Domain Name Dispute Resolution

Transcription

1 Domain Name Dispute Resolution Infringement on the Internet How Businesses can Protect their Intellectual Property from Internet Abuses Fasken Martineau DuMoulin LLP 4200 Toronto-Dominion Bank Tower, Box 20, Toronto Dominion Centre, Toronto, Ontario M5K 1N6 May M. Cheng Tel: (416) Fax: (604) May M. Cheng,

2 Domain Name Dispute Resolution Infringement on the Internet Table of Contents Page No. 1. Introduction 1 2. Trade-marks and Domain Names 3 3. CIRA and Guidelines for.ca Registration 5 4. CIRA s Proposed Dispute Resolution Policy 8 5. Internet Corporation for Assigned Names and Numbers ( ICANN ) New Top Level Generic Domains:.biz and.info On-line Dispute Resolution Procedure of ICANN 16 (a) Respondent s Domain Name is Identical or Confusingly Similar to Trade-mark in which the Complainant has Rights (b) Respondent Has No Rights or Legitimate Interest in the Domain Name (c) Bad Faith Use and Registration by Respondent Tips and Tricks under ICANN Policy Pros and Cons of ICANN Dispute Resolution as an Alternative to Litigation Bias and Systemic Unfairness under ICANN Comparison of ICANN Policy and ADRP Conclusion 34 May M. Cheng,

3 - 2 - Domain Name Dispute Resolution Infringement on the Internet 1. Introduction The Internet has fundamentally changed the way many companies do business, such that domain names have become valuable assets. In mergers and acquisitions, a domain name is now frequently treated as one of the intellectual property assets transferred with a business. This creates problems because domain names were not conceived as intellectual property, and the whole structure of domain name registration and use is completely at odds with traditional legal structures and concepts created to protect intellectual property rights. Furthermore, trade-mark laws, which can only be enforced by courts of competent jurisdiction, are restricted territorially and are ill equipped to deal with cyberspace. In Canada, there has been no uniform approach or consistent body of decisions emanating from the courts in dealing with businesses seeking to recover domain names from parties outside of the court s territory. The focus of this paper is to discuss the registry systems for the top level generic domains and the top level country code domain.ca for Canada, and their policies for resolving disputes arising from the registration and use of domain names alleged to infringe trade-mark rights. The dispute resolution policies are intended to provide alternative remedies available to a company where its trade-mark or trade name, or a confusingly similar mark or name, has been registered as a domain name by a third party. Under the ICANN Policy, we now have a sufficient body of decisions emanating from the on-line dispute resolution service providers to

4 - 3 - review the merits of proceeding with on-line dispute resolution as an alternative to the traditional remedies available through the courts. Recent criticism of bias among dispute resolution providers under the ICANN Policy may help to shape Canada s selection of its dispute resolution providers, as it gears up to adopt its own policy for disputes over.ca domain name ownership. Recent developments, such as the introduction of.biz and.info domains using a lottery system, and the application of California law to enjoin awarding domain names using the lottery, will also be discussed. 2. Trade-marks and Domain Names The definition of a trade-mark is well-established: it can be comprised of a word, symbol, design, logo or combination of these, which is used by a person or company to identify its wares and/or services. The registry system for trade-marks is a creature of statute, and therefore territorial in nature. A Canadian trade-mark registration grants the owner the exclusive right to use the trade-mark anywhere in Canada, in association with specific wares or services. Before a trade-mark registration will issue in Canada, the Trade-marks Office will satisfy itself that no other trade-mark registration poses a bar to registration of the trade-mark, and that the mark is registrable according to the Trade-marks Act 1. Further, trade-marks which are approved for registration are first published in the Trade-marks Journal for third-party opposition purposes. At common law, an unregistered trade-mark may equally serve to identify a company s wares or services such that the owner of the mark can oppose use or registration of the mark in 1 R.S.C. 1985, c. T-13, as amended. The statute sets out a large number of prohibited marks and the criteria for determining confusion between two marks, see sections 6 and 9-11.

5 - 4 - the specific geographic territory in which the trade-mark has become known to identify a company, as the source of those wares or services. A domain name is a string of alphanumeric text, used to identify an individual, company or organization on the Internet. Domain names are easy to remember names for computers but actually correspond to a series of numbers, called Internet Protocol numbers, which permit routing addresses on the Internet. A domain name becomes the corporate electronic identity of a company on-line, and its value has exponentially increased with the reality of e-commerce. In the top level generic domains, such as.com,.net and.org, an individual, company or organization can register any available domain name without having to establish any right in the domain name prior to registration. The first-come first-served policy for registration of top level generic domains has created a cybersquatter industry, namely, persons seeking registration of domain names of well known companies and famous marks for the sole purpose of selling them at a profit. As valuable domain name registrations have been snapped up, there is an emerging business in typosquatting, where persons are now seeking to sell misspelled domain names as a means of diverting hits from high traffic web sites. In order to curb these practices, the new top level generic domains currently being introduced, such as.biz,.info,.pro,.name,.museum,.coop and.aero, are intended to be restricted to entities meeting specific criteria applicable to each. While the top level generic domains are moving to restrict access, there are many country specific top level domains that are moving towards unrestricted access to their domain names,

