Domain names

WHAT IS A DOMAIN NAME

According to the WIPO, domain names are the human-friendly forms of Internet addresses, and are commonly used to identify Internet resources and find web sites, thanks to a text-based label that is easier to memorize than the numerical addresses used in the Internet protocols. They are formed by the rules and procedures of the Domain Name System (DNS) and organized in subordinate levels (subdomains) of the DNS root domain. The first-level set of domain names are the top-level domains (TLDs), including the generic top-level domains (gTLDs), such as the most common domains .com, .info, .net, .edu, and .org, and the country code top-level domains (ccTLDs) such as .es, .fr, .de or .it among many others. Below these top-level domains in the DNS hierarchy are the second-level and third-level domain names.

The registration of domain names is usually administered by domain name registrars who sell their services to the public. Registrars are entitled to delegate the right to use a domain name, following the rules of the Internet Corporation for Assigned Names and Numbers (ICANN), the organization in charge of overseeing the name and number systems of the Internet.

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DOMAIN NAMES DISPUTES

Domain names have acquired a further significance as business identifiers and, as such, have come into conflict with the system of business identifiers that existed before the arrival of the Internet and that are protected by intellectual property rights. Thus, the use of domain names in commerce may subject them to trademark law.

Domain name disputes arise mostly from a practice called “cybersquatting”, which involves the pre-emptive registration of trademarks by third parties as domain names. As WIPO points out, cybersquatters exploit the first-come, first-served nature of the domain name registration system to register names of trademarks, famous people or businesses with which they have no connection, and as the holders of these registrations they often then put the domain names up for auction, or offer them for sale directly to the company or person involved, at prices far beyond the cost of registration. Alternatively, they can keep the registration and use the name of the person or business associated with that domain name to redirect traffic to their own sites.

In 1999 the ICANN adopted the Uniform Domain Name Dispute Resolution Policy (UDRP). If a trademark holder considers that a domain name registration infringes on its trademark, it may initiate a proceeding under the UDRP, and the registrant is obliged to submit to such proceedings. Complainants to file a case with a resolution service provider, specifying, mainly, the domain name in question, the respondent or holder of the domain name, the registrar with whom the domain name was registered and the grounds for the complaint. Such grounds include three main criteria:

• The way in which the domain name is identical or similar to a trademark to which the complainant has rights;
• Why the respondent should be considered as having no rights or legitimate interests in respect of the domain name that is the subject of the complaint; and
• Why the domain name should be considered as having been registered and used in bad faith.

The respondent is offered the opportunity to defend itself against the allegations. The resolution service provider (eg: the WIPO Arbitration and Mediation Center) appoints a qualified neutral panelist who decides whether or not the domain(s) should be transferred to the complainant. As a result of the procedures, a domain name is either transferred or the complaint is denied and the respondent keeps the domain name. It is also possible to seek cancellation of the domain name. There are no monetary damages applied in UDRP domain name disputes, and no injunctive relief is available. The panel decisions are mandatory in the sense that accredited registrars are bound to take the necessary steps to enforce a decision, such as transferring the name concerned.

Dispute resolution at WIPO is much faster than normal litigation in the courts. A domain name case filed with WIPO is normally concluded within two months, using on-line procedures, whereas litigation can take much longer. Fees are also much lower than normal litigation [source: wipo.int].

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OUR LEGAL ADVICE

Domènech Corbella – Legal Services offers professional advice on all kind of issues related to domain name disputes, including:

1. Negotiation and resolution of conflicts related to domain names
2. Filing of out-of-court claims before resolution service providers such as the WIPO
3. Filing of court complaints