Role of UDRP in resolving domain names disputes
From Advocatespedia, The Law Encyclopedia
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a policy developed by the Internet Corporation for Assigned Names and Numbers (ICANN) which aims to address issues pertaining to disputes over trademarked or proprietary domain names, accusations of domain name abuse such as cybersquatting, or similar grievances.
As the world is growing, our technology is also matching steps in the field of advance internet. The domain name trademark disputes have grown within a relatively short span of time all over the world. This growth took place despite the national responses to solve the problems. Though the national responses were significant in the initial phase of the developments to deal with 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 degree of highly technical domain name trademark litigations have deterred the victims to approach the doors of justice. As a result, a step has been taken 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. 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 disputes arising under their respective registries.
It all started in the late nineties. After, almost 15 years, WIPO and the NAF are one of the preferred UDRP dispute-resolution providers. Expert panelists decide on the complaints, and the process is far less expensive and time-consuming than litigation. This doesn’t mean that complainants, respondents, and their counsel should assume that this form of dispute resolution is simply an administrative exercise. Sufficient evidences must be submitted by the complainant to ensure that freedom of speech and other rights are upheld and protected, too. The elements, outlined in the beginning of each decision written by UDRP panelist(s), are as follows:
1. the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
2. 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., UDRP Panel Decision Criteria
Conditions for obtaining remedies: –
1. Trademark must be identical or confusingly similar to domain name; and
2. Registrant has no rights or legitimate interests in domain name; and
3. Domain name is registered and used in bad faith.
Examples of rights or legitimate interests: – Registrant commonly known by the domain name – Use for bona fide offering of goods or services l Examples of bad faith: – registration for purpose of profit sale to trademark owner – pattern of preventing trademark owners from registration
Telstra Corporation Limited v. Nuclear Marshmallows1, 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 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. Standard Chartered PLC v. Purge I.T.2, 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 email address for the purpose, they are entitled to select a Domain Name which leads others easily to them, if the name is still available. Car Toys Inc. v. Informa Unlimited Inc.3, 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.
PJS International SA v. Vertical Axis Inc. / Whois Privacy Services Pty Ltd.4, 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 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.
Deutsche Welle v. Diamond Ware Ltd.5, 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.