CHAPTER 4: ROLE OF THE UDRP AND OTHER ADR MECHANISMS IN THE DOMAIN NAME- TRADEMARK CONFLICTS RESOLUTION

Transcription

1 CHAPTER 4: ROLE OF THE UDRP AND OTHER ADR MECHANISMS IN THE DOMAIN NAME- TRADEMARK CONFLICTS RESOLUTION 150

2 4.1 Introduction There cannot be any denial of the fact that the domain nametrademark conflicts have phenomenal growth within a relatively short span of time all over the world. This growth took place despite the national responses to solve the problems, which is reflected in the analysis made in the previous chapter. Though the national responses were significant in the initial phase of the developments to cater to the emergency, they could not continue as the sole means of solution to the problem due to the international characters of domain names coupled with the varying national laws, which resulted in the controversy on applicable law. In addition, the cumbersome process of court litigations and the lack of expertise in the judiciary to appreciate the nuances of highly technical domain nametrademark litigations have deterred the victims to approach the doors of justice. As a result, an attempt has been made in the international level to resolve the conflicts in the form of Uniform Domain Name Dispute Resolution Policy (UDRP). Since its inception, the UDRP has been extensively used for the settlement of domain name-trademark disputes. However, how far the litmus test of achieving a defect free system of dispute resolution has been 151

3 achieved through UDRP is a debated issue. 1 In line with the UDRP, the domain name registries in different parts of the world have also developed their own alternative dispute settlement mechanisms to address the conflicts arising under their respective registries. The present chapter addresses the relevance of UDRP in the resolution of domain name-trademark disputes, points out the areas of concern in the UDRP, briefly looks into the efforts made by the domain name registries to share the burden of dispute settlement and finally probes into the use of other alternative dispute resolution mechanisms in the resolution of domain name-trademark disputes. 4.2 Origin of the UDRP As already outlined, the national responses to domain nametrademark conflicts are scattered and varying. They range from enacting separate legislation 2 to banking on already existing trademark laws for solving the disputes. 3 Over the period of time, they have been found grossly 1 See generally D. Shyamala, Domain Name-Trademark Conflict Resolution: An Evaluation of UDRP, Australian Intellectual Property Journal, Vol. 21, No. 1, 2010, pp As has been done by the United States. 3 The list includes United Kingdom, Austria, India etc. 152

4 insufficient to deal with the domain name-trademark disputes, which involve transnational elements. 4 In response to this, the National Telecommunications and Information Administration of the US Department of Commerce took the first step in the direction of having an international domain name disputes resolution system. The White Paper 5 issued by the National Telecommunications and Information Administration has asked the US government to call upon the World Intellectual Property Organization (WIPO) to initiate a process to resolve domain nametrademark disputes. 6 Acting upon the US call, WIPO conducted a study involving international consultations, wherein seventeen consultative meetings were 4 Violation of trademark registered in one country can take place in another country by way of bad faith domain name registration. Such a situation would bring forward the problem of determination of jurisdiction and applicable law for solving the dispute. 5 A policy statement on the Management of Internet Names and Addresses issued on 5 June 1998, available at < Last visited, 08 August Andrew Christie, The ICANN Domain Name Dispute Resolution System as a Model for Resolving Other Intellectual Property Disputes on the Internet, in David Vaver (ed.), Intellectual Property Rights - Critical Concepts in Law, Vol. V, (London: Routledge, 2006) pp at p

5 held in fifteen different cities throughout the world. It received 334 written submissions from governments, inter-governmental organizations, professional associations, corporations and individuals during this comprehensive study. Finally, WIPO prepared a report on the Management of Internet Names and Addresses: Intellectual Property Issues, which was published on 30 April It led the way for establishing Internet Corporation for Assigned Numbers and Names (ICANN) to administer the domain name system. 8 The ICANN in consultation with World Intellectual Property Organization (WIPO) has provided a policy for domain name dispute resolution, which is known as Uniform Dispute Resolution Policy (UDRP). 9 The UDRP provides for the resolution of domain name disputes through mandatory administrative proceedings, which are to some extent similar to arbitration proceedings. The administrative proceedings under the 7 Available at < Last visited, 27 September Catherine Colston and Kirsty Middleton, Modern Intellectual Property Law, Second edition, (London: Cavendish Publishing Ltd., 2005) p The Policy was approved by ICANN on 24 October <http;// Last visited, 23 July

6 UDRP are mandatory, since the registering of domain names is conditioned by the requirement of subjecting the registrant to the administrative proceedings in case of disputes. ICANN has approved different administrative dispute resolution service providers for conducting the mandatory administrative proceedings. Four such service providers, which are currently working are the Asian Domain Name Dispute Resolution Centre (ADNDRC), the National Arbitration Forum (NAF), the WIPO Arbitration and Mediation Centre and the Czech Arbitration Court (CAC). 10 Among these, the most widely used adjudication service is that of WIPO. International Institute for Conflict Prevention and Resolution (CPR) and eresolution are the two former service providers associated with ICANN. 11 At present, the UDRP is increasingly resorted to settle the domain name disputes, especially involving bad faith registration. 12 However the existence of UDRP in the international level does not bar the states from 10 See < Last visited, 23 July See < Last visited, 20 August See David Bainbridge, Intellectual Property, Fifth edition, (Delhi: Pearson Education, 2002) p

