A year or so ago, there were two basic ways of making money from the internet. Either you wrote an e-commerce business plan and stood back while investors fought to throw money at you, or you registered what you hoped would turn out to be a domain name you could sell for a tidy sum.
Most of the best "generic" domain names were snapped up in the early days of the world wide web, before mainstream business had started to wake up to the idea of e-commerce. Business.com netted its lucky registrant $7.5 million. Considering a domain name can be registered for a few dollars a year, this represented a good return on investment.
Aside from wishing you had thought of it first, there is nothing which can, or indeed should be done to prevent the trading of generic internet domain names. Nobody can claim that they have rights to the words "business", "sales", "research" etc which should prevent someone else from owning and using "business.com", "sales.org" or "research.net". It is purely a matter of first come first served.
However, not all internet entrepreneurs stopped at registering generic words as domain names, hoping that someone would be interested in paying large sums for them. They realised that if the name of an existing company or a trade mark owned by a company could be registered as a domain name, there would have a captive market who was likely to be interested in purchasing the domain. Thus the cybersquatter was born.
Trade mark rights, both registered and at common law, could be used against cybersquatters in most jurisdictions, and the UK Courts in One in a Million1 decision, dealt with the potentially difficult question concerning infringement or passing off when no active use had been made of the domain names by holding that the mere registration of the domain names amounted to "an instrument of fraud".
However, court proceedings are expensive in most jurisdictions and therefore the introduction in December 1999 of a new dispute resolution procedure for all global top level domain names was widely welcomed by the trade mark community. The dispute resolution procedure was introduced by the Internet Corporation for Assigned Names and Numbers (ICANN) which was formed in October 1998, as a non-profit, private sector corporation, recognised by the U.S. Government, to co-ordinate amongst other things, the technical management of the internet's domain name system and the allocation of IP address space. This means that ICANN governs the global top level domain names, namely .com, .net and .org. ICANN introduced its Uniform Dispute Resolution Policy (UDRP) to provide an alternative to court proceedings in relation to abusive registrations of domain names in these top level domains.
Bringing a claim under the UDRP
In order to bring a successful complaint under the UDRP system, there are three matters which the complainant must establish:
- that the respondent's domain name is identical or confusingly similar to a trade mark in which the complainant has rights; and
- that the respondent has no right or legitimate interest in respect of the domain name; and
- that the domain name has been registered and is being used in bad faith.
ICANN does not hear the disputes itself, but has appointed four separate dispute-resolution service providers to arbitrate the cases brought under the UDRP. These are CPR Institute for Dispute Resolution, eResolution, The National Arbitration Forum and World Intellectual Property Organisation (WIPO). Each provider has additional supplemental rules ICANN's standard rules and in some cases these supplemental rules can be important. The National Arbitration Forum (NAF), for example, is the only provider which currently gives the complainant an automatic right of reply to the respondent's response. Also, the pricing structure varies. To bring a single complaint before a single panellist (the alternative is to have a three person panel), the price varies from $750 before NAF to $2,000 before the CPR Institute.
WIPO panellists are all trade mark specialists and therefore it is not surprising that around 60% of the total complaints have been filed with them, as the complainant will invariably want to have the case decided by someone who understands trade marks.
The three matters which the complainant needs to establish have each given rise to their own difficulties in interpretation and some of these issues can be illustrated by focussing on two different types of cases: those involving famous individuals and those involving "sucks" sites.
The question of what amounts to a trade mark in order to meet the first criteria a complainant needs to establish, in particular, whether the scheme should only be available to the holders of registered trade marks was soon a matter which had to be considered by the arbitrators. Unregistered trade marks, were found to be capable of protection under the UDRP, even where the mark in question was not overly distinctive (such as BuyPC - decision by NAF of 25 February 2000) and the question soon arose as to whether an individual who had not registered trade marks in relation to their name could bring proceedings under the UDRP
The first ICANN arbitration to deal with rights in famous personalities' names domain names was Jeanette Winterson v. Mark Hogarth (WIPO Case No.D2000-0235) in May 2000. Ms Winterson, a well-known British author of "Oranges Are Not The Only Fruit" and "Sexing the Cherry", did not have registered trade mark rights in her name. The respondent had registered domain names as .com, .org and .net for 130 different authors. He wrote to various authors, including Joanna Trolloppe and Julian Barnes (although not the complainant) offering to sell the relevant domain names in return for a 3% royalty on gross sales made from the websites. The WIPO panellist found that Ms Winterson had unregistered trade mark rights in her name, that the respondent had registered her name in bad faith and ordered that he hand over the three domain names he had registered: "jeanettewinterson.com" ".net" and ".org".
