ICANN s Internet Domain Name Dispute Resolution Mechanism Hemmed in by Domestic Courts?

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1 ICANN s Internet Domain Name Dispute Resolution Mechanism Hemmed in by Domestic Courts? Disputes over the registration of offending internet domain names and their misuse are being brought increasingly before the WIPO (World Intellectual Property Organization) Arbitration and Mediation Center or other approved dispute-resolution-service-provider under the Uniform Domain Name Dispute Resolution Policy (the "UDRP") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). Such disputes can and are also brought before civil courts, typically of the domestic jurisdiction of the registrant or the registrar and sometimes of the complainant. How effective is ICANN s international-law remedy in comparison to invoking the jurisdiction of the regular Courts of a domestic jurisdiction? The UDRP is incorporated by reference into the Registration Agreement between all ICANN accredited internet domain name registrars worldwide and their domain name registrants. It sets forth the terms and conditions in connection with a dispute between any complaining third party and the registrant of the complained against domain name registration. These applicable disputes over the registration and use of an Internet domain name are resolved by mandatory administrative proceedings by a Panel under Paragraph 4 of the UDRP. The procedure followed by the Panel appointed by the provider such as WIPO is provided in the Rules for Uniform Domain Name Dispute Resolution Policy (the UDRP Rules ), and in the service provider s own supplemental rules (together Rules ) Curtailed Jurisdiction The kind of disputes that a complaining third party can bring before the WIPO or other such dispute resolution service provider under the UDRP mandatory administrative proceedings are limited in comparison to the wide jurisdiction that domestic courts invariably enjoy worldwide in such matters. These applicable disputes are only those disputes where [UDRP Paragraph 4 (a)] a third party (a "complainant") asserts in compliance with the Rules, that (i) the registrant s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) the registrant has no rights or legitimate interests in respect of the domain name; and (iii) the registrant s domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present.

2 In contrast, the civil courts in India, and as about anywhere in the world, can entertain suits where the onus to discharge for obtaining relief is less stringent. In an action for infringement if the complainant s mark is registered or otherwise in a passing off action based on prior user, the assertions in (ii) above is not required to be made and proved in such an acute manner. In a Court proceeding in India as also in most other places, the respondent-registrant would have no defence in asserting rights or legitimate interests in respect of the domain name in the face of Complainant s registration of the concerned trademark or if the Complainant shows prior-user. The assertion in (iii) above, is an extra especially onerous requirement to make and prove under the UDRP. The guidelines in Paragraph 4 (b) of the UDRP provide that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or (iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant s web site or location or of a product or service on the registrant s web site or location. Although these abovementioned categories of bad faith are only indicative and not limiting, the requirement of proving bad-faith is, by itself, a separate and compulsory one. If none of these indicative instances of bad faith are available, not only to be asserted and proved, a complainant would have to rely on some legal ingenuity to make the grade. In case the registrant makes the mistake of demanding a price in response to a complywith notice (which also reveals that it is not getting good legal advice), the bad faith requirement is easily met under clause (i) supra. Otherwise, the requirement has to be somehow otherwise complied with under another clause or on the basis of other relevant facts, failing which the complaint is liable to be rejected. It is notable that there is no exemption even if the complainant s trademark qualifies and is registered even in one or both the possible mutual jurisdictions as a well known mark.

3 Enlargement of available defences Paragraph 4 (c) of the UDRP itself contains an instructive manual for the respondentregistrant being hauled up for alleged trademark violation in the administrative proceedings. Titled How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint, it runs like this. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue. Some of the defences above would be available in some form or the other in ordinary civil or common law jurisdictions but others go much further. The defence in (i) above is clearly a greater defence than available in a domestic court. The position for (iii) may vary from one jurisdiction to another. Limited Competence to grant Relief The reliefs that the panel can grant under this jurisdiction are limited to requiring the registrar to cancel the registrant s domain name or to require it transfer the domain name registration to the complainant. No other relief such as damages for misuse or an order for rendition of accounts or an prohibitory injunction not to undertake similarly offending registrations with the same or any other registrar in the future is capable of being granted. Nor is the panel competent to issue any interim injunctions. Not only are ex-parte orders not available, interim orders even after the respondent joins proceedings are also not available. It is also not possible to arraign the registrar even if he has colluded or is otherwise a party to the wrong.

