|
|
Home
| Databases
| WorldLII
| Search
| Feedback
University of New South Wales Law Journal Student Series |
FLAWED OR FLAWLESS? THE INTERNATIONAL REGULATION OF DOMAIN NAMES DISASSEMBLED
STEPHEN ANNICCHIARICO
The ubiquity of cost-effective and easy access to domain name registrations has resulted in unscrupulous and disingenuous consumer purchase motives (i.e. “cybersquatting”).[1] To remedy this quickly and cost-effectively,[2] the Internet Corporation for Assigned Names and Numbers (‘ICANN’), introduced the Uniform Domain-Name Dispute-Resolution Policy (‘UDRP’)[3] and accompanying rules (‘Rules’);[4] an attempt at providing an alternative to litigation in domain disputes.[5] However, the UDRP’s effectiveness and suitability to this end has been contested; allegedly lacking coherency and unduly favouring complainants.[6] Further, with ICANN commencing their allocation of new generic top-level domains (alpha-numeric string after the “dot” in a domain, such as “.online”) (‘gTLD’),[7] fears of undue hardship to the detriment of brand owners are rife.[8] This essay will initially consider the need for the UDRP, before analysing whether the UDRP and Rules (and their interpretation and application): firstly lack coherency by reference to controversial regime aspects such as confusing similarity, unregistered trademarks, fair-use exceptions, domains used for criticism, “bad faith” determinations, and panellist autonomy; and secondly, unduly favour complainants by reference to, provider and panel selections which may influence outcomes, and UDRP response periods. Finally, it will be considered whether the new gTLD allocations will cause undue hardship to brand owners by reference to brand monitoring, defensive registrations, heightened complexities, and brand dilution and exclusion. Ultimately, all of the foregoing is undertaken determine whether the international regulation of domain names is flawed.
The “first-come, first-serve”, non-vetted, cost-effective, and timely nature of domain name registrations increases the likelihood of cybersquatting occurring.[9] Cybersquatting is the registration of a domain name which includes a trademarked word (‘Domain’) by parties unauthorised to deal with those trademarks (‘Registrant’), with the intent to profit from the goodwill associated with that trademark (‘Goodwill’) through the use of the domain or on-selling of the Domain at an inflated price (typically to the Goodwill owner).[10]
The UDRP and Rules were developed to remedy cybersquatting[11] for the benefit of trade or service mark (‘trademark’) owners.[12] The UDRP provides that a third party (‘Complainant’) may obtain a Domain where it’s established a Registrant has registered a Domain that is identical or confusingly similar to a Complainant’s trademark (‘First Limb’),[13] and the Registrant has no rights in the Domain (‘Second Limb’)[14] provided the Domain was registered and is used in bad faith by the Registrant (‘Third Limb’).[15]
(a) Similarity Characterisation
The First Limb does not provide any guidance for the characterisation of a Domain as “identical or confusingly similar” to the Complainant’s trademark.[16]
From one perspective, the First Limb is an objective test, such that the Domain is “identical or confusingly similar” where containing the Complainant’s trademark.[17] However, other panels have applied this subjectively, akin to traditional trademark confusion test,[18] evaluating the “actual likelihood” of confusion;[19] requiring detailed legal analysis.[20] This is misguided as domain names are universal (i.e. not limited by jurisdictional boundaries) unlike country-specific trademarks, and the UDRP is focussed on the Registrant’s intent, rather than the consumer-focussed trademark law (evaluating experiences and impressions).[21]
Inconsistent outcomes have resulted, such as where Domains embody Complainant’s trademarks with negative connotations (e.g. airfrancesucks.com (‘Sucks Case’)[22] or fucknetscape.com (‘F*ck Case’))[23]. In the Sucks Case, the First Limb was construed objectively, finding confusingly similarity as the Complainant’s trademark was embodied in the Domain; even stressing the First Limb is not confusing similarity for trademark law purposes[24] (also in Vivendi[25] and Koninklijke[26]). Whereas the F*ck Case considered the First Limb subjectively, finding it “inconceivable” users would confuse the Domain to have any relation to the Complainant.[27] Similarly, in ASADA[28] “www.asadasucks.com” wouldn’t be confused with “www.asada.com” as an understanding of “Asada” would constitute one for “sucks”.[29]
WIPO has sought to clarify that where the Complainant’s trademark is incorporated in, or a dominant feature of, the Domain, the First Limb is usually satisfied, while also noting that the website’s content (that the Domain directs users) can be relevant to “confusing similarity”,[30] and “negative terms” such as “sucks” when paired with a trademark will indicate the Domain is “confusingly similar”.[31] Such guidance, despite being of no precedential value, assists in promoting UDRP coherence.[32]
The above inconsistencies indicate the UDRP and trademark tests having been blurred,[33] being comparable to Australian and United Kingdom trademark tests[34] (e.g. First Limb requiring side-by-side comparison,[35] akin to Australia’s “substantial identical” test).[36] However, even where the First Limb is dealt “objectively”, trademark law outcomes have been mirrored; the addition of single letters[37] don’t dispel trademark similarities, akin to “Solaroid” did not dispelling similarities with “Polaroid”.[38] Similarly, the inclusion or removal of generic words doesn’t dispel similarities,[39] akin to “The Sports Café” being deceptively similar to “The Circuit Sports Café”.[40] Further, WIPO noted “aural or phonetic comparisons” may be relevant;[41] akin to “Bali-bra” being deregistered as “Bali” was confusingly similar to registered trademark “Burlei” as “Bali” is pronounced “Barley” and “Burlei” is pronounce “Burley”.[42] However, merely because outcomes using the “objective” test may mirror outcomes at trademark law, doesn’t mean the “subjective” test (similar to trademark law) should be adopted.