6 - 5 - rather than maintaining the national presence requirements that these were initially intended to have. In Canada, CIRA has relaxed the rules to permit registration of a.ca domain name by a company with no presence in Canada other than a valid trade-mark registration. There are no national presence requirements for many country level domains, particularly smaller countries such as, for example.as, the country level domain for America Samoa. Due to the fact that domain names are unique to each of the top level generic and country code domains, i.e. you can only have one trailblazer.com and one trailblazer.ca, conflicts can arise that would not otherwise in domestic trade-mark registry systems that permit more than one company to own the mark TRAILBLAZER for use in association with different wares or services, that do not overlap in channels of trade or customer base. These special and unique problems associated with domain name registration and use have created unexpected and, in some cases, unpleasant consequences for trade-mark owners. 3. CIRA and Guidelines for.ca Registration Domain names in the.ca domain were initially assigned by a volunteer committee at the University of British Columbia ( UBC ), headed by Mr. John Demco, commencing in The assignment of domain names was done in a highly restrictive fashion, but no processing fees were payable. Restrictions prevented any one company from owning more than one domain name, and a company could not own a.ca top level domain if it did not establish that it had a national presence. In cases where only local presence could be established, such as for a local Ontario company, a.on.ca second level domain would be assigned. As the demand for obtaining

7 - 6 -.ca domains grew and disputes developed over the assignment of.ca domains, the responsibility and importance of the.ca registry created an impetus to appoint a more independent and responsive authority, and to adopt a more commercial style of governance. Incorporated since December of 1998, CIRA is a non-profit organization mandated to operate the top level.ca domain effective as of November 8, It has been appointed to manage the registry for the.ca domain database and set policies using a public consultation process. Following initial public consultation on the registration policy, CIRA determined that the.ca domain would be developed as a key public resource for Canadians, and remain subject to Canadian Presence Requirements. Nevertheless, the policies differ significantly from the University of British Columbia initiative, permitting registration of more than one.ca domain name by one company, as well as broadening access to a broader group of persons and entities. Registration under the.ca domain is now available to the following, based on the definition of Canadian Presence Requirements : (a) (b) (c) (d) (e) (f) Canadian citizens; Permanent residents; Legal representatives of (a) or (b) above; Canadian corporations, either federally or provincially incorporated; Trusts established under the laws of a province or territory in Canada, whose trustees meet 66% of the requirements set out in (a) to (d) above; Partnerships registered under the laws of Canada, whose partners meet more than 66% of conditions (a) to (d) above;

8 - 7 - (g) (h) (i) (j) (k) (l) (m) (n) (o) Unincorporated associations where at least 80% of members meet conditions (a) to (f) above and at least 80% of directors or other representatives are ordinarily resident in Canada; Trade unions recognized under the laws of Canada with a head office in Canada; Political parties registered under relevant electoral laws of Canada; Educational institutions, located in Canada and recognized or licensed under an Act of the legislature of a province or territory in Canada; Libraries, archives and museums located in Canada, which are not established for profit; Hospitals located in Canada and approved or licensed to operate as such under the laws of Canada; Her Majesty the Queen and successors, as well as governments in Canada; Aboriginal peoples and Indian bands, as defined; and Owners of registered trade-marks or official marks in Canada. In addition to the foregoing, those who satisfied the requirements for registration of a.ca domain prior to the transfer to CIRA are deemed to satisfy the Canadian presence requirements under CIRA. The most significant expansion of the.ca domain registry under CIRA is the ability of companies to register more than one domain name, and the ability to register all of their trademarks and trade names under the.ca domain, without having to establish a national presence in Canada. Domain names must be not less than two (2) and not more than fifty (50) characters in length. There are restrictions on the use of hyphens, and no distinction between upper and lower case. CIRA does maintain a list of domain names that will not be made available for registration,

9 - 8 - such as: village.ca, town.ca, etc. Further, it will not permit registration of conflicting names, such as xyz.on.ca, in the second level domain, where xyz.ca in the top level domain is already registered. CIRA has approved over seventy (70) registration service providers for the.ca domain. Domain names are given out on a first-come first-served basis, provided that the Canadian Presence Requirements are met. The registrars have been permitted to set their own fee schedules. In addition, a domain name may now be registered for a period of one (1) to ten (10) years. 4. CIRA s Proposed Dispute Resolution Policy In many countries, where a competitor or cybersquatter adopts a domain name that is identical to or confusingly similar to a company s trade name or trade-marks, traditional recourse is to a court of competent jurisdiction where the company has registered trade-mark rights or has become known by the name or as the owner of the mark in issue. In Canada, a company may bring an action for trade-mark infringement in respect of a registered mark, or bring an action for passing-off with respect to a trade name or unregistered trade-mark. Normally, the action will include an application for an interlocutory injunction before trial, seeking to restrain the defendant from continuing to use the domain name pending trial. Without an injunction, it may take up to four (4) years to obtain a judgment granting damages for trade-mark infringement or passing-off and recognizing the plaintiff s rights in the domain name. Bringing a legal action

