domain name disputes

This page looks at domain name dispute resolution mechanisms such as the UDRP, ACPA, CDRP and auDRP.

It covers -

• introduction
• studies - highlights from the academic literature
• the UDRP - the global mechanism under ICANN auspices
• national rules - an overview of ccTLD regimes
• dot-au and the auDRP - disputes in Australia
• the US and ACPA - US federal and state legislation
• Canada and the CDRP - arbitration for dot-ca

     introduction

As the preceding page of this note commented, disagreements about registration of domain names and their use are common.

Responses to squatting have taken several forms.

Some businesses and other entities have acquired domain names from a registrant, treating payment of 'ransom' as their only option or merely as less costly than engaging in litigation. That acquisition has driven the secondary market. Others appear to have worked around restrictions by acquiring the registrant in order to gain the name.

Some have simply sat out the speculative bubble, gaining the name they seek from a registrar when the holder fails to renew the registration. We've noted elsewhere that several million dot-com names, for example have not been renewed by the original registrant.

Some have engaged in large-scale defensive activity, registering major variants of their corporate/brand name in all significant TLDs. That has included preemptive registration of some sucks sites: the Cheney & Bush presidential campaign for example registered bushsucks.com, only to face bushsucks.us in the revitalised dot-us ccTLD. Defensive registration isn't excessively expensive for major corporations but appears to have been superseded by reliance on litigation.

Others have sought protection under national/state legislation or under TLD-specific dispute resolution mechanisms, such as the UDRP and auDRP, that are based on the contract between the registrar and registrant (and are thus underpinned by national and international commercial law). That action has fuelled the arbitration sector: lawyers, journalists, lobbyists and commentators. It has not been restricted to major corporate interests: one example is action taken by the People for the Ethical Treatment of Animals (PETA) advocacy group against the registrant of the People Easting Tasty Animals (PETA) parody site (PDF).

DNS disputes are contentious. Bodies such as the Domain Name Rights Coalition (DNRC), the Association for Domain Owners Rights (ADOR) and the loopier TLD Lobby (TLDL) consider that 'squatting' is a perjorative for what is really an exercise of intelligence/investment. Others perceive many of the remedies as being biased in favour of large businesses - one man's cybersquatting is another man's commercial savvy, all within the rules of domain naming within different countries (and using different registries).

In 2007 WIPO released information on trademark disputes and the UDRP. Parties to WIPO UDRP cases came from 137 countries but, as in the past, the most frequently named nation for complainants and respondents was the US. Leading plaintiff countries were France, the UK, Germany, Spain, Switzerland, Italy, Canada, Australia and the Netherlands. After the US the 'most named' respondent countries were the UK, China, South Korea, Canada, Spain, France, Australia, Italy and Russia. Australia was the location of the complainant in 174 cases and the location of the respondent in 204 cases for gTLD names, behind 4725 and 4247 respectively for the US.

     studies 

We have highlighted particular studies - such as Dan Burk's 1995 paper Trademarks Along the Infobahn: A First Look at the Emerging Law of Cybermarks and Michael Blakeney's 1999 Murdoch E-Law Journal article on Interfacing Trade Marks & Domain Names - in a detailed examination in the Intellectual Property guide on this site.

Jessica Litman's 2000 The DNS Wars: Trademarks & the Internet Domain Name System (PDF), like her other writing on intellectual property, deserves consideration.

James Hutchinson's UK Journal of Information, Law & Technology paper on Can Trade Mark Protection Respond to the International Threat of Cybersquatting?" offers a succinct review of US and UK litigation about cybersquatting and 'passing off'. Deborah Ezer's 2000 paper Celebrity Names As Web Site Addresses: Extending the Domain of Publicity Rights to the Internet highlights particular issues regarding the 'right of publicity', discussed in more detail in our Intellectual Property Guide here.

Dara Gilwit's The Latest Cybersquatting Trend: Typosquatters, Their Changing Tactics, and How To Prevent Public Deception and Trademark Infringement (PDF) considers typosquatting.

A perspective from US commercial interests is provided in the 2001 paper by Julie Katz & Aron Carnahan on Battling the "CompanyNameSucks.com" cyberactivists, Matthew Searing's 2000 paper (PDF) What's in a Domain Name?" A Critical Analysis of the National & International Impact on Domain Name Cybersquatting and Patrick Jones' paper Protecting your "SportsEvents.com": Athletic Organizations and the Uniform Domain Name Dispute Resolution Policy.

