Domain Names: Tackling Infringement & the UDRP & Nominet DRS. Nick Wood Nick.wood@comlaude.com September 2005

Transcription

1 Domain Names: Tackling Infringement & the UDRP & Nominet DRS Nick Wood September 2005

2 Summary Why domain infringement happens Who does it Remedies Negotiation Dispute Resolution Focus on.co.uk and.com UK Court Cases

3 Why infringement happens Three key reasons Cybersquatting A registration of a dn another party has rights in: often points to holding page Typosquatting Confusingly similar registration (micr0s0ft.com). Very often does not point Grudge registration By activists, disgruntled shareholders or employees: often points to a GripeSite

4 Who are the infringers? If the motivation is profit: Employees of internet companies Students If the motivation is a Grudge: Disgruntled employees Ex-employees Consumers or clients who are unhappy Activists Competitors (rare)

5 Finding Infringement Subscribe to a domain name watching service Undertake a domain name search Some free sites: At the registries: Commission from a professional company: IPTwins Ensure coverage is global Ensure you cover confusingly similar

6 Reacting to infringement 1 How serious is the infringement? Is there ? Is there a website? Are goods for sale on the website? Are damaging claims being made Identify the owner of the domain & jurisdiction Whois search Who pays for the site to be hosted? A pattern of infringement? Follow the money!

7 Reacting to infringement 2 If a domain name is registered but not used: Let them squat in hell Put owner and hosting company on notice Monitor A refusal to buy may mean the name is lapsed but remember it may be snatched up by a Traffic Site

8 Reacting to infringement 3 Publish your We never negotiate policy on line with a Case Study on how you tackled an infringer Develop a relationship with an internet investigator: Marksmen.com Look at the rules of the registry: is there a DRS? What is the cost? IS the registrant in breach of registry rules e.g. are whois details up to date? Remember the effect that action against an activist might have on your clients (especially Fan Sites)

9 Tackling infringement under.com & the gtlds Mandatory Uniform Dispute Resolution Procedure Binding administrative process for bad faith registration Covers all gtlds plus 45 cctlds Adopted by ICANN on 26/8/1999 but created & administered by WIPO A thorough & expeditious administrative procedure featuring impartiality & credibility through the use of a panel of qualified neutrals

10 The UDRP Administrative procedure conducted on-line Mandatory on registrants: set out in T&Cs All cases posted at WIPO site:20,511 domain cases of which 5,000 for.com,.org &.net Expert panellists qualified in tm law Remedies: transfer or cancellation No injunctive relief

11 UDRP Timing: takes two months Costs: Case with 1-5 domains & 1 panellist: $1500; 3 panellists: $4,000 Case with 6-10 domains & 1 panellist: $2000; 3 panellists $5,000 Basis for panel decisions: Statements and documents from each side Policy & rules of UDRP Principles of tm law No right of appeal

12 UDRP: Grounds for a Complaint Registrant s domain name is identical or confusingly similar to a trademark in which the complainant has an interest The registrant has no rights or legitimate interests in the name The name has been registered AND is being used in bad faith

13 UDRP: What is Bad Faith? Four non-exclusive illustrations of Bad Faith in Section 4)b of Policy: 1. Registered primarily for the purpose of selling, renting or otherwise transferring it to the complainant for consideration in excess of out of pocket expenses 2. A pattern of such conduct 3. To disrupt the business of a competitor 4. To attract for commercial reasons internet users to a site by creating a likelihood of confusion with complainant s mark

14 UDRP: Respondent s Legitimate rights Before any notice of the dispute, use or demonstrable preparation to use the domain in connection with bona fide offering of goods or services If the individual, business or organisation has been commonly known by the name, even if no rights have been acquired Legitimate non-commercial or Fair Use without intent for commercial gain or to tarnish the trademark at issue

15 UDRP: Inconsistencies No precedental value so: Telestra vs Nuclear Marshmallow (Telsetra.org) Passive holding (eg no web site) can be use in bad faith where respondent concealed true identity & supplied false contact details Famosa vs Palameta (famosa.com) Must be registered & used in bad faith no such thing as pasive holding See the many Walmartsucks cases or Personal names cases (Madonna, Springsteen etc)

16 UDRP See the WIPO website: studies to extend the scope to other trademark disputes beyond bad faith Apply to become a panellist: free workshops every four months Remember that serial cybersquatters have model defences Always ask for name to be transferred

17 Disputes under.uk Nominet UK manages.uk names available to commercial enterprises Not-for-profit membership organisation recognised by UK government as benign monopoly Nominet DRS began September 2001 two years after UDRP Applies to all.uk names though Nominet says Disputes account for less than 0.05% of all registrations under.uk (currently c.5 million)

18 Nominet.uk Notably different to UDRP: Starts with 2 weeks of free mediation led by Nominet staff this resolves 55% of cases If unsuccessful 750 paid by complainant to begin DRS Panel of 3 experts selected Taxi Rank style There is Right of Appeal: costs 3,000 and features three new experts

19 Nominet DRS to date From the Nominet Web Site: Nominet has received a total of 3316 new cases (An average of 55 new cases per month.) 422 cases have been referred to an independent expert for decision. In 323 (77%) cases the complainant was successful. In 99 cases the complaint was dismissed; in three of the dismissed cases the expert also returned a finding of reverse domain name hijacking Eight appeals have been lodged. The original decision was upheld by the appeal panel on Five occasions and overturned in three.

20 Nominet UK DRS

21 Nominet DRS

22 Nominet DRS

23 .UK Disputes Criteria for a complaint: And Complainant has rights in respect of a name or mark which is identical to the domain name The domain name is an abusive registrations

24 .UK Abusive Registrations: Registered or acquired in a manner which at the time when the registration took place took unfair advantage of or was detrimental to the complainant s rights Or Has been used in a manner which tool unfair advantage of or was unfairly detrimental to the complainant s rights

25 Non-exhaustive list of evidence of Abusive Registration Intent to sell for profit Blocking the registration of a name in which the complainant has rights Unfairly disrupting the business of the complainant The respondent is using the name in a way which has confused people or businesses In a combination with other circumstances that indicate that the domain name is an Abusive Registration such as a pattern of Abusive Registrations Provision of false contact information

26 .uk DRS: Respondent s Counterclaims Use with a genuine offering of goods or services Commonly known by the name Legitimate non-commercial or fair use of the domain The domain name is generic Use in association with a tribute or criticism site Note: the burden is on the Respondent to show the registration is not abusive

27 Disputes under.uk Website at AboutTheDrs/ Gives model complaints and responses Searchable database of cases Searchable database of experts Maximum time 14 weeks; Average time: 6 weeks

28 .uk Disputes Visit the website & review model complaints Apply to become an Expert Free mailing list for information

29 The Courts Key UK Cases: British Telecommunications Plc v One in a Million Ltd (1999) MBNA v Freeman (2000) French Connection v Sutton (2000) Premier Brands UK Ltd v Typhoon Europe Ltd (2000) Radio Taxicabs Ltd v Owner Drivers Radio Taxi Services Ltd (2001) Easyjet Airline v Dainty (2001) Reed Executive v Reed Business Information Ltd (2004)

30 Questions?