THE UNIVERISITY OF MELBOURNE
FACULTY OF LAW
Public Law and Legal Theory
Research Paper No. 30
2002
The ICANN Domain Name Dispute Resolution System as a
Model for Resolving other Intellectual Property Disputes on the Internet*
Andrew F. Christie
This paper can be downloaded without charge from the
Social Science Research Network Electronic Library at:
http://ssrn.com/abstract_id=319201
The ICANN Domain Name Dispute Resolution System as a Model for Resolving other
Intellectual Property Disputes on the Internet*
Andrew F. Christie**
I. INTRODUCTION
This article provides a introductory consideration of the extent to which the domain name
dispute resolution system of the Internet Corporation for Assigned Names and Numbers
(“ICANN”) - which implements and enforces the ICANN Uniform Domain Name Dispute
Resolution Policy (“UDRP”) - provides a useful model for the resolution of other intellectual
property disputes that arise through the use of the Internet. It starts with a brief description of the
development and implementation of the UDRP, and of the experience since its adoption by
ICANN. The article then proceeds to explain the reasons for the effectiveness of the ICANN
domain name dispute resolution system, and the key actors and entities that comprise that system.
The conceptual equivalent of those actors and entities in a generalized regulated technical
infrastructure are then determined by extrapolation.
The reasons for the effectiveness of the ICANN system - the uniform application of the
UDRP to all potential transgressors, and the automatic execution of an effective remedy against
proven transgressors - are discussed as well as how this remedy can have the secondary effect of
the removal of the transgressor’s presence on the Internet under the domain name in issue. There
is no reason why, as a matter of practical necessity, the availability of this remedy need be
limited to the type of conduct currently prohibited in the UDRP - ie. bad faith registration and use
of a domain name that is the same or confusingly similar to another person’s trademark or service
mark. It is conceivable that other conduct which infringes on the rights of an intellectual
property owner could be treated as giving rise to such a remedy. Accordingly, the ICANN
domain name dispute resolution system does, in theory at least, have the potential to provide a
model for the resolution of disputes concerning misuse on the Internet of other intellectual
property.1
*
Various elements of this paper were discussed in public presentations made at the University
of Toronto, Toronto, on October 10, 2000; at the World Intellectual Property Organization,
Geneva, on November 7, 2000; at the University of Western Ontario, London, Ontario, on
March 30, 2001; and at Fordham University, New York, on April 20, 2001.
**
Visiting Professor and Fulbright Senior Scholar, Duke University School of Law, Durham,
North Carolina, U.S.A.; Distinguished Visiting Professor, Centre for Innovation Law and
Policy, University of Toronto Faculty of Law, Toronto, Canada; and Associate Professor,
University of Melbourne Law School, Victoria, Australia. The author may be contacted at
<a.christie@unimelb.edu.au>.
1
For a different perspective on the desirability of extending the scope of operation of the UDRP
to other types of transnational disputes, see Helfer and Dinwoodie, “Desigining Non-National
Systems: The Case of the Uniform Dispute Resolution Policy”, (2001) 43 William & Mary
Law Review 141.
Christie, ICANN Domain Name Dispute Resolution System 2
II. DEVELOPMENT AND IMPLEMENTATION OF THE UDRP
A. Background to the UDRP
The development of the UDRP can be traced to the Statement of Policy on the Management
of Internet Names and Addresses (the “White Paper”) of the National Telecommunications and
Information Administration, an agency of the United States Department of Commerce, issued on
June 5, 1998.2
The White Paper contained the following passage:
The U.S. Government will seek international support to call upon the World
Intellectual Property Organization (WIPO) to initiate a balanced and transparent
process, which includes the participation of trademark holders and members of the
Internet community who are not trademark holders, to (1) develop recommendations
for a uniform approach to resolving trademark/domain name disputes involving
cyberpiracy (as opposed to conflicts between trademark holders with legitimate
competing rights), (2) recommend a process for protecting famous trademarks in the
generic top level domains, and (3) evaluate the effects, based on studies conducted by
independent organizations, such as the National Research Council of the National
Academy of Sciences, of adding new gTLDs and related dispute resolution
procedures on trademark and intellectual property holders. These findings and
recommendations could be submitted to the board of the new corporation for its
consideration in conjunction with its development of registry and registrar policy and
the creation and introduction of new gTLDs.3
The World Intellectual Property Organization (“WIPO”) is a specialist agency of the
United Nations, with responsibility for the development and administration of normative and
procedural Treaties for the protection of patents, copyrights, trademarks, designs, and other forms
of intellectual property. The number of nations comprising its member states is currently 177.4
As foreshadowed in the White Paper, WIPO was subsequently requested to initiate a process to
develop, among other things, recommendations for resolving disputes between trademarks and
domain names.
