Domain Name Disputes And Resolution Systems

Trademark Law

Introduction

While the internet has provided trademark holders with previously unimaginable access to markets and consumers around the world, the risk of falling victim to intellectual property infringement and other types of fraud has also proliferated online.

Trademarks are particularly susceptible to infringement on the web because they can, amongst other reasons, be incorporated into a domain name as text with relative ease, which may lead to an array of abusive domain name registration and/or use practices.

As internet usage began to rise in the late 1990s, internet stakeholders and legislators became increasingly aware of these risks.

However, while national courts were used to enforce trademark rights as such, the borderless and multijurisdictional characteristics of the internet combined with traditionally time-consuming and often costly cross-border litigation processes involved, created problems for efficient enforcement of intellectual property rights against abusive domain name registrations.

It was for these reasons that the World Intellectual Property Organization (WIPO) established the Uniform Domain Name Dispute Resolution Policy (UDRP) for the resolution of disputes arising from the registration of internet domain names.

In late 1999 the Internet Corporation for Assigned Names and Numbers (ICANN), the organization responsible for coordinating the maintenance and procedures of the namespaces and numerical spaces of the internet, adopted WIPO’s recommendations and implemented the UDRP for all gTLD registrations.

Beyond assisting brand owners in addressing abuse of their trademarks online without the need for costly court proceedings and minimizing the burden on national courts, it is also worth pointing out that online dispute resolution such as the UDRP is perceived to facilitate global e-commerce, and that protecting brands online not only helps mitigate consumer confusion and related harms but also helps to provide a stable platform for economic growth.

Today, all generic top-level domains (gTLDs), including new gTLDs apply the UDRP to resolve disputes. However, while many country-code top-level domains (ccTLDs) also utilize the UDRP, other ccTLDs have opted to either adopt a modified version of the UDRP to accommodate differences in the country’s legal code or to create a bespoke Dispute Resolution Policy (DRP) that may function differently to the UDRP.

The existence of these different DRPs and the resulting varying rules and policies require specialized knowledge without which there may be confusion amongst intellectual property rights holders as to some of the unique aspects of such DRPs (thus presenting a challenge from a resources point of view).

General background

Domain names are one of the most common business identifiers for companies and trademark holders. It is therefore desirable for rights holders to have a domain name that closely approximates their trademark or trademarked products in order to exercise their trademark rights.

A company or rights holder wishing to acquire a domain name must apply through a domain accredited registrar. For gTLDs, only ICANN accredited registrars can register domain names with the domain name registry (e.g. Verisign for .com, Public Interest Registry for .org, etc.).

For ccTLDs, registrars are accredited by the domain registries themselves (e.g. the registry for .uk is Nominet, for .nl it is the SIDN, for .dk it is DK Hostmaster). If a rights holder finds that the domain name corresponding to their trademark has been registered illegitimately by someone else, they can initiate a DRP via an accredited Dispute Resolution Service Provider (DRSP).

At the same time, it is important to bear in mind that other businesses active in other areas of goods or services and/or in other jurisdictions may have a legitimate claim to such domain name. The basic structural features of a DRP are provided in the Figure below, with arrows showing the relationships between the various entities.

Sr. No. Scenario Example
1 Registration of domain name in good faith with subsequent bad faith use. An initial fan page that over time comes to sell competing products.
2 Circumstances under which resellers/importers are allowed to use a third-party domain. An importer of a product registers a ccTLD domain with the same name as the manufacturer’s global website.
3 Consideration of former business partner’s interests. A party registers a domain incorporating a former partner’s name without the consent of that former partner.
4 Treatment of tribute sites. A fan site domain that is not owned or operated by the person the site refers to.
5 Treatment of criticism sites. An organisation registers a website that is used to criticise a competing brand.
6 Treatment of possibly generic terms. A domain is registered using a term that is generic in some countries, but not in others.
7 Treatment of non-identical terms (i.e. slight variations of terms such as misspellings, use of plural, differing use of punctuation, etc., and the extent necessary for such variations to be considered non-infringing). A domain that is registered that contains an intentional minor misspelling of a well-known brand name as a means of selling competing products.
8 Treatment of personal names. A domain name that relates to the owner’s surname, that coincides with a trade mark.
9 Treatment of city, county or country names. A domain name that includes country abbreviations combined with new gTLDs such as ‘de.travel’ instead of ‘travel.de’.
DDR

Overview of Dispute Resolution Policies

The UDRP

Background

The UDRP was developed by WIPO and adopted by ICANN in late 1999 to provide a solution to the challenges that traditional offline court-based legal processes faced in dealing with unprecedented volumes of trademark-related domain name abuse.

Today, the UDRP is utilized for all gTLD disputes and a large number of ccTLDs. The UDRP also applies to new gTLDs, which currently amount to some 1 200 domains.

