One of the main purposes of the UDRP is to provide a quick, cheap, and easy means to adjudicate domain name disputes between trademark holders and bad faith registrants of domain names. Whereas litigation of a domain name dispute in court can be protracted and, in some cases, prohibitively expensive, resolution of a dispute under the UDRP takes only 45 days and can cost as little as $750. Further, by providing a uniform set of guidelines, the UDRP mitigates the jurisdictional and jurisprudential problems that may accompany international prosecution of a complaint. With its eye for speed and ease of use, the UDRP procedures for filing and responding to a complaint are accordingly streamlined and straightforward. Moreover, though legal counsel may be helpful--particularly with respect to the substantive intellectual property rights at stake, the procedure for filing a complaint and response were designed so that they might be used without legal assistance.
The UDRP is an optional procedure for a mark owner. It is mandatory on domain holders, imposed under the terms of all the com-org-net registrar agreements. See Network Solutions, Inc. Service Agreement, for example. It is imposed on the registrars by virtue of their Accrediation Agreement Section III(J) with the Internet Corporation for Assigned Names and Numbers (ICANN). See Overview for the history and development of the domain dispute policy.
What follows is a step-by-step guide to preparing a complaint and response. The goal of this section is to provide the practitioner (or the pro se filer) with a general feel for the filing procedure. Participants who have already filed complaints and responses under the UDRP and are therefore familiar with the mechanics of the filing rules should feel free to skip ahead to the section on Remedies and the Right to Litigate and continue with the program from there. Please note that in addition to the general UDRP rules governing the filing and administration of a complaint, each of the three ICANN-approved providers has its own supplemental rules--all of which include strict page limits and payment schedules. Before filing a complaint, the Complainant should consult its chosen Provider's supplemental rules to be certain that the complaint is in full compliance. Failure to comply with either the general UDRP rules or the Provider's supplemental rules may result in a dismissal of the complaint under Rules 4(a) and (b). For more information and the specific wording of the UDRP rules, see the complete text of the Rules for Uniform Dispute Resolution Policy. For the complete text of the supplemental rules of a specific Provider, see Supplemental Rules
The following timeline provides a sense of the pace of a UDRP proceeding. Though the panel has the discretion to extend the time restrictions under exceptional circumstances, in most cases, disputes are resolved within 60 days of filing. To see the process in flowchart form, see the WIPO Guide to the Uniform Dispute Resolution Policy, Topics B.
Day 0: The complainant files a complaint with the provider of his choice and sends a copy to the respondent (holder of the domain name) at the address shown on the registrar's Whois database. See How to Search for Domain Name Holders and Patterns of Registration. At this point, the provider reviews the complaint for compliance with the UDRP rules and the provider's own supplemental rules. If the complaint is in compliance, the proceeding continues; if the complaint is deficient, the complainant has 5 days to remedy the deficiencies or the complaint will be deemed withdrawn.
Day 3: By this time the provider must send a copy of the complaint to the registrar of the domain name in question and a copy to the respondent.
Day 23: Within 20 calendar days of the formal commencement of the administrative proceeding, the respondent must respond specifically to the allegations in the complaint and offer any bases for the retention of the domain name. The respondent will be deemed to have defaulted if no response is filed within this 20-day window.
Day 28: After the receipt of the respondent's response to the complaint, the provider has 5 days to appoint a panel.
Day 42: A decision will be rendered within 14 days of the panel's appointment.
Day 45: The panel has 3 days to notify the parties of the decision.
10 business days later: Unless the adversely affected domain name holder has filed suit in a court of mutual jurisdiction by this date, the registrar will implement the decision of the panel, canceling or transferring the domain name according to the remedy sought in the complaint.
1. Submit the complaint in hard copy and (except to the extent not available for attachments) by email, requesting that the complaint be submitted for decision in accordance with the UDRP. Rule 3(b)(i).
See Choosing a Provider below. Most Providers have electronic templates on their web sites for this purpose.
2. Provide the name, postal and e-mail addresses, and telephone and fax numbers of the Complainant and of any representative authorized to act for the Complainant in the proceeding. Rule 3(b)(ii).