4 Ease of frustrating proceedings by approaching a Domestic Court The complainant is required alongwith with its complaint to [UDRP Rule 3 (b) (xi)] identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint. There is also an obligation to [UDRP Rule 3 (b) (xiii)] state that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction. In the UDRP Rules, mutual jurisdiction is defined to mean a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider. In addition to the above, the complainant is obliged to waive any grievance it may have with the registrar of the offending domain name and restrict itself to relief only as against the domain name registrant. UDRP Rule 3 (b) (xiv) requires the complaint to conclude with the following statement followed by the signature of the Complainant or its authorized representative: "Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute's resolution shall be solely against the domain-name holder and waives all such claims and remedies against (a) the dispute-resolution provider and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents." UDRP Rule 18 deals with the effect of Court proceedings thus (a) In the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. (b) In the event that a Party initiates any legal proceedings during the pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider. Paragraph 4 (k) of the UDRP itself makes it clear that the mandatory administrative proceeding requirements set forth above do not prevent either the domain name registrant or the complainant from submitting the dispute to a domestic court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. Paragraph 5 provides that all other disputes between the registrant and any party other than the registrar regarding the registrant s domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 must be resolved between the registrant and such other party through any court, arbitration or other proceeding that may be available.

5 If the Panel decides that the domain name registration should be canceled or transferred, the registrar is required to wait ten (10) business days after being informed by the the applicable Provider of the Administrative Panel's decision, before implementing that decision. The registrar will then implement the decision unless it receives from the registrant, during that ten (10) business day period, official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that it has commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules. In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. If it receives such documentation within the ten (10) business day period, it will not implement the Administrative Panel's decision, and we will take no further action, until it receives (i) evidence satisfactory to it of a resolution between the parties; (ii) evidence satisfactory to it that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing the registrant s lawsuit or ordering that the registrant does not have the right to continue to use the registered domain name. It is rather significant that the losing registrant is not even obliged to obtain an order of stay of operation of the panel s decision; merely formally launching court proceedings is enough to nullify altogether its effect. No appeal is envisaged under the UDRP to any inhouse forum nor to any domestic court. Still, any local proceedings can be initiated by the registrant to override the implementation of the panel s adverse order. It need not even be fashioned as a challenge to the panel s decision; a mere declaratory suit will also do. This is not all. A registrant has the option to try and preempt mandatory administrative proceedings altogether by first itself bringing a motion in its domestic court that substantially touches upon the subject matter. It retains this option even after commencement of the panel s proceedings. The panel can only be persuaded to exercise its discretion and disregard such proceedings and render its decision even though it will not be liable to be implemented until the court proceedings are favorably discharged. Gridlocked? Is ICANN s UDRP jurisdiction then altogether useless to a complainant aggrieved by a trademark violating domain name registration. The number of filings under this jurisdiction seems to suggest otherwise. In its first four years or so since 1999, the WIPO Arbitration and Mediation Center has already accumulated a jurisprudence of no less than about five thousand cases under this jurisdiction. In part, this popularity is no doubt because of the robust approach of panels to get on with it and do their limited job inspite of pendency of domestic court proceedings whether initiated by the respondent or even if by the complainant itself.

