Ever since the 1980s, when the Domain name system was introduced, opportunistic entrepreneurs have conducted a profitable trade in domain names – a domain name being the alpha-numeric string that follows the ‘@’ in an email address and the ‘www’ in a web address.
This article provides an update on domain name complaints and valuable tips for both would-be complainants and respondents to complaints.
Monetising domain names is commonly conducted in either, or both, of two ways:
- selling the domain name at a profit; and
- linking it to a parking page featuring advertising links that generate pay-per-click income for the domain name registrant and the web host.
Naturally, the domain names that command the highest prices are those most in demand. These fall into two broad categories: those that feature the name or trade mark of another, and those that for some other reason are likely to attract Internet users eg geographical names, dictionary words or desirable acronyms.
During the 1990s it became apparent that people were deliberately registering third parties’ trade marks as domain names with a view to selling them to the trade mark owners at a substantial profit. This was becoming a serious problem: registering domain names is quick and cheap, whereas enforcing intellectual property rights is not. The courts provided a satisfactory forum for some (see, for example, British Telecommunications Plc & ors v One In A Million Ltd & ors  which involved domain names such as bt.org, j-sainsbury.com and marksandspencer.com), but the number of potential cases was vast, litigation was expensive, and tracing the identity and whereabouts of the domain name registrants was often difficult and sometimes impossible. Further, even when registrants could be located, the jurisdiction they resided in may not have constituted a convenient forum.
An alternative to litigation needed to be found and in 1998 the US government, with the approval of the member states of the World Intellectual Property Organisation (WIPO), proposed that WIPO investigate this and other issues, and produce a report. The Final Report of the WIPO Internet Domain Name Process, published 30 April 1999, made various recommendations.1 One of these was that, when alleged to have been guilty of ‘bad faith, abusive registration of domain names that violate trade mark rights (“cybersquatting” in popular terminology)’, domain name holders should be required to submit to a dispute resolution policy and procedure (see sub-para (v) of the executive summary of the Final Report). This recommendation led to the introduction later that year of the Uniform Domain Name Dispute Resolution Policy (UDRP).
All domain name registrants in the generic, top-level domains (gTLDs), such as ‘.com’, ‘net’ and ‘.org’, automatically sign up to the UDRP when entering into registration agreements with their registrars. On a procedurally compliant complaint being lodged with an accredited UDRP service provider (of which there are currently four, one being WIPO) alleging that:
- the domain name in issue is identical or confusingly similar to a trade mark in which the complainant has rights;
- the registrant has no rights or legitimate interests in respect of the domain name; and
- the domain name was registered and is being used in bad faith
the dispute resolution process commences.The registrar ‘locks’ the domain name pending completion of the process. The service provider then notifies the registrant, giving it the opportunity to respond to the complaint, and appoints an independent panellist from its panel to adjudicate the dispute (or three panellists, if either of the parties opts for a three-person panel). The panellist(s) may dismiss or suspend the complaint, or order transfer or cancellation of the domain name, following which the registrant has 10 days to apply to court for suspension of the order. If it does so, the registrar will not execute the panellist’s order pending resolution of the litigation.
The UDRP has proved phenomenally successful, with WIPO administering over 21,000 disputes since 1999. Disputes are generally dealt with in two to three months, service provider fees range from about $1,500 to $4,500, and, because of the guidance available on the WIPO website, parties are often able to conduct the process without legal representation. In the main, country code top-level domain (ccTLD) registries have either adopted the UDRP lock, stock and barrel or varied it to suit their own circumstances.
From a domain name panellist’s perspective, perhaps the most astonishing feature of the process is the ease with which complainants manage to fall short when it comes to the drafting of complaints. This is not a reflection of the professional competence of the draftsman, but rather of their ability or willingness to comply with the very simple formalities. This is all the more extraordinary given the substantial guidance to be found on the various service providers’ websites, including template complaints/responses, guidance notes, and indexed and searchable published decisions. One suspects that where these failings can be laid at the door of the complainant’s legal representative, it is because the work, relatively unremunerative on a time basis, does not warrant the time of a senior fee-earner and is not properly supervised. Or it may be that it is regarded as being at the trivial end of the IP lawyer’s spectrum, so is not properly studied or understood.
