The Internet has brought many changes to our lives, and one of them comes in the form of domain name disputes. These conflicts over web domain names can become legal issues or create different kinds of controversy and contention.
Think of domain names as important Internet real estate. Only one party can control a given domain, and although the list of possible domain names is pretty long, some of the top-level .com domains are prized possessions.
So how do you deal with an active domain name dispute?
What are domain name disputes?
Domain name owner disputes happen when more than one party believes they should own a particular domain name or when someone believes that the use of generic top-level domains is damaging to their online footprint and digital business operations.
This kind of conflict most often happens when someone buys a domain name for which someone else has a registered trademark or uses a particular phrase in branding. In other words, one person has the technical domain name registered, and the other person has a claim to the word or phrase itself. People using words or phrases in domain names inappropriately are sometimes called “cybersquatters.”
Top domain name dispute cases
Let’s look at some of these historic domain name battles and how they played out.
- First, there was the story of ‘candyland.com,’ where the Hasbro toy company did battle with an obscure adult entertainment company. In litigation, Hasbro was found to have a trademark right to the term Candyland with its iconic board game, and the domain name eventually was controlled by the bigger corporation.
- Another story of corporate domains ended quite a bit differently. Some enterprising party registered a key McDonald’s domain, and the fast-food company wanted it back. Here, the two parties reached a settlement outcome where McDonald’s agreed to contribute to a charity in return for securing the contested domain name.
- Some domain name disputes, as in the case of MTV vs. Adam Curry, can be settled out of court.
- Others require some legal intervention, as when some outside party took the “peta.org” domain (used by People for the Ethical Treatment of Animals) as a joke, using the phrase “People Eating Tasty Animals.”
- Some of these disputes also have a geopolitical element. For instance, when a Chinese party registered ‘taiwan.com,’ the independent, autonomous community was incensed.
These are just some of the most prominent domain name disputes that have been looked at by professionals and analysts who want to understand how these conflicts should be handled.
Domain name disputes: Legal remedies
Of course, one option is for the two parties to take a domain name dispute to court. Laws like the Anti-Cybersquatting Consumer Protection Act of 1999 apply.
However, this will typically require extra work and costs that court cases are known for. Even initial work like depositions can be costly, and the cost of trial representation can sink any smaller party that wants to legally contest a domain name ownership.
Alternatively, parties can go to the organizations that register domain names as URLs, the Internet registrars. The Internet Corporation for Assigned Names and Numbers (actually composed of multiple stakeholders) is the administrator of record for the Internet, aided by the Internet Assigned Numbers Authority (IANA.)
For some years now, parties have been able to use a common resolution method called the Uniform Domain Name Dispute Resolution Policy, abbreviated UDRP, which provides a framework and a pathway to successfully resolving domain name disputes.
Domain name disputes and legal criteria
In general, legal professionals are looking at three criteria for domain name ownership.
- First, there’s the idea that a corporation might have a trademark corresponding to the word or phrase that the domain name consists of or that is close to a given top-level domain.
- Second, parties in a domain name dispute will show that the other party has no legitimate right to a particular domain name.
- There’s also the concept of bad faith action, where parties charge each other with doing something shady to control a particular URL.
Bad faith domain name actions
If you look at the policy’s wording, you see how stakeholders define bad faith actions in domain name disputes.
If the domain holder acquired the domain mainly for selling it to a trademark owner at a markup, that’s considered a form of bad faith action.
Or perhaps the domain owner has scooped up a particular domain name before the trademark holder could get it, explicitly preventing that party from using something that corresponds to its trademark.
In some of these trademark-related cases, the bringer of the complaint can claim disruption of business.
There’s also a process where parties can deceptively register domain names to trick web users into coming to their site. So many domain names that are slightly altered reflections of a big brand name or trademark might be considered in bad faith if they’re creating confusion on the web and luring people into their site that way.
Domain name disputes and the evolution of the internet
Many of the most prominent domain name disputes happened before the Internet gained complexity, and businesses and other parties started to understand better how to handle web domains. However, domain name disputes still go on – as we’ll see!
