This article has been written by Nagesh Karale pursuing a Diploma in US Intellectual Property Law and Paralegal Studies from LawSikho and edited by Shashwat Kaushik.

Introduction 

A domain name is the internet address for the website. It is useful for locating web pages or online resources on the World Wide Web. It is an easy-to-remember name that’s associated with a physical IP address on the Internet. Domain names are associated with numeric IP addresses. The characteristics of good domain names are that they are short and easy to remember. Anyone can purchase a domain name. A good domain name brings more visitors to the website.

Domain Name Service (DNS) is an essential component of the internet. It is implemented as a decentralised, hierarchical system .It is distributed globally across groups of DNS servers. The service acts as a giant directory for resolving domain names to IP addresses and IP addresses to domain names, irrespective of where the domains are located.

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Domain names are organised under the DNS root domain. The first group consists of top-level domains (TLDs), which include generic ones such as.com,.info,.net,.edu, and.org. Additionally, there are country-specific TLDs known as ccTLDs such as .jp and .uk.

Following are the Key Benefits of a Well-Chosen Domain Name for Business

  • A strong domain name adds professional credibility to business.
  • A good domain name advertises brand name and attracts customers.
  • It increases search engine ranking.
  • It will provide brands with marketability locally or globally.
  • A unique and recognisable domain can set a business apart from competitors.

Cybersquatting is a cybercrime that involves registering, selling, or using a domain name to profit from someone else’s trademark, service marks, company names, or personal names. It is also known as domain squatting. This practice can cause customer confusion and damage a brand’s reputation. It is illegal to buy domain names that are identical to or very similar to trademarks. The motive of a cybersquatting is to gain profit from it either by ransoming the domain name back to the trademark owner or by using the domain name to divert business from the trademark owner to competitors.

In disputes related to domain names, court battles can be prolonged and costly. These disputes frequently centre on arguments concerning trademarks or dilution. It is difficult to establish such claims, particularly for well-known individuals who may not have officially trademarked their names.

The UDRP Administrative Procedure globally provides a quicker and more cost-effective alternative to court proceedings for settling disputes related to Internet domain names. Decision-makers involved in this process are specialists in fields such as international trademark law, domain name issues, e-commerce, and dispute resolution.

Understanding the WIPO UDRP

The World Intellectual Property Organisation (WIPO) is a specialised agency of the United Nations. It is devoted to fostering global protection of intellectual property rights (IPR) and encouraging creative activities. It was established in 1967 and is based in Geneva, Switzerland. WIPO functions as a self-funded entity with 192 member nations. WIPO’s functions include signing international agreements, providing legal and technical assistance, conducting research, and facilitating global campaigns to enhance IP protection.

The UDRP rules and WIPO Supplemental Rules were created by ICANN (Internet Corporation for Assigned Names and Numbers). The WIPO Centre played a crucial advisory role. These rules provide guidelines for the entire dispute resolution process. Accredited service providers, such as the WIPO Arbitration and Mediation Centre, manage UDRP procedures.

Grounds for UDRP complaints

The UDRP procedure is applicable for individuals or companies globally to file domain name complaints, mostly for generic top-level domains (gTLD). It may be applied for disputes concerning a country code top-level domain (ccTLD) if the respective ccTLD registration authority has voluntarily adopted the UDRP Policy.

Criteria for eligibility 

Paragraph 4(a) of the Uniform Domain Name Dispute Resolution Policy (UDRP) states that the complaint must include three mandatory elements: 

  • How the trademark and domain name are identical or confusingly similar.
  • Why the respondent has no rights or legitimate interests in the domain name.
  • How the domain name was registered and used in bad faith.

Circumstances of bad faith registration and use

The following circumstances, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

  • If domain registration involves registering a domain with harmful intentions. This can include attempting to sell, rent, or transfer the domain to the complainant or a competitor to make a profit. 
  • If registering a domain to prevent the rightful trademark owner from obtaining a matching domain repeatedly. It also includes registering a domain to disrupt a competitor’s business intentionally. 
  • If using the domain to attract internet users for financial gain and causing confusion about the source or affiliation with the complainant’s mark.