Domain names in gTLDs may be registered with one of over 2 000 ICANN-accredited registrars, or their resellers. A domain name registrant enters into an agreement with the registrar, which, further to establishing the UDRP as the agreed procedure for domain dispute resolutions, states that the registrant agrees not to engage in or facilitate illegal activity via the domain name.

Registrars, for their part, must at least establish and maintain a dedicated abuse point of contact, including a dedicated email address and telephone number that is monitored 24 hours a day, 7 days a week, to receive reports of illegal activity.

Key Facts

Governing Rules: Rules for the UDRP.

Administrative Panel: A panel is appointed by the DRSP to rule on a domain name dispute. Panellists are sourced from the provider’s publicly available list of panellists and are experienced practitioners in the areas of intellectual property law, electronic commerce and the internet18. Each provider publishes the list of panellists and their qualifications.

DRSPs: Available DRSPs are the Arab Centre for Domain Name Dispute Resolution (ACDR), the Asian Domain Name Dispute Resolution Centre (ADNDRC), the Czech Arbitration Court (CAC) — Arbitration Center for Internet Disputes, the National Arbitration Forum (NAF) and the WIPO Arbitration and Mediation Center. A complainant can select any one of these DRSPs to resolve their dispute, regardless of location or geography.

Complaint Filing Requirements: Any person or entity may initiate an administrative proceeding by submitting a complaint to any of the providers listed above for all gTLDs. The complaint must specify the trademark(s) on which the complaint is based and describe in particular (1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) why the respondent should be considered as having no rights or legitimate interests in respect of the domain name(s); and (3) why the domain name(s) should be considered as having been registered and being used in bad faith.

Timeframe: A domain name dispute filed through the UDRP usually takes around 60 days, with a maximum timeframe of 75 days.

Possibilities to Appeal: the UDRP contains no internal appeal mechanism. Parties who wish to do so may, however, pursue the matter in court. However, this option is only available within the UDRP framework if official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) is provided within 10 business days of the decision being communicated to the parties.

If this documentation is not provided then the decision will be carried out. If the registrar receives the documentation within the 10 business day period, they will not implement the panel’s decision, and they will take no further action until they receive either (i) satisfactory evidence that a resolution between the parties has been reached; (ii) satisfactory evidence that the lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing the lawsuit. Nothing, however, prevents either party from seeking judicial redress outside the UDRP context.

Dispute Procedure

There are five basic stages of a UDRP administrative procedure:

  1. filing of a complaint with an ICANN-accredited dispute resolution service provider chosen by the complainant, such as the WIPO Arbitration and Mediation Center;
  2. filing of a response (or a default) by the person or entity against whom the complaint was made;
  3. appointment by the chosen dispute resolution service provider of an administrative panel of one or three persons who will decide the dispute;
  4. issuance of the administrative panel’s decision and the notification of all relevant parties; and
  5. submission by registrar to registry for the imposition of the panel’s decision should there be a decision that the domain name(s) in question be cancelled or transferred.

The core underpinnings of the UDRP (paragraph 420) states that the complainant must prove that each of the following three elements is present in the complaint being filed:

  1. the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
  2. the respondent has no rights or legitimate interests in respect of the domain name; and
  3. the domain name has been registered and is being used in bad faith.

The UDRP also establishes guidance on when the requirements for ii) and iii) above are satisfied, such as:

circumstances indicating that the respondent has registered 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 a value in excess of documented out-of-pocket costs directly related to the domain name; or

the respondent has 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, or the domain name was registered primarily for the purpose of disrupting the business of a competitor; or

by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, internet users by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on their website or location.

Paragraph 4c of the UDRP also establishes that a respondent can demonstrate its rights and legitimate interest in a particular domain name by proving ‘use of, or demonstrable preparations to use, the domain name in connection with a bona fide offering of goods or services,

or that the individual or organization has been commonly known by the domain name, even if no trademark or service mark rights have been acquired, or ‘if the respondent is making a legitimate non-commercial 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.

Moreover, noting, in particular, the global nature of the internet, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment.

Paragraph 10 of the UDRP — General Powers of the Panel — lays out the powers of the panelists in a UDRP dispute as follows:

  1. ‘The panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules.
  2. In all cases, the panel shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case.
  3. The panel shall ensure that the administrative proceeding takes place with due expedition. It may, at the request of a Party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the panel.
  4. The panel shall determine the admissibility, relevance, materiality and weight of the evidence.
  5. A panel shall decide a request by a party to consolidate multiple domain name disputes in accordance with the Policy and these Rules.’

A process flow diagram is provided on the following page to provide a visual illustration of a typical UDRP process flow as executed by the WIPO Arbitration and Mediation Center.

Fees

For WIPO cases where one panellist is required, the typical fees are USD 1 500 (EUR 1 293), which is split USD 1 000 (EUR 862) for the panellist and USD 500 (EUR 431) for WIPO as an administrative fee.

