The task of enforcing the law rests in the State. Even private arbitration awards are enforceable only by way of a court order. Conversely, the procedure for resolving domain name registration disputes does not involve the State. Everything, from registration of the domain to the resolution of disputes, is managed privately. There is no reliance on clumsy state machinery to control the process. As a result, domain registration disputes are resolved effectively and efficiently. The way it works (and it really works!) is as follows:
Registrars of top level domain names (suffixes such as .com, .org or .net) are governed by certain rules and supervised by ICANN (the Internet Corporation for Assigned Names and Numbers).
Parties wishing to register domain names submit to the rules which are enforced by appointed regulatory bodies, such as WIPO (World Intellectual Property Organization). The registrants, and registrars, are bound to comply with decisions of the regulatory body concerned.
Most often complaints are directed at setting aside unlawful domain name registrations, such as copycat registrations, where the complainant may request the regulator to transfer to it the offending domain name, or ask that the domain name be cancelled. This is a particularly tidy solution as, if a domain name is found to have been registered unlawfully, in terms of ICANN rules, the successful complainant will obtain the use, by transfer, of the unlawfully registered domain name at the other party's expense.
In order to succeed, a complainant must prove all of the following:
- The offending domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights. It has been held that "In determining whether a domain name is confusingly similar to a trade mark, the intention of the domain registrant is irrelevant. It is the objective likelihood of confusion that must be assessed."
- The other party has no right or legitimate interest in respect of the domain name. Many cases have held that the registration by previous or even existing distributors, without permission, of products of domain names bearing the trade mark of the products they distribute is unlawful.
- The complainant must prove that the domain name was registered and is being used in bad faith. Clearly an attempt by a competitor to use a domain name solely for the purpose of attracting custom at the expense of the legitimate holder would amount to bad faith. It was held, in an ICANN case, that "To attract, for commercial gain, internet users to its website by creating a likelihood of confusion of complainant's mark as to the source, sponsorship, affiliation or endorsement of respondent's website ... is evidence of bad faith registration and use on behalf of respondent."
It has also been found that a failure to respond to a complaint to cease the use of the domain name, or a failure to respond to the complaint lodged with the regulatory body, is prima facie evidence of bad faith.
The power of the regulatory panel to make decisions is therefore limited by the above factors. The regulatory body may not intervene to deal with more general aspects of unlawful competition – although clearly the unlawful use of domain names may be an aspect of unlawful competition between parties. A body of precedents already exists (and is growing) which provides guidance to complainants and respondents alike.
What makes the process effective is that it is both speedy and relatively cheap. Complainants may choose single or three person panels at a current cost of $1,500 and $4,500 respectively. Complaints are lodged with the regulatory body and the respondent to the complaint is given an opportunity to answer the complaint. Strict time limits are applied and adhered to. In addition, the complaint cannot exceed a specified length. Once a decision is made (and the whole process need not take more than a few months from beginning to end), a directive is issued with which the domain name registrar must comply.
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.