Accordingly, there is clear a lack of consensus and consistent application of the UDRP in the First Limb, which indicates a lack of coherency; the possible biproduct of the UDRP being a “rushed” process heavily dominated by intellectual property interests.[43]
(b) Unregistered Rights
Trademark registration is not necessary under the UDRP, with unregistered (common law) trademarks sufficiently proving trademark rights[44] to satisfy the First Limb.[45]
This may lead to complications as laws applying to unregistered marks are not harmonized and vary jurisdictionally, unlike globally-consistent trademark registrations (generally).[46] For example, unregistered trademarks are captured through various mechanisms in Australia,[47] including through passing off[48] and competition and consumer laws;[49] the distinctiveness of an unregistered trademark being an ancillary factor used to determine a “misrepresentation” of goodwill.[50] Whereas in the United States, an unregistered trademark is protected under s43 of their Trademark Act[51] provided that the unregistered trademark is distinctive;[52] relating rather to the enforceability of rights in an unregistered trademark.
This may lead to inconsistent determinations when guided by national laws,[53] especially where panellists are unfamiliar with unregistered trademark laws (e.g. from countries without unregistered trademark laws), while parties operating in countries with no recognition of unregistered trademarks may be disadvantaged, being unable to claim rights such rights through the UDRP.[54]
WIPO has addressed such uncertainty by clarifying that the Complainant (to establish unregistered trademark rights) may demonstrate the name has become a distinctive identifier (e.g. through advertising, consumer surveys, media recognition etc.) within a specific areas.[55] However, this may generalise unregistered trademark laws and may (potentially) lower the access threshold to unregistered trademarks in the UDRP, such that WIPO may even find an unregistered trademark despite the relevant laws in the Complainant’s nation not doing the same, potentially mandating further inconsistent UDRP outcomes.
Notwithstanding, panels have proven to be discerning to this risk. In one instance, the Norwegian Tax Authority (NTA) successfully claimed a right to “Skatteetaten” (meaning tax authority) through prior use and recognition over time (pursuant to Norwegian trademark laws), resulting in the domain “skatteetaten.com” being transferred to the NTA.[56] While the Turkish Armed Forces (TAF) asserted the right to an unregistered trademark as they held exclusive rights to the name “Genelkurmay” in Turkey (accepted by the panel), the First Limb was not satisfied for the TAF as (generally) only registered trademarks are recognised in Turkey.[57]
Accordingly, while the UDRP and Rules may be vulnerable to inconsistent determinations (regarding unregistered trademarks), the application and interpretation of the UDRP has remained equal to the challenge; allowing for coherent jurisprudence development, evidencing the UDRP and Rules don’t lack coherence.
A “legitimate interest” in the Domain may be established where the Domain is (or intended to be) used for a “bona fide” offering of goods or services (prior to UDRP proceedings) (‘Exception 1’),[58] where the Registrant (or their business) has become known by the Domain (‘Exception 2’)[59] or the Domain is used in legitimate non-commercial or fair manners, with no intent to misleadingly gain commercially from confusion with, or to tarnish, the trademark (‘Exception 3’).[60]
(a) Bona-fide Use
An Exception 1 “bona fide” use (or intention to use) relates to any commercial activity relating to goods or services not provided by the Complainant which can be substantiated (e.g. through business plan, advertising etc).[61]
Complexities may arise where authorised dealers sell the same goods as the manufacturers using their name (e.g. Grahams Jewellers selling Tag Heuer watches and using the Tag Heuer name for watch sales, while also selling other branded watches). Generally, reseller relationships do not grant trademark usage rights in a Domain[62] unless expressly granted,[63] while other decisions found “legitimate interests” where the Registrant could use the trademarks for marketing purposes.[64] However, Oki[65] clarified that authorised dealers would be “bona fide” where offering goods or service,[66] using the site to only sell the trademarked goods,[67] the relationship with the Complainant is disclosed on the website,[68] and the Registrant doesn’t attempt to “corner the market” using the Domain, depriving the Complainant use of the trademark;[69] a view adopted by WIPO,[70] and other recent panels.[71]
Accordingly, given that consensus appears to have been reached (regarding criticism), the uncertainty and inconsistent outcomes could be considered standard “growing pains” as would be expected in any newly-implemented quasi-judicial systems. Hence, the UDRP and Rules (with respect to the contentious issue of “bona fide use” by authorised dealers) are coherent.
(b) Criticism
Exception 3 has been subject of popular debate where Domains are used for criticism (e.g. Sucks and F*ck Cases in 3(A)1(a) above).