7 applying their own law to resolve domain name-trademark conflicts. 13 While some national domain name registration authorities have adopted UDRP, 14 others, like Nominet (the UK s official registry for domain names),.in Registry (Indian official registry) etc. have adopted their own adjudicatory policy and Panels. Though these Panels decide mainly on the lines of UDRP, some variance can be seen, especially with regard to grounds for intervention. 4.3 An Insight into the UDRP The novel objective behind the UDRP was to provide a uniform mechanism to combat the problems associated with the domain name registrations in a cost-effective and speedy manner. 15 The UDRP is said to be the first truly global approach in the policy determination on the issues 13 Laurence R. Helfer, Whither the UDRP: Autonomous, Americanized, or Cosmopolitan?, Cardozo Journal of International & Comparative Law, Vol. 12, 2004, pp at p Marlene Agmata-Tucker, Squatters in Cyberspace: Netreprenuers or Piratesdotcom?, Journal of Law and Information Science, Vol. 11, No. 2, , pp at p WIPO Arbitration and Mediation Center - New Generic Top-Level Domains: Intellectual Property Considerations (2005 Report), para 38, available at < Last visited, 27 September

8 relating to the use of Internet and the intellectual property concerns flowing there from. 16 The UDRP applies to all registrants in the three major gtlds:.com,.net and.org top-level domains as well as to the subsequently introduced gtlds such as.aero,.asia,.biz,.coop,.info,.jobs,.cat,.mobi,.museum,.name,.pro,.tel,.travel and.xxx. 17 Anyone who registers a domain name in these gtlds must agree to abide by the UDRP. The Policy applies to both registered trademarks as well as unregistered marks. The drafters felt that denying protection to common law marks would be favoring those legal systems which provide rights only through registration. 18 Thus, the Policy permits any owner of a trademark to bring a complaint against any alleged cybersquatter. 19 The UDRP is described as a contractually-mandated 16 Rahul Matthan, The Law Relating to Computers and the Internet, (New Delhi: Butterworths, 2000) p See < Last visited, 27 September David Lindsay, International Domain Name Law ICANN and the UDRP (USA: Hart Publishing, 2007) p Paragraph 4 of the UDRP. See generally Supra note 16, p

9 private system for the benefit of non-contracting parties 20, since the complaining trademark owners are not in contract with the domain name registration system or UDRP. However, under UDRP, there is no scope for initiation of action by the domain name holders against trademark owners. The mandatory administrative proceedings under the UDRP are akin to arbitration proceedings. It consists of private adjudicators enlisted by the recognized adjudicatory bodies deciding the cases. However, unlike arbitration, the UDRP decisions are not final. 21 Either of the parties can start fresh proceedings before the court of competent jurisdiction after the UDRP panel has made the decision. The administrative proceedings under UDRP are governed by the UDRP Rules and also by the supplemental Rules of the service provider administering the proceedings, which are to be posted in the website of the service provider. In case of conflict between the UDRP Rules and the Rules of the service provider, the former shall prevail over the latter. 20 E. Thornburg, Fast, Cheap and Out of Control: Lessons from the ICANN Dispute Resolution Process, Journal of Small and Emerging Business Law, Vol. 6, 2002, pp at p Julia Hornle, Cross-Border internet Dispute Resolution, (Cambridge: Cambridge University Press, 2009) p

10 The UDRP encourages the use of online medium in the process of dispute resolution, which helps in speedier disposal. Various dispute resolution providers have their own standard method for the parties to file the submissions. However, the UDRP does not promote the online hearing, since Rule 13 of the UDRP Rules doesn t allow any in-person hearing, unless the panel determines it to be essential. The UDRP also has the advantage of being transparent on the decisions, since all the decisions under the UDRP are published in full in the websites of the dispute resolution service providers. 22 This helps in subjecting the decisions under the UDRP to a system of peer review by the scholars across the globe in their writings. Such openness in the decisions leading to the constructive criticisms by the scholars is useful in rectifying the mistakes done and strengthening the system of dispute settlement. In order to successfully invoke the administrative proceedings under UDRP, three requirements need to be satisfied. Firstly, the domain name in question must be identical or confusingly similar to a trademark or service 22 Para 4 (j) of the UDRP. 159

