by Traverse Legal, reviewed by Enrico Schaefer - February 6, 2008 - i. ICANN, Domain Name & UDRP Updates
One of the primary complaints from trademark holders is that the UDRP does not provide any penalties beyond domain name transfer against cybersquatters. There is little question that habitual bad faith cybersquatters have little to fear when the worst that can happen is domain transfer. But what most companies don't realize, and trademark lawyers who do not specialize in domain name dispute law don't understand, is that there are a variety of domain dispute procedures and policies in place, depending on the domain extension at issue.
All generic Top Level Domains: .aero, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .travel are governed by the Uniform Domain Name Dipsute Resolution Policy (UDRP). ccTLDs or country code top level domains, are governed by different polices and offer alternative approaches to domain name disputes.
Recently, SIDN introduced dispute resolution rules for .nl domain dispute resolution. The rules will replace the current arbitration process and will apply to all .nl domain names. The dispute resolution rules represent a speedy, straightforward and inexpensive alternative to the courts. Disputes are resolved by qualified independent specialists in the field of domain names and intellectual property rights. Domain names are registered electronically without monitoring whether the registrant (the domain name holder) who registers the domain name has infringed the rights of another party. However the domain name holder must declare that no infringement is taking place. If another party's rights have been violated, the dispute may be referred to the courts if the parties fail to resolve the matter between themselves; the courts will then determine whether the domain name must be relinquished or transferred.
IDN has been offering an alternative remedy to the courts since 29 January 2003, whereby domain name holders may refer disputes for arbitration. This arbitration process will be replaced on 28 February 2008 by the Dispute Resolution Rules for .nl domain names.
Of particular interest are the cybersquatting remedies available under the new policy.
Article 3. Remedies available
3.1 Within the framework of the arbitration procedure, the Plaintiff may seek the following remedies:
- for the Plaintiff to become the holder of the Domain Name instead of the Defendant (in such event, the award shall replace the form required by SIDN for the Change of Domain Name Holder).
- cancellation of the Domain Name;
- *a prohibition for the Domain Name Holder to register similar Domain Names in the future. The prohibition may be liable to a penalty;*
- *an order for the Domain Name Holder to pay the costs of the arbitration procedure, including the cost of legal assistance provided for in Article 28.8.*
These last two remedies are not currently available under the UDRP, but would be a welcome addition to the policy for habitual bad faith cyber-squatters. Further, expedited transfer of any other infringing domains held by that cyber-squatting registrant should be added.
As a founding partner of Traverse Legal, PLC, he has more than thirty years of experience as an attorney for both established companies and emerging start-ups. His extensive experience includes navigating technology law matters and complex litigation throughout the United States.
This page has been written, edited, and reviewed by a team of legal writers following our comprehensive editorial guidelines. This page was approved by attorney Enrico Schaefer, who has more than 20 years of legal experience as a practicing Business, IP, and Technology Law litigation attorney.