While the right to criticise does not constitute a right to register a Domain,[72] criticism has constituted free speech in a non-commercial and legitimate manner with no intent to tarnish the trademark.[73] However, where users are directed to the Domain when searching for the trademark, irrespective of its legitimacy, the Complainant has been successful,[74] as a distinction must be drawn between the domain name and the website itself;[75] an illegitimate diversion is not cured by the website contents (e.g. disclaimers).[76] However, panels (generally) rule for the Registrant (regarding free speech) unless in the case of extortion or blackmail.[77] Yet, the right to express views is not the right to use another party’s name as the source of those views.[78]
Accordingly, while WIPO have clarified that the respondent’s use must be genuine and non-commercial,[79] and that legitimate criticism and genuine free speech doesn’t extend to domain registration rights, due to user confusion risks,[80] the inconsistent application and interpretation of the UDRP and Rules, with respect to criticism, indicates the UDRP and Rules lack coherency.
The fact Domains must be registered, and used, in bad faith[81] is one of the UDRP’s most controversial topics (since early UDRP decisions)[82]. The conjunction “and” allows Registrants to register Domains (in “bad faith”) but not use that Domain in “bad faith”; effectively evading the UDRP. Conversely, where the Domain is registered (not in “bad faith”) but used in “bad faith”, Registrants may use the Domain in “bad faith”.[83] While originally drafted to capture both “bad faith” registration and “bad faith” uses,[84] this provision goes further in practice.
Calls for the wording be changed to “registered or used in bad faith” are ubiquitous,[85] with WIPO even supporting this recommendation as Complainants are more concerned about “use” rather than “registration” in “bad faith”.[86] However, such calls were met with opposition citing a potential broadening of the UDRP scope, undermining trademark law as “use” is required to find trademark infringement.[87] Although, this argument is rather unconvincing as the substantially similar Australian auDRP regime provides for “registration or use in bad faith”.[88]
Notwithstanding, panels have (to some degree) bypassed this flaw, with panels effectively construing the “and” as “or”,[89] and non-use even constituting a Third Limb “use” (e.g. passive holding of a Domain).[90] In this regard, the trademark’s reputation and distinctiveness assist in determining whether the non-use is a Third Limb “use” (e.g. holding of “www.audi-lamborghini.com” was a “use” due to the reputation of Audi and Lamborghini in Germany, with no future use foreseeably legitimate).[91] Although, where trademarks are less notable or more generic, passive Domain holding won’t constitute a Third Limb “use”.[92]
However, where Domains aren’t registered in “bad faith” but used in “bad faith”, outcomes remain inconsistent. On one hand, the registration of domains for legitimate purposes, but illegitimate uses (e.g. directing to pornographic websites) would not (rather bizarrely) satisfy the Third Limb requirements.[93] In other instances, the “and” conjunction was construed to “not be a binary concept”, whereby the Third Limb can be satisfied even where the Domain was not registered in “bad faith” (siding with logic and reason).[94] Notwithstanding, recently a Registrant didn’t contravene the Third Limb where a Domain was registered (authorised by a licence agreement) despite ongoing use after that licence agreement’s termination (i.e. “bad faith” use);[95] readopting the initial stance.
Hence, the Third Limb lacks coherency as inconsistent outcomes result from similar circumstances (e.g. passive holding of Domain, registration in good faith but use in bad faith and vice-versa). This is reinforced with panellists departing from specific UDRP wording to avoid undermining the function of existing laws, making determinations consistent with the UDRP’s purpose.
Rule 15(a) of the Rules[96] provides that the panel may determine a complaint in accordance with the UDRP and Rules, and any other rules of law deemed appropriate.
This is a useful provision, giving panellists flexibility proportionate and appropriate for a regime such as the UDRP (i.e. intended to be used by both lawyers and non-lawyers).[97] However, this rule also grants panellists absolute autonomy in their determinations. Hence, as this rule fails to clarify how legal principles should be adopted, it is a large contributor for the inconsistencies in UDRP and Rules application and interpretation abovementioned.[98] Such is the vagueness of this rule that two cases (with different panels) could foreseeably have different outcomes, especially with the UDRP’s wording being reflected in other legal systems (e.g. “bad faith” and “confusing similarity”).[99] This also enables jurisdictional biases to affect determinations (e.g. laws from panellist’s home jurisdiction may guide their determinations).