11 mark, which righteously belongs to the complainant. 23 Secondly, the domain name holder must have no right or legitimate interest whatsoever in the domain name, trademark or service mark. Lastly, the challenged domain name must be registered by the respondent and he must also be using it in bad faith. 24 Under the UDRP, the complainant need only to make a facile comparison to establish that the disputed domain name is confusingly similar or identical to the trademark. Thus, the burden of proving the confusion is significantly less when compared to the municipal laws, where other additional factors are considered before arriving at the conclusion. Essentially, the complainant under the UDRP needs to demonstrate only that the domain name includes his trademark and nothing more. Soon the 23 This requirement, in accordance with the recommendation of the WIPO Report, limits the scope of administrative proceedings under UDRP to the disputes involving trademarks or service marks and thereby, excludes the disputes involving other IPRs. See World Intellectual Property Organization, The Management of Internet Names and Address: Intellectual Property Issues, Report of the WIPO Internet Domain Name Process (30 April 1999), available at < /> Last visited, 05 December Paragraph 4 (a) (i) to (iii) of UDRP. 160

12 burden shifts to the respondent to prove that he has legitimate rights and interests in the domain name. In Kirkbi AG v. Michele Dinoia 25, the complainant was registered owner of famous trademark LEGO and other marks incorporating the term LEGO. He also owned the domain name, The repondant registered a domain name in December 2002 with a view to have a chat and discussion forum regarding LEGO products. The complainant challenged the registration on the ground of violation of trademark rights before the WIPO panel. One of the major contentions of the respondant was that the complainant cannot have any trademark right in LEGO CLUB, since its is based on the generic word club, which is not suggestive of the service of the complainant. In addition, it was argued that where there is a relience on an unregistered trademark for any action, there exists a heavy burden of proof on the complainant to provide sufficient evidences of rights and reputation attached with the mark. Such a proof is much more required in the instances wherein the trademark consists of a generic or descriptive terms. 25 WIPO Case No. D (9 March 2003). 161

13 While rejecting this argument of the respondant, the WIPO Panel held that The test of confusing similarity under the Policy is confined to a comparison of the disputed domain name and the trademark alone, independent of the other marketing and use factors usually considered in trademark infringement or unfair competition cases. 26 It also observed that the trademark LEGO is the dominant and distinctive feature of the disputed domain name. Mere addition of a generic word, club, does not detract the instant identification with complainant conveyed by the mark. The determination of absence of right or legitimate interest of the domain name holder is crucial to avoid the hardship to legitimate small entrepreneurs due to the presence of famous trademarks of large businesses. However, again the burden of proof of the complainant is relatively low, 26 In arriving at this conclusion, a reference was made to BWT Brands, Inc. and British Am. Tobacco (Brands), Inc v. NABR, WIPO Case No. D (26 March 2002); Britannia Building Society v. Britannia Fraud Prevention, WIPO Case No. D (06 July 2001); Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D (19 September 2000); Koninklijke Philips Elecs. N.V. v. In Seo Kim, WIPO Case No. D (12 November 2001); Energy Source Inc. v. Your Energy Source, NAF Case No. FA (12 February 2001); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO Case No. D (07 November 2001). 162

14 since it is difficult for the complainant to prove the negative (that is to establish the absence of right or legitimate interest) when compared to the respondent s capability of proving the positive (that is to establish his right or legitimate interest in the domain name). Respondent, rather than the complainant, would be having best knowledge of such right or interest. 27 The WIPO Panel s decision in Croatia Airlines d.d. v. Modern Empire Internet Ltd. 28 throws further light on the aspect of right or legitimate interest of the domain name registrant. The complainant in this case was a Croatian national air carrier with ten years of experience in the air carriage business. It had registered the trademark CROATIA AIRLINES and also the domain name However, on the expiry of the domain name registration, the respondent, a Hong Kong based company, registered and offered various goods and services including air tickets. Upon the receipt of the complaint, the Panel found that the complainant discharged its initial burden of proving the absence of respondent s right or interest in the domain name. The respondent merely 27 De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV (09 September 2002). 28 WIPO Case No. D (21 August 2003). 163

15 wanted to use the goodwill of the complainant, which is evident from the fact that the respondent is involved in the business of selling the air tickets. In the absence of any response from the respondent in this case, the Panel held that the respondent had no right or interest in the domain name. It supplemented its reasoning on three counts. First, complainant had no relationship with the respondent and has never authorized the respondent to use the domain name. Second, complainant s service and trademarks are known, since it is a national carrier having substantial years of standing. Third, there is no indication of respondent being known by the same name prior to the registration. In Research in Motion Limited v. Zag Media Corporation 29, the WIPO Panel observed that the use of a domain name consisting of descriptive expression for bona fide descriptive purposes may be permitted under the UDRP. If the domain names are registered not because of their trademark values but because of their attraction as dictionary words, the UDRP does not prohibit such acts. The right or the legitimate interest of the registrant is presumed in such cases. The moot question in such cases is the 29 WIPO Case No. D (22 October 2008). 164