This list is not limited to bad faith in both the registration and use of a domain name.

Filing a UDRP complaint

Five Stages in UDRP Administrative Procedure:

  1. The complainant submits a complaint to an ICANN-accredited dispute resolution service provider (such as the WIPO Centre).
  2. The respondent submits a response.
  3. The dispute resolution service provider appoints an Administrative Panel (Panel members 1 or 3).
  4. The Administrative Panel informs a decision to all relevant parties.
  5. In the event that the decision requires the cancellation or transfer of the domain name(s), the respective registrar(s) implements the decision of the Administrative Panel.

Preparing and filing a complaint

The UDRP process generally settles disputes within 60 days of filing a complaint with the WIPO Centre. The costs vary depending on factors like the number of domain names and whether one or three panel members are chosen.

To maintain confidentiality, the WIPO Centre’s website only shows specific details of proceedings. The process follows the language in the registration agreement. The Administrative Panel makes exceptional decisions about in-person hearings if necessary.

The complainant is free to select any accredited dispute resolution service provider. Disputes for gTLDs are managed by ICANN-accredited providers like the WIPO Centre. Disputes for ccTLDs follow accreditation by the respective ccTLD administration. There is no standard ICANN form for UDRP complaint and response filing. The WIPO Centre provides a model complaint and response filing guidelines.

The complaint and response submitted electronically should match the language of the registration agreement. Due to the WIPO Centre’s model aids, there is no need for legal assistance. A single complaint may include several domain names under the same entity. There is no need for certification or notarization of the documents. A fee mentioned in the UDRP rules is required for processing the complaint. According to the new UDRP rules, the complaint should be sent only to the WIPO Centre and the registrar(s). Domain owner’s information can be obtained through a “Whois” search for gTLDs or the related registrar’s Whois service for ccTLDs.

The WIPO Centre performs a formality compliance review involving the assessment of documentation such as the complaint transmittal cover sheet. It confirms the fulfilment of items mentioned in Paragraph 3(b) of the UDRP Rules and ensures proper payment.

Preparing and filing a response

According to Paragraph 5(a) of the UDRP Rules, it is obligatory to file a response within 20 days from the commencement of the administrative proceeding. If the respondent fails to respond within this timeframe, the WIPO Centre proceeds to appoint the Administrative Panel, which makes a decision based on the information available.

The WIPO Centre makes it easy to submit documents electronically, either by sending them as email attachments or by directly submitting them online. The Response should reference circumstances outlined in Paragraph 4(c) of the UDRP Policy to show rights or legitimate interests in the domain name.

The filing of a response is free of charge. The respondent should send his response electronically to both the complainant and the WIPO Centre, excluding the registrar(s).

Role of WIPO panellists

An administrative panel includes one or three impartial individuals appointed by the dispute resolution service provider. This panel is independent of the service provider, ICANN, registrars, and the involved parties. Panellists listed by the WIPO Centre are chosen based on their established reputation for impartiality, judgement, and experience in international trademark law, e-commerce, and Internet-related matters. The list is global, featuring over 400 panellists from 50+ countries. The Administrative Panel is appointed post-response filing or the response due date. For a single panellist case, the appointment occurs within 5 days of the response filing or due date. In a three-person panel, it’s typically within 15 days.

5.1 Appointment Process

  • If both parties opt for a single panellist, the WIPO Centre appoints from its panellist list.
  • For a three-person panel with differing party designations, the WIPO Centre seeks to appoint candidates nominated by each party. If not feasible, appointments are made from the centre’s list. The third panellist is selected based on party preferences from a provided list.
  • In the event of no response from the respondent, the WIPO Centre appoints the administrative panel based on the number of panellists designated by the complainant (1 or 3).

The complainant pays the fees. But if the respondent demands three panel members, then the costs are shared by both parties. For 1-5 domain names, the fee is USD 1500 for a single panellist and USD 4000 for three panellists. For 6-10 domain names, it’s USD 2000 for a single panellist and USD 5000 for three panellists. The complainant covers all fees, and the respondent shares fees only if opting for three panellists. Additional payments may be requested in exceptional circumstances.

