Internet domain names: the uniform dispute resolution policy

I. INTRODUCTION

The explosive growth in electronic commerce over the past decade has generated thousands of legal disputes regarding the registration and use of Internet domain names. (1) These disputes generally pit the respective interests of the owner of a trademark against the rights of the domain name registrant whose name incorporates, in whole or in part, the mark in issue. In an effort to resolve such disputes in a relatively inexpensive and expeditious manner, the Internet Corporation of Assigned Names and Numbers, usually referred to as “ICANN,” in 1999, instituted the Uniform Dispute Resolution Policy, or “UDRP.” (2) This article will explain how the conflict between domain names and trademarks arose, trace the UDRP’s development, explain the process for resolving domain name disputes, and highlight some current issues under the UDRP.

II. BACKGROUND ON DOMAIN NAMES

The history of the Internet traces back more than twenty-five years, when the U.S. government began funding research to develop packet-switching technology and communication networks. Starting in the 1960’s, the Advanced Research Projects Agency (DARPA) in the Department of Defense established the “ARPANET” network. (3) ARPANET was later linked to other networks established by various government agencies, universities, and research facilities. (4) During the 1970s, DARPA also funded the development of a “network of networks,” which became known as the “Internet.” The protocol that allowed the networks to intercommunicate became known as Internet Protocols (IP). (5)

In the early 1990s, the National Science Foundation (“NSF”) assumed responsibility for coordinating and funding the management of the non-military portion of the Internet infrastructure. (6) With the rapid growth of the Internet over the next two years, the public’s demand for Internet service overwhelmed the NSF. Consequently, on December 31, 1992, NSF entered into a cooperative agreement with Network Solutions, Inc. (NSI) for some of these services. (7) One of these services was domain name registration. NSI registered domain names in the top-level domains–.com, .net, and .org–on a first-come, first-served basis. (8) This first-come, first-served policy, though easy to administer, created considerable friction between trademark owners and domain name registrants.

Under U.S. trademark law, as well as the trademark law of most other nations, several companies may use the same mark–for example, ACME–on unrelated goods and services, because such simultaneous use would not result in a likelihood of confusion. Rather, an action for trademark infringement will only be successful if the evidence establishes that the source or sponsorship of the defendant’s products or services would confuse the relevant purchasing public. (9) The problem arises, however, when two or more owners of legitimate rights in the ACME mark want to register the domain name acme.com because only one company can own a particular domain name. (10) Moreover, there is no legal requirement that the domain name registrant have corresponding rights in the ACME mark. Thus, there is no guarantee that the acme.com domain name will even be registered by one of the parties with legitimate trademark rights in the name. (11)

In the mid 1990s, NSI developed a dispute resolution policy in an effort to address the conflicts arising between trademark owners and domain name registrants. (12) Where the trademark owner could establish ownership of a U.S. trademark registration that predated the activation date of the disputed domain name, and the registered mark was identical to the domain name, NSI would place the domain name “on hold.” (13) This meant that neither party could use the domain name. A trademark owner who desired to have the domain name transferred to it for its own use was forced to file a lawsuit. (14) For this and other reasons, NSI’s policy proved unsatisfactory.

In response, in 1996, Internet stakeholders formed the International Ad Hoc Committee (“IAHC”), a task force including representatives of the Internet Society, the International Trademark Association, the World Intellectual Property Organization (“WIPO”) (15) and other groups. The IAHC issued a memorandum of understanding proposing a revised system for registering top-level domain names. (16) The memorandum also contemplated the creation of Administrative Domain Name Challenge Panels to resolve domain name disputes through an elaborate administrative procedure. (17)

Meanwhile, the U.S. government assembled an interagency working group to formulate an official policy on privatizing the domain name system. This effort culminated in the U.S. Department of Commerce issuing, on June 10, 1998, a revised policy statement, pursuant to which the government announced that it was prepared to recognize, and to enter into agreements with, a new, not-for-profit corporation formed by private sector Internet stakeholders to administer policy for the Internet name and address system. (18) Under such agreements, the new corporation would undertake responsibilities performed by, or on behalf of, the U.S. government or by third parties, such as NSI, under arrangements with the U.S. government. This new corporation would later take the name Internet Corporation for Assigned Names and Numbers (“ICANN”).

With respect to trademark issues, the U.S. government recommended that ICANN adopt policies whereby domain name registrants would agree, at the time of registration or renewal, that, in cases involving cyberpiracy or cybersquatting (as opposed to conflicts between legitimate competing rights holders), the domain name registrant would submit to, and be bound by, alternative dispute resolution systems authorized by ICANN. (19) The government then requested WIPO to convene an international process to develop a set of recommendations for a trademark/domain name dispute resolution system.

