Rules for Uniform Domain Name Dispute Resolution Policy (analysis + pdf)


 Rules for Uniform Domain Name Dispute Resolution Policy (UDRP)  pdf

Rules for Uniform Domain Name Dispute Resolution Policy (UDRP) is very essential in regulating domain name disputes.

With the astonishing growth of internet-based activities, domain names must be controlled.

In settling domain name disputes, the Internet Corporation for Assigned Names and Numbers (ICANN) adopted the Uniform Domain Name Dispute Resolution Policy that provides a mechanism for trademark owners to obtain domain names from “cyber squatters.”

All domain name registrars that have the power to grant .com, .net, and .org generic top-level domains must follow the Uniform Domain Name Dispute Resolution Policy.

The main focus here is to share with you the Rules for Uniform Domain Name Dispute Resolution Policy.

For ease of reference, I will first explain what is the Internet Corporation for Assigned Names and Numbers (ICANN), the meaning of the domain name, the types of domain, and the rules for registrations of Domain Name Before dwelling on the UDRP rules.

What is the Internet Corporation for Assigned Names and Numbers?

ICANN is a private-sector non-profit organization.  It is an internet technical coordination body that was formed in October of 1998 by a coalition of internet business, technical, academic, and user communities.

ICANN is responsible for the management of the Internet domain name system.  It coordinates the assignment of internet domain names, IP address numbers, and protocol parameters and port numbers.

ICANN also is responsible for the stable operation of the internet’s root server system.

What is a Domain name?

A domain name may be defined as a string of letters and numbers (separated by periods) that are used to name organizations, computers, and addresses on the internet; “domain names are organized hierarchically with more generic parts to the right.

Types of  Domain name

The domain name is divided into two hierarchies namely the Generic Top-level domain names (gTLD) and Country-code top-level domain names (ccTLD).

The Generic Top-Level Domain Names

The Generic Top-Level Domain Names are domain names that have three parts separated by dots in their IP Address, for example, www.example.com.

There are different generic top-level domain names registered under different organizations known as Registries.

Examples of the generic top-level domain names include .aero, .biz, .com, .coop, .info, .museum, .name, .net, .org, & .pro .

It is also possible for a person or an organization to have a subdomain name. Subdomain name is a part of the top-level domain name example of a subdomain name is www.example.blogsopt.com, in that case, an example is a subdomain of blogspot.com.

Country Code Top Level Domain Names

Country Code Top Level Domain Names are those domains that are given to different countries around the globe. Examples may include .tz (Tanzania), .za (South Africa), .ca (Canada), .uk (United Kingdom), .ke (Kenya), .jp (Japan) and many others.

Rules for Registrations of Domain Name

The Rule in the registration of domain names is simply ‘first come first served’ no matter what reputation Have you created on a particular name and whatever confusion the general public may encounter if the same name is assigned to another person as a domain name.

The rule ‘first come first served’ means that the person who will be the first to complete all the applications and procedures for domain name registration is to be given the particular domain name he wants to be provided it has not been taken already and it is available.

This rule was established by Network Solutions Inc (NSI) that is responsible for the registration of domain names including .com, .net and .org top-level domain names. Since the vast majority of domain names are under one of these top-level domain names the most common being .com.

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NSI had a great deal of control over how domain names were registered and how disputes would be resolved. To avoid having to be the arbitrator between two parties who both desire the same domain name, NSI decided to simply adopt a ‘first come first serve’ arrangement concerning domain names.

Under this scheme, the NSI would not ask the applicant’s right to have a particular domain name if the domain name was available the applicant was given the name.

The reason behind using this rule is to bring about equality and prevent discrimination among those people who want to obtain domain names.

Case studies on Rules for Registrations of Domain Name

In Gateway 2000 Inc v. Gateway.com Inc (1997) U.S Dist Lexis 2144 Gateway.com Inc reserved the domain name gateway.com years before the mega computer maker Gateway, 2000 attempted to register the name.

Gateway 2000 sued but lost because the court found out that gateway.com had a legitimate for owning the domain name and had chosen it 6 years earlier, long before domain names had the value that they do today, and before Gateway 2000 became a well-known trademark.

One exception to the first-come, first-serve rule is that an owner of, for example, a U.S. trademark can petition Network Solutions to force the owner of previously the registered domain name to relinquish that domain name if it is exactly the same as a registered trademark.

