Role of the UDRP and Other ADR Mechanisms in the Domain...

Role of the UDRP and Other ADR Mechanisms in the Domain Name-Trademark

Conflicts Resolution

150

CHAPTER 4:

ROLE OF THE UDRP AND

OTHER ADR MECHANISMS

IN THE DOMAIN NAME-

TRADEMARK CONFLICTS

RESOLUTION



151

4.1 Introduction

There cannot be any denial of the fact that the domain name-

trademark conflicts have phenomenal growth within a relatively short span

of time all over the world. This growth took place despite the national

responses to solve the problems, which is reflected in the analysis made in

the previous chapter. Though the national responses were significant in the

initial phase of the developments to cater to the emergency, they could not

continue as the sole means of solution to the problem due to the

international characters of domain names coupled with the varying national

laws, which resulted in the controversy on applicable law. In addition, the

cumbersome process of court litigations and the lack of expertise in the

judiciary to appreciate the nuances of highly technical domain name-

trademark litigations have deterred the victims to approach the doors of

justice. As a result, an attempt has been made in the international level to

resolve the conflicts in the form of Uniform Domain Name Dispute

Resolution Policy (UDRP).

Since its inception, the UDRP has been extensively used for the

settlement of domain name-trademark disputes. However, how far the

litmus test of achieving a defect free system of dispute resolution has been



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achieved through UDRP is a debated issue.1 In line with the UDRP, the

domain name registries in different parts of the world have also developed

their own alternative dispute settlement mechanisms to address the conflicts

arising under their respective registries. The present chapter addresses the

relevance of UDRP in the resolution of domain name-trademark disputes,

points out the areas of concern in the UDRP, briefly looks into the efforts

made by the domain name registries to share the burden of dispute

settlement and finally probes into the use of other alternative dispute

resolution mechanisms in the resolution of domain name-trademark

disputes.

4.2 Origin of the UDRP

As already outlined, the national responses to domain name-

trademark conflicts are scattered and varying. They range from enacting

separate legislation2 to banking on already existing trademark laws for

solving the disputes.3 Over the period of time, they have been found grossly

1 See generally D. Shyamala, „Domain Name-Trademark Conflict Resolution: An Evaluation of

UDRP‟, Australian Intellectual Property Journal, Vol. 21, No. 1, 2010, pp. 42 - 51.

2 As has been done by the United States.

3 The list includes United Kingdom, Austria, India etc.



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insufficient to deal with the domain name-trademark disputes, which

involve transnational elements.4 In response to this, the National

Telecommunications and Information Administration of the US Department

of Commerce took the first step in the direction of having an international

domain name disputes resolution system. The White Paper5 issued by the

National Telecommunications and Information Administration has asked

the US government to call upon the World Intellectual Property

Organization (WIPO) to initiate a process to resolve domain name-

trademark disputes.6

Acting upon the US call, WIPO conducted a study involving

international consultations, wherein seventeen consultative meetings were

4 Violation of trademark registered in one country can take place in another country by way of bad

faith domain name registration. Such a situation would bring forward the problem of determination

of jurisdiction and applicable law for solving the dispute.

5 A policy statement on the Management of Internet Names and Addresses issued on 5 June 1998,

available at <http://www.icann.org/en/udrp/udrp-schedule.htm> Last visited, 08 August 2009.

6 Andrew Christie, „The ICANN Domain Name Dispute Resolution System as a Model for

Resolving Other Intellectual Property Disputes on the Internet‟, in David Vaver (ed.), Intellectual

Property Rights - Critical Concepts in Law, Vol. V, (London: Routledge, 2006) pp. 180 - 193 at p.

181.



154

held in fifteen different cities throughout the world. It received 334 written

submissions from governments, inter-governmental organizations,

professional associations, corporations and individuals during this

comprehensive study. Finally, WIPO prepared a report on the Management

of Internet Names and Addresses: Intellectual Property Issues, which was

published on 30 April 1999.7 It led the way for establishing Internet

Corporation for Assigned Numbers and Names (ICANN) to administer the

domain name system.8 The ICANN in consultation with World Intellectual

Property Organization (WIPO) has provided a policy for domain name

dispute resolution, which is known as Uniform Dispute Resolution Policy

(UDRP).9

The UDRP provides for the resolution of domain name disputes

through mandatory administrative proceedings, which are to some extent

similar to arbitration proceedings. The administrative proceedings under the

7 Available at <http://archive.icann.org/en/wipo/FinalReport_1.html> Last visited, 27 September

2013.

8 Catherine Colston and Kirsty Middleton, Modern Intellectual Property Law, Second edition,

(London: Cavendish Publishing Ltd., 2005) p. 619.

9 The Policy was approved by ICANN on 24 October 1999. <http;//www.icann.org/en/udrp/udrp-

policy-24oct99.htm> Last visited, 23 July 2009.



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UDRP are mandatory, since the registering of domain names is conditioned

by the requirement of subjecting the registrant to the administrative

proceedings in case of disputes. ICANN has approved different

administrative dispute resolution service providers for conducting the

mandatory administrative proceedings. Four such service providers, which

are currently working are the Asian Domain Name Dispute Resolution

Centre (ADNDRC), the National Arbitration Forum (NAF), the WIPO

Arbitration and Mediation Centre and the Czech Arbitration Court (CAC).10

Among these, the most widely used adjudication service is that of WIPO.

International Institute for Conflict Prevention and Resolution (CPR) and

eResolution are the two former service providers associated with ICANN.11

At present, the UDRP is increasingly resorted to settle the domain

name disputes, especially involving bad faith registration.12

However the

existence of UDRP in the international level does not bar the states from

10

See <http://www.icann.org/dndr/udrp/approved-providers.htm> Last visited, 23 July 2009.

11 See <http://www.icann.org/en/dndr/udrp/former-providers.htm> Last visited, 20 August 2009.

12 See David Bainbridge, Intellectual Property, Fifth edition, (Delhi: Pearson Education, 2002) p.

678.



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applying their own law to resolve domain name-trademark conflicts.13

While some national domain name registration authorities have adopted

UDRP,14

others, like Nominet (the UK‟s official registry for domain

names), .IN Registry (Indian official registry) etc. have adopted their own

adjudicatory policy and Panels. Though these Panels decide mainly on the

lines of UDRP, some variance can be seen, especially with regard to

grounds for intervention.

4.3 An Insight into the UDRP

The novel objective behind the UDRP was to provide a uniform

mechanism to combat the problems associated with the domain name

registrations in a cost-effective and speedy manner.15

The UDRP is said to

be the first truly global approach in the policy determination on the issues

13

Laurence R. Helfer, „Whither the UDRP: Autonomous, Americanized, or Cosmopolitan?‟,

Cardozo Journal of International & Comparative Law, Vol. 12, 2004, pp. 493 - 505 at p. 494.

14 Marlene Agmata-Tucker, „Squatters in Cyberspace: Netreprenuers or Piratesdotcom?‟, Journal

of Law and Information Science, Vol. 11, No. 2, 2000 - 2001, pp. 254 - 278 at p. 277.

15 WIPO Arbitration and Mediation Center - „New Generic Top-Level Domains: Intellectual

Property Considerations‟ (2005 Report), para 38, available at

<http://www.wipo.int/amc/en/domains/reports/newgtld-ip/> Last visited, 27 September 2013.



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relating to the use of Internet and the intellectual property concerns flowing

there from.16

The UDRP applies to all registrants in the three major gTLDs: .com,

.net and .org top-level domains as well as to the subsequently introduced

gTLDs such as .aero, .asia, .biz, .coop, .info, .jobs, .cat, .mobi, .museum,

.name, .pro, .tel, .travel and .xxx.17

Anyone who registers a domain name in

these gTLDs must agree to abide by the UDRP. The Policy applies to both

registered trademarks as well as unregistered marks. The drafters felt that

denying protection to common law marks would be favoring those legal

systems which provide rights only through registration.18

Thus, the Policy

permits any owner of a trademark to bring a complaint against any alleged

cybersquatter.19

The UDRP is described as a “contractually-mandated

16

Rahul Matthan, The Law Relating to Computers and the Internet, (New Delhi: Butterworths,

2000) p. 379.

17 See <http://www.icann.org/registrar-reports/accredited-list.html> Last visited, 27 September

2013.

18 David Lindsay, International Domain Name Law – ICANN and the UDRP (USA: Hart

Publishing, 2007) p. 190.

19 Paragraph 4 of the UDRP. See generally Supra note 16, p. 378.



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private system for the benefit of non-contracting parties”20

, since the

complaining trademark owners are not in contract with the domain name

registration system or UDRP. However, under UDRP, there is no scope for

initiation of action by the domain name holders against trademark owners.

The mandatory administrative proceedings under the UDRP are akin

to arbitration proceedings. It consists of private adjudicators enlisted by the

recognized adjudicatory bodies deciding the cases. However, unlike

arbitration, the UDRP decisions are not final.21

Either of the parties can start

fresh proceedings before the court of competent jurisdiction after the UDRP

panel has made the decision. The administrative proceedings under UDRP

are governed by the UDRP Rules and also by the supplemental Rules of the

service provider administering the proceedings, which are to be posted in

the website of the service provider. In case of conflict between the UDRP

Rules and the Rules of the service provider, the former shall prevail over the

latter.

20

E. Thornburg, „Fast, Cheap and Out of Control: Lessons from the ICANN Dispute Resolution

Process‟, Journal of Small and Emerging Business Law, Vol. 6, 2002, pp. 191 - 233 at p. 197.

21 Julia Hornle, Cross-Border internet Dispute Resolution, (Cambridge: Cambridge University

Press, 2009) p. 187.