For larger cases involving more than 10 domain names, the fees increase on a sliding scale. Where three panellists have been requested, the typical fees are USD 4 000 (EUR 3 448), which is split between presiding panellist USD 1 500 (EUR 1 293), two co-panellists USD 750 (EUR 646) and WIPO’s administrative fee USD 1 000 (EUR 862).

The ACDR fee structure is virtually identical to WIPO.

ADNDRC fees for one panellist are USD 1 300 (EUR 1 120), which is split USD 700 (EUR 603) for the panellist and USD 600 (EUR 517) for ADNDRC as an administrative fee. Again, these fees could be higher if more than 10 domain names are included in the complaint.

Where three panellists have been requested, the fees are USD 2 800 (EUR 2 413), which is split between presiding panellist USD 1 000 (EUR 862), two co-panellists USD 600 (EUR 517) and an ADNDRC fee ISD 600 (EUR 517)These fees could be higher if more than 10 domain names are included in the complaint.

The CAC charges between EUR 800 and EUR 1 100 for a single panellist for 1 to 10 disputed domains. Fees for three panellists range between EUR 2 600 and EUR 3 200. However, the CAC also has separate additional fees of EUR 300 to EUR 400 for each complaint once the respondent has responded to the statements and allegations contained in the complaint.

The NAF charges between EUR 1 120 and EUR 1 550 for a single panellist for 1 to 10 disputed domains. Fees for three panellists range between EUR 2 240 and EUR 3 10031.

Generally, in the event of the withdrawal of a complaint or termination of an administrative proceeding prior to the appointment of a panel, the DRSP will withhold a processing or administrative fee32 while the remainder is returned to the respective parties.

Statistics

WIPO processed over 3 000 domain name disputes in 2017 and 93 % of all decided cases were decided in favour of the complainant in that year. The CAC processed 201 cases in 2017, with 186 case decisions (92%) being accepted in favour of the complainant. The NAF on the other hand processed 1 390 cases in 2017 with a similar acceptance for complainants.

Overview of Different ccTLD Dispute Resolution Policy:

.AU (.auDRP)

Background

.AU domain names are managed by au Domain Administration Ltd (auDA). .AU domain names are restricted to Australian registrants (either as companies operating in the country or citizens or residents, in the case of id.au).

There are over 3 million .au registrations with roughly 40 certified registrars for the .au domain. Within the .au domain, there are several different second-level domains (2LDs), each with its own eligibility and allocation rules.

It is not possible to register domain names directly under .au. Generally, 2LDs are utilized for specific purposes, as described below:

  • asn.au: for incorporated associations, political parties, trade unions, sporting and special interest clubs;
  • com.au: for commercial entities, such as companies (with ACN as registered through ASIC), and businesses (registered with state governments);
  • net.au: for commercial entities, such as companies (with ACN as registered through ASIC), and businesses (registered with state governments);
  • id.au: for individuals who are Australian citizens or residents;
  • org.au: for charities and non-profit organisations.

Key Facts

Governing Rules: auDRP Rules40 administered by auDA and based on the UDRP.

Administrative Panel: Same as UDRP. Each auDRP provider is wholly responsible for the appointment of its listed panellists.

DRSP: WIPO and the Resolution Institute (Australian arbitration and dispute resolution services firm).

Complaint Filing Requirements: Same as UDRP, although complainants must meet the eligibility and allocation rules for .AU described above.

Timeframe: The average auDRP proceeding takes 45 days.

Possibilities to Appeal: Same as UDRP. Panel decisions under auDRP are binding on both parties. There is no appeal mechanism. Filing court proceedings are subject to the same time limits as UDRP.

Dispute Procedure

The auDRP is modelled on UDRP and is virtually identical with the exception of the following two differences:

  • Rights Covered – the auDRP applies to domain names that are identical or confusingly similar, not only to a trademark or service mark but to any ‘name’ in which the complainant has rights, including the complainant’s company, business or other legal or trading name, as registered with the relevant Australian government authority; or the complainant’s personal name;
  • Bad Faith – it is sufficient to prove that either registration or use of the domain name by the registrant is in bad faith, whereas the UDRP requires the complainant to prove both.

In very broad terms, the steps involved in an auDRP do not differ from the UDRP, and are presented as follows:

  1. Complaint is filed with an approved DRSP;
  2. DRSP reviews the complaint to ensure that it complies with the policy, and then forwards the complaint to the respondent;
  3. The respondent files a response (within 20 days);
  4. DRSP appoints the panel (which can consist of either one or three panellists);
  5. The panel reviews the complaint and the response, and forwards its decision to the DRSP (usually within 14 days);
  6. DRSP delivers the full text of the decision to each party, and publishes the decision on the website;
  7. Registrar submits decision to registry to impose decision (if relevant).