Thus, in July 1998, WIPO undertook an extensive process of international negotiations to develop and make recommendations to ICANN on questions arising from the interface between domain names and intellectual property rights. In April 1999, WIPO issued its final report, which it then presented to ICANN. (20) Chapter three of the report recommended that ICANN establish an administrative procedure for the cancellation or transfer of domain names found to have been abusively registered in violation of another’s trademark rights by a registrant with no rights or legitimate interests in the domain name. (21) The WIPO report further recommended that all domain name holders be required, in their registration agreements, to agree to this administrative procedure. (22) However, the administrative procedure would be non-binding, and either the domain name holder or the trademark owner would retain the right to initiate litigation over the name. (23)

ICANN considered WIPO’s report during its May 1999 meeting in Berlin, Germany, and incorporated its recommendations by adopting the new Uniform Domain Name Dispute Resolution Policy (“UDRP”) on August 26, 1999, during its meeting in Santiago, Chile. The ICANN Board approved all necessary implementation documents on October 24, 1999. (24)

III. ANALYSIS OF THE UDRP

Under the UDRP, an applicant registering a domain name is required to make certain representations and warranties, including that the registration does not knowingly infringe upon or otherwise violate the rights of any third party. (25) The heart of the UDRP provides for mandatory participation in administrative proceedings that could lead to the cancellation or transfer of a domain name registration. (26) Under paragraph four of the UDRP, a domain name registrant is required to submit to an administrative proceeding in the event that the complainant asserts that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights

(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name

(iii) the domain name has been registered and is being used in bad faith. (29)

Furthermore, the complainant bears the burden of proving each element. (30)

The UDRP proceedings are conducted by one of the ICANN approved service providers. (31) Each service provider develops and maintains a list of individuals qualified to serve on the Administrative Panels that decide disputes. (32) Most of these individuals have background and experience in either dispute resolution or trademark law. (33)

The UDRP rules set forth the guidelines necessary to conduct administrative procedure. These rules provide that any person or entity may initiate an administrative proceeding by submitting a complaint to a service provider, in both hard copy and electronic format, in accordance with the policy and rules. (34) The service provider reviews the complaint for administrative compliance with the policy and rules and, if it is in compliance, forwards the complaint to the respondent within three calendar days following receipt of the fees to be paid by the complainant. (35) A respondent has twenty days from commencement of the administrative proceeding (generally the date the complaint is sent to the respondent) within which to file a response. (36) If no response is filed (which happens in a substantial percentage of cases), the Administrative Panel is directed to decide the dispute based solely upon the complaint. (37)

The Administrative Panel, which usually consists of one person but can be expanded to three people, upon request of either party, is required, absent exceptional circumstances, to issue a written opinion within fourteen days of its appointment. (38) Within three calendar days after receiving the decision from the panel, the service provider must notify each party, as well as ICANN and the concerned registrar, for example, NSI, of the decision. (39) The concerned registrar must then communicate the date for the implementation of any decision that would transfer or cancel a domain name registration with each party, the service provider and ICANN. (40) However, the respondent has the opportunity, within ten days of receipt of the panel’s decision, to commence a lawsuit against the complainant. (41) If a lawsuit is filed, the panel’s decision will not be implemented. (42)

Further, nothing in the policy or rules prevents either party from submitting the dispute to a court during the administrative proceeding, or even after it is concluded and implemented. (43) Additionally, the Federal Arbitration Act’s (44) limitations on judicial review do not apply in the context of decisions issued under the UDRP. (45) Therefore, the facts giving rise to invocation of the UDRP may also be the subject of a trademark infringement lawsuit, (46) an action for dilution, (47) and/or a suit filed pursuant to the “Anticybersquatting Consumer Protection Act.” (48) However, where the trademark owner is motivated primarily by a desire to acquire ownership of the domain name, as opposed to an award of damages, the UDRP should be the “weapon of choice.” (49)

IV. CURRENT ISSUES UNDER THE UDRP

To date, the UDRP has proven to be extremely popular among trademark holders. Several thousand administrative proceedings have been commenced and processed since its implementation. (50) Based on a recent study, complainants prevail in just over 83% of the cases decided by a single-member panel and in 60% of the cases decided by three-member panels. (51) However, when “default/no response” cases are removed from the equation, complainants prevail in only 45% of three-member panel cases. (52)

As might be expected with any new legal proceeding, a number of interesting issues have confronted UDRP panelists in their interpretation of the applicable policy and rules. Not surprisingly, the results have been inconsistent. These issues will be discussed in the following sections.