159

The UDRP encourages the use of online medium in the process of

dispute resolution, which helps in speedier disposal. Various dispute

resolution providers have their own standard method for the parties to file

the submissions. However, the UDRP does not promote the online hearing,

since Rule 13 of the UDRP Rules doesn‟t allow any in-person hearing,

unless the panel determines it to be essential. The UDRP also has the

advantage of being transparent on the decisions, since all the decisions

under the UDRP are published in full in the websites of the dispute

resolution service providers.22

This helps in subjecting the decisions under

the UDRP to a system of peer review by the scholars across the globe in

their writings. Such openness in the decisions leading to the constructive

criticisms by the scholars is useful in rectifying the mistakes done and

strengthening the system of dispute settlement.

In order to successfully invoke the administrative proceedings under

UDRP, three requirements need to be satisfied. Firstly, the domain name in

question must be identical or confusingly similar to a trademark or service

22

Para 4 (j) of the UDRP.



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mark, which righteously belongs to the complainant.23

Secondly, the

domain name holder must have no right or legitimate interest whatsoever in

the domain name, trademark or service mark. Lastly, the challenged domain

name must be registered by the respondent and he must also be using it in

bad faith.24

Under the UDRP, the complainant need only to make a facile

comparison to establish that the disputed domain name is confusingly

similar or identical to the trademark. Thus, the burden of proving the

confusion is significantly less when compared to the municipal laws, where

other additional factors are considered before arriving at the conclusion.

Essentially, the complainant under the UDRP needs to demonstrate only

that the domain name includes his trademark and nothing more. Soon the

23

This requirement, in accordance with the recommendation of the WIPO Report, limits the scope

of administrative proceedings under UDRP to the disputes involving trademarks or service marks

and thereby, excludes the disputes involving other IPRs. See World Intellectual Property

Organization, „The Management of Internet Names and Address: Intellectual Property Issues‟,

Report of the WIPO Internet Domain Name Process (30 April 1999), available at

<http://www.wipo.int/amc/en/processes/process1/report/finalreport.html /> Last visited, 05

December 2013.

24 Paragraph 4 (a) (i) to (iii) of UDRP.



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burden shifts to the respondent to prove that he has legitimate rights and

interests in the domain name.

In Kirkbi AG v. Michele Dinoia25

, the complainant was registered

owner of famous trademark LEGO and other marks incorporating the term

LEGO. He also owned the domain name, www.lego.com. The repondant

registered a domain name www.legoclub.com in December 2002 with a

view to have a chat and discussion forum regarding LEGO products. The

complainant challenged the registration on the ground of violation of

trademark rights before the WIPO panel.

One of the major contentions of the respondant was that the

complainant cannot have any trademark right in LEGO CLUB, since its is

based on the generic word „club‟, which is not suggestive of the service of

the complainant. In addition, it was argued that where there is a relience on

an unregistered trademark for any action, there exists a heavy burden of

proof on the complainant to provide sufficient evidences of rights and

reputation attached with the mark. Such a proof is much more required in

the instances wherein the trademark consists of a generic or descriptive

terms. 25

WIPO Case No. D2003-0038 (9 March 2003).



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While rejecting this argument of the respondant, the WIPO Panel

held that “The test of confusing similarity under the Policy is confined to a

comparison of the disputed domain name and the trademark alone,

independent of the other marketing and use factors usually considered in

trademark infringement or unfair competition cases”.26

It also observed that

the trademark LEGO is the dominant and distinctive feature of the disputed

domain name. Mere addition of a generic word, club, does not detract the

instant identification with complainant conveyed by the mark.

The determination of absence of right or legitimate interest of the

domain name holder is crucial to avoid the hardship to legitimate small

entrepreneurs due to the presence of famous trademarks of large businesses.

However, again the burden of proof of the complainant is relatively low,

26

In arriving at this conclusion, a reference was made to BWT Brands, Inc. and British Am.

Tobacco (Brands), Inc v. NABR, WIPO Case No. D2001-1480 (26 March 2002); Britannia

Building Society v. Britannia Fraud Prevention, WIPO Case No. D2001-0505 (06 July 2001);

Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale, WIPO Case No. D2000-0662 (19

September 2000); Koninklijke Philips Elecs. N.V. v. In Seo Kim, WIPO Case No. D2001-1195 (12

November 2001); Energy Source Inc. v. Your Energy Source, NAF Case No. FA0101000096364

(12 February 2001); Vivendi Universal v. Mr. Jay David Sallen and GO247.COM, Inc., WIPO

Case No. D2001-1121 (07 November 2001).



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since it is difficult for the complainant to prove the negative (that is to

establish the absence of right or legitimate interest) when compared to the

respondent‟s capability of proving the positive (that is to establish his right

or legitimate interest in the domain name). Respondent, rather than the

complainant, would be having best knowledge of such right or interest.27

The WIPO Panel‟s decision in Croatia Airlines d.d. v. Modern

Empire Internet Ltd.28

throws further light on the aspect of right or

legitimate interest of the domain name registrant. The complainant in this

case was a Croatian national air carrier with ten years of experience in the

air carriage business. It had registered the trademark „CROATIA

AIRLINES‟ and also the domain name „www.croatiaairlines.com‟.

However, on the expiry of the domain name registration, the respondent, a

Hong Kong based company, registered www.croatiaairlines.com and

offered various goods and services including air tickets.

Upon the receipt of the complaint, the Panel found that the

complainant discharged its initial burden of proving the absence of

respondent‟s right or interest in the domain name. The respondent merely

27

De Agostini S.p.A. v. Marco Cialone, WIPO Case No. DTV2002-0005 (09 September 2002).

28 WIPO Case No. D2003-0455 (21 August 2003).



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wanted to use the goodwill of the complainant, which is evident from the

fact that the respondent is involved in the business of selling the air tickets.

In the absence of any response from the respondent in this case, the Panel

held that the respondent had no right or interest in the domain name. It

supplemented its reasoning on three counts. First, complainant had no

relationship with the respondent and has never authorized the respondent to

use the domain name. Second, complainant‟s service and trademarks are

known, since it is a national carrier having substantial years of standing.

Third, there is no indication of respondent being known by the same name

prior to the registration.

In Research in Motion Limited v. Zag Media Corporation29

, the

WIPO Panel observed that the use of a domain name consisting of

descriptive expression for bona fide descriptive purposes may be permitted

under the UDRP. If the domain names are registered not because of their

trademark values but because of their attraction as dictionary words, the

UDRP does not prohibit such acts. The right or the legitimate interest of the

registrant is presumed in such cases. The moot question in such cases is the

29

WIPO Case No. D2008-0848 (22 October 2008).



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determination of state of mind of the registrant at the time of the

registration.

The bad faith under UDRP needs to be proved not only in

registration but also in use of the domain name. The UDRP stipulates some

of the key factors to be considered in determining the bad faith intent of the

respondent. Paragraph 4 (b) enlists the following circumstances as depicting

the evidence of the registration and use of a domain name in bad faith:

(i) circumstances indicating that domain name is registered or acquired

primarily for the purpose of selling, renting, or otherwise transferring

the domain name registration to the complainant who is the owner of

the trademark or service mark or to a competitor of that complainant,

for valuable consideration in excess of the documented out-of-pocket

costs directly related to the domain name; or

(ii) when the domain name is registered in order to prevent the owner

of the trademark or service mark from reflecting the mark in a

corresponding domain name, provided that registrant is engaged in a

pattern of such conduct; or

(iii) when the domain name is registered primarily for the purpose of

disrupting the business of a competitor; or



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(iv) by using the domain name, the registrant has intentionally

attempted to attract, for commercial gain, Internet users to his 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 registrant‟s web site or location or of a product or

service on his web site or location.

The UDRP panels had discussed and detailed out the above elements

in great details in a number of disputes. For example, in Hollywood Casino

Corporation v. Global Interactive30

, hollywood-casino.com and hollywood-

casino.net were transferred to the complainants, and

hollywoodgoldcasino.com and hollywoodcasino.net were cancelled on the

ground of intentionally creating confusion in the mind of consumers. In

Telstra Corporation Limited v. Nuclear Marshmallows31

, the WIPO Panel

found bad faith on several counts. They included, the widely popular

character of trademark, respondent‟s attempt to conceal his identity, failure

to correct the address and absence of any evidence regarding the actual or

intended good faith use of domain name. The Panel not only used these

30

National Arbitration Forum File No. FA0002000094107 (30 March 2000).

31 WIPO Case No. D2000-0003 (18 February 2000).



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factors to determine the bad faith registration but also went on to use them

to arrive at a conclusion that the respondent could not have intended the fair

use of the domain name.

The above-mentioned list of circumstances is not exhaustive, and the

Panel may thus consider any other circumstance/s for deciding the bad faith

intent. However, the key guideline as laid down in the above indicative

factors in considering additional circumstance/s is the abusive registration.

Over the period of time, a number of factors are emerging for the

determination of the bad faith, depending on the differing circumstances. In

Entercolor Technologies Corporation v. Gigantor Software Development

Inc.32

, for example, the Panel came to the conclusion that the failure to use a

domain name counts against the respondent as an element of bad faith,

unless countered with proper evidences. Similarly, in America Online Inc.

v. iDomainNames.com33

, the National Arbitration Forum held that the

failure to defend against the allegations of the abusive registration counts

against the respondent, since it results in the necessary implication of

registering the domain names in bad faith.

32


33 National Arbitration Forum File No. FA0002000093766 (24 March 2000).



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In Octogen Pharmacal Company, Inc. v. Domains by Proxy, Inc /

Rich Sanders and Octogen34

, the Panel advocated the view that if the

legitimacy of a registration is contingent on the compliance of certain

conditions, a subsequent non-compliance with those conditions may make it

a registration in bad faith, even if the registrant was intending to comply

with the conditions when he registered the domain name. Thus, there is a

possibility of post facto attraction of bad faith by the domain name

registrants. Despite the above developments, it is always to be kept in mind

that the bad faith determination is a factual determination, which has to be

done on case by case basis. There is no straitjacket formula; rather the

decision-making authority must tailor one suitable in the given set of

circumstances.

There are some well-established defenses available to the registrant

of domain names.35

Firstly, he can contend that before getting the notice, he

had used, or made 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. Secondly, that he has been commonly known

34

WIPO Case No. D2009-0786 (19 August 2009).