Fees

WIPO and Resolution Institutes’ fees are very similar. The filing fee to commence a proceeding under the auDRP is AUD 2 000 (EUR 1 273) in the case of a one-member panel and AUD 4 500 (EUR 2 866) in the case of a three-member panel.

The fee will be higher if more than five domain names are being disputed, however, this is also a rare occurrence.

Statistics

In 2017, a total of 55 matters were lodged between WIPO and the Resolution Institute. Out of these cases, 38 were found in favour of the complainant, 6 in favour of the respondent, 11 withdrawn or terminated before the decision.

.DK (Danish Domain Name Board)

Background

.DK domain names are managed by DK Hostmaster (owned by Dansk Internet Forum, DIFO). There are 1.3 million registered .dk domain names and there are over 200 registrars licensed by DK Hostmaster to resell .dk domain names. While the eligibility criteria for registrants is rather straightforward, DK Hostmaster reserves the right to suspend a domain name if illegal activity is suspected.

Key Facts

Governing Rules: Regulations of the Complaints Board for Domain Names and Rules of Procedure. An important distinction between the .dk dispute resolution system and the UDRP and other DRPs is that .dk complainants can invoke Danish law in general as legal grounds, meaning that complaints are not restricted to bad faith registration and/or use.

Administrative Panel: The Danish Complaints Board for Domain Names (Complaints Board) handles all domain name disputes. The Complaints Board comprises one chairperson and one vice-chairperson who must be judges, two members with theoretical and practical expertise in law as well as two members representing consumer and commercial interests, respectively. Substitutes for each of the two members with expertise in law and for the consumer and commercial representatives have also been appointed.

DRSP: The Danish Complaints Board for Domain Names.
Complaint Filing Requirements: Any person or entity may file a complaint. The chairperson of the Complaints Board decides whether the complainant has sufficient interest.

Timeframe: 60-70 days

Possibilities to Appeal: No appeal mechanism. Cases can only be reopened if special reasons so warrant at the Complaints Board’s discretion including, for instance, lawful absence of a party who has not expressed his or her opinion in the case, or new information which — had it been available during the hearing of the case by the Complaints Board — would presumably have resulted in a different outcome of the case. Moreover, the Complaints Board’s decision does not prevent either party from submitting a complaint to the Board on a new basis concerning the same domain name.

Furthermore, the Board does not have the authority to refer a case to the court system. Each party may bring the decision of the Board to the competent court within 8 weeks from the date of the decision. Such cases will be brought against the other party to the proceeding and not the Board.

Dispute Procedure

As regards the overall process, .dk represents the most significant deviation from the UDRP. It is the outlier of this DRP analysis because the policy is not founded on the three cumulative requirements found in the UDRP and the majority of other DRPs.

Cases are ruled according to the Act on Domain Names, which stipulates in Article 5 that ‘registrants may not register and use domain names in violation of good domain name practice …, (and) registrants may not register and maintain domain name registrations solely for resale or rental purposes.’

The decision based on this criterion is left to the Complaints Board itself. In the Complaints Board’s handling of cases, the chairperson or the vice-chairperson will take part as well as the two members with expertise in law. In cases involving non-commercial use of domain names and in cases of fundamental importance, the representatives for consumer and commercial interests will also take part.

The secretariat presents the complaint to the respondent with a request to present a statement (defense) as soon as possible and at the latest 2 weeks from receipt of the complaint. The respondent’s comments must then be presented to the complainant for a statement with a corresponding response deadline. The complainant’s response is presented to the respondent in the same way.

If it is obvious that the respondent’s reply and the complainant’s response do not contain new information or assessments and that each party is thus undoubtedly aware of their contents, the secretariat need not present the reply to either party.

Fees

The complainant must pay a fee for the hearing of a complaint before the Complaints Board. The complaint fee is DKK 160 (EUR 21.5) where the disputed domain name is specified for non-commercial activities. In all other cases, the complaint fee is DKK 500 (EUR 67). If the complaint concerns several domain names, a fee is paid for each individual domain name. The Complaints Board does not charge any other Fees for hearing the case.

If the Complaints Board allows the complainant’s claim in full or in part or if the case is settled on terms in this respect, the complaint fee is refunded to the complainant. The same applies if a complaint is withdrawn before the Complaints Board has made a decision in the case.

Statistics

– Around 200 cases are filed per year to the Complaints Board with around 50 % of cases being ruled in favor of the complainant

.EU (euADR)

Background

EURid is the registry of the .eu (or ею in Cyrillic script) ccTLD. Introduced in 2005, there are now around 4 million registered .eu domains. Any company, individual or organisation based in the European Union or in Iceland, Liechtenstein or Norway can register a .eu or .ею domain name. There are around 700 accredited registrars that can register domains for registrants.

