Business Department

The ICANN Administrative Procedure offers a faster,
less expensive way to end domain name disputes,
and can be applied internationally

Disputes over the legitimate right to use domain names continue to increase. Alternative methods of dispute resolution allow a trademark holder to protect their mark without having to undertake the costs and effort associated with traditional litigation.

Alternative to Litigation: ICANN
One alternative dispute resolution procedure is the Internet Corporation for Assigned Names and Numbers ("ICANN") Administrative Procedure outlined in the Uniform Domain Name Dispute Resolution Policy (the "Policy"). The Policy applies to top level domains (.com, .net and .org) and those countries using country codes (.it, .fr, etc.) that have adopted it on a voluntary basis. ICANN accredits all domain name registrars who have agreed to abide by and implement this Policy – and anyone who registers a top level or participating country code domain name is required to consent to its the terms and conditions as well. The Policy is administered by dispute resolution service providers, of which the World Intellectual Property Organization (WIPO) was the first.

Who Can File a Complaint?
Any person anywhere in the world can file a complaint for disputes concerning an alleged abusive registration of a domain name. In order to file a complaint, the domain name registered must be identical or confusingly similar to a trademark or service mark in which the complainant has rights, the domain name registrant must have no rights or legitimate interest in the domain name, and the domain name must have been registered and used in bad faith.

Bad faith includes:

• Registering or acquiring the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name,
• Registering the domain name in order to prevent the owner of a trademark from reflecting the mark in a corresponding domain name if there is a pattern of conduct,
• Registering the domain name primarily for the purpose of disrupting the business of a competitor, or
• Using the domain name to intentionally attempt to attract Internet users to the website by creating a likelihood of confusion with the mark for profit.

Advantages of ICANN Versus Litigation
This administrative procedure may be a welcome alternative to litigation. Some of the key advantages include:

Efficiency: It is faster to have the dispute handled by a panel of arbitrators since the process usually takes between 45 and 50 days from the date the complaint is filed.

Cost: Administrative proceedings are usually less expensive to initiate than law suits. The fee varies depending on how many domain names are included and how many panel members are desired. A complainant is responsible for paying the entire amount of fees, unless a single person panel is chosen. If the respondent chooses to convert to a three-person panel, the respondent must share in the fees.

• Less Formal: This proceeding is less formal than litigation and the individuals presiding over the dispute are experts in the field.
• International application: The procedure is also international, providing one uniform method of resolution regardless of where the parties are located.
• Non-Binding: Lastly, and most importantly, an individual may still institute court action for independent resolution of the dispute if they are not satisfied with the decision of the service provider panel.

Filing a Dispute
To begin a dispute resolution proceeding, a complainant must file a complaint with an ICANN accredited dispute resolution service provider. There are Uniform Rules approved by ICANN to which the complaint must adhere but there are no standard ICANN model forms for complaints or responses. For actions before the WIPO, there are model complaints and filing guidelines, which should be consulted. For example, a complaint is to be submitted in hard copy and also in electronic format to the WIPO. What specifically must be included in a complaint is set forth in the ICANN Uniform Rules. The complainant chooses the service provider by submitting the complaint to their preferred organization or firm.

A response to the complaint must be filed within 20 days, and is mandatory. If no response is filed in the allotted time, the respondent will be considered in default and the dispute will be decided based on the information available to the panel. The WIPO has prepared a model form and response filing guidelines and the ICANN Uniform Rules set forth specific information to be included.

• Before any notice of a complaint the use or preparations to use were in connection with a bona fide offering of goods or services,
• The individual has been commonly known by the domain name even if he or she does not have trademark rights, or
• The individual is making a legitimate non-commercial or fair use of the domain name without any intent for commercial gain or misleading or tarnishing the trademark.

An administrative panel of one to three persons is appointed by the provider to decide the dispute. Panel decisions are reported within 17 days of their appointment – provided there are no exceptional circumstances. No in-person hearing is required unless exceptional circumstances warrant it. The decision is implemented by canceling or transferring the domain name, as monetary amounts cannot be awarded. The decision is implemented within 10 days unless the panel receives, during that 10 day period, official documentation that the registrant has commenced a lawsuit against the complainant.

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