A. The “Confusingly Similar” Requirement and “Cybergriper” Domain Names

The first area of inconsistent treatment relates to the test for “confusing similarity.” An administrative proceeding conducted under the UDRP is based on a different standard than a trademark infringement suit. While the UDRP focuses, in part, on the issue of whether the domain name is confusingly similar to complainant’s mark, it seems that this issue should be decided based solely on a comparison of the domain name and the mark. (53) The UDRP further differs from trademark infringement suits in that the goods or services offered under the mark and domain name appear irrelevant. (54) Indeed, in many cases, the domain name is not even used in connection with the offering of any goods or services. However, some UDRP panels have adopted a contrary position. (55)

Many panels have confronted the confusing similarity test in the context of cybergripers

Given the apparent mushrooming of complaint sites identified by

reference to the target’s name, can it be said that the

registration would be

recognized as an address plainly disassociated from the

Complainants? In

the Panel’s opinion, this is by no means necessarily so. The first

and

immediately striking element in the Domain Name is that the

Complainant’s name and adoption of it in the Domain Name is

inherently

likely to lead some people to believe that the Complainants are

connected

with it. Some will treat the additional “sucks” as a pejorative

exclamation

and therefore disassociate it after all from the Complainants

but, equally,

others may be unable to give it any very definite meaning and will

be

confused about the potential association with the

Complainants. (58)

B. The “Noncommercial” Use Issue and “Cybergriper” Domain Names

In resolving cybergriper cases based on the confusing similarity test, the panels, largely, have avoided addressing the more difficult question of whether these domain names qualify as a legitimate noncommercial use under the UDRP. If use of the domain name qualifies as noncommercial, the registrant has rights or legitimate interests in the name. (59) The outcome of cases that address the issue of legitimate use is highly fact sensitive. For example, in the case involving the domain name natwestfraud.com, a majority of the panel found that a web site used to attract persons with a grudge against a bank could not be considered noncommercial in nature. There, the evidence established that the domain name registrant sought $2 million from the bank as a condition for transfer of the domain name. (60) According to the majority, by using the website as a place for people to post complaints against the bank and also as a potential source of revenue, the registrant rendered the use of the site commercial and transcended any free speech leeway. (61) In contrast, where the evidence indicated that the domain name was used in connection with a complaint web site and the domain name registrant did not seek to earn a profit from the sale of the domain name to the trademark owner and appropriate disclaimers were included on the site, panels have found that such use of the domain name is noncommercial in nature. (62) As such, the legitimate trademark owner was unable to obtain transfer of the domain name.

C. Registration and Use of the Domain Name in “Bad Faith”

Another issue that frequently arises in UDRP proceedings concerns the requirement that the domain name “has been registered and is being used in bad faith.” (63) Since, in many cases, the registrant is not using the domain name at all, in the sense of having an operating web site, the question arises as to whether the domain name is being used in bad faith. In such cases, panels have not hesitated to find that such passive holding of a registration constitutes evidence of bad faith use. (64) In fact, one of the specific grounds set forth in the UDRP as constituting evidence of bad faith registration and use relates to passive holding. (65) Such conduct was a major impetus for adoption of the UDRP.

D. Determining Whether “Rights” in the Mark Exist

Finally, while paragraph 4(i) of the UDRP requires that the complainant have rights in the mark, it does not indicate on what basis the panel is to determine whether such rights exist. (66) Although, in most cases, the complainant owns a national trademark registration for the mark in issue (and, thus, at least in the United States, presumptively has rights in the mark), (67) many panels have made an independent evaluation of whether the complainant has rights in the mark.

For example, in the proceeding that involved the domain name trashylingerie.com, respondent contended that the complainant, who owned a U.S. registration for the mark TRASHY LINGERIE, had no rights in the mark. The Panel asserted its authority to second guess the decision of the U.S. Patent and Trademark Office, reasoning that otherwise the complainant would obtain rights to a domain name to which respondent was rightfully entitled. (69) However, the panel indicated that it would overturn a determination by a regulatory authority only on the basis of “clear and convincing” evidence.

The tension that exists between the international dimension of domain names and the national scope of trademark rights further complicates matters concerning whether rights exist in a mark. Trademark rights are usually territorial in nature, while the domain name system is non-nationally delimited. That is, unlike domain name registrations, trademark rights reach no further than the borders of the country that recognize such rights. (70) One company can own a certain mark in the United States, but another company may own that same mark, even as used on the very same goods, in Great Britain.

The Internet is a global system and domain names can easily be accessed from anywhere in the world. In light of their internationality, is it fair to grant one company a monopoly on the use of a domain name when, perhaps, only one or only a few countries would recognize such rights in the mark? What happens if two different companies own rights in the same mark, each in a different country? In such a situation, what country’s law controls whether rights in the mark exist? (71)

This complex issue was the focus of a proceeding involving the BEANIE BABIES mark. In this proceeding, respondent had registered the domain names ebeanies.com, e-beanies.com, ebeaniebabies.com, and ebeaniebaby.com . (72) The complainant owned a U.S. registration for the mark BEANIE BABIES and had registered the mark BEANIES with the Benelux Trademark Office, as well as with the German, Japanese, and Korean offices. (73) The complainant’s efforts to register the marks “e beanie” and “e beanies” with the U.S. Patent and Trademark Office were pending at the time of the proceeding. (74)