10 - 9 - becomes even more complex and expensive where the registrant is located in a different country than the intended plaintiff. Having in mind the difficulties and realities of bringing legal proceedings to resolve domain name disputes, CIRA has undertaken a lengthy public consultation procedure to adopt a dispute resolution policy, similar to that adopted by domain name registries in other countries and to that adopted by ICANN for the top level generic domains. The objective is not to replace court proceedings, but to offer a faster and more efficient alternative where the only issue is ownership of the domain name. The dispute resolution policy will be of limited interest to a company that is also seeking to recover damages for traditional forms of trade-mark infringement and passingoff, in addition to ownership of a domain name. However, due to the difficulties in obtaining injunctive relief in trade-mark infringement matters, it may be faster and more cost effective to apply for the domain name transfer using on-line dispute resolution, in addition to bringing any action for damages. After several years, the CIRA Alternate Dispute Resolution Policy ( ADRP ), has only recently conducted its third (and hopefully final) public consultation despite earlier targets of an ADRP by September of The initial ADRP Consultation document was released on April 17, 2000, and comments were invited by May 15, Professor Michael Geist, of the University of Ottawa, delivered a Report on the ADRP that summarized the results of the first public consultation process. This first consultation generated forty-two (42) responses that commented on one or more of the eleven (11) issues raised. The recommendations from the report are briefly summarized as follows:

11 A. Ensure equality of access to the.ca domain names and ADRP; B. Create certainty and simplicity of process; C. Protect Canadian interests through the application of Canadian law and ADRP, not through Canadian Presence Requirements; D. Cybersquatting is not the main problem; and E. Increase competition and efficiency. As the recommendations illustrate, the first public consultation process was much broader than just seeking to determine the best ADRP strategy or model. A draft ADRP was issued on September 29, 2000, and the public was permitted to comment until October 29, From the text of initial draft ADRP and the recommendations, it appeared that the ADRP for the.ca domain would differ from the dispute resolution policies of other countries and that adopted by ICANN for the top level generic domains. For example, one of the early recommendations proposed to restrict access to disputes where a Complainant owned a registered trade-mark that corresponded to the.ca domain. This would differ significantly from the ICANN Policy which permits complaints for domain names based on trade-marks that are not registered to be determined by on-line dispute resolution. However, the final draft ADRP appears to have come much closer to the ICANN Policy after successive rounds of public consultation. A final draft ADRP was published on September 20, 2001, and comments were invited on both the policy and implementation rules until October 12, The

12 final draft ADRP places the onus on the Complainant to prove, on the balance of probabilities, that: (a) (b) the Registrant s.ca domain name is Confusing with a Mark in which the Complainant had Rights prior to the date of registration of the domain name and continues to have such rights; and the Registrant has registered the domain name in bad faith as described in section 3.7; and the Complainant must provide some evidence that: (c) the Registrant has no legitimate interest in the domain name as described in paragraph 3.6. This test closely mirrors the one adopted under the ICANN policy. Also similar to ICANN, the ADRP policy can be invoked for both trade-marks and trade names, and the dispute resolution under the ADRP will not prevent access to the courts or other arbitration channels. The final draft ADRP begs the question, How does it differ from the ICANN Policy? For starters, it can only be invoked by a Complainant that satisfies the Canadian Presence Requirements. The definition of Mark under the ADRP is very broad, covering trade-marks, trade names, word elements of a design mark, certification marks and official marks, all with the proviso that these must be either used or registered in Canada. Further, the term use is defined, so as to prevent anyone from asserting the rights in a Mark that would not qualify as use of the Mark in Canada. The language mirrors our Canadian Trade-marks Act very closely in its definitions, including the term confusing, defined as where the domain name so nearly resembles the Mark in appearance, sound or the ideas suggested by the Mark as to be likely to be mistaken for the Mark.