35 Paragraph 4 (c) (i) to (iii) of UDRP Policy.



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by that same name, even if it has not acquired any trademark or service

mark rights. Thirdly, the domain name is used for legitimate noncommercial

or fair use and he has no intention for commercial gain to mislead

consumers or to tarnish the trademark or service which is in question.

The above defenses depict that the use of trademark of a company in

the registration of domain name by anyone is not completely prohibited.

Domain name registrations are not considered abusive, if they are justified

by legitimate free speech rights. In Standard Chartered PLC v. Purge I.T.36

,

the WIPO Arbitration and Mediation Centre elaborates the free speech

rights in the following terms.

Those who have genuine grievances against others or wish to express

criticisms of them - whether the objections are against commercial or

financial institutions, against governments, against charitable,

sporting or cultural institutions, or whatever - must be at liberty,

within the confines set by the laws of relevant jurisdictions, to

express their views. If today they use a website or an email address

for the purpose, they are entitled to select a Domain Name which

leads others easily to them, if the name is still available. 36




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Thus, what is prohibited is only the bad faith registration of

trademarks as domain names with an intention to get some unlawful

benefits. In Prestonettes Inc. v. Coty,37

Holmes J. has aptly observed, “A

trademark does not confer a right to prohibit the use of the word or words. It

is not a copyright…. A trademark only gives the right to prohibit the use of

it so far as it protects the owner‟s goodwill against the sale of another‟s

product as his.”

In simple terms, mere registration of a domain name covering the

trademark would not confer any right to the trademark owner. Moreover,

offering the registered domain name for sale is also not the conclusive

evidence of abusive registration.38

Rather, the burden of proof is on the

complainant to prove that all the prerequisites of the dispute resolution

policy are complied with. There are also instances of the UDRP panels

recognizing the legitimacy of buying and selling of domain names,

37

264 U.S. 359, 368 (1924).

38 Charlotte Waelde, „Trademarks and Domain Names: There‟s lot in a name‟, available at

<http://www.law.ed.ac.uk/ahrb/publications/online/Trademarks.htm> Last visited, 21 October

2011.



171

especially of descriptive nature, provided the registrants are acting in good

faith.

In Car Toys Inc. v. Informa Unlimited Inc.39

, the complainants

demanded to relinquish the respondents‟ registered domain name

cartoys.net in their favour. The UDRP Panel, while holding the Car Toys

Inc.‟s trademark in the words as irrelevant, recognized that Informa was

involved in the business of buying and developing descriptive domain

names for sale. Such an activity of informa did not solely constitute abusive

registration. The Panel concluded that the complainant had not proven that

the respondent had no legitimate interest in the domain name in dispute;

hence the domain name remains with Informa.

Similarly, in the recent PJS International SA v. Vertical Axis Inc. /

Whois Privacy Services Pty Ltd.40

, the WIPO Arbitration and Mediation

Centre observed that

There is no evidence that the Respondent acted in bad faith when it

registered the disputed domain name, among the several thousand

domain names that it claims to own. The mere fact of registering a

39


40 WIPO Case No. D2013-0805 (08 August 2013).



172

large number of domain names is not proof by itself of bad faith, as

there may exist a legitimate purpose in appropriating many domain

names in the hope that some of them will enjoy commercial value.

The situation is similar to that of the acquirer of many mining rights

or oil concessions in the hope that some of them will be really

worthy of development…. The mere fact of offering the disputed

domain name for sale is not in itself indicative of bad faith.

Generally, one person tribunal is established under UDRP to

adjudicate the dispute. However there is a scope for three person tribunal, if

requested by either party. Since the proceedings take place online, there is

little scope for in-person hearing, unless the Panel considers such hearing is

necessary.41

Interestingly, UDRP also allows the parties to submit the

dispute to a court of competent jurisdiction before the mandatory

proceedings under UDRP commences or after it is concluded.42

41

Paragraph 13 of the UDRP Rules – There shall be no in-person hearings (including hearings by

teleconference, videoconference, and web conference), unless the panel determines, in its sole

discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint.

42 Paragraph 4 (k) of the UDRP. See generally Vivek Sood, Cyber Law Simplified, (New Delhi:

Tata McGraw-Hill Publishing Company, 2001) p. 236.



173

The domain name disputes brought under the UDRP are governed by

the said policy read with the accompanying Rules of Procedure and

Supplemental Rules of the respective approved dispute resolution service

provider. The jurisdiction of the service providers arises out of the

registration agreement between the registrant and the registrar at the time of

the registration of the domain name. The registrant, if has any problem

relating to the domain name, is mandated to invoke the jurisdiction of the

agreed service provider to settle the problem.

The Panel deciding the case is also authorized under the Rules to

take into account any rules and principles of law that it deems applicable in

addition to the UDRP Rules.43

The initial trend in the dispute resolutions

under UDRP clearly demonstrates the heavy reliance on this provision. In

the World Wrestling Federation Inc. v. Michael Bosman44

, the first UDRP

case, the dispute was on the worldwrestlingfederation.com, which was

registered by the respondent. As discussed above, one of the essential

requirements of proving the abusive registration is to show that the domain

name is registered and used in bad faith. Since both the parties involved

43

Rule 15, UDRP Rules.

44 WIPO Case No. D99-0001 (14 January 2000).



174

were domiciled in the United States (US), the Arbitrator looked into the

decisions in two leading US cases, Panavision International L P v. Dennis

Toeppen45

and Intermatic Inc. v. Toeppen46

, for the determination of what is

meant by „use‟.

While referring to the decisions of the above US cases, the Arbitrator

concluded that the act of registering the domain name and offering it for

sale to the complainant was sufficient to constitute „use‟. The argument of

legitimate use by Michael Bosman was found baseless, since he had not

developed the website, and the name was neither in any way identified with

nor related to any legitimate interest he had. Thus, the US decisions

provided guidelines to the Arbitrator to order the transfer of domain name

from the respondent to complainant.

In the second case before WIPO, Robert Ellenbogen v. Mike

Pearson47

, the domain name musicweb.com was in question. The Arbitrator

made reference to UDRP Rules and the WIPO Final Report48

. More

45

141 F3d 1316 (9th

Cir 1998).

46 947 F Supp 1227 (ND Ill, 1996).

47 WIPO Case No. D00-0001 (17 February 2000).

48 See supra note 7.



175

specifically, the latter stated “if the parties to the procedure were resident in

one country, the domain name was registered through a registrant in that

country and the evidence of bad faith registration and use of the domain

name related to activity in the same country, it would be appropriate for the

decision-maker to refer to the law of the country concerned.” Since all the

above requirements have coincided at the US in the present case, the

Arbitrator once again referred Intermatic Inc. v. Toeppen to clarify the word

„use‟ and ordered the transfer of domain name.

In juliaroberts.com case49

, the respondent, who had registered many

celebrity names as domain names, registered juliaroberts.com and put up for

auction. Interestingly, the complainant celebrity, Julia Roberts, did not

posses any registered trademark. In light of this, one of the crucial issues

was about the trademark rights of the complainant in her name. On behalf of

the complainant, the argument was based on the common law trademark

rights, which was acquired by her name in the form of „secondary

meaning‟50

. So the question before the Panel was, whether – when someone

49

Julia Fiona Roberts v. Russell Boyd, WIPO Case No. D2000-0210 (29 May 2000).

50 Secondary meaning implies that even though a name (whether of a person, product or service) or

a design is not registered mark, the public has come to associate that name or design with a



176

hears the name „Julia Roberts‟ or logs on to „juliaroberts.com‟, such a

person identifies that name or site with the complainant, and whether the

respondent‟s use of the name would likely to confuse the public that the

celebrity actress was related to such use?

The Panel recognized the common law concept of „secondary

meaning‟ and observed that the complainant possessed the required

trademark rights in her name. Panel also noted that there was nothing on the

website that related to the complainant, which makes clear that it was not a

fan site. The domain name was registered with the sole intention of selling,

which was also evident from the respondent‟s established pattern of conduct

of registering many other celebrity names. All these reflected the requisite

bad faith and therefore, the Panel ordered the transfer of domain name to

Julia Roberts.

particular person / company / good / service. Thus, the crucial question in the determination of

such a common law right is, whether there is a likelihood of confusion in the minds of the public

by the use of the name by others that the use is related to the owner of secondary meaning?



177

The UDRP also contains provisions relating to reverse domain name

hijacking (RDNH).51

The misuse of the position by the large and powerful

companies by using the trademark violation as a tool against the small

players having a legitimate trademark registration is taken care of by the

RDNH actions. Though the UDRP doesn‟t provide any sanction against the

RDNH, the panels are authorized to discard such complaints with a

warning. It is also an established fact that whether the RDNH occurs is a

matter of Panel to consider even if the respondent does not request a finding

of RDNH.52

The existing practice of the UDRP panels show that the grounds of

RDNH are found on three major categories. (a) The complainant‟s

knowledge of bona fideness before filing the complaint. (b) The little

51

Rule 15 (e) of UDRP 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.

52 See, for example, Goway Travel Limited v. Tourism Australia, WIPO Case No. D2006-0344 (06

June 2006); Spy Optic, Inc. v. James Lee, WIPO Case No. D2013-1411 (01 October 2013).

http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-0344.html



178

prospect of success of the complaint. (c) The malicious and reckless attitude

of the complainant.

In Deutsche Welle v. Diamond Ware Ltd.53

, for example, the

defendant used its DW mark as the domain name dw.com for promoting its

business. It was connected to an active website and used for bona fide

offering of goods and services. The complainant brought a case despite the

above facts. The WIPO Panel had no hesitation in finding that it is a fit case

of RDNH, since the complainant had / should have had the prior knowledge

of the bona fideness.

