The Internet Corporation for Assigned Names and Numbers's (ICANN) new domain name dispute policy has replaced the former well known Network Solutions dispute policy. This new policy became effective, in most circumstances, from 1 January 2000 and is designed to regulate claims by trade mark owners to all .com, .net and .org top level domain names domain names which have been registered by other people.
Under the new policy the entitlement to a disputed domain name will now be resolved by a 'provider, a confusing term which refers to an organisation approved to administer the dispute resolution process. This is different from the old position which can best be described as 'sort it out between yourselves'.
The old rules only allowed for disputes in relation to trade marks which were identical to the domain name. This left a gap in the old policy allowing owners of domain names which were very similar to registered trade marks to effectively avoid the dispute procedure. The new policy allows a trade mark owner to complain about the registration of a domain name that is identical or 'confusingly similar' to a registered trade mark or an unregistered trade mark in which the owner has rights. This can only be welcomed and brings domain name dispute policy more into line with trade mark law.
All is not good news however. A domain name will no longer be placed 'on hold' at the start of a dispute. Tactically this was a useful (and cheap) way of resolving the more clear cut cases where the owner of the domain name was not entitled to it (ie a cybersquatter). A domain name owner who could not use their domain name was more likely to settle the dispute. Under the new rules the domain name owner can continue to use the domain name until such time as the trade mark owner successfully persuades a provider that they are rightfully entitled to the domain name.
Proving such entitlement is potentially more difficult than under similar provisions in trade mark law. Not only must the trade mark owner prove that the domain name is identical or confusingly similar to their trade mark, they must also show why the domain name owner has no 'legitimate interest' or right in the domain name and why the domain name should be viewed as having been registered (and used) in bad faith.
The dispute policy sets out examples of 'legitimate interest' and 'bad faith'. For the former, to counter the trade mark owner's allegation, the domain name owner must demonstrate that they have used or have prepared to use the domain name 'in connection with [good faith] offering of goods' or show how they or their business have been 'commonly known' by the domain name or that they have made 'legitimate non-commercial or fair use' of the domain name. Exactly how the domain name owner demonstrates such factors remains to be seen.
Registering a domain name in bad faith includes either acquiring a domain name primarily for the purpose of selling it for more than it cost to register ("trafficking in domain names") or acquiring the domain name merely to block the rightful trade mark owner or primarily to disrupt their business ("disruption or blocking") or using the domain name to intentionally attract Internet users to the site by suggesting some form of sponsorship, affiliation or endorsement of the site by the rightful trade mark owner ("intentional attraction").
For example a site for a sporting event using the domain name fanta.org might suggest a form of sponsorship from the manufacturers of the well-known drink. However proving trafficking, disruption or blocking, or intentional attraction may be difficult and expensive. To make matters worse, the costs of proving rightful entitlement are usually born by the trade mark owner.
Once a trade mark owner has proved their claim, the domain name registry will abide by the decision given by the provider. Such a decision will either be to transfer the domain name to the trade mark owner or cancel the registration.
The first decision under the new policy has been given. On 14 January the WIPO Arbitration and Mediation centre (a provider) gave a decision on worldwrestlingfederation.com. Although the decision is not based on a fully contested case, it does give a clear indication that the procedure will be followed and a decision can be given in just 42 days after an initial complaint is sent. Indeed it may be even quicker. The decision in this case was due several days earlier and was only delayed because the parties (at the time) appeared very close to settlement.
As a practical point, trade mark owners should be aware that any disputes started under the old procedures before 1 January will fall away, leaving disputed domain names to be "reactivated"(the old "on hold" status disappears). However before "reactivation", both sides should be given formal notice resulting in a choice for the trade mark owner. They must either file a complaint under the new dispute policy or issue legal proceedings.
Even with these revised rules and the potentially much quicker resolution of disputes, as is always the advice, if you want a particular domain name then get there before anyone else does.
First published in Brand Strategy in April 2000.