Having obtained approval to do so from its member states in September 1998,5
WIPO
undertook the “WIPO Internet Domain Name Process”, producing both an interim report,
published December 23, 1998, and a final report, entitled The Management of Internet Names
and Addresses: Intellectual Property Issues, published April 30, 1999 (“WIPO Report”).6
The
WIPO Report made numerous recommendations, in relation to four main issues: best practices
2
63 Fed. Reg. 31,741 (1988). A copy of the White Paper is available at
http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm.
3
63 Fed. Reg. 31,741 (1988).
4
See information contained at: http://www.wipo.int/about-wipo/en/.
5
Such approval was given at the meeting of the Assemblies of Member States in Geneva,
September 7-15, 1998. See WIPO document A/33/4, paras 10-25; and WIPO document
A/33/8, para 156; both of which are available at
http://www.wipo.int/eng/document/govbody/wo_gb_ab/index_33.htm.
6
The WIPO Report is contained at http://wipo2.wipo.int/process1/report.index.html.
Christie, ICANN Domain Name Dispute Resolution System 3
for domain name registration authorities;7
exclusion of famous and well known marks from
domain name registration;8
new generic top level domains (gTLDs);9
and an administrative
procedure concerning abusive domain name registrations.10
It is the recommendations in relation
to the last of these issues which led to the development and adoption of the UDRP.11
ICANN is a private corporation established under the law of California.12
By virtue of
various contracts it has with the US Department of Commerce, ICANN acts as the Department of
Commerce’s agent for the purpose of the administration of the technical aspects of the Internet.13
Following publication of the WIPO Report, ICANN commenced a deliberative process in
relation to these recommendations.14
As a result work by the ICANN Domain Name Supporting
Organization and an ICANN staff drafting committee,15
the ICANN Board approved the final
version of the documents implementing a domain name dispute resolution system on October 29,
1999. These implementing documents were the “Uniform Domain Name Dispute Resolution
Policy” (“UDRP”)16
and the “Rules for Uniform Domain Name Dispute Resolution Policy”
(“UDRP Rules”).17
7
WIPO Report, chapter 2.
8
WIPO Report, chapter 4.
9
WIPO Report, chapter 5.
10
WIPO Report, chapter 3.
11
More recently, WIPO has undertaken a “Second WIPO Internet Domain Name Process”. This
second process commenced in July 2000, following the receipt by the Director General of
WIPO of a request, from the Government of Australia and 19 other member states, to develop,
through a consultative process, recommendations on means of dealing with “bad faith,
abusive, misleading or unfair use”, within the Internet domain name system, of: personal
names; International Nonproprietary Names for pharmaceutical substances; names of
intergovernmental organizations; geographical indications, geographical terms, or indications
of source; and trade names. The final report of this process was published on September 3,
2001 under the title The Recognition of Rights and the Use of Names in the Internet Domain
Name System: Report of the Second WIPO Internet Domain Name Process (“WIPO Second
Report”). It is available at http://wipo2.wipo.int/process2/report/index.html.
12
For a history of the administration of the technical aspects of the Internet, including the
establishment of ICANN, see Froomkin, “Wrong Turn in Cyberspace: Using ICANN to Route
around the APA and the Constitution”, (2000) 50 Duke Law Journal 17, 50-89.