WIPO UDRP decision process

Types of decisions

  • Order the disputed domain name(s) be transferred to the complainant.
  • Order the disputed domain name(s) be cancelled.
  • Decide in favour of the domain name registrant, denying the requested remedy.

If the dispute is not within the scope of Paragraph 4(a) of the UDRP Policy, the Panel must specify this. If, after considering submissions, the Panel finds the complaint brought in bad faith, it must declare this in its decision. No monetary judgments or lawyers’ costs can be awarded by the Administrative Panel. According to Paragraph 15(b) of the UDRP Rules, in the absence of exceptional circumstances, the Administrative Panel must forward its decision on the complaint to the WIPO Centre within fourteen days of its appointment.

Appeals and enforcement

The domain name registrant losing in the administrative proceeding can challenge the decision by filing a lawsuit in certain courts (Paragraph 4(k) of the Policy).  The registrar implements the panel’s decision 10 business days after notification, unless the registrant provides official documentation of a lawsuit filed in a mutual jurisdiction. A court’s jurisdiction is at the location of the registrar’s principal office or the domain name registrant’s address in the WHOIS database at the time of the complaint.

The concerned registrar will then take no further action until it receives:

  • Satisfactory evidence of dispute resolution between parties.
  • Evidence of dismissal or withdrawal of the registrant’s lawsuit.
  • Copy of a court order dismissing the lawsuit or stating the registrant has no right to use the domain name.

In accordance with UDRP Paragraph 16(b) of the Rules, decisions are made publicly accessible online with exceptions. WIPO’s website features decisions in an online index. Jurisprudential Overview analysing trends and principles has educational value.

As per Paragraph 17 of the updated UDRP Rules, effective July 31, 2015, UDRP proceedings can be suspended for a settlement agreement. To initiate settlement, both parties are required to inform the WIPO Centre using the Standard Settlement Form. If no panel has been appointed, there is a possibility of a partial refund of the complainant’s filing fee.

The registrar involved executes the Administrative Panel’s decision within 10 business days of receiving notice. However, if the respondent contests the decision in court, the implementation may be delayed. The specific guidelines of the registrar determine how the transfer or cancellation is carried out.

Role of the registrar

The registrar does not actively participate in the administration or conduct of the administrative proceeding. However, its responsibilities include:

  • The registrar provides requested information to the WIPO Centre, which involves confirmation of the registration of disputed domain name(s), verification of the registrant and the respondent in the complaint with contact details, along with relevant documents like the registration agreement.
  • The registrar prevents the transfer of the domain name registration to a third party after the commencement of an administrative proceeding.
  • The registrar implements the Administrative Panel’s decision, which may involve carrying out actions such as transfer or cancellation of the domain name registration.

Role of WIPO arbitration and mediation centre

The functions of the WIPO arbitration and mediation centre:

  • The WIPO Arbitration and Mediation Centre administers the proceedings, which include verifying that the complainant satisfies the formal requirements of the UDRP Policy, Rules and WIPO Supplemental Rules.
  • It coordinates with the concerned registrar(s) to verify that the named respondent is the actual registrant of the domain name(s) in issue and the respondent’s contact details.
  • It notifies the complainant and sends out case-related notifications.
  • It appoints the Administrative Panel and ensures that the administrative proceeding runs smoothly and expeditiously.
  • It maintains independence and impartiality throughout the process.
  • It provides general information on the procedural aspects of the UDRP Policy, Rules and WIPO Supplemental Rules but does not provide case-specific advice to involved parties.

The role of a WIPO case administrator 

  • The WIPO case administrator is principally responsible for managing all administrative matters relating to the dispute and communicating with the Administrative Panel. 
  • He provides assistance to the Administrative Panel, facilitating communication and logistical details.
  • WIPO case administrators often have legal backgrounds. They are multilingual and experienced in international dispute resolution and domain name issues.

UDRP and new gTLDs

ICANN’s new gTLD Programme seeks to add over 1,000 new top-level domains (TLDs) to the Internet. This new programme includes generic terms, brand names, and diverse scripts like Arabic and Chinese. In response to this expansion, rights protection mechanisms (RPMs) for trademarks have been established to safeguard IPR. These mechanisms function both before and after TLDs are approved and become operational. 