The week after the Jeanette Winterson decision, WIPO made another ruling in relation to a famous person. This concerned registration of "juliaroberts.com" (Julia Fiona Roberts v. Russell Boyd, WIPO Case No.D2000-0210). The respondent had, among other domain names, registered the actor and actress names "AlPacino.com" and "MadeleineStowe.com" as well as that of a famous Russian gymnast, "ElenaProdunova.com". Julia Roberts claimed that she had common law rights in her name and the panel, citing the Jeanette Winterson decision, agreed that she did. As the material posted on the site did not feature Julia Roberts until the case was commenced, it was difficult for the respondent to make out a claim of a legitimate right to use - he was not, for example, running a fan site. He had also placed the domain name on the eBay site for auction. The final point which the panel needed to find was registration and use in bad faith. One of the examples of bad faith set out in the Policy is that the registrant registered the domain name in order to prevent the owner of the trade mark from reflecting the mark in a corresponding domain name, provided that a pattern of such conduct could be shown (otherwise the mere registration would amount to bad faith). As the Respondent admitted that he had registered other domain names including several famous movie and sports stars, the panel found that there was also bad faith and ordered that the domain name be transferred.
In any case where the arbitrators find that there has been an abusive registration of a domain name and order for it to be transferred, the registrant is given 10 days notice prior to the domain name being transferred during which time if proceedings are issued before a court, the registrar will stay the arbitrators decision. The respondent in "juliaroberts.com" did this and effectively "appealed" the WIPO panellists' decision. Therefore juliaroberts.com is currently still owned by the respondent and if accessed flashes up the message "Peace Julia" before resolving to thedevil.com, which in turn then takes the reader to theangel.com.
Since the Jeanette Winterson and Julia Roberts, many other famous individual cases have followed. The singer Helen Folsade Adu, better known as Sade, was successful in recovering sade.com, despite the argument by the respondent that "sade" did not necessarily refer to the singer, but could be a reference to the Marquis de Sade. The fact that the respondent had registered a number of other domain names which related to bands and television programmes assisted the panel in rejecting the legitimate use defence.
Other famous individuals
The comedian Rita Rudner ("ritarudner.com"), the actress Isabelle Adjani ("isabelle-adjani.net"), the model and actress Michelle Barry, better know as Brittany Andrews ("brittanyandrews.com"), the actress Bridget Moynahan ("bridgetmoynahan.com"), and the entertainer and musician Michael Feinstein ("michaelfeinstein.com"), were all successful in recovering the domain names they considered to have been wrongly registered. To show that the UDRP is not just for use by well known US and UK artists, a well-known Korean pop music artist "Cho Yong Pil" was successful in his claim to recover choyongpill.com from a serial cybersquatter.
Most of these cases followed the Jeanette Winterson and Julia Roberts cases and involved relatively distinctive names where the respondent had difficulty in showing a legitimate interest. Two cases which were not so straight forward concerned the singers Sting and Madonna.
Gordon Summer, the singer known as Sting, formerly lead singer of The Police, brought a UDRP case against the registrant of sting.com " (Gordon Sumner, p/k/a Sting v. Michael Urvan, WIPO Case No.D2000-0596). Sting argued that he had common law rights in the name Sting, akin to the rights which had been successfully relied upon in the other famous name cases. The respondent in this case, Mr Urvan, had offered Sting the domain name in 1995 for $25,000 and this was relied upon as evidence of bad faith as one of the markers of bad faith set out under the Policy is an offer to sell the domain name for a sum in excess of out of pocket expenses, Sting argued that the case for bad faith was made out.
Strangely, Sting did not present any evidence to show that the word Sting was a common law trade mark, but the panellist took the equivalent to judicial notice in holding that Sting was a world famous entertainer. The panellist also considered the Report of the WIPO Internet Domain Name Process of April 30, 1999, on which ICANN based the UDRP, which expressly stated that personality rights would not be covered under the UDRP. The panellist distinguished Sting's case from the other cases where famous individuals had been able to recover domain names featuring their names, on the basis that Sting was a common dictionary word with a number of different meanings, however, did not reach a formal finding that Sting did not have any trade mark rights in his name. The reasoning that the panellist was following which almost led him to finding that Sting did not have trade mark rights in his name is obviously flawed. One only need ask whether Sting would be able to take action to prevent another singer from releasing a CD under the name Sting to assess whether the singer has trade mark rights in his name.
Where the panellist found against Sting was on the second requirement of showing that the respondent had no legitimate interest in using the domain name. The respondent demonstrated that "Sting" was his nickname and this gave him a legitimate reason. Also, no doubt in the respondents' favour was that unlike many of the respondents in the cases discussed above, he was not shown to have registered other domain names which featured other peoples' trade marks or names. Therefore, despite the fact that he had offered to sell the domain name in excess of out of pocket expenses, the fact that it was a domain name to which he was entitled and therefore this alone could not establish bad faith.