6 The exercise of discretion available to proceed with the matter notwithstanding the invocation of wider, certain and binding jurisdiction of domestic courts, can be seen from a decision of the panel in a decision like the one in Hesco Bastion Limited v. The Trading Force Limited [Case No. D ]. Prior to the commencement of administrative proceedings, the registrant had gone into liquidation proceedings that were still pending and the Receiver appointed by an English Court also responded to the complaint, as did the unregistered purchaser-in-liquidation of the domain name. The Panel records No substantive Response has been submitted by Mr. Carman, the Liquidator, save to challenge the jurisdiction of the Center to entertain this Complainant; Explora and the Liquidator assert that one of the assets acquired by Explora is the domain name in issue The Liquidator, Mr. Carman, states it is not his intention to respond to the Complaint and that he has no objection to any party who claims an interest [for example, Explora] responding in his place. But, in an earlier the Liquidator took the position that the Complainant first requires leave of the English High Court before bringing this Complaint. This is because, so the Liquidator contends, this administrative proceeding is "an action or proceeding" within the meaning of Section 130(2) of the Insolvency Act The provision reads: "When a Winding-Up Order has been made or a provisional Liquidator has been appointed, no action should be proceeded with or commenced against the Company or its property, except by leave of the Court and subject to such terms as the Court may impose." Next, Explora say that because the Liquidator has issued the English High Court proceedings described "the true legal relationship between the Complainant and the Respondent will be fully aired in those proceedings". Further, the issue of ownership of, inter alia, the domain name is already an issue between the Complainant and Explora and should be dealt with in contemplated further proceedings. In any event, the complex factual issues underlying ownership of the domain name are not suitable to be dealt with in this administrative proceeding under the Policy...How then to approach Section 130(2) of the Insolvency Act, 1986? The Respondent company, The Trading Force Limited, when it registered the domain name in issue, entered into an Agreement with the domain name registrar, Network Solutions, Inc. That Agreement incorporated the Policy. Pursuant to Clause 21 of that Agreement the Respondent submitted to the jurisdiction of the US District Court for the Eastern District of Virginia, Alexandria Division. This is confirmed at point 4 of the Registrar verification received, which states that the Respondent submitted in its registration Agreement to the jurisdiction at the location of the principal office of the Registrar for court adjudication of disputes concerning or arising from use of the domain name Section 130(2) of the UK Insolvency Act 1986 in any event only covers "actions and proceedings" which require the assistance of the English High Court and not other extra judicial processes: see, Gore Brown on Companies at This administrative proceeding is not an arbitration in respect of which the English High Court has jurisdiction. It is not taking place in England and Wales. Further, the Panel s Decision is not akin to an arbitration award which requires enforcement against the Respondent Company in liquidation at its new address in Leeds,

7 United Kingdom. In the absence of a challenge before the appropriate Court, the Decision will be implemented by the Registrar In its Supplemental Submission, the Complainant also points out that if, as both the Liquidator and Explora contend, beneficial ownership of the domain name in issue was transferred to Explora, the Panel s Decision in this administrative proceeding is of no consequence to the Liquidator. It is because the Registrant of the domain name remains The Trading Force that the Complainant could only bring this Complaint under the Policy against the Respondent. In all the circumstances, the Panel takes the view that it has jurisdiction over this dispute and that the Complainant did not first require leave of the English High Court to initiate this administrative proceeding The Effect of Court Proceedings The Rules, paragraph 18, provide that in the event of any legal proceedings in respect of a domain name dispute that is the subject of the Complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding or to proceed to a Decision. Explora urges the Panel to suspend or terminate The only proceeding in existence between the parties to this Complaint is the English High Court action commenced on November 18, It is apparent from the relief sought by the Respondent in that action that the Court is not invited to rule upon ownership of or rights to the domain name in issue. The action is solely concerned with the taking of an account into commission allegedly due from the Complainant to the Respondent pursuant to the Agency arrangement between them, the precise terms of that Agency clearly being in dispute between those parties...it follows, in the Panels view, that there is no legal proceeding between the parties in respect of the domain name dispute that is the subject of this Complaint. The Panel will not, therefore, suspend or terminate this administrative proceeding Another case in point is SKF and SKF Beaings India Limited v. Vikas Pagaria [Case No. D ]. In this case, the Complainants had themselves filed a case against the Respondents in the Delhi High Court being Suit No. 393 of 2001 AB SKF & Anr. V. Mr. Vikas Pagaria. By an ex-parte ad interim order the Delhi High Court had, already before commencement of the proceedings before the panel, restrained the Respondent from, "carrying on any business or making or selling, offering for sale, advertising goods under the name SKF or in any other name deceptively similar thereto and from using the domain name skfindia.com or in any other manner passing off its web site as that of Plaintiff No. 2," and was still seized of the matter. The Plaintiffs in the court proceedings were the complainants in the complaint. Taking note of the long time taken by Indian courts to decide a dispute, the panel observed Till a decision of the court is available, neither the Complainants nor the Respondent will be able to make use of the impugned domain name. Further, the Complainants have already filed a complaint before the Center and had paid the requisite fees. The Respondent has filed the response. The Administrative Panel has been appointed. The decision making process of the Center is quite fast. Further, Paragraph 4(k) of the Policy clearly provides that any party aggrieved by the decision of an Administrative Panel can go to a court. Considering all

