Domain Name Dispute Resolution Policy Developments in 2017
In June 2011, the Internet Corporation for Assigned Names and Numbers (ICANN) launched its New Generic Top-Level Domains Programme, with the first cohort available in 2013. Since then, the landscape of Internet domain names has changed dramatically with new and varied gTLDs released every year.
While brand owners are faced with more choices for a perfect domain name, cybersquatters and phishers are seizing the new opportunities to escalate their attacks. In light of the huge amount of domain name disputes, ICANN has appointed a series of dispute-resolution service providers as alternative to costly and prolonged judicial approaches, for example the World Intellectual Property Organization (WIPO) and the Asian Domain Name Dispute Resolution Centre (ADNDRC).
2017 was another busy year for domain name disputes. With the emergence of new gTLDs such as .shop and .blog, WIPO, the largest provider of domain name dispute resolution services under the WIPO-initiated UDRP, saw 3,074 cases filed in 2017, exceeding the previous record 2016 caseload which itself represented a 10% increase over 2015.
Also in 2017, WIPO published its new Jurisprudential Overview 3.0, an updated summary of WIPO UDRP jurisprudence which cites almost 1,000 decisions and covers some 100 substantive and procedural topics. As the leading global domain name resource, the WIPO Overview 3.0 consolidates changes in jurisprudence since 2011, when WIPO released version 2.0. The new WIPO Overview 3.0 also features sections discussing case consolidation principles and claims of counterfeiting and other illegal activity (such as identity theft) in relation to disputed domain names and their website content.
In June 2017, WIPO started providing dispute resolution services for .EU (European Union) and .SE (Sweden) domain names. The availability of .EU and .SE services with WIPO is welcome news for clients looking to counter cybersquatting in the country code top-level domain space. In all, WIPO now provides services for 76 such national domains.
The UDRP continues to be an important tool for businesses around the world to combat cybersquatting, but also to combat the rise of other malicious behaviour, such as phishing, identity theft, and counterfeiting.
Rouse’s Domain Name Dispute Experience
Rouse is expert in dealing with domain name disputes under the UDRP and the CNNIC ccTLD Dispute Resolution Policy (CNDRP). While the UDRP is applicable to all gTLDs and most Country Code Top-Level Domains (ccTLDs), the CNDRP was revised in 2014 to only apply to .cn and .中国 domain names. The limit under the CNDRP which prohibits rightsholders from bringing actions against infringing domain names registered outside the last two years remains unchanged.
However, as a result of work undertaken by Rouse and its associated Beijing Lusheng Law Firm, the time limit was re-examined in Leister Brands AG v. Chen Qiuheng (HKIAC DCN-1500641, Oct. 10, 2015).
In the Leister case, the panel held that the transfer of the disputed domain name to another party should constitute a “new” registration stipulated in Article 2 of the CNDRP, otherwise it would be an indirect incentive for more cybersquatting and more unused domain names. The Leister case was adopted by the panelist in other CNDRP proceedings to refute respondent’s argument that the disputed domain names were created more than two years ago. As a reflection of Rouse’s expertise and creativity, it is groundbreaking and opens up a new avenue, even if a limited one, for rightsholders who currently have their hands tied.
While the UDRP sets no time limit on the registration of disputed domain names, the WIPO Overview 3.0 gives an explanation that is in line with the viewpoints from the above two cases: “Merely because a domain name is initially created by a registrant other than the respondent before a complainant’s trademark rights accrue does not however mean that a UDRP respondent cannot be found to have registered the domain name in bad faith. Irrespective of the original creation date, if a respondent acquires a domain name after the complainant’s trademark rights accrue, the panel will look to the circumstances at the date the UDRP respondent itself acquired the domain name” (3.8.1, WIPO Overview 3.0).
Another disparity between the UDRP and the CNDRP lies in the bad faith prerequisite for the mandatory administrative proceeding. Article 4(a)(iii) of the UDRP states that the “domain name has been registered AND is being used in bad faith”, while Article 8(3) of the CNDRP stipulates “the disputed domain name holder has registered OR has been using the domain name in bad faith”. The UDRP is arguably stricter on the extent of bad faith required. Whilst the burden of proof of the respondent’s bad faith falls on the complainant, chances are that the respondent neither makes any use of the disputed domain name directing to a blank or “coming soon” page, nor can be found to have taken active steps to sell the domain. The WIPO Overview 3.0 continues to address this kind of “passive holding” issue, and further points out specific relevant factors for determining bad faith, such as “the degree of distinctiveness or reputation of the complainant’s mark”, and “the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use” (3.3, WIPO Overview 3.0).
In a recent success for Rouse, the firm helped Tencent, one of the largest technology companies and internet service providers in China, recover 139 domain names registered in bad faith through UDRP and CNDRP proceedings. All these domain names, which comprised Tencent’s registered trademarks “Tencent” and “QQ” were registered by the same respondent who registered more than 2,000 domain names. Cybersquatters like the one in this case essentially extort trade mark owners by selling them domain names for a high price containing their own marks or brands. However rightsholders can call upon the UDRP and CNDRP to defend their rights and interests.