Accordingly, the UDRP and Rules lack coherency in their application and interpretation because flexibility has been prioritised over consistency in the drafting of Rule 15(a).[100]
Complainants have the exclusive right to select the UDRP provider (i.e. third party administering the UDRP process, such as WIPO or NAF).[101] This has led to the proposition that the UDRP unduly favours Complainants,[102] being a process funded by trademark owners (i.e. Complainants).[103]
The foregoing is reinforced in that certain providers are more likely to rule in favour of Complainants than other providers (previously reported that WIPO rule in favour of the Complainant 82% of the time).[104] Hence, Complainants are incentivised to select providers who are more likely to rule in their favour.[105] This is supported in that a provider who ruled in favour of the Registrants more than other providers, despite being a cheaper alternative, was defunct within 2 years of commencing operations (eResolution),[106] with even eResolution’s CEO attributing their demise to the lower Complainant success rates.[107] Hence, it may be argued providers are not impartial but rather employed by the Complainant (who usually fund the UDRP proceedings),[108] evidencing that the UDRP unduly favours the Complainants, allowing them to select providers that are inclined to rule in their favour.[109]
However, a disproportionate spread of decisions in favour of the Complainant does not evidence the UDRP unduly favours Complainants when the UDRP was designed and implemented to remedy conduct that is abusive, contrary to law, and against the legitimate interests of trademark owners.[110] It is misguided to make sweeping generalisations regarding the alleged biases of certain providers while assuming all cases are the same, and that a “non-bias” UDRP system would be one whereby Complainants are successful only 50% of the time.[111]
It is further misguided to conclude that because Complainants have the right to select providers, the UDRP and Rules unduly favour Complainants when the outcome of the individual disputes (from provider-to-provider) is the biproduct of the provider’s protocols, procedures and technology adopted that guide their determinations.[112] In particular, one empirical study, which developed and implemented econometric models to analyse the motives underpinning Complainant’s provider selection, dispelled the claims of Complainant bias in the UDRP as Complainants are rather selecting providers for their operational efficiencies; the polarising nature of provider’s decision outcomes is rather the result of provider’s technological capabilities, the different performance function of panellists, and geographical biases of panellists.[113] Effectively, this demonstrates that Complainants select providers based the speed and ease of decisions, rather than the outcome of those decisions.[114]
However, the samples analysed in the above study were on a monthly-basis, which may be non-representative of the number of UDRP decisions made over the long-term (which guide Complainant’s provider selections).[115] While more recent studies have concluded that the above study failed to contemplate the multi-dimensional nature of the UDRP, including that WIPO has a significant market share and proceedings through WIPO have slowed since the UDRP commencement, while eResolution had a low market share (which declined following only 60% of outcomes favouring Complainants).[116]
Hence, the UDRP and Rules may not unduly favour Complainants but rather it could be the providers who are unduly favouring Complainants. Providers are incentivised to select panellists that are more likely to rule in favour of the Complainants as they rely upon Complainants to fund the costs of the UDRP process.[117] All providers are commercial entities heavily focussed on revenues (even the “not-for-profit” WIPO generated approximately $608 million in 2017),[118] and hence the providers themselves are inclined to select panellists to favour Complainants to generate future engagements;[119] one panellist even handling approximately 10,000 cases from one provider.[120]
Accordingly, the UDRP and Rules (and their application) do not unduly favour the Complainants as it is entirely reasonable for Complainants to have the right to select the provider given that the purpose of the UDRP is to provide Complainants relief in the circumstances of abuse and “bad faith” dealings, and the Complainants (generally) bear the cost of the proceedings.[121] Rather, any undue favour (which largely remains uncorroborated) may be mandated through providers internal protocols and procedures seeking to manipulate the UDRP to favour Complainants, selecting panellists more likely to rule in favour of Complainants, prioritising commercial interests over the greater good of objectively administering the UDRP. However, and without sparking the age-old “chicken or the egg” debate, given the providers may be capable of manipulate the UDRP because Complainants are given the right to select providers (through the UDRP and Rules), it may be the case that the UDRP and Rules are effectively unduly favouring Complainants as the long-term success of providers rests Complainants selecting them.[122]
Complainants have the right to choose between a 1-member or 3-member panel[123] when instituting UDRP proceedings. However, where the Complainant elects for a 1-member panel, the Registrant may accept the 1-member panel or request a 3-member panel.[124]
Given that previously 10% of all UDRP decisions were made by, and Complainants are only ruled in favour of 40% of the time, by 3-member panels[125] (compared with 80% of UDRP cases generally),[126] Complainants may be unduly favoured, being able to select a 1-member panel, whereby they are (statistically speaking) more likely to be successful.[127] This is further underscored in that, while implementing requirements of impartiality and independence from the panellist[128] the UDRP and Rules fail to implement any rules to ensure impartiality and independence is being upheld by the panellists in specific providers,[129] which may be easily compromised (even subconsciously) given that panellists sit on various 1-member and 3-member panels for different providers.[130]
However, the rationale for selecting a 3-member panel over a 1-member panel may be less sinister. Complainants may apply for 3-member panels in circumstances whereby there is a heightened risk that the UDRP and Rules could be incorrectly applied and construed (as the matter is complicated or whereby the Registrant would have strong grounds of rebuttal), and the Complainant would seek to remedy that risk (reduced risk in 3-member panels than 1-member panels[131] as the quality of decision-making diminishes in 1-member panels).[132]
Accordingly, 3-member panels may not necessarily be less-likely to rule in favour of Complainants, but rather Complainants simply refer to a 3-member panel when the matter is not straight-forward (which the majority of UDRP cases are).[133] The foregoing is reinforced in that more recent studies show that panel selection does not negatively impact the outcome of the Complainant’s case.[134]
Hence, it is reasonable to conclude that the right to select a 1-member or 3-panel panel does not unduly favour the Complainants, especially given that Registrants are able to elect for 3-panel members should they wish.