While all three panel members agreed that the domain names “ebeaniebabies.com,” and “ebeaniebaby.com,” should be transferred to complainant, the partial dissent believed that the two other domain names, “ebeanies.com” and “e-beanies.com,” should not be transferred, accusing the complainant of “Foreign Trademark Shopping.” (75) According to the partial dissent:

By the phrase “Foreign Trademark Shopping,” I mean the fact that

Complainant deliberately went to four non-English speaking

countries to

register a mark that would have been generic [and, thus,

unregistrable] in

an English speaking country, and registered the generic mark there

four

years before attempting to register it in an English speaking

country (the

U.S.) suggests to me that Complainant was attempting to gain an

advantage over a U.S. citizen that it would not have had under U.S.

trademark law. Encouraging this subterfuge is poor public policy

and was

not, I think intended by the ICANN Board when it adopted the

dispute

resolution rules.

V. NEW TOP-LEVEL DOMAIN NAMES

In an effort to partially address the conflict between trademark rights and domain names, ICANN recently approved the addition of seven new top-level domain names. (76) In approving these new top-level domains, trademark owners precluded from registering their mark as part of a .com domain name would be able to enjoy a presence on the Internet. However, many trademark owners opposed the addition of the new top-level domains in view of their past experience with abusive domain name registrations.

In some cases, the registries responsible for the operation of the new top-level domains have adopted procedures designed to minimize conflicts between trademarks and domain names. For example, the registry for the new top-level domain .biz (77) adopted a policy that permitted trademark owners, during an initial start-up phase, (78) to file a claim notifying prospective .biz registrants of their rights in a mark. (79) If a third party attempts to register a domain name that is an exact match of the mark, the registry will notify the trademark owner. (80) The trademark owner may then initiate an administrative proceeding under the Start-up Trademark Opposition Policy (STOP). (81)

With respect to the new .info domain name, trademark owners, during a so-called “sunrise” period, (82) could have applied for domain names exactly matching their marks before the registry was opened to the general public. In order to qualify for a sunrise registration, the owner of the mark must have registered it nationally as of October 2, 2000. Third parties may challenge a sunrise registration for 120 days following the close of the sunrise period. (83)

VI. CONCLUSION

By providing a quick and relatively inexpensive means to resolve clear-cut cases of cybersquatting, the UDRP serves a useful function. However, the UDRP needs to be revisited in an effort to clarify certain issues, including the analysis of “confusing similarity” and “noncommercial use,” particularly in the context of derogatory-type domain names. (84) Given the international dimensions of the Internet, the question of when rights in a mark exist under the applicable UDRP is also ripe for review. It is also clear that situations still exist in which trademark owners may be forced to litigate to enforce their rights. Consideration should be given to expanding the UDRP to situations involving rights other than trademark rights, such as trade names (85) and geographical indications. (86) It is anticipated that the UDRP will soon be amended to address at least some of these issues, as well as others. (87) While the lack of any controlling precedent or legal regime makes uniformity and predictability difficult, as time progresses, it may be expected that the UDRP will be refined and greater consensus will be reached with respect to its interpretation.

(1) Domain names are the familiar and easy-to-remember names for Internet locations. It is easier to reach a company’s web site if its domain name corresponds to the company’s name or leading product. For example, Ford Motor Company’s web site may be accessed at “ford.com.” Domain names map the unique Internet Protocol (IP) numbers that serve as routing addresses on the Internet. See Management of Internet Names and Addresses, 63 Fed. Reg. 31,741 (June 10, 1998). The domain name system translates Internet names into the IP numbers needed for transmission of information across the network. Id. Every computer connected to the Internet is assigned a numeric address. This address is in the form of numbers, such as 123.112.101.1. Because these long numbers are difficult to remember, the Internet authorities permit assignment of comparable alphanumeric addresses to each numeric IP address. For example, the domain name “microsoft.com” is also reachable at 131.107.1.7. Id.

(2) ICANN: Uniform Domain-Name Dispute-Resolution Policy, available at http://www.icann. org/udrp/udrp-policy-24oct99.htm (last visited Feb. 13, 2002).

(3) See Management of Internet Names and Addresses, 63 Fed. Reg. 31,741 (June 10, 1998).

(4) Id.

(5) Id.

(6) Id.

(7) Id.

(8) Id. ICANN recently approved the addition of seven new top level domains. See http://www.icann.org/tlds/app/index.htm (last visited Apr. 12, 2003). ICANN is a not-for-profit corporation that was created to operate the domain name system. See http://www.icann.org/general/aboutICANN.htm (last visited Apr. 12, 2003).

(9) 15 U.S.C. [section] 1052(d) (2002)

(10) For example, the domain name “acme.com” is registered by Acme Laboratories at http://www.acme.com. Acme Markets, Acme Technologies, Acme Underground and Acme Pet are using lengthier domain names incorporating Acme. See Google Search, at http://www.google.com (last visited Feb. 13, 2002).

(11) There are several hundred entries for companies that use the word acme as a mark or trade name which have web sites that include “acme” as part of their domain name. Id.