Key Facts

Governing Rules: .eu Alternative Dispute Resolution Rules (the ‘ADR Rules’).

Administrative Panel: Same as UDRP. A panel is appointed by the dispute resolution provider to rule on a domain name dispute. Panellists are sourced from the provider’s publicly available list of panellists and are experienced practitioners in the areas of intellectual property law, electronic commerce and the internet.

DRSPs: The CAC and WIPO.

Complaint Filing Requirements: Any person or entity registered or residing within the European Union, Iceland, Liechtenstein or Norway may initiate an administrative proceeding by submitting a complaint to any of the providers listed above. The slight difference to the UDRP is the complainant has to specify why the domain name is identical or confusingly similar to the domain name(s) of which a right or rights are recognised or established by national and/or and, either why the domain name has been registered by its holder without rights or legitimate interests or why the domain name should be considered as having been registered or being used in bad faith.

Timeframe: A domain name dispute filed through euADR usually takes around 60-75 days.

Possibilities to Appeal: Decisions of panellists are final and not subject to appeal56. However, should a complainant or registrant initiate court proceedings within 30 days of the decision being communicated then the registry will not implement the panel’s decision until the matter has been satisfactorily resolved.

Dispute Procedure

euADR is founded by the following European legislation:

  • Regulation (EC) No 733/2002 of the European Parliament and of the Council of 22 April 2002 on the implementation of the .eu Top Level Domain (TLD), and
  • Regulation (EC) No 874/2004 of 28 April 2004 laying down public policy rules concerning the implementation and functions of the .eu TLD and principles governing registration.
  • While the structure of euADR is substantially similar to the UDRP, there are five key differences to note:

  • Whereas the UDRP is limited to the protection of trademark rights, euADR Rules aim to protect not only trademark rights, but also certain other rights protected in Europe such as geographical indications or designations of origin, and, in as far as they are protected under national law in the Member State where they are held: unregistered trademarks, trade names, business identifiers, company names, surnames, and distinctive titles of protected literary and artistic works;
  • Under the euADR Rules, it is sufficient to prove that either registration or subsequent use of the domain name by the registrant occurred in bad faith, whereas the UDRP requires the complainant to prove both elements;
  • Furthermore, while the UDRP sets three cumulative requirements, under ADR a complainant needs to demonstrate why the challenged domain name is identical or confusingly similar to the name or names in respect of which a right or rights are recognised or established by national and/or Community law and, either why the challenged domain name has been registered by its holder without rights or legitimate interests in respect of the domain name that is the subject of the Complaint; or why the challenged domain name should be considered as having been registered or being used in bad faith;
  • The language of euADR proceedings must be one of the official EU languages. Unless otherwise agreed by the parties or specified otherwise in the registration agreement between the domain holder and the registrar, the language of the euADR proceeding will be the language of the registration agreement for the disputed domain name;
  • There are also some timing differences, which make euADR cases slightly longer than the UDRP. For instance, whereas under the UDRP a panel has 14 days from its appointment to forward its decision to the dispute resolution provider, under euADR Rules, the panel has 1 month for submitting its decision.

Fees

WIPO
The complainant pays the dispute resolution provider. Costs for a single panellist range from EUR 1 300 to EUR 1 600 depending on the number of domains being contested. Three panellists will range from EUR 3 100 to EUR 4 000 depending on the number of domains being contested. However, as of 01/01/2018 EURid has arranged to temporarily subsidise EUR 1 000 toward the standard filing fee for each .eu domain name dispute filed with the WIPO Arbitration and Mediation Center meaning that this amount must be discounted from the official amount.

The CAC
Costs for a single panellist range from EUR 1 300 to EUR 1 600 depending on the number of domains being contested. Three panellists will range from EUR 3 100 to EUR 4 000 depending on the number of domains being contested. Furthermore, as of 01/01/2018 EURid has arranged to temporarily subsidise EUR 1 000 toward the standard filing fee for each .eu domain name dispute filed with the CAC.

Statistics

In 2017, 46 cases were filed with the CAC and 13 with WIPO.

.IT (Modified UDRP)

Background

The .it domain name is managed by Registro.it and has over 3 million registered domain names. There are over 1 200 licensed registrars. The registration of a domain name in the ccTLD .it is permitted only to persons who have citizenship, residence or a registered office in the EU, Republic of San Marino, Switzerland and the Vatican. However, many registrants address these regulations by contracting ‘Trustee Services’.

Key Facts

Governing Rules: Dispute Resolution Rules for .it domain and Legal Guidelines.
Administrative Panel: Same as UDRP. A panel is appointed by the dispute resolution provider to rule on a domain name dispute. Panellists are sourced from the provider’s publicly available list of panellists and are experienced practitioners in the areas of intellectual property law, electronic commerce and the internet. Each provider publishes a list of panellists and their qualifications.

