Trademark based-Domain Names have become a precious corporate asset that both large and small companies are willing to protect against unauthorized use or abusive registration. Yet, protecting those domain names at an international level may prove costly and complicated. For these simple reasons the Internet Corporation for Assigned Names and Numbers ("ICANN") wisely implemented two documents that have been crucial for companies engaged in protecting their domain names. The first document is the called "Dispute Resolution Policy" ("Dispute Policy") and the second document is called "Rules for Uniform Domain Name Disputes Resolution Policy" ("Dispute Rules"). This article briefly explains these two international measures to solve domain name controversies.
ICANN Dispute Resolution Policy is an alternative dispute resolution mechanism to help companies defend their domain names, implemented in 1999. Registrars in the .com, .info, .net, .org, .biz, .name, top-level domain follow the 'Dispute Policy' procedures to defend their domain names in two types of disputes; (1) trademark-based disputes, and (2) disputes arising from abusive registration of domain names which is commonly known as cybersquatting. In addition to the above top-level domain names, other country-code top-level domains have adopted the ICANN Dispute Policy. For example, .nu, .tv, .ws. Thus, country-code top-level domain holders facing domain name controversies (or those doing prior analysis) should search whether their country registrar has adopted the ICANN Dispute Policy. It is important to note that the terms of the ‘Dispute Policy" will be automatically incorporated within the Registration Agreement between the registrar and the domain name holder (or country code registrars).
According to the ‘Dispute Policy' procedures, trademark-based disputes may be solved by agreement between the parties, court action, or arbitration. In this case, the complaint must be filed before a court of proper jurisdiction against the domain name holder. Those complainants accusing third parties of violation of their trademarks on domain names usually file complaints based on international or domestic intellectual property laws, or WIPO arbitration mechanisms. Yet, the ICANN dispute mechanisms are also available for them.
ICANN Dispute Policy help complainants solve their controversies through Administrative Proceedings before an approved dispute-resolution service provider chosen by the complainant. For these cases, the complaint must be filed before an approved dispute resolution service provider. A list of these resolution service providers may be found at the ICANN website. The only remedies available through these administrative procedures are cancellation or transfer of the domain name to the complainant. The Dispute Policy states that third parties are required to submit to these mandatory Administrative Proceedings when the complainant asserts to the ICANN resolution service provider that:
1. The third party's (respondent) domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights;
2. The third party (respondent) has no rights or legitimate interest in respect of the domain name; and
3. The third party (respondent) domain name has been registered and is being used in bad faith.
The complainant must support its argument that the third party is using the complainant's domain name in bad faith. The Dispute Policy establishes some specific ways to prove this bad faith requirement. Third parties may not transfer their domain names to other registrar while these Administrative Proceedings are pending and 15 business days after the administrative panel renders its final decision.
The Rules for Uniform Domain Name Dispute Resolution ("Dispute Rules") are the procedural rules applicable to domain name controversies solved according to the precepts of the Dispute Policy explained above. They were established in 1999 and are the binding rules for ICANN Administrative Proceedings.
The Dispute rules define terms like complainant, Provider, Registration Agreement, Reverse Domain Name Hijacking, among others. The rules sets the requirements of the complaint; require proper notification to third parties of complaints filed against them and provides examples of proper notification (post mail, e-mail, fax, etc.); and sets the requirements of the third party's response. This response must be filed within 20 days of the commencement of the Administrative Proceedings otherwise the Panel will render a default decision. The Dispute rules establish that the language of the Administrative Proceedings must be the language specified on the domain name Registration Agreement. No in-person hearings are required (including teleconference, videoconference, and web conference), unless the Administrative panel conducting the proceedings determines that it is required to solve the controversy.
Thus, those seeking protection of their domain names against trademark domain name violations or abusive registration practices may use the administrative proceedings established by ICANN. These proceedings have proved to be efficient, speedy, and affordable because they do not required in-person hearings, it has specific terms, and communications can be made by mail or through technological means.