The two main policies affecting UK lawyers and their clients are the UDRP, which covers all the gTLDs (and many of the ccTLDs having generic value such as ‘.co’ (Colombia) and ‘.tv’ (Tuvalu)) and the Nominet Dispute Resolution Service (DRS), which covers ‘.uk’.
Because the Nominet DRS takes much of its wording from the UDRP, it is sometimes assumed to be more or less the same. However, it differs, both procedurally and substantively, in many significant respects. Procedurally, for example, the Nominet process incorporates mediation and reply stages, and makes provision for appeals, none of which is included in the UDRP. Substantively, there are a number of differences, the most significant being that, while under the Nominet process abusive use of a domain name can lead to transfer to the complainant, under the UDRP a panellist will generally not order transfer unless the domain name was also registered in bad faith, although this is currently a matter of debate (see below). Another significant difference is that, whereas the UDRP is expressly designed to benefit trade mark rights holders, the Nominet process aims to benefit rights owners of all descriptions, including those holding contractual rights in respect of the domain name in issue.
When considering whether or not to file a domain name complaint, one should have a clear idea of the limitations of these policies, eg success will result, at best, in transfer of the domain name; it will not stop the registrant registering the same name with minor variations such as the introduction of a hyphen or the addition of another word. In The Chancellor Masters and Scholars of the University of Oxford v DR Seagle , involving an Australian registrant of oxford-university.com, Oxford University filed a complaint with WIPO and succeeded; however, its joy was short-lived because the registrant, calling himself ‘Mr Oxford University’, proceeded to register hundreds of variations of the names of Oxford colleges in all the gTLDs. The only recourse in these circumstances is to commence proceedings in the registrant’s home jurisdiction and obtain an injunction in relation to future conduct – but would it be worth it?
A consequence of obtaining a domain name transfer, whether by way of a DRS or litigation, is that, in order to avoid the name being snapped up again, the registration must be constantly renewed. For many years, domainers (those who trade in domain names) have used software to track the use of favoured names in search engines and the dates when domain name registrations featuring those names lapse, and other software to automatically snap up the lapsed names (see Red De Los Ferrocarriles v Ox90 ). In seeking to avoid this, some major brand owners have ended up with a massive (and growing) portfolio of otherwise unwanted domain names.
For major brand owners in particular, a sensible domain name policy for deciding which registrations one needs to take action against and which names one needs to register is crucial. Does one really need to chase up typosquatters (those registering mis-spellings of trade marks)? Sometimes it may make sense, but sometimes it may not. The important thing is to have a clear idea of the criteria to apply to achieve a sensible commercial result.
In considering how to proceed (and certainly before filing a complaint under one of the DRS policies) it is crucial to avail oneself of the help available on the various service provider websites. All provide full-text versions of panel decisions issued under the relevant policy and (certainly in the case of WIPO and Nominet) search facilities to enable one to identify cases relevant to the topic under research.
WIPO’s website, www.wipo.int/amc/en/domains, contains a whole host of materials, including a key resource: the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 2nd ed (the Overview). The Overview highlights many of the major issues and provides guidance on matters such as the evidence likely to be required if one is relying upon unregistered trade mark rights (see para 2 of the Overview 2.0). Extraordinarily, it is not uncommon, even today, for complaints asserting unregistered rights to be filed without any supporting evidence, even though they are likely to be dismissed in limine (see Mancini’s Sleepworld v Laksh Internet Solutions Private Ltd ). Other guidance provided by the Overview includes the fact that some panellists do not regard US state trade mark registrations and registrations on the US Supplemental Register as qualifying for consideration under the first limb of the UDRP; that some personal names can form the basis of a UDRP complaint while others cannot; and that if a gripe site is US-based, it may well be that a US panellist will apply the First Amendment of the US Constitution (free speech) and permit the domain name to remain with the registrant, notwithstanding that the domain name precisely replicates the name of the complainant.