3. Specify the preferred means of communication with the Complainant, specifically stating the person to be contacted, the medium for contact and the address information. Both postal and electronic mail addresses must be provided. Rule 3(b)(iii).
One limitation of e-mail communication is that there is no way to determine whether the recipient has actually received the message. Email is deposited on the recipien's server, but the recipient may not collect it for some time. If the message has gone to the wrong location, through some unknown technical error, the sender may or may not receive a mailer daemon notice of the error. Some email software includes a "Receipt" capability that will notify the Sender when the mail is actually opened, however, it will not reveal the identity of the party who actually opened the message. Fax machines will immediately report a failure of receipt. Post, of course, can be sent under certification with a return receipt requested, but this may take an exceptionally long time in some regions of the world.
4. Designate whether the Complainant elects to have the dispute decided by a single-member or three-member Panel. If a single-member Panel is elected, the Provider will choose the Panelist. Rule 6(b). If electing a three-member Panel, provide the names and contact details of three candidates to serve as one of the Panelists. These candidates may be drawn from any ICANN-approved Provider's list of panelists and need not be limited to the Provider chosen. Rule 3(b)(iv). The Provider will attempt to choose from this list. The second Panelist will be chosen from the Respondent's list of three candidates (from any ICANN-approved Provider). The third Panelist will be chosen by the Provider, balancing the preferences of each party. Rule 6(e). If the nominees cannot serve, then the host Provider may pick a substitute.
There is presently no way for a party to determine in advance whether his/her preferred panelists are (1) willing to serve or (2) able to serve without any conflict.
5. Provide the name of the Respondent (domain name holder). Include the postal address, e-mail address, telephone and fax numbers, and any other information which will allow the Provider to send the complaint and provide notice to the Respondent in accordance with Rule 2(a). Rule 3(b)(v).
One is only required to use the Respondent's contact information as listed on the domain registration records.
6. Specify the domain name that is the subject of the complaint. More than one domain name may be included, provided that the additional name(s) is/are registered by the same domain-name holder. Rule 3(b)(vi).
See How to Search for Domain Name Holders and Bulk Registrants, below, to find additional registrations that might have been made by the Respondent. This may be a difficult task.
7. Identify the registrar(s) with whom the name(s) is/are registered. Rule 3(b)(vii).
The Rules require that the proceedings and all communications be conducted in the same language as the domain registration agreement. See Rule 2(d) and Rule11 for exceptions.
8. Specify the trademark(s) or service mark(s) on which the complaint is based. Describe the goods or services, if any, with which the mark is used. The Complainant may also describe other goods or services which it intends, at the time the complaint is submitted, to use the mark in the future. Rule 3(b)(viii).
Certified copies of trademark registrations are not required at this time, photocopies are apparently sufficient. Copies of the web page results of a USPTO Web Trademark Database have been used.
9. Describe the grounds on which the complaint is made. In particular, the Complainant must describe:
(1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(2) why the Respondent should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and
(3) why the domain name(s) should be considered as having been registered and are being used in bad faith.
The requirement here is a conjunctive one: the Complainant must allege all three grounds in order to seek relief under the UDRP. These grounds are not coextensive with the elements of bad faith, but rather speak to ICANN's intention for the UDRP to apply only to those disputes in which the above-mentioned grounds for relief are present. Elements (2) and (3) address the Respondent's bad faith specifically, and the description should include a discussion of any aspects of Sections 4(b) and 4(c) of the Policy that are applicable. See the Sections on Bad Faith and Rights and Legitimate Interest for a discussion of these terms. Published UDRP opinions may be searched for reference.
The description should comply with any word or page limits set forth in the Provider's supplemental rules.
10. Specify the remedies sought. Note that there are only two remedies available under the UDRP: cancellation of the domain name or transfer of the domain name registration to the Complainant. There is no provision for fines or punitive damages. The remedies need not be the same for all of the domain names in question. Rule 3(b)(x), Policy 4(i).