With the Sting decision being published prior to the Madonna decision, things did not look that promising for Madonna. Madonna wished to have transferred to her madonna.com (Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com", WIPO Case No.D2000-0847). Madonna.com had been registered by Dan Parisi, who was is in the business of developing web sites. The domain name had been purchased in1998 for $20,000 and the respondent had been clued-up enough to register MADONNA as a trade mark in Tunisia. The domain name was then used in relation to an "adult entertainment portal web site." The web site featured sexually explicit photographs and text, and contained a notice stating "Madonna.com is not affiliated or endorsed by the Catholic Church, Madonna College, Madonna Hospital or Madonna the singer." By March 1999, the Respondent removed the explicit sexual content from the web site and by May 1999, the site merely contained the above notice, the disputed domain name and the statement "Coming soon Madonna Gaming and Sportsbook."
Madonna relied on her registered trade mark and common law rights in her name, which the panel accepted. They then had to move onto the question of whether the respondent had a legitimate right to use the domain name. The respondent relied on three matters: firstly that he had shown that he had started to establish an adult entertainment web site under the domain name, secondly that he owned a registered trade mark in relation to the site and thirdly that he had attempted to make bona fide non-commercial use of the site by offering to donate it after proceedings were commenced to the Madonna Rehabilitation Hospital.
The panel agreed that he had started to establish a business under the site, but had given no reasonable explanation for the selection of the domain name in relation to that site. The nature of the site did not fit with the ordinary dictionary definition of Madonna. In relation to the registered Tunisian trade mark, the panel found that this did not evidence a legitimate interest and the panel suggested that it was more indicative of lack of a legitimate reason. The rationale for applying for the Tunisian trade mark at the time was probably to be able to avoid Network Solutions' dispute resolution procedure, under which a registered trade mark provided a defence, although the panellists did not comment on this.
The respondent's charity plea also failed. No details of the proposed arrangement with the Madonna Rehabilitation Hospital in Lincoln, Nebraska was disclosed. The complainant asserted that it contained a condition that the hospital not transfer the domain name registration to the complainant and it also appeared that the negotiations only commenced after the complainant objected to respondent's registration and use of the domain name
That only left bad faith to be decided. The fact that the respondent had tried to commercially exploit a site under the domain name, where the only plausible explanation for his action was to trade upon the fame of the complainant's name and mark for commercial gain, led the panel to conclude bad faith. The fact that the respondent had also registered a large number of other domains which included other people's names and marks, was noted by the panel but did not form the basis for their finding of bad faith.
The panel considered the Sting case, which for obvious reasons the respondent was trying to rely upon, but distinguished this case from the Sting case, as in the latter there was evidence that the respondent had made bona fide use of the name Sting prior to obtaining the domain name registration and there was no indication that he was seeking to trade on the good will of the well-known singer.
The UDRP is designed to give trade mark owners a remedy against abusive registrations, not to allow them to prevent legitimate criticism. "Sucks" sites, which feature the company name, followed by "sucks" and the top level domain are a common forum for parody and criticism on the internet. The conflict between trade mark rights and free speech and the way many of the UDRP decisions have gone in this area, is one of the areas which has attracted criticism.
Certainly it is feasible that a respondent in a "sucks" case would not be able to establish a legitimate right to use the domain name. In the "dixonssucks.com" decision (Dixons Group PLC v Purge IT and Purge IT Limited, Case no D 2000-0584) the respondents (who had registered sucks sites in relation to 18 different UK companies) claimed that they did this with the purpose of selling them back to the companies concerned. They were apparently motivated by the desire to protect the companies against the risks of "sucks" site. How thoughtful. However, not exactly exercising their legitimate right to free speech.
One could see that a "sucks" domain name could be registered and even used in bad faith. For example in the Guinness case (Diageo plc v John Zuccarini t/a Cupcake Patrol, WIPO Case No. D2000 - 0996), which involved several sucks sites including "guinness-really-sucks.com", "guinness-really-really-sucks.com" and "guinnessbeerreallyreallysucks.com" (guinnesssucks.com had already been defensively registered by Guinness), the panellist held that the domain names had been registered in bad faith due to the respondents admission that they had registered the domains in retaliation to a letter demanding the transfer of "guinnes.com", another domain name owned by the respondents.
Therefore, to criticise these decisions as preventing free speech is not necessarily the appropriate criticism to make. A more valid criticism when looking at the application of the UDRP to these cases of this nature is whether the complainant should pass the first hurdle of demonstrating that the domain name is confusingly similar to the trade mark in question.