13
The various documents establishing ICANN’s authority through the Department of Commerce
are contained on the ICANN website at http://www.icann.org.
14
See “Timeline for the Formulation and Implementation of the Uniform Domain-Name
Dispute-Resolution Policy” at http://www.icann.org/udrp/udrp-schedule.htm.
15
The two reports of the ICANN staff on proposals for the UDRP are contained at
http://www.icann.org/udrp/staff-report-29sept99.htm and http://www.icann.org/udrp/udrp-
second-staff-report-24oct99.htm.
16
Contained at http://www.icann.org/udrp/udrp-policy-24oct99.htm.
17
Contained at http://www.icann.org/udrp/udrp-rules-24oct99.htm.
Christie, ICANN Domain Name Dispute Resolution System 4
B. Experience under the UDRP
The UDRP first took effect on December 1, 1999, when it was adopted by all but three18
of
the then ICANN-accredited registrars of open generic top level domains.19
The first dispute
resolution service provider to be approved by ICANN for handling UDRP cases was the WIPO
Arbitration and Mediation Center.20
Two other dispute resolution service providers were
approved by ICANN approximately one month later, and a fourth in May 2000.21
The first case under the UDRP was commenced with the WIPO Arbitration and Mediation
Center on December 9, 1999.22
During the first two years of operation, approximately 5,000
cases were filed under the UDRP with accredited dispute resolution service providers, and
approximately 4,000 decisions were given by panels appointed by those dispute resolution
service providers.23
Of those decisions, just over 80% were in favour of the Complainant.24
Even if judged solely by the sheer volume of cases processed in such a short period of time, it
seems indisputable that the practical implementation of the UDRP constitutes a phenomenal
success in alternative dispute resolution. There has been external recognition that the system is a
fair, economical and effective means for resolving domain name disputes.25
18
America Online, the NameIT Corp., and Network Solutions, Inc. adopted the UDRP on
January 1, 2000.
19
The three open generic top level domains in operation on December 1, 1999 were the .com,
.net, and .org domains.
20
The WIPO Arbitration and Mediation Center received accreditation for UDRP cases from
ICANN on November 29, 1999: http://www.icann.org/udrp/udrp-schedule.htm. Details of the
operation of the WIPO Arbitration and Mediation Center are at http://arbiter.wipo.int.
21
The National Arbitration Forum was approved on December 23, 1999. The disputes.org
/eResolution consortium was approved on January 1, 2000. This later approval was
subsequently transferred to eResolution on October 16, 2000. The CPR Institute for Dispute
Resolution was approved on May 22, 2000. See http://www.icann.org/udrp/udrp-
schedule.htm.
22
The case was World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO
Case D1999-0001, concerning the domain name <worldwrestlingfederation.com>. A copy of
the decision is at http://arbiter.wipo.int/domains/decisions/html/1999/d1999-0001.html.
Decisions in all cases filed with the WIPO Arbitration and Mediation Center are published
online, at: http://arbiter.wipo.int/domains/decisions/html.
23
Weekly up-dated figures on filings and decisions, for all four accredited dispute resolution
service providers, are published at http://www.icann.org/udrp/proceedings-stat.htm. Statistics
on cases filed with and decided by the WIPO Arbitration and Mediation Center are published
at: http://arbiter.wipo.int/domains/statistics/index.html. None of the other three dispute
resolution service providers appear to publish statistics on the number of case filings and the
outcome of decided cases.
24
See http://www.icann.org/udrp/proceedings-stat.htm.
25
This is reflected in the fact that ICANN and the WIPO Arbitration and Mediation Center
together were awarded the 2000 CPR Awards for Excellence in alternative dispute resolution,
in the category for “Outstanding Practical Achievement”. The award was given in recognition
of “their Uniform Dispute Resolution Policy and Domain Name Dispute Resolution Service: a
Christie, ICANN Domain Name Dispute Resolution System 5
III. THE ICANN DOMAIN NAME DISPUTE RESOLUTION SYSTEM
A. Structural Features of the System
The ICANN domain name dispute resolution system operates to provide an effective means
of resolving one class of trans-border intellectual property dispute, namely the bad faith
registration and use of a domain name that is the same or confusingly similar to another person’s
trademark or service mark (“cybersquatting”).26
It does so without the need to instigate curial
proceedings, and thus without the problems and limitations of private international law including,
in particular, the thorny issues of jurisdictional forum, applicable national law, and
enforcement of judgments in other jurisdictions.
