ICANN’s Internet Domain Name Dispute Resolution Mechanism –
Hemmed in by Domestic Courts ?
Disputes over the registration of offending internet domain names and their misuse are being brought increasingly before the WIPO (World Intellectual Property Organization) Arbitration and Mediation Center or other approved dispute-resolution-service-provider under the Uniform Domain Name Dispute Resolution Policy (the "UDRP") adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN"). Such disputes can and are also brought before civil courts, typically of the domestic jurisdiction of the registrant or the registrar and sometimes of the complainant. How effective is ICANN’s international-law remedy in comparison to invoking the jurisdiction of the regular Courts of a domestic jurisdiction?
The UDRP is incorporated by reference into the Registration Agreement between all ICANN accredited internet domain name registrars worldwide and their domain name registrants. It sets forth the terms and conditions in connection with a dispute between any complaining third party and the registrant of the complained against domain name registration. These applicable disputes over the registration and use of an Internet domain name are resolved by mandatory administrative proceedings by a Panel under Paragraph 4 of the UDRP. The procedure followed by the Panel appointed by the provider such as WIPO is provided in the Rules for Uniform Domain Name Dispute Resolution Policy (the “UDRP Rules”), and in the service provider’s own supplemental rules (together ‘Rules’)
Curtailed Jurisdiction
The kind of disputes that a complaining third party can bring before the WIPO or other such dispute resolution service provider under the UDRP mandatory administrative proceedings are limited in comparison to the wide jurisdiction that domestic courts invariably enjoy worldwide in such matters. These applicable disputes are only those disputes where [UDRP Paragraph 4 (a)] a third party (a "complainant") asserts in compliance with the Rules, that
(i) the registrant’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the registrant has no rights or legitimate interests in respect of the domain name; and (iii) the registrant’s domain name has been registered and is being used in bad faith.
In contrast, the civil courts in India, and as about anywhere in the world, can entertain suits where the onus to discharge for obtaining relief is less stringent. In an action for infringement if the complainant’s mark is registered or otherwise in a passing off action based on prior user, the assertions in (ii) above is not required to be made and proved in such an acute manner.
In a Court proceeding in India as also in most other places, the respondent-registrant would have no defence in asserting rights or legitimate interests in respect of the domain name in the face of Complainant’s registration of the concerned trademark or if the Complainant shows prior-user. The assertion in (iii) above, is an extra especially onerous requirement to make and prove under the UDRP. The guidelines in Paragraph 4 (b) of the UDRP provide that the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that the registrant has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) the registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that it has engaged in a pattern of such conduct; or
(iii) the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s web site or location or of a product or service on the registrant’s web site or location.
Enlargement of available defences
Paragraph 4 (c) of the UDRP itself contains an instructive manual for the respondent-registrant being hauled up for alleged trademark violation in the administrative proceedings. Titled – ‘How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint,’ it runs like this. “When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Some of the defences above would be available in some form or the other in ordinary civil or common law jurisdictions but others go much further. The defence in (i) above is clearly a greater defenc e than available in a domestic court. The position for (iii) may vary from one jurisdiction to another.
Limited Competence to grant Relief
Ease of frustrating proceedings by approaching a Domestic Court
The complainant is required alongwith with its complaint to [UDRP Rule 3 (b) (xi)] identify any other legal proceedings that have been commenced or terminated in connection with or relating to any of the domain name(s) that are the subject of the complaint.
There is also an obligation to [UDRP Rule 3 (b) (xiii)] state that Complainant will submit, with respect to any challenges to a decision in the administrative proceeding canceling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction. In the UDRP Rules, mutual jurisdiction is defined to mean a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder's address as shown for the registration of the domain name in Registrar's Whois database at the time the complaint is submitted to the Provider.
In addition to the above, the complainant is obliged to waive any grievance it may have with the registrar of the offending domain name and restrict itself to relief only as against the domain name registrant. UDRP Rule 3 (b) (xiv) requires the complaint to conclude with the following statement followed by the signature of the Complainant or its authorized representative: "Complainant agrees that its claims and remedies concerning the registration of the domain name, the dispute, or the dispute's resolution shall be solely against the domain-name holder and waives all such claims and remedies against (a) the dispute-resolution provider and panelists, except in the case of deliberate wrongdoing, (b) the registrar, (c) the registry administrator, and (d) the Internet Corporation for Assigned Names and Numbers, as well as their directors, officers, employees, and agents."