For a broader perspective we recommend the cogent UK Journal of Information Law & Technology paper by Richard Wu on New Rules for Resolving Chinese Domain Name Disputes - A Comparative Analysis, Christopher Lee's 2000 paper The Development of Arbitration in the Resolution of Internet Domain Name Disputes and Kevin Eng's 2000 Breaking Through the Looking Glass: An Analysis of Trademark Rights in Domain Names Across Top Level Domains paper.

     national regimes

Most nations have rules, of varying complexity, to deal with domain disputes. Increasingly those rules are based on the UDRP, with modification to reflect local circumstances.

Nations that have simply adopted the UDRP for disputes regarding registrations in their ccTLDs include Antigua & Barbuda, the Bahamas, Ecuador, Fiji, Guatemala, Laos, Mexico, Namibia, Niue, Panama, Uganda, the Philippines, Romania and Venezuela. In July 2001 Singapore's Network Information Center released proposals for a new UDRP-based scheme.

British administrator Nominet is considering changes to the UK domain name dispute resolution process. The proposed rules would feature a two stage process in which the parties would enter mediation for the two weeks. If unsuccessful, the case would be referred to an arbitrator.

     Australia and auDRP

Disputes regarding 'open' 2LDs in the dot-au space - administered by auDA - are handled under the au Dispute Resolution Policy (auDRP). The derivation, shape and implementation of that policy are discussed in more detail in the auDA profile on this site.

The policy is based on the UDRP, modified to reflect particular features of the dot-au regime such as the 'close association' requirement that inhibits speculative registration and a secondary market in domain names. It is underpinned by the contract between registrants and registrars.

The auDRP came into effect on 1 August 2002. So far it has attracted little criticism (or indeed comment), with only one ruling as of 30 January 2003 and a handful by July 2006.

A range of Australian intellectual property (highlighted here) and trade practice law (highlighted here and here) addresses broader concerns regarding trademark infringements and 'passing off'. Samantha Brown's 2003 paper Misleading foreign websites not tolerated by Australian courts offers a point of entry into the local literature.

     US and ACPA

The UDRP involves arbitration rather than litigation under state/national trade practices or trademark legislation - for example about 'passing off' - or special cybersquatting legislation. The enactment that has attracted most attention is the US federal Anticybersquatting Consumer Protection Act (ACPA), which came into effect in 1999.

Remedies under the UDRP are limited to transfer or cancellation of the domain name and, compared to litigation in US courts, legal costs are quite low. UDRP critics have, however, argued that recourse to US courts may produce quicker results.

A domain name holder found to be a cybersquatter under ACPA is liable for damages (statutory damages up to US$100,000 per domain name, or actual damages and profits), plus court costs and lawyers fees.

There is liability if the registrant -

• has a bad faith intent to profit from a protected mark or personal name
• registers, traffics in, or uses a domain name that is
  a identical or confusingly similar to a distinctive mark;
  b identical, confusingly similar or dilutive of a famous mark; or
  c protected under provisions relating to the Olympics or related marks.

US courts have ruled that litigants may use ACPA to overturn a UDRP arbitration panel decision.

ACPA has attracted increasing attention from legal specialists. Examples are Catherine Struve & R Polk Wagner's 2002 Realspace Sovereigns in Cyberspace: Problems with the Anticybersquatting Consumer Protection Act (PDF) and Sherry's 2002 Haste Makes Waste: Congress & the Common Law in Cyberspace (PDF).

Kevin Heller's 2001 paper The Young Cybersquatter's Handbook: A Comparative Analysis of the ICANN Dispute considers the UDRP and ACPA. There's a broader review in Adam Waxer's 1999 The Domain Name Fiasco: The Legal Battle Between the Current Domain Registration System and Traditional Trademark Law (PDF). A useful overview is provided in the US Patent & Trademark Office report (PDF) to Congress regarding ACPA.

A 2001 Californian state anticybersquatting law, reflecting personality rights legislation, protects the names of "living persons and deceased personalities" by prohibiting bad faith registration of domain names that are "identical or confusingly similar" to the real names of notable people, living or dead.

The intention is to provide a

higher level of protection against internet fraud and will make it easier for consumers to navigate the internet by reducing the number of fraudulently registered names.

     Canada and the CDRP

Dot-ca administrator CIRA, the Canadian counterpart of auDA, established the CIRA Domain Name Dispute Resolution Policy (CDRP) to cover disputes regarding transfer or cancellation of dot-ca names.

As with Australia, the Policy centres on domain names registered in bad faith and is underpinned by by the Registrant Agreement (RA) that all dot-ca domain name registrants enter into at the time of registration.

The CDRP describes the nature of the dispute resolution process, requirements for those wishing to initiate a proceeding and types of bad faith registrations. It is complemented by the CIRA Domain Name Dispute Resolution Rules (here) that cover procedures for initiating and responding to a CDRP proceeding.

Dispute resolution services under the CDRP are provided by two arbitrators: the British Columbia International Commercial Arbitration Centre (BCICAC) and Resolution Canada.




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