The ICANN domain name dispute resolution system achieves this outcome because of two
key structural features, as follows:
(i) the uniform application of the UDRP to all potential Respondents to a cybersquatting
action; and
(ii) the automatic execution of an effective remedy for successful Complainants under the
UDRP.
Both of these structural features derive from the fact that ICANN currently has control over
the “root zone” file on the “A root” name server. The “root zone” file contains the authoritative
list of each of the top level domains (“TLDs”),27
together with the Internet Protocol address of
the computer that has the authoritative list of who has registered domain names in those top-level
domains. The “A root” name server is the computer server maintained by Network Solutions,
Inc., under the control of ICANN.28
The root zone file is authoritative because it is the file from which 12 other servers
(designated by the letters B-M) get their data.29
The B-M root name servers (as well as the A
root name server) are authoritative because most computers on the Internet make reference to
them, or to a downstream server containing a cached copy of their data, for the purpose of
resolving domain names to Internet Protocol addresses. As Froomkin notes:
This Internet monoculture is the result of the ubiquity of a single DNS program called
BIND … which comes pre-configured to get data from one of the 13 legacy root
fair, economical and effective approach to resolving domain name disputes arising in the new
medium of the Internet”. See the Press Release of January 24, 2001 at http://www.cpradr.org.
26
This definition comes from the three elements which a complainant must prove to be entitled
to a remedy: UDRP, para 4(a).
27
TLDs are the domains at the top level of the domain naming system. They are represented by
the suffix of a domain name.
28
See “Root Nameserver Year 2000 Status”, at http://www.icann.org/committees/dns-root/y2kstatement.htm.
See also, “Discussion Draft: A Unique, Authorative Root for the DNS”, at
http://www.icann.org/stockholm/unique-root-draft.htm.
29
The complete list of root name servers and their operators are set out in Appendix A to
“Root Nameserver Year 2000 Status”, at http://www.icann.org/committees/dns-root/y2k-
statement.htm.
Christie, ICANN Domain Name Dispute Resolution System 6
name servers, and few users or domain name service providers ever change the
setting.30
By virtue of its control over the root zone file on the A root name server, in practice
ICANN has the sole power to determine who can act as a Registrar for the various TLDs. In
turn, ICANN has effective power to determine the conditions of operation of TLD Registrars,
including the mandatory terms of the registration agreements between Registrars and domain
name Registrants, and the circumstances in which involuntary cancellation or transfer of domain
name ownership will occur.
B. Uniform Application of the UDRP to all Potential Respondents
The UDRP applies uniformly to all potential Respondents to a cybersquatting action in
respect of the registration of a domain name in a significant number of TLDs. The set of TLDs is
made up of generic TLDs (“gTLDs”) and country-code TLDs (“ccTLDs”). The ccTLDs are
those TLDs that end in a country-specific, two-letter code; the gTLDs are those TLDs that are not
country-specific. There are currently 243 ccTLDs31
and 14 gTLDs.32
As of late 2001, the UDRP
applied to all Registrants of domain names in 30 TLDs - being the three original gTLDs (.com,
.net, .org), the seven “new” gTLDs approved by ICANN on November 16, 2000 (.aero, .biz,
.coop, .info, .museum, .name, .pro),33
and 20 ccTLDs.34
In relation to the gTLDs, uniform application of the UDRP to all potential Respondents to a
cybersquatting action is achieved in the following manner. ICANN makes it mandatory for
Registrars to provide, in their registration agreements with all Registrants, the requirement that
Registrants will submit to the UDRP in the event of a cybersquatting complaint being made in
relation to a domain name. Because all ICANN-accredited Registrars include the UDRP as a
mandatory term in their registration agreements, it is not possible for a would-be Registrant of a
domain name in those gTLDs to shop around for a Registrar offering a registration agreement
which does not contain the UDRP. By this mechanism, all Registrants of domain names in these
gTLDs become contractually bound to submit to the UDRP in the event of a dispute being
commenced in relation to their domain name.