The Complainant must notify the Registrant of the UDRP proceedings, which can be undertaken through various means, including email[135] (Notification). Within 20 within days of the Notification[136] (Response Period), the Registrant must submit their response Complainant’s claims.[137]
Accordingly, the UDRP Rules may unduly favour Complainants as actual notice is not required (simply attempts to achieve actual notice), the Response Period commences when the email is transmitted (potentially resulting in the Notification itself not coming to the attention of the Registrant prior to the conclusion of the Response Period),[138] and the Notice Period is short and “ridiculous” (Registrants may lose a right to a Domain whilst on holiday).[139] Further, Complainants may contribute virtually unlimited time to argument preparations prior to instituting the UDRP proceedings, while the Registrants are given a mere 20 days to prepare their responses (especially short given the Registrant is usually a smaller organisation than the Complainant).[140]
However, certain mechanisms have been implemented to safeguard against the abovementioned risks, with Registrants able to apply for automatic extensions of time,[141] and where the Respondent fails to respond to the Notification the matter will be still be heard[142] (i.e. Registrants still bear the onus of providing the UDRP elements);[143] a potential contributor to more than 1,500 cases being decided in favour of Registrants (despite their non-response).[144] Notwithstanding, such mechanisms overall fail to mitigate the undue favour abovementioned, with the one-sided notification procedure potentially explaining the high rate of default cases (over three quarters of approximately 55,000 UDRP cases have not be defended),[145] the majority of which are decided favour of Complainants,[146] as Registrant’s non-response may indicate the Complainant’s claims are correct[147] and have even evidenced “bad faith”.[148]
While a function of the UDRP is to provide quick and efficient means of protecting Complainants rights,[149] the short notice period, lack of requirement for Complainants to prove actual Notification and the fact the Response Period commences from the point of transmission of emails, together with preparation time asymmetries, compromise the integrity of the UDRP and unduly favour Complainants.
The Third Limb is one of the most complicated of the three UDRP limbs to satisfy;[150] providing four potential circumstances whereby a finding of “bad faith” would be seen (e.g. acquired Domain to sell at inflated cost, to prevent trademark owner using the domain, disrupting competitor’s business, creating likelihood of confusion etc.).[151] However, notwithstanding such complexity, the Third Limb includes the words “without limitation” immediately preceding the provision of the four circumstances. This effectively means that the panellist(s) may take into account virtually any circumstance that (they deem) would mandate a finding of “bad faith” (especially in light of the autotomy of panellists detailed at 3(A)4 above). Hence, such drafting unduly favours Complainants as they may rely upon any evidence that substantiates the presence of “bad faith” from the Registrant, even when not analogous to one of the four circumstances.
The UDRP has the capacity to be a coherent mechanism, adequately and appropriately avoiding (and dealing with) risks associated with unregistered trademarks (see 3(A)1(b)) and developing a natural body of jurisprudence to dispel uncertainties in “bona fide” uses (see 3(A)2(a)). However, vague drafting has led to uncertainties in, charactering Domains as “identical or confusingly similar” (regarding the First Limb - see 3(A)1(a)), circumstances of criticism (regarding the Second Limb - see 3(A)2(b)), and in requiring “registration and use” of a Domain in bad faith (regarding the Third Limb - see 3(A)3; all of which have led to inconsistent UDRP outcomes. The foregoing issues, to a large degree, stem from the broad drafting of Rule 15(a),[152] ultimately giving panellists free reign to make determinations as they desire (see 3(A)4). While WIPO (through their overview) have aided in promoting coherence, it remains mere guidance of limited precedential value.[153] Hence, the UDRP and Rules, and the way they have been interpreted and applied, lack coherence with inconsistent outcomes resulting, which are often devoid of logic (e.g. “registration and use” at 3(A)3).[154]
While on its face it may appear the UDRP unduly favours Complainants, being able to select the provider (see 3(B)1) and the number of panellists (see 3(B)2); both of which may (statistically speaking) influence the outcome of the proceedings in favour Complainants. However, in reality these rights are reasonable given that the purpose of the UDRP is to deal with instances of “bad faith” Domain registration and use, and generally it is the Complainant bearing the cost of the proceedings, together with the fact that the evidence indicating panel and provider selection are positively correlated with favourable outcomes for Complainants remains inconclusive (not to mention very dated). While the Notification procedure (see 3(B)3) and discretion granted to panellists to find “bad faith” (see 3(B)4) unduly favour Complainants, these are less detrimental to Registrants being mere ancillary formalities in the context of the UDRP, especially given that the Registrant still has access to automatic extensions of time[155] and the complaint needs to satisfy the high UDRP threshold tests, such as “registration and use in bad faith”, even in the instance of the Respondent’s non-response.[156] Accordingly, it is reasonable to conclude the UDRP does not unduly favour Complainants.
ICANN commenced their expansion of the internet domain space by allocating thousands of additional gTLDs from 2011 (‘Program’).[157] A key motive for the Program was to promote competition and consumer choice to enable innovation in the internet sphere.[158] Rather unsurprisingly, brand owners were vehemently opposed to the Program citing concerns that the addition of potentially thousands of new gTLDs may compromise their intellectual property rights, creating further problems (in addition to those abovementioned in 3 above) with a heightened risk of deception confusion with brand owner’s trademarks and “bad faith” Domain registrations.[159]
In response to such opposition, ICANN acknowledged brand owner’s concerns and implemented safeguards such as the right to oppose the introduction of certain new gTLDs (i.e. where the string may lead to confusion, infringe legal rights, have limited public interests or where a significant portion of the community oppose the new gTLD) (‘Opposition Procedure’)[160], a mechanism to give brand owners priority over second-level domains (‘2LDs’) at new gTLDs associated with their brands and automatic notifications of any potential conflicting domain registrations (‘TM Clearinghouse’),[161] the Uniform Rapid Suspension Procedure which provides brand owners access to a cheaper, expedited domain resolution procedure to blatant 2LD registrations at new gTLDs that would otherwise infringe brand owner’s rights (complementing the UDRP) (‘URS’)[162] and Trademark Post-Delegation Dispute Resolution Policy which enables brand owners to institute proceedings against the gTLD registry operator where the gTLD infringes their rights (‘TDRP’).[163]
The release of new gTLDs may cause brand owners undue hardship, being required to go to significant effort reviewing and considering new gTLDs (and their potential influence on their brands). This may include going to the cost of implementing procedures and solutions (e.g. software) to monitor the release of new gTLDs and any usage of 2LDs on those gTLDs that leverage from brand owner’s rights to counter-act any infringing uses (e.g. on social media and other digital mediums),[164] with some solutions costing a minimum of $10,000 per year.