Not all mark owners want to bear the cost of maintaining the registration for the disputed domain name (for example, those that are misspelled words that closely resemble the mark and are used to lure consumers away from the legitimate owner's site). However, if the only remedy requested is cancellation, the domain becomes publicly available for re-registration by anyone else. Such subsequent registration and use may also be in bad faith and necessitate a new proceeding, the cost of which would likely exceed the cost of maintaining a transferred domain registration. See Implementation of Remedies and the Right to Litigate, below.
11. Identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain names that are the subject of the complaint. Rule 3(b)(xi).
This should include any pending applications for trademark registration.
12. State that a copy of the complaint, together with the cover sheet as prescribed by the Provider's supplemental rules, has been sent or transmitted to the Respondent (domain-name holder), in accordance with Rule 2(b), which requires that in the absence of a stated preference by the party, written communication will be sent:
(i) by telecopy or facsimile transmission, with a confirmation of transmission; or
(ii) by postal or courier service, postage prepaid and return-receipt requested; or
(iii) electronically via the Internet, provided a record of its transmission is available. Rule 2(b)(i-iii).
Note that because the complaint will necessarily be filed before the Respondent has had an opportunity to specify a preferred means of communication, the Complainant can satisfy the transmission requirements of Rule 3(b)(xii) by simply emailing the complaint (along with the requisite cover sheet) to the Respondent, who may or may not be actively checking the account due to holiday or vacation. Given the short and strict timelines of the UDRP, some commentators have found this prospect quite troubling. See, for example, A. Michael Froomkin, "Major Flaws in the WIPO Domain Name Proposal--A Quick Guide", "A Commentary on WIPO's The Management of Internet >Names and Addresses: Intellectual Property Issues" (long version) and Comments on ICANN Uniform Dispute Policy.
13. State that the Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction. Rule 3(b)(xiii). Mutual Jurisdiction is defined as "a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider." Rule 1 Definitions.
See, for example, NSI's Service Agreement, Section 24 which binds the domain holders "to subject matter jurisdiction, personal jurisdiction and venue of the United States District Court for the Eastern District of Virginia, Alexandria Division and the courts of your domicile" in regard to domain name disputes. The com-org-net registrars are required to impose these terms on their customers.
The Respondent whose registration is cancelled or transferred under the UDRP has only 10 days from the date that the opinion issues in which to appeal to such a court. Complainants and Respondents should consult counsel as early as possible during the procedure.
14. Conclude with the following statement followed by the signature of the Complainant or its authorized representative:
"Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute's resolution shall be solely against the domain-name holder and waives all such claims and remedies against (a) the dispute-resolution provider and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents.
"Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."
15. Attach any documents or other evidence, including a copy of the registrar's dispute policy applicable to the domain name(s) in dispute and any trademark or service mark registration upon which the complaint relies, together with a table of contents indexing such evidence. Rule 3(b)(xv).
The supplemental rules limit the number of pages in the pleadings, but there is no corresponding restriction at present on the number of exhibits that may be attached.
16. Pay the appropriate fees within the time required, as stipulated in the Provider's supplemental rules.
The Complaint is not forwarded to the Respondent, nor does the response clock start ticking until three days after the fee is received. Rule 4(a).
Filing a Response
By far the most important procedural element of the response is its timing. Rule 5(a) requires that a proper response be submitted to the Provider within 20 calendar days of the commencement of the administrative proceeding. For timing purposes, the formal administrative proceeding begins when the complaint has been found non-deficient, payment has been made by the Complainant, and the Provider has formally notified the Respondent. Failure to submit a proper response within 20 days will be deemed a default by the Respondent. The consequences of late-filing can be devastating: first, the Panel is under no obligation to view a late-filed response (though it has discretion to do so under exceptional circumstances) and may make its decisions in the absence of any response; second, the Provider is not required to honor a Respondent's election of a three-member panel if filed late; third, the Provider need not consider the Respondent's designations as to candidates for the three-member Panel, should one be elected; and fourth, the Provider need not honor the Respondent's preferred means of communication. In short, if a party wishes to defend itself and stand any chance of retaining its domain name, it must file a proper response within the allotted time period.
