Numerous companies and entrepreneurs have been involved in international ‘litigation’ regarding domain names that incorporate or correspond to their common law or registered trade marks. Such ‘litigation’ is conducted in terms of the Internet Corporation for Assigned Names and Numbers’ (ICANN’s) Uniform Domain name Dispute Resolution Policy (‘UDRP’), which deals with disputes regarding Top Level Domain names such as dot.com, dot.org and dot.net. This contribution deals with the following questions: If a entrepreneur or entity is dissatisfied with a UDRP decision,
· does the UDRP decision constitute an arbitration award; and
· what procedure should be followed to have that UDRP decision reversed or reviewed by a court of law?
These questions are discussed in the context of South African law, assuming that the South African court enjoys jurisdiction and that the ‘complainant’ is the proprietor of either a common law or registered trade mark in
1 Background
When anyone in the world registers a Top Level Domain name his domain name registration agreement provides that, should someone else in the world (the ‘complainant’) dispute his entitlement to the domain name in question, the complainant is entitled to institute administrative proceedings in terms of the UDRP against him (ie the domain name owner). The domain name owner cannot refuse to partake in these proceedings. A panel will then be appointed by one of the dispute resolution service providers designated by ICANN (such as WIPO) who will then decide the dispute. If the panel holds in favour of the complainant, it will order that the domain name be transferred to the complainant and accordingly the ‘domain name owner’ (ie the respondent) loses his rights to his domain name. If the panel holds in favour of the domain name owner, he retains his domain name.
2 Reversal possible in terms of the UDRP
The UDRP provides that the ‘mandatory administrative proceedings’ do not prevent either the complainant or the respondent from submitting the dispute to a ‘court of competent jurisdiction for independent resolution’ either before or after administrative proceedings are commenced or are concluded, (para. 4k) A ‘court of competent jurisdiction’, in turn, refers to either the court where the domain name registrar (the entity that registered the domain name in the name of the domain name owner) is located – provided that the domain name owner submitted in his domain name registration agreement to that jurisdiction for adjudication of disputes in respect of the use of his domain name – or the court in whose jurisdiction the domain name owner’s address is, as indicated in the domain name registrar’s WHOIS database. (para. 4(k) of the UDRP read with para. 3(b)(xiii) and the definition of ‘mutual jurisdiction’ in the Rules for Uniform Domain Name Dispute Resolution Policy (the ‘Rules)).
If the administrative panel decides that the domain name must be transferred to the complainant, ICANN will wait for ten business days before implementing the said decision. During the 10 days, the domain name owner can lodge a civil lawsuit. Upon receipt of proof thereof, ICANN will not implement the UDRP decision until it receives either (a) evidence that the parties resolved their dispute, or (b) evidence that the lawsuit was dismissed or withdrawn or (c) ‘a copy of an order from such court dismissing [the] lawsuit or ordering that [the domain name owner does] not have right to continue to use [the] domain name’ (para. 4 k.).
ICANN will implement the civil judgment (ie it will transfer the domain name or cancel registration thereof or maintain the status quo), upon receipt of the said judgment (para. 3).
Rule 18 provides that where legal proceedings are initiated prior to or during administrative proceedings the Panel ‘shall have the discretion to decide whether to suspend or terminate the administrative proceeding’ (para. 18(a)). Therefore judicial intervention is contemplated, which can occur before, during, or after the UDRP’s dispute-resolution process is invoked.