If the Panel decides that the domain name registration should be canceled or transferred, the registrar is required to wait ten (10) business days after being informed by the the applicable Provider of the Administrative Panel's decision, before implementing that decision. The registrar will then implement the decision unless it receives from the registrant, during that ten (10) business day period, official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that it has commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules. In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. If it receives such documentation within the ten (10) business day period, it will not implement the Administrative Panel's decision, and we will take no further action, until it receives (i) evidence satisfactory to it of a resolution between the parties; (ii) evidence satisfactory to it that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing the registrant’s lawsuit or ordering that the registrant does not have the right to continue to use the registered domain name.
It is rather significant that the losing registrant is not even obliged to obtain an order of stay of operation of the panel’s decision; merely formally launching court proceedings is enough to nullify altogether its effect. No appeal is envisaged under the UDRP to any inhouse forum nor to any domestic court. Still, any local proceedings can be initiated by the registrant to override the implementation of the panel’s adverse order. It need not even be fashioned as a challenge to the panel’s decision; a mere declaratory suit will also do.
This is not all. A registrant has the option to try and preempt mandatory administrative proceedings altogether by first itself bringing a motion in its domestic court that substantially touches upon the subject matter. It retains this option even after commencement of the panel’s proceedings. The panel can only be persuaded to exercise its discretion and disregard such proceedings and render its decision even though it will not be liable to be implemented until the court proceedings are favorably discharged.
Gridlocked?
The exercise of discretion available to proceed with the matter notwithstanding the invocation of wider, certain and binding jurisdiction of domestic courts, can be seen from a decision of the panel in a decision like the one in Hesco Bastion Limited v. The Trading Force Limited [Case No. D2002-1038]. Prior to the commencement of administrative proceedings, the registrant had gone into liquidation proceedings that were still pending and the Receiver appointed by an English Court also responded to the complaint, as did the unregistered purchaser-in-liquidation of the domain name.
The Panel records – “…No substantive Response has been submitted by Mr. Carman, the
Liquidator, save to challenge the jurisdiction of the Center to entertain this Complainant; …Explora and the Liquidator assert that one of the assets acquired by Explora is the domain name in issue…
…The Liquidator, Mr. Carman, states it is not his intention to respond to the Complaint and that he has no objection to any party who claims an interest [for example, Explora] responding in his place. But, in an earlier email… the Liquidator took the position that the Complainant first requires leave of the English High Court before bringing this Complaint. This is because, so the Liquidator contends, this administrative proceeding is "an action or proceeding" within the meaning of Section 130(2) of the Insolvency Act 1986. The provision reads: "When a Winding-Up Order has been made or a provisional Liquidator has been appointed, no action should be proceeded with or commenced against the Company or its property, except by leave of the Court and subject to such terms as the Court may impose."…
United Kingdom. In the absence of a challenge before the appropriate Court, the Decision will be implemented by the Registrar…In its Supplemental Submission…, the Complainant also points out that if, as both the Liquidator and Explora contend, beneficial ownership of the domain name in issue was transferred to Explora …, the Panel’s Decision in this administrative proceeding is of no consequence to the Liquidator. It is because the Registrant of the domain name remains The Trading Force that the Complainant could only bring this Complaint under the Policy against the Respondent. In all the circumstances, the Panel takes the view that it has jurisdiction over this dispute and that the Complainant did not first require leave of the English High Court to initiate this administrative proceeding…
…The Effect of Court Proceedings…The Rules, paragraph 18, provide that in the event of any legal proceedings in respect of a domain name dispute that is the subject of the Complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding or to proceed to a Decision. Explora urges the Panel to suspend or terminate…The only proceeding in existence between the parties to this Complaint is the English High Court action commenced on November 18, 2002. It is apparent from the relief sought by the Respondent in that action…that the Court is not invited to rule upon ownership of or rights to the domain name in issue. The action is solely concerned with the taking of an account into commission allegedly due from the Complainant to the Respondent pursuant to the Agency arrangement between them, the precise terms of that Agency clearly being in dispute between those parties...It follows, in the Panels’ view, that there is no legal proceeding between the parties in respect of the domain name dispute that is the subject of this Complaint. The Panel will not, therefore, suspend or terminate this administrative proceeding…”
Another case in point is SKF and SKF Beaings India Limited v. Vikas Pagaria [Case No. D2001-0867]. In this case, the Complainants had themselves filed a case against the Respondents in the Delhi High Court being Suit No. 393 of 2001 – AB SKF & Anr. V. Mr. Vikas Pagaria. By an ex-parte ad interim order the Delhi High Court had, already before commencement of the proceedings before the panel, restrained the Respondent from, "carrying on any business or making or selling, offering for sale, advertising goods under the name SKF or in any other name deceptively similar thereto and from using the domain name skfindia.com or in any other manner passing off its web site as that of Plaintiff No. 2," and was still seized of the matter. The Plaintiffs in the court proceedings were the complainants in the complaint. Taking note of the long time taken by Indian courts to decide a dispute, the panel observed “…Till a decision of the court is available,
these aspects, the Administrative Panel, in exercise of the discretion vested in it under Rule 18 of the Rules, decides to proceed to a decision...”
