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The low-down on domain name disputes

Domain name disputes are almost as old as the domain name system itself. And the number of disputes will only increase as the Internet continues to grow. Find out how to exercise your rights online
Written by Matt Loney, Contributor
If someone has registered a domain name that you feel should belong to you, there are ways to get it back. But be warned; it costs money, and the burden is on you to satisfy an arbitration panel that the domain name should be transferred to you. Domain name registrars will not cancel a domain name or transfer it to you just because you ask them to, however hard you push. First, you must go through a resolution procedure, or obtain a court order. Court orders are obtained by proving in a court of law that you have a legitimate claim on the domain, and the defendant does not. Many large companies and well-known personalities have won the rights to domain names this way, but going to court can be very expensive, and many people prefer resolution procedures. Dispute resolution procedures were designed to institute a level of fairness into the system, and domain name registrars will abide by the findings of dispute tribunals. All registrars in the .com, .net, and .org top-level domains follow the Uniform Domain-Name Dispute-Resolution Policy (UDRP). If you want to get a domain name that someone else has registered, you have to prove three things:
  • That the domain name is identical or confusingly similar to a trademark or service mark to which you have rights.
  • That the person who owns the domain name now has no rights or legitimate interests in respect of the domain name.
  • That the domain name has been registered and is being used in bad faith.
It is not enough to show that just two of these statements holds true; all three must be satisfied, and the third can be particularly difficult to show. In practice, this could mean that the domain was bought with the intention of selling it on to the trademark owner for a considerable profit, or to create confusion among users for commercial gain. Registering your claim
Your first port of call may be the World Intellectual Property Organisation (WIPO). WIPO uses the ICANN dispute resolution policy to administer the .org, .com and .net domains, as well as a number of country level domains. Other country code domains use specific dispute resolution procedures. There are further details on the WIPO Web site. Guidelines for filing a complaint with WIPO are here. The organisation does provide a standard form, but you don't have to use this. And yes, it does cost money. Prices start at about $1,500, and rise if you are contesting more than one domain name or if you want three arbitration panellists instead of just one. What are the odds of winning?
A report published in August by a professor of law specialising in Internet and e-commerce law at the University of Ottawa found that in domain name disputes, the odds are stacked overwhelmingly in favour of the complainant. The study, carried out by Professor Michael Geist with the help of five students at Ottawa University, found that complainants win 82.2 percent of the time when they take their grievance to WIPO. A similar bias was found with complaints taken to the other main body that deals with domain name disputes, the US-based National Arbitration Forum. Professor Geist's study, which analysed more than 3,000 cases, found that the outcome was closely related to the composition of the adjudicating panels. In cases heard by a single panellist -- which account for 93 percent of the total -- complainants win 83 percent of the time. The odds are more even when there is a three-member panel, with complainants winning 60 percent of such cases, but it is the person bringing the claim who gets to decide how many panellists should hear it. If the complainant chooses a single panellist, the defending party does have the right to increase this number to three, but rarely does so because they have to pay the extra cost. Raising a dispute resolution action for one domain name with a single WIPO panellist will cost the party bringing the action the sum of $1,500; instructing three panellists costs $3,000. Disputes over .co.uk domain names
If you have a complaint over a .co.uk domain name, you need to go to Nominet.net, the registry for this domain. Nominet has dismissed the UDRP framework in favour of its own procedures, which, it says, are fairer and can stop large companies from "reverse hijacking" domain names from individuals. Nominet's procedure is called the Dispute Resolution Service (DRS). As with the UDRP, the DRS does not replace the courts, but in this case the result is binding on the parties involved, and Nominet has the power to transfer, cancel or suspend a domain name depending on the result of a dispute. Nominet will first of all try mediation, and only if this fails can a complainant refer the case for decision by an expert. The fee is £750 plus VAT, and appeals can be launched -- but they cost the princely sum of £3000 plus VAT. Nominet's DRS rules are similar to those of ICANN's, and require that a complainant shows that the domain name in question was an "abusive" registration. Full details, and the complaint form, are here. Disputes over new top level domain names
Of the seven new generic top level domains, two are now active: .biz (for businesses) and .info (open to everyone). Another one, .museum, is active but no registrations have been granted yet, and the final four are still in the planning stages: of these, .aero will service the airline industry, .coop is for cooperatives, .pro is for professionals, and .name is for personal use. You can settle domain name disputes for .name, .info and .biz under the UDRP, but the processes differ slightly for each, and you should consult the registrar in each case. See ZDNet UK's Christmas & New Year Special for our look at the tech world in 2001, and what's coming up in 2002, plus a shopping guide with reviewers' best buys. For everything Internet-related, from the latest legal and policy-related news, to domain name updates, see ZDNet UK's Internet News Section. Have your say instantly, and see what others have said. Click on the TalkBack button and go to the ZDNet news forum. Let the editors know what you think in the Mailroom. And read other letters.
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