July 31, 2021

Role of UDRP in Resolving Domain Name Disputes (with top 4 important case laws)

cyber law

Introduction

They say that excessive use of anything is bad and it holds true for the cyber world as well. With the excessive usage of the Internet there has been an upsurge in legal issues, especially concerns related to Intellectual property. Domain name disputes have been an ongoing problem, despite that we do not have appropriate laws. In this article we shall discuss domain name abuses, the inception of ICANN & UDRP and cases resolved under UDRP.

Domain Name Abuses

Cybersquatting– an abuse where an identical domain name has been registered. The whole purpose of cybersquatter is to gain a large sum of profit from the actual trademark owner; Domain name warehousing– an abuse where expired domain names are held and not released in the public. The registrant hopes to sell the domains at a higher price;[1] Typosquatting– an abuse where the registrant registers the domain name like major domain names with the intent to divert traffic to sites of the registrant. When such abuses occur, the victim can either negotiate with the registrant and buy the domain by paying the higher price, or file a lawsuit in the court or choose to proceed under UNDP. [2]

ICANN & UDRP

The Internet Corporation for Assigned Names and Numbers (ICANN) is a nonprofit corporation, founded in 1998. It administers the Internet’s addressing system including domain names. Over the years, ICANN has gained enough attention for providing a secure platform to top level domains.[3] For any dispute of domain names, ICANN founded Uniform Domain Resolution Policy in 1999. Under UDRP, most domain name disputes may be resolved by court action or arbitration. The UDRP is a policy between a registrar and its customer and is included in registration agreements for all ICANN-accredited registrars. [4]

Under ICANN, domain names are broadly categorized as Generic Top Level Domains (gTLD’s), such as .biz, .com, .info, .net, .org. and Country Code Top Level Domains (ccTLD’s), such as .in for India, .au for Australia. Any person or entity wishing to register a domain name in the gTLDs and ccTLDs in question is required to consent to the terms and conditions of the UDRP Policy. [5]

A dispute can be submitted to either of the ICANN approved dispute resolution service providers; World Intellectual Property Organization (WIPO), National Arbitration Forum (NAF), Czech Arbitration Court Arbitration Center for Internal Disputes, Canadian International Internet Dispute Resolution Center (CIIDRC), Asian Domain Name Dispute Resolution Centre, Arab Centre for Domain Name Dispute Resolution (ACDR).[6]

The complainant must allege three elements: Domain name has been registered in bad faith; Domain name is identical or confusingly similar; registrant lacks rights or interest in the domain name.

The registrant has 21 days to respond to the complaint. Case is then presented with a one- or three-member panel. Unless chosen by the parties, a single panel is appointed. When a three-member panel is appointed, both parties may nominate panelists from the service providers list and the administrator shall then appoint a panelist nominated by each party. The panelists are either academicians or attorneys.

A decision within 14 days (absent exceptional circumstances) based on the facts, documents submitted and application of the rule of law when it seems deem fit has to be passed. The only remedy available is either to cancel the domain or transfer the domain name to the complainant. The registrant has to implement the order after ten business days have passed.[7] However, the registrant may challenge the decision within these ten business days by furnishing additional documents to the registrar.

Cases Resolved under UDRP

WIPO has been the primary service provider for dispute resolution. Below are the few major domain name cases decided by WIPO in the recent years:

Groupon, Inc. v. Hily Jiang, D2019-3213[8]

The disputed domain name “groupon.app” was registered by the respondent. The complainant was a major player of e-commerce that offers various deals to consumers globally. The complainant were active in over 15 countries with 6000 employees worldwide. In 2018, the Complainant reported USD 5.2 billion in gross billings. The complainant contested that the disputed domain name was confusingly similar or identical to complainant’s trademark and it was registered without the complainant’s consent. Further the complainant contested that the respondent has registered the dispute domain name with bad faith and had offered to sell it to the complainant for $1950 which was far more than the Respondent’s investment. The respondent made no counter filings. The panel concluded that the respondent knew of the complainant’s GROUPON trademark and the evidence shown to sell it at a higher cost was a mere bad faith. Thus, it was ordered to transfer the disputed domain name to the complainant.

Facebook Inc. v. Qian Mengdan, D2019-0251[9]

The disputed domain name “portalfacebook.com” registered by the respondent. The complainant was founded in 2004. It operates “Facebook”, an Internet platform that allows people potentially anywhere in the world to post messages and other material that may be read by multiple friends and family to keep in touch. The Complainant also owns numerous domain names including facebook.com, facebook.biz, facebook.ca, facebook.in, etc.[10] The complainant contested that the respondent had simply bad faith with the intent to capture Internet users with the complainant’s trademark for a profit. The respondent just stated that he did not have a bad faith and that he redirected the disputed domain name to a website having nothing to do with Facebook and added a disclaimer. This redirection only happened after the complainant’s lawyers sent a notice. The panel founded that the respondent had mere bad faith and that the dispute domain was identically similar, it ordered to transfer the disputed domain name to the complainant.