DRSP: CRDD (Centro Risoluzione Dispute Domini), MFSD, Tonucci & Partners, Camera Arbitrale Nazionale e Internazionale di Milano and ADR Company.

Complaint Filing Requirements: Same as UDRP. Any person or entity may initiate an administrative proceeding by submitting a complaint to any of the providers listed above. There is no reference in either the Rules or Legal Guidelines to restrictions for parties that do not meet the eligibility criteria described above.
Timeframe: A domain name dispute filed through the .it domain dispute resolution providers usually takes around 50 days.

Possibilities to Appeal: Decisions of panellists are final and not subject to appeal unless new information comes to light. However the guidelines also highlight that dispute resolution procedure ‘has no legal validity and as such does not preclude the parties’ right to appeal, also subsequently, to the law court or arbitration.’

Dispute Procedure

The procedure for reassigning an .it domain name is based on the UDRP and requires the same three cumulative tests:

  • the domain name in dispute is identical to or such as to cause confusion with a trade mark or other distinctive business sign, for which the complainant claims rights, or to its name and surname; and that
  • the respondent has no right to the domain name object of opposition and, finally, that
  • the domain name has been registered and is used in bad faith (‘mala fide’).

Unlike the UDRP, the Italian procedure provides for an initial mandatory ‘informal arbitration’ stage. This is designed to give the parties time to settle the dispute before the process progresses to a more formal dispute resolution procedure.

Fees

Panellist Fees from the five providers converge along similar lines. Costs for a single panellist range from EUR 1 200 to EUR 2 400 depending on the number of domains being contested. Two panellists will range from EUR 3 000 to EUR 5 00072.

Statistics

In 2017, 37 cases were decided through proceedings across all five DRSPs. In nearly 70 % of decisions, the panels upheld the complaint and ordered the transfer of the contested domain name to the complainant.

.UK (Nominet Dispute Resolution Service (DRS)

Background

Nominet is the registry for the .uk domain which has over 10 million domain name registrations and around 3 000 accredited registrars. There are no territorial restrictions for .uk domain names; applicants do not need to have any connection to the UK. The four main top-level domains (TLDs) within the .uk domain are:

  • .uk
  • .co.uk
  • .org.uk
  • .me.uk

Key Facts

Governing Rules: Nominet DRS Policy
Administrative Panel: If the case could not be settled by mediation, the complainant can appoint (for a fee, see below) an independent adjudicator, referred to as the Expert, to make a binding decision about what should happen to the domain name. Experts are screened by Nominet and their profiles are publicly available on the website. An Expert can arrive at a ‘summary decision’, which does not contain a detailed written decision, if the respondent does not submit a response to the complaint. However, if the respondent does respond, a full decision must be reached. The summary decision is not a ‘default’ win for the complainant, though, as the Expert still has to satisfy itself that the complaint should succeed and that no detailed written decision is needed.

DRSP: Nominet.

Complaint Filing Requirements: The complaint must describe the grounds on which the complaint is made including in particular: what rights the complainant asserts in the name or trade mark; why the domain name should be considered to be in bad faith, as well as any other grounds that support the complainant’s assertion.

Timeframe: Mediated and summary decision cases take around 60 days, whereas full decision cases can take nearly 100 days.

Possibilities to Appeal: An internal appeal mechanism is available with Nominet. An appeal must be filed within 10 working days of the original decision being made. Either party is at liberty to submit the dispute to a court, however, if it is submitted during the dispute process this will result in the dispute process being suspended until the outcome of those legal proceedings.

Dispute Procedure

Nominet’s DRS follows a set of rules called the DRS Policy, and follows a path made up of different stages, which is similar in substance to the UDRP.

Stage 1 – Complaint and Response: The complainant submits its complaint to Nominet. Nominet sends a copy of this complaint to the registrant/respondent. The respondent has a set time frame to submit a response. This is then sent to the complainant, who can comment on it.

Stage 2 – Mediation: If there has been a response, the complainant and respondent are given the (obligatory) opportunity to use Nominet’s free mediation service to try and settle their dispute, although the respondent is not required to respond. One of Nominet’s internal mediators helps the parties to discuss a potential settlement. Mediators are neutral and will not judge the case. Mediation is always confidential.

Stage 3 – Expert Decision: If there was no response from the respondent within 10 days, or if the case could not be settled by mediation, the complainant can appoint (for a fee, see below) an independent adjudicator, referred to as the Expert, to make a binding decision about what should happen to the domain name.

Stage 4 – Appeal: Appeals are rare, but parties who want their case re-examined, can file an appeal. An appeal must be filed with Nominet within 10 working days of the original decision being made.

Final Stage – Closure: If the Expert awards a transfer, cancellation or suspension of the domain name, Nominet will make the required changes to the domain name registration records. The Expert decision will also be published on the Nominet website. If the parties entered into a settlement in mediation, the mediator will help the parties to fulfil the terms of such settlement. If neither party takes any further action, the DRS case file will be closed.