30
Froomkin, “Wrong Turn in Cyberspace: Using ICANN to Route around the APA and the
Constitution”, (2000) 50 Duke Law Journal 17, 28.
31
The list of ccTLDs is at http://www.iana.org/cctld/cctld-whois.htm.
32
These gTLDs consist of the three original and seven new “open” gTLDs (.com, .net, .org,
.aero, .biz, .coop, .info, .museum, .name, .pro), and the four “closed” gTLDs (.gov, .edu, .mil,
.int). The latter gTLDs are “closed” in the sense that registration in them is reserved
exclusively for the United States government, United States educational institutions granting
four year degrees, the United States military, and organizations established by international
treaties between governments, respectively. See http://www.iana.org/gtld/gtld.htm.
33
See information at http://www.icann.org/tlds/.
34
See the WIPO Arbitration and Mediation Center website on its domain name dispute
resolution services for ccTLDs, at http://arbiter.wipo.int/domains/cctld/index.html. Of the 22
ccTLDs listed at this site, only two (.ac, .sh) do not apply the UDRP, but apply the WIPO
Expedited Arbitration Rules instead. Of the remaining 20, 18 apply the UDRP as it stands and
two (.mx, .ph) apply the UDRP in slightly modified form.
Christie, ICANN Domain Name Dispute Resolution System 7
The position is essentially the same in relation to the ccTLDs to which the UDRP also
applies. For those ccTLDs, the relevant administrative authority requires that all Registrars
approved for registering domain names in the domain space make submission to the UDRP a
mandatory term of the registration agreement entered into by all Registrants.
C. Automatic Execution of an Effective Remedy
The are two remedies available to a successful Complainant under the UDRP - cancellation
of the domain name or transfer of the domain name to the Complainant.35
For all practical
purposes, however, there is only one remedy: transfer of the domain name. As of late 2001, the
remedy of cancellation had been ordered in less than 0.008% of cases.36
The reason the remedy
of cancellation is not sought is simple: following cancellation, the domain name becomes
available once again for registration by any person, on a first-come first-served basis. This
means it is possible for the unsuccessful Respondent or another person unassociated with the
Complaint to re-register the domain name, and so further frustrate the Complainant.37
Thus,
almost all Complainants (and all well-advised Complainants) seek the remedy of transfer.
Transfer of the disputed domain name to the successful Complainant is an effective remedy
from the Complainant’s point of view, since it delivers the disputed property from the
Respondent (who, having failed in the case, by definition has no legitimate right to or interest in
it) to the Complainant (who, by virtue of its trademark, must be considered as having a valid
claim to it). The automatic execution of this effective remedy for successful Complainants under
the UDRP is achieved by virtue of the fact that ICANN makes it mandatory for its accredited
Registrars to implement the decisions of all Administrative Panels adjudicating under the UDRP.
The transfer of ownership of a domain name is effected by changing the details (including the
name) of the registrant of the domain name in the relevant TLD registry. Where this remedy is
ordered by the Panel, the relevant Registrar must upon notification of this remedy “immediately”
communicate to each party the date for implementation of the decision.38
The UDRP does not specify a date by which the Registrar must implement the decision.
The UDRP does provide, however, that the Registrar must wait ten business days following
notification before the remedy can be implemented.39
The purpose of this delay is to allow an
unsuccessful Respondent who wishes to challenge the decision a period of time in which to file a
lawsuit against the successful Complainant.40
The expectation is that Registrars will implement
35
UDRP, para. 4(i).
36
See the ICANN statistics on the remedies obtained in cases decided under the UDRP,
available at http://www.icann.org/udrp/proceedings-stat.htm.