However, the TM Clearinghouse service provides brand owners the opportunity to submit their trademarks to the TM Clearinghouse; a central trademark repository that is operated by ICANN. Upon the allocation a new gTLDs, brand owners who have submitted their trademarks to the TM Clearinghouse, will be granted 30-days to register any 2LDs at those gTLDs before any member of the public (‘Sunrise Period’).[165] Further, following the Sunrise Period, ICANN will automatically notify brand owners of any potential infringements between the trademarks that have been submitted to the TM Clearinghouse, and 2LDs registered to the new gTLDs (‘Claims Service’).[166] Hence, brand owners are granted the opportunity to safeguard their interests without expending significant time, effort and cost monitoring potential infringements (i.e. avoiding undue hardship).
However, while TM Clearinghouse provides an efficient and effective means for preventing infringement to brand owner’s rights, it fails to protect common law rights, as well as domains that may be misspelt or have incorporated other terms to evade the Claims Service.[167] Hence, while brand owners are provided a level of comfort that their rights are (to a degree) protected (through TM Clearinghouse), it’s not a replacement for implementing procedures and practices to safeguard brand owner’s interests, and brand owners must still remain vigilant to potential infringements.
Given that, such level of vigilance is likely needed (before the introduction of the new gTLDs), it is reasonable to conclude that the TM Clearinghouse, and Sunrise and Claims Services remedy any undue hardship brand owners would have otherwise experienced through the new gTLD introductions, and the Program (itself) does not cause undue hardship (with respect to monitoring and pre-screening).
While the TM Clearinghouse safeguards brand owner’s risk of their interests being exploited, the Program still gives rise to a need for brand owners to attend to defensive 2LD registrations on the new gTLDs and oppositions to new gTLD applications to safeguard their interests.[168] This would constitute undue hardship to brand owners , being required to proactively contribute significant time, cost and effort to undertaking (potentially thousands) of defensive actions, not otherwise necessary but for the Program.
While the foregoing could (for a large organisation) be a mere cost of doing business, being within their financial means to register (potentially all) 2LDs and gTLDs that correspond with their brands and opposed adverse gTLD applications (e.g. Google registered “gmail.sucks”[169] while Amazon registered “kindle.sucks”),[170] small to medium sized organisations may be unable to do the same. Such smaller organisations will likely need to undertake a cost-benefit analysis to identify the new gTLDs and 2LDs at those gTLDs which are at a high risk of damaging their brand and register 2LDs at the new gTLDs (being unable to financially bear the cost of registering thousands of 2LDs at the gTLDs, becoming a registry operator of new gTLDs corresponding with their brand and/or going to the expense of, or diverting resources affecting business operations due to, disputes through the UDRP, URS or Opposition Procedure).
This could leave smaller organisations vulnerable to parties leveraging from their goodwill and even criticism (see 3(A)2(b) above). For example, should an organisation fail to secure certain 2LDs at gTLDs which include their brand name, another party may register 2LDs that criticise the business (e.g. [brandname].sucks”), of detriment to the business’ reputation.[171] However, it’s important to note that smaller organisations are likely less vulnerable to this due to their reduced public recognition (compared with large organisations); potentially not needing to bear the expense of registering the breadth of 2LDs larger organisations may. Further, the URS can remedy such issues where brand owners institute URS proceedings (substantially similar to the UDRP), which can lead to expeditious outcomes (i.e. only one panellist making determinations).[172]
Although, a cost of a quicker and cost-effective URS process is the higher burden of proof required,[173] being only suitable in circumstances of “straight-forward” cases,[174] leading to the suspension domain suspension for the remaining period of registration (rather than cancellation or transfer like the UDRP);[175] seen in “netflix.video”[176] and “lululemon.sale”.[177] Further, where a URS complaint is unsuccessful, the brand owner will need to go to further expense and effort of instituting proceedings through the UDRP (or otherwise risk their interests being compromised).[178]
Hence, while mechanisms such as the URS and TM Clearinghouse minimise undue hardship, brand owners will still be required to go to notable cost and effort to secure their interests following the Program roll-out, causing undue hardship. In particular, this also creates a real risk of small and medium sized businesses being unable to register and use certain 2LDs and maximise their intellectual property protection (further detailed 4(B)3-5 below).[179] The seriousness of this is underscored with approximately 99% of the world’s enterprises being small and medium sized businesses (i.e. those most harshly affected by the Program).[180]
Prior to the Program, the central concern for brand owners (and most contentious issues, as detailed in 3 above) centred around deception and confusion on the 2LD.[181] However, following the Program, both 2LDs and gTLDs will be at risk of consumer confusion[182] and invariably will become subject of scrutiny, which creates significant complexity.