Similarly in Smart Design LLC v. Carolyn Hughes54

, the

complainant registered the domain name „smartnyc.com‟ and sought for the

registration of „smartdesign.com‟ in August 1996 and found that the latter

was not available for registration at that time. Subsequently, when it became

available for registration, the respondent registered the said domain name on

26 May 1997. The complainant made a Whois search in April 1999, and

after finding the respondent as the registrant of smartdesign.com, wrote a

letter asking about the intention of respondent to retain the domain name

53

WIPO Case No. D2000-1202 (02 January 2001).

54 WIPO Case No. D2000-0993 (18 October 2000).



179

indefinitely or temporarily. To be noted, the complainant did not challenge

the registration of the domain name by the respondent. There was no

response from the respondent.

Subsequently, the complainant found that the domain name

registration was due to expire (unless renewed) on 27 May 2000. According

to the complainant, he hoped that the domain name would not be renewed

and he would be able to get the registration. On 25 July 2000, the

complainant found that the domain name registration was renewed by the

respondent. On these factual grounds coupled with the fact that the

respondent did not operate a website and also did not run any business by

the said name, the complainant brought a claim against the respondent for

the bad faith registration.

The WIPO Panel made a finding that the complainant committed

RDNH on the basis of several factors. First, the Panel found that the name

„Smart Design‟ was so common that anyone may use it and the complainant

must be aware of it. Second, the complainant did not raise any complaint

when he first found that the name was not available for registration in

August 1996. When he had no objection against the first registrant, he

should also not have against the subsequent registrant. Third, when the



180

complainant first wrote the letter to the respondent, there was no mention of

respondent doing anything wrong. On the contrary, the letter impliedly

acknowledges the right of the respondent in the domain name. Fourth, if the

complainant believed that the respondent was wrong, he should have

followed up the letter and could have made every attempt to obtain the

reply.

Fifth, the complainant‟s contention that he was waiting for the

renewal date so that he can get it registered before the renewal by the

respondent is also not acceptable. It was found evident from the fact that he

waited for more than eight weeks before checking the position of the

domain name.55

Thus, the Panel concluded that the complainant is guilty of

RDNH when it “advanced arguments that were tortuously artificial in the

extreme, reckless both as to the justification for making those arguments

and the seriousness of the overall charge against respondent, who was

manifestly no cybersquatter.”

4.4 UDRP vis-à-vis National Responses: Finding the Differences

The national responses in almost all the states, except the US, have

been on the basis of their traditional trademark laws. They, being trademark 55

27 May 2000 to 25 July 2000.



181

centric, undoubtedly differ from the domain name centric approach of the

UDRP. Though the UDRP derives heavily from the US negotiation of the

ACPA56

, there are certain differences between the two. These differences

can be seen in the structure, procedure, substantive provisions and also in

the sphere of application. The striking differences between the UDRP and

ACPA are as follows.

One of the differences between the UDRP and ACPA is that the

UDRP‟s treatment of living individual‟s names is different from treatment

under ACPA. While ACPA provides cause of action to any living individual

whose name has been registered, the UDRP protects only names that are

sufficiently prominent so as to possess trademark rights.57

In other words,

the famous names are the only protected under the UDRP as against any

name under the ACPA.

Secondly, the ACPA allows the statutory damages to be paid to the

winning party, which is not seen in the UDRP. Thirdly, the UDRP‟s

56

See David E. Sorkin, „Judicial Review of ICANN Domain Name Disputes Decisions‟, Computer

and High technology Law Journal, Vol. 18, 2001 - 2002, pp. 35 - 55 at p. 50.

57 Jason H. Kaplan, „The Anticybersquatting Consumer Protection Act: Will it End the Reign of

the Cybersquatter?‟, UCLA Entertainment Law Review, Vol. 8, 2000, pp. 43 - 86 at p. 81.



182

decision can be subject to challenge before the national courts of competent

jurisdiction, which cannot be done with the final decision of the US court.

Fourthly, the injunctive relief, pending the final determination of the case, is

not available under UDRP. However, ACPA on the other hand provides

injunctive relief.

Fifthly, the dilution of the mark is a cause of action under ACPA, but

not under UDRP. Sixthly, the ACPA recognizes the criteria of intellectual

property rights in the domain names as one of the criteria for the

determination of bad faith. The UDRP doesn‟t incorporate it in the

determination of bad faith. Seventhly, the UDRP is based on the online

dispute resolution mechanism, and ACPA, being the court litigation,

requires the physical presence of the parties and their representatives.

Eighthly, while the ACPA requires „bad faith intent to profit‟, the UDRP

requires only „bad faith‟ on the part of the domain name registrant.

In addition to the above listed differences, the dissimilarity can also

be seen in the dispute settlement forums, jurisdiction, procedures to be

followed by the forums etc. These differences, coupled with other factors,

have resulted in both advantages and disadvantages in resorting to UDRP

for dispute resolution.



183

4.5 Relative Advantages of the UDRP

UDRP has certain unique advantages over the municipal dispute

resolution systems, which are found grossly insufficient due to the trans-

border nature of domain name-trademark disputes. Therefore, resorting to

UDRP has been found beneficial by many. The advantages of UDRP can be

summed up as follows.

One of the advantages of UDRP is that all the proceedings take place

online; thereby the inconvenience caused by the requirement of physical

presence, which is seen in court proceedings, is avoided. The procedure

followed by the adjudicatory bodies in the resolution of disputes is quite

simple. The complaints are also usually dealt within three months from

submission. This has been possible because of the obligation imposed on

the Panelists under Paragraph 15 of the Rules to forward the decision to

Service Provider within 14 days of the appointment of the Panel. Thus,

resorting to UDRP for the resolution of domain name disputes would help

the parties to have quick disposal of disputes58

and to avoid the cumbersome

and lengthy court proceedings. Moreover, the resolution of conflict under

58

Jonathan H. Anschell and John J. Lucas, „What‟s in a Name: Dealing with Cybersquatting‟,

Entertainment and Sports Lawyer, Vol. 21, No. 1, Spring 2003, pp. 3 - 7 at p. 5.



184

UDRP is cost effective when compared to the traditional judicial

settlement.59

A striking feature of UDRP is the transparency in the proceedings.

All details relating to the cases are provided in the website, so that neither of

the parties can contend bias in the decision making. The online service of

„guidance and help information‟ is also a significant feature of UDRP,

which is also subject to periodic review for updating. These features of

UDRP have been instrumental in bringing certainty, predictability and

clarity of language as well as in increasing popularity of the system.60

Another meritorious aspect of UDRP to the complainant is that it

shifts the burden of proof on the respondent once an initial acceptance of

presence of abuse is established. Therefore, the trademark holders are often

tempted to invoke the UDRP proceedings to enjoy the relatively lesser

burden of proof. The decisions of the adjudicatory bodies recognized under

59

Stephen J. Ware, „Domain Name Arbitration in the Arbitration-Law Context: Consent to, and

Fairness in, the UDRP‟, Journal of Small & Emerging Business Law, Vol. 6, 2002, pp. 129 - 165 at

p. 151.

60 Warren B. Chik, „Lord of Your Domain, but Master of None: The Need to Harmonize and

Recalibrate the Domain Name Regime of Ownership and Control‟, International Journal of Law

and Information Technology, Spring 2008. <www.westlaw.com>



185

UDRP are also enforceable, though subject to the losing party‟s right to

resort to court proceedings.61

Thus, the UDRP proceedings quite often result

in binding decisions.

One of the reasons for the increased popularity of UDRP is the

jurisdictional convenience. UDRP proceedings help in overcoming

jurisdictional hurdles, since it has international jurisdiction. The trademark

owners from any state can file complaint under UDRP merely by

establishing their trademark rights. No other existing alternative provides

this convenience to the aggrieved trademark owner. Moreover, even in the

cases where the domain name holder cannot be identified,62

the UDRP can

be invoked, since it provides for an equivalent of in rem63

legal

proceedings.64

61

Paragraph 4 (k) of UDRP.

62 May be because of the improper address given by the registrant.

63 In rem jurisdiction involves taking action against the domain name as against the in personam

jurisdiction involving taking action against the domain name holder.

64 Robert A. Badgley, „Internet Domain Names and ICANN Arbitration: The Emerging “Law” of

Domain Name Custody Disputes‟, Texas Review of Law & Politics, Vol. 5, No. 2, 2000 - 2001, pp.

343 - 392 at p. 349.



186

The protection granted to trademark holders by ICANN in the form

of UDRP also boosts the confidence of web users, especially the online

purchasers. The chances of they being deceived by the cybersquatters is less

since UDRP acts as a guardian of domain names in the international level.65

In the absence of such an international mechanism, the web users would be

skeptical about the trustworthiness of the domain names, as the national

legal systems, due to their inherent limitation, are incapable of handling the

problems arising from the international domain name system.

4.6 Areas of Concern in the UDRP

Though the UDRP is hailed by many for its achievements in the

resolution of domain name-trademark disputes,66

it is not completely free

from defects. In the areas of concern, we can note that the panelists are

65

Ned Branthover, „UDRP - A Success Story: A Rebuttal to the Analysis and Conclusions of

Professor Milton Mueller in “Rough Justice”‟, available at

<http://www.inta.org/downloads/tap_udrp_1paper2002.pdf> Last visited, 30 June 2009.

66 The study conducted by the Max-Planck Institute concludes that “as a matter of principle, the

UDRP is functioning satisfactorily. No major flaws have been identified in the course of the

evaluation.” Annette Kur, „UDRP: A Study by the Max-Planck Institute for Foreign and

International patent, Copyright and Competition Law‟, Vol. 72, 2002, available at

<http://www.zar.kit.edu/DATA/projekte/udrp_705937a.pdf> Last visited, 02 October 2013.