(12) NSI Domain Name Dispute Resolution Policy Statement, available at http://www.jmls.edu/ cyber/docs/dnpol.txt, rendered obsolete by ftp://rs.internic.net/policy/internic/ internicdomain-4.txt (last visited Feb. 13, 2002).

(13) Id.

(14) In some situations, however, where the domain name registrant is not using the domain name in connection with the sale of goods and/or services, such suits are problematic. See, e.g., Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998) (registering of domain name does not constitute commercial use

(15) WIPO is an agency of the United Nations based in Geneva, Switzerland. For more information about WIPO, visit its web site at http://www.wipo.int.

(16) The IAHC final report is available at http://www.iahc.org/ draft-iahc-recommend00.html.

(17) Id.

(18) Management of Internet Names and Addresses, 63 Fed. Reg. 31,741 (June 10, 1998).

(19) Cyberpiracy or cybersquatting generally refers to the practice of registering, with bad faith intent, domain names that incorporate the trademarks of others.

(20) Final Report of the Internet Domain Name Process, Apr. 30, 1999, WIPO Publication No. 92805-0799-6, available at http://www.wipo2.wipo.int/orocess1/index.html (last visited Mar. 30, 2002).

(21) Id.

(22) Id.

(23) Id.

(24) ICANN: Uniform Domain-Name Dispute-Resolution Policy, available at http://www.icann.org/ udrp/udrp-policy-24oct99.htm (last visited Feb. 13, 2002). According to the web site, this policy has been adopted by all accredited domain name registrars for domain names ending in .com, .net and .org. It has also been adopted by certain managers of country-code top-level domains (for example, .nu, .tu, .ws) and by each of the seven new top-level domains. See infra note 76.

(25) ICANN: Uniform Domain-Name Dispute Resolution Policy, supra note 24. Paragraph two of the UDRP requires that a domain name applicant represent and warrant that: (a) all statements made in the “Registration Agreement are complete and accurate

(26) See ICANN: Uniform Domain-Name Dispute-Resolution Policy, supra note 24, paragraph 4.

(27) Id. at paragraph 4(a)(i).

(28) The UDRP sets forth, in paragraph 4(c), a non-exclusive list of circumstances that “shall” demonstrate that the domain name registrant has rights to or legitimate interests in the domain name. These circumstances are as follows: (i) “before any notice … of the dispute,” the registrant is using, or demonstrably preparing to use, “the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services

(29) The UDRP spells out in paragraph 4(b) certain circumstances that, if found by the panel, “shall” be evidence of the registration and use of a domain name in bad faith. These include when: (i) the domain name was registered or acquired “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant” who owns the trademark or to the owner’s competitor, “for valuable consideration in excess of … documented out-of-pocket costs directly related to the domain name

(30) With respect to UDRP paragraph 4(a)(ii), relating to proof that the domain name registrant lacks any “rights or legitimate interests” in the domain name, some panel decisions, recognizing the inherent problem of proving otherwise, have effectively shifted the burden of this element to the registrant. See, e.g., Dow Jones & Co., Inc. v. Hephzibah IntroNet Project Ltd., No. D2000-0704 (WIPO Sept. 4, 2000) (stating that “the evidentiary burden in relation to the respondent’s rights and interests must shift to respondent once a prima facie case has been raised by complainant since the establishment of such rights lies primarily within the knowledge of Respondent.”).

Although the Policy draws a clear distinction between the

requirement of showing absence of legitimate right or interest

in paragraph 4(a)(ii), and the showing of bad faith registration

and use in paragraph 4(a)(iii), in reality it is difficult to

separate the consideration of one from the other. Absence of any

right or interest on the part of the Respondent may be of

assistance in determining bad faith registration and use,

and bad faith registration and use may be of assistance in

determining the legitimacy of the claimed right or interest.

See First American Funds, Inc. v. ULT. Search Inc., No. D2000-1840 (WIPO Apr. 20, 2001).

