What Is A Domain Name?
- It is the simplified version of an Internet Protocol ("IP") address which permits the location of a web site in the "World Wide Web". IP addresses, composed of a series of numbers, were devised as a Domain Name System ("DNS"). In order to facilitate the use of these web site addresses and dispense with the difficulty of memorizing long numbers, a more convenient address was derived using letters generally associated with a corporate name or a trade mark; this series of letters is commonly known as a domain name.
- The domain name must contain a suffix of two or three letters, called Top Level Domains ("TLD"). Depending on what they designate, TLDs can be either an organization such as ".com" for commercial entities, ".net" for internet service providers, ".org" for non-profit organizations, or a country of origin, such as ".ca" for Canada, ".fr" for France or ".uk" for the United Kingdom. In addition, other TLDs exist such as ".mil" designating the military, ".edu" for academic institutions, ".gov" for the United States government or administrations and ".int" reserved for organizations created by international treaties.
- To obtain a geographic TLD (.ca, .fr, .uk etc.) certain conditions must be respected according to an official naming chart, whereas no verification is required to register a generic TLD (.com, .net, .org) since the registration of generic TLD’s is loosely monitored.
How Are Domain Names Administered?
- A non-profit organization, known as Internet Corporation for Assigned Names and Numbers ("ICANN") (www.icann.org), administers the generic TLD system at the international level. In order to facilitate this administration, ICANN accredited several different private registrars such as, for example, Network Solutions Incorporated (U.S.A.), Domain People (Canada) and France Telecom/Transpac (France), with the power to issue generic domain names to applicants.
- The attribution of domain names, including generic TLD, is carried out according to the "first come, first serve" principle. A generic domain name can be acquired, at a cost of approximately one hundred dollars, through the submission of a standard application without the necessity for any verification of its legitimacy being required by ICANN. Therefore, at the present time, anyone can obtain a domain name corresponding to a trade mark, a patronymic name, or a corporate name held by another.
- The domain name has become a staple in the marketing of an enterprise. Certain persons, known as "cybersquatters", have capitalized on the fact that the registration and resale of domain names is a profitable venture for them.
How To Resolve Domain Names Disputes?
A Mandatory Arbitration Procedure:
- In order to counteract cybersquatters in their speculative ventures relative to the registration and resale of generic domain names, ICANN has imposed a mechanism for resolving disputes. This mechanism permits all individuals or entities who claim rights or legitimate interests in a generic domain name, with a means to protect such rights or interests; provided that the conditions enunciated below have been satisfied.
- All ICANN accredited registrars have inserted a clause in their service contract that obliges applicants to undergo an arbitration procedure in case a conflict arises in connection with a generic domain name which they intend to register.
- The arbitration procedure is administered by four institutions which are also accredited by ICANN. Among these institutions are the World Intellectual Property Organization (www.wipo.int) and the Canadian company eResolution (www.eResolution.ca).
- The procedure is expedient, cost effective and provides effective remedies.
- The Canadian Internet Registration Authority ("CIRA"), which administers the DNS for delivering the ".ca", may also, in the near future, adopt a domain name dispute policy similar to the one developed by ICANN.
Elements To Prove:
- For the complainant to succeed in such proceeding, he must prove each of the following three elements:
- That the domain name in question is identical or confusingly similar to the trade mark in which the complainant has rights;
- That the party who registered the domain name had no rights or legitimate interests in respect of the domain name; and
- That the domain name has been registered and is being used in bad faith.
- Bad faith has been imputed in the following circumstances
- the fact that the domain name has been registered primarily for the purpose of reselling it to the owner of an equivalent trade mark or to a competitor of the complainant for a consideration in excess of the documented out-of-pocket costs,
- for the purpose of disrupting the business of a competitor,
- in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided that the registrant has been engaged in a pattern of such conduct; or
- in order to intentionally attempt to attract, for commercial gain, Internet users to the web site of the registrant by creating a likelihood of confusion with the complainant’s trade mark.
- Costs relative to this arbitration procedure are calculated based upon the number of domain names in dispute, as well as the number of arbitrators chosen to resolve the dispute (one or three). The costs increase as a function of the arbitration institution selected but range generally from $750 U.S.D. (for one or two domain names and one panelist) to $3,500 U.S.D. (for twelve domain names and three panelists).
- An arbitration decision can be reached within approximately eight weeks, and can declare the transfer or cancellation of the domain name, or, if the action is dismissed, the right for the registrant to continue to use the domain name; damages will not be awarded following this procedure.
- Nevertheless, nothing prevents the submission of the dispute to any national tribunal competent to hear the case at any time before or after the arbitration procedure more particularly, in order to claim damages.
The uniqueness and expedient nature of this system of resolving disputes is due, on the one hand, to the fact that all the procedures are virtually done through the web and, on the other hand, to ICANN having exclusive control of the domain names data base. ICANN can directly execute arbitration decisions without delay unless there is a judicial ordinance to the contrary.
We invite you to contact us for further information or additional advice related to domain names or, in general, to trade marks. We would also be pleased to register your domain name, assist you in recovering any domain name which may belong to you, or otherwise inform you of your rights.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.