13 and only if: In addition, the final draft ADRP defines registration in bad faith of a domain name if, (a) (b) (c) The Registrant has registered the domain name or acquired the Registration primarily for the purpose of selling, renting, licensing or otherwise transferring the Registration to the Complainant, or the Complainant s licensor or licensee of the Mark, or to a competitor of the Complainant or the licensee or licensor for valuable consideration in excess of the Registrant s actual costs in registering the domain name; The Registrant has registered the domain name or acquired the registration in order to prevent the Complainant, or the Complainant s licensor or licensee of the Mark, from registering the Mark as a domain name, provided that the Registrant has engaged in a pattern of registering domain names in order to prevent persons who have Rights in Marks from registering the Mark as domain names; or The Registrant has registered the domain name or acquired the Registration primarily for the purpose of disrupting the business of the Complainant, or the Complainant s licensor or licensee of the Mark, who is a competitor of the Registrant. The ADRP has an equally precise definition of legitimate interests, in keeping with the narrower application of the policy that will inevitably result as compared to the ICANN Policy. There is a sixty (60) day waiting period for the transfer of a domain name to take effect, provided the Complainant satisfies the Canadian Presence Requirements and enters into a Registrant Agreement with CIRA. As with ICANN, there is no mechanism for cost recovery in the event of a successful complaint. However, in what has to be the most striking departure from the ICANN Policy, the ADRP provides for a penalty of up to $5,000 that may be awarded against a Complainant who brings a complaint in bad faith. A fine for bad faith against a Complainant will also render the

14 Complainant ineligible to file another complaint in respect of any.ca domain name until the penalty is paid. No complaints can yet be filed under the ADRP. The timetable proposed for implementation now targets November 2, 2001 for interested parties to obtain authorization to provide Internet-based dispute resolution services under the policy. Thereafter, these providers will commence processing complaints and we will be able to assess their effectiveness. 5. Internet Corporation for Assigned Names and Numbers ( ICANN ) ICANN is a non-profit, private-sector corporation composed of a broad coalition of the Internet s business, technical, academic and user communities. It is an entity that was appointed by global consensus to co-ordinate and manage the Internet s domain name system, and is funded through the registrars that now take part in the global domain name allocation of the top level generic domains. ICANN was established in 1998 to manage the top level generic domains, such as.com,.net and.org, in order to permit competition in the domain name registration market. Its predecessor, Network Solutions Inc. ( NSI ) was viewed as a monopoly controlled by U.S. interests and was replaced as part of an acceptance of the growing importance of the Internet for the global community. In a phased-in process, ICANN assumed responsibility for the domain name system for all top level generic domains, as well as management of the root server system and co-ordination of Internet Protocol assignment. ICANN is governed by a volunteer board of nineteen (19) directors. Following transition from Network Solutions Inc., an initial group of eighty (80) new domain name registrars world

15 wide were appointed with authority to assign domain names. All of the registrars were required to adopt the policies developed and approved by ICANN, including registration and dispute resolution procedures to govern the.com,.net and.org domains. Registration of these domain names was and remains largely unrestricted, with each registry adopting its own policies in accordance with basic guidelines. All of the registrations for.com,.net and.org are nevertheless governed by uniform rules. In response to pressure from the international community, multinationals and the World Intellectual Property Organization ( WIPO ), and in order to ensure consistent policies with respect to dispute resolution, ICANN adopted a Uniform Dispute Resolution Policy ( Policy ) to offer on-line dispute resolution for domain name disputes in the generic top level domains, effective as of October 24, The Policy sets the guidelines for on-line dispute resolution arbitration procedure that is binding on parties in all jurisdictions, but the result of a decision can be avoided by bringing an application or action in a court of competent jurisdiction before or within ten days of a decision released in accordance with the Policy. In addition to applying to all top level generic domains such as.com,.net and.org., other countries may opt in to the Policy, which is an attractive proposition for small countries with limited resources who do not wish to go through the work of establishing a comparable dispute resolution model. Countries that have opted in include for example, America Samoa (.as). The list of countries that have opted in is available on the ICANN web site.

16 Independent dispute resolution providers administer the Policy following approval as accredited dispute resolution providers. There are currently four dispute resolution providers: the National Arbitration Forum, eresolution, WIPO Arbitration Services and the CPR Institute for Dispute Resolution. ICANN has indicated that it will likely approve additional dispute resolution providers in future, but this may not come to pass judging from the caseloads of the current four (4) dispute resolution providers. 6. New Top Level Generic Domains:.biz and.info The registry system for the top level generic domain names in the.com,.net and.org were and continue to be assigned on an entirely first-come first-served basis. However, seven new generic top level domains have been approved and will be introduced in the coming year, namely,.biz,.info,.name,.pro,.aero,.coop and.museum. Some of these will be subject to registry restrictions, such as.aero, for the air transport industry. A new Registry, by the name of NeuLevel, Inc. has been awarded the right to perform this roll-out for.biz, which commenced accepting pre-registration applications in May of The pre-registration procedures have already taken place in respect of the.biz domain, which is intended for businesses and aims to expand the.com service. In addition to new criteria for application, the NeuLevel domain registry permitted Intellectual Property ( IP ) Claims for trade-mark owners for.biz registrations only. Under the IP Claim service, owners of registered or unregistered trade-marks could inform the Registry of their trade-mark rights and make an IP Claim. If a third party applies for the.biz domain name for which an IP Claim exists, the third