37
For an example of a second UDRP action being brought in relation to the same domain name,
as a result of its registration by another person following the remedy of cancellation under the
UDRP, see eResolution case AF-0310 <blueridgeknife.com>, available at
http://www.eresolution.ca/services/dnd/decisions/0310.htm.
38
UDRP Rules, para. 16(a).
39
UDRP, para. 4(k).
40
Where such a challenge is filed in a jurisdiction to which the Complainant has submitted under
para. 3(b)(xiii) of the UDRP Rules, the Registrar will not implement the Administrative Panel
decision until it receives evidence that either the dispute between the parties has been
Christie, ICANN Domain Name Dispute Resolution System 8
the remedy of transfer immediately upon the expiration of this ten day period. Thus, in the
absence of a lawsuit against the Complainant by the unsuccessful Respondent, the effective
remedy desired by a Complainant (transfer of the domain name) is executed without the need to
resort to a national court or other jurisdiction-specific enforcement agency. Figure 1 shows in
more detail how the ICANN domain name dispute resolution system operates in practice.
resolved, the lawsuit has been dismissed or withdrawn, or the court has ordered that the
Respondent does not have a right to continue using the domain name: UDRP, para 4(k).
Christie, ICANN Domain Name Dispute Resolution System 9
Figure 1: Operation of the ICANN domain name dispute resolution system
ICANN
Dispute
Resolution
Service
Providers
Registrars UDRP
A CB
G F
D
Registrants
Respondents
H E
Complainants
TM Owners
Note: The arrows show the relationships between the various entities, as follows:
A: Accreditation of Registrars by ICANN
B: Adoption of UDRP by ICANN
C: Accreditation of Dispute Resolution Service Providers by ICANN
D: Imposition of UDRP on Registrants by Registrars
E: Selection of Dispute Resolution Service Provider by Complainants
F: Application of UDRP by Panelists appointed by Dispute Resolution Service Providers
G: Imposition of Panelists’ Decisions on Registrars
H: Execution of Remedies against Respondents by Registrars
Source: Compiled by the author
D. Secondary Effect of the Remedy
At least part of the effectiveness of the ICANN domain name dispute resolution system is
attributable to the fact that the remedy of transfer of the domain name to the successful
Complainant has both a primary and a secondary effect. The primary effect of the remedy is that
the successful Complainant receives the property in dispute - ie. the domain name. The
secondary effect is that the unsuccessful Respondent has taken away from it the means to
continue operating on the Internet, at least under the domain name in issue. This is because,
without a domain name, the respondent has no presence on the Internet. It is this second effect of
the ICANN domain name dispute resolution system which provides the potential, in theory at
least, for application of the generalized model to other intellectual property disputes.
Christie, ICANN Domain Name Dispute Resolution System 10
IV. THE ICANN DOMAIN NAME DISPUTE RESOLUTION SYSTEM AS A MODEL
A. The System as a Model
The ICANN domain name dispute resolution system is characterised by the following
actors or entities: (i) ICANN, (ii) Registrars, (iii) the UDRP; (iv) Dispute resolution service
providers; (v) Registrants (a sub-set of which is Respondents); and (vi) Trademark owners (a subset
of which is Complainants). This system is in fact a specific instance of a transborder dispute
resolution mechanism that has been incorporated into a regulated technical infrastructure (being,
in this case, the Internet). The key actors and elements of this system can be conceptualised in
more general terms, as shown in Table 1.
Table 1: Conceptual Equivalents of Internet Entities
Specific Entity Generalized Conceptual Equivalent
ICANN Regulator
Registrars Administrators
UDRP Code
Dispute Resolution Service Providers Arbitrators
Registrants Utilizers
Respondents Respondents
Trademark owners Intellectual property rights owners
Complainants Complainants
Source: Compiled by the author
Christie, ICANN Domain Name Dispute Resolution System 11
In this model, the Regulator has the sole power to:
(a) accredit Administrators to act on its behalf,
(b) adopt the Code that is the basis for resolving disputes, and
(c) accredit Arbitrators to apply the Code to particular disputes.
