About Domain Name Disputes

The explosive growth of the Internet has resulted in a dramatic increase in the importance of domain names in the conduct of business. Businesses have traditionally developed brand name recognition of their products and services by the use of trademarks and service marks. As domain names have, in many ways, become the equivalent of a company name and address for Internet commerce, there has been increasing competition for the limited number of available domain names. Domain name disputes have, therefore, resulted from this competition.

The authority and responsibility for the registration and maintenance of domain names has changed over the years as the governance of these Internet issues has evolved. The current arrangement is that The Internet Corporation for Assigned Names and Numbers (“ICANN”) has centralized authority. Numerous registrars around the world have been granted authority by ICANN to register domain names. Other organizations are similarly granted authority to maintain the databases of domain names and information about the individuals and organizations that have registered the domain names.

Domain names are divided into hierarchies. The top level of the hierarchy is the portion of the domain name that follows the last dot in the domain name. Various countries have been allocated various top level domain names. For example .uk designates the United Kingdom and .fr designates France as the corresponding jurisdictions for the registration and maintenance of the domain names with these suffixes. Each governing body for the various top level domain names has the authority to establish distinctive rules to govern the registration of domain names with its corresponding top level domain name suffix. Although individuals and businesses based in particular countries are not limited to the registration of only the top level domain names which have been assigned to their country, a registrant must comply with the rules of the jurisdiction that governs the top level domain name that is being registered. For example, a company based in the United States can register a domain name ending in .fr, but the rules of the registrars of .fr domain names must be followed.

Since much of the initial growth of Internet usage has taken place in the United States, the top level domain names assigned to United States registrars have been among the most popular (ie., .com, .net, .org, .info & .biz). Although the first three suffixes were initially intended for use by particular types of organizations (.com for commercial enterprises, .net for Internet service providers and .org for nonprofit organizations) a particular type of company is not limited to the registration or use of its respective top level domain name suffix.

For a considerable period of time, Network Solutions, Inc. had the authority to both register and maintain the database of the top level domain names .com, .net, and .org. More recently, authority has been granted to a number of other organizations to be the registrars of these domain names. Since the central database can only effectively be maintained by one organization, Network Solutions, Inc. has the continuing authority to maintain the central database repository of information. Therefore, lawsuits in court cases are usually litigated in the jurisdiction of Network Solutions - where this law firm practices.

As increasing numbers of businesses and individuals have been registering domain names to establish their internet “names” and addresses, there has been increasing competition for the few available domain names that may be similar to a particular company name or product. Furthermore, some individuals and companies have registered numerous domain names which are identical to the trademarks or company names of unrelated organizations. Commonly known as cybersquatters, these individuals and organizations may then actively or passively offer the domain names for sale to the company with the corresponding company name or trademark. Disputes about the domain names have, therefore, been the result of this competition for these valuable internet addresses.

Domain name disputes are handled differently in the various jurisdictions that have authority for various top level domain names. Since the most popular top level domain names are .com, .net, .org, .info & .biz, the domain name dispute resolution policies for these suffixes will be discussed here.

As of January 1, 2000 a new Uniform Domain Name Dispute Resolution Procedure (UDRP) was adopted for domain name addresses ending in .com, .net and .org. Three arbitration organizations have been given the authority to make determinations regarding domain name disputes. They are as follows: (1) The World Intellectual Property Organization, (2) The National Arbitration Forum, (3) eResolution (4) CPR Institute for Dispute Resolution. If one of these organizations makes a determination regarding a domain name dispute, Network Solutions will respect the decision and will transfer the registration of the disputed domain name in accordance with the arbitration determination. The reason for the cooperation of Network Solutions in transferring the domain name is that there are contractual agreements by which the registrant of a domain name agrees that the domain name can be transferred in accordance with a UDRP decision.

There are complex policies, rules, and procedures that govern the submissions, presentations, and arguments that each party to a dispute may present. In addition to a core set of policies, rules, and procedures that are set forth in an ICANN document entitled “Rules for Uniform Domain Name Dispute Resolution Policy” there are also additional sets of supplemental policies, rules, and procedures that must be followed as a part of the arbitration process for each of the authorized arbitration organization.

Subsequent to the implementation of these domain name dispute resolution procedures as of January 1, 2000, there have been a number of decisions promulgated by each of the arbitration organizations. The proceedings of each of these arbitration organizations have been carefully followed and studied by this law firm. As a result of this study of the precedent decisions, we have concluded that it is most effective to use different arguments and different presentations before each of the arbitration organizations. Consequently, it is important for us to use different arguments and different presentations before each of the arbitration organizations.

In addition to the resolution of disputes by the submission of the disputes in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy, lawsuits and legal actions in the United States court system can also be initiated. We have studied the numerous court decisions have been issued by the judges in lawsuits regarding domain name disputes. For some types of disputes, it is more advantageous to begin a lawsuit through the judicial system rather than to arbitrate in accordance with the rules of the Uniform Domain Name Dispute Resolution Policy. Furthermore, a court can grant an injunction to require an immediate action with respect to a particular domain name. Courts can also grant monetary damages and enforce the provisions of the recently enacted anti-cybersquatting legislation. The court in which most domain name disputes have been litigated is the federal district court with jurisdiction over Network Solutions, Inc, the organization which maintains the domain name database - in which this law firm practices.

The facts and circumstances of each domain name dispute should be carefully examined in order to determine the most advantageous course of action to resolve the particular disputes. Some arguments are more effective before some arbitrators than they are before other arbitrators. Various remedies are also available if legal action is initiated in particular courts.

As a specialist law firm dealing with domain name disputes, we have developed considerable expertise. This expertise can provide you with the assurance that your case will be handled in a manner that will optimize the results for you and your company. We can carefully review your domain name dispute, recommend the most advantageous course of action and pursue the most appropriate course of action on your behalf.