17 party is advised of the IP Claim and potential conflict, and asked to elect to proceed or abandon the application. If the third party elects to proceed, the Registry notifies the IP Claim holder that a similar or identical domain name has been applied for and puts that domain name on hold for thirty (30) days, to provide the IP Claim holder the right to contest the registration using a Start-up Trade-mark Opposition Policy ( STOP ), which is a simplified procedure modelled on the dispute resolution policy adopted by ICANN, before the expiry of the hold period. After the IP Claim period, an Advance Domain Name Application period permitted all businesses to apply for a.biz domain name, including IP Claim holders. This second phase allowed applicants to seek to register domain names under a randomized, round-robin processing or lottery system. As a result of random selection, many businesses applied more than once to seek to increase their chances of successful registration of.biz domains, for a small fee. The.biz domain names were supposed to go live on October 23, However, a legal challenge to the lottery system for.biz was recently initiated in California and has resulted in a preliminary ruling on October 12, 2001, enjoining NeuLevel from assigning the.biz domain names using the lottery system, for being in violation of California s lottery laws. The ruling only affects those.biz domain names for which more than one application was received. The decision is sure to be appealed by ICANN, as it applies California State law to the entire.biz Registry, even where domain name applicant does not reside in California. ICANN views the result as contrary to well-established legal principles and states that it violates the rights of non- Californians and non-u.s. citizens. ICANN further argues that the decision could be harmful to the evolution of the global Internet. The ruling certainly raises questions about the rights of

18 Internet users around the world, and raises troubling possibilities for those conducting business over the Internet that may be illegal in some jurisdictions, such as on-line gambling. The immediate impact is no less troubling, as there is sure to be a significant hold-up to the allocation of.biz domain names that received more than one application. This would ironically also affect those.biz domain names where the same applicant may be the only one who applied, but applied more than once for the same domain name. However, NeuLevel claims that only twenty percent (20%) of domain names are affected and will not resolve on October 23, In addition to.biz roll-out, the.info domain has been awarded to a Registry called Afilias, for unrestricted use, which has already accepted applications for Sunrise and Start-Up periods. The Sunrise period permitted registered trade-mark owners to apply first for domain names corresponding to trade-mark registrations, using an allocation process that favours early applicants, and requiring a commitment to register the domain name for five (5) years. The Start- Up applications commenced on September 12, 2001, and the.info Registry went live on October 1, 2001, requiring registration for a minimum of two (2) years. Over 350,000.info domain names had already been registered as at October 3, Both the.biz and.info domains are be governed by the ICANN dispute resolution policy, which is intended to govern all top level generic domains. There has been a significant body of cases decided in relation to.com,.net and.org domain names, which now allows us to evaluate the effectiveness and efficiency of the ICANN Policy, and has led to some serious allegations of systemic bias.

19 On-line Dispute Resolution Procedure of ICANN The ICANN Policy permits the Complainant to select the dispute resolution provider of its choice. Selection can be made on the basis of personal preference of the Complainant, criticised for permitting forum shopping, as discussed below. The dispute resolution providers each have their own forms on-line, and differ somewhat in fees and in speed of decision-making. Each dispute resolution provider has a full list of their panellists available for review on-line, and a Complainant can select panellists where a three-member panel is requested. The Complainant can opt for either a single member panel or a three-member panel. However, there is a procedure for the Respondent to elect a three-member panel, where the Complainant elects only one, in which case the Respondent is required to split the fee, which is usually double for a threemember panel. Fees typically range from between $750 to $3000 (USD) per arbitration for up to five (5) domain names, depending on the number of panelists and on the dispute resolution service provider selected. There are no provisions for recuperating the fees even if the Complainant wins the dispute and the domain name is ordered transferred. The complaint is launched by completing a form setting out the basis for the Complainant s claim to the domain name or domain names in question. More than one domain name can be brought in issue provided they are registered to the same Respondent. The form is in the nature of a written argument and must be accompanied by relevant attachments, such as copies of trade-mark registrations and samples of use of the Complainant s marks, as well as information relative to the Respondent s registration and use of the domain name.