It is not clear whether the response time is delayed in cases where the Complaint has found to be deficient under Rule 4. The Provider is not supposed to forward the Complaint (and start the clock ticking) until the Complaint has been found "in compliance." However, if the deficiencies are not detected until after the Complaint is forwarded, there is no mention of the effect on the Respondent's obligation.
Extensions can and have been permitted by individual panelists, particularly where language barriers or other barriers have existed.
Because of the short response time, and because Respondent has only 10 days to file an appeal in court following an adverse UDRP opinion, it is advisable to consult legal counsel as soon as the initial copy of a Complaint is received.
1. The response should be submitted in both hard copy and (except to the extent not available for attachments) by email. It must respond specifically to the statements and allegations contained in the complaint and include any and all bases for the Respondent to retain registration and use of the disputed domain name. Be sure that this portion of the response complies with the word and page limits set forth in the Provider's supplemental rules. Rule 5(b)(i).
Any of the following circumstances, if found to be proven by the response and evidence provided, will demonstrate "rights and legitimate interests in the domain name" sufficient to bar transfer or cancellation of the domain name under the UDRP:
(i) Before any notice to the Respondent of the dispute, the Respondent's use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights; or
(iii) The Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The Respondent should note that this is a list of only those defenses specifically enumerated in the UDRP. Other defenses may prove successful and should certainly be tendered if likely to prove that the domain name owner had 'rights and legitimate interests in the domain name. See the Section on Rights and Legitimate Interests and the UDRP opinion search engine for more current opinions.
Some Panelists have permitted the Complainant to submit additional pleadings in rebuttal to the response, even though this material was not specifically requested by the Panel as specified in Rule 12. The National Arbitration Forum has added a "last word" -- a reply paper which any party may file as of right -- within five days of the respondent's Response, upon payment of a $150 fee. NAF Supplemental Rule 7
2. Provide the name, postal, and e-mail addresses, and telephone and fax numbers of the Respondent and of any representative authorized to act for the Respondent in the administrative proceeding. Rule 5(b)(ii)
3. Specify a preferred method of communication for correspondence directed at the Respondent during the administrative proceeding. The respondent should specify the name of the person to be contacted, the medium for communications, and all of the relevant address information for both electronic-only material and material including hard copy. Rule 5(b)(iii). See Filing a Complaint Step 3 above.
4. If the Complainant has elected a single-member Panel under Rule 3(b)(iv), state whether the Respondent elects instead to have the dispute decided by a three-member Panel. Rule 5(b)(iv). If (and only if) the Respondent elects a three-member Panel over the Complainant's election of a single-member Panel, the Respondent must pay one-half of the fees for the Panel. See the chosen Provider's supplemental rules for details. If the Respondent is content with the Complainant's election of a single-member Panel, or if the Complainant alone has requested a three-member Panel, the Complainant is responsible for paying the administrative fees in their entirety.
Since the Complainant had the first choice, that of the host Provider, election of a three-member panel may be the Respondent's only means of balancing any perceived advantage from that choice. In doing so, however, the cost to the Respondent for the proceeding goes from zero to at least US$1000.00 (excluding legal services).
5. If either the Complainant or Respondent elects a three-member Panel, each may provide the names and contact details of three candidates to serve as one of the Panelists. These candidates may be drawn from any ICANN-approved Provider's list of panelists and need not be limited to those panelists affiliated with the host Provider. Rule 5(b)(v). The Provider will make every attempt to appoint one of these candidates to the panel within 5 days, but if none of a Party's choices are available, the host Provider will select a candidate independently.
Respondents are more disadvantaged than Complaints in the choice of panelists. The candidates chosen by the Respondent may not be available to serve, or may be conflicted. There is no present way to determine this in advance of selecting the nominees. If none of a disputant's nominees are available, the the choice defaults to the Provider who was selected, in the first place, by the Complainant. In this situation, the Complainant will have had greater preference in the selection of all panelists.
6. Identify any other legal proceedings that have been commenced or terminated in connection with or relating to the domain name(s) that are the subject of the Complaint. Rule 5(b)(vi). See the Implementation of Remedies and the Right to Litigate section below for more information on the relationship between the UDRP and other legal proceedings.
