Procedure for Complaint under Uniform Domain Name Dispute Resolution Policy

Abstract

In the new era of emerging technologies, there are various platforms in cyberspace being created every day. With the development of new web portals, domain names, and social media applications, the need to register their Intellectual Property Rights has elevated. Even when registered the well-known marks might be used with a bad motive to disturb the competition and to create confusion among the consumers. This is called Cybersquatting. To avoid cybersquatting the World Intellectual Property Organizations has come up with many solutions and one of them is Uniform Domain Name Dispute Resolution Policy. The purpose of this article is to provide a panorama about the complaint procedure involved under the Uniform Domain Name Dispute Resolution Policy.

Introduction

The Uniform Domain Name Dispute resolution Policy (UDRP) is a scheme established by Internet Corporation for Assigned Names and Numbers (ICANN). UDRP helps in fixing disputes between a registered domain name holder and a third party or a cyber squatter over the illicit registration and use of an Internet domain name in the generic top-level domains or gTLDs and those country code top-level domains or ccTLDs.

The first action taken by ICANN was to depute the task of generating a report to the United Nations World Intellectual Property Organisation (WIPO) on the brawl between renowned trademarks and Internet domain names. WIPO suggested the composition of a “mandatory administrative procedure concerning abusive registrations” which would grant for a “neutral venue in the context of disputes that are often international in nature.” The process was not pre arranged to deal with the cases regarding competing rights, nor would it bar the jurisdiction of courts. However, it was obligatory that “each domain name application would, in the agreement of domain name, be required to comply with the procedure if a claim was proposed against it by a third party.”

The suggestion by WIPO was adopted by ICANN and the UDRP was inducted on 1st December 1999. The first case settled under UDRP by WIPO was World Wrestling Federation Entertainment, Inc v. Michael Bosman, which was associated with worldwrestlingfederation.com.

Criteria under UDRP Policy for acceptance of a complaint

The UDRP Administrative Procedure is available only for disputes regarding the illegal registration of domain names. The same has been elucidated under paragraph 4(a) of the UDRP Policy, according to which the following criteria have to be fulfilled. If the following criteria are not fulfilled then the complaint will not hold good under the UDRP Policy

(i) The domain name is analogous to a trademark or service mark in which the claimant has the rights; and

(ii) The third party or the cybersquatters have an illegitimate concern with regard to the domain name; and

(iii) Another requirement is that the domain name is certified and is utilized with a bad motive.

A bad motive is measured through several factors under URDP Proceeding, which can be analyzed in this way

  1. The cybersquatters aim is to exclusively sell the domain name to the claimant who is the actual proprietor of the renowned trademark
  2. If the cybersquatter registers to bar the trademark owner from reversing the mark in a corresponding domain name
  3. If the cybersquatter registers to disturb the business of a competitor
  4. The registrant has a goal to draw attention and to get commercial gain by creating a dilemma with the claimant’s mark

Complaint Procedure

The claimant shall choose the Provider amongst those authorized by ICANN by raising a complaint to that Provider. The Provider picked by the claimant will administer the Proceeding. The authorized Providers by ICANN are as follows:

  1. World Intellectual Property Organization (WIPO)
  2. The Asian Domain Name Dispute Resolution Centre (ADNDRC)
  3. National Arbitration Forum(NAF)
  4. Czech Arbitration Court, Arbitration Center for Internet Dispute
  5. The Arab Centre for Dispute Resolution (ACDR)
  6. Canadian International Internet dispute resolution center (CIIDRC)[3]

Contents of  a Complaint

  • Rule 3 of Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”) illustrates the rules regarding complaint under UDRP Proceedings. According to Rule 3, a layman or an organization may institute an administrative proceeding by submitting a complaint harmonious with the Policy and Rules to any provider acknowledged by ICANN. A provider’s capability to accept complaints may be pensile at times, in that circumstance, the Provider shall deny the submission.
  • The complaint so raised will be in electronic form including any annexes. The complaint further will include the name, postal, email addresses, and telephone and telefax numbers of the claimant and any agent commissioned to present in favor of the claimant in the administrative proceeding
  • The claimant has to specify whether the dispute has to be decided by a single-member or a three-member Panel and in case, the claimant nominates a three-member Panel, names and contact details of three panelists has to be served(Panelists can be preferred from an ICANN authorized Provider’s list of panelists)
  • The Claimant shall provide the name of the opposite party or the cybersquatter and all details including postal and email addresses and telephone and telefax number
  • The subject matter of the complaint has to be stipulated and also the registrars with whom the domain name(s) are registered
  • The claimant shall specify the trademark(s) or service marks(s) on which complaint is based and for every mark elucidate the goods and services if any with which the mark is used
  • Recognize any other archives of legal proceedings that have been instituted or terminated in connection to the complaint
  • Wind up the complaint  followed by the signature (electronic form) of the claimant or authorized representative of the claimant
  • Adjoin any documentary or other evidence, with a copy of the Policy applicable to the domain(s) in dispute and any trademark or service mark certification upon which the claimant banks

Once the grievance is successfully raised to the provider, the domain name will be locked by the registrar on request. Simultaneously the Provider shall review the complaint about administrative compliance or administrative deficiency. If the provider finds no glitch in the complaint, he shall forward the complaint with annexes. The complaint shall stand dismissed in case of any managerial flaw. The Provider shall communicate the same to 

The Claimant and Respondent. In event of a complaint being accepted, the date of commencement of administrative proceeding is informed to the Claimant, the Respondent, the concerned Registrar(s), and ICANN. The initiation of resolution proceedings is the date on which the provider communicates about the issue to the respondent.

Time Limitation to raise a complaint

Under the UDRP Policy time bar has not been specified but the delay has its consequences depending upon the cases. The Final Report of WIPO (1999) jots that “time constraint in respect of raising a complaint should not be introduced”

Conclusion

The Uniform Domain Name dispute resolution Policy has been embraced by ICANN, which recommends terms and conditions in contact with a dispute between two people over the registration and use of an Internet domain name. The owner of a trademark who has suffered damages due to an illicit registration of domain name by a third party can complain under UDRP Policy following all the terms and conditions given under “the Policy”. The complaint must be submitted in electronic form, the WIPO center offers Complaint Transmittal Cover Sheet, which can be mailed or submitted directly online. Thus, it provides a faster and cheaper way to solve a domain name dispute rather than going to court. It provides a mechanism of solving domain name disputes without giving much concern as to where the registrar or complainant is located.


Authored By: Sparsha S. Pai, 5th Year, SDM Law College, Mangalore

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