In straight-forwarded scenarios such as “canyon.bikes”, the brand owner of Canyon (bike manufacturer) was successful in their UDRP proceeding against the Registrant.[183] However, where multiple traders with the same interests in relation to the same or similar goods or services, matters may be more complicated. For example, the National Football League have registered trademarks over “Giants”[184] for the American Football Team, while the Australian Football League have registered trademarks over the word “Giants”[185] for the Australian Football team; both of which are football teams, well-known (with significant reputations), promoted as the “Giants”, multi-million dollar entities with legions of fans, and yet the outcome remains unclear where (hypothetically) both organisations attempt to register “giants.football” or “football.giants”, or become registry operators of the “.football” or “.giants” gTLDs. While NFL’s trademark predates the AFL’s (indicating a potential priority over such 2LDs and gTLDs to the NFL) it may be argued the AFL should have the right to the 2LDs and gTLDs as American Football is known as “gridiron” while AFL has no other interchangeable name other than football, and the NFL only have registered the logo “Giants” whereas the AFL have registered the word “Giants” (a stronger intellectual property right).
Further complications would arise if football’s world governing body, Fédération Internationale de Football Association (‘FIFA’), claimed an entitlement to the “.football” gTLD, or where FIFA becomes the “.football” gTLD registry operator and precludes the NFL and AFL from registering 2LDs, in a strategic-bid to maintain a competitive advantage over competing “football” codes (further discussed in 4(B)5 below).
In the foregoing scenarios, it would likely be the case that the organisation whom is willing to go to the most expense will emerge successful.[186] However, the fact that brand owners will need to go to these lengths to protect their interests in manners they otherwise would not need to, evidences the undue hardship sustained by brand owners, resulting from the Program.
Currently Crazy Domains (Australia’s largest domain name provider) is running a promotion that when purchasing a domain, customers are “gifted” the same domain name with the “.online” gTLD for free.[187] While this may appear to be an innocent campaign, it rather may be argued to be a brazen attempt to normalise new gTLDs, which are not proving to be as popular as anticipated,[188] resulting in many users (mistakenly) assuming websites at new gTLDs are not legitimate.[189]
A key risk associated with the abovementioned practices is that, as gTLDs become more common (and are normalised) this perception of illegitimacy will dissipate in the way of brand owner’s brands being diluted, with a large emphasis shifting from the 2LD and to gTLDs. Hypothetically, if Penguin books registers “penguin.books”, the Pittsburgh Penguins register “penguin.hockey” and Penguin mints register “penguin.mints”, the brand value in the name “Penguin” for each of those brands may be diluted as the key distinguishing factor between the brands becomes the gTLDs.
Similarly, where brands themselves obtain gTLDs, this may also dilute the brand value from a 2LD perspective as it would be well-known that any 2LDs without the brand’s gTLD is not affiliated with the brand and hence the Registrant may not intentionally be attempting to create a likelihood of confusion between the Domain and the brand owner’s trademark.[190] Hence, parties that have no interests in a brand name may be able to use the brand name (without the brand owner’s consent) where selling the brand owner’s product (e.g. “gucci.resale” may not create a likelihood of confusion where “clothing.gucci”, “bags.gucci”, “shoes.gucci” etc. are already registered to Gucci and are well-known to consumers).[191]
However, practically speaking, the prospect of the foregoing occurring is relatively low and the abovementioned risks may simply represent natural biproducts of general systemic advancements, in the same way traditional law has encountered significant incompatibility issues in the digital age which have been overcome in time (e.g. site blocking laws that have been implemented in the United Kingdom, Australia and Singapore to deal with copyright breaches from “off-shore” providers that are uncontactable by trademark owners).[192]
Hence, it is reasonable to conclude that brand dilution risks do not necessarily indicate undue hardship will be sustained by brand owners as a direct consequence of Program.
In circumstances whereby a brand owner obtains a gTLD (i.e. becomes a registry operator) over their brand name (e.g. as Apple has obtained “.apple”[193] or Nike secured “.nike”)[194] that brand owner has the sole and exclusive right (for a 10-year period with successive renewal rights)[195] to exploit that gTLD globally at their discretion, in respect of any goods or services. Hence, other brands using that name will be unable to use that gTLD or register a 2LD at that gTLD unless permitted by the owner (unlikely as to maintain a competitive advantage).
Again using the “Penguin” example, this could enable Penguin books (where becoming the registry operator of the “.penguin” gTLD) to gain an unfair advantage over other highly recognised businesses which use the “Penguin” name by having a global utility that no other party may register. In particular, with gTLDs costing at least $USD185,000,[196] becoming a registry operator will likely only be within the means of large organisations, which will promote the monopolisation of markets and disincentivise competition (and market disruption) from smaller organisations; contrary ICANN’s motives for the Program (i.e. increasing competition).[197] This can be contrasted from a trademark right which is geographically limited and only in relation to specific goods and services.[198] As a consequence, other brand owners will experience undue hardship, being unable to maximise their digital presence online, which is significant given that (for example) e-commerce accounts for 14.1% of all retail sales in 2019 (and is increasing year-on-year).[199]
Although, the foregoing situation may be avoided where the application for the gTLD is opposed by the brand owners through the Opposition Procedure by (for example) claiming the “.penguin” gTLD is an infringement of existing legal rights where the brand owner registered a trademark,[200] potentially leading to the application for the gTLD being refused.[201]
That said, brand owners will need to go to the expense and effort of (at some level) monitoring and screening the new gTLD applications. Thereafter, if deemed adverse to their interests, brand owners will need expend effort undertaking the Opposition Procedure which can be a significant expense for smaller organisations (i.e. legal rights opposition costing up to $USD20,000)[202] which may have other flow-on effects (i.e. disruption of business operations with resources being contributed to the dispute), with no guarantee of the opposition outcome.