187

often seen unduly ready to accept the complainants‟ grounds and in some

cases they have even stretched the terms of the Policy to entertain the cases

of the complainants.67

This is the direct consequence of the complainant‟s

right to choose among different dispute resolution service providers

recognized by UDRP. The service providers have turned complainant-

friendly in order to get much share of future cases on domain names.68

It is

revealed by the fact that more than 75% of cases decided by the panels were

in favour of the complainants.69

This phenomenon is helped by the absence

of clarity on the burden of proof, which allows the panelists to shift the

burden of proof from the party they favour to the other party.70

Even on

67

A study reveals that WIPO and NAF have decided majority of cases in complainant-friendly

manner. See Parul Kumar, „Domain Name Disputes and Cybersquatting: Can Arbitration Suffice

as a Way of Resolution?‟, available at <www.students.indlaw.com/display.aspx?4314> Last

visited, 30 July 2009.

68 Robert P. Merges, Peter S. Menell and Mark A. Lemley, Intellectual Property in the New

Technological Age, Fourth edition (New York: Aspen Publishers, 2007) p. 776.

69 According to Helfer‟s study, average percentage of complainants winning the cases across all

domain name dispute resolution service providers is 84 percent. Supra note 21, p. 190.

70 Victoria Holstein-Childress, „Lex Cyberus: The UDRP as a Gatekeeper to Judicial Resolution of

Competing Rights to Domain Names‟, Penn State Law Review, Vol. 109, No. 2, 2004, pp. 565 -

607 at p. 582.



188

other matters, UDRP provides lesser guidelines and more discretion to the

arbitrators.71

Added to this, there is no provision in the UDRP for

challenging the appointment of an arbitrator, if the party suspects him to be

biased.72

Thus, the UDRP promotes forum-shopping, and it ultimately gives

an impression that justice can be bought and sold under UDRP.73

This is

certainly an unhealthy development, which might result in the respondents‟

loss of confidence in the UDRP.74

In response to the above problem of forum shopping, Milton Mueller

recommends that instead of complainant choosing the dispute resolution

71

Ann Bartow, „Exporting Trademark Confusion‟, in Richard A. Spinello and Herman T. Tavani

(eds.), Intellectual Property Rights in a Networked World: Theory and Practice, (London:

Information Science Publishing, 2005) pp. 113 - 160 at p. 132.

72 Refer barcelona.com case. Under Paragraph 7 of the UDRP the Service Provider may appoint a

substitute Panelist in case he discloses any circumstance that could give rise to justifiable doubt as

to the impartiality or independence of the Panelist.

73 Michael Geist, „Fair.com?: An Examination of the Allegations of Systematic Unfairness in the

ICANN UDRP‟, Brooklyn Journal of International Law, Vol. XXVII: 3, 2001 - 2002, pp. 903 -

938 at p. 906.

74 Closure of eResolution, the most registrant friendly dispute resolution service provider, has

made most of the scholars suspicious about the ICANN‟s bias towards the trademark owners and

service providers‟ support for trademark owners.



189

service provider, the registrar of the domain name concerned should do the

same.75

Such a practice, according to him, would provide a fair opportunity

to both the parties. However, Michael Froomkin on the other hand, opposes

such a proposition in his scholarly paper, since it would tilt the balance in

favour of the domain name registrants (respondents in the disputes).

According to him, such a change would warrant the domain name registrars

to opt for a registrant-friendly forum, which would be created due to the

practical reason of competition between the registrars.76

The element of bias towards the complainants is furthered by the fact

that trademark attorneys are quite often found in the panels. It has been

argued as one of the major reasons for the high success rate of the

complainants in the domain name dispute resolutions. The frequent resort to

the WIPO dispute resolution system strengthens such suspicion, since it

75

Milton Mueller, „Rogue Justice‟, available at <http://ccent.syr.edu/PDF/roughjustice.pdf> Last

visited, 28 September 2013.

76 Michael Froomkin, „ICANN‟s “Uniform Dispute Resolution Policy” ; Causes and (Partial)

cures‟, Brooklyn Law Review, Vol. 67, No. 3, 2002, pp. 605 - 718 at p. 673.



190

primarily consists of trademark attorneys77

. Even in the absence of practical

element of bias, the mere fact that the trademark attorneys are deciding the

case would give an impression to the common man that the trademark

owners would be favoured in a domain name dispute. This would go against

the very foundation of the justice delivery system; “justice should not only

be done, but should manifestly and undoubtedly be seen to be done”.78

Thus, the scholars suggest for the panelists from different background, and

random picking of them in different cases.79

The absence of system of appeal in the UDRP proceedings adds on

to the problem of bias towards the complainant. The only remedy available

in such cases is to move to an appropriate national court of mutual

77

See Stacey H. King, „The “Law that it Deems Applicable”: ICANN, Dispute Resolution, and the

Problem of Cybersquatting‟, Hastings Commercial and Entertainment Law Journal, Vol. 22, 2000,

pp. 453 - 507 at p. 477.

78 Lord Denning, while laying down the principle on the determination of bias in Metropolitan

Properties Co (FGC) Ltd. v. Lannon [1969] 1 Q.B. 577, remarks: “The court will not inquire

whether he did in fact, favour one side unfairly. Suffice in that reasonable people might think he

did. The reason is plain enough. Justice must be rooted in confidence: and confidence is destroyed

when right-minded people go away thinking: „The judge was biased‟.”

79 Supra note 21, p. 214.



191

jurisdiction80

after the decision is made by the adjudicatory panel. However,

this right is again qualified by the fact that the appeal to national court has

to be done within ten days from the decision of the Panel. This period has

been found insufficient by many aggrieved parties,81

since it is difficult to

arrange an appropriate attorney and prepare for the proceedings within such

limited time period. Though this self-enforcing character of UDRP

decisions is significant in making UDRP effective, it runs the risk of

violating the due process in the dispensation of justice.

In light of the above factors, Froomkin argues for the incorporation

of a provision allowing either party to challenge the appointment of the

panelist/s before an independent appeals body. This right, according to

80

See UDRP Rule 3(xiii). UDRP Rule 1 defines “mutual jurisdiction” as: [A] Court jurisdiction at

the location of either (a) the principal office of the Registrar (provided the domain name holder has

submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes

concerning or arising from the use of the domain name) or (b) the domain name holder‟s address as

shown for the registration of the domain name in Registrar‟s Whois database at the time the

complaint is submitted to the Provider.

81 See Russ Smith, „Comments on alternate dispute policy‟, available at

<http:/www.icann.org/en/comments-mail/comment-udrp/current/maillist.html> Last visited, 30

June 2009.



192

Froomkin, must be available both before and after the decision has been

made.82

Donahey provides for an alternative solution of establishing an

appeals body for hearing the appeals from the UDRP panels, which would

lay UDRP in a greater legal certainty area by eliminating the possible bias.

Appeals could be heard by three or five special appeals panelists who have

long-standing experience in hearing UDRP disputes, and should be a time

bound process to avoid delay.83

The provisions relating to the availability of court proceedings under

UDRP and UDRP Rules differ from each other, giving rise to the question

of possibility of Rules going beyond the express stipulation of the UDRP.

The UDRP clearly stipulates under Paragraph 4 (k) that the parties can

move to the court of competent jurisdiction before84

the mandatory

administrative proceeding is commenced or after85

such proceeding is

concluded. This gives an implied understanding that the parties cannot

82

Supra note 76, p. 689.

83 M. Scott Donahey, „A Proposal for an Appellate Panel for the Uniform Domain Name Dispute

Resolution Policy‟, Journal of International Arbitration, Vol. 18, Issue 1, 2001, pp. 131 - 134 at p.

133.

84 Emphasis added.

85 Ibid.



193

move to national courts during the pendency of administrative proceedings.

However, this bar on concurrent proceedings, one before the UDRP Panel

and other before the national court, has been breached by Paragraph 18 of

the UDRP Rules, which provides that there is a possibility of initiating legal

proceedings during the pendency of administrative proceedings.

The US District Court in BroadBridge Media, L.L.C. v.

Hypercd.com86

, observed that even during the pendency of administrative

proceedings one can move to the court of competent jurisdiction. The two

major reasons put forward by the Court were that firstly, the UDRP does not

state that a complainant gives up the right to proceed to court and secondly,

UDRP states that the dispute proceedings are to be conducted under the

Rules. The reasoning of the Court in this case seems to be fallacious. On the

one hand, the express stipulation under the UDRP to give up the right to

proceed to court during the pendency of proceedings is unnecessary, since it

is well-known that the pendency of proceeding before one forum is a bar on

approaching another forum for the settlement of any dispute. On the other

hand, the second reason put forward by the Court is the result of

misinterpretation of Paragraph 1 of the UDRP. Paragraph 1 stipulates that 86

106 F. Supp. 2d 505, 508-09 (S.D.N.Y. 2000).



194

only the dispute proceedings are to be conducted according to the Rules and

it does not say that the substantive provisions, like the one in question, can

be modified under the Rules. In addition, the established rules of

administrative law clearly stipulate that the rules framed under a parent

statute (UDRP in this instance) cannot override the parent statute rather

must be within the four corners of the parent statute.

The limited procedural filings involved under UDRP, while on the

one hand advantageous, creates doubt about its efficacy in solving complex

cases, especially involving the issue of fair use, acquiescence, commercial

relationship between the parties or other important factual matters. Since

there is no mechanism for evidentiary review, the parties may find difficulty

in establishing their case by disproving the evidence provided by the

opposite party. Complicated cases always require a thorough study of facts

before making a just and equitable decision. However, it is hindered by the

fact that the panels generally do not permit in-person hearings, cross

examination of parties, testimony, arguments and rebuttals. Therefore, the



195

expanded process of litigation, and not the hasty decision, is better suited to

solve such cases.87

Further, when the domain name holder is disentitled under UDRP,

either he would be asked to transfer the domain name to the complainant or

the registration of domain name would be cancelled by ICANN.88

On the

negative note, UDRP does not provide remedy in the form of damages.89

Therefore, there is no scope for getting any remedy for loss suffered by the

trademark holder, due to others‟ bad faith registration of domain name,

before the decision. The absence of monetary compensation and other

punishments have resulted in the frequent violation of law in cyberspace. It

is also worth to note here that in certain circumstances the complainant‟s

request for transfer of domain names is also turned down on the ground that

cancellation of registration is a more appropriate remedy. This basically

happens in the cases where the challenged domain name consists of two

trademarks owned by two different persons. In such cases, the UDRP panels

87

Sharon K. Black, Telecommunications Law in the Internet Age, (San Francisco: Morgan

Kaufmann, 2002) p. 411.