Over the past decade, WIPO has been involved in shaping policies at the convergence of the domain name system (DNS) and IP laws. WIPO has also been involved in UDRP development and providing recommendations for protecting non-trademark identifiers. ICANN’s new gTLD programme addresses the potential for trademark abuse and consumer confusion.

Rights protection mechanisms applicable to new TLDs

Legal Rights Objections (LRO)

Trademark owners can raise objections to new Top-Level Domain (TLD) applications through the LRO procedure. This dispute resolution process is administered by WIPO with the help of ICANN. After filing trademark objections by the owner, the independent panel determines if the applied-for TLD would infringe on existing trademarks.

Trademark Clearinghouse (TMCH)

TMCH is a centralised repository that provides data on registered trademarks. It supports RPMs such as Sunrise Registration (allowing trademark owners to register corresponding domains before the public) and Trademark Claims (notifying potential conflicts between domain names and existing trademarks).

Uniform Rapid Suspension System (URS)

URS is a faster and more straightforward complement to UDRP for clear cases of trademark abuse. It imposes a higher burden of proof on complainants, and the only remedy is the temporary suspension of the domain. WIPO provides observations on URS to maintain a balanced approach.

Post-Delegation Dispute Resolution Procedure (PDDRP)

PDDRP is an administrative alternative for trademark owners to address registry-related cases leading to or supporting trademark infringement. The WIPO Centre administers the trademark PDDRP. It requires trademark owners to demonstrate registry conduct infringing trademarks.

Uniform Domain Name Dispute Resolution Policy (UDRP)

UDRP is an out-of-court mechanism for resolving bad-faith domain registrations. Designed by WIPO, it applies to all ICANN-approved TLDs. Trademark owners can file complaints demonstrating the lack of legitimate interests and bad-faith registration, leading to domain transfers.

Future developments and evolving challenges

Criticisms of the UDRP

  • UDRP is biassed in favour of trademark holders, pointing to high success rates for complainants and the system allowing them to choose the dispute resolution service provider.
  • Respondent default, where the respondent fails to respond to the complaint within the specified time, is a common occurrence. It leads to complainants winning the majority of cases, although critics contend that many defaults involve clear-cut cases of cybersquatting.
  • The outcomes of domain name dispute resolutions can vary based on factors such as the number of panel members (1 or 3) and the chosen dispute resolution provider.
  • UDRP fails to ensure that domain owners actually receive notice that a complaint has been filed against them.
  • The only alternative available to the losing party in a UDRP proceeding is to file a lawsuit to overturn the panel’s decision. Domain name disputes remain a relatively novel concept for the court systems of most countries.
  • UDRP gives service providers too much freedom to add supplemental rules that may bias the dispute resolution process.
  • Jurisdictional obstacles and the uncertainty on the part of courts as to how these cases should be handled appear to have limited the usefulness of courts as a medium for appealing UDRP decisions.
  • The losing party has a short period (only ten business days) to file suit in a court of mutual jurisdiction; otherwise, the panel’s decision will be implemented.
  • UDRP’s allotted a twenty day response period fails to provide sufficient time for domain owners to respond to complaints.
  • UDRP can refer to prior decisions for guidance, but these decisions are not binding precedent. So it leads to concerns about the potential for a chain of incorrect decisions.

Proposed solutions and improvements for the UDRP’s problems

  • Making Three-Member Panels the Standard for UDRP Dispute Resolution.
  • Inconsistent precedents create a need for a mechanism to establish a uniform body of precedent for UDRP panels, particularly in cases where the respondent defaults. It leads to differing interpretations of burden of proof among panels.
  • Implementing a UDRP Based Appellate Process.
  • Transform UDRP into an international treaty. Although it will reduce flexibility, could establish a universally recognised and reliable procedure for efficiently resolving domain name disputes.

Conclusion 

The UDRP plays a crucial role in efficiently resolving domain name disputes. It provides a standardised process to protect intellectual property rights. While it has been effective, the introduction of three-member panels and an appellate process can further enhance fairness. It will strengthen the UDRP’s effectiveness in addressing evolving challenges in the domain landscape.

References

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