16 determination of state of mind of the registrant at the time of the registration. The bad faith under UDRP needs to be proved not only in registration but also in use of the domain name. The UDRP stipulates some of the key factors to be considered in determining the bad faith intent of the respondent. Paragraph 4 (b) enlists the following circumstances as depicting the evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that domain name is registered or acquired 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 the documented out-of-pocket costs directly related to the domain name; or (ii) when the domain name is registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that registrant is engaged in a pattern of such conduct; or (iii) when the domain name is registered primarily for the purpose of disrupting the business of a competitor; or 165

17 (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to his 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 registrant s web site or location or of a product or service on his web site or location. The UDRP panels had discussed and detailed out the above elements in great details in a number of disputes. For example, in Hollywood Casino Corporation v. Global Interactive 30, hollywood-casino.com and hollywoodcasino.net were transferred to the complainants, and hollywoodgoldcasino.com and hollywoodcasino.net were cancelled on the ground of intentionally creating confusion in the mind of consumers. In Telstra Corporation Limited v. Nuclear Marshmallows 31, the WIPO Panel found bad faith on several counts. They included, the widely popular character of trademark, respondent s attempt to conceal his identity, failure to correct the address and absence of any evidence regarding the actual or intended good faith use of domain name. The Panel not only used these 30 National Arbitration Forum File No. FA (30 March 2000). 31 WIPO Case No. D (18 February 2000). 166

18 factors to determine the bad faith registration but also went on to use them to arrive at a conclusion that the respondent could not have intended the fair use of the domain name. The above-mentioned list of circumstances is not exhaustive, and the Panel may thus consider any other circumstance/s for deciding the bad faith intent. However, the key guideline as laid down in the above indicative factors in considering additional circumstance/s is the abusive registration. Over the period of time, a number of factors are emerging for the determination of the bad faith, depending on the differing circumstances. In Entercolor Technologies Corporation v. Gigantor Software Development Inc. 32, for example, the Panel came to the conclusion that the failure to use a domain name counts against the respondent as an element of bad faith, unless countered with proper evidences. Similarly, in America Online Inc. v. idomainnames.com 33, the National Arbitration Forum held that the failure to defend against the allegations of the abusive registration counts against the respondent, since it results in the necessary implication of registering the domain names in bad faith. 32 National Arbitration Forum File No. FA (21 March 2000). 33 National Arbitration Forum File No. FA (24 March 2000). 167

19 In Octogen Pharmacal Company, Inc. v. Domains by Proxy, Inc / Rich Sanders and Octogen 34, the Panel advocated the view that if the legitimacy of a registration is contingent on the compliance of certain conditions, a subsequent non-compliance with those conditions may make it a registration in bad faith, even if the registrant was intending to comply with the conditions when he registered the domain name. Thus, there is a possibility of post facto attraction of bad faith by the domain name registrants. Despite the above developments, it is always to be kept in mind that the bad faith determination is a factual determination, which has to be done on case by case basis. There is no straitjacket formula; rather the decision-making authority must tailor one suitable in the given set of circumstances. There are some well-established defenses available to the registrant of domain names. 35 Firstly, he can contend that before getting the notice, he had used, or made 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. Secondly, that he has been commonly known 34 WIPO Case No. D (19 August 2009). 35 Paragraph 4 (c) (i) to (iii) of UDRP Policy. 168

20 by that same name, even if it has not acquired any trademark or service mark rights. Thirdly, the domain name is used for legitimate noncommercial or fair use and he has no intention for commercial gain to mislead consumers or to tarnish the trademark or service which is in question. The above defenses depict that the use of trademark of a company in the registration of domain name by anyone is not completely prohibited. Domain name registrations are not considered abusive, if they are justified by legitimate free speech rights. In Standard Chartered PLC v. Purge I.T. 36, the WIPO Arbitration and Mediation Centre elaborates the free speech rights in the following terms. Those who have genuine grievances against others or wish to express criticisms of them - whether the objections are against commercial or financial institutions, against governments, against charitable, sporting or cultural institutions, or whatever - must be at liberty, within the confines set by the laws of relevant jurisdictions, to express their views. If today they use a website or an address for the purpose, they are entitled to select a Domain Name which leads others easily to them, if the name is still available. 36 WIPO Case No. D (13 August 2000). 169

21 Thus, what is prohibited is only the bad faith registration of trademarks as domain names with an intention to get some unlawful benefits. In Prestonettes Inc. v. Coty, 37 Holmes J. has aptly observed, A trademark does not confer a right to prohibit the use of the word or words. It is not a copyright. A trademark only gives the right to prohibit the use of it so far as it protects the owner s goodwill against the sale of another s product as his. In simple terms, mere registration of a domain name covering the trademark would not confer any right to the trademark owner. Moreover, offering the registered domain name for sale is also not the conclusive evidence of abusive registration. 38 Rather, the burden of proof is on the complainant to prove that all the prerequisites of the dispute resolution policy are complied with. There are also instances of the UDRP panels recognizing the legitimacy of buying and selling of domain names, U.S. 359, 368 (1924). 38 Charlotte Waelde, Trademarks and Domain Names: There s lot in a name, available at < Last visited, 21 October

