The table below gives an overview of three of the most common procedures used in the resolution of domain name disputes.
Domain name disputes traditionally involve issues of trade mark
infringement and passing-off, although they can involve other IP causes of action. Only trade marks and passing-off have been addressed in this paper.
1. ICANN (Internet Corporation for Assigned Names & Numbers) UDRP (Uniform Dispute Resolution Policy) | 2. NOMINET (UK Internet Names Association) | 3. UK court proceedings | |
What sort of domain names are covered by the three different procedures? | Generic TLD's (top level domains): .net .org Country code TLD's: .ascensionisland.ag (Antigua and Barbude) .as (American Samoa) .bs (Bahamas) .cy (Cyprus) .fj (Fiji) .gt (Guatemala) .na (Namibia) .nu (Niue) .ph (Philippines) .sh (St Helena) .tt (Trinidad and Tobago) .tv (Tuvalu) .ve (Venezuela) .ws (Western Samoa) | .co.uk .org.uk .ltd.uk .plc.uk .net.uk .gov.uk | Broadly speaking, all domain names may be challenged if the Registrant: · domiciled in the UK; · the website is directed to UK users; or · damage occurs in the UK. |
How is the procedure instigated and how does it work? | A completed complaint form is submitted either through WIPO (World Intellectual Property Organisation), NAF (National Arbitration Forum) or Eresolution. This must set out factual and legal grounds for the complaint, and any supporting evidence must be attached. A response must be filed within 20 days. If this does not occur, a Panel will still be appointed. Evidence submitted in reply to the response is subject to the Panel's discretion. The Panel's decision is due within 14 days of its appointment. | A written request is made to Nominet stating why Nominet is required to act. Nominet contacts the Registrant to discuss the complaint and how it can be resolved. Nominet decides whether to cancel or suspend the domain name. If either party is dissatisfied with Nominet's decision, they can refer the matter to an expert. However, Nominet is not obliged to accept the expert's decision. | A Claim Form & Particulars of Claim are issued, usually in the High Court. |
What are the legal tests? | The Panel must consider whether: · the domain name is identical or confusingly similar to a trade mark in which the Complainant has rights; · the Respondent has no rights or legitimate interest in respect of the domain name; and · the domain name has been registered and is being used in bad faith. Examples of "bad faith" are: · registration with an intent to profit; · a pattern of hoarding domain names with no use of them coupled with an offer to sell; · an intention to disrupt business of a competitor; and · an intention to divert business and cause confusion. | Nominet will consider: · if the basis on which the domain name was registered has changed (eg the organisation making the application no longer exists); · if the domain name is being used in a manner likely to cause confusion to Internet users; · if legal action has been commenced regarding use of the domain name; or · if Nominet is of the opinion that one of the above events is likely to occur. | Passing-off The Claimant must prove: · it has a reputation and goodwill in the domain name; · the registrant of the domain name has made a misrepresentation which causes confusion or is likely to cause confusion; and · the misrepresentation results in damage or likely damage to the Claimant.
The Claimant must prove: · the Domain name is identical to a trade mark and is used in respect of identical goods/services; OR
· the domain name is identical/similar to a trade mark and is used in respect of identical/similar goods/services; AND · a likelihood of confusion exists on the part of the public in relation to the domain name and trade mark. |
What are the outcomes? | Once the complaint has been filed, the domain name cannot be transferred. If the complaint is successful, the domain name is cancelled or transferred. | Suspension or cancellation. | An immediate injunction and/or prohibition against the use or transfer of the domain name is granted. Damages and legal costs are awarded. |
How long does the procedure take? | Approximately 2 months from the date of filing the complaint (depending on the complexity of the case). | Approximately 3-6 months depending on the speed of the parties and the response of Nominet/ the expert. | An injunction can take up to 6 weeks.
A trial may take between 6 and 12 months. |
Who decides the case? | Either a single panellist or 3 panellists (the complainant/respondent can choose). Panellists are usually IP specialists and are from different countries. | Nominet and/or an expert who is usually an IP specialist. | A Chancery or Patents Court Judge. |
Can I appeal? | No. However, the parties have 14 days to contest the decision by instituting legal proceedings. The domain name cannot be transferred or cancelled pending resolution of the court proceedings. A Complainant is not precluded from bringing the same case again. | No. A Complainant is not precluded from bringing the same case again. | Yes. |
What are the costs? | In order to file a complaint it costs $1,500 if 1 panellist is to be used, or $3,000 if 3 panellists are used. | There are no fixed costs. An hourly rate applies if an expert is instructed. | A fee of £620 is required to issue proceedings. |
Advantages? | Quick and cheap compared to court proceedings. Once a complaint is filed, the domain name cannot be transferred, therefore filing a complaint has the same effect as obtaining an injunction. Jurisdiction issues do not arise. | Informality of procedure. Jurisdiction issues do not arise. | Definitive enforceable judgment. Damages and legal costs can be awarded. |
Disadvantages? | Inconsistency of decisions which lead to uncertainty as to how a case will be decided. | There are no prescribed time limits with this procedure. Nominet is not obliged to accept an expert's decision and very rarely cancels or suspends a domain name. Nominet has no power to transfer a domain name, unless the Registrant consents or by virtue of a Court Order. A domain name can still be transferred pending resolution of a dispute. Nominet will not make a judgment as to whether one party infringes another party's rights. | The procedure is not as quick as ICANN, unless an application is made for an injunction and/or summary judgment. Procedure can be costly depending on the complexity of issues. A domain name can still be transferred unless an immediate injunction is obtained. |
What type of dispute is this procedure suitable for? | Cybersquatting cases. If there is a general dispute about entitlement to the domain name and/or the domain is generic, succeeding under ICANN may be difficult. If the Registrant has some legitimate interest in the domain name and/or there is no evidence of bad faith and/or there is a dispute as to the facts then court proceedings are more appropriate. | Where each party thinks it has a legitimate interest to the domain name, the matter can be resolved amicably and relatively cheaply through Nominet. | All cases. Cybersquatting cases can be dealt with effectively by way of injunction or summary judgment application. Where each party believes it has a legitimate interest, the court can explore the issues. Cases in which the domain name is not covered by the ICANN policy. |