Under this model, Administrators have the power, and are obliged, to:
(a) impose the Code on Utilizers of the regulated infrastructure, and
(b) implement remedies against Utilizers as decided by Arbitrators.
The model provides to Arbitrators the responsibility for:
(a) applying the Code to particular disputes, and
(b) deciding the remedies to be implemented by Administrators.
The Code, which is the basis for resolving disputes in the regulated infrastructure,
specifies:
(a) the conduct of Utilizers which is prohibited,
(b) the persons entitled to seek a remedy,
(c) the remedies available against an infringing Utiliser.
Utilizers of the regulated infrastructure are required to submit to the Code, by virtue of the
contractual relationship between them and the Administrators of the infrastructure. The Utilizers’
obligation to submit is part of the quid pro quo for the Administrators granting Utilizers access to
the infrastructure.
Intellectual property rights owners have the entitlement, but not the obligation, to
institute complaints under the Code against alleged infringing Utilizers. Should they wish to do
this, the intellectual property rights owner has the power to select a particular arbitrator from
those Arbitrators accredited by the Regulator.
Figure 2 shows the operation of this generalized system for resolving disputes within a
regulated technical infrastructure. It is a simple mapping of the specific ICANN domain name
dispute resolution system onto the generalized actors and entities described above.
Christie, ICANN Domain Name Dispute Resolution System 12
Figure 2: Generalized system for resolving disputes within a regulated technical
infrastructure
Regulator
ArbitratorsAdministrators Code
A CB
E
G F
D
Utilizers
Respondents
H
Complainants
IPR Owners
Note: The arrows show the relationships between the various entities, as follows:
A: Accreditation of Administrators by Regulator
B: Adoption of Code by Regulator
C: Accreditation of Arbitrators by Regulator
D: Imposition of Code on Utilizers by Administrators
E: Selection of Arbitrators by Complainants
F: Application of Code to complaints by Arbitrators
G: Imposition of Arbitrators’ Decisions on Administrators
H: Execution of Remedies against Respondents by Administrators
Source: Compiled by the author
B. Possible Content of the Generalized Code
As stated above, the key elements of the Code are its specification of the prohibited
conduct, the persons entitled to seek a remedy, and the remedies available. In the UDRP, the
prohibited conduct is bad faith registration and use of a domain name,41
in respect of which the
domain name owner has no rights or legitimate interest,42
and which is identical or confusingly
similar to the trademark or service mark of another person.43
The UDRP specifies non-exclusive
circumstances which are determinative of a right or legitimate interest in the domain name,44
and
of bad faith registration and use of the domain name.45
The persons entitled to seek a remedy
41
UDRP, para. 4(a)(iii).
42
UDRP, para. 4(a)(ii).
43
UDRP, para. 4(a)(i).
44
UDRP, para. 4(c).
45
UDRP, para. 4(b).
Christie, ICANN Domain Name Dispute Resolution System 13
under the UDRP are those people who have rights in a registered or unregistered trademark or
service mark.46
The remedies which such persons may seek are cancellation or transfer of the
domain name.47
In theory at least, these elements can be generalized to disputes about misuses of other
types of intellectual property on the internet. A generalized code could prohibit conduct that
amounted to an unauthorised and unjustified use on the Internet of any intellectual property
(including, in particular, any copyright, patent or trademark) of another person. The code could
provide a right to bring an action seeking a remedy under the code to any person who owned
rights in the intellectual property so used. The remedies available under the code to a successful
Complainant could be permanent cancellation48
or transfer to the Complainant of all domain
names associated with this misuse of the intellectual property. This generalisation of the UDRP
to all types of intellectual property disputes on the Internet is illustrated in tabular form in Table
2.
46
UDRP, para. 4(a)(i).
47
UDRP, para. 4(i).
48
The reference to permanent cancellation means cancellation of the Registrant’s registration of
the domain name and removal of the domain name from the pool of registrable domain names.
