Under the new policy, anyone who applies to register, maintain or renew a registration of an Internet domain name is subject to a mandatory administrative proceeding in the event of a challenge to the registrant's use of the assigned name. The administrative proceeding will be conducted, not by ICANN, but by any of a list of "approved providers" of dispute resolution services. The list of approved providers includes the Disputes.org/eResolution Consortium, the National Arbitration Forum and the World Intellectual Property Organization ("WIPO").
When an approved provider receives a proper complaint that a registrant's domain name has been registered and is being used in bad faith and in violation of the complainant's trademark or service mark, the approved provider will forward the complaint to the registrant. The registrant, in turn, must submit a written response within 20 days after the complaint was forwarded to the registrant. A one-person or three-person administrative panel then will be appointed.[2] The administrative panel will review the statements and documents submitted by the parties and forward a written decision to the approved provider within 14 days of the panel's appointment.
The dispute resolution policy is intended to provide a prompt, efficient and relatively inexpensive means of dealing with disputes concerning rights to domain names. The remedies available to successful complainants under the policy are limited to cancellation of the registrant's domain name or transfer of the registration to the complainant. All fees charged by the approved provider will be paid by the complainant unless the registrant elects to expand the administrative panel from one person to three persons. In the event the registrant makes this election, it must split payment of the approved provider's fees evenly with the complainant.
The new policy already has had one well-publicized test. In the first case filed under the policy, the World Intellectual Property Organization ordered the transfer of the domain name www.worldwrestlingfederation.com from a California stockbroker to the World Wrestling Federation. Although he lost the right to use the domain name, the registrant declared that the WIPO was "fair and unbiased and it [the dispute resolution proceeding] didn't cost me a dime."[3]
The new procedure, however, does not purport to preempt civil lawsuits for the purpose of asserting intellectual property rights in domain names. Alleged holders of such rights still may bring such actions, including claims under the recently-enacted federal "cybersquatting" legislation.
[1] The Complete ICANN Uniform Domain Name Dispute Resolution Policy is attached to this memorandum.
[2] The approved provider will appoint a single panelist unless one of the parties requests a three-person panel.
[3] Jeri Clausing, "Wrestling Group Wins Back Use of its Name on the Internet," The New York Times, sec. C, p. 4, col. 1 (Jan. 17, 2000).
) 2000 Morrison & Foerster LLP