20 The Complainant must meet all three (3) elements below in order to establish the right to cancellation or transfer, pursuant to paragraph 4(a) of the Policy: (a) the Respondent s domain name is identical or confusingly similar to a trade-mark in which the Complainant has rights; (b) the Respondent has no rights or legitimate interest in respect of the domain name; and (c) the domain name was registered and is being used in bad faith. The complaint should address each point in turn so as to satisfy the appointed panel that each of the criteria are met in the case. A complaint should also include any correspondence between the parties and in particular any cease and desist letter forwarded to the Respondent with proof of service. Offers to sell the disputed domain name by the Respondent and the contents of any web site should also be included, as these serve to demonstrate a lack of legitimate interest in the domain name and bad faith registration. From the time a complaint is filed, the chosen dispute resolution provider typically takes only a matter of weeks to appoint a panel and notify the Respondent of the proceedings. The Respondent should already have been served by the Complainant with a copy of the complaint and any attachments from the date of filing, which service is attested to immediately prior to the signature line of the Complainant in the complaint filed. Both the complaint and attachments should be forwarded to the dispute resolution provider electronically, in addition to the hard copies requested. A further copy of the complaint must be forwarded to the domain name

21 registry authority that sold the domain name to the Respondent. The Complainant must also elect the jurisdiction to which it will attorn in the event of subsequent litigation. The Complainant must choose between the location of the Respondent or the domain name registry for the domain name in dispute. Upon service of the complaint by the dispute resolution provider, the Respondent is asked to provide a response within thirty (30) days of commencement of the proceedings. If no response is filed, the complaint proceeds to arbitration in any event. The Respondent s default does not automatically result in a decision in favour of the Complainant, and in fact the Complainant still has to prove all three elements of its case. 2 Nevertheless, the panel is entitled to draw adverse inferences from the Respondent s failure to reply or otherwise contest the Complainant s assertions. 3 In the event that a Complainant has requested a three-member panel, the Complainant may elect to change this election to a single member panel where the Respondent has failed to provide a response, in order to cut costs associated with the complaint. A panel can also request a reply from the Complainant if the Respondent raises issues not addressed in the original complaint. A panel can also require an oral hearing, but this appears to be exercised only in exceptional cases. If an offer to transfer the domain name is made by the Respondent after the initiation of the proceedings, the Complainant can also request that the case be placed in suspension pending 2 Cortefiel S.A. v. Quintas, WIPO Case No. D MatchNet plc v. MAC Trading, WIPO Case No. D

22 transfer of the disputed domain name, and then withdraw the complaint and receive a partial refund if the matter has not proceeded for determination. Following the response period, the panel is provided with a copy of the complaint and response for a decision to be rendered. The panel decides the case in accordance with the Policy and the ICANN Rules for Uniform Domain Name Dispute Resolution Policy (the Rules ). The panel may also look to the rules and principles applicable to the parties where they are both in the same jurisdiction, to the extent that it may assist the panel in determining whether the Complainant has met its burden under the Policy. 4 Three outcomes are possible as a result of the proceedings: (i) cancellation of a domain name; (ii) rejection of the complaint; or (iii) an order directing the transfer of the domain name from the Respondent to the Complainant. 4 Packaging World Inc. v. Zynpak Packaging Products Inc., eresolution Case No. AF

23 A decision is typically issued within six (6) to eight (8) weeks, with copy sent via electronic mail, and forwarded to both the Complainant and Respondent. There is a ten (10) day period following the issuance of a decision during which the Complainant or Respondent may bring an action in a court of competent jurisdiction, which has already been identified in the complaint. 5 Where the decision orders the transfer of the domain name, the dispute resolution provider generally notifies the domain name registry responsible for the registration of the domain to effectuate the transfer following the ten (10) day appeal period. In essence, there is no appeal but there is a right to dispute the result by simply taking the matter to a court within the ten (10) day period, for an entirely de novo proceeding. In the absence of the initiation of a court proceeding, the domain name registry responsible for the disputed domain name should be contacted by the successful Complainant for implementation of the decision. All that the Complainant must provide at this stage is the domain name server information and administrative contact information typically required to re-register the domain name in favour of the Complainant. We now turn to an examination of the three elements that must be met by the Complainant to successfully obtain a transfer of a domain name. 5 Paragraph 4(k) of the Policy.

24 (a) Respondent s Domain Name is Identical or Confusingly Similar to Trademark in which the Complainant has Rights This first part of the case the Complainant must meet is satisfied by providing evidence of either a trade-mark registration in any country, or by providing evidence of common-law trademark use and making known. The Policy does not specifically request evidence of a trade-mark registration, and transfers have been successfully won solely with evidence of common law use of a trade-mark in a territory where common law rights are recognized. 6 The Policy does not recognize trade names as a basis of a complaint, but this could potentially be circumvented by alleging that the trade name is used as a trade-mark where making known can be demonstrated. Where the sole difference between the Complainant s trade-mark and the Respondent s domain name is missing punctuation or spaces and the addition of the.com, the panel will accept that the mark and domain name are identical or confusingly similar. 7 The addition of a word or letters to a well-known trade-mark in a domain name will also be considered confusingly similar to the well-known mark. 8 Famous marks are generally afforded a greater scope of protection, as evidenced by the following successful transfers: BOSS and bossshoes.com 9 6 Saxon Chocolates v. Intellware Lab, eresolution Case No. AF-0659, Bennett Coleman & Co. Ltd. v. Lalwani, WIPO Cases No. D and D , Roberts v. Boyd, WIPO Case No. D World Wrestling Federation Entertainment Inc. v. Michael Bosman, WIPO Case No. D Vivendi S.A., The Seagram Company Ltd., Joseph E. Seagram & Sons Inc., Universal Studios, Inc. and Universal City Studios, Inc. v. CPIC NET, WIPO Case No. D Hugo Boss AG v. Robert F. Walsh, WIPO Case No. D