22 especially of descriptive nature, provided the registrants are acting in good faith. In Car Toys Inc. v. Informa Unlimited Inc. 39, the complainants demanded to relinquish the respondents registered domain name cartoys.net in their favour. The UDRP Panel, while holding the Car Toys Inc. s trademark in the words as irrelevant, recognized that Informa was involved in the business of buying and developing descriptive domain names for sale. Such an activity of informa did not solely constitute abusive registration. The Panel concluded that the complainant had not proven that the respondent had no legitimate interest in the domain name in dispute; hence the domain name remains with Informa. Similarly, in the recent PJS International SA v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd. 40, the WIPO Arbitration and Mediation Centre observed that There is no evidence that the Respondent acted in bad faith when it registered the disputed domain name, among the several thousand domain names that it claims to own. The mere fact of registering a 39 National Arbitration Forum File No. FA (20 March 2000). 40 WIPO Case No. D (08 August 2013). 171

23 large number of domain names is not proof by itself of bad faith, as there may exist a legitimate purpose in appropriating many domain names in the hope that some of them will enjoy commercial value. The situation is similar to that of the acquirer of many mining rights or oil concessions in the hope that some of them will be really worthy of development. The mere fact of offering the disputed domain name for sale is not in itself indicative of bad faith. Generally, one person tribunal is established under UDRP to adjudicate the dispute. However there is a scope for three person tribunal, if requested by either party. Since the proceedings take place online, there is little scope for in-person hearing, unless the Panel considers such hearing is necessary. 41 Interestingly, UDRP also allows the parties to submit the dispute to a court of competent jurisdiction before the mandatory proceedings under UDRP commences or after it is concluded Paragraph 13 of the UDRP Rules There shall be no in-person hearings (including hearings by teleconference, videoconference, and web conference), unless the panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint. 42 Paragraph 4 (k) of the UDRP. See generally Vivek Sood, Cyber Law Simplified, (New Delhi: Tata McGraw-Hill Publishing Company, 2001) p

24 The domain name disputes brought under the UDRP are governed by the said policy read with the accompanying Rules of Procedure and Supplemental Rules of the respective approved dispute resolution service provider. The jurisdiction of the service providers arises out of the registration agreement between the registrant and the registrar at the time of the registration of the domain name. The registrant, if has any problem relating to the domain name, is mandated to invoke the jurisdiction of the agreed service provider to settle the problem. The Panel deciding the case is also authorized under the Rules to take into account any rules and principles of law that it deems applicable in addition to the UDRP Rules. 43 The initial trend in the dispute resolutions under UDRP clearly demonstrates the heavy reliance on this provision. In the World Wrestling Federation Inc. v. Michael Bosman 44, the first UDRP case, the dispute was on the worldwrestlingfederation.com, which was registered by the respondent. As discussed above, one of the essential requirements of proving the abusive registration is to show that the domain name is registered and used in bad faith. Since both the parties involved 43 Rule 15, UDRP Rules. 44 WIPO Case No. D (14 January 2000). 173

25 were domiciled in the United States (US), the Arbitrator looked into the decisions in two leading US cases, Panavision International L P v. Dennis Toeppen 45 and Intermatic Inc. v. Toeppen 46, for the determination of what is meant by use. While referring to the decisions of the above US cases, the Arbitrator concluded that the act of registering the domain name and offering it for sale to the complainant was sufficient to constitute use. The argument of legitimate use by Michael Bosman was found baseless, since he had not developed the website, and the name was neither in any way identified with nor related to any legitimate interest he had. Thus, the US decisions provided guidelines to the Arbitrator to order the transfer of domain name from the respondent to complainant. In the second case before WIPO, Robert Ellenbogen v. Mike Pearson 47, the domain name musicweb.com was in question. The Arbitrator made reference to UDRP Rules and the WIPO Final Report 48. More F3d 1316 (9 th Cir 1998) F Supp 1227 (ND Ill, 1996). 47 WIPO Case No. D (17 February 2000). 48 See supra note

26 specifically, the latter stated if the parties to the procedure were resident in one country, the domain name was registered through a registrant in that country and the evidence of bad faith registration and use of the domain name related to activity in the same country, it would be appropriate for the decision-maker to refer to the law of the country concerned. Since all the above requirements have coincided at the US in the present case, the Arbitrator once again referred Intermatic Inc. v. Toeppen to clarify the word use and ordered the transfer of domain name. In juliaroberts.com case 49, the respondent, who had registered many celebrity names as domain names, registered juliaroberts.com and put up for auction. Interestingly, the complainant celebrity, Julia Roberts, did not posses any registered trademark. In light of this, one of the crucial issues was about the trademark rights of the complainant in her name. On behalf of the complainant, the argument was based on the common law trademark rights, which was acquired by her name in the form of secondary meaning 50. So the question before the Panel was, whether when someone 49 Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D (29 May 2000). 50 Secondary meaning implies that even though a name (whether of a person, product or service) or a design is not registered mark, the public has come to associate that name or design with a 175

