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Application and Determination of the Uniform Domain Name Dispute Resolution Policy (UDRP)
According to the domain name system, an applicant may apply to a domain name registrar for registration of a domain name, and a prior registrant will acquire the exclusive right to use his/her domain name pursuant to the "first to file, first to register" principle. A domain name cannot be registered twice. In other words, each domain name is unique in the cyber world and is directed to a single website.
However, when a domain name is filed for registration by the applicant, the domain name registrar will not substantively examine the domain name to decide if it infringes upon the existing rights of others. Therefore, a registered domain name may still likely infringe upon others' prior rights. Given this, the Internet Corporation for Assigned Names and Numbers (hereinafter "ICANN") on October 24, 1999, adopted the Uniform Domain Name Dispute Resolution Policy (hereinafter "UDRP"), enabling a prior right holder to file a complaint against any registered domain name; upon receipt of the complaint, the dispute resolution center accredited by the ICANN is required to substantively examine the case in accordance with the UDRP and other relevant regulations. According to the UDRP, both complainants and respondents can bring relevant lawsuits at the courts of different jurisdictions.
Recently, Lee and Li has successfully fought against the abusively registered domain name of a prior right holder. This Article will briefly discuss and introduce the application and determination of abusive domain name registrations under the UDRP.
II. Determination of abusive domain name registrations
With respect to a domain name infringing upon another's prior rights, the infringed prior right holder may file a complaint against the abusive domain name registration pursuant to Paragraph 4(a) of the UDRP. As noted, the constitution of an abusive domain name registration must satisfy all of the following three elements:
(i) The respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The respondent's domain name has been registered and is being used in bad faith.
(1) First element: The respondent's domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
First of all, according to Section 1.1.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3rd Edition published by the WIPO (hereinafter "WIPO Overview"), the jurisdiction where the prior trademark claimed by a complainant has been registered is not considered relevant to the panel's assessment. In other words, even if the jurisdiction where the trademark claimed by a complainant has been registered is not the jurisdiction at which the respondent is situated, such trademark is still "the trademark or service mark in which the complainant has rights." Accordingly, the earlier layout of trademark registration in advance would be helpful in maintaining the trademark owner's rights in a domain-name dispute case relating thereto.
Secondly, it should be particularly noted that the "Top Level Domain" in a domain name is normally disregarded under the first element test. In addition to a prior existing trademark or service mark, a domain name would encompass a top level domain because of the fixed form of domain name. However, neither a traditional top level domain (such as ".com") nor a new top level domain (such as ".store") affects determination of similarity. What's more, the panel sometimes even believes that the top level domain could increase the confusing similarity. For example, ".shop" may cause Internet users to consider such domain name being the online store of the holder of the prior trademark or service mark contained in the domain name.
Thirdly, a disputed domain name often intersperses another's prior trademark or service mark with a symbol such as "_" or "-." Nevertheless, a symbol is also frequently disregarded by the panel on the ground that the symbol is considered to have no impact on the determination of confusing similarity of the dominant part of a domain name.
(2) Second element: The respondent has no rights or legitimate interests in respect of the domain name.
Regarding the test of the second element, Paragraph 4(c) of the UDRP points out that the respondent may establish rights or legitimate interests in the disputed domain name by demonstrating any of the following:
1. Before any notice to it of the dispute, the respondent's use of, or demonstrable preparations to use, the disputed domain name or a name corresponding to the disputed domain name in connection with a bona fide offering of goods or services; or
2. The respondent has been commonly known by the disputed domain name, even if it has not acquired any trademark or service mark rights; or
3. The respondent is making a legitimate non-commercial or fair use of the disputed domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
As for the definition of "bona fide", the WIPO Overview provides some examples therefor, including the respondent's due diligence before registering his/her domain name and a genuine business plan utilizing the domain name. The aforementioned circumstances demonstrates that the respondent provides the goods or services with a bona fide intent rather than the one of cybersquatting. However, the bona fide intent shall be determined case by case.
It should be particularly noted that while the overall burden of proof in UDRP proceedings is on the complainant, to prove that "the respondent has no rights or legitimate interests in a domain name" is often the impossible task of "proving a negative" for the complainant. As such, where a complainant makes out a prima facie case that the respondent lacks rights or legitimate interests, the burden of proof on this element shifts to the respondent to come forward with relevant evidence demonstrating his/her rights or legitimate interests in the domain name. Should the respondent fails to submit any defense against the complaint, once the complainant provides prima facie evidence, the panel is most likely to conclude that the respondent has no rights or legitimate interests based on such evidence.
(3) Third element: The respondent's domain name has been registered and is being used in bad faith.
Paragraph 4(b) of the UDRP states that any of the following circumstances shall be considered evidence of registration and use of a domain name in bad faith:
1. circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant or to a competitor of the complainant, for more profits;
2. circumstances indicating that the respondent registered the domain name in order to prevent the holder of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct;
3. circumstances indicating that the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; or
4. circumstances indicating that the respondent intentionally is using the domain name in an attempt to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's website or location or of a product or service on its website or location.
As stated in the WIPO Overview, where the complainant's prior trademark or service mark is highly specific, the respondent cannot credibly claim to have been unaware of the presence of the mark. Under the circumstances, the panel may infer that the respondent registered the domain name in bad faith. Further factors such as the chosen top-level domain, the usage of the domain name, and any respondent's pattern of conduct, may also affect the determination of whether the respondent's conduct is taken in bad faith.
The examples set forth in Paragraph 4(b) of the UDRP are not meant to be exhaustive of all circumstances from which such bad faith may be found. The complainant can also present other evidence or circumstances demonstrating the respondent's malicious intent. For instance, where a website directed by the respondent's domain name distributes the complainant's goods or uses any of the complainant's works, either of the circumstances may be found to have the intention of clinging to the complainant, thus constituting use in bad faith. When the respondent is found to have a bad faith under the third element test, it often causes the panel to infer that the respondent has no legitimate rights or interests.
III. Conclusions and Suggestions
A domain name plays the role of an address in the cyber world, and is also a significant part of a business plan for a trademark holder or other mark owners. If a right holder can prove the three elements of Paragraph 4 (a) of the UDRP satisfied by the registration and use of another party's domain name, the registration would be abusive. Under the circumstances, the panel will transfer the ownership of disputed domain name on the complainant's demand so as to prevent the holder of prior trademark rights, commercial logos, or other service marks from being impaired by the "first to file, first to register" system. As the domain name system is different from the trademark registration system, a trademark holder should, in addition to have a complete layout for his/her trademarks, timely attend to if any of his/her domain names has been abusively registered by others. In case of any occurrence, disputes may be submitted through various dispute resolution center or at the courts in order to comprehensively maintain the mark in all aspects.