Prior to the enactment of ICANN’s dispute resolution policy (commonly known as the “UDRP”), NSI had enacted a dispute resolution system that permitted a trademark owner to challenge a registration where the domain name was identical to the registered trademark, and was registered after the registration date of the trademark. If these factors were met, NSI would put the registration on hold. In part due to public dissatisfaction with the NSI policy, ICANN took over domain name dispute resolutions under a series of agreements approved by the United States government.
There is currently serious consideration regarding restructuring the ICANN domain name dispute policy. The current ICANN domain name dispute policy:
- requires that the cybersquatter registered and used the domain name in “bad faith” and lacks any “right or legitimate interest” in the name;
- is no longer limited to federal mark owners and can be now be used against holders of confusingly similar names (instead of merely identical names);
- requires the domain owner to submit to a mandatory administrative proceeding once initiated by a mark owner with remedies limited to cancellation of the domain registration or its transfer to the mark owner;
- the entire administrative proceeding is concluded based upon the complaint and the response to the complaint (and possibly a reply) and supporting documents;
- the domain name owner has twenty (20) days in which to respond with argument to a filed complaint;
- jurisdiction for appeals of the administrative proceeding is at either the domain name holder‘s registered address or the jurisdiction of the registrar. In this regard, business owners may want to verify that their registrar is located in a convenient jurisdiction.
The mark holder bears the burden of proving all three of the following:
- the domain name is identical to, or confusingly similar to, a trademark;
- the domain holder has no rights or legitimate interests with respect to the domain name; and
- the domain name has been registered and is being used in bad faith.
Under the ICANN dispute policy, factors for determining bad faith include:
- acquisition of the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or to a competitor, for more than the documented costs directly related to the domain name;
- a pattern of registering for the purpose of blocking the mark owners from using names;
- registration primarily for the purpose of disrupting the business of a competitor; and
- use for commercial gain, with intent to attract users to the domain site by creating a likelihood of confusion with the mark as to the source, sponsorship, affiliation or endorsement of goods/services.
The domain name holder may counter with evidence of good faith and a legitimate interest. A domain name holder has rights or legitimate interest in a domain name if:
- the domain name holder has made prior use in connection with a good faith offer of goods or services using the name;
- the domain name holder is commonly known by the name; or
- the domain name holder is making a legitimate noncommercial or fair use of the domain name (for noncommercial gain).
Domain name holders are prevented from transferring the domain registration to another while the dispute or court proceeding regarding the domain name is pending.
The domain name holder has twenty days from the date the complaint is forwarded by the domain name service provider in order to submit a response, if any, to the provider. If the mark holder has designated a single-member panel, the domain name holder may opt for a three-member panel (and pay half of the costs). Although it is advisable to file a response, a domain name holder can prevail without doing so if the panel determines, based upon the complainant’s filings alone, that the complaint is without merit.
The panel has very broad powers on the manner in which the proceeding shall be handled (generally there are no in-person hearings). In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute, the panel has the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. A domain name holder has ten (10) days to begin a court action after an adverse decision.
More information on ICANN and the UDRP is available at the ICANN website, http://www.icann.org. Links to approved dispute resolution providers are available at http://www.icann.org/udrp/approved-providers.htm.