Domain Names and UDRP Henry Olsson Purpose of the presentation • The purpose of the presentation is – not to provide technical details about domain names and their registration – but instead to deal with how conflicts between domain names and trademarks can be solved Domain names • The domain name system – is a naming system for use on the Internet – is a kind of ”phone book” for the Internet – A domain name is recognizable for the human eye but in fact refers to an Internet address – for instance 184.108.40.206. Domain names • A domain name consists of – a word that can be chosen freely – and a ”top-level domain (TLD) name • which can be either a generic top level domain (gTLD) consisting of three or more characters, or • a country code top-level domain (ccTLD) consisting of two characters. Domain names • ”gTLDs” are – .com – .net. – .org – .info – .mobi – .biz • etc. and more are coming. Domain names • ”ccTLDs” are, for instance,.se, .ch. • and corresponding for your countries. Domain names • Usually a domain name is used for identifying a home page, • for instance ”prv.se” or ”olsson- koskinen.com” Domain names • To access the home page also ”www” (for ”World Wide Web”) has to be used (e.g.www.prv.se). • Rights in a domain name is obtained through registration with a Registrar (e.g.”prv.se”) Domain names • Domain names are also often used in e- mail addresses: – firstname.lastname@example.org Cybersquatting • Domain names can be economically very valuable • and have a considerable advertising and marketing potential. • Becuse the freedom to chose any word for the main part of the domain name • often unscrupulous persons take another person´s trademark och put it into their own domain names (”cybersquatting”). Cybersquatting • May have undesirable consequences • and leads to losses for the owner of the trademark • Sometimes such websites take a visitor to the websites of other persons who thus use the reputation of the original trademark owner for their own purposes. Administration of domain names • Overall responsibility for managing the domain name system lies with • The Internet Corporation for Assigned Names and Numbers (ICANN) • ICANN is a US private entity. • Under the supervision of ICANN a number of Registries operate that carry out the registration of domain names. Conflicts between domain names and trademarks • In some countries cybersquatting is explicitly dealt with in law • Example: the Anticybersquatting Consumer Protection Act of the United States • The Trademarks Act of India. Conflicts • All Registries acredited by ICANN are bound to include in the registration agreement a clause • for the registrant to comply with a mandatory arbitration procedure • in case someone challenges the ownership of the domain name • for instance, because it includes a trademark. Conflicts • The Uniform Domain Name Dispute Resolution Policy (UDRP) • was approved by ICANN in 1999 • and has to be included by reference in all registration agreements UDRP • A mandatory administrative proceeding shall be initiated if a complainant claims – that the domain name is identical or confusingly similar to a mark in which comlainant has rights – that the domain name holder has no rights or legitimate interests in the the domain name – that the domain name has been registered and is being used in bad faith. UDRP • UDRP also includes some indications of which circumstances would constitute – evidence of registration and use in bad faith – failure to demonstrate rights and legitimate interests in the domain name. UDRP • There are several providers of dispute resolution services. • The most important one is the WIPO Arbitration and Mediation Center. • A dispute resolution takes place before a panel • normally one person but, if so requested, three persons. UDRP • Remedies: • the domain name can be – cancelled, or – transferred to the complainant • depending on what complainant has requested. UDRP • A decision by the Panel to cancel or transfer a domain name • is implemented after ten business days have lapsed from the decision • (to give time to go to Court to contest the decision). UDRP • According to WIPO Statistics – 85 % of the decisions lead to cancellation/transfer – 15 % to denial of the complaint. UDRP • Since the introduction of UDRP ten years ago – WIPO has dealt with around 15 000 cases – and received in 2008 2 329 complaints. – This shows that the UDRP has proved to be a cost-effective, quick and reliable way of solving disputes between trademarks and domain name owners.