Resolving Domain Name Disputes

With the continued emergence of the internet as a means of conducting commercial transactions, name recognition has become increasingly important. Companies have realized the value in having their company name identified with their domain name. Registration of domain names has traditionally been dealt with on a first come, first serve basis. Prior to 1999, a company named Network Solutions Inc., was essentially the only company used to register domain names. Since then however, many registrars have been granted the authority to register domain names, after being approved by The Internet Corporation for Assigned Names and Numbers (or “ICANN”). ICANN is a non-profit organization organized strictly for the purpose of managing domain names and registrations. All registrars currently operate on a first come, first serve basis, stressing the importance of early registration.Disputes and conflicts develop when there are two companies with similar names who desire the same domain name. Alternatively, there are many examples of people registering domain names simply because they know that a company or a person would like to use the name and they are seeking a quick buy off. When a company decides to register a domain name, a search must be done to ensure that no one else currently owns the desired name. When a company discovers that someone else owns the desired domain name, that company can either choose another name or decide to fight over the rights to the name.

There are several manners in which domain name disputes can be resolved. The most traditional (and slowest) method is to turn to the court system. Courts do retain the power to determine ownership over domain names and to cancel or transfer ownership of the names. Legal arguments taking place within the court system traditionally focus on trademark law. Unless a likelihood of confusion can be shown, it is difficult to get the ownership of a domain name changed. A likelihood of confusion can be a challenge to demonstrate without already having some level of name recognition. In response to the issues faced within the court system, Congress passed the Anti-Cybersquatting Consumer Protection Act in November of 1999. The Act makes it easier for individuals or companies to demonstrate claims to a particular domain name by showing a lower level of confusion than would be required by a trademark infringement claim. The Act does require, however, that the challenging party demonstrate that the registering party acted in bad faith. Coincidental registration will not be enough to force an invalidation or transfer of ownership of a domain name.

Because of the challenges faced in attempting to invalidate ownership of domain names through the legal process, it is helpful, and sometimes necessary, to turn to other means of dispute resolution. The most used alternative to the court system is the Uniform Domain Name Dispute Resolution Policy, established by ICANN. See, http://www.icann.org/udrp/udrp.htm. This policy is currently used by all accredited registrars in resolving domain name disputes, and every person or company registering a domain name must agree to the dispute resolution procedure contained within the policy. The policy essentially allows a trademark owner to show true ownership over the domain name by showing:

That the challenger owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered domain name;

That the party that registered the domain name has no legitimate right or interest in the domain name; and

That the domain name was registered and/or used in bad faith.

This dispute resolution procedure is much less expensive than taking a conflict to the court system. The process takes place through an administrative proceeding where a panel will hear the two sides and determine whether ownership over the domain name should be transferred or canceled. All three points stated above must be proven in order for ownership over the domain name to be transferred or canceled. Failure to demonstrate one of the elements will result in the panel’s refusal to invalidate the name. One of the advantages of the procedure outlined in the policy is that arguments and rebuttals can be heard through email, greatly reducing the cost of the dispute resolution. Other than the court system, the ICANN method is the most widely used and most efficient means of determining ownership over domain names.If you fear a dispute in the future or simply want to protect yourself or your company moving forward you should:

Register any and all valid services and trademarks as early as possible,

Attempt to resolve any domain name conflict outside any formal proceedings,

Don’t give in to unreasonable monetary demands, and Collect evidence necessary to show; That the challenger owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered domain name;

That the party that registered the domain name has no legitimate right or interest in the domain name; and

That the domain name was registered and/or used in bad faith.

Name recognition is often the key to any successful marketing campaign and only through due diligence can you be sure that you are doing all you can to maximize your company’s value. A qualified attorney can assist in guiding you through the challenges faced in domain name dispute resolution.

This article was written by Nicholas J. Deleault, Pierce Law Center ‘07. Nicholas writes select legal articles for the Law Firm of Goldstien and Clegg, a Massachusetts cyberlaw firm.

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