2
US courts were also required to rule on the following issues: (1) Does a UDRP decision constitute an arbitration award in terms of the US Federal Arbitration Act (Title 9 of the United States Code, s 1 et seq) (the ‘FAA’), which does not contain a definition of the word ‘arbitration’ and, (2) if not, how does one proceed to ‘reverse’ the said UDRP decision? The US Courts ruled as follows:
1 The UDRP does not constitute arbitration proceedings in terms of the FAA in that –
1.1 The UDRP contemplates the possibility of judicial intervention at any time. The UDRP was intended to ensure that the parties could seek independent judicial resolution of domain name disputes, regardless of whether its proceeding reached a conclusion. Therefore the UDRP was never intended to replace formal litigation. (See Dluhos v Strasberg et al 321 F.3d 365 (3rd Cir. 2003) – a copy of this judgment can be downloaded from www.case.info/domain/dluhos1.pdf.) In fact, the UDRP contemplates that the judicial outcome will override the UDRP decision. (See Sallen v Corinthians Licenciamentos LTDA et al 273 F.3d 14 (1st Cir. 2001) – a copy of this judgment can be downloaded from www.case.info/domain/corinthians1.html.).
1.2 Because the trade mark holder is not required to avail himself of the UDRP before instituting proceedings in a court of law, the UDRP proceedings do not qualify as the type that would entail a court compelling party participation prior to independent judicial review. Even though the UDRP describes its dispute-resolution process as ‘mandatory’, the process is not ‘mandatory’ in the sense that ‘either disputant’s legal claims accrue only after a panel’s decision . Only the domain-name registrant is contractually obligated to participate in the proceeding if a complaint is filed … Indeed, it is not the district court litigation that could be stayed pending dispute resolution, but rather the dispute-resolution mechanism itself . it is evident that the UDRP provides “parity of appeal,” affording a “clear mechanism” for “seeking judicial review of a decision of an administrative panel cancelling or transferring the domain name.” ‘ See Dluhos v Strasberg supra.
2. The Anti-Cybersquatting Consumer Protection Act (‘ACPA’) provides that a domain name registrant whose domain name has been suspended, disabled or transferred may sue for a declaration that he is not in violation of the said Act’s provisions (Section 1114(2)(D)(v)). Therefore ACPA provides for an affirmative cause of action. (See Sallen v Corinthians Licenciamentos) Accordingly, a declaratory judgment is sought to establish whether the domain name owner unlawfully registered the domain name in question (see Barcelona.com Inc v Excelentisimo Ayuntamiento De Barcelona 189 F.Supp.2d 367 (E.D. Va. 2002) – a copy of this judgment can be downloaded from www.oblon.com/Barcelona/196971Barcelona.pdf).
3. The UDRP decision should be given no weight and the case before the US court must be decided de novo based on the evidence presented before it (see Barcelona.com Inc v Excelentisimo Ayuntamiento De Barcelona; Barcelona.com Inc v Excelentisimo Ayuntamiento De Barcelona No 02-1396 (4th Cir. 2003) (a copy of this judgment can be downloaded from http://pacer.ca4.uscourts.gov/opinion.pdf/021396.P.pdf); Weber-Stephen Products Co v Armitage Hardware 54 USPQ.2d 1766 (N.D. ILL. 2000) (a copy of this judgment can be downloaded from http://pub.bna.com/ptcj/001738.htm.) This is substantiated by the fact that because the UDRP envisages that a court will determine whether the domain name owner has ‘the right to continue to use’ his domain name, it implies more than a review of the procedural soundness of the UDRP decision. It ‘implies resolution of the parties’ overarching trademark, contract, and other claims and defenses’. (See Parisi v Netlearning Inc (139 F.Supp.2d 745 (E.D. Va. 2001) – a copy of this judgment can be downloaded from www.sorkin.st/documents/netlearning1.html).