In some cases, these disputes have had to do with people who were “scalping” various Internet domains – buying up vast swaths of top-level domain names to corner the market.
Since then, the proliferation of domains beyond the .com top-level segment has helped ease some of the conflicts around domain name URLs.
The UDRP process
So what does it look like when someone brings a complaint under the UDRP process?
A Uniform Domain Name Dispute Resolution Policy complaint will be filed in conjunction with the world intellectual property organization (WIPO) Arbitration and mediation center (or some other registered arbiter), and specific information has to be filled out by the complainant. The person making the complaint will get a confirmation message of receipt.
That party will have to provide some identifying information and data about domain name registration and contact information to the arbiter.
Then there is a “factual and legal grounds” section with a 5000-word limit.
Some costs may be associated with the application.
Modern domain name disputes
People might think that these cases are going away, but the data shows the opposite.
Recent studies show that UDRP decisions were up more than 14% over the past year.
Six accredited parties, including WIPO, see thousands of these cases each year, and all report their caseloads increasing.
Legal professionals find that the vast majority of all UDRP cases result in the trademark owner getting the domain names.
That’s bad news for cybersquatters who want to take advantage of someone else’s brand recognition to launch their own deceptively labeled websites. It also shows that domains are still valuable on the web.
Another critical part of evaluating domain name disputes involves figuring out whether the process of disputing will be worthwhile from a financial standpoint.
Experts shake their heads when they see parties disputing domains with values lower than around $1500 because of the costs involved in the complaint process and the dispute itself.
Some suggest that it’s imperative to have all of the party’s research and information in hand when contesting one of these lower-priced domains.
Domain name disputes: Articles and special characters
Many of these domain name disputes are about parties filing for domain names that are very close to a trademarked domain.
It’s relatively simple to add a character such as a hyphen or an individual letter to a domain and use it for cybersquatting purposes.
Alternately, those trying to use similar domain names deceptively might use articles like “and” our “or” to secure a similar domain name result.
Corporations and other businesses will often challenge these cases in court. If a settlement isn’t successful, they will try to secure all relevant domains and similar names to keep their brands from being used online in a deceptive way.
Although multiple arbiters administrate domain name disputes, WIPO is said to conduct the majority of domain name disputes.
Types of domain name dispute controversy
In some cases, the offender secures the domain name to make money. If they can get enough visitors from a more significant business site that confuses the two sites, they can get more eyeballs on their own more obscure website and convert this into sales.
In other cases, the trademark holders perceive the activity as more malicious. For example, there are numerous situations where parties have bought domain names that indicate someone’s brand or business (or agency or organization) to post malicious information, disrupt business or psychologically challenge an adversary.
Much of that activity is seen as illegitimate cybersquatting and malicious activity, and the arbiter’s ruling will reflect that.
Automatic domain name dispute resolution?
As with so many parts of the Internet, experts are looking at whether there is a new modern solution to handling the large numbers of domain name disputes that occur in a given year.
Data scientists and others have written papers suggesting that artificial handling of domain name disputes could help with the labor-intensive process and the costs of these controversies.
That’s not without its precedent – after all, ICANN and other parties are implementing the switch from IPV4 to IPv6 URL identifiers to serve the growing online community and the scaling of the Internet as a whole.
In general, the Internet is also evolving from Web 2.0 – a read/write Internet – to the Web 3.0 of the future.
To put this in context, the early Internet is considered Web 1.0 – the read-only Internet, where most pages consisted of just text and images.
Web 2.0 was the read/write Internet, where it became common for users to interact with a site owner through the webpage with web forms and other tools.
Web 3.0, experts say, is going to be different – with technologies like APIs and JSON protocol, it will establish data mapping and an indexable web that will add new kinds of functionality. Domain names will likely be a part of this evolution, and domain name disputes may also change.
The bottom line is that anyone bringing a domain name dispute should have done their due diligence in showing how the domain name holder has done something malicious and doesn’t have legitimate authority to use a particular domain name.
That can be tricky, partly because of the slight semantic difference between language and how we use it in written text versus how we approach using a domain name as a URL.
As mentioned, although top-level domains are quite diverse, it is a finite market, and disputes are still common.
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