27 hears the name Julia Roberts or logs on to juliaroberts.com, such a person identifies that name or site with the complainant, and whether the respondent s use of the name would likely to confuse the public that the celebrity actress was related to such use? The Panel recognized the common law concept of secondary meaning and observed that the complainant possessed the required trademark rights in her name. Panel also noted that there was nothing on the website that related to the complainant, which makes clear that it was not a fan site. The domain name was registered with the sole intention of selling, which was also evident from the respondent s established pattern of conduct of registering many other celebrity names. All these reflected the requisite bad faith and therefore, the Panel ordered the transfer of domain name to Julia Roberts. particular person / company / good / service. Thus, the crucial question in the determination of such a common law right is, whether there is a likelihood of confusion in the minds of the public by the use of the name by others that the use is related to the owner of secondary meaning? 176

28 The UDRP also contains provisions relating to reverse domain name hijacking (RDNH). 51 The misuse of the position by the large and powerful companies by using the trademark violation as a tool against the small players having a legitimate trademark registration is taken care of by the RDNH actions. Though the UDRP doesn t provide any sanction against the RDNH, the panels are authorized to discard such complaints with a warning. It is also an established fact that whether the RDNH occurs is a matter of Panel to consider even if the respondent does not request a finding of RDNH. 52 The existing practice of the UDRP panels show that the grounds of RDNH are found on three major categories. (a) The complainant s knowledge of bona fideness before filing the complaint. (b) The little 51 Rule 15 (e) of UDRP Rules If after considering the submissions, the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. 52 See, for example, Goway Travel Limited v. Tourism Australia, WIPO Case No. D (06 June 2006); Spy Optic, Inc. v. James Lee, WIPO Case No. D (01 October 2013). 177

29 prospect of success of the complaint. (c) The malicious and reckless attitude of the complainant. In Deutsche Welle v. Diamond Ware Ltd. 53, for example, the defendant used its DW mark as the domain name dw.com for promoting its business. It was connected to an active website and used for bona fide offering of goods and services. The complainant brought a case despite the above facts. The WIPO Panel had no hesitation in finding that it is a fit case of RDNH, since the complainant had / should have had the prior knowledge of the bona fideness. Similarly in Smart Design LLC v. Carolyn Hughes 54, the complainant registered the domain name smartnyc.com and sought for the registration of smartdesign.com in August 1996 and found that the latter was not available for registration at that time. Subsequently, when it became available for registration, the respondent registered the said domain name on 26 May The complainant made a Whois search in April 1999, and after finding the respondent as the registrant of smartdesign.com, wrote a letter asking about the intention of respondent to retain the domain name 53 WIPO Case No. D (02 January 2001). 54 WIPO Case No. D (18 October 2000). 178

30 indefinitely or temporarily. To be noted, the complainant did not challenge the registration of the domain name by the respondent. There was no response from the respondent. Subsequently, the complainant found that the domain name registration was due to expire (unless renewed) on 27 May According to the complainant, he hoped that the domain name would not be renewed and he would be able to get the registration. On 25 July 2000, the complainant found that the domain name registration was renewed by the respondent. On these factual grounds coupled with the fact that the respondent did not operate a website and also did not run any business by the said name, the complainant brought a claim against the respondent for the bad faith registration. The WIPO Panel made a finding that the complainant committed RDNH on the basis of several factors. First, the Panel found that the name Smart Design was so common that anyone may use it and the complainant must be aware of it. Second, the complainant did not raise any complaint when he first found that the name was not available for registration in August When he had no objection against the first registrant, he should also not have against the subsequent registrant. Third, when the 179

31 complainant first wrote the letter to the respondent, there was no mention of respondent doing anything wrong. On the contrary, the letter impliedly acknowledges the right of the respondent in the domain name. Fourth, if the complainant believed that the respondent was wrong, he should have followed up the letter and could have made every attempt to obtain the reply. Fifth, the complainant s contention that he was waiting for the renewal date so that he can get it registered before the renewal by the respondent is also not acceptable. It was found evident from the fact that he waited for more than eight weeks before checking the position of the domain name. 55 Thus, the Panel concluded that the complainant is guilty of RDNH when it advanced arguments that were tortuously artificial in the extreme, reckless both as to the justification for making those arguments and the seriousness of the overall charge against respondent, who was manifestly no cybersquatter. 4.4 UDRP vis-à-vis National Responses: Finding the Differences The national responses in almost all the states, except the US, have been on the basis of their traditional trademark laws. They, being trademark May 2000 to 25 July