7. State that a copy of the response has been sent or transmitted to the Complainant, in accordance with Rule 2(b), which requires that a party honor the other's preferred means of communication. In the absence of a stated preference by the opposing party, communications will be sent:
(i) by telecopy or fax, with a confirmation of the transmission; or
(ii) by postal or courier service, postage prepaid and return receipt requested; or
(iii) electronically via the Internet, provided a record of its transmission is available.
8. Conclude with the following statement followed by the signature of the Respondent or its authorized representative:
"Respondent certifies that the information contained in this Response is to the best of Respondent's knowledge complete and accurate, that this Response is not being presented for any improper purpose, such as to harass, and that the assertions in this Response are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."
9. Attach any documentary or other evidence upon which the Respondent relies, together with a table of contents indexing such documents. Rule 5(c).
Fees and Fines
In most cases, the Complainant bears the duty to pay all fees associated with the administrative proceeding. The UDRP does not provide for recovery of fees from the losing party. Only when the Complainant elects a one-member panel and the Respondent requests to expand the panel to three does the Respondent incur any obligation to pay, in which case, the Respondent and Complainant split the fees evenly. Policy 4(g). If the Complainant elects a three-member panel on its own initiative, it bears the full cost of the proceeding.
The UDRP does not authorize Providers to levy fines under any circumstances, even for so-called "reverse domain name hijacking" by the Complainant. If after considering the submissions the Panel finds that the complaint was brought in such bad faith or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding. Rule 15(e).
Implementation of Remedies and the Right to Litigate
The only remedies available under the UDRP are cancellation of the infringing domain name or transfer of its registration to the trademark holder. Upon the conclusion of the proceeding, the Panel has three days to inform the Registrar of its decision, which the Registrar is bound to implement pursuant to both the ICANN Registration Accreditation Agreement and the UDRP. Before implementing the decision, however, the registrar is required to wait ten business days in order to give the adversely affected registrant the opportunity to file a complaint in a court of Mutual Jurisdiction. Policy 4(k). If such an action is brought by a domain name holder, the registrar may not transfer or cancel the name until the conclusion of that suit. Policy 4(k). In order to block the registrar's transfer or cancellation of the domain name while the challenge is pending, the domain name holder must provide official documentation (e.g. a copy of the complaint, file-stamped by the clerk of the court) to the registrar within the ten-day window.
Because the UDRP exists against the backdrop of traditional trademark law, it is important to note that pursuing a claim under the UDRP does not prevent either party from pursuing traditional avenues of litigation or arbitration. The UDRP is not exclusive, and the dispute can be submitted to a court prior to a UDRP decision or after a proceeding has been concluded. Policy 4(k). However, the consequences of submitting the dispute to court in the midst of a UDRP proceeding are unclear. The Rules merely state that in cases where a court action is pending, "the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision." Rule 19(a). Given the newness of the policy, it remains to be seen how much deference either UDRP panels are willing to give foreign (or domestic) judicial proceedings, or how those courts will treat the decision of a UDRP panel. In any event, before filing under the UDRP, the trademark holder should consider the consequences of agreeing to submit to a court of mutual jurisdiction, as any challenge to the panel's decision can be brought in either the jurisdiction of the Registrar or the domain holder, even if the holder may be subject to personal jurisdiction in the jurisdiction of the trademark owner. Rule 3(b)(xiii). For more information, see the module Jurisdiction and the Internet in Prof. William T. Fisher's online series, Intellectual Property in Cyberspace 2000.
Some commentators have questioned the parity of the challenge process, which gives losing registrants only ten days to file a complaint with a proper court, but places no corresponding time restriction on a complainant's ability to seek judicial action. Specifically, some question whether ten business days is enough time for the losing registrant to obtain counsel and file a complaint in an appropriate court. Though the liberal pleading rules of federal courts in the United States and in most European countries offer some support for the viability of this ten-day window, a question remains as to whether stricter pleading requirements in some countries could mean that a registrant might lose his/her domain without their day in court. As University of Miami Law Professor A. Michael Froomkin points out: "The [UDRP] puts all nationals of such countries to an unreasonable choice: they must either give up their home forum by registering with a foreign registrar, or do a great deal of advance legal work before they even know the result of the arbitration if they want to have a meaningful chance of appeal. (Note that the same does not apply to a losing challenger, who can wait as long as he likes before trying for a second bite at the legal apple, subject only to laches or a statute of limitations.)" A. Michael Froomkin, Comments on ICANN Uniform Dispute Policy.
