Alternative Resolution for Domain Name Disputes

2000 B.C. Intell. Prop. & Tech. F. 032501
Alternative Resolution for Domain Name Disputes

by Robert O'Keefe, Staff Writer

A domain name dispute resolution system established by the Internet Corporation for Assigned Names and Numbers (ICANN) is beginning to bear fruit. ICANN established the system under the Uniform Domain Name Dispute Resolution Policy (UDNRP) adopted on August 26, 1999, and the first forum opened for business on December 1, 1999. The policy is binding on all domain name registrars in the ".com", ".net" and ".org" top-level domains.

The system offers an expedited administrative proceeding for trademark holders to contest "abusive registrations of domain names," and may result in the cancellation, suspension or transfer of a domain name by the registrar. Complaints may be filed with one of three ICANN-approved centers: the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center (Geneva, Switzerland), the National Arbitration Forum (Minneapolis, Minnesota), and the Disputes.org/eResolution Consortium (Amherst, Massachusetts & Montreal, Canada). Additional centers may be approved by ICANN at a later date.

The clearest advantages of the ICANN dispute system are its quick resolutions and relatively low costs. Respondents must reply to the complaints within 20 days, and once the submissions are complete the panel has 45 days to issue its decision. The parties have the option of a panel of one or three arbitrators, selected from a list of ICANN-approved experts in intellectual property matters. The panel will then base their decision on the filings alone, as no personal appearances are allowed under the UDNDRP rules, unless there are exceptional circumstances. The parties may even conduct the entire proceeding through electronic filings. All final decisions are then listed on the ICANN web site ( www.icann.org ), along with a list of pending matters.

Costs can range from $1,000 to $3,500 or more, depending on the number of domain name disputes involved and the number of panelists selected to resolve the dispute. The costs are born by the complainant, unless both parties opt to have a three-person panel hear the matter, in which case the costs are split.

Despite the recent enactment of federal cybersquatting laws, the UDNRP appears to be developing into a popular alternative to litigation in domain name disputes. Between December 1, 1999, and March 15, 2000, approximately 300 complaints had been filed with the three dispute resolution service providers. The first case to be decided resulted in a transfer of the domain name www.worldwrestlingfederation.com to the World Wrestling Federation from a man in California who purchased the initial registration. Since then nearly 40 complaints have been resolved by the panel, settled or withdrawn. The parties always retain the option of pursuing legal action.

The possibility for a quick resolution may have been a factor in decisions by such major corporations as Fox, Christian Dior, Nabisco and Hewlett Packard to forego litigation in favor of the ICANN forums, even though relief under the UDNRP is limited to a transfer, cancellation or suspension of the domain name, as opposed to potential statutory damages.

There has been some concern expressed over a potential bias in favor of the trademark holders. Of the nearly 40 cases resolved, 28 have resulted in the transfer of a domain name to the complainant, and only six complaints have been decided in favor of respondents. Whether this is evidence of bias in favor of the trademark holders or pervasive cybersquatting remains to be seen.