88 Article 3 of UDRP.

89 Supra note 87, p. 410.



196

have found it inappropriate to transfer the domain name to the successful

complainant in the absence of permission by the other trademark owner.90

Thus, the remedies available to the successful complainant under UDRP are

very much limited.

The existence of multiple adjudicatory panels under UDRP brings

forward the problem of multiple jurisdictions. There is a possibility of two

or more complainants bringing action with respect to same domain name

either before the different adjudicatory service providers or before the same

adjudicatory panel.91

Where the complaints are filed before different panels,

the decisions of the panels may be conflicting. This would result in a

deadlock, allowing the cybersquatter to enjoy the time period he gets

because of the delay in settling the conflicting jurisdictions / decisions.

Quite often, such delay costs dearly to the trademark holders. This problem

is furthered by the fact that the UDRP does not provide any interim relief by

90

See Dr Ing hc F Prosche AG v. Automotive Parts Solutions WIPO Case No D 2003-0725 (17

November 2003) and Lilly ICOS LLC v. Tudor Burden WIPO Case No D 2004-0794 (20

December 2004).

91 This happened in ipx.com, wherein two persons filed complaints on the domain name; one

before WIPO and other before CPR.



197

way of temporary restraining orders. In light of this, a US litigant, who is in

need of immediate remedy, would be more inclined to move under the

ACPA to avail some temporary relief available under the Act.92

The ambiguity in the UDRP over certain definitional aspects has

resulted in contradictory interpretations by different service providers. One

of the most striking examples of such contradiction relates to the

interpretation of „bad faith registration‟. On the one hand, in Telstra

Corporation Limited v. Nuclear Marshmallows,93

WIPO Panel observed

that the mere registration of domain name alone may be sufficient to

establish bad faith in particular circumstances, despite the lack of any other

overt action. On the other hand, in Loblaws Inc v. Yogeninternational,94

the

eResolution Panel held that the inactive use of the domain name was

insufficient evidence of bad faith and thus, it allowed the respondent to

retain the domain name.

92


93 Supra note 31.

94 eResoluation Case No. AF- 0164 (09 June 2000).



198

Another good illustration of capricious nature of UDRP decisions

can be witnessed in Ayuntamiento de Barcelona v. Barcelona.com Inc.95

In

this case, the respondent company registered barcelona.com to promote link

between Europe, US and South America, where there are several towns by

name “Barcelona”. Upon the complaint by Barcelona, Spain, the WIPO

Panel ordered the transfer of the domain name, but on dubious grounds. The

Panel‟s bad faith determination watered-down a number of factors

mentioned under paragraph 4(b). In addition, on the question of legitimate

interest in the domain name, the Panel controversially found that the

claimant had “better rights and more legitimate interests” than the registrant,

despite the respondent‟s existing application for a trademark in

barcelona.com. The critics are of the view that this is unwarranted, since the

Panel made its conclusions on extrinsic factors outside the realm of the

strict provisions of UDRP.96

The inconsistency in the decisions may be attributed to the fact that

the UDRP panelists hail from different countries and have different

95


96 John Magee, „Domain Name Disputes: An Assessment of the UDRP as Against Traditional

Litigation‟, Journal of Law, Technology and Policy, Vol. 2003, pp. 203 - 216 at pp. 209 & 210.



199

background. Consequently, they have a different understanding of

substantive trademark laws as well as procedural issues.97

Moreover, the

doctrine of precedent, which is applicable in the judicial decision making,

has no relevance in the decision making under UDRP. As it is well-known,

one of the essential requirements of a sound system of administration of

justice is the predictability of the decisions, which is not possible under the

UDRP. These factors make both the trademark owners and the domain

name holders skeptical about their position under the UDRP.98

The UDRP is also having a narrow scope, since its coverage includes

only the trademark infringements.99

Even in the trademark infringements,

the Policy is directed to prevent only extortionate and abusive practices

97

H. Brian Holland, „Tempest in a Teapot or Tidal Wave? Cybersquatting Rights and Remedies

Run Amok‟, Journal of Technology Law & Policy, Vol. 10, 2005, pp. 301 - 351 at p. 327.

98 Benjamin D. Silbert, „Trademark Law, ICANN, and Domain Name Expiration‟, AIPLA

Quarterly Journal, Summer, 2008. <www.westlaw.com>

99 Even in the cases of trademark infringements, the disputes arising between two or more

legitimate trademark owners are not addressed by the UDRP. Universal Tube and Rollform

Equipment Corp. v. YouTube Inc. is one of the cases unveiling the existing gap in UDRP. See

Jacqueline D. Lipton, „A Winning Solution for YOUTUBE and UTUBE? Corresponding

Trademarks and Domain Name Sharing‟, Harvard Journal of Law and Technology, Spring 2008.

<www.westlaw.com>



200

consequent to the registration of domain names.100

The other cases

involving personal damage caused to the individuals and enterprises by the

websites similar to their names is not addressed under UDRP. This has left

sufficient scope for mischief in the form of uploading defamatory and

indecent materials over the Internet.101

The UDRP also has the limit of not

addressing the conflicts between the two trademark owners as well as

between a trademark owner and a registrant having legitimate interests.

In addition to above, the provisions relating to RDNH are not

deterrent enough, and any person can dare to violate them frequently.102

In

light of this, the critics point out that the finding of RDNH by the UDRP

panels would only amount to „slap on the wrist‟ and nothing more.103

This is

100

Supra note 18, p 129.

101 Louis Altman and Malla Pollack, „Trade Identity Infringement‟, Callmann on Unfair

Competition, Trademarks and Monopolies, Fourth edition, August 2008. <www.westlaw.com>

102 See Wayde Brooks, „Wrestling Over the World Wide Web: ICANN‟s Uniform Dispute

Resolution Policy for Domain Name Disputes‟, Hamline Journal of Public Law & Policy, Vol. 22,

2000 - 2001, pp. 297 - 333 at p. 309.

103 Sheldon W. Halpern, Craig Allen Nard and Kenneth Port, „Scope of Exclusive Rights‟, in H.

Vanhees (ed.), International Encyclopedia of Laws - Intellectual Property, Vol. 5, (New Delhi:

Wolters Kluwer (India) Pvt. Ltd., 2000) Suppl. 31 (Jan, 2006), pp. 382 - 393 at p. 393.



201

attributable to the failure of WIPO to make recommendations during the

drafting of UDRP to solve such problems. WIPO‟s approach was in terms

of protection of trademarks and not in terms of protection against trademark

abuses.104

This approach coupled with the complainant‟s low burden of

proof and panel‟s limited discovery powers has resulted in serious concern

of deceptive complaints by the trademark holders. The panel‟s tendency of

leaning towards the complainants may hard hit the low profile users of

legitimately registered domain names.

The conflicting decisions on the RDNH by the UDRP panels and the

national courts is also a matter of international concern. General Media

Communications Inc. v. Crazy Troll, LLC105

stands as classic example of

such conflicts. The plaintiff in this case published the magazine,

„Penthouse‟ and used the penthouse mark in various ways including

registered trademark, PENTHOUSE BOUTIQUE, and several e-commerce

sites. The defendant registered the domain name „penthouseboutique.com‟

after the plaintiff‟s registration of the domain name was allowed to lapse by

its bankruptcy trustee. When the plaintiff filed a complaint against the

104


105 2007 WL 102988 (S.D.N.Y. 16 January 2007).



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defendant‟s use before the UDRP Panel, the Panel rejected the transfer on

the ground of RDNH. However, the decision was reversed by the US court

when it was latter referred to it by the plaintiff. This clearly indicates that

the evaluation of the criteria for the RDNH also varies with the perception

of the forum.

4.7 Use of Other ADR Mechanisms in the Domain Name-Trademark


The ADR mechanisms are rapidly growing in the international level

to reduce the burden of the ordinary courts of law and also to bring the

justice to the doorsteps of the victims. As outlined in the previous and

present chapters, both the court settlement and the UDRP settlement of the

domain name-trademark disputes have inherent limitations. Consequently,

there is a search for other ADR mechanisms that may address the wide

variety of disputes including the ones that are neither addressed by the

national laws nor by the UDRP. In the wake of this development, an

analysis of the attempts made by the domain name registries to develop

their own indigenous systems as well as the probe into the possibility of

applying the traditional means of the ADR mechanisms for finding the

solution are very significant.



203

Though almost all the domain name registries have come forward

with their own mechanism, analysis of all of them is neither feasible nor

prudent under the present research work. Thus, the researcher confines

herself in this part to analyze the Nominet Dispute Resolution Service

Policy (Nominet DRS Policy) and United States Dispute Resolution Policy

(usDRP), which are leading dispute resolution policies in United Kingdom

(UK) and US respectively. In addition, a reference to .IN Domain Name

Dispute Resolution Policy (INDRP), which is the Indian counterpart, would

be made in the next Chapter.

4.7.1 Nominet Dispute Resolution Service Policy

Nominet is the authority established in UK to manage the „.uk‟

domain and the major commercial sub-domains.106

Any registration of the

.uk domain name under the management of Nominet is subject to the

Nominet‟s terms and conditions for registration.107

The disputes arising out

106

The six major sub-domains under Nominet are .net, .ltd, .plc, .co, .org and .me. It is worthy to

note that .ac, .gov, .nhs, .police and .mod are managed by others. Tony Willoughby, „United

Kingdom‟, in Torsten Bettinger (ed.), Domain Name Law and Practice - An International

Handbook, (Oxford: Oxford University Press, 2005) pp. 811 - 887 at p. 820.

