Did you ever wonder what happens to those domains, like [BigCompanyname]sucks.com, that some guy registers to criticize BigCompany? Turns out theres a procedure for these things.
Ive given ICANN (the Internet Corporation for Assigned Names and Numbers) a hard time in the past, but there are certainly positive aspects to its Uniform Domain-Name Dispute-Resolution Policy. Perhaps it wasnt designed for every problem involving domain names, but it deals effectively with the ones its designed for.
The UDRP provides for an arbitration proceeding through which parties in dispute over a domain name can receive independent, expeditious and relatively inexpensive arbitration.
All registrars are required to require of their customers that they submit to arbitration in the event that a third party asserts that the domain name is identical or confusingly similar to its trademark, that the customer has no right to it or that it is being used in bad faith.
The “complainant” (the third party claiming that its name is infringed on by the domain name) picks one of four approved arbitration services known as “Dispute-Resolution Service Providers” (doesnt the computer industry have a way with words?)
The arbitration panel can have a single panelist, in which case the complainant pays the fees to the arbitrator; or the respondent can opt for a three-member panel and share the costs.
Schwimmer says he thinks that the UDRP is a success. Contrary to fears Ive heard from readers, there is no bottomless pit of fees involved, he says, and while trademark holders seem to win all the easy cases they bring, the deck isnt necessarily stacked against the little guy.
Schwimmer represented Microsoft on one of those “easy cases,” that of microsoftcustomerservice.com. Wayne Lybrand registered this domain without the permission of Microsoft and offered to sell it on eBay for $150,000, using the following sales pitch: “How many times a day do you think individuals and businesses access Microsofts [sic] websites. Right now there are 97,000.000 [sic] references and websites pertaining to Microsoft. Software, upgrades etc. Imagine how much business you will get…”
When confronted by Microsofts counsel, Lybrand offered to sell the domain to Microsoft: “For the creativity of coming up with the Domain Name. I am willing to accept $1481.42 and a copy of Microsoft Office Full Version. I will remove the auction and transfer the name to Microsoft.”
Sweet. You may read the rest of the sordid details in the arbitrators report.
The Complaint Procedure and
As is common in cases like Lybrands where the domain registrant is a cheap opportunist, he did not respond to the complaint filed with the WIPO (World Intellectual Property Organization) Arbitration and Mediation Center. The one-person panel found the name confusingly similar to Microsofts, cited a bunch of precedents and awarded the domain to Microsoft.
The entire process was fast, as legal proceedings go:
|Domain advertised on eBay||12/22/2004|
|Registrant contacted by Microsoft||12/22/2004 (same-day service!)|
|Complaint filed with WIPO Arbitration and Mediation Center||1/6/2005|
|Registrar contacted by WIPO||1/7/2005|
|Respondent notified of complaint||1/26/2005|
|No response from respondent, past due||2/15/2005|
|Panelist assigned to case||3/7/2005|
I call that fast. And the fees paid to lawyers and the arbitration center are very reasonable, as legal fees go. Obviously legal fees vary from lawyer to lawyer, but Schwimmer thinks a case where someone is pursued through URDP can be defended for about $2,500. Of course, if youve got a loser case like Lybrand did, you should save your money.
If Faceless International Conglomerate Inc. accuses you of stealing its trademark through your domain and challenges you through this process, do you have a chance? Schwimmer says that in cases where the respondent opts for the three-member panel and responds to the complaint, the respondent wins half the time. This doesnt say how many of the cases would seem meritorious to you or me, but it would seem that these are the cases that get the most scrutiny. They likely cost more and take longer, too.
Schwimmer says that problems come when there is a real, disputed factual record or some relationship between parties (such as in the breakup of a business or if the case is between licensees and distributors, as in the famous Raiderettes case).
But any of these processes is likely to be much faster and less risky than civil litigation, which can take years and cost more than the case is worth. A civil suit does hold the possibility of a temporary restraining order or, if there is egregious abuse, recovery of costs, but its a high-stakes game.
The problem with the UDRP is not what it does, but what it doesnt do. Its not designed for other problems which have come to the forefront since the UDRP was conceived. ICANN has handled domain hijacking badly, but its good to see that they do get right the things they set out to do.
Security Center Editor Larry Seltzer has worked in and written about the computer industry since 1983.