Squatters Rights in Cyberspace

Profession:Rawlison Butler
 
FREE EXCERPT

So all is well at gold.e.locks.com, supplier of quality products to the health and beauty industry. Orders are flooding in and the brand strengthens by the day. All intellectual property rights are locally registered. Your investors approach you and urge you to ply your trade in the United States. All the necessary procedures are in place and you move to register your domain name gold.e.locks.us.com. You prepare your PR machine for a major launch.

Then you get a shock. The domain name you want has already been registered. Your enquiries reveal that a small company registered in Delaware has registered this as a domain name. Your investors tell you it is vital to have this domain name as consumer research has indicated that it would be more attractive to the US market. How can you resolve this dilemma?

The first step to take is a commercial one. Contact the Delaware company to see if they are prepared to transfer the domain name for a set fee, together with the incidental costs of transfer. You can then gauge whether the company has a business of substance and wishes to protect its rights, or whether it is simply an opportunist which is looking for fast compensation. This makes a considerable difference in the event of the proceedings being necessary.

THE ICANN POLICY for Dispute Resolution

Let us assume that Delaware company wants $500,000 to transfer the domain name, and this is not commercially acceptable. Your next step is to get in touch with the Internet Corporation for Assigned Names and Numbers ("ICANN"), which has adopted the uniform domain name dispute resolution policy ("the Policy") which sets the terms and conditions upon which a dispute over domain name registration can be resolved.

In line with the current trend towards settling disputes through alternative dispute resolution ("ADR"), the Policy provides for a mandatory administrative proceeding which will be conducted before a selection of administrative dispute resolution service providers ("the Providers"). These include, for example, the World Intellectual Property Organisation.

GROUNDS FOR A COMPLAINT

A complaint must be submitted to a Provider stating that:

The US company's domain name (gold.e.locks.us.com) is identical or confusingly similar to a trade mark or service mark in which you, a complainant, have rights;

The US company has no rights or legitimate interests in respect of the domain name;

The domain name has been registered and is being used in bad faith.

As Complainant, you must prove each of these three elements...

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