. Brainwave

Resolving Domain Name Disputes

Prof. Anurag K. Agarwal, LL.M. (Harvard), LL.D. ( Lucknow )

Indian Institute of Management , Ahmedabad


Institutional Arbitration – WIPO  

The World Intellectual Property Organization (WIPO) is an international organization dedicated to helping to ensure that the rights of creators and owners of intellectual property are protected worldwide and that inventors and authors are, thus, recognized and rewarded for their ingenuity. This international protection acts as a spur to human creativity, pushing forward the boundaries of science and technology and enriching the world of literature and the arts. By providing a stable environment for the marketing of intellectual property products, it also oils the wheels of international trade. The number of member States belonging to WIPO now stands at 182, over 90 per cent of the world's countries - a reflection of the crucial importance and relevance attached to the work of the Organization.

There is a vital need for quick and inexpensive ways of settling commercial disputes involving intellectual property rights, and providing private parties with an alternative to often lengthy and costly court proceedings. This need has increased in recent years with the growing importance of international trade. WIPO's Arbitration and Mediation Center helps to meet those needs for companies and individuals anywhere in the world. The Center maintains an extensive list of specialized mediators or arbitrators from over 100 countries, who conduct dispute resolution procedures according to rules made available by WIPO. The procedures may take place in any country, in any language, and under any law, allowing a great deal of flexibility. Indeed, because they are cost-effective, the WIPO procedures are particularly interesting for companies that are unable or unwilling to enter into expensive or protracted litigation, especially at the international level. The subject matter of disputes resolved by means of WIPO procedures has included both contractual (e.g. patent and software licenses, trademark coexistence agreements, distribution agreements for pharmaceutical products and research and development agreements) and non-contractual disputes (e.g. patent infringement).

The WIPO Center is the leading dispute resolution service provider for challenges related to abusive registration and use of Internet domain names, commonly known as "cyber-squatting".

All domain name disputes come under the jurisdiction of the World Intellectual Property Organization (WIPO). It is the supreme body in this regard – all parties, whether hosting a website or registrars, fall under WIPO regulations and any dispute between parties is resolved through arbitration under a panel appointed by WIPO itself.

There are three criteria which are important in the domain name disputes and the panel of arbitrators look into them. These are:

•  Domain name is identical / confusingly similar - This criterion is fulfilled if the domain name is a misleading copy of a well known trademark. The Complainant then has a case against the Respondent in a sense that the latter is trying to leverage the goodwill of the brand to generate profits.

•  Issue of Rights / Legitimate interests - This criterion is fulfilled if the Complainant proves that there is no contract between the Complainant and the Respondent. In such a case, the Respondent may be trying to sell unrelated goods or services in the veil of the known brand. The quality of such services may be inferior and may bring disrepute to the existing brand simply because the misled users expect a certain minimum level of quality, given the brand.

•  Bad Faith - If the intention of the Respondent is to simply register a domain name, which is similar to a well-known brand, then the Complainant can move the “Bad Faith” argument. Another argument which can ascertain bad faith is whether the domain name is instrumental is causing confusion in the minds of the consumers as to whether the former is actually in relation to the well known brand.

  Reasons for Success of WIPO in Domain Name Resolution

The WIPO dispute resolution system is very fast and some lessons can be learnt from it regarding resolution of business disputes. This model may be replicated in other spheres also.

The reasons of the success may be enumerated as under:

•  Objectively laid out criteria – The criteria for dispute resolution under WIPO are objectively laid out and leave no room for ambiguity which aids in quicker dispute resolution.

•  Low Stakes – Barring some e-business ventures whose primary business runs through a web site, the issue of a domain name is not very central to the well functioning of a business. Thus since the stakes are lower than in other business disputes, these disputes tend to be resolved quickly.

•  Centralized Authority – At the time of registration of the domain name, the rules are laid out clearly that any dispute would be resolved through arbitration under WIPO. The registering authority has complete control over the domain name and once a misuse is confirmed, it has all the needed authority to put an end to such usage with immediate effect.

•  Effective Enforcement possible - Due to the presence of a centralized authority, effective enforcement of the award of the arbitration process is possible. Whatever the decision, it can be implemented even if the losing party does not agree to it completely. This is different in nature from other business disputes where such possibilities seldom exist.

  Way Forward – Extensibility of This Model

  This is a very effective model of arbitration and avenues for its extension to the business disputes at large need to be explored. Some such possibilities are mentioned as under:

Establishment of Specific Rules and Specific bodies – Sectors where such arbitration is possible must be identified rather than trying to force fit this model to all disputes and rules must be established for such sectors.

Identify objective criteria – The success of this model relies heavily on the objective nature of the criteria and attempts must be made to choose the specific sectors in such a way that establishment of such criteria is feasible.

The method if adopted in the business disputes, particularly related to high-tech disputes shall bring down the number of matters pending in the courts either due to non-availability of time or trained judges. Experts in the related field may work as arbitrators and dispose of the matters expeditiously providing the parties involved in the litigation much relief and saving a lot of time and expenses.