A particularly egregious case on facts is in Koninklijke Philips Electronics N.V. v. SC Evergreen Consult & Aviation SRL (Catalin Mogoseanu) [Case No. DRO2001-0001] The respondent registrant had corresponded with the complainant thus “…If you will take
action that will lead to restricting my right to use this domain, at any further time, I will take you to court in Romania. This can lead to a "loose/loose" situation. It can take a long, long time, in which time Philips Romania might loose more that it could gain by an amiable solution that can be reached in a matter of days. I know the laws in Romania much better than you and would like to inform you that I have much higher chances to win this case, should we reach this stage…As you know, WIPO will hold the domain name: wwww.philips.ro blocked until they receive the final verdict from a Romanian court of law… when a Romanian company takes a foreign company to court, the paperwork has to be processed through the Romanian Ministry of Justice, etc., and it will take many months just for the papers to reach you, and many more years for the court case to end...Why wait until 2004-2005 when we can settle this before it starts, as we feel that the Romanian law, is in our favor?"
After having received the Notification of Respondent Default, …the Respondent informed the Center by email that it had started court proceedings in Romania in respect to the domain name, and that the Center will receive a legalized translation of the court documents that prove this allegation. The Respondent requested the Center to suspend the administrative proceedings until the Romanian court issued a final verdict in the case.
The Panel held – “…In the present case, the Respondent notified the Center that it has
filed a claim against the Complainant in Romania, but did not submit any official documentation (such as a copy of a Complaint or a file stamped by the Clerk of the Court) demonstrating the existence of a lawsuit in Romania. Therefore, the Panel is not in the position to verify whether a dispute concerning the domain name is pending before a Romanian court, or, if so, when it was filed…
…In the present case, the Panel is of the opinion that, if the Respondent has actually commenced legal proceedings in Romania, it has done so as a delaying tactic. This is demonstrated by the Respondent’s email to Complainant (supra)… In light of these circumstances, the Panel has decided to proceed to a decision…By doing so, the Panel does not jeopardize endanger the Respondent’s legal situation of Respondent; pursuant to paragraph 4(k) of the Policy, if the Respondent. In case the Respondent latter submits to the Registrar within the ten (10) days period official documentation that it has commenced a lawsuit in Romania within the ten (10) days period, within the ten (10) days period, the Registrar will not implement the Panel’s decision., in accordance with paragraph 4(k) of the Policy…”
Domestic Courts fostering the UDRP Jurisprudence
The popularity and success of ICANN’s UDRP jurisdiction will grow if it receives encouragement and support from the domestic Courts. One particular decision from an Indian Court shows how easily domestic courts can if they are so willing, accommodate, respect panel decisions and have them implemented. By decision dated 17.5.2002 in Maruti Software Private Limited versus Maruti Udyog Limited.[CWP 42/2001], the Delhi High Court dismissed a petition filed by the registrant after the registrant had suffered a panel decision [Case No. D2000-1038]. Instead of reconsidering evidence and arguments afresh, the Court held – “…The WIPO Arbitration and Mediation Center on
the facts of the case was, therefore, justified in holding that the domain name was registered by the petitioner and used by it in bad faith and it had no legitimate interest in respect of the domain name. In my opinion, there are no merits in the petition nor any case has been made out for interference in the order of the WIPO Arbitration and Mediation Center. The petition is misconceived and is, accordingly, dismissed.”
Sangeeta Vohra