(31) See ICANN: Uniform Domain-Name Dispute-Resolution Policy, supra note 23. These providers include WIPO’s Arbitration and Mediation Center, the National Arbitration Forum, the CPR Institute for Dispute Resolution, and the Asian Domain Name Dispute Resolution Centre. See http://www.icann.org/dndr/udrp/approved.htm (last visited Apr. 12, 2003). Based on an August 2001 study, the majority of cases (about 58%) have been filed with WIPO. See Michael Geist, Fair.com?: An Examination of the Allegations of Systematic Unfairness in the ICANN UDRP, available at http://aixl/uottawa/ca/~geist/geistudrp.pdf. (last visited Feb. 13, 2002). A shorter version of this study was published in Michael Geist, Fairness and the ICANN UDRP, 3 INTERNET L. & BUS. 181 (2002). Of the 3,157 cases filed with WIPO, 2,023 resulted in an order transferring a domain name, 16 resulted in the cancellation of a domain name, 490 complaints were denied, and 628 were withdrawn or terminated. See UDRP Case Filings and Decisions available at http://arbiter.wipo.int/domains/ statistics/ cumulative/results.html (last visited Feb. 28, 2003). Copies of the decisions rendered by WIPO panels maybe found at http://arbiter.wipo.int/domains/cases (last visited Feb. 13, 2002). Copies of the decisions rendered by National Arbitration Forum panels may be accessed at the web site maintained by ICANN at http://www.icann.org (last visited Mar. 30, 2002). Copies of the decisions rendered by CPR Institute for Dispute Resolution panels may be found at http://www.cpradr.org/ICANN_Cases.htm (last visited Feb. 13, 2002). The Asian Domain Name Dispute Resolution Centre was approved as a dispute-resolution service provider, effective February 28, 2002. See Approved Providers for Uniform Domain-Name Dispute-Resolution Policy available at www.icann.org/dndr/edrp/ approved-providers.html (last visited Feb. 28, 2003). A fifth company, eResolution, is no longer providing these services. Its decisions were formerly available at http://www.eresolution.ca/services/dnd/ decisions, but were not available when the web site was last visited on February 13, 2002. For statistical summaries of UDRP decisions visit Michael Geist’s homepage, available at http://aixl/ uottawa/ca/~geist/.

(32) See, e.g., WIPO’s list of approved panelists, available at http://www.wipo.int/domains/gtld/index (last visited Mar. 31, 2002). Most of the time, the service provider selects panelists, though, under some circumstances, the parties may select the panelists. Id.

(33) Id.

(34) Rules for Uniform Domain Name Dispute Resolution Policy, available at http://www.icann.org/udrp/udrp-rules-24oct99.htm (last visited Mar. 31, 2002).

(35) Each service provider has its own schedule of fees to cover administrative expenses, as well as the compensation of the Administrative Panel. Id.

(36) ICANN panels have been inconsistent in their treatment of supplemental pleadings, such as a complainant’s reply to a response. While the applicable rules do not specifically authorize the filing of supplemental pleadings, a number of panels have permitted and considered supplemental pleadings. See, e.g., Toyota Motor Corp. v. S&S Enters., Ltd., No. D2000-0802 (WIPO Sept. 9, 2000) (exercising discretion under Rule 10(b) to receive supplemental pleadings to ensure that each party is given a fair opportunity to present its case). Other panels, however, have declined to permit or consider such pleadings, unless the panel specifically requested them. See, e.g., Easyjet Airline Co. v. Steggles, No. D2000-0024 (WIPO Mar. 17, 2000).

(37) See supra note 34.

(38) Id.

(39) Id.

(40) Id.

(41) Id.

(42) Id. In Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14 (1st Cir. 2001), the First Circuit held, in a case of first impression, that a domain name registrant who lost the use of a domain name pursuant to the UDRP could sue in federal court for a declaration that he is not in violation of the Anticybersquatting Consumer Protection Act. The court noted that 15 U.S.C. [section] 1114(2)(D)(v) (2002) provides domain name registrants with an affirmative cause of action to recover domain names lost in UDRP proceedings. Id.

(43) In one case, the day after the UDRP proceeding was initiated, a trademark infringement lawsuit between the parties was filed. Weber-Stephen Prod. Co. v. Armitage Hardware & Bldg. Supply Inc., No. 00C1738, 2000 U.S. Dist. LEXIS 6335 (N.D. Ill. May 3, 2000). The court declined to stay the lawsuit pending the outcome of the UDRP proceeding, Id. The court indicated, however, that it would not be bound by the outcome of the proceeding. Id. Accord Strick Corp. v. Strickland, 162 F. Supp. 2d 372, 1891 n.5 (E.D. Pa. 2001) (“The NAF decision is not binding on this Court, which has de novo review of the matter.”). In another case, after the UDRP proceeding was commenced, respondent moved to terminate the proceeding on grounds that a third party had filed a lawsuit against respondent involving the same domain name and that the domain name had been transferred to the control of the court. McNeil Ohio Corp. v. Nat’l Advert., Inc., No. D2001-0409 (WIPO June 21, 2001). Exercising its discretion, the panel granted the motion to terminate, noting that the transfer of the domain name to the court effectively precluded the panel from granting the relief requested. Id.

(44) 9 U.S.C. [section] 10(a)-(d)(2002).

(45) See Parisi v. Netlearning Inc., 139 F. Supp. 2d 745 (E.D. Va. 2001) (stating that mandatory administrative proceedings conducted under UDRP do not constitute arbitration under Federal Arbitration Act (FAA) and, thus, FAA restrictions on judicial review of arbitration do not apply to civil actions challenging UDRP panel decisions).

(46) 15 U.S.C. [subsections] 1114, 1125(a) (2002).

