As more and more businesses shift their focus towards online commerce, there are bound to be disputes, facilitated by the very nature of the internet, that occur across international borders. While some disputes that can be brought within the jurisdiction of the Untied States can be resolved through the Anti-Cybersquatting Consumer Protection Act (ACPA), it is important for business owners to recognize that the ACPA and other United States laws may not be sufficient to hale international parties into a United States court. Therefore, in order to protect against international cybersquatting or trademark dilution, businesses should ensure that they are adequately protected under the Internet Corporation for Assigned Names and Numbers (ICANN) standards.
The Domain Name System and ICANN
Online businesses rely on web pages and online advertising to reach potential customers over the internet. The domain name system (DNS) is the standard protocol that facilitates this process and allows computers to exchange data via the internet. The DNS is the mechanism which permits users to type an address into their browser and be directed to the corresponding site. This mechanism is important because everything on the web needs a unique numeric address assignment, or the equivalent of a telephone number. It is equally important to note that there are a finite number of possible addresses.
After entering an address in a browser, the user is connected to the web page associated with the domain name via databases called Domain Name Registers (DNRs). The DNRs link the domain names to their unique identifying numbers needed to route the data properly over the network. For the sake of comparison, the DNRs can be considered the equivalent of telephone books and the addresses can be though of as the telephone numbers. Notably, despite being assigned unique numerical addresses, the majority of internet users connect to websites by entering the domain names associated with those addresses. Therefore, registration and protection of domain names will be paramount to the protection of any online business.
While this process was originally overseen by the United States Government, in 1998, the Department of Commerce handed control of the DNS over to the private sector. Eventually, control was delegated to the non-profit, private corporation ICANN. ICANN serves as the primary regulator of DNS policies, and also decides what top-level-domains (TLDs) will be used and who can offer domain names within certain TLDs for public sale. In addition to authorizing the TLDs, ICANN enters into licensing arrangements directly with DNRs or with countries, who then delegate the authority to DNRs.
Because ICANN controls access to the DNS, they can condition that access by forcing DNRs to obey ICANN standards. In this way, ICANN leverages control of the root DNS servers into a contractual set of agreements that requires DNRs to abide by ICANNs Uniform Domain Name Dispute Resolution Policy (UDRP). Under the policy, ICANN can instruct a DNR to cancel, suspend, or transfer a domain name to its appropriate owner, although “[M]ost types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration” before a registrar will take any affirmative action.
Registering your Website
As previously mentioned, the inherent and unavoidable flaw with this system is that there are a limited number of domain names that can be issued. Companies in different product markets, or even in different countries, may end up competing over domain names they both claim a legitimate right to own and operate under. Moreover, there is always the threat of individuals registering or using a domain name, in bad faith, to the detriment of online companies.
The first step in protecting a website is to register with a DNR. When registering a website, business owners’ primary concerns will be with preventing fraud, and the predatory practice known as cybersquatting. Owners’ should be careful to register not only the correct domain name, but also common typographical errors of that name as well. Additionally, savy business owners will register domain names that are likely to be confused with their own in order to reach the largest possible range of consumers. These precautionary measures will ensure that your business is less susceptible to the predatory practice known as cybersquatting.
Another key consideration for online business owners is to consider the extent of TLD protection that will be necessary. If the business is going to operate exclusively in the United States, registering under the TLDs of .com, .net, and .org., is likely to provide sufficient protection. However, if the online business seeks to target international consumers, the owner should be aware that registering under those TLDs does not prevent that name from being used in every country. Businesses should take note of country-specific TLDs and register in those countries where it expects to conduct sufficient business dealings, or where the threat of potential confusion or infringement is greatest.
Filing A Complaint and the UDRP
The process of protecting your domain name does not end at registration, and business owners must be vigilant in detecting problems including cybersquatting and trademark dilution, among others. Once an issue has been detected, a claim must be filed and the UDRP facilitates the dispute resolution process.
Under the UDRP, a complainant can seek to recapture a specific domain-name by first submitting to a mandatory administrative proceeding supervised by approved service providers. The UDRP also provides for an expedited administrative proceeding in the event of abusive registrations of domain names (i.e. cybersquatting). Trademark holders can initiate expedited proceedings under the UDRP by filing a complaint with an approved dispute-resolution service provider. The UDRP is extremely useful for trademark disputes because the trademark owners are not allowed to place a hold on domain names during the dispute resolution process, and the administrative dispute resolution process is mandatory, and therefore, extremely effective at bringing adverse parties together.
When filing a complaint, the complainant has the choice of selecting a single-member or three-member panel, however the complainant will bear the burden of paying the entire fee for a single-member panel. The respondent will be given an opportunity to respond to the complaint, and to request a three-member panel. If no response is received within twenty days of the commencement of administrative proceedings, the panel will decide the case based on the evidence submitted by the complainant.
In order for a complainant to prevail, he must demonstrate the following three elements: (1) a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the other user has no legitimate interests in use of, or rights in, the domain name; and (3) the other users domain name has been registered and used in bad faith. Complainants can refer to the policy, for additional information regarding what constitutes evidence of bad faith and registration.
Because the “The UDRP is a policy between a registrar and its customer and is included in registration agreements for all ICANN-accredited registrars,” if a complainant is victorious, ICANN will facilitate the transfer of the domain name away from the infringing party to it’s rightful owner. The registrars will obey rulings sanctioned by ICANN, or they will risk losing their ability to continue to distribute domain names. In this way, through mindful registration practices, and vigilant policing of potential disputes, business owners can safely engage in international ecommerce without fear.