An important distinction between Nominet DRS and the UDRP is that the Nominet DRS does not require that both the registration and use of the domain name be unfair (in bad faith). It is also important to note that, as with the UDRP, unfair use of a domain name covers use for any purpose, such as for a website or email.

Fees

In cases where there was no response from the respondent during the mediation, the complainant can opt for the Expert to make a summary decision on the case. This costs GBP 200 plus VAT (EUR 227).

In all other cases, for instance if the parties failed to come to a settlement during mediation, an Expert (full) decision costs GBP 750 plus VAT (EUR 852). In the case of an appeal, the appeal will be heard by a panel of three Experts and costs GBP 3 000 (EUR 3 360) plus VAT.

Statistics

According to Nominet data, in 2017 there were 712 complaints made, 106 were resolved by the parties themselves, 76 by mediation (aggregated as ‘Terminated’ in the table below), 184 by summary decision and 104 by full decision. Other outcomes that did not result in a decision include: fee not paid, invalid, and withdrawn.

.CN (CNDRP)

Background

The .cn domain name system is managed by the China Internet Network Information Centre (CNNIC) registry. Any individual may register a .cn domain name, and there are hundreds of domestic and foreign accredited registrars. There are now over 20 million .cn registered domains.

Key Facts

Governing Rules: Domain name disputes are resolved through the CNNIC ccTLD Dispute Resolution Policy (CNDRP85) and Rules.

Administrative Panel: Same as UDRP.

DRSP: China International Economic and Trade Arbitration Commission (CIETAC) and Hong Kong International Arbitration Centre (HKIAC).

Complaint Filing Requirements: Filing requirements are the same as the UDRP. However, in the event that the domain name concerned has been registered for more than 2 years, the two providers (CIETAC and HKIAC) do not accept complaints concerning this domain name. Consequently, brand owners that fail to file a complaint within 2 years of registration of the domain are limited to seeking redress from the Chinese courts. In such circumstance, the dispute may only be submitted to a national court for resolution.

However, the HKIAC has recently ruled that the transfer of a ‘.cn’ domain name from one party to another constitutes a new registration under the CNDRP and ‘resets’ the 2-year time limit for bringing a domain name complaint90. In this case, filing requirements are the same as the UDRP.

Timeframe: 50-60 days.

Possibilities to Appeal: No appeal mechanism. The same procedure as the UDRP for delaying the enforcement of a decision in light of court proceedings applies.

Dispute Procedure

The CNDRP is substantially the same as the UDRP, with two key differences:

Bad Faith – It is sufficient to prove that either registration or use of the domain name by the registrant is in bad faith, whereas the UDRP requires the complainant to prove both;

Rights Covered – Requisite rights that the complainant can refer to in their complaint under CNDRP are referred to as ‘civil rights or interests’ instead of ‘name or mark’, which clearly extend beyond trademark rights as in the UDRP.

Fees

Fees range from CNY 8 000 to CNY 16 000 (EUR 1 064 to EUR 2 128) for one panellist and CNY 14 000 to CNY 24 000 (EUR 1 862 to EUR 3 191) for three panellists depending on the number of domain names being contested per case.

Statistics

58 cases were filed and resolved through the CIETAC Online Dispute Resolution Centre in 2017. 75 were filed through the HKIAC in 2017.

.JP (JP-DRP)

Background

The .jp domain name system is managed by the Japan Registry Services (JPRS) registry. There are over 1.5 million .jp domain names in existence today. Individuals and companies can register a .jp domain name if they reside or operate in Japan (the registrant contact country must be Japan).

Key Facts

Governing Rules: JP Domain Name Dispute Resolution Policy93 and Rules94 (JPD-DRP).

Administrative Panel: Same as UDRP.

DRSP: The Japanese Intellectual Property Arbitration Centre (JIPAC).

Complaint Filing Requirements: Same as UDRP.

Timeframe: 60-70 days.

Possibilities to Appeal: No appeal mechanism. The same procedure as the UDRP for delaying the enforcement of a decision in light of court proceedings applies.

Dispute Procedure

JP-DRP is substantially modelled on the UDRP, however, some of its provisions do not reproduce the provisions of the UDRP as they stand, but have been partially localised to reflect local and national requirements in Japan with regard to the following.

