademark ownership does not give someone an automatic right to registration of the domain name incorporating the trademark. This is a necessary element of a fair policy because a number of persons and entities may have legitimate claims to a particular name -- a fact that has long been reflected in trademark law and practice throughout the world. (For example, in the U.S. there are eleven registrations of CBS, only four of which belong to the Columbia Broadcasting System.) As a result, whoever in good faith first registers and uses, or prepares to use, a domain name for a legitimate purpose should not have to surrender the domain to anyone arriving later with an allegation of more rights in the name. The dispute policy defines a "legitimate interest" in a domain name as:

• "(i) before any notice to you of the dispute, [you established] your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

• "(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or

• "(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

And the policy further limits "bad faith" as meaning:

• "(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

• "(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

• "(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

• (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

As simple and direct as the ICANN policy is, there are still grey areas to be refereed by disinterested third parties, and ICANN's dispute resolution procedure provides as good an opportunity for that as one might hope for. In general, what the policy means in practical terms to individuals and businesses acting in good faith, is illustrated as follows (hypothetically, because The Goodyear Tire & Rubber Company does own the goodyear.com domain used in this illustration):

If your name has been Mike Goodyear all your life, and fifteen years ago you started Goodyear's Plumbing and Heating in a storefront on the south side of Bloomington, Minnesota, and your kid who spends too much time at the computer talked you into putting up a Web site for your plumbing and heating business, and so to encourage something productive from the kid and have an excuse to spend more time with her and her interests you registered goodyear-dot-com and let her build a site promoting your heating and plumbing services in Bloomington, and you never used phrases like "the tire people" to promote your business, and you never used the word "rubber" in the site except to mention those rubber faucet washers the installation of which has paid your light bills for the past fifteen years, and then Goodyear Tire and Rubber comes along a week later and wants to register goodyear-dot-com for their famous tires, they're out of luck.

That's the theory, and it's only fair. ICANN's dispute resolution policy is or is becoming the model for other TLD administrators, Internet regulating agencies, legislatures, and courts for dealing with the difficult relationship between Internet domain names and trademarks.