3 The South African law
3.1 The law
The first problematic issue in answering the questions posed in the introduction is that one is dealing here with a ‘foreign’ decision in the sense that a UDRP decision is given in terms of proceedings not held in
Assuming for a moment that the UDRP decision constitutes an arbitration award, one must turn to the Recognition and Enforcement of Foreign Arbitral Awards Act 40 of 1977 (the ‘Act’), which deals with the enforcement of ‘foreign arbitral awards’ in
So one must determine whether a UDRP decision constitutes an ‘arbitration award’. The South African Supreme Court of Appeal held in Total Support Management (Pty) Ltd and Another v Diversified Health Systems (SA) (Pty) Ltd and Another 2002 (4) SA 661 (SCA) (at para. 24) that the distinctive attributes of arbitration are:
1. arbitration proceeds from an agreement between parties who consent to a process by which a decision is taken by the arbitrator that is binding on the parties;
2. the arbitration agreement provides for a process by which the substantive rights of the parties to the arbitration are determined;
3. the arbitrator is chosen, either by the parties, or by a method to which they have consented; and
4. arbitration is a process by which the rights of the parties are determined in an impartial manner in respect of a dispute between them which is formulated at the time that the arbitrator is appointed.
With regard to attribute number 1, the courts have continuously emphasised the importance of the element of finality. See for example Kollberg v
It is submitted that the UDRP proceedings, although containing many attributes of arbitration proceedings, do not constitute arbitration by reason of the fact that the UDRP creates a ‘right of reversal’, which is contrary to the characteristics of arbitration. Therefore the element of ‘finality’ is lacking.
It is further submitted that the essential element of an agreement between parties who consent to a process by which a dispute is referred to arbitration is lacking in that no agreement exists between the complainant (ie trade mark owner) and the respondent (ie the domain name owner). When the complainant lodges his complaint he submits to both the UDRP and the Rules. The respondent is bound to the UDRP by reason of the fact that it is incorporated into his registration agreement concluded with the domain name registrar.
The result of this conclusion as well as the fact that the UDRP decision does not constitute a civil judgment is that a South African court will not recognise and/or enforce the UDRP decision.
3.2 The procedure
The next question is how does one procedurally go about ‘reversing’ the effect of the UDRP decision? It is submitted that, where both parties reside within South Africa and the UDRP panel ruled that the domain name must be transferred to the trade mark owner, the domain name owner will have to institute action (within 10 days from the date on which ICANN is informed of the UDRP decision) in the High Court requesting a declaratory order whether he or it is infringing the defendant’s trade mark rights or not. The action procedure will have to be used because it can safely be assumed that a dispute of fact, which cannot be resolved on paper, will arise. Where the UDRP panel ruled against the trade mark owner, he will institute trade mark proceedings against the domain name owner; one of the prayers being that the domain name registrar/ICANN be ordered to transfer the domain name to him.
Where either the domain name owner or the trade mark owner does not reside in South Africa, proceedings can only be instituted in a South African court when the South African court enjoys jurisdiction according to the South African law and such court falls within the definition of a ‘court of competent jurisdiction’, seeing that both parties are bound to the UDRP (the domain name owner as a result of the domain name registration agreement and the trade mark owner by reason of the fact that he submitted to the UDRP when he institute administrative proceedings against the domain name owner).
Finally, seeing that the UDRP decision will not be recognised by a South African court, as indicated above, evidence will have to be led de novo to enable the court to make a proper ruling. See in this regard paragraph 150(iv) of the 1999 ‘The management of Internet names and addresses: intellectual property issues – Final Report of the WIPO Internet Domain Name Process‘ where it is recommended that ‘a party should be free to initiate litigation by filing a claim in a competent national court instead of initiating the administrative procedure, if this is the preferred course of action, and should be able to seek a de novo review of a dispute that has been the subject of the administrative procedure.’ (A copy of this document can be downloaded from http://wipo2.wipo.int.)
4 Conclusion
The above discussion illustrates the problematic issues that will arise should either a complainant or a respondent (to previous UDRP proceedings) attempt to reverse the effect of a UDRP decision, as contemplated by the UDRP. It is submitted that all legislatures should provide clarity on the above issues by promulgating legislation dealing with the reversal of UDRP decisions.
Dr Gerrie Ebersöhn, LL.B (cum laude) LL.M (cum laude) LL.D, Attorney at Hofmeyr Herbstein & Gihwala Inc (