(47) Under section 43(c) of the Lanham Act, 15 U.S.C. [section] 1125(c) (2002), the owner of a “famous” mark may obtain relief against another person’s commercial use in commerce of the mark which “causes dilution of the distinctive quality of the famous mark.” While the dilution statute was not specifically designed to address the problem of abusive domain name registrations, in fact, a number of courts have based relief against domain name owners on the federal dilution statute. See, e.g., Panavision Int’l v. Toeppen, 141 F.3d 1316 (9th Cir. 1988)

(48) 15 U.S.C. [section] 1125(d) (2002). The Anticybersquatting Consumer Protection Act provides, in part, that one who, with a “bad faith intent to profit from [a] mark, … registers, traffics in, or uses a domain name that … is identical or confusingly similar to [a] mark that is distinctive at the time of registration of the domain name,” shall be liable and subject to injunctive and other relief, including an award of statutory damages of up to $100,000 per domain name. Id. The Act makes clear that, unlike a typical trademark infringement suit, in making a determination of “confusingly similar,” the goods or services of the parties are not relevant. Id. In determining whether one has a “bad faith” intent to profit from a mark, courts may consider a number of factors, some of which are similar to those identified in the UDRP. Id. These factors include the extent to which the domain name consists of the legal name of the domain name registrant, the registrant’s bona fide noncommercial or fair use of the mark, and the registrant’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services. Id.

(49) In general, using the UDRP should prove to be “far quicker” and “much less expensive” than pursuing a cyberpirate through federal court. See Gilson and Lalonde, TRADEMARK PROTECTION AND PRACTICE, (Lexis Nexis 2002) [section] 5.11 [6] [a]. However, other factors may weigh in favor of a federal court action. These factors include cases that present significant factual issues and the lack of a UDRP appeal process. Id.

(50) As of February 28, 2003, 6,649 proceedings had been disposed of via decision, affecting 11,311 domain names. See Statistical Summary of Proceedings Under Uniform Domain Name Resolution Policy available at http://www.icann.org/udrp/proceedings-stat.html (last visited Feb. 28, 2003).

(51) See Geist, supra note 31. A comparable percentage is not provided for non-default, single-member panels. According to the author of the study, the “dramatic” difference in the outcome of cases decided by single-member and three-member panels is attributable to a large number of inconsistent and poorly reasoned decisions and the repetitive assignment of many cases to a few panelists, in single-member cases. Id. Geist recommends that the UDRP be amended to provide that all disputes be resolved by three-member panels. Id. However, either party can request a three-member panel, should they believe it to be advantageous. Id.

(52) Id.

(53) See, e.g., Shirmax Retail Ltd. v. CES Mktg. Group, Inc., No. 0104 (NAF Dec. 20, 2000)

(54) The Anticybersquatting Consumer Protection Act, which also addresses the issue of cybersquatting, clearly indicates that the goods or services of the parties are not a relevant consideration. See Anticybersquatting Consumer Protection Act, supra note 48.

(55) See, e.g., Informed Investors, Inc. v. Kostech Corp., No. FA0009000095607 (NAF Nov. 14, 2000) (stating “while there is no question that Complainant is the senior user of the mark, significant questions remain unanswered with respect to whether Respondent’s use violates Complainant’s trademark rights…. Moreover, little evidence was proffered with regard to the proximity of the services offered by the parties and whether when such services are sold under a similar mark, there was a likelihood of confusion”).

(56) See, e.g., Diageo PLC v. Zuccarini, No. D2000-0996 (WIPO Oct. 22, 2000) (addressing guinness-sucks.com)

(57) See Direct Line Group Ltd. v. Purge I.T., No. D2000-0585 (WIPO Aug. 13, 2000).

(58) Id.

(59) See supra note 28.

(60) See Royal Bank of Scotland Group plc v. natwestfraud.com, No. D2001-0212 (WIPO June 18, 2001), supra note 56.

(61) The majority noted that, while freedom of speech arguments may have a bearing on the issue of noncommercial use, were this case to be resolved under United States law, the panel must decide cases under the Policy, which is independent of any national legislation or constitution. See also Stanley Works v. Camp Creek Co., Inc., No. D2000-0113 (WIPO Apr. 3, 2000) (transfering ten domain names where evidence showed registrant sought compensation, intended to tarnish marks and disrupt trademark owner’s business and engaged in pattern of cybersquatting)

(62) See, e.g., Bridgestone Firestone, Inc. v. Myers, No. D2000-0190 (WIPO July 6, 2000) (use of bridgestone-firestone.net for complaint site held noncommercial and fair). See also Lucent Techs., Inc. v. Lucentsucks.com, 95 F. Supp. 2d 528 (E.D. Va. 2000) (holding “sucks” appended to famous mark used in a domain name for web sites that discuss or criticize trademark owner’s business is noninfringing)

(63) See UDRP supra note 24 at paragraph 4a(iii).