In this way, the Registrant or a third party could not subsequently re-register the domain name.
Christie, ICANN Domain Name Dispute Resolution System 14
Table 2: Generalization of the UDRP to Internet Disputes
UDRP
Generalized Code
Prohibited Conduct Bad faith registration and use of a
domain name identical or
confusingly similar to a trademark
or service mark of another
Unauthorised and unjustified use on
the Internet of intellectual property
of another
Entitlement to Sue Ownership of rights in the
trademark or service mark
Ownership of rights in the
intellectual property
Remedies Available Transfer (or Cancellation) of
domain name
Transfer (or permanent Cancellation)
of domain names associated with
misuse of the intellectual property
Source: Compiled by the author
Adopting the general approach of the UDRP (which defines the prohibited act to be
registration and use of a domain name identical or confusingly similar to a trademark), the
generalized code could define the prohibited act of “use” in such a way as to embrace all conduct
that would constitute the exercise of any of the basic exclusive rights of the intellectual property
right owner. Thus, a generalized code would prohibit acts such as the posting on a website of
copyright material (eg. text, pictures, etc) of another, and the utilisation on a website of a
patented process (eg. an internet-based business method) of another, because in both instances
there would be a “use” of intellectual property in the manner defined.
A use could be defined to be “unauthorised” where it was not expressly or impliedly
authorised by a person who owned rights in the intellectual property used. Further, a use could
be defined to be “unjustified” where it was not a use of the type specified in the code. The uses
which the code could specify as justified would be the equivalent of the uses generally permitted
under intellectual property statutes (ie. uses representing the “lowest common denominator” of
permitted uses found in national legislation), such as use for the purpose of research or use
otherwise in the public interest.
IV. THE ICANN DOMAIN NAME DISPUTE RESOLUTION SYSTEM AS A MODEL
This article has proposed a generalised system and code for resolving intellectual property
disputes arising through the use of the Internet, based on the ICANN domain name dispute
resolution system and the UDRP which it implements. Although of undoubted theoretical
interest, it does not thereby follow that it is of practical value. For the proposed generalisation to
be of practical value, it must provide for automatic execution of an effective remedy in favour of
a successful complainant. The important question that arises, therefore, is whether the remedy
under the generalised code would be effective. For the reasons given below, it is concluded that
the remedy would be effective, at least in respect of a certain type of infringer.
As noted above, the remedy of transfer of the domain name has both a primary and a
secondary effect. In relation to the disputes under the UDRP, the primary effect is delivery of the
domain name to the complainant, and the secondary effect is removal of the respondent’s
presence on the Internet under that domain name. Under a generalised code, the secondary effect
Christie, ICANN Domain Name Dispute Resolution System 15
of the UDRP remedy becomes the primary effect of the generalised code’s remedy. That is to
say, the primary effect of the remedies under the generalised code is removal of the respondent’s
presence from the Internet, at least under any of the domain names used as universal resource
locators (URLs, ie. website addresses) for the website at which the infringing uses of the
intellectual property occurred.
It is understood, of course, that an unsuccessful Respondent is perfectly capable of reestablishing
a presence on the Internet using another domain name. Thus, if a Respondent was so
minded, it could continue to infringe the intellectual property rights of the Complainant merely
by setting up the same website, with the same offending material, under a different domain name.
It follows that a generalisation of the UDRP along the lines suggested above would not be much
of a deterrence to those intellectual property rights infringers who are determined to infringe,
come what may.
It does not follow, however, that generalisation of the UDRP along these lines would be
without any benefit. It needs to be borne in mind that not all of the set of Internet infringers of
intellectual property rights are determined to infringe, come what may. Some Internet infringers
are likely to be deterred from repeat infringement, and some potential Internet infringers are
likely to be deterred from infringement in the first place, by the threat of the sanction of transfer
(or permanent cancellation) of their domain names. This is especially likely to be true in relation
to those infringers and potential infringers to whom the particular domain name under which they
operate their websites is important - ie. to those who have valuable domain names.