In the case of Capital Webworks Pty v. Adultshop.com Ltd (2000) FCA 492 the Applicant had previously been the registered holder of the domain name but due to an error, allowed the registration to lapse, then respondent registered the domain name.

The applicant’s argument was based on the notion that there is goodwill vested in the domain name from its previous use of the mark. It was held by Nicholson J. that regardless of the applicant’s previous use of the domain name as a business website, there could be no goodwill vested in the domain name itself.

In support of this, he found that the domain name in itself does not seek to refer to the business name but merely acts as an address.

Now let’s go to the gist of this article.

Rules for Uniform Domain Name Dispute Resolution Policy

The domain name dispute occurs when multiple parties claim the right to use a particular domain name as happened in the Gateway case above.

The following are the Rules for Uniform Domain Name Dispute Resolution Policy to be followed after a dispute has arisen and the parties want to resolve the matter per UDRP.

NB: These rules are digested from ICANN official website, you can access them here (recommended) or download pdf  here

Communications

This is the primary rule. It is provided under Chapter II from Articles 04 to 10. It is of the effect that communication with all parties must be effective in the whole course of dispute resolution.

Article 4 (b) provides that

any communication by the Provider to any Party shall be copied and served to the other Party. Article 5 is providing that. When forwarding a complaint to the Respondent, it shall be the Provider’s responsibility to employ reasonably available means calculated to achieve actual notice to Respondent. Achieving actual notice, or employing the following measures to do so, shall discharge this responsibility by sending the complaint to all postal-mail, facsimile addresses, or sending the complaint in electronic form.

The Complaint

This rule is provided under Chapter III from Articles 11 to 16. This rule provides for a manner of lodging/initiating a complaint to the ICANN. Article 11 provides that

(a) any person or entity may initiate an administrative proceeding by submitting a complaint

Article 12 provides that

the complaint shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form.

Among other things, the complaint must

  1. Specify clearly the domain name (s) that is/are the subject of the complaint,
  2. Specify the rights or legitimate interests on which the complaint is based concerning the disputed domain name,
  3. annexing all materials evidencing the rights or interests;
  4. Describe the grounds on which the complaint is made,
  5. Specify the remedies sought, and
  6. Annex, as attachments, any documentary or other evidence upon which the complaint relies.
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Article 14 provides that after receipt of the complaint, the Provider shall review the complaint about administrative compliance with CNDRP and these Rules and if in compliance, shall forward the copy of the complaint to the Respondent.

If the Provider finds the complaint to be administratively deficient, it shall promptly notify the Complainant of the nature of the deficiencies identified. The Complainant shall have five (5) calendar days within which to correct any such deficiencies of the complaint. If the Complainant does not correct the deficiencies identified or the corrected complaint cannot satisfy the requirements under CNDRP and these Rules, the complaint will be deemed withdrawn without prejudice to submission of a different complaint by Complainant.

Notification of Complaint

Article 14 provides that after receipt of the complaint, the Provider shall review the complaint about administrative compliance with CNDRP and these Rules and if in compliance, shall forward the copy of the complaint to the Respondent.

‘If the Provider finds the complaint to be administratively deficient, it shall promptly notify the Complainant of the nature of the deficiencies identified. The Complainant shall have five (5) calendar days within which to correct any such deficiencies of the complaint. If the Complainant does not correct the deficiencies identified or the corrected complaint cannot satisfy the requirements under CNDRP and these Rules, the complaint will be deemed withdrawn without prejudice to submission of a different complaint by Complainant.

The Response

This is provided under Chapter IV from Articles 17 to 20. This rule elucidates the manner the respondent shall respond to the complaint against him/her.

Article 17 provides that

within twenty (20) days of the date of commencement of the administrative proceeding the Respondent shall submit a response to the Provider.

The response shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form.

Among other things, the respondent must respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent (domain-name holder) to retain registration and use of the disputed domain name and Annex, as attachments, any documentary or other evidence upon which the respondent relies.

Appointment of the Panel and Timing of Decision

This is provided under Chapter V from Articles 21 to 30. It governs the appointment of the people who can determine the complaint. The appointment process involves the party’s autonomy, i.e. parties are voluntarily chosen the people who wish to listen to their dispute.

