1 / 57

Domain Names

Domain Names. John Swinson March 2003. Agenda. Domain name registration structure ICANN dispute resolution procedures Australian dispute resolution procedures. Adminstration. Domain name system overseen by Internet Corporation for Assigned Names and Numbers (ICANN) www.icann.com

sakina
Download Presentation

Domain Names

An Image/Link below is provided (as is) to download presentation Download Policy: Content on the Website is provided to you AS IS for your information and personal use and may not be sold / licensed / shared on other websites without getting consent from its author. Content is provided to you AS IS for your information and personal use only. Download presentation by click this link. While downloading, if for some reason you are not able to download a presentation, the publisher may have deleted the file from their server. During download, if you can't get a presentation, the file might be deleted by the publisher.

E N D

Presentation Transcript

  1. Domain Names John SwinsonMarch 2003

  2. Agenda • Domain name registration structure • ICANN dispute resolution procedures • Australian dispute resolution procedures

  3. Adminstration • Domain name system overseen by Internet Corporation for Assigned Names and Numbers (ICANN) • www.icann.com • In Australia, the system is overseen by auDA • www.auda.org.au

  4. Levels of Domain Names • Top level domain names • .com, .org, .net, .gov, .edu, .biz, .info, .aero, .coop • Country Code level domain names • .com.au, .org.au, .net.au, .gov.au, .edu.au • Many different country codes • .uk, .cc, .tv, .nz, .us, .hk, .ca • Open and closed domain names

  5. DNS Hierarchy

  6. Competition to register domain names • Central registry provider • Ausregistry.com.au • Many different registrars • For example, 17 registrars appointed by auDA to register .com.au domain names. • Competition between registrars • Registrars can appoint resellers

  7. Industry Structure

  8. Issues • New domains e.g., .law.au, .club.au • Misleading conduct by registrars • Role and control of ICANN • Control of auDA • Access to and privacy of information in whois records We will focus on cybersquatting issues for .com and .com.au

  9. Agenda • Domain name registration structure • ICANN dispute resolution procedures • Australian dispute resolution procedures

  10. Resources • www.udrplaw.net • www.icann.org/udrp/udrpdec.htm • http://arbiter.wipo.int/domains/search/index.html • http://arbiter.wipo.int/domains/ • www.geocities.com/swinsonlaw/

  11. Dot Com • Registration on “First Come First Served” basis • Fee to register as low as US$10 per year • Can easily register online with many registrars • www.register.com or www.networksolutions.com • Significant number of trademarks registered as domain names and offered for sale to the trademark owner

  12. Is cybersquatting common? • coles-myer.com • brisbanebullets.com (US$25,000) • sydneyuniversity.com (listed for sale; porn site) • UofQ.com (porn site) and universityofqueensland.com ($175) • freddofrog.com • anzbanking.com and faiinsurance.com • martinplace.com and 1martinplace.com • johnhowardsucks.com (now available) • bankstown.com ($60,000)

  13. Background to UDRP • Kaplan.com • Dennis Toeppen • Speculation in domain names • Cybersquatting became very common and profitable • Difficult to sue • Expensive • Slow • Often unable to find defendant (e.g., Mr Top Banana) • Defendant often listed as in Russia or North Korea

  14. UDRP • In October 1999, ICANN approved the Uniform Domain Name Dispute Resolution Policy (UDRP) • Only for cybersquatting - the most serious cases • Not meant to override court process: a supplement to the court process

  15. UDRP • The UDRP is incorporated by reference into each domain name registration agreement by all accredited domain name registrars for domain names ending in: • .com • .net • .org • and some selected country-code top-level domains (e.g., .nu, .tv, .ws)

  16. Overview of UDRP • disputes relating to abusive registrations of domain names (e.g. cybersquatting) • expedited administrative proceedings • group of approved dispute resolution service providers. Two include: • WIPO (http://arbiter.wipo.int/domains) • National Arbitration Forum (www.arbforum.com)

