DOMAIN NAME DISPUTES AND THE
UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY

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A PAPER DELIVERED AT THE
NATIONAL CONFERENCE OF THE INSTITUTE OF
ARBITRATORS AND MEDIATORS AUSTRALIA

BY

THE HON. NEIL BROWN QC

27 May 2006

Novotel Palm Cove
Far North Queensland
Australia

The Main Thesis Of This Paper

The purpose of this paper is to give you some idea of the nature of internet domain names and more particularly, as we are an organisation concerned with arbitration and mediation, to give you an outline of the way in which disputes about domain names are resolved.

Most aspects of human life give rise to disputes and domain name are no exception. So disputes about domain names, which are usually disputes about who is entitled to own (or, more precisely, lease) the domain name, have to be resolved.

In fact, the main thesis of this paper is to argue that as the internet itself is new, so, disputes about the ownership of domain names have given rise to a new and unique method of resolving them, a method operating outside the courts and a method that has been widely accepted and very successful. I also argue in the paper that this is also a method of resolving disputes that could usefully be considered for application to other forms of dispute.

Because I will be looking at this unique method of resolving disputes, I should say that one of the things that I will not be referring to in any detail in this paper is the resolution of domain name disputes in the law courts and through the normal law. They can of course be resolved in the courts and they are. It was held quite early in the piece, in a case called British Telecommunications plc v One in a Million Ltd [1999] 1WLR 903 that in appropriate cases, the wrongful appropriation of someone else’s name and using it in a domain name amounted to passing off and possibly breach of trademark. Such a case could be taken through the normal courts and if proved, would result in the Plaintiff obtaining orders enabling him to take the domain name from the cybersquatter and also obtaining injunctions and damages from the party who had wrongly used the domain name. That is still so and cases can be and are brought in the regular courts claiming, uncompetitive and misleading and deceptive conduct, passing off and breach of trademark.

Cases are also brought in the regular courts for other matters connected with domain names, for example, infringement of copyright by unlawfully extracting data on domain name registrants from the records of a registrar.

But we are not concerned in this paper with the resolution of domain name disputes in the courts. We are interested in the unique method of resolving them that has been developed outside the courts, a method that has all the features that proceedings in the law courts do not have, ie it is novel, modern, quick, economical, online, with no appeal and very final.

This system is known as the Uniform Domain-Name Dispute Resolution Policy (UDRP). It has been adopted since 1999 by the registrars who register all of what are called generic Top Level Domains or gTLDs, (.com, .net, .org, .coop, .aero, .biz, .info, .museum, .name, and .pro) and who are registrars accredited by ICANN – the Internet Corporation for Assigned Names and Numbers which administers the internet.

ICANN has described its dispute resolution system in the following way:

‘Dispute proceedings arising from alleged abusive registrations of domain names (for example, cybersquatting) may be initiated by a holder of trademark rights. The UDRP is a policy between a registrar and its customer and is included in registration agreements for all ICANN-accredited registrars.’

So when you register your domain name with an accredited registrar, you sign a registration agreement and that agreement will incorporate the dispute resolution policy giving jurisdiction to the UDRP and the mechanism under it for resolving disputes.

So what we will be doing in this paper is looking at this unique dispute resolution scheme for domain names that is designed to resolve disputes about abusive registrations of domain names, one such abuse being cybersquatting.

You would have noticed already that one of the basic principles of the scheme is that complaints under the scheme may only be started by parties who have an interest in a trade or service mark. The scheme therefore essentially deals with complaints by trademark owners that someone else is trespassing on their trademark by registering a domain name.

But first we should have a look at what domain names are and how they come to be involved in disputes.