32 centric, undoubtedly differ from the domain name centric approach of the UDRP. Though the UDRP derives heavily from the US negotiation of the ACPA 56, there are certain differences between the two. These differences can be seen in the structure, procedure, substantive provisions and also in the sphere of application. The striking differences between the UDRP and ACPA are as follows. One of the differences between the UDRP and ACPA is that the UDRP s treatment of living individual s names is different from treatment under ACPA. While ACPA provides cause of action to any living individual whose name has been registered, the UDRP protects only names that are sufficiently prominent so as to possess trademark rights. 57 In other words, the famous names are the only protected under the UDRP as against any name under the ACPA. Secondly, the ACPA allows the statutory damages to be paid to the winning party, which is not seen in the UDRP. Thirdly, the UDRP s 56 See David E. Sorkin, Judicial Review of ICANN Domain Name Disputes Decisions, Computer and High technology Law Journal, Vol. 18, , pp at p Jason H. Kaplan, The Anticybersquatting Consumer Protection Act: Will it End the Reign of the Cybersquatter?, UCLA Entertainment Law Review, Vol. 8, 2000, pp at p

33 decision can be subject to challenge before the national courts of competent jurisdiction, which cannot be done with the final decision of the US court. Fourthly, the injunctive relief, pending the final determination of the case, is not available under UDRP. However, ACPA on the other hand provides injunctive relief. Fifthly, the dilution of the mark is a cause of action under ACPA, but not under UDRP. Sixthly, the ACPA recognizes the criteria of intellectual property rights in the domain names as one of the criteria for the determination of bad faith. The UDRP doesn t incorporate it in the determination of bad faith. Seventhly, the UDRP is based on the online dispute resolution mechanism, and ACPA, being the court litigation, requires the physical presence of the parties and their representatives. Eighthly, while the ACPA requires bad faith intent to profit, the UDRP requires only bad faith on the part of the domain name registrant. In addition to the above listed differences, the dissimilarity can also be seen in the dispute settlement forums, jurisdiction, procedures to be followed by the forums etc. These differences, coupled with other factors, have resulted in both advantages and disadvantages in resorting to UDRP for dispute resolution. 182

34 4.5 Relative Advantages of the UDRP UDRP has certain unique advantages over the municipal dispute resolution systems, which are found grossly insufficient due to the transborder nature of domain name-trademark disputes. Therefore, resorting to UDRP has been found beneficial by many. The advantages of UDRP can be summed up as follows. One of the advantages of UDRP is that all the proceedings take place online; thereby the inconvenience caused by the requirement of physical presence, which is seen in court proceedings, is avoided. The procedure followed by the adjudicatory bodies in the resolution of disputes is quite simple. The complaints are also usually dealt within three months from submission. This has been possible because of the obligation imposed on the Panelists under Paragraph 15 of the Rules to forward the decision to Service Provider within 14 days of the appointment of the Panel. Thus, resorting to UDRP for the resolution of domain name disputes would help the parties to have quick disposal of disputes 58 and to avoid the cumbersome and lengthy court proceedings. Moreover, the resolution of conflict under 58 Jonathan H. Anschell and John J. Lucas, What s in a Name: Dealing with Cybersquatting, Entertainment and Sports Lawyer, Vol. 21, No. 1, Spring 2003, pp. 3-7 at p

35 UDRP is cost effective when compared to the traditional judicial settlement. 59 A striking feature of UDRP is the transparency in the proceedings. All details relating to the cases are provided in the website, so that neither of the parties can contend bias in the decision making. The online service of guidance and help information is also a significant feature of UDRP, which is also subject to periodic review for updating. These features of UDRP have been instrumental in bringing certainty, predictability and clarity of language as well as in increasing popularity of the system. 60 Another meritorious aspect of UDRP to the complainant is that it shifts the burden of proof on the respondent once an initial acceptance of presence of abuse is established. Therefore, the trademark holders are often tempted to invoke the UDRP proceedings to enjoy the relatively lesser burden of proof. The decisions of the adjudicatory bodies recognized under 59 Stephen J. Ware, Domain Name Arbitration in the Arbitration-Law Context: Consent to, and Fairness in, the UDRP, Journal of Small & Emerging Business Law, Vol. 6, 2002, pp at p Warren B. Chik, Lord of Your Domain, but Master of None: The Need to Harmonize and Recalibrate the Domain Name Regime of Ownership and Control, International Journal of Law and Information Technology, Spring < 184

36 UDRP are also enforceable, though subject to the losing party s right to resort to court proceedings. 61 Thus, the UDRP proceedings quite often result in binding decisions. One of the reasons for the increased popularity of UDRP is the jurisdictional convenience. UDRP proceedings help in overcoming jurisdictional hurdles, since it has international jurisdiction. The trademark owners from any state can file complaint under UDRP merely by establishing their trademark rights. No other existing alternative provides this convenience to the aggrieved trademark owner. Moreover, even in the cases where the domain name holder cannot be identified, 62 the UDRP can be invoked, since it provides for an equivalent of in rem 63 legal proceedings Paragraph 4 (k) of UDRP. 62 May be because of the improper address given by the registrant. 63 In rem jurisdiction involves taking action against the domain name as against the in personam jurisdiction involving taking action against the domain name holder. 64 Robert A. Badgley, Internet Domain Names and ICANN Arbitration: The Emerging Law of Domain Name Custody Disputes, Texas Review of Law & Politics, Vol. 5, No. 2, , pp at p

