domain name disputes
This page looks at domain name dispute resolution mechanisms
such as the UDRP, ACPA, CDRP and auDRP.
It covers -
- highlights from the academic literature
UDRP - the global mechanism under
rules - an overview of ccTLD regimes
and the auDRP - disputes in Australia
US and ACPA - US federal and state
and the CDRP - arbitration for dot-ca
As the preceding page of this note commented, disagreements
about registration of domain names and their use are common.
Responses to squatting have taken several forms.
Some businesses and other entities have acquired domain
names from a registrant, treating payment of 'ransom'
as their only option or merely as less costly than engaging
in litigation. That acquisition has driven the secondary
market. Others appear to have worked around restrictions
by acquiring the registrant in order to gain the name.
Some have simply sat out the speculative bubble, gaining
the name they seek from a registrar when the holder fails
to renew the registration. We've noted elsewhere that
several million dot-com names, for example have not been
renewed by the original registrant.
Some have engaged in large-scale defensive activity, registering
major variants of their corporate/brand name in all significant
TLDs. That has included preemptive registration of some
sucks sites: the Cheney & Bush presidential campaign
for example registered bushsucks.com, only to face bushsucks.us
in the revitalised dot-us ccTLD. Defensive registration
isn't excessively expensive for major corporations but
appears to have been superseded by reliance on litigation.
Others have sought protection under national/state legislation
or under TLD-specific dispute resolution mechanisms, such
as the UDRP and auDRP, that are based on the contract
between the registrar and registrant (and are thus underpinned
by national and international commercial law). That action
has fuelled the arbitration sector: lawyers, journalists,
lobbyists and commentators. It has not been restricted
to major corporate interests: one example is action taken
by the People for the Ethical Treatment of Animals (PETA)
advocacy group against the registrant of the People Easting
Tasty Animals (PETA) parody site (PDF).
DNS disputes are contentious. Bodies such as the Domain
Name Rights Coalition (DNRC),
the Association for Domain Owners Rights (ADOR)
and the loopier TLD Lobby (TLDL)
consider that 'squatting' is a perjorative for what is
really an exercise of intelligence/investment. Others
perceive many of the remedies as being biased in favour
of large businesses - one man's cybersquatting is another
man's commercial savvy, all within the rules of domain
naming within different countries (and using different
In 2007 WIPO released
information on trademark disputes and the UDRP. Parties
to WIPO UDRP cases came from 137 countries but, as in
the past, the most frequently named
nation for complainants and respondents was the US. Leading
plaintiff countries were France, the UK, Germany, Spain,
Switzerland, Italy, Canada, Australia and the Netherlands.
After the US the 'most named' respondent countries were
the UK, China, South Korea, Canada, Spain, France, Australia,
Italy and Russia. Australia was the location of the complainant
in 174 cases and the location of the respondent in 204
cases for gTLD names, behind 4725 and 4247 respectively
for the US.
We have highlighted particular studies - such as Dan
Burk's 1995 paper
Trademarks Along the Infobahn: A First Look at the
Emerging Law of Cybermarks and Michael Blakeney's
1999 Murdoch E-Law Journal article
on Interfacing Trade Marks & Domain Names -
in a detailed examination
in the Intellectual Property guide on this site.
Jessica Litman's 2000 The DNS Wars: Trademarks &
the Internet Domain Name System (PDF), like her other
writing on intellectual property, deserves consideration.
James Hutchinson's UK Journal of Information, Law &
on Can Trade Mark Protection Respond to the International
Threat of Cybersquatting?" offers a succinct review
of US and UK litigation about cybersquatting and 'passing
off'. Deborah Ezer's 2000 paper
Celebrity Names As Web Site Addresses: Extending the
Domain of Publicity Rights to the Internet highlights
particular issues regarding the 'right of publicity',
discussed in more detail in our Intellectual Property
Dara Gilwit's The Latest Cybersquatting Trend: Typosquatters,
Their Changing Tactics, and How To Prevent Public Deception
and Trademark Infringement (PDF)
A perspective from US commercial interests is provided
in the 2001 paper
by Julie Katz & Aron Carnahan on Battling the "CompanyNameSucks.com"
cyberactivists, Matthew Searing's 2000 paper (PDF)
What's in a Domain Name?" A Critical Analysis of the
National & International Impact on Domain Name Cybersquatting
and Patrick Jones' paper
Protecting your "SportsEvents.com": Athletic Organizations
and the Uniform Domain Name Dispute Resolution Policy.