25 AT&T SOLUTIONS, CALLATT and attglobalsecurity.com, attglobalsolutions.com 10 AT&T and att2000.com 11 Compaq and infopaq.com and smartpaq.com 12 In the case of a famous mark, the Complainant should furnish proof of trade-mark registrations in the Respondent s home country. Where the Complainant can demonstrate a lengthy Internet presence before the Respondent s date of registration, this should also be pointed out to the panel. (b) Respondent Has No Rights or Legitimate Interest in the Domain Name Where the Respondent s name and web site content bear no connection whatsoever to the domain name, or where the Respondent has offered to sell the domain name to the Complainant for a substantial amount of money, the second element of the Complainant s onus will be met. The Complainant may also demonstrate the Respondent s lack of legitimate interest by noting the fact that the domain name is not in use by the Respondent, or does not correspond to any trade-marks owned by the Respondent. The Complainant should also emphasize the Respondent s awareness of the Complainant s trade-mark, and disregard of the Complainant s rights in the mark, even if the existence of Complainant s rights were brought to the attention of the Respondent as a result of a cease and desist letter. The decisions under the Policy support 10 AT&T v. Tala Alamuddin, WIPO Case No. D AT&T v. Fred Rice, WIPO Case No. D Compaq Computer Corporation v. Boris Beric, WIPO Case No. D

26 the view that the burden on the Complainant under this requirement is relatively light, as it may be difficult to show that a Respondent lacks a legitimate interest as this information is known to or within the control of the Respondent. 13 The Complainant will not be able to succeed in this element of the test where the Respondent can demonstrate evidence of legitimate rights and interest in the domain name. Section 4(c) of the Policy offers a Respondent a list of factors that will be considered to demonstrate evidence of rights and legitimate interest. These factors include: (a) before any notice of the dispute, Respondent had 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 (b) the Respondent had been commonly known by the domain name, even if the Respondent had not acquired trade-mark rights; or (c) the Respondent is making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trade-mark or service mark at issue. The defences available to the Respondent clearly prevent a Complainant from succeeding where each party has legitimate rights and interest in the domain name, by virtue of each having use of a trade-mark or trade name that corresponds to the domain name, either in different jurisdictions or in different channels of trade. The non-commercial fair use defence also allows for the possibility 13 Educational Testing Services v. Netkorea Co., WIPO Case No. D

27 that the Respondent may register a domain name for the purposes of a fan club, union or other type of association which may use a domain name that is confusingly similar to or is identical to a trade-mark owned by a third party, but no competing commercial interest is being advanced. (c) Bad Faith Use and Registration by Respondent Bad faith use is often shown by the same evidence as that put forward by the Complainant to show lack of legitimate interest in the domain name by the Respondent. The Respondent s registration and temporary use of a domain name will suffice to establish bad faith use. 14 In addition to offering for sale the domain name for significant profit, paragraph 4(b) of the Policy provides a helpful list of factors amounting to evidence of bad faith: (1) circumstances indicating that the Respondent registered or 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 trade-mark or to a competitor of the Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name; or (2) Respondent registered the domain name in order to prevent the owner of the trade-mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or 14 National Football League Properties Inc. v. One Sex Entertainment Co., WIPO Case No. D

28 (3) Respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or (4) by using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its 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 web site or location or of a product or service on Respondent s web site or location. Evidence of bad faith can take numerous forms. However, the following provides some guidelines from decisions rendered to date: engaging in a practice of registering domain names of well-known third parties; 15 linking the domain name to a pornographic site; 16 registering many other domain names and listing them for sale; 17 engaging in a practice of registering domain names that are misspellings of wellknown persons, businesses or places (typosquatting); Stella D oro Biscuit Co., Inc. v. Patron Group Inc., WIPO Case No. D , Nabisco Brands Co. v. Patron Group Inc., WIPO Case No. D Hugo Boss AG v. Dr. Yang Consulting, WIPO Case No. D Parfums Christian Dior v. Javier Garcia Quintas and Christiandior.net, WIPO Case No. D Hewlett-Packard Company v. John Zuccarini, NAF Case No. FA