Choosing a Provider
As of July, 2000, there were four ICANN-approved UDRP providers: CPR Institute for Dispute Resolution (CPR), the Disputes.org/eResolutions Consortium (DeC), the The National Arbitration Forum (NAF), and the World Intellectual Property Organization (WIPO). One should consult the ICANN site for the most current list of Providers each of which maintains a public list of its panelists. Though all of the providers apply the general UDRP rules to the disputes, each provider has its own supplemental rules of which both parties should be aware. The following is a brief comparison of the three providers fees.
|Each complaint must be limited to a single Respondent||(WIPO) World Intellectual Property Organization||
(NAF) National Arbitration Forum
CPR Institute for Dispute Resolution
|Fees for Single Panelist (in $US)||
1-5 domains: $1000
|1 domain: $750
2 domains: $1000
2+ domains: $1250
1-2 domains: $2000
| 1-2 domains: $750
3-5 domains: $950
6-9 domains $1300
10-12 domains: $1500
12+ domains: contact DEC
|Fees for Three-Member Panel (in $US)||1-5 domains: $2500
6-10 domains: $3500
10+ domains: contact WIPO
|1 domain: $2250
2 domains: $3000
2+ domains: $3750
1-2 domains: $4500
|1-2 domains: $2200
3-5 domains: $2300
6-9 domains $3200
10-12 domains: $3500
12+ domains: contact DEC
|Additional Fees||For preferred means of communication other than e-mail: $75 for post, $100 for fax, $250 for courier service.|
Complaint: 5000 words
Response: 5000 words
Complaint: 10 pages
Response: 10 pages
Complaint: 10 pages
Response: 10 pages
|Complaint and Response limited to 1200 words (1.5 pages) to address each of the following: domain is identical or confusingly similar, no rights or legitimate interests exist, name was registered and used in bad faith, and other grounds. ( = 4800 words total)|
|Other||When possible, all communications must be submitted electronically, using eResolution's online forms.|
How to Search for Domain Name Holders and Patterns of Registration
In order to file a complaint under the UDRP, the trademark holder must provide the name and contact information of the registrant of the domain name(s) in question. What follows is a guide on how to search for this information, particularly in cases where the registrant in question has registered multiple domain names.
Bulk registration of domain names is one of the hallmarks of cybersquatting and is accordingly listed as one of the enumerated circumstances evidencing bad faith under the UDRP. Paragraph 4(b)(ii) of the Policy states that evidence of bad faith exists where the domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the registrant has] engaged in a pattern of such conduct." (Emphasis added.) Therefore, in filing a complaint, one aspect of bad faith the Complainant may wish to allege is that the domain name owner in question has a pattern of bad faith registration. But how can one determine whether such a pattern exists?
Unfortunately, the process for discovering this pattern is not as simple as one might hope. An authoritative identification of even a single domain name owner may require a two-step process. First one has to go to the official InterNIC Registry database or the NSI Registry database and do a Whois search for a given domain name, for example 'harvard.edu.' If the domain name has been registered, this initial search reveals the registrar of the domain name, but not the individual registrant. For the name and contact information of an individual registrant, one must take a second step, namely go to the separate web site of the registrar identified in the first search (either the Network Solutions registrar database or one of its now many competitors) and do a second Whois search in there. This second step reveals the required contact information about the domain holder. (Click here for a list of ICANN-approved registrars.) Recently, many of the registrars as well as several independent sites have designed software that conflates the two steps into one, allowing anyone to find out the registrant's contact information by just entering the domain name. See Register.com's Check It, www.uwhois.com and www.domainia.org.
