Glossary of Domain Name Disputes by Hagit Ben-Artzi
The domain name dispute resolution system was supposed to be user-friendly, but
this goal has not always been achieved. One of the main barriers to effective
access has been the jargon that has grown up around the system. To successfully
negotiate the system you must need to know the differences between registrants,
registrars and registries; you must not confuse your UDRP with your ACPA; and
you'll need to be able to choose between NAF and WIPO should it become
necessary.
This glossary is intended to help you get to grips with the jargon; if you need
more information, please visit the
Internet Library of Cybersquatting and Domain Name Disputes
.
Abusive registration:
This is a key concept under the Nominet Dispute Resolution Policy; there is no
concept of an abusive registration under the UDRP (although see the entry on
bad faith). An abusive registration is one which was registered or acquired or
has subsequently been used "in a manner which took unfair advantage of or was
unfairly detrimental to the Complainant's Rights".
ACPA:
See the entry on the Anti-Cybersquatting Protection Act.
ADR:
ADR stands for alternative dispute resolution. In the domain name dispute
context, arbitration proceedings are sometimes called ADR proceedings,
especially in EURid documentation.
Alternative dispute resolution:
See the entry on ADR.
Anti-Cybersquatting Protection Act:
A US law enacted on 29 November 1999. It amended the Lanham Act - the
centrepiece of US trade mark legislation - and forms section 43d. The ACPA may
- in certain circumstances - be applied to your case by the US courts, even if
you're not a citizen of or based in the US.
Arbitration:
Domain name arbitration is the contractually-based system of dispute resolution
used to determine disputes about the proper ownership of domain names. It is
distinct from traditional arbitration: a sophisticated system of private
dispute resolution proceedings commonly used to determine international
contractual disputes.
Bad faith:
Under the UDRP a successful complainant must prove that the domain name was
registered or is being used in bad faith. The concept of bad faith is not
defined in the UDRP; however four examples of circumstances which are evidence
of bad faith are given, and I have (crudely) summarised these below. First,
circumstances indicating that the respondent intended to sell the domain name
to the complainant are evidence of bad faith. Second, so-called "blocking"
registrations are evident of bad faith, providing they are part of a pattern of
such registrations. Third, evidence of bad faith may be found in registrations
intended to disrupt a competitor's business. Finally, circumstances indicating
the commercial use of a domain name which creates a likelihood of confusion
between the domain name and the complainant's mark are evidence of bad faith.
The list is non-exhaustive.
Cancellation:
One of the remedies permitted under the UDRP, Nominet Policy, and the .eu
Regulation, but rarely employed. The usual remedy is transfer. Cancellation is
also known as revocation.
ccTLD:
This stands for country code top level domain. Examples of ccTLDs include .us,
.uk and .de.
Complainant:
The person making a complaint via a domain name arbitration service about a
domain name registration (analogous to a plaintiff or claimant in litigation).
Complaint:
The document setting out the complainant's case. There are detailed rules about
what must go into a complaint, and the length of complaints is strictly limited
under some regimes. Typically, a complaint would include references to the
provisions of the relevant policy document, a description of the factual
circumstances of the case, arguments as to why the case should be found in the
complaint's favour, and references to previous decisions which support the
arguments.
Cybersquatting:
The practice of improperly registering or acquiring domain names in which
others have rights.
Decision:
The domain name dispute equivalent of a court judgment. There is no formal
system of precedent in domain name arbitration. However, the arbitration bodies
are loath to allow a diversity of interpretations of their rules, and in
practice panelists will not usually depart from well-reasoned earlier decisions
(or at least that they know about).
Domain name holder:
Another name for a registrant.
EURid:
The body administering the .eu domain name. The EURid dispute resolution
service is provided by the Prague-based Arbitration Court attached to the
Economic Chamber of the Czech Republic and Agricultural Chamber of the Czech
Republic.