107 See <http://www.nominet.org.uk/uk-domain-names/registering-uk-domain/legal-details/terms-

and-conditions-domain-name-registration> Last visited, 03 December 2013.



204

of .uk domain names in the .net.uk, .ltd.uk, .plc.uk, .co.uk, .org.uk and

.me.uk sub-domains are resolved through Nominet DRS Policy, which

started its operation since September 2001.108

The deviation from the UDRP

is preferred by the Nominet, since it believes that the UDRP is not based on

the sound principle of neutrality.109

The procedure for the settlement of disputes under Nominet DRS

Policy is strikingly different from UDRP. The process starts with the

complaint, a response and a reply by the parties. It is interesting to note that

the disputes first go through the process of an informal mediation110

, which

108

The second version of the Policy and Rules came into force on 25 October 2004, which

operated till July 2008. For details, see Steve Hedley, The Law of Electronic Commerce and the

Internet in the UK and Ireland, (London: Cavendish Publishing Ltd., 2006) pp. 189 & 190. The

most recent version of the Policy came into force on 29 July 2008. Available at

<http://www.nominet.org.uk/disputes/when-use-drs/policy-and-procedure/drs-policy> Last visited,

03 December 2013.

109 Faye Fangfei Wang, „Domain Names Management and Dispute Resolutions: A Comparative

Legal Study in the UK, US and China‟, The Icfai University Journal of Cyber Law, Vol. VII, No.

3, August 2008, pp. 8 - 24 at p. 20.

110 Para 5, Nominet DRS Policy. It is equally interesting to note that the Nominet does not charge

for mediation services. Melissa Beaumont, „Let Go of my Dot-CA: Using the CDRP in the Fight

Against Cybersquatting‟, Asper Review, Vol. 7, 2007, pp. 257 - 292 at p. 289.



205

is kept confidential. If the mediation fails to produce an amicable settlement

within ten working days, the complainant has the option of bringing the

issue before an independent expert appointed by Nominet for adjudication

after paying the prescribed fee. The Nominet system provides for an appeal

from the decision of the expert to a panel of three experts. The Nominet

may itself initiate the appeal where there is no appeal by the parties.

Significantly, the operation of DRS under Nominet does not prevent the

complainant or the respondent from moving to the court of competent

jurisdiction.111

The cases are heard by the experts strictly on rotational basis. The

system utilizes the services of not only the legal experts but also that of

others. The Policy has a strict word limit of 2000 words (excluding the

annexes) on the submission of complaint and responses. Any deviation of

this norm would result in the return of submissions to the parties for

compliance with the norm. If the parties fail to resubmit within three days of

return, the default procedure is applied to them. In case of appeal, the

submission of the parties should not exceed 1000 words (including the

annexes). 111

Para 10(d), Nominet DRS Policy.



206

The complainants‟ rights under the Nominet DRS Policy are not

confined to the trademarks or service marks, but extend to contractual

rights. There is no requirement for showing confusing similarity between

the domain name and the name or mark in which the complainant has rights.

Just the proof of similarity between the two is enough. The Nominet DRS

Policy attracts the trademark owners also because of the fact that it deals not

only with the registrants who had bad faith intention at the time of the

registration of the domain name but also with those who make abusive use

of the domain name after the registration.

The complainant can bring an action under the Nominet DRS Policy

if; (i) the complainant has rights in respect of name or mark, which is

identical or similar to the domain name, and (ii) the registration of domain

name was abusive. The understanding of what constitutes abusive

registration under the Nominet DRS Policy is similar to the one under the

UDRP. Paragraph 3 of the Nominet DRS Policy provides the non-

exhaustive list of evidences of abusive registration. It includes the

following;

(a) the registrant having bad faith intention at the time of registration;



207

(b) the registration being primarily aimed at selling the domain name to

the complainant or to his competitor;

(c) the registration made to block the complainant from using the mark

or name;

(d) the registration made primarily to disrupt the business of the

complainant;

(e) registrant providing the false contact information to the Nominet at

the time of registration of the domain name;

(f) the respondent having the history of cybersquatting;

(g) the respondent‟s use or threat of using the domain name to confuse

the people or business to believe that the domain name is connected

to complainant; and

(h) the name being registered as a result of relationship between the

complainant and the respondent but has now been taken over

exclusively by the respondent.

The experts in the Panel have significant measure of independence in

the determination of abusive registration. A number of other factors may be

considered against the respondents as evidence of abusive registration, since

the above list is only indicative. However, the mere failure of the



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respondent to use the domain name for e-mail or as a website is not to be

concluded as the evidence of abusive registration. In addition, neither the

trading in domain names for profit and holding large portfolio of domain

names for trading112

nor the sale of traffic113

is per se prohibited under the

Policy.

There are also certain well-established defenses available to the

respondents. First, that the respondent is using the domain name before he

came across the complainant‟s cause. Second, that the respondent has made

the legitimate non-commercial and fair use of the domain name. Third, that

the respondent was commonly known by the said name before being aware

of the complainant‟s cause. Forth, the name is generic and the respondent is

involved in the fair use of it. Fifth, that the websites genuinely operate as

tribute or criticism of a person or business.

With the zeal to punish the habitual offenders, the Nominet DRS

Policy incorporates a novel approach of shifting the initial burden of proof

on the respondent. Usually, the party asserting the claim (complainant) has

112

Para 4(d), Ibid.

113 Sale of traffic means connecting domain names to parking pages and earning click-per-view

revenue. Para 4(e), Ibid.



209

to discharge the initial burden of proving the violation. However, if a

respondent is found to have made abusive registration of domain names in

three or more cases in two years preceding the complaint, he would be

subject to reverse burden of proof. In other words, the registration of

domain name by such respondent is prima facie presumed to be abusive,

unless he proves otherwise.

The dispute resolution service of the Nominet is overwhelmingly

popular in UK. It has contributed immensely in the amicable settlement of

the disputes, and thereby avoiding the trade frictions. By 2004, 56% of the

cases that reached the informal mediation stage itself were compromised.114

Understandably, in 2004, the Nominet also received the CEDR Industry

Award of Excellence in ADR on account of its success. However, the high

rate of success of complainants under the Nominet DRS Policy has been

one of the major concerns of the critics, who are of the view that the Policy

tilts in favour of the trademark holders.115

114

David Kitchin, et al, Kerly’s Law of Trademarks and Trade Names, Fourteenth edition,

(London: Sweet & Maxwell, 2005) p. 733.

115 Supra note 106, p. 840.



210

4.7.2 United States Dispute Resolution Policy (usDRP)

The usDRP is the dispute resolution policy of the NeuStar, which

administers the „.us‟ top level domain. The usDRP was adopted by the US

Department of Commerce on 21 February 2002 and it became fully

operational from 24 April 2004.116

Though the „.us‟ top level domain is

operating from 1980s, its commercial operation was minimum until the

beginning of the twenty first century. With the opening of „.us‟ registration

to user-friendly open registration, the commercial uses increased, and

consequently, a dispute resolution policy was found essential.117

The usDRP is quite similar to ICANN‟s UDRP in its policies,

structure, substance and the rules. usDRP, like UDRP, is quick and cost

effective in deciding the domain name disputes arising out of bad faith

registrations in „.us‟ top level domain. However, there are two major

differences between the two. First, the UDRP requires the proof of both bad

faith registration and use of the domain name by the respondent, but the

usDRP needs only one of them to be proved. Second, the UDRP stipulates

116

<http://www.neustar.us/usdrp-approval-process/> Last visited, 03 December 2013.

117 Robert A. Badgley, Domain Name Disputes, (New York: Aspen Publishers, 2003) pp. 1-23 &

1-24.



211

three major defenses available to the respondent, but the usDRP adds one

more to the list, that is, the respondent being the owner or beneficiary of a

trade or service mark identical to the domain name.118

The complaint under usDRP is handled by a dispute resolution

service provider approved by the Department of Commerce. A complainant

has the task of proving three factors to succeed in usDRP proceedings. First,

the challenged domain name is „identical or confusingly similar‟ to a

trademark or service mark in which the complainant has rights. Second, the

domain name registrant has no right or legitimate interest in the domain

name. Third, the domain name has been registered in bad faith or is being

used in bad faith.119

The Policy also provides four non-exclusive factors to be considered

primarily as evidence of registration or use in bad faith. They are; (a) the

respondent‟s acquisition of domain name for selling, renting or otherwise

transferring the domain name registration to the complainant or to his

competitor; (b) registration of domain name to prevent the owner of a

trademark or service mark from reflecting his mark in a domain name; (c)

118

Ibid., 1-24.

119 Para 4(a), usDRP.



212

the registration of domain name to disrupt the business of a competitor; and

(d) creating the consumer confusion by using the domain name that the

complainant‟s mark is connected to the respondent‟s domain name.120

The respondent may establish his right and legitimate interest in the

domain name by proving any of the following factors provided under

Paragraph 4(c).

(i) The ownership or beneficial rights in a trademark or service mark,

which is identical to the domain name.

(ii) Use or demonstrable preparation to use the domain name in respect

of a bona fide offering of goods or services before receiving the

notice of dispute.

(iii) The respondent has been commonly known by the domain name,

even if no trademark or service mark right is acquired.

(iv) Legitimate noncommercial or fair use of the domain name, without

intent for commercial gain to misleadingly divert consumers or to

tarnish the trademark or service mark at issue.

The selection of the (DRS) Provider is done at the discretion of the

complainant. Usually, one impartial expert would deal with the case, but if 120

Para 4(b), Ibid.



213

either of the parties request, a three member Panel would be established to

settle the disputes. All the proceedings are conducted online and decision is

rendered in fourteen days. The remedies available under usDRP are limited

to cancellation or transfer of domain names. After the decision, a ten days

window is available to domain name holder to bring a court action.