However, trademark holders wishing to find out whether a single party has registered multiple domain names are still in a bind. Most of these search engines currently allow searching by domain name, but not by the name of the individual registrant. If the trademark holder already knows what those domain names are (perhaps because they are being auctioned on an Internet auction site or because the registrant has offered to sell them directly to the trademark holder), then the complainant should have no trouble getting the contact information from either the above search engines or through the Whois search functions of the domain name registrars. But if, as is quite likely in the case of cybersquatting, the trademark holder does not know how many or which domains have been registerd nor the various names or entities under which the cybersquatter may have registered the domain names, there is little the in the way of search mechanisms at his/her disposal.
At the moment, the most useful of these is the Whois search function on the Network Solutions registrar database (separate from the NSI Registry database). This allows the trademark holder (or anyone interested in learning how many names someone has registered) to search by a number of criteria, including: name, company name, administrative contact or agent, NIC handle, and nameserver. However, there are currently two limitations on the usefulness of this search. First, when searching by criteria other than the domain name, the search is limited to those names registered through the Network Solutions Registrar. Though this is currently the largest such database, the search will not turn up names registered through the other registrars. Keeping in mind that competition was introduced into the domain name registration industry only last November, as the industry develops, a search only through Network Solutions may not turn up all of the domain names someone has registered. This problem is made more acute now that some competing registrars have specially reduced rates for bulk registration--dropping the price to as low as $10 per domain per year when registering over 2000 domain names. (For an example, go to www.bulkregister.com or to www.bulknames.com, which touts "There has never been an easier way to register 300 or more domain names.") Furthermore, a search by the name of a domain registrant will not always indicate which domains that person has registered.
The second limitation is that Network Solutions limits the search to 50 results. While 50 bad-faith registrations is likely to constitute a pattern under any circumstances, there is no guarantee that the first 50 results are going to demonstrate bad faith by one particular person. Results are not necessarily in alphabetical order. The targeted cybersquatter may not be revealed in the first 50 hits, especially if the name is a common one. Also, a cybersquatter might register in slight variations of his name (John Smith, J. Smith, Smith Productions) and one would need to check other contact data to determine a connection.
To overcome some of these limitations, Network Solutions offers a more extensive search service, known as the Domain Record Retrieval Service (DRRS), which searches the Network Solutions Registrar database for matches to the criteria the customer provides. The service is currently $200 per search. The searching party should note, however, that the search covers only the database of the NSI Registrar, not the more extensive one of the NSI Registry, so that any search conducted through service will not yield information on domains registered through the other ICANN-approved registrars. The fee covers a search for one character string only. One must contact the Network Solutions to obtain this service.
Project Coordinator, Business Affairs Office
Network Solutions, Inc.
505 Huntmar Park Drive
Herndon, VA 20170
The fate of these search limitations and the future access to registration information is unclear. The ICANN Registrar Accreditation Agreement governing all registrars includes a section on public access to registration data which reads as follows:
D. Public Access to Data on SLD Registrations. During the term of this Agreement:
1. At its expense, Registrar shall provide public access on a real-time basis (such as through a Whois service) to those data elements, that are designated from time to time according to an ICANN-adopted policy, concerning all active SLD [Second Level Domain] registrations sponsored by Registrar in the registry for the .com, Net, and .org TLDs. Until ICANN otherwise designates, this data shall consist of:
a. The name of the SLD being registered;
b. The IP addresses of the primary nameserver and any secondary nameservers for the SLD;
c. The corresponding names of those nameservers;
d. The identity of Registrar;
e. The original creation date of the registration;
f. The expiration date of the registration;
g. The name and postal address of the SLD holder;
h. The name, postal address, e-mail address, voice telephone number, and where available fax number of the technical contact for the SLD;
i. The name, postal address, e-mail address, voice telephone number, and where available fax number of the administrative contact for the SLD;
j. The name, postal address, e-mail address, voice telephone number, and where available fax number of the zone contact for the SLD; and
k. Any remark concerning the registered SLD name that should appear in the Whois data.
Registrar Accreditation Agreement, III.D.1.a-k.
