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| New Domain Name Dispute Policy Goes into Effect As of January 1, 2000, all trademark and service mark holders looking to file Internet domain name challenges will be proceeding under a new Uniform Dispute Resolution Policy adopted by the Internet Corporation for Assigned Names and Numbers (ICANN). In its first substantive policy move since relieving Network Solutions Inc. of its exclusive control over domain name registration and supervision, ICANN adopted a new Policy which invokes an arbitration-type procedure in hopes of streamlining many domain name disputes. All new registrants of domain names consent to the new dispute rules by agreeing to the revised contracts imposed by NSI and all other new registrars. Participants in domain disputes previously-filed before NSI should be aware that all names which were placed on hold under the terms of NSI's previous domain dispute policy will be reactivated after NSI notifies both the registrant and complainant, sometime during the first quarter of the year, unless NSI receives either a file-stamped copy of a court complaint or a copy of a complaint filed against registrant under the terms and conditions of the new Policy. To challenge an existing registration, the holder of any federally registered, state or common-law mark may now either file a lawsuit or invoke the new policy by serving a dispute notice and paying a $1,000 filing fee. In order to succeed under the new dispute policy, a complainant must prove that: • the registrant's domain name is confusingly similar to the complainant's mark;Bad faith may be evidenced by a number of factors, including the registrant's offer to sell the challenged domain for more than his out-of-pocket registration costs, a pattern of registering domain names which include other party's trademarks, or evidence that the challenged domain name was registered to attract visitors for commercial gain by creating a likelihood of confusion with the complainant's mark as to the source, affiliation or endorsement of the registrant's site, services or products. A registrant is required to submit to the mandatory arbitration proceeding if a complainant properly alleges each of those three elements. However, a complaint under the new Policy may be defeated if the registrant demonstrates: • use of the domain name in connection with a bona fide offering of goods or services prior to receipt of the dispute notice;The new ICANN policy is a mixed bag for trademark holders when compared to the old NSI policy. On the positive side, the new policy presents the opportunity to fully resolve disputes in a matter of weeks or a few months. Substantively, a complainant's success no longer requires the existence of a formally registered trademark "identical" to an allegedly infringing domain name. The new policy can thus be invoked against infringers who employ some of the more common intentional confusion tricks on the Web: use of misspellings, dashes, and other confusingly similar variations on a trademark. On the down side, complainants must be wary of the new policy's second element, that the current registranthas "no rights or legitimate interests" in the relevant domain name. This requires some additional detective work up front to eliminate any less than obvious arguably legitimate interests in the name. If the trademark holder is not certain he can clear this hurdle, it would be wiser to avoid the new ICANN policy and to instead sue in federal court under the Lanham Act and the new Anti-Cybersquatting Act which have broader application to both unintentional and intentional infringement. The new policy also strictly limits available remedies to cancellation or transfer of the existing domain name once the administrative panel issues its final ruling. The ICANN policy offers neither temporary restraining orders available in federal court nor even the old hold and a "pox on both your houses" that was provided whenever a dispute was filed under the former NSI policy. That means that infringers may continue to do damage while an arbitration panel is chosen and a dispute is decided. Nor does the new policy provide for any monetary damages or attorneys' fees (despite the significant filing fee). Under the Lanham Act and Anti-Cybersquatting Act, a range of monetary penalties are available. The choice between streamlined arbitration and a potentially drawn-out court battle comes down to how badly the infringer has behaved and the type of punishment that the trademark holder seeks to mete out. If the registrant has apparently acted in bad faith and simple transfer or cancellation of the domain name within a few months is sufficient punishment, then the new ICANN policy is the most cost effective route. However, the federal courthouse is the place to go when bad faith is not clear, and where the trademark holder needs either the immediate relief of a potential temporary restraining order, or some form of monetary recovery or if more than a domain name is in issue and the trademark holder needs to enjoin brick-and-mortar uses as well. © 2000 Davis & Gilbert LLP |
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