  17. ICANN’s dispute resolution policy • Compulsory • Cost effective • Fast: panel has 14 days to hand down decision • no jurisdiction or choice of law problems • Self executing • if successful, registration cancelled or transferred • No damage awards • Can still file court proceedings

  18. Statistics – WIPO • 1,506 cases in 2001 (about 60% of all cases) • Average of about 4 WIPO proceedings per day in 1991 • Averaging about WIPO 95 cases per month over the past year • Number of cases is dropping

  19. Who wins Decision for domain name holder Name transferred or cancelled

  20. Typical cases • Straight Cybersquatter: steinlager.com • Typo: telsra.com, bigpons.com • Geo: bostonyahoo.com • Personality: billyconnolly.com • Sucks: wal-martsucks.com

  21. Complainant Must Prove: • Domain name identical or confusingly similar to your trademark (element 1) • Domain name holder has no rights or legitimate interests in respect of the domain name (element 2) • The domain name was registered and is being used in bad faith (element 3)

  22. Element 1 • Trademark • Does not have to be a registered trademark • May have to show some reputation • Difficult to prove if unregistered generic word • Domain name similar to trademark • Generally, ignore generic words and place names, e.g., yahooindia.com, dellcomputers.com

  23. Element 1 • Do not have to show trademark infringement • Do not have to show that trademark registration or reputation is in the same country where the Respondent lives • Do not have to show that Respondent was aware of TM for Element 1 • Focus on Element 1 is that Complainant has rights that it is trying to protect.

  24. Element 1 examples • Geographic Places • barcelona.com • brisbane.com and brisbanecity.com • sydneymarkets.com • daydreamisland.com • portofhelsinki.com • manchesterairport.com • newzealand.biz

  25. Element 1 examples • Names of people • brucespingsteen.com • juliaroberts.com • vanmorrison.com

  26. Element 2 • Domain name holder has no rights or legitimate interests in respect of the domain name

  27. Legitimate Interest in Domain Name • Use of domain name in connection with bona fide offering of goods or services prior to dispute; or • commonly known by that name; or • making a legitimate noncommercial use of domain name without intent for commercial gain to mislead consumers or tarnish the trademark of others

  28. Element 2 • Madonna Ciccone v. Dan Parisi, WIPO Case No. D2000-0847 "use which intentionally trades on the fame of another cannot constitute a ‘bona fide’ offering of goods or service….. to conclude otherwise would mean that a Respondent could rely on intentional infringement to demonstrate a legitimate interest, an interpretation which is obviously contrary to the intent of the Policy."

  29. Element 2 • Legitimate interest includes legitimate noncommercial use of domain name without intent for commercial gain: • walmartcanadasucks.com • legal-and-general.com • The "Domain Name itself is misleading" approach • The "Complaints Site" Approach

  30. Element 3 • The domain name was registered and is being used in bad faith

  31. Bad Faith Examples • Registered domain name primarily for purpose of selling or renting for profit; or • Registered domain name to prevent trademark owner using it, provided pattern of such conduct; or • Registered domain name primarily for the purpose of disrupting business of a competitor; or • Using domain name to create likelihood of confusion

  32. Bad Faith • Web2you.com • Registered domain name primarily for purpose of selling or renting for profit • nasdaqstockmarket.com • Using domain name to create likelihood of confusion • ansellcondoms.com • Disrupting business of competitor • Completesportsbetting.com • Breach of Trade Practices Act • Using domain name to create likelihood of confusion

  33. Typical cybersquatter • Brian Evans from Las Vegas • Rbcdainrauscher.com • Necschlott.com

  34. Generic Domain Names • Nature.biz

  35. Exceptions to ICANN’s procedures • Current procedures were said to be minimalistic • Does not cover: • Geographical indications • Internationally protected names and acronyms • States • UN organisations • Famous people’s names?

  36. Criticisms of UDRP • Critics say process is biased in favour of complainants • Inconsistent decisions • Legal, evidentiary and technical challenges. • Promotes forum shopping (seeing as complainants can choose provider). File complaint with most favourable provider. • Difficulty in balancing trade mark rights in same word owned by two different entities. Respondent likely to win – show legitimate interest. • Bad faith – difficult to show registration AND use in bad faith. Some flaws / criticisms of elements.