The terms of this agreement state only that the registrar will provide public access to the data at the expense of the registrar, but apart from the Whois search suggestion, do not state how that access is to be provided. It remains to be seen whether ICANN will allow the continuation of the current state of affairs in which a majority of the registrars provide a Whois search which allows searches only by domain, but not by registrant or other criteria. Though providing a search by registrant is obviously useful to parties seeking relief under the UDRP, one should also consider the countervailing privacy concerns stemming from the requirement that so much personal information be so publicly accessible.
One might also gather data about multiple ownerships by searching the domain name resellers and auction sites such as Afternic.com.
Registering Domain Names as Trademarks in the US
The US Patent and Trademark office has issued guidelines for registering domain names as trademarks. In Examination Guide No. 2-99, the USPTO indicated that domain names will be treated much like ‘800’ numbers in applications for trademark status. The gTLD as well as the beginning of the URL (http:// or www) will be treated as prefixes rather than source identifications. Thus, the gTLD will be treated much like "Inc." is treated for "real space" trademarks. For example, terms which cannot be registered under existing trademark law because they are generic terms would not gain registerable status by adding the gTLD. Thus hats.com would not be registerable for a site that sells hats.
Whether a domain name will be considered a trademark will depend largely on who is making the ultimate determination. It is possible that in the Sixth Circuit a domain name owner would be required to prove that it is used in a capacity beyond mere addressing. Other courts, however, have indicated that domain names almost always represent more than a mere communications tool and that these names have significant corporate value. Under this conception, it would be easier to demonstrate that the domain name acts as more than a mere web site address. A domain name does not merit trademark protection until it is used in a public manner that creates an association by the public with the mark's owner. A domain name can be registered as a trademark if it is used as a trademark, but not if it is used merely as an address. Similarly, web sites that serve only as advertisement for a company's products will not merit trademark status. Use of the domain name or mark in a banner prominently displayed on the web page, however, may be sufficient use of the mark.
Registering A Domain Name
A party can register a domain name in a gTLD through any ICANN-accredited gTLD registrar. Some gTLD registrars will also register names in certain ccTLDs. Smaller companies often register domain names through their ISPs and the ISP will then host it on their server. Some ISPs use form contracts that vest ownership of the domain name in the ISP if the ISP obtains the registration. Companies should check for such language in the ISP contract to prevent any future disputes about ownership.
Approximately 80 ccTLDs accept registrations from entities outside the country. Within this group, some limit entities to one domain name per organization. To determine whether your desired domain name is available in a ccTLD, you may use a service that will register names for you such as netnamesusa.com. For a fee, this service will register a domain name in all open ccTLDs. There are some services, such as checkdomain.com, that allow you to check availability in ccTLDs for free. Unfortunately, however, you have to check each ccTLD individually to see if your domain is available.
Conducting Domain Name Searches
Before choosing a domain name, and possibly before choosing a trademark or product name if one has not already been selected, an organization should conduct a worldwide domain name search to determine if there are any existing conflicts. There are several services that will conduct a comprehensive search.
Worldwide Domain Search by Thomson & Thomson identifies domain names that may conflict and allows searches by individual county, geographic region, or by all 250 available countries. The search includes gTLDs as well as countries such as the United Kingdom, Mexico, and Japan. This service can locate domain names that are similar to the name searched, and can search domain names by owner. The cost for the service is 25 cents per name retrieved, or $1 if more information is desired. The additional information will include a full text record where available, a link to the registry record and a link to the web site The system will generate a count of names retrieved before any costs are incurred so that the company can determine whether it would like to pay for the search or would rather alter the search terms. One drawback is that the company must instigate a search whenever they want to check. Thomson & Thomson will not update you on its own.
I-Watch, a NetBenefit product, will alert users via email whenever a new name is registered that may impact their trademarks or domain names. The cost of the service is 120 British Pounds. The service will monitor exact matches, matches containing the company mark, and matches that sound like the company mark. The user can add new names, change the watch criteria or update the email contact address at any time. In addition to the I-Watch service, NetBenefit also offers the I-Search service that allows users to see if selected domain names are available locally or internationally. They also provide services that will monitor content for infringement.
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Head Teaching Fellow