The problem of ‘internet squatters’ was highlighted recently by a dispute over the domain name ‘D4Hotels.com’. The settlement of a High Court action over the ownership of that name was delayed by the presence of an internet squatter who had registered an interest in the name on the lapse of its registration. Internet squatters register domain names in their own name, usually with the intention of selling them back to their original owners or to one of their competitors. The flurry of registrations of domain names incorporating the name ‘Obama’ around the time of the US Presidential inauguration also illustrates this trend.
A registration by an alleged internet squatter may primarily be challenged under the rules of the organisation responsible for managing the domain namespace in question. This article will discuss the procedure to be followed when such a challenge is made in relation to a .IE domain name.
The Rules
Disputes concerning .IE domain name registrations are governed by the dispute resolution rules of the IEDR, which is the registry for .IE internet domain names. The rules consist of the IEDR Policy and the World Intellectual Property Organisation dispute resolution rules of procedure. It is a condition of the registration of a .IE domain name that, if a dispute arises, registrants must participate in the ‘administrative proceeding’ under the dispute resolution rules. If a complaint is successfully brought under the Policy, the registration in question may be transferred to the complainant or cancelled altogether. The IEDR may, alternatively, confirm the registration.
Initiating a dispute
In order to ground a dispute under the Policy, the complainant must prima facie establish three grounds. These are as follows.
1. The domain name under dispute must be identical or misleadingly similar to a ‘Protected Identifier’ in which a complainant has rights. Protected Identifiers include trade and service marks (including unregistered marks in which the complainant has acquired common-law rights), personal names (including pseudonyms) and geographic indications.
2. The registrant has no rights in law or legitimate interests in respect of the domain name. The fact that a registrant has registered the domain name does not constitute evidence of rights in law or legitimate interests. The Policy sets out a list of factors which may be considered as evidence of rights or legitimate interests in a domain name, as follows:
i. the registrant, before being put on notice of the complainant’s interest in the domain, made demonstrable good faith preparations to use the domain name in connection with a good faith offering of goods or services, or operation of a business;
ii. the domain name corresponds to the personal name or pseudonym of the registrant;
iii. the domain name is identical or misleadingly similar to a geographical indication and was used in good faith by the registrant before such geographical indication was protected in the island of Ireland.
It should be noted that this is not an exhaustive list and evidence may be introduced over and above these factors to suggest that a registrant has rights or legitimate interests in a domain name.
3. The domain name has been registered or is being used in bad faith. The Policy sets out a non-exhaustive list of factors which may be considered as evidence of registration or use of a domain name in bad faith. One of these factors is that the domain name has been registered or is used primarily for the purpose of transferring the registration to the complainant or to a competitor of the complainant for valuable consideration. This is highly relevant in relation to complaints brought against internet squatters.
Once a complainant has prima facie established these three grounds, an administrative proceeding may be commenced.
Procedure
A complainant may commence an administrative proceeding by submitting the dispute to the WIPO Arbitration and Mediation Centre, along with a fee. Under an administrative proceeding, a dispute is put before impartial and independent WIPO panelists who are qualified in Irish law. The panel may be either a single member or a three member panel. The fee payable ranges from €1,500 to €5,000, depending on whether a single or three member panel is selected and the number of domain names in dispute. The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain name holder or by associated companies. One half of the fee is payable by the registrant if the registrant elects to have a dispute heard by a three member panel, rather than a single member panel elected by the complainant. In all other cases the complainant is liable for the fees. The form of the complaint is outlined in the WIPO Rules.
On receipt of the complaint, if the Arbitration and Mediation Centre determines that it is compliant with the Policy and the WIPO Rules, it shall forward it to the registrant within three working days following receipt of the fees from the complainant. The registrant then has 20 working days, which may be extended in exceptional cases or by agreement of the parties as approved by the Provider, to submit a response to the Arbitration and Mediation Centre. The Centre must endeavour to appoint a panel within five working days following receipt of the response. If the Centre finds a complaint to be formally deficient with regard to the requirements of the Policy and the WIPO Rules, it shall promptly inform the complainant, who then has five working days to correct any such deficiencies. If this is not done, the complaint is deemed withdrawn without prejudice to the submission of a different complaint by the complainant.
The panel conducts the administrative proceeding in such a manner as it considers appropriate in accordance with the Policy and the WIPO Rules. This is usually by way of written submissions, unless the panel decides that an in-person hearing is necessary for deciding the complaint. The panel may request further statements or documents from either of the parties, and determines the admissibility, relevance, materiality and weight of the evidence given. The panel may draw such inferences as it considers appropriate if a party does not comply with the provisions or requirements of the WIPO Rules or the requests of the panel, and shall proceed to reach a decision in the event that a party does not comply with any of the time periods established by the panel or by the WIPO Rules.
In the absence of exceptional circumstances, a single member panel shall forward its decision to the Arbitration and Mediation Centre within 14 working days of its appointment, and a three member panel shall do so within 21 working days of its appointment. The Centre will then communicate this decision to the parties and the IEDR within three working days of receiving the decision. As noted above, if a complaint is well founded the panel may decide to transfer or cancel the registration of the domain name. If the complaint is unsuccessful, the panel may confirm the registration. The IEDR will then implement the decision, in accordance with the Policy.
Conclusion
A complainant who can prima facie establish the three grounds noted above may consider initiating an administrative proceeding in relation to the .IE domain names which it considers are subject to internet squatting. While decisions made under the Policy are without prejudice to the rights of a complainant to commence court proceedings, a successful complaint under the Policy may be a prompt and cost-effective avenue of redress against internet squatters.
Tess Crean is a Trainee Solicitor at Mason Hayes+Curran, Dublin: tcrean@mhc.ie