(64) See, e.g., Telstra Corp. Ltd. v. Nuclear Marshmallows, No. D2000-0003 (WIPO Feb. 18, 2000)

(65) See UDRP, supra note 24 at paragraph 4b(i).

(66) In most countries, trademark rights are based on registration of the mark with the competent authority. In the U.S., trademark rights are based on use of the mark in commerce. RESTATEMENT (THIRD) OF UNFAIR COMPETITION [section] 18 (1995).

(67) See 15 U.S.C. [section] 1057(b) (2002).

(68) See 402 Shoes, Inc. v. Weinstock, Case No. D2000-1223 (WIPO Dec. 2000).

(69) The panel reasoned that if it assumed, based on the existence of the U.S. registration, that complainant has rights in the mark, then the domain name would have been transferred to complainant and any subsequent successful attack by respondent against the registration would not result in “re-issuance” of the domain name to respondent since respondent would not he able to show any rights in the mark. Id. However, the better policy would have been for the panel to decline to reach the issue. This is because the regulatory body, in this case, the U.S. Patent and Trademark Office, generally, is in a much better position than the panel to decide whether a mark is protectable since the record before it is much more complete than that before the panel.

(70) The major exception to this territoriality principle is the Community Trade Mark (CTM) available from the European Union. See Council Regulation 40/94, Dec. 20, 1993. A CTM confers rights in each of the Member States of the Union. Id. For an excellent exploration of the relationship between trademark and domain names, see Graeme B. Dinwoodie, (National) Trademark Laws and The (Non-National) Domain Name System, 21 U. PA.J. INT’L ECON. L.499 (2000).

(71) The panels convened under the UDRP are not bound by the law of any country or entity. See ICANN: Uniform Domain-Name Dispute-Resolution Policy, supra note 24.

(72) See Ty Inc. v. Parvin, No. D2000-0688 (WIPO Nov. 9, 2000).

(73) Id.

(74) Id.

(75) Id.

(76) These new top-level domain name extensions are .biz, .info, .name, .pro, .aero, .coop, and .museum. See Internic FAQs on New Top Level Domains available at http://www.internic.net/ faqs/new-tlds.html (last visited Feb. 28, 2003). The extension .biz is reserved for businesses and commercial activity

(77) This domain is operated by NeuLevel, a joint venture between a database management company and a domain name registry. See also .biz domain registry, web address registration–New Level.biz available at http://www.neulevel.com (last visited Feb. 28, 2003).

(78) Id. This start-up phase was between May 21 and August 6, 2001. See .BIZ REGISTRARS-GENERAL FAQs available at http://www.neulevelbiz/faqs.html (last visited Feb. 28, 2003).

(79) See http:www.neulevel.biz/adrp/docs/dispute_policies.html (last visited Jan. 8, 2003)(discussing policy).

(80) Id.

(81) The trademark owner could also bring a proceeding under the UDRP. STOP is similar to the UDRP, with two major exceptions. First, under STOP, the domain name must be identical to the mark

(82) This period ran from July 25 to August 28, 2001. See INFO Rollout Schedule available at http://www.afilias.info/register/schedule/index.html (last visited Feb. 28, 2003).

(83) A challenge to a “sunrise” registration may be based on the fact that the mark was not nonationally registered by October 2, 2000 or that the second-level domain name is not identical to the registered mark. See Sunrise Challenge Overview available at http://www.afilias.info/register/dispute_resolutions/ sunrise_challenge_overview (last visited Feb. 28, 2003).

(84) See Robert A. Badgley, Improving ICANN in Ten Easy Steps: Ten Suggestions for ICANN to Improve its Anticybersquatting Arbitration System, U. ILL. J.L. TECH & POL’Y 109 (2001).

(85) A trade name is the name under which a business operates.

(86) A geographical indication is the name of a geographic place or region from which certain products are produced or originate.

(87) ICANN convened a task force to review the UDRP and make recommendations for change. WIPO convened a meeting to discuss its report on the Internet domain name process on May 21-24, 2002. The meeting was scheduled to focus on whether country names should be protected in the domain name system, on whether names and acronyms of international intergovernmental organizations should be entitled to enhanced protection in the domain name system, and on how trade names can be protected from abusive and misleading registration practices. A copy of the final document summarizing the results of the meeting may be found at http : //www.wipo.int/ sct/en/ documents/special_session/doc/sct_s2_8.doc (last visited on Jan. 8, 2003).

Jeffrey M. Samuels *

Linda B. Samuels **

* David L. Brennan Professor of Law and Director of the Center for Intellectual Property, Law and Technology, The University of Akron School of Law, Akron, Ohio 44325. E-mail Samuels@uakron.edu (serving as a panelist in domain name disputes).

** Professor, Business Legal Studies, George Mason University, Fairfax, Virginia 22030. E-mail: Lsamuels@gmu.edu. The authors would like to thank Jeremy Thornton, a third-year student at The University of Akron Law School, and the editorial staff of the American Business Law Journal for their assistance.