29 registering the domain name where the Respondent is in a direct competitive relationship with the Complainant, and the domain name would likely infringe the Complainant s trade-mark rights under Canadian law; 19 or registering the domain name primarily to disrupt the business of a competitor. 20 While the Policy s wording suggests that the domain name must be currently being used in bad faith, the panellists appear to be taking a more purposive and pragmatic approach. Many cases appear to have been resolved on the basis of bad faith registration, without showing actual bad faith use. 21 Further, temporary bad faith use will satisfy the requirements of the Policy. 22 By way of defences, a Respondent must essentially demonstrate a legitimate or bona fide interest in the domain name, or show that the domain name was registered based on another meaning for the domain name that inadvertently corresponds to a trade-mark. It is also perfectly legitimate for a Respondent to register a descriptive or generic domain name and offer it for resale, even where the Complainant has trade-mark rights in the domain name Slep-Tone Entertainment Corporation v. Sound Choice Disc Jockeys Inc., NAF Case No. FA Packaging World Inc. v. Zynpack Packaging Products Inc., eresolution Case No. AF-00233, and Mission KwaSizabantu v. Post, WIPO Case No. D For example, Saxon Chocolates v. Intellware Lab, eresolution Case No. AF Ingersoll-Rand Co. v. Frank Gully (d.b.a. Advcomren), WIPO Case No. D Shirmax Retail Ltd. v. CES Marketing Group Inc., eresolution Case No. AF-0104.

30 A decision relating to the domain name zero.com 24 stated that common English words are available as domain names on a first-come first-served basis, and the fact that a Complainant had rights in marks that included the word did not preclude registration by the Respondent who presented a reasonable explanation for its choice of the domain name. The Respondent may also choose to allege Reverse Domain Name Hijacking, on the grounds that the complaint is brought in bad faith, based on Paragraph 15(e) of the Rules: If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. It is difficult to envisage that this provision will be invoked successfully where the Complainant puts forward even a remotely reasonable case. There is furthermore no remedy available to the Respondent other than the dismissal of the complaint. Perhaps concerns about this aspect of ICANN has influenced the adoption of the penalty clause under ADRP. The decisions rendered by panels under the Policy are generally short and often deal with more than one issue in the same paragraph, offering a summary conclusion that the requirements of section 4 of the Policy have been met. As a result, it is sometimes difficult to discern whether 24 Zero International Holding GmbH & Co. v. Beyonet Services and Stephen Urich, WIPO Case No. D

31 the Complainant s evidence on a specific point was accepted as evidence of lack of legitimate interest or of bad faith. Further, there is significant overlap in the concepts associated with the second and third elements of the case the Complainant must meet. Each case ultimately turns on its facts, and the panel is likely to apply trade-mark law principles to determine the issue of confusion, due to the similarity of the concepts. Further, most panellists have been recruited from intellectual property firms all over the world and from academic institutions in the field of intellectual property. Therefore, most panellists come to the process equipped with a high level of experience and expertise in the field of trade-mark law, at least in their particular jurisdiction. A review of the panellists suggests that most are from the United States, Canada, Britain and other European countries. As previously stated, the on-line arbitration decisions are final and binding unless a court action is commenced in a designated jurisdiction, at which point the parties may present the case anew. While the issue of whether any weight will be afforded a panel decision has not been addressed by a court in Canada, one U.S. court decision has remarked that it was not bound by the panel s decision. 25 The Policy also does not restrain either party from commencing court proceedings at any time before or after the filing of a complaint. 8. Tips and Tricks under ICANN Policy A number of recommendations on preparation and filing of a complaint can be made based on experience. A complaint should always put the Complainant s best case forward. While affidavit evidence is not necessary, it will be accepted. If no affidavit is filed, then certified 25 Weber-Stephen Products Co. v. Armitage Hardware, 2000 WL (N.D. Ill.).

32 copies and original promotional materials showing use of the mark, should be provided. It is very important to include evidence of the Respondent s registry information and use of the domain name. The requirements of bad faith are often loosely interpreted, and experience has shown that a complaint can be successful even where no evidence of any offer to sell the domain is present, but the Respondent fails to demonstrate any legitimate interest in the domain name. Further, domain names that are confusingly similar to marks owned by a complainant will be ordered transferred, sometimes even where they are relatively descriptive or lend themselves to another meaning. There are a few strategies that may be employed to save costs following initiation of a domain name complaint. For instance, if a complaint is filed with WIPO for dispute resolution by a three-member panel, the Complainant can revert to a single member panel if the dispute is uncontested by the Respondent, thereby obtaining a refund of the additional fee. However, now that we have a study that shows three-member panels primarily assist the Respondent, discussed below, it is recommended to proceed to elect a single member panel, and the Respondent is thus obligated to pay the additional fee to elect for a three-member panel. A complaint can also be stayed by the dispute resolution provider at the request of the Complainant, if overtures towards settlement are made by the Respondent after the proceeding is initiated. This can permit the Complainant to negotiate a settlement and transfer of the domain name while the complaint is being held in abeyance, and then obtain a refund of a portion of the dispute resolution fee upon withdrawing the complaint.