UDRP

This page is under construction. It looks at the Uniform Domain Name Dispute Resolution Process (UDRP). 

     the UDRP

ICANN established the Uniform Dispute Resolution Process (UDRP) to handle disagreements about the allocation of domain names. 

The UDRP involves arbitration and decision-making by a small number of non-government arbitral bodies. Decisions are made on a case by case basis, rather than using detailed guidelines or an extensive body of precedent. That's led to what some have criticised as bias or inconsistency. Others have highlighted problems with lack of an appeal body, one result being that some disputants have taken disagreements to favourable fora such as courts in particular US states. 

Around 80% of the UDRP disputes have been heard by the World Intellectual Property Organization's Domain Name Dispute Resolution Service (DNDRS), arguably because plaintiffs are comfortable with WIPO's aesthetic of the 'sacredness' of intellectual property. The others are the CPR Institute for Dispute Resolution, eResolution and the National Arbitration Forum. Towards the end of 2000 WIPO sought comments on trademark and domain name issues in strengthening the regime.  

The 'Process' aims at addressing disputes about domain names - eg cybersquatting - in a way that's more speedy and economical than recourse to international courts and that doesn't get bogged down in disagreements between different national/regional jurisdictions (eg French versus US courts). 

A perspective on such arbitration is provided by Dealing in Virtue : International Commercial Arbitration & the Construction of a Transnational Legal Order by Yves Dezalay & Bryant Garth (Chicago, Uni of Chicago Press 98).

The UDRP's been strongly, although sometimes unfairly, criticised. 

One of the most influential studies has been the Rough Justice  report from  Syracuse University's Convergence Center. It suggests that interpretation of of the UDRP by WIPO and forum-shopping by litigants have created a system biased towards large trademark holders. For a sense of how the UDRP is evolving we recommend the Domain Name Law Reports (DNLR), a public database of ICANN domain name dispute case law, and Scott Donahey's monthly digest. in association with the UDRP resources at the Berkman Center for Internet & Society.

ICANN also offers a dispute search engine.

   what is cybersquatting? 

Cybersquatting involves registering a domain name to profit by selling it to the business or individual (eg Nike, British Telecom, Madonna) with the same corporate name, product name or trademark. 

It's contentious, as bodies such as the Domain Name Rights Coalition (DNRC), the Association for Domain Owners Rights (ADOR) and the loopier TLD Lobby (TLDL) consider that it's an exercise of intelligence/investment rather than bad faith and because they perceive many of the remedies as being biased in favour of large businesses. One man's cybersquatting is another man's commercial savvy, all within the rules of domain naming within different countries (and using different registries).   

Globally, a pattern's emerging as courts support the owners of existing business names and trademarks over those who're considered to acted in bad faith by registering a domain name with the sole objective of on-selling that name. 

Critics of course have pointed out that justice favours those who can afford a shoal of QCs. Action by trademark owners is however understandable, as many have spent hundreds of millions of dollars over several decades in promoting awareness of a brand. Indeed, a major part of the market value of a business may be its brand. 'Name recognition' is thus of significant and legitimate concern.

   What about trademarks, trade names and domain names?

As we noted in the connecting guide, domain names are unique names issued to any entity that satisfies the rules for the allocation of names within the particular domain (eg dot com or dot com dot au). Unfortunately there's sometimes inconsistency in the interpretation of those rules. Australia has been more rigorous than many other domains.

Owning a registered trademark - ie authorised by the Australian Industrial Property Office (AIPO) -  or using a trading name doesn't automatically entitle you to the corresponding domain name. 

That's because trading names and trademarks are not unique. In Australia there are 42 trademark classes. That means, in theory, it's possible for 42 different entities to use the same word/s as a trademark and as a trading name.  For example, both Apple Computers and Apple Records use the 'Apple' trademark.  

Trademark owners do not have absolute control over the word/s in their trademark. Unrelated businesses thus operate under the trading name of Apple Cakes, Apple Supplies and Sweet Apple Costumes. And of course you're free to use Apple as your surname. 

Australian courts are still getting to grips with the rights of domain name owners versus trademark owners. That's business as usual; Richard Branson's Virgin conglomerate and Cartier have recently gained publicity over its aggressive attempts to stop long established businesses using the words Virgin or Cartier.

In practice, depending on the circumstances Australian courts may require a business to stop using (or to transfer rights to) a domain name.

   Someone's using my trademark as a domain name

If a business has a domain name identical to your trademark but is selling a product/service in a separate trademark class/classes to yours and is not attempting to 'pass off' trading on your mark, you may not be able to compel them to cease using the domain name.  

For example, if you own Smiths Bookshop but Smiths snackfoods registers 'Smiths' first, you may not be able to stop them using that domain name. As we noted in the TLD page of this briefing, the name is generally allocated on the "first in, best dressed" model. 

It is important to remember that owning a trademark or a trading name does not give exclusive rights over use of the word/s used in the trademark.

   Can I stop use of my trademark as a domain name?

If someone else has a domain name identical to your trademark, and is selling a product/service in the same trademark class/es as yours it is likely that under existing Australian trademark legislation you can compel them to stop using the domain name. The jingle about no law in cyberspace ignores the reality that law continues to operate very effectively in particular jurisdictions.

We'll be providing more information shortly.