A streamlined dispute resolution process for resolving trademark disputes involving Internet domain names has been around for four years and has been used in more than 8,000 proceedings. Still, there are those who have not yet taken advantage of it. Some choose to pursue such matters in court and others choose to simply ignore the problem. At some point, however, you or your client may encounter a situation where you suspect someone has improperly registered a domain name that belongs to you that is too costly to ignore. However, taking such a matter to court is also a costly and time-consuming prospect. Another choice at that stage may be to take a closer look at the alternative: the expedited administrative proceedings available under domain name dispute resolution policies.
Typically, disputes over intellectual property rights are fought in the courts - a time-consuming, costly, and highly public process. With the rapid growth of the Internet, intellectual property holders learned that traditional legal remedies in a fast-paced, global environment like cyberspace were precariously inadequate. Reliance on courts that were sometimes slow to keep up with the new economy and uncertain about applying the substantive law to emerging threats to intellectual property created an unacceptably ambiguous environment for trademark holders.
The United States Congress responded with the Anti-Cybersquatting Consumer Protection Act ("ACPA"), an amendment to the Lanham Act designed to allow trademark holders to bring a civil cause of action against cybersquatters (one who registers, traffics in, or uses a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else) for remedies ranging from injunctive relief to monetary damages.
Many of the same problems confronting trademark holders before the passage of the ACPA still existed, however. Court proceedings could still take years, and in the process, run up sizable legal fees. Some domain name registrants would remain hard to track down and would falsify their registration information or operate under aliases to avoid being identified, frustrating attempts to serve process or enforce a judgment.
Further impairing the effectiveness of the ACPA was its inability to reach domain name registrants personally who were not subject to the jurisdiction of U.S. courts. While the ACPA's in rem provision allows trademark holders to gain jurisdiction over an offending domain name, without in personam jurisdiction, available relief was limited to transfer or cancellation of the domain name's registration. Furthermore, by statutorily defining the appropriate venue, the in rem provision potentially limited a plaintiff's ability to litigate in a convenient forum.
Domain Name ADR: An Efficient Alternative To Litigation
At about the same time that the ACPA was enacted in the United States, the Internet Corporation for Assigned Names and Numbers ("ICANN"), the organization responsible for domain name system management, promulgated its answer to cybersquatting: the Uniform Domain Name Dispute Resolution Policy ("UDRP"). This policy uses a contractual approach to reach all domain name registrants by incorporating its provisions in domain name registration agreements. The UDRP is built on an alternative dispute resolution model akin to arbitration and provides for expedited administrative proceedings in an international forum to resolve domain name trademark disputes.
While the UDRP reflects traditional principles of trademark law in its policy, many believe its procedural mechanisms outperform those available under the ACPA.
The Benefits Of UDRP Proceedings
Adjudication of claims under the UDRP with the National Arbitration Forum, as opposed to more traditional routes of trademark policing and protection, is highly efficient. As an ICANN-approved dispute resolution provider, the National Arbitration Forum typically resolves cybersquatting claims in less than 50 days.
UDRP dispute resolution is also significantly less expensive than a protracted trial. A trademark holder's costs for adjudicating a claim through the National Arbitration Forum, for example, is typically $1,150.
And UDRP dispute resolution reduces costs by eliminating complicated rules related to proper forum and venue. Through streamlined case-handling, the National Arbitration Forum accepts all submissions and facilitates all correspondence with the neutral arbitrator or panel of arbitrators (as may be elected by the parties). Cases are administered through document hearings, which save parties the traditional litigation costs associated with travel and appearances.
Beyond the benefits of speedy resolution and low cost, trademark holders using UDRP procedures have access to highly experienced arbitrators who are capable experts in the field of abusive domain name registrations, with extensive backgrounds that reflect the full range of experience with the UDRP. The National Arbitration Forum's arbitrators for example are all well versed on the arbitration process, the intricacies of the UDRP, and the substantive rules that govern trademark disputes in cyberspace. This knowledge provides them with the ability to make fair and equitable determinations.
Remedies Under the UDRP
The UDRP procedural mechanism for enforcing judgments is very simple. Once a judgment has been issued ordering transfer or cancellation of a domain name registration, the registrar is bound by its accreditation agreement with ICANN to implement the order automatically after notification from the dispute resolution provider (following a ten day waiting period for legal challenges). This eliminates the need to track down abusive registrants or convince registrars to obey a court order under the ACPA.
As noted, the UDRP provides for a ten day window before relief is effectuated. While administrative UDRP decisions are binding on both parties, they may be re-examined de novo by a court of competent jurisdiction, where a challenge is filed within ten days after the arbitrator enters its judgment. Although challenges to UDRP rulings are rare, the typical approach is to request review under the ACPA. And, while most trademark holders resolve their UDRP disputes successfully, those who are unsuccessful still retain their rights to pursue other legal approaches. Thus, trademark holders who avail themselves of the advantages of filing a UDRP claim are not precluded from seeking relief under the ACPA in the future.
The National Arbitration Forum's Role In UDRP Proceedings
Since its approval as a dispute resolution services provider by ICANN in 1999, the National Arbitration Forum has become the leading domain dispute provider in North America. In 2003, UDRPLaw.net noted that, on average, the National Arbitration Forum resolved cases two weeks faster than the World Intellectual Property Organization, the other major dispute provider.
While delivering results faster than other providers, the National Arbitration Forum still does so with an emphasis on individual attention and personal service. NAF has also been approved to handle domain name disputes under a variety of similar dispute resolution policies, including those covering .US, .NAME, .BIZ, .PRO, among others. NAF is the only dispute resolution provider approved to handle disputes under all of these different policies, simplifying matters for parties involved in many potential disputes but preferring to work with one provider.
The UDRP was designed to quickly and equitably resolve domain name disputes as an alternative to costly litigation under the ACPA and traditional trademark law. Dispute resolution with the National Arbitration Forum provides a highly efficient way for parties to protect their trademark on the Internet.
The convenience and efficiency of expedited administrative proceedings under the UDRP and related policies administered by the National Arbitration Forum make choosing this process a cost-effective and sensible solution.
Tim Cole is the attorney in charge of the Digital Brands Practice in the Los Angeles office of Ladas & Parry. His email address is firstname.lastname@example.org. Curtis Brown is General Counsel of the National Arbitration Forum, a worldwide provider of ADR services. He can be reached at email@example.com. To find out more about dispute resolution for domain disputes visit the National Arbitration Forum's website at www.arbitration-forum.com.