  • ‘Trademarks’ as a basis for filing a domain dispute — Under the UDRP, the basis for a complaint is‘ trademarks or service marks, including well-known personal names and brands. However, in JP-DRP, if a ‘trademark’ is used as the basis for a complaint, this will be construed as being restricted to ‘trademarks’ as defined under the Japanese Trademark Act, and to not include well-known personal names or brands. Given that well-known personal names could become a target for cyber-squatting, the JP-DRP, therefore, specifies ‘trademark or other indication [sic]’ as the basis of the complaint. This can be interpreted more broadly than ‘trademarks’ as defined under the Trademark Act and also allows well-known personal names and non-trademarked brands to be covered in a complaint.
  • Determining registration and use in bad faith or for unfair purposes — Under the UDRP, complainants are required to prove that the domain name has been registered ‘and’ is being used in bad faith. Under the JP-DRP, the complaint will be accepted if the domain name has been registered ‘or’ is being used in bad faith.

Fees

In cases that are heard by one panellist, the fee is JPY 180 000 (EUR 1 411). However, in cases where the number of domain names in the same written application exceeds four, the complainant is charged JPY 10 000 (EUR 78) for each additional domain. In cases that are heard by three panellists, the fee is JPY 360 000 (EUR 2 822) with the same additional fee structure applying for more than four domain names.

Statistics

Only five procedures were filed in the whole of 2017.

.US (usDRP)

Background

Neustar Inc., a provider of registry services, manages the .us domain name on behalf of the US Department of Commerce. The .us domain name was introduced in 1985. There are now approximately 2 million registered .us domain names, and 158 licensed registrars. Registrants of .us domains must be US citizens, residents, or organisations, or a foreign entity with a presence in the US.

Key Facts

Governing Rules: usTLD Dispute Resolution Policy.

Administrative Panel: Same as UDRP.

DRSP: National Arbitration Forum (NAF), American Arbitration Association (AAA).
Complaint Filing Requirements: Same as UDRP. No reference is made in the Rules or the Procedure to eligibility criteria for filing a complaint.

Timeframe: 60-70 days in most cases.

Possibilities to Appeal: No appeal mechanism. The same procedure as the UDRP for delaying the enforcement of a decision in light of court proceedings applies.

Dispute Procedure

The usDRP is substantially the same as the UDRP, both in terms of process and in policy, with the following two differences:

  • ‘How to demonstrate rights to legitimate interests in the domain name …’, which specifies that a respondent can demonstrate its legitimate rights by proving to be the ‘… owner or beneficiary of a trade or service mark that is identical to the domain name.’, and
  • The use of the disjunctive ‘or’ rather than ‘and’ in the bad faith element under 4(a)(iii) of the usTLD Dispute Resolution Policy.

Fees

Fees range from USD 1 300 to USD 2 250 (EUR 1 121 to EUR 1 939) for a single-member panel and USD 2 600 to USD 5 000 (EUR 2 241 to EUR 4 310) for a three-member panel depending on the number of disputed domain names.

Statistics

The AAA has unofficially ceased to operate as a dispute resolution services provider for the .us domain. The NAF, therefore, processes all of the cases, of which there were nearly 100 filed in 2017 with 87 % ruled in favor of the complainants.

.NL (Modified UDRP)

Background

The .nl domain was introduced in 1986 and now has over 5.8 million registered domain names. It is administered by the Foundation for Internet Domain Registration Netherlands (SIDN), which has licensed over 1 300 .nl registrars.

Key Facts

Governing Rules: Dispute Resolution Regulations for .nl Domain Names framework.
Administrative Panel: Same as UDRP.

DRSP: WIPO.

Complaint Filing Requirements: Same as UDRP.

Timeframe: 40-60 days (90 days in cases involving mediation).

Possibilities to Appeal: No appeal mechanism. The same procedure as the UDRP for delaying the enforcement of a decision in light of court proceedings applies.

Dispute Procedure

While the .nl Dispute Procedure is substantially the same as the UDRP, there is an important addition of a (mandatory) mediation stage, similar to those stipulated for the .it and .uk domain name disputes. This is a free-of-charge process and begins once a dispute has been filed with WIPO. The mediation process ends within 30 calendar days of its commencement, or as soon as the SIDN determines that mediation has not been successful.

There are four additional differences in procedure compared with the UDRP:

  • Whereas the UDRP is limited to the protection of trademark rights against infringement through bad faith registration and use of a domain name, the ‘Dispute Resolution Regulations for .nl Domain Names’ aims to protect not only trademark rights, but also certain other rights such as trade names and registered personal names protected in the Netherlands;
  • It is sufficient to prove that either registration or use of the domain name by the registrant is in bad faith, whereas the UDRP requires the complainant to prove both;
  • Only one-person panels are permitted (no three-member panels are possible);
  • Proceedings can also be conducted in English depending on the location of the parties and the circumstances of the case.

Fees

Fees are EUR 1 500 for between 1 and 5 domain names and EUR 2 000 for between 6 and 10 domain names.

Statistics

There were 74 cases filed at WIPO in 2017 with slightly more than half of the cases ruled in favor of the complainant.

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Author Bio
Danish A. Saleem

Danish A. Saleem

Trademarks & Corporate Lawyer

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