Similarly, the Nominet website at www.nominet.org.uk provides guidance, including an overview, for participants in disputes relating to ‘.uk’ registrations. Where a party’s pleading is exceptionally brief, it is Nominet’s practice to invite the party to consider whether it has complied with all the formalities (see Martin Yale International v 4 Consultance ).
It is worth remembering, however, that the policies are not designed to resolve complex IP issues concerning domain names. They are intended to provide a reasonably quick and cost-efficient method of dealing with a relatively narrow hardcore of abusive registrations. Some disputes can only sensibly and fairly be dealt with by way of litigation with full disclosure and examination and cross-examination of witnesses.
It is also worth remembering that, apart from the possibility of an appeal under the Nominet DRS, the policies do not generally allow you to have a second bite of the cherry. Re-filed cases (ie a new complaint between the same parties in relation to the same domain name) will only be entertained in very narrow circumstances.2 Examples include: when new, material evidence, not readily available at the time of the earlier complaint, comes to light; the respondent filed false evidence first time around; or the complainant was in some way denied natural justice (as in Sensis Pty Ltd & anor v Yellow Page Marketing BV ). Accordingly, it pays to get the complaint right the first time. Check that the trade mark relied on is registered in the name of the complainant; conduct obvious checks to determine whether allegations of bad faith or abusive intent are fairly based or whether the registrant has a legitimate interest in the domain name, eg conduct simple trade mark searches in the registrant’s home territory (perhaps), check the registrant’s website, look at the WayBackMachine (found at web.archive.org) and make use of the facilities at www.domaintools.com (some of which are free). Crucially, do not rely upon the panellist to know of you or your brand, or to conduct research to fill the gaps in your evidence (see para 4.5 of the Overview 2.0).
Over the years, WIPO and Nominet panellists have established a reasonably broad level of consensus, and Nominet appeal decisions are generally followed by those deciding cases at first instance, even though neither the UDRP nor the Nominet DRS incorporates a system of precedent. It is easier for consistency to be achieved in the Nominet system where panellists are either UK-based, or closely familiar with the UK jurisdiction. UDRP panellists come from all over the world, and it should not be assumed that they will be aware of any important facts omitted from the case papers, or that they will adopt a UK law approach.
Another advantage of the Nominet DRS is that the policy is capable of regular review and is, in fact, amended from time to time to iron out any glitches, whereas the UDRP has remained the same since it was first introduced in 1999. Any ‘changes’ of approach have stemmed not from changes to the policy wording, but simply from variations in panellists’ interpretation of the UDRP.
By and large, however, the decisions of UDRP panellists have been consistent, and it is certainly true to say that clear cases of the type of cybersquatting that the UDRP was originally designed to address (deliberately registering trademark.com etc domain names with a view to selling them to the trade mark owner) will always be likely to result in transfer of the domain name to the trade mark owner. There is, however, currently a debate between UDRP panellists as to whether or not bad faith use is sufficient for a complaint to succeed, where the original registration was made in good faith. The traditional view is that it is not. There is also a debate running as to whether or not renewal of a domain name can lead to a finding of bad faith registration and use. Again, the traditional view is that it cannot. If the ‘new’ views, which ironically are now held by some of the earliest decision makers who ‘created’ the traditional view, hold sway, the scope for complaint under the UDRP will be substantially broadened. Would-be complainants and respondents should be aware of these issues. They are described in more detail on the WIPO website.
Finally, when dealing with cases under the UDRP, other than clear-cut cases of cybersquatting, it may well be worthwhile selecting a three-member panel rather than a sole panellist. With a three-member panel, each party has the opportunity of selecting a panellist of its own choice, with the service provider selecting the presiding panellist. A three-member panel allows you to select a panellist who, from a review of cases in the Overview, appears to adhere to your view of the matter. Hopefully, they will not have undergone a change of view in the interim.
- For the Nominet DRS see sub-paragraphs 10(f) and (g) of the Policy; for the UDRP see paragraph 4.4 of the WIPO Overview 2.0.