  37. Difficulties faced by panelists • Searching facilities have improved for WIPO decisions. Visit these sites: http://arbiter.wipo.int/domains/search/ or http://www.icann.org/udrp/udrpdec.htm or http://www.udrplaw.net/Features.htm • Submissions are poorly drafted & don’t address elements. Irrelevant material. Frustrating. Panel cannot fill gaps. • Cannot examine witnesses to assess credibility. • Timeframe does not usually allow investigations. • Difficult when facts are in dispute. • Complainant has onus of proving elements. Then onus shifts to Respondent to prove legit. Interest / no bad faith. • Cybersquatters are becoming more sophisticated – easy to create mock website or business plans to give impression of demonstrable preparations

  38. Practical Tips • Collecting evidence • Is entrapment ok? • Research past decisions • Respondent who lies • Selecting dispute resolution provider • Prepare detailed submission

  39. Useful Websites • www.icann.com • www.betterwhois.com • www.networksolutions.com • www.snapnames.com • www.nameprotect.com

  40. Agenda • Domain name registration structure • ICANN dispute resolution procedures • Australian dispute resolution procedures

  41. Terminology • gTLD is generic Top Level Domain • .com • .org • ccTLD is country code Top Level Domain • .au • .uk • 2LD is second level domain • .com.au or .co.uk

  42. Australia • Different rules for each type of Australian domain • auDA (.au Domain Administration) est. 1999 • Name Policy Advisory Panel • see www.auda.org.au • trying to conform the rules • Australian system had many significant differences to the gTLD system

  43. Australia ccTLD (.com.au) • Until 2002, tries to stop cybersquatting at registration: • Requirements that domain name derive from your company or business name • One domain name per entity • Rules attempt to prevent registration of generic names • Poor dispute resolution procedure

  44. auDRP • .au Dispute Resolution Policy published in July 2002 • Only one case published, three cases pending • globalcentre.com.au to be published next week (WIPO) • .auDRP is a re-written version of the UDRP, taking into account criticism of the UDRP and its holes. http://www.auda.org.au/policy/audrp/

  45. Registrant Obligations • REGISTRANTS • A person who applies for and registers a domain name • Registrant obtains a licence to use domain name (domain names are NOT property). • Obligation to keep contact details etc up to date • Agrees to be bound by registrar’s policy and dispute resolution process. • Can transfer licence but cannot sell a domain name

  46. Criteria for registering .au domain name • New auDA registration policy effective 1 August 2002. • Allocated on “first in first served”. Registrant must be Australian. • List of names that cannot be licensed. • No longer any restrictions on how many domain names an entity can register (provided they all comply with rules)

  47. .com and .net rego requirements • Applicant must be registered company, business, partnership, incorporated association or ole trader; or • Owner or applicant of Australian registered trade mark; or • Commercial statutory body. • DN must be • identical, or acronym or abbreviation of name; or • closely & substantially connected to registrant by referring to: • product sold or manufactured or service provided; • event organised or sponsored by registrant; • activity facilitated or taught by registrant • venue operated by registrant • profession that registrant’s employees practice

  48. auDRP • The auDRP differs from the UDRP in two main respects: • to take account of the policy rules that apply to .au domain names, that do not apply to gTLD domain names; and • to address practical constraints that have become apparent since arbitrations under the UDRP began in 1999.

  49. auDRP • Element 1: includes “name” as well as trademark • Personal name • Business name • Element 2: • Selling domain name is not legitimate interest in domain name

  50. auDRP • Element 3: • Registered OR subsequently used in bad faith • Refined definition of bad faith • No need to show Respondent has engaged in a pattern of registering domain names to prevent owner of TM from reflecting the mark. • No need for Respondent to intend to disrupt only business of complainant or competitor – sufficient if registered for the purpose of disrupting business of another person

More Related