For a broader perspective we recommend the cogent UK Journal
of Information Law & Technology paper
by Richard Wu on New Rules for Resolving Chinese Domain
Name Disputes - A Comparative Analysis, Christopher
Lee's 2000 paper
The Development of Arbitration in the Resolution of
Internet Domain Name Disputes and Kevin Eng's 2000
Breaking Through the Looking Glass: An Analysis of
Trademark Rights in Domain Names Across Top Level Domains
Most nations have rules, of varying complexity, to deal
with domain disputes. Increasingly those rules are based
on the UDRP, with modification to reflect local circumstances.
Nations that have simply adopted the UDRP for disputes
regarding registrations in their ccTLDs include Antigua
& Barbuda, the Bahamas, Ecuador, Fiji, Guatemala, Laos,
Mexico, Namibia, Niue, Panama, Uganda, the Philippines,
Romania and Venezuela. In July 2001 Singapore's Network
Information Center released proposals for a new UDRP-based
British administrator Nominet
is considering changes to the UK domain name dispute resolution
process. The proposed
rules would feature a two stage process in which the parties
would enter mediation for the two weeks. If unsuccessful,
the case would be referred to an arbitrator.
Australia and auDRP
Disputes regarding 'open' 2LDs in the dot-au space - administered
by auDA - are handled under the au Dispute Resolution
Policy (auDRP). The derivation, shape and implementation
of that policy are discussed
in more detail in the auDA profile on this site.
The policy is based on the UDRP, modified to reflect particular
features of the dot-au regime such as the 'close association'
requirement that inhibits speculative registration and
a secondary market in domain names. It is underpinned
by the contract between registrants and registrars.
The auDRP came into effect on 1 August 2002. So far it
has attracted little criticism (or indeed comment), with
only one ruling as of 30 January 2003 and a handful by
A range of Australian intellectual property (highlighted
here) and trade practice law
(highlighted here and
here) addresses broader
concerns regarding trademark infringements and 'passing
off'. Samantha Brown's 2003 paper
Misleading foreign websites not tolerated by Australian
courts offers a point of entry into the local literature.
US and ACPA
The UDRP involves arbitration rather than litigation
under state/national trade practices or trademark legislation
- for example about 'passing off' - or special cybersquatting
legislation. The enactment that has attracted most attention
is the US federal Anticybersquatting Consumer Protection
which came into effect in 1999.
Remedies under the UDRP are limited to transfer or cancellation
of the domain name and, compared to litigation in US courts,
legal costs are quite low. UDRP critics have, however,
argued that recourse to US courts may produce quicker
A domain name holder found to be a cybersquatter under
ACPA is liable for damages (statutory damages up to US$100,000
per domain name, or actual damages and profits), plus
court costs and lawyers fees.
There is liability if the registrant -
a bad faith intent to profit from a protected mark or
traffics in, or uses a domain name that is
a identical or confusingly similar to a distinctive
b identical, confusingly similar or dilutive of a famous
c protected under provisions relating to the Olympics
or related marks.
courts have ruled that litigants may use ACPA to overturn
a UDRP arbitration panel decision.
ACPA has attracted increasing attention from legal specialists.
Examples are Catherine Struve & R Polk Wagner's 2002
Realspace Sovereigns in Cyberspace: Problems with the
Anticybersquatting Consumer Protection Act (PDF)
and Sherry's 2002 Haste Makes Waste: Congress &
the Common Law in Cyberspace (PDF).
Kevin Heller's 2001 paper
The Young Cybersquatter's Handbook: A Comparative Analysis
of the ICANN Dispute considers the UDRP and ACPA.
There's a broader review in Adam Waxer's 1999 The Domain
Name Fiasco: The Legal Battle Between the Current Domain
Registration System and Traditional Trademark Law
A useful overview is provided in the US Patent & Trademark
Office report (PDF)
to Congress regarding ACPA.
A 2001 Californian state anticybersquatting law, reflecting
personality rights legislation,
protects the names of "living persons and deceased
personalities" by prohibiting bad faith registration
of domain names that are "identical or confusingly
similar" to the real names of notable people, living
The intention is to provide a
level of protection against internet fraud and will
make it easier for consumers to navigate the internet
by reducing the number of fraudulently registered names.
Canada and the CDRP
Dot-ca administrator CIRA,
the Canadian counterpart of auDA, established the CIRA
Domain Name Dispute Resolution Policy (CDRP)
to cover disputes regarding transfer or cancellation of
As with Australia, the Policy centres on domain names
registered in bad faith and is underpinned by by the Registrant
that all dot-ca domain name registrants enter into at
the time of registration.
The CDRP describes the nature of the dispute resolution
process, requirements for those wishing to initiate a
proceeding and types of bad faith registrations. It is
complemented by the CIRA Domain Name Dispute Resolution
that cover procedures for initiating and responding to
a CDRP proceeding.
Dispute resolution services under the CDRP are provided
by two arbitrators: the British Columbia International
Commercial Arbitration Centre (BCICAC)