Expert:
The Nominet term for panelists - the "judges" of the domain name dispute
resolution system. Most experts are practising intellectual property lawyers.
Federal Trademark Dilution Act:
US legislation providing a powerful remedy for the owners of famous trade
marks. The FTDA was enacted in 1996. It was the first statutory amendment of
the US Lanham Act to address the challenges presented by the internet. Its main
effect was to expand the protection available to famous marks by prohibiting
dilution.
FTDA:
See the entry on the Federal Trademark Dilution Act.
gTLD:
This stands for generic top level domain. Examples of gTLDs include .com, .net
and .org. Compare ccTLDs.
ICANN:
The Internet Corporation for Assigned Names and Numbers (ICANN) administers the
domain name system. It has promulgated no less than 10 different policies
relating to dispute resolution. The most important policy is the Uniform Domain
Name Dispute Resolution Policy (the UDRP). The UDRP must be read in conjunction
with the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules).
ICANN's other dispute resolution policies relate, for instance, to specific
kinds of domain name with particular registration requirements (e.g. .pro or
.biz), the .info sunrise period, and disputes with registrars over domain name
transfers.
IDNs:
See the entry on Internationalised Domain Names.
Internationalised Domain Names:
A domain name potentially containing non-ASCII characters, for example a domain
name consisting of Arabic or Hebrew characters.
Legitimate Interests:
To help defeat a complaint made under the URDP, a Respondent should argue that
he or she has legitimate interests in the domain name in dispute. A
non-exhaustive list of ways of demonstrating a legitimate interest is set out
in the UDRP. First, pre-dispute use of (or preparations for the use of) the
domain name or a name corresponding to the domain name "in connection with a
bona fide offering of goods or services" may constitute a legitimate interest.
Second, you or your business being commonly known by the domain name may
constitute a legitimate interest. Third, a legitimate non-commercial or fair
use of the domain name may constitute a legitimate interest, providing that use
does not misleadingly divert consumers of the complainant or tarnish the trade
mark at issue.
NAF:
The National Arbitration Forum is a major forum for the resolution of domain
name disputes. NAF focuses upon North American domain name disputes.
Arbitration proceedings using NAF are governed by the UDRP, the Rules and NAF's
Supplemental Rules. NAF also provides non-UDRP dispute resolution services, for
example for disputes about .us and .kids.us domain names.
Mediation:
Mediation is a form of alternative dispute resolution where the parties to a
dispute try to agree a settlement to the dispute with the help of a
professional facilitator. The Nominet Dispute Resolutions Service provides a
free mediation service.
Mutual jurisdiction:
This concept is used in the UDRP and other policies to refer to the
jurisdictions in which formal court proceedings should be conducted in the
event that domain name arbitration proceedings do not produce a satisfactory
outcome. Under the UDRP it means either the courts of the country in which the
relevant registrar is based or the courts in the country which the registrant
claims to be based in its WHOIS entry.
Nominet:
The Nominet dispute resolution service deals with disputes involving .uk domain
names (including .net.uk, .ltd.uk, .plc.uk, .co.uk, .org.uk and .me.uk).
Nominet does not use the UDRP; instead, disputes are determined under Nominet's
own Policy and Procedure.
Panel:
One or three panelists usually constitute the panel.
Panelists:
The judges of the domain name dispute resolution system. Many are practising
intellectual property lawyers; many NAF panelists are retired US judges.
Party:
Legalese meaning a person who is involved in legal proceedings as a litigant.
In the context of domain name arbitration proceedings, that means involvement
as either a complainant or a respondent.
Passing off:
The English-law tort of passing off has been inherited many other common law
jurisdictions. It is sometimes referred to (with some carelessness) as
"unregistered trade mark infringement". The registration and use of a domain
name can constitute passing off.
Policy:
The UDRP and the Nominet Policy are the most important documents in UDRP and
Nominet arbitrations respectively. The equivalent rules in .eu arbitrations are
contained in the Regulation.