37 The protection granted to trademark holders by ICANN in the form of UDRP also boosts the confidence of web users, especially the online purchasers. The chances of they being deceived by the cybersquatters is less since UDRP acts as a guardian of domain names in the international level. 65 In the absence of such an international mechanism, the web users would be skeptical about the trustworthiness of the domain names, as the national legal systems, due to their inherent limitation, are incapable of handling the problems arising from the international domain name system. 4.6 Areas of Concern in the UDRP Though the UDRP is hailed by many for its achievements in the resolution of domain name-trademark disputes, 66 it is not completely free from defects. In the areas of concern, we can note that the panelists are 65 Ned Branthover, UDRP - A Success Story: A Rebuttal to the Analysis and Conclusions of Professor Milton Mueller in Rough Justice, available at < Last visited, 30 June The study conducted by the Max-Planck Institute concludes that as a matter of principle, the UDRP is functioning satisfactorily. No major flaws have been identified in the course of the evaluation. Annette Kur, UDRP: A Study by the Max-Planck Institute for Foreign and International patent, Copyright and Competition Law, Vol. 72, 2002, available at < Last visited, 02 October

38 often seen unduly ready to accept the complainants grounds and in some cases they have even stretched the terms of the Policy to entertain the cases of the complainants. 67 This is the direct consequence of the complainant s right to choose among different dispute resolution service providers recognized by UDRP. The service providers have turned complainantfriendly in order to get much share of future cases on domain names. 68 It is revealed by the fact that more than 75% of cases decided by the panels were in favour of the complainants. 69 This phenomenon is helped by the absence of clarity on the burden of proof, which allows the panelists to shift the burden of proof from the party they favour to the other party. 70 Even on 67 A study reveals that WIPO and NAF have decided majority of cases in complainant-friendly manner. See Parul Kumar, Domain Name Disputes and Cybersquatting: Can Arbitration Suffice as a Way of Resolution?, available at < Last visited, 30 July Robert P. Merges, Peter S. Menell and Mark A. Lemley, Intellectual Property in the New Technological Age, Fourth edition (New York: Aspen Publishers, 2007) p According to Helfer s study, average percentage of complainants winning the cases across all domain name dispute resolution service providers is 84 percent. Supra note 21, p Victoria Holstein-Childress, Lex Cyberus: The UDRP as a Gatekeeper to Judicial Resolution of Competing Rights to Domain Names, Penn State Law Review, Vol. 109, No. 2, 2004, pp at p

39 other matters, UDRP provides lesser guidelines and more discretion to the arbitrators. 71 Added to this, there is no provision in the UDRP for challenging the appointment of an arbitrator, if the party suspects him to be biased. 72 Thus, the UDRP promotes forum-shopping, and it ultimately gives an impression that justice can be bought and sold under UDRP. 73 This is certainly an unhealthy development, which might result in the respondents loss of confidence in the UDRP. 74 In response to the above problem of forum shopping, Milton Mueller recommends that instead of complainant choosing the dispute resolution 71 Ann Bartow, Exporting Trademark Confusion, in Richard A. Spinello and Herman T. Tavani (eds.), Intellectual Property Rights in a Networked World: Theory and Practice, (London: Information Science Publishing, 2005) pp at p Refer barcelona.com case. Under Paragraph 7 of the UDRP the Service Provider may appoint a substitute Panelist in case he discloses any circumstance that could give rise to justifiable doubt as to the impartiality or independence of the Panelist. 73 Michael Geist, Fair.com?: An Examination of the Allegations of Systematic Unfairness in the ICANN UDRP, Brooklyn Journal of International Law, Vol. XXVII: 3, , pp at p Closure of eresolution, the most registrant friendly dispute resolution service provider, has made most of the scholars suspicious about the ICANN s bias towards the trademark owners and service providers support for trademark owners. 188

40 service provider, the registrar of the domain name concerned should do the same. 75 Such a practice, according to him, would provide a fair opportunity to both the parties. However, Michael Froomkin on the other hand, opposes such a proposition in his scholarly paper, since it would tilt the balance in favour of the domain name registrants (respondents in the disputes). According to him, such a change would warrant the domain name registrars to opt for a registrant-friendly forum, which would be created due to the practical reason of competition between the registrars. 76 The element of bias towards the complainants is furthered by the fact that trademark attorneys are quite often found in the panels. It has been argued as one of the major reasons for the high success rate of the complainants in the domain name dispute resolutions. The frequent resort to the WIPO dispute resolution system strengthens such suspicion, since it 75 Milton Mueller, Rogue Justice, available at < Last visited, 28 September Michael Froomkin, ICANN s Uniform Dispute Resolution Policy ; Causes and (Partial) cures, Brooklyn Law Review, Vol. 67, No. 3, 2002, pp at p