Setting the scene: principles of domain name disputes


Eric Ramage

Many, but not all, domain name registries offer some form of alternative dispute resolution, the best known of which is ICANN’s UDRP, but there are others, as Eric Ramage explains.

Many, but not all, domain name registries offer some form of alternative dispute resolution, the best known of which is ICANN’s UDRP, but there are others, as Eric Ramage explains.

Nominet, the UK registry, offers its own dispute resolution service (DRS) and Eurid, which runs the European Domain Name Registry, also offers its own alternative dispute resolution (ADR). Other ADR services are offered by individual registries, and some have none at all.

Eurid’s ADR is administered by the Czech Arbitration Court and is based upon EC Regulation 874/2004, in particular Article 21, which states that a registered domain name shall be subject to revocation (i) when it is identical, or confusingly similar, to a name in respect of which a right is recognised or established by national and/or Community law; (ii) when it has been registered by its holder without rights or legitimate interest in the name; or (iii) when it has been registered, or is being used, in bad faith.

The Nominet DRS can be viewed on its website at

The complainant to Nominet must prove that it has “rights in respect of a name or mark which is identical or similar to the domain name” and that the domain name, in the hands of the respondent, is an abusive registration.

The complainant must prove that both elements are present on the balance of probabilities. These “rights” mean rights that are enforceable by the complainant, whether under English law or otherwise, and may include rights in descriptive terms which have acquired a secondary meaning.

An abusive registration means a domain name which was registered, or otherwise acquired, in a manner which, at the time the registration or acquisition took place, took unfair advantage of, or was unfairly detrimental to, the complainant’s rights; or one that has been used in a manner which has taken unfair advantage of, or has been unfairly detrimental to, the complainant's rights.

These will include domains registered to be sold at a profit to the complainant, or to be used commercially taking unfair advantage of complainant’s reputation.

“Fair use” may include sites operated solely in tribute to, or in criticism of, a person or business, but case law suggests that this defence is not open when the registrant makes some financial gain from using the domain name, even for the purpose of defraying the expense of maintaining the website. Trading in domain names for profit, and holding a large portfolio of domain names are, of themselves, lawful activities, but the expert will review each case on its merits.

Similarly, sale of traffic (ie, connecting domain names to ‘parked’ pages and earning click-perview revenue) is not, per se, objectionable under the policy. However, the expert will take into account factors such as the nature of the domain name, the nature of the advertising links on any parked page associated with the domain name; and the fact that the use of the domain name is ultimately the respondent’s responsibility.

The Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy (UDRP) applies to all generic top-level domains (gTLDs)—at time of writing these are .com, .net, .org, .aero, .asia, .biz, .cat, .coop, .info, .jobs, .mobi, .museum, .name, .pro, .tel, .travel—as well as to certain country code TLD (ccTLD) names. For some time, ICANN has required any new registry to offer UDRP.


Although the World Intellectual Property Organization (WIPO) is not the only dispute resolution provider, an extremely good place to start is WIPO’s website, which links to the WIPO Arbitration and Mediation Center with information regarding the specific gTLD registries and polices applicable to disputes affecting those domains. WIPO also provides a domain name dispute resolution service for 65 ccTLDs, with details on its website at

Under ICANN, the complainant must prove that the domain name is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights; that the registrant has no rights or legitimate interests in respect of the domain name; and that it has been registered, and is being used, in bad faith. All these elements must be proved.

The first UDRP decision (WIPO Case D99-001 discussed the questions of registration and use. A domain name must not only be registered in bad faith, but it must also be used in bad faith—in this case the respondent did not have a website corresponding to the registered domain name. Could it then be said to have ‘used’ the domain name?

Paragraph 4(b)(i) of the policy provides that circumstances indicating that the registrant had acquired the domain name primarily for the purpose of selling it on to the complainant shall be evidence of bad faith. Because the respondent had offered to sell the domain name to the complainant for a consideration in excess of any out-of-pocket expenses directly related to the domain name the UDRP panellist held that the respondent had used the domain name in bad faith, as defined in the policy.

Under the policy it is for the complainant to establish its case.

In a more recent case (Case No. D2011-1034, the respondent successfully argued (i) that he had rights or a legitimate interest in the domain name because the domain name (the French word for ‘angel’), was a good name for a domain name that could be sold on to a third party, although not necessarily the complainant or any of its competitors; (ii) that he was not aware of the complainant or any of its competitors at the time of registration; (iii) that the mere act of offering to sell a domain name is not, by itself, evidence of bad faith; and (iv) that to succeed, the complainant must show that the trademark relied upon is well-known, or that the respondent knew of the complainant and its trademark at the time the domain name was registered.

The complainant must establish its case, and is generally expected to show that the respondent had knowledge, or at least was in a position to have had knowledge, of the relevant trademark at the time of registration, or to provide sufficient information from which that inference may be drawn.

In this case the complainant did not provide any evidence from which the UDRP panellist could infer the likelihood that the respondent was aware of the complainant’s trademark prior to the date of registering the domain name. Therefore the panellist could not find that the respondent had the relevant bad faith intent, nor infer such intent. The complaint was denied.

It should be noted that a registrant may establish “rights and legitimate interest” by showing that the domain name is a marketable commodity in its own right, provided that its use does not impinge upon or take unfair commercial advantage of another’s established trademark rights.

It is equally important that many respondents regard any word that appears in a dictionary as ‘generic’ (and, therefore, fair game) whether it describes the goods for which it may be registered as a trademark (and despite the fact that a word that simply describes the goods or services for which protection is sought, will not be accepted for trademark registration in most jurisdictions), or not.

It is important, therefore, that a complainant establishes first, that any possibly descriptive trademark relied upon has acquired a secondary meaning or is recognised as the complainant’s trademark; and second, that the respondent’s registration and use of the domain name is in bad faith.

The expert’s decision in the first Nominet DRS case, (, DRS 0001) contained these words:

“Not all experts appointed to make decisions under the policy will be trademark specialists, so if complainants are proposing to rely on propositions commonly deployed in trademark disputes, they would do well to flesh them out with evidentiary support and in a fashion comprehensible to someone not well versed in that practice area.”


Eric Ramage is a trademark advocate litigator at Alexander Ramage Associates LLP. He can be contacted at:

This article was first published on 01 May 2012 in World IP Review

Nominet, ICANN, UDRP, ADR, domain name registry

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