Procedure:
The Nominet Procedure contains the detailed rules governing the conduct of
Nominet domain name arbitrations - for example, time limits for action.
Provider:
The company or organisation that administers a domain name dispute resolution
service. Some systems of domain name dispute resolution, such as the UDRP
system, have more than one provider; others, such as the .eu system, have only
one provider.
Registrar:
A company or organisation that is accredited by a registry to register domain
names.
Registrant:
The person that "owns" (i.e. has the contractual right to use) the domain name.
The registrant of a domain name can be found using a WHOIS service.
Registration agreement:
The agreement entered into between a registrar and a registrant upon the
registration or acquisition of a domain name. The registration agreement
stipulates the manner of dispute resolution, and therefore underpins the whole
domain name dispute resolution system.
Registration authority:
See Registry.
Registry:
The organisation administering the domain name extension in question. For
example, Nominet it the .uk registry and EURid is the .eu registry. Sometimes
called the registration authority.
Regulation:
In the context of .eu domains, this means Commission Regulation (EC) No
874/2004 of 28 April 2004 laying down public policy rules concerning the
implementation and functions of the .eu top level domain and the principles
governing registration.
Reply:
The document in Nominet proceedings containing the complainant's arguments in
response to the respondent's arguments in the response. It should not in
general contain new arguments unrelated to points raised in the response. There
is no equivalent in the UDRP or .eu procedures.
Response:
The document containing the respondent's arguments in response to the
complaint.
Respondent:
A person responding to a formal complaint about his or her domain name
registration (analogous to a defendant in legal proceedings).
Reverse domain name hijacking:
The improper use of domain name arbitration proceedings to dispossess a
registrant of his or her domain name.
Revocation:
See cancellation.
Rights:
In Nominet proceedings, a complainant must show that he or she has rights in
respect of a name or mark which is identical or similar to the domain name at
issue. The Nominet Policy provides that rights "includes, but is not limited
to, rights enforceable under English law. However, a complainant will be unable
to rely on rights in a name or term which is wholly descriptive of the
complainant's business". The most important rights are registered trade marks
and, in English law, the right to bring proceedings for the tort of passing
off.
Rules:
The Rules for UDRP supplement the UDRP itself. The Czech Arbitration Court also
has a set of rules for .eu disputes.
Supplemental Rules:
Under the UDRP, both NAF and the WIPO Mediation and Arbitration Center issue
their own supplemental rules, which supplement the UDRP and the Rules for UDRP,
and include for example provisions about the costs of arbitration. The Czech
Arbitration Court also has a set of supplemental rules for .eu disputes.
Trade Marks Act 1994:
The centrepiece of the UK trade mark law regime, the 1994 Act has been
frequently amended, usually to reflect developments in European law.
Transfer:
The most important remedy in domain name arbitration proceedings. If the panel
determines that a complaint has been made out, the domain name will usually be
transferred from the respondent to the complainant.
Typosquatting:
The practice of improperly registering domain names which are very similar to
names in which others have rights. A form of cybersquatting.
UDRP:
The Uniform Domain Name Dispute Resolution Policy promulgated by ICANN
governing most disputes about generic top level domains, and many disputes
about country code top level domains. The UDRP must be read in conjunction with
the Rules for Uniform Domain Name Dispute Resolution Policy.
WHOIS:
Directory service for looking up names and other details of domain name
registrants.
WIPO:
The World Intellectual Property Organization (WIPO) is an agency of the United
Nations. WIPO's Arbitration and Mediation Center was the first dispute
resolution service accredited by ICANN. Arbitration proceedings using WIPO are
governed by the UDRP, the Rules and WIPO's Supplemental Rules. It is - along
with NAF - one of the "big two" providers of dispute resolution services under
the UDRP.
About the Author
Hagit Ben-Artzi runs Sequitur IPS, which represents individuals and companies
involved in domain name disputes and domain name arbitration proceedings.
Please visit our website for more
information.
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