Tata Sons Private Ltd. v. Registration Private, Domains By Proxy, LLC / Anirudh Sharma, company, D2019-1212[11]

The disputed domain name “tata-groups.com” was registered by the respondent. The Complainant, Tata Sons Private Ltd, located in Mumbai, India is a body corporate, established in the year 1917 and is the promoter and principal investment holding company of the Tata Group of companies. The Complainant represents its own and the interests of all the Tata Companies, as also the image and reputation of the trade name and trademark TATA. The complainant owns trademark registration of TATA in over 100 countries including India. The complainant contested that the respondent had no right or legitimate interest in the disputed domain name.

Further, the respondent had registered the domain name just to create confusion in the minds of public. The Complainant also contended that the disputed domain name has been deliberately acquired by the Respondent because it was aware of the commercial value and significance of the trademark TATA. With these facts presented, the panel ordered to transfer the disputed domain name to the complainant.[12]

Philip Morris USA Inc. v. Nelia Andrade, D2018-0098[13]

The disputed domain name “marlboro-company.com” was registered by the respondent. The complainant has sold cigarettes & tobacco under trademark Marlboro. The complainant contended that the disputed domain name was confusingly similar to Marlboro trademark and also contended that the respondent had employed a privacy service to hide its identity at the time of filing the complaint, which can be supported as an inference of bad faith registration and use of the disputed domain name. The Panel found that the respondent’s awareness of Marlboro trademark was obvious and that the respondent had mere bad faith in registering the disputing domain name. As a result, the panel ordered to transfer the disputed domain name to the complainant.

Conclusion

We can conclude that UDRP has played a pivotal role in addressing domain name disputes, but the mechanism has its own limitations. There are flaws in the system such as that the decisions can always be appealed in the court of law, thereby providing an opportunity for the losing party to take undue advantage of the laws of different countries. This means ICANN should formulate a model which works in line with the country laws. It is also apparent that a bias exists towards trademark owners and provides very less protection to registrants. Thus, UDRP need to work towards enduring fairness and due process.

References

[1]Lexero, “Types of Domain Name Disputes”, available at https://lexero.com/practices/domain-name-attorney/d
omain-name-attorney-types-of-domain-name-disputes/.

[2] David E. Sorkin, “Judicial Review of ICANN Domain Name Dispute Decisions”, 18Santa Clara High Tech. L.J.35
(2001), available at https://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?referer=https://www.google.com/
&httpsredir=1&article=1293&context=chtlj.

[3]ICANN, “Domain Name Dispute Resolution Polcies”, available at https://www.icann.org/resources/pages/dndr-
2012-02-25-en.

[4]Singh Harman Preet, “ Domain Name Disputes and Their Resolution under UDRP Route: A Review”, available at
Https://www.researchgate.net/publication/329921688_Domain_Name_Disputes_and_Their_Resolution_under_UD
RP_Route_A_Review.

[5] David E. Sorkin, “Judicial Review of ICANN Domain Name Dispute Decisions”, 18Santa Clara High Tech. L.J.35
(2001), available at https://digitalcommons.law.scu.edu/cgi/viewcontent.cgi?referer=https://www.google.com/
&httpsredir=1&article=1293&context=chtlj.

[6] Supra note 3.

[7] Ghosh, Sourabh, “Domain Name Disputes and Evaluation of The ICANN’s Uniform Domain Name Dispute
Resolution Policy”, available at http://docs.manupatra.in/newsline/articles/Upload/54B3830D-2595-4148-80E3-
511F55C54A47.pdf

[8] WIPO ARBITRATION & MEDIATION CENTER, available at https://www.wipo.int/amc/en/domains
/search/text.jsp?case=D2019-3213.

[9]WIPO ARBITRATION & MEDIATION CENTER, available at https://www.wipo.int/amc/en/domains/search/
text.jsp?case=D2019-0251.

[10] Ibid.

[11] WIPO ARBITRATION & MEDIATION CENTER, available at https://www.wipo.int/amc/en/domains/search/te
xt.jsp?case=D2019-1212

[12] Ibid.

[13] WIPO ARBITRATION & MEDIATION CENTER, available at https://www.wipo.int/amc/en/domain
s/search/text.jsp?case=D2018-0098


Author Details: Prachi Shah (LL.M., TThe George Washington University Law School)

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