An ever increasing problem on the Internet is the 'theft' of trade marks. For a while now "cybersquatters" have been registering domain names which are similar or identical to trade marks and then attempting to extort money from legitimate proprietors of those trade marks in return for transferring the domain names to them.
This problem has reached such alarming proportions that it has necessitated concerted action from international supervisory authorities, like the Internet Corporation for Assigned Names and Numbers (ICANN) and the World Intellectual Property Organisation (WIPO) and national courts to thwart the menacing activities of these cybersquatters.
There are a number of ways in which this problem can and is being dealt with. At the international level both ICANN and WIPO have standing dispute resolution methods in place to ensure that trade mark owners are protected. At the national level the courts have employed both trade mark law and the common law of passing off to frustrate cybersquatters.
ICANN & WIPO Disputes Resolution System
Both ICANN and WIPO have in place the Uniform Domain Name Dispute Resolution Policy (UDRP). It has an approved list of dispute-resolution service providers ('Provider/s'). In order to hear complaints, Providers have appointed individuals to be members of a panel, which will hear and determine complaints. When a complainant makes a complaint that he has proprietary interest in a domain name which has been registered by a respondent, he may initiate an administrative proceeding by submitting a complaint to a Provider whether in writing or in electronic form. The complainant must also serve the complaint on the respondent. The complainant can decide on whether he wants the matter to be dealt with by a panel of one or three. He must include the particulars of the respondent, the domain name, the registrar who obtained the registration, and most importantly, 'specify the trade mark(s) or service mark(s) on which the complaint is based and, for each mark, describe the goods or services, if any, with which the mark is used'.
Critically, it is also necessary for the complainant to describe the grounds on which the complaint is made, including:
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
why the Respondent (domain-name holder) 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
why the domain name(s) should be considered as having been registered and being used in bad faith'.
Thus, so long as a trade mark or brand owner can demonstrate that the domain name held by the respondent is identical or confusingly similar to his trade mark, that the respondent has no rights or legitimate interests in the domain name, and that it was registered and is being used in bad faith, a domain name can be cancelled, transferred or otherwise changed.
When this process is satisfactorily completed, the Provider sets down the commencement date of the administrative proceedings. Within 20 days of the date of the commencement of the proceedings the respondent is given an opportunity to respond. If there is no response, 'in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.' The cost of the panel must be borne by the complainant, unless it is the respondent who asks for a three-man panel, in which case, the fees must be shared equally.
The panel determines the admissibility, relevance, materiality and weight of evidence. The whole proceeding is documentary and, as a general rule, there are no 'in-person hearings'. The decision of the panel must be rendered to the Provider within 14 days of the appointment of the panel. The panel has the power to order the transfer of the domain name to the trade mark holder or cancel it altogether. However, if the panel finds that the...