Article 22 provides that

If neither the Complainant nor the Respondent has elected a three-member Panel, the Provider shall appoint, within five (5) calendar days following receipt of the response by the Provider, or the lapse of the time for the submission thereof, a single Panelist from its list of panelists. The fees for a single-member Panel shall be paid entirely by the Complainant.

A single dispute shall be composed by either one single Panelist or three Panelists.

The Panelists shall have the right to decide by themselves whether to accept the appointment.

To ensure the promptness and smoothness of the domain name dispute resolution proceedings, if any of the Panelists designated cannot accept the appointment, the Provider shall appoint another Panelist from its list of panelists at its own discretion.

Article 29 provides that

A Panelist shall be impartial and independent and shall have, before accepting appointment, disclosed to the Provider any circumstances giving rise to justifiable doubt as to the Panelist’s impartiality or independence. If, at any stage during the proceedings, new circumstances arise which could give rise to justifiable doubt as to the impartiality or independence of the Panelist, that Panelist shall promptly disclose such circumstances to the Provider. In such an event, the Provider shall have the discretion to appoint a substitute Panelist.

Communication Between Parties and the Panel if forbidden. Article 30 provides that no Party or anyone acting on its behalf may have any unilateral communication with the Panel. All communications between a Party and the Panel or the Provider shall be made to a case administrator….’

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Hearing and Ruling

This is provided under Part VI from Articles 31 to 42. It governs all rules of hearing, evidence, and the decision of a panel.

Article 31 provides that

the Panel shall conduct the proceedings in such manner as it considers appropriate according to these Rules, and decide a complaint based on the statements and documents submitted and following CNDRP, as well as any rules and principles of law which it deems applicable. If a Respondent does not submit a response, the Panel shall, in absence of exceptional circumstances, decide the dispute based upon the complaint.

In all cases, the Panel shall ensure that the parties are treated with equality and that each party is given a fair opportunity to present its case, give out its reasons for, and provide evidence.

The Panel shall ensure that the proceedings take place with due expedition. It may, at the request of a party, extend, under some special circumstances, a time fixed by these Rules.

The Panel shall determine the admissibility, relevance, materiality, and weight of the evidence.

Article 33 prohibits in-person hearing by providing that

Under the normal circumstances, there shall be no in-person hearings (including hearings by teleconference, videoconference, and web conference), unless the Panel determines that such a hearing is necessary for deciding the complaint. Either of the parties may request the Panel to hold an in-person hearing at his own expenses.

Further, the Panel shall render its decision on the complaint and forward the decision to the Provider within fourteen (14) calendar days of its appointment. This is provided under Article 37.

This rule allows the parties to settle their dispute amicably. Once the parties agree on settlement the domain name dispute resolution proceedings may be terminated. This is provided under Article 42.

Communication of Decision to Parties

This is provided under Chapter VII from Articles 43 to 44. It demands the communication of decisions made by the panel to the parties.

Article 43 provides that

within three (3) calendar days after receiving the decision from the Panel, the Provider shall communicate the full text of the decision to each Party, the concerned Registrar(s), and ICANN.

The concerned Registrar(s) shall immediately communicate to each Party, the Provider, and ICANN the date for the implementation of the decision in accordance with the Policy.

Effect of Court Proceedings

(a) In the event of any legal proceedings initiated before or during an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding or to proceed to a decision.

(b) In the event that a Party initiates any legal proceedings during the pendency of an administrative proceeding in respect of a domain-name dispute that is the subject of the complaint, it shall promptly notify the Panel and the Provider.

Conclusion

All ICANN-accredited registrars follow a uniform dispute resolution policy. The above discussion revealed that the policy does not bar the court process. With that policy, disputes over entitlement to a domain name registration may ordinarily be resolved by court litigation between the parties claiming rights to the registration.

Once the court rules who is entitled to the registration, the registrar will implement that ruling.

In disputes arising from registrations allegedly made abusively (such as ‘cybersquatting’ and ‘cyberpiracy’), the uniform policy provides an expedited administrative procedure to allow the dispute to be resolved without the cost and delays often encountered in court litigation. In these cases, you can invoke the administrative procedure by filing a complaint with one of the dispute-resolution service providers.

Isack Kimaro

Editor-in-chief and founder of sherianajamii.com. Holder of Bachelor of Laws (LL.B) from Mzumbe University and Post Graduate Diploma in Legal Practice from the Law school of Tanzania. Lawyer by profession and blogger by passion.

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