8 these aspects, the Administrative Panel, in exercise of the discretion vested in it under Rule 18 of the Rules, decides to proceed to a decision... A particularly egregious case on facts is in Koninklijke Philips Electronics N.V. v. SC Evergreen Consult & Aviation SRL (Catalin Mogoseanu) [Case No. DRO ] The respondent registrant had corresponded with the complainant thus If you will take action that will lead to restricting my right to use this domain, at any further time, I will take you to court in Romania. This can lead to a "loose/loose" situation. It can take a long, long time, in which time Philips Romania might loose more that it could gain by an amiable solution that can be reached in a matter of days. I know the laws in Romania much better than you and would like to inform you that I have much higher chances to win this case, should we reach this stage As you know, WIPO will hold the domain name: wwww.philips.ro blocked until they receive the final verdict from a Romanian court of law when a Romanian company takes a foreign company to court, the paperwork has to be processed through the Romanian Ministry of Justice, etc., and it will take many months just for the papers to reach you, and many more years for the court case to end...why wait until when we can settle this before it starts, as we feel that the Romanian law, is in our favor?" After having received the Notification of Respondent Default, the Respondent informed the Center by that it had started court proceedings in Romania in respect to the domain name, and that the Center will receive a legalized translation of the court documents that prove this allegation. The Respondent requested the Center to suspend the administrative proceedings until the Romanian court issued a final verdict in the case. The Panel held In the present case, the Respondent notified the Center that it has filed a claim against the Complainant in Romania, but did not submit any official documentation (such as a copy of a Complaint or a file stamped by the Clerk of the Court) demonstrating the existence of a lawsuit in Romania. Therefore, the Panel is not in the position to verify whether a dispute concerning the domain name is pending before a Romanian court, or, if so, when it was filed Whereas the first sentence of paragraph 4(k) of the Policy only mentions lawsuits filed with a court before an administrative proceeding is commenced or after such proceeding is concluded, the third and the fifth sentence mention lawsuits in general, without specifying when they have been commenced. The fact that the first sentence of paragraph 4(k) does not refer to lawsuits commenced during an administrative proceeding is logical, because bona fide parties are likely to choose the inexpensive and fast administrative proceeding in order to avoid lengthy court proceedings, reserving themselves the right to submit the dispute to a court after the Administrative Panel has rendered a decision., and, normally, it can be expected that each bona fide party would wait until the panel has rendered its decision before deciding whether it wishes to obtain a further decision by a court...

9 In the present case, the Panel is of the opinion that, if the Respondent has actually commenced legal proceedings in Romania, it has done so as a delaying tactic. This is demonstrated by the Respondent s to Complainant (supra) In light of these circumstances, the Panel has decided to proceed to a decision By doing so, the Panel does not jeopardize endanger the Respondent s legal situation of Respondent; pursuant to paragraph 4(k) of the Policy, if the Respondent. In case the Respondent latter submits to the Registrar within the ten (10) days period official documentation that it has commenced a lawsuit in Romania within the ten (10) days period, within the ten (10) days period, the Registrar will not implement the Panel s decision., in accordance with paragraph 4(k) of the Policy Domestic Courts fostering the UDRP Jurisprudence The popularity and success of ICANN s UDRP jurisdiction will grow if it receives encouragement and support from the domestic Courts. One particular decision from an Indian Court shows how easily domestic courts can if they are so willing, accommodate, respect panel decisions and have them implemented. By decision dated in Maruti Software Private Limited versus Maruti Udyog Limited.[CWP 42/2001], the Delhi High Court dismissed a petition filed by the registrant after the registrant had suffered a panel decision [Case No. D ]. Instead of reconsidering evidence and arguments afresh, the Court held The WIPO Arbitration and Mediation Center on the facts of the case was, therefore, justified in holding that the domain name was registered by the petitioner and used by it in bad faith and it had no legitimate interest in respect of the domain name. In my opinion, there are no merits in the petition nor any case has been made out for interference in the order of the WIPO Arbitration and Mediation Center. The petition is misconceived and is, accordingly, dismissed. Sangeeta Vohra sangeeta.vohra@algindia.com The views are personal