In the "dixonssucks.com" case, a very experience IP panellist opined that:
"Given the apparent mushrooming of complaints sites identified by reference to the target's name, can it be said that the registration would be recognised as an address plainly dissociated from the Complainant? In the Panel's opinion, this is by no means necessarily so. The first and immediately striking element in the Domain Name is the Complainant's name. Adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainant is connected with it. Some will treat the additional "sucks" as a pejorative exclamation and therefore dissociate it after all from the Complainant; but equally others may be unable to give it any very definite meaning and will be confused about the potential association with the Complainant."
As one commentator on this decision observed: "on what planet?". In the UK, when considering the concept of whether a mark is confusingly similar to another, it has to be shown that a substantial number of reasonable people will be confused. A claimant will not get home on confusion that comes from a "moron in a hurry". To the reasonable internet user "dixonssucks.com" translates as "thisisnothingtodowithdixonsiamjustcriticisingthem.com". Would this domain name be considered confusingly similar to the trade mark Dixons?
Two arguments in favour of the decisions transferring "sucks" sites to trade mark holders are firstly that although the meaning of "sucks" may be understood by savvy internet users, other users, especially non-English speaking users of the internet would be confused into believing that the site is controlled by the trade mark owner. If the test for "confusingly similar" in relation to English language domain names is going to be judged by non-English speakers, it will be interesting to see if the test in relation to whether a Chinese character set domain names is confusingly similar to a Chinese trade mark is going to be judged by non-Chinese speakers.
The second argument which is raised in favour of these decisions is that search engines will list the "sucks" site when the trade mark is searched and because it is easy to enter the website, users may do this to satisfy their curiosity. If this happens the registrant of the "sucks" site will have diverted potential customers of the trade mark owner to his website. Although this may be an issue worthy of consideration in a trade mark infringement case, it is not strictly relevant to whether the domain name which features the trade mark together with "sucks" is confusingly similar to the trade mark itself.
For those who are dissatisfied with the way some of the sucks cases are being decided, they will be disappointed to hear that the domain name "udrpsucks.com" has already been taken.
UDRP - happy birthday?
The fact that some decisions under the UDRP are questionable, or even bad, does not mean that the system is fundamentally flawed. All legal systems give rise to bad decisions from time to time. The UDRP is still young and mistakes can be corrected.
One of the attacks aimed at the UDRP is that it unfairly favours trade mark owners. In total over around 2,500 proceedings have been brought since the UDRP was initiated, with over 1,500 of those proceedings having been decided. Around 75-80% of the decided cases were decided in favour of the complainant. However, this does not necessarily mean that the decisions are biased. Few complainants will bring an action unless they consider they at least have a good chance of establishing the three criteria required. This is a high hurdle, which should result in the percentage in favour of the complainant being well above 50%. In fact, the 75-80% success rate statistic relates to all decisions, around 50% of which are not contested. Although there is no concept of judgment in default, and the arbitrator will consider whether the three factors required to succeed are proven even if the respondent does not submit a response, the chances of success when no contrary argument is raised are naturally increased. If an analysis is carried out of the contested cases, the percentage in which the complainant has been successful drops to around 60%.
The UDRP does give trade mark owners a relatively cheap and more importantly speedy method of resolving abusive registrations. The time from filing to a decision being published will be around 2 -3 months in most cases, although extensions can be obtained to filing deadlines and the panellist can raise specific questions of the parties, which will delay a decision. Although a court case can be filed in most countries for less than the cost of a UDRP action, the fact that a UDRP action will in most cases consist of filing the complaint and sitting back to see what happens, means that the overall costs, even with legal fees, is much lower than an equivalent court case. This does not mean that the courts will no longer be concerned with domain name cases. Where the matter is a question of trade mark infringement as opposed to an abusive registration, the UDRP is not the appropriate forum. Where damages are appropriate, the court must be used as the UDRP only provides for cancellation or (more usually) transfer of the name.
In conclusion, in the same way that it is now much harder to find investors for an e-commerce start-up, it is much harder to reap large rewards from cybersquatting. The UDRP, from that perspective, is working well. If someone has taken your trade marks and registered them as domain names with a view to blackmailing you for there return, at a costs of a few thousand dollars, you should be able to recover them.
WIPO is currently working on a second report on the internet domain name process and a general review of the working of the UDRP is being commissioned by the Intellectual Property Constituency of ICANN. The UDRP may be amended in the future and its scope may be extended, but thus far it has provided an extremely useful mechanism to trade mark owners to protect their rights. The success of the UDRP has led Nominet, the registrar for .uk country code top level domain, to start preparing a new dispute resolution process which will be similar in nature to the UDRP, to deal specifically with disputes relating to .uk.
1 British Telecommunications plc & ors v. One in a Million Ltd & ors  CIPA 935