Cyber assets have become increasingly more important in the last decade with all the developments in technology and especially the pandemic. More assets mean more problems and one of them is cybersquatting.
Let's suppose that you have established your start-up and started to make marketing plans. Knowing that virtual presence is crucial in marketing today, you wanted to create a website to promote goods and services. You found out that the domain name you wanted to register was taken, yet, it is not used in any shape or form. Since the trademark is registered, the domain name became more important. So, how it is solved?
Domain Names
Before the Domain Name System ("DNS"), there were IP addresses that were not practical to use for more than one content. Internet servers have Internet Protocol (IP) addresses that have numerical values. It is without a doubt easier to remember a domain name than to remember a sequence of numbers. With DNS, now it is easier to access websites, make electronic references for academic research, and find content.
A domain name can be used for various reasons, i.e. personal or commercial use. When archehukuk.com is typed into the browser's bar, the computer does a quick search to find what name server has the records to resolve where this domain is hosted. The computer then uses the IP address to unpack a line of communication with the server, the domain is more like a catchy title with more data in the article itself.
Domain names are registered for a period that is outlined in the registrar's terms of service.
Domain names are structured as hierarchically, and there is the top-level domain at the top. Since there are a limited amount of combination domain names, there was a need for a rulebook. That rulebook is exercised by the Internet Corporation for Assigned Names and Numbers ("ICANN") which is a non-profit organization with a focus on managing IP numbers and Domain Name System (DNS) root.
Domain Name Types
There are two kinds of top-level domain (TLD):
Generic top-level domain (gTLD)
Country-code top-level domain (ccTLD)
Generic top-level domains have subcategories as follows:
Generic (.com, .net, .org, .info), domains that can be used for general use, such as personal and commercial.
Generic restricted (.pro, .biz, .name) domains can only be used for specific purposes.
Sponsored (.edu, .gov, .int, .mil, .aero, .cat, .asia, .mobi, .coop, .travel, .tel, .jobs) domains that can only be used by businesses involved specifically with that industry. With country-specific gTLDs, there can be more of the sponsored ones.
Infrastructure (.arpa) is one of the original top-level domains used to help with the DNS infrastructure.
What is cybersquatting?
Cybersquatting is generally bad faith registration of another's trademark in a domain name.
One of the earlier cases, which was decided before the Uniform Domain-Name Dispute Resolution Policy ("UDRP") was adopted, is Avery Dennison Corporation v. Jerry Sumpton (1998). District Court for Central District California explained the term as "squat on their registered domain names until someone else comes along who wishes to use them" and found using "avery.net" and "dennisson.net" in fact was cybersquatting. However, the Court decided Avery Dennison Corp. to pay the defendants $600 since this was mainly an intellectual property and trademark dilution case rather than focusing on the foundation of cybersquatting. And later, in August 1999, the decision given by the District Court was reversed, just 4 months before the launch of UDRP (December 1999).
However, this does not always end in dispute. In 2015, Google's ex-employee bought the domain name "google.com" just for $12. As it is mentioned above, domains are registered for a period of time, consequently, the registration must be renewed periodically. However, for a split second, Sanmay Ved tried to buy the domain name and did it. Ved notified Google and then Google offered to buy the domain name from him, however, Ved wanted that money to go to charity. Now, the domain name ownership is on Google again, and when Google found out about Ved's wish, they doubled the amount and it was donated to the Art of Living India Foundation.
Dispute Resolution Mechanism
As it is mentioned, there is Uniform Domain Name Dispute Resolution (UDRP) and there is a set of rules ("UDRP Rules") that is used to resolve a submitted complaint to a provider. According to the rules, the term provider means dispute resolution service provider approved by ICANN. And WIPO is one of the providers of dispute resolution services under the WIPO-initiated, ICANN-mandated UDRP.
According to the Art.3 of the UDRP Rules, the trademark owner can file a complaint regardless of the jurisdiction of the trademark registration.
After the application, under Art. 4 of the UDRP Rules, the Provider will submit a verification request to the Registrar which includes a request to lock the domain name/ block the ability to transfer the domain name.
Under Art.5 of the UDRP Rules, the respondent has to submit a response to the Provider within 20 days of the day of commencement of the administrative proceeding.
The administrative process will include the appointment of the panel (or sole arbitrator) (Art. 6), the timing of the decision (Art.6), impartiality and independence of the arbitrators (Art. 7), and procedural aspects such as communication between parties (Art. 8) and tribunal's responsibilities and powers (Art. 9, 10, 15, 16) and rules on the proceeding (Art. 11, 12 and Art. 17 et. al).
According to Art. 3, the Tribunal will be examining 3 main points which are as follows:
Is the domain name(s) identical or confusingly similar to a trademark or service mark to which the Complainant has rights?
Can the Respondent (current domain-name holder) be considered as having no rights or legitimate interests in respect of the domain name(s)?
Can the domain name(s) be considered as having been registered and being used in bad faith?
With start-up and trademark registration, in this day and age, having a website is a must. Hence, intellectual property law fundamentals and domain name dispute resolution rules adopted by ICANN help the entrepreneur to have one less problem.
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