4.7.3 Use of Traditional ADR Mechanisms

The ADR mechanisms are rapidly growing to settle the disputes

especially in the commercial field. The obvious reason for this is that ADR

is viewed as litigant friendly system in any kind of economic setup.121

Since

it actively involves parties themselves to settle their disputes, it results in the

amicable settlement of disputes, which is crucial in maintaining business

relationships. The four major types of ADR that are relevant for discussion

here are arbitration, negotiation, mediation and conciliation.

Arbitration is a process for settlement of disputes fairly and equitably

through a person or persons or an institutional body without recourse to

121

Georgios Zekos, „The Role of Courts and ADR in the Rule of Law‟, Icfai University Journal of

Alternative Dispute Resolution, Vol. VII, No. 3, 2008, pp. 11 - 36 at p. 11.



214

litigation by the disputing parties pursuant to an agreement.122

It may be ad-

hoc, contractual, institutional or statutory123

. It exists with the established

judicial process and it is quite useful in resolving different kinds of disputes

including international commercial disputes. At present, arbitration is the

only legally binding and enforceable alternative to ordinary court

proceedings.124

The voluntary arbitration also differs from mandatory administrative

proceedings under the UDRP. The most significant distinction between the

two can be seen in the enforceability of the decisions. While the UDRP

allows the parties to appeal against the decisions, the binding arbitration

does not give scope for appeal. The arbitral award can be enforced just like

the court decisions. In addition, distinction also lies in the parties‟ autonomy

122

H. K. Saharay, Law of Arbitration and Conciliation, (Kolkata: Eastern Law House, 2001) p 3.

Phillip Capper, International Arbitration: A Handbook, Third edition, (London: Lovells, 2004) p.

2.

123 Nomita Aggarwal, „Alternative Dispute Resolution: Concept and Concerns‟, Nyaya Deep, Vol.

VII, Issue 1, January 2006, pp 68-81 at p 73.

124 G. K. Kwatra, Arbitration and Alternative Dispute Resolution: How to Settle International

Business Disputes with Supplement on Indian Arbitration Law, (New Delhi: Lexis Nexis

Butterworths, 2004) p. 2.



215

of choosing the applicable law. The arbitration, subject to certain

limitations, allows the parties to choose the applicable law, which is not

possible under the UDRP. Similarly, parties also enjoy autonomy in the

choice of procedure and forum under arbitration, but they find such options

to be limited under UDRP.

Negotiation is a process by which the parties to the dispute

themselves communicate directly with each other to arrive at an amicable

settlement. It may also involve a group of agents facilitating or doing

communication in the disputes involving technical elements.125

Thus,

negotiation mainly entails communication for the purpose of persuasion of

the parties.126

In the ultra-sophisticated domain name trademark disputes the

negotiation to be successful requires the assistance of agents having both

legal and technical background.

Mediation again lays emphasis on the parties‟ own responsibilities

for making decisions that affect their lives. Mediation, in simple, is assisted

125

Supra note 123, p 74.

126 Stephen Goldberg, Frank Sander and Nancy Rogers, Dispute Resolution: Negotiation,

Mediation and Other Process, Second edition, (London: Little, Brown and Company, 1992) p. 17.



216

negotiation,127

wherein the mediator, by virtue of his influence, brings the

parties to negotiating table and assists in the settlement of their disputes.128

The mediator often arranges for face-to-face meetings of the parties, and

helps them to clarify the disputed issues. He tries to eliminate the

misunderstandings and identifies the possible options to the parties for

settlement of their disputes. Thus, the mediator is not there to impose a

binding decision on the parties, but to dig out the suitable options for the

parties. Mediator does not provide any legal advise to the parties.

Since mediation is not an adjudicative procedure, there is no definite

applicable law to settle the disputes. The disputing parties have complete

autonomy to choose their own reference points for arriving at a mutually

acceptable solution. Such reference points may typically include the

commercial interests of the parties, legal merits and cost of resorting to

other means of dispute resolution. The mediation would be of great

127

Stephen J. Ware, Alternative Dispute Resolution, (St. Paul: West Group, 2001) p. 6.

128 Abraham P. Ordover, G. Michael Flores and Andrea Doneff, Alternatives to Litigation:

Mediation, Arbitration and the Art of Dispute Resolution, (Notre Dame: National Institute for Trial

Advocacy, 1993) p. 6.



217

significance in the cases wherein the parties are willing to cooperate and

sort out their differences through compromise.

Conciliation is a private, informal process in which a neutral third

person helps disputing parties to reach an agreement.129

It is a process

whereby the parties, together with the assistance of the neutral third person

or persons, systematically isolate the issues involved in the dispute, develop

options, consider alternatives and reach a consensual settlement that will

accommodate their needs. The conciliator independently investigates into

the disputes and makes written proposal forming his opinion. Though the

decision of the conciliator is not binding on the parties, they are free to

settle their disputes in light of the conciliator‟s verdict.

The negotiation, mediation and conciliation have significant

applications and advantages in the domain name-trademark disputes‟

resolution. All the three are capable of resolving the disputes with an

outcome satisfying both the parties to the dispute. While the court litigations

or UDRP proceedings result in win-lose situation, the negotiation,

mediation and conciliation would result in a win-win situation with both the

parties gaining something. Given their significance, many states are 129

Supra note 123.



218

pressing for the reference of suitable civil cases to the negotiators,

mediators and conciliators, instead of ordinary courts of law.130

In UK, the courts have often taken the stand that the parties who

unreasonably refuse the offer of mediation and pursue litigation are

deprived of their costs even if they succeed in litigation.131

As discussed

above, the Nominet DRS Policy uses mediation as the first step for the

settlement of domain name disputes. This process is speedy and cost-

effective, since it usually doesn‟t exceed more than a day and provided free

of cost. In the UK, even the registrar of trademarks can recommend the

ADR in the case of any trademark dispute referred to him. As a result,

several law firms and barristers‟ chamber in UK have a dedicated wing of

ADR.

However, the situation in many parts of the world is still different.

They either depend on the courtroom resolution or on the UDRP

proceedings and their variants adopted by different registries for the

resolution of domain name-trademark disputes. These existing mechanisms

130

The UK and Japan are the classic examples of such trends.

131 Reference can be made to Dunnett v. Railtrack (2002) 2 All E R 850; Halsey v. Milton Keynes

General NHS Trust (2004) EWCA (civ) 576.



219

to deal with the trademark infringements are directed towards prevention of

only extortionate and abusive practices consequent to the registration of

domain names. The cases arising from two or more legitimate holders of

same trademark claiming right over a domain name are not addressed under

UDRP or national systems.132

Thus, under the current legal system, both

national and international, the conflicts between the domain name holders

and trademark owners are irreconcilable when both parties act in good

faith.133

The above discussion clearly indicates that there is sufficient scope

for the use of other types of ADR in the settlement of domain name-

trademark disputes. The paradoxical situation arising from good faith of

both parties can be best resolved by using negotiation, mediation or

conciliation. Since this kind of conflicts involve both the parties having

legitimate right and interests, the negotiation, mediation or conciliation

would help in bringing an agreement between them either to share the

domain name or to share the benefit derived out of the use of domain name.

132

Supra note 99.

133 Chris Reed, Internet Law - Text and Materials, Second edition, (New Delhi: Universal Law

Publishing Co. Ltd., 2004) p. 65.



220

There may also be any other creative solution to the dispute catering to the

business interests of both the parties, which might not be possible with the

application of law. A neutral negotiator, mediator or conciliator may be very

useful in pointing out the different grounds for the settlement of disputes.134

4.8 Chapter Conclusion

The international nature of domain names has made it impossible to

address the domain name-trademark conflicts exclusively at the national

level with the territorial national laws. In light of this factor, the purpose for

which UDRP was formulated seems to be justified. The importance of

UDRP is undisputable and the great number of disputes solved by its

application is the evidence of its importance as well as its popularity.135

Thus, it stands as a step forward in the domain name dispute resolution

mechanism. However, bringing Internet, which does not respect the national

boundaries, in conformity with the national trademark laws has never been

134

Abu Bakar Munir, Cyber Law - Policies and Challenges, (Singapore: Butterworths Asia, 1999)

p. 96.

135 After the UDRP has been formulated, less than one percent of all the domain name disputes

have continued in the courts. Stephen Kinsey, „Implications of Trading on the Web‟, in Adam Jolly

and Jeremy Philpott (eds.), A Handbook of Intellectual Property Management - Protecting,

Developing and Exploiting Your IP Assets, (London: Kogan Pages, 2004) pp. 86 - 90 at p. 89.



221

an easy task for UDRP. UDRP has achieved little in this vast area of

conflict and much need to be done in order to see it work effectively.

The efforts made by the domain name registries to evolve their own

dispute resolution mechanisms are also of significant impact in the domain

name dispute resolution. However, they, being similar to UDRP, are not

free from loopholes. In addition, the multiplication of forums with the

growing number of dispute resolution systems may also be a concern in the

days to come. Yet another fallout of these developments can be witnessed in

the form of growing casual attitude towards some of the traditional means

of ADRs that are capable of handling great portion of domain name

disputes.

Though most of the bad faith registrations are taken care of by

UDRP and dispute resolution systems of the domain name registries, most

other forms of domain name problems are not addressed by them. A special

attention needs to be given to the problem arising from same or identical

trademarks. The only possible solution to such a problem can be arrived

through the non-adversarial means of ADR mechanisms like negotiation,

mediation and conciliation.



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Having said that, the researcher is not advocating for the substitution

of the current mechanism with that of the traditional ADR mechanisms.

Both the systems are equally important for dealing with the different kinds

of disputes relating to domain names. While the bad faith registrations of

domain name require the applicability of UDRP or the domain name

registries‟ dispute resolution system, the good faith registrations need

amicable settlement through other ADR mechanisms. In light of this, on the

one hand, some internal reforms in UDRP are called for in the issues like

evidentiary review, determination of bad faith and legitimate interests,

forum shopping, panel selection and possible bias involved in the decision

making. On the other hand, the traditional ADR mechanisms, especially

negotiation, mediation and conciliation, need to be popularized by building

confidence in the disputing parties.

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