Does the mere fact of being Eva Longoria, Microsoft or even Lego for that matter, entitle you to exclusive possession of the internet domain name equivalent to your name? Over the past years, the number of registration requests regarding domain names has known an exponential escalation.
This, in turn, poses sensitive problems regarding intellectual property infringement and conflicting purported rights over what had been registered. A proper understanding of the issue implies the understanding of the following aspects: (1) what is a domain name; (2) what is a trademark; (3) how legal controversies arise in this field; and (4) which are the criteria employed in their resolution.
First and foremost, a domain name must be understood as a user-friendly form of an Internet address that is easily identifiable and easily memorable (WIPO Arbitration and Mediation Center, 2013). The exclusive right of usage over a domain name can only be acquired through a multiple-step registration process. The latter is carried out by a registrar, a national administrative entity accredited by the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN plays a key role in this field, withholding two core prerogatives: (1) it is the owner of a central database which contains all the registered domain names, thus preventing the registration of the same domain name twice; (2) it is the adoptive entity of the Uniform Domain Name Dispute Resolution Policy (UDPR). This policy comprises a set of norms regulating dispute resolution over domain name registration.
Over the history of domain names, two core models of registration have emerged. The first and now obsolete model, more restrictive in nature, conditioned the registration of a domain name on the prerequisite that the registrant proved two aspects: his entitlement to a right over what he/she wants to register, and the fact that this registration does not infringe upon a right or a legitimate interest of a third party. However, this protective system soon became a hindrance against the ever expanding online world. Consequently, it was progressively phased out in the benefit of a modern system, with an entirely renewed approach, based on the ’first come, first served’ principle; anyone is free to register any domain name they please, with no prior burden of proof; however, pursuant to the registration, an accreditation agreement is concluded with the registrar, including the registrant’s pledge to abide by the terms and conditions of the UDPR. In fact, the main consequence of the agreement is a prior consent to defer any controversy arisen from a domain name registration to the World Intellectual Property Organization Arbitration and Mediation Center.
After having established the premises of domain name registration, the next point of analysis will focus on the legal problems registration may pose. In plain words, a legal controversy is bound to emerge each time a person registers a domain name which conflicts with a trademark, an industrial property right, another domain name, or any other similar right or legitimate interest of another person. With regard to this situation, the term ’cybersquatting’ has been coined over the recent years to define the situation of pre-emptive, bad faith registration of trademarks as domain names, by third parties who withhold no right whatsoever over that name. What cybersquatters essentially do is take advantage of the first come - first served nature of the registration process, in order to register domain names as popular trademarks, famous people’s names or any other business names with various purposes such as: the intention to exchange the rights over the registered domain to the person entitled to possess it for a disproportionate sum or to attract web traffic to their sites at the expense of famous people’s reputation.
All things considered, for the purpose of solving disputes in this field, the arbitration procedure regulated by the UDPR provides a series of undeniable advantages. (1) It is time and cost-effective compared to court proceedings; (2) it concludes with a binding judgment, equally enforceable as a judicial sentence; (3) it defers the controversy to arbiters with superior expertise in the area of internet law and international intellectual property law compared to ordinary judges; the Center’s dispute resolution system is so exhaustively regulated, that any incident that may incur within the proceedings already benefits from a provision, therefore (4) no room is left for doubt or delays (Evans, 2006). In brief, the procedure against the Center is based on the meeting of three core UDPR criteria. In other words, in order to have a ruling in their favour, the complainants must prove the following: (1) the identical/similar/confusing nature of the late registration; (2) the fact that the registrant has no rights/legitimate interests over the domain; and (3) the bad faith of the registrant (UDRP, paragraph 4(a)).
A few of the terms employed, apparently vague as to their meaning, have been subsequently crystallized through case law. A trademark is a notion encompassing any sign, design, word or combination of words susceptible of graphic representation, which enables a differentiation within the market between the goods and products of a certain producer and those of other producers. (Forner Delaygua, Garriga Suau, Parra Rodriguez, 2006). As to the concept ’confusingly similar to a trademark‘, the typosquatting practice comes to the fore: this term is used to denominate the practice of taking advantage from the common typing errors made by internet users when writing a website address into a browser, in order to register domain names confused for mark and attract users onto their own pages (famous examples include: wikipeda.org, which hosted an imitation of wikipedia.org redirecting users to spam, or arifrance.com, targeting airfrance.com’s users to a discount travel peddling website). Regarding the notion of ‘legitimate interest’, the Center established in its previous rulings that, once the complainant alleges a prima facie case suggesting the lack of a right or interest of the Respondent, the burden of proof shifts to the latter, who can still prove his right or legitimate interest in one of the following cases: (1) before any notice of a dispute the respondent used or has prepared to use the domain name in relation with an activity conducted in good faith; (2) the respondent or their business have been currently known by the name in question in spite of the lack of ownership of the mark; (3) the respondent is making a legitimate, non commercial use of the domain name, with no intent to make profit at the expense of third party reputation, or divert its consumers.
Last but not least, bad faith can be proven by a series of circumstances such as: making an offer to sell the domain name to the one entitled to have it, or its business competitors, or the use of the domain name to manage an activity similar to the complainant.
To draw a conclusion, despite the considerable liberalisation of the registration process of a domain name, the ’first come, first served’ principle does still not serve as a universal excuse and it does not open the gates of abuse. There still remains a solid international framework providing a safeguard for a person’s right to their name, to a trademark, to industrial property rights or any other previously registered domain name. For that matter, the simple fact that, over the past 30 years, one has been carrying out a worldwide renowned activity as a singer under the name of Madonna, entitles them to save a domain registered with the same name from the hands of a third party who, in bad will, shall use it to target fans, distribute porn, or promote any other type of content at the expense of that person’s reputation.