Hence, the release of thousands of new gTLDs will likely cause undue hardship to brand owners as the new gTLDs may preclude brand owners from maximising their online presence where another party (with a legitimate interest in the same name) becomes the registry operator of the new gTLD, or where the application for the gTLD is opposed.
The TM Clearinghouse, and Sunrise and Claims Services assist brand owners in monitoring and protecting their brands (see 4(B)1), and brand dilution risks are remote and unavoidable natural components of systemic developments (see 4(B)4). However, given that, as a direct consequence of the new gTLD allocations, brand owners will be required to go to significant cost and effort to, register 2LDs at the new gTLDs and (potentially) become gTLD registry operators, or opposing new gTLDs, for the purposes of protecting their intellectual property interests (see 4(B)2-3,5), or otherwise face being prohibited from maximising their commercial interests (see 4(B)5) (especially for small to medium sized businesses), the Program will cause undue hardship to brand owners.
ICANN has succeeded in providing a quick and easy alternative to litigation when Domains have been registered and used (in “bad faith”) which embody brand owner’s trademarks (without proper authority). However, the UDRP and Rules have been interpreted and applied without coherence due to vague drafting which has led to uncertainty, and inconsistent outcomes which are (at times) devoid of reason and logic. A “silver lining” is the UDRP and Rules do not (on the balance) unduly favour Complainants as the rights that Complainants are granted (e.g. right to select provider and panels) are reasonable given the purpose of the UDRP is to protect against “bad faith” domain registration and the UDRP is a process (generally) funded by the Complainant, and those rights which are unduly favourable (e.g. unfair Notification process (see 3(B)3) and broad scope to find “bad faith” (see 3(B)4) are rather ancillary in the grand scheme of the UDRP. Further, it is clear ICANN has implemented appropriate safeguards to protect the interests of brand owners following the roll-out of thousands of new gTLDs (i.e. TM Clearinghouse, Sunrise and Claims Service, Opposition Procedure, URS etc.). However, given that brand owners will be forced to go to significant time, effort and cost to protect their interests (see 4(B)2-3,5), and even then, they may be unable to protect their interests (see 4(B)3-5), the Program will cause undue hardship to brand owners. It follows that the international regulation of domain names has major flaws.
BIBLIOGRAPHY
1. Amir Ansari, Mohd et al, ‘Cybersquatting and its effectual position in India’ (2015) 6(2) International Journal of Scientific & engineering Research 880.
2. Arnot, Jordan, ‘Navigating Cybersquatting Enforcement in the Expanding Internet’ (2014) 13 The John Marshall Review of Intellectual Property Law 321.
3. Boroughf, Benjamin, ‘The New Dot Context: How to Mitigate Trademark Concerns in ICANN's New gTLD Program’ (2014) 10(1) I/S: A Journal of Law and Policy 85.
4. Brannigan, Colm ‘The UDRP: How Do You Spell Success?’ (2004) 5(1) Digital Technology Law Journal 2.
5. Burrell, Robert and Michael Handler, ‘The Intersection Between Registered and Unregistered Trade Marks’ [2007] FedLawRw 15; (2007) 35(3) Federal Law Review 375.
6. Chan, Peter, ‘The Uniform Domain Name Dispute Resolution Policy as an Alternative to Litigation’ (2002) 9(2) Murdoch University Electronic Journal of Law 12.
7. Cortes, Pablo, ‘An Analysis of the UDRP Experience: Is it Time for Reform?’ (2008) 24(4) Computer Law and Security Report 1.
8. Cortes, Pablo, Online Dispute Resolution for Consumers in the European Union (Routledge Research, 1st Ed, 2010) 118.
9. Donahey, Scott, ‘Divergence in the UDRP and the Need for Appellate Review’ (2002) 5 Journal of Internet Law 10.
10. Farley, Christine, ‘Confusing the Similarity of Trademarks Law in Domain Name Disputes’ (2019) 52(3) Akron Law Review 608.
11. Fisher, Adrian, ‘Expanding the Domain Name System – The Introduction of New gTLDs’ (2009) 28(2) Communications Law Bulletin 5.
12. Froomkin, Michael, ‘ICANN's "Uniform Dispute Resolution Policy"- Causes and (Partial) Cures’ (2002) 67 Brooklyn Law Review 605.
13. Froomkin, Michael, ‘Wrong Turn In Cryberspace: Using ICANN to route around the APA and the Consitution’ (2000) 50 Duke Law Journal 17.
14. Gist, Michael, ‘Fair.com? An examination of the Allegation of Systemic Unfairness in the ICANN UDRP’ (2002) 27(3) Brooklyn Journal of International Law 903, 906.
15. Gutierrez, Oliver, ‘Get Off My URL: Congress Outlaws Cybersquatting in the Wild West of the Internet’ (2001) 17(1) Santa Clara High Technology Law Journal 139.
16. Haight, Farley Christine, ‘Confusing the Similarity of Trademarks Law in Domain Name Disputes’ (2019) 52(3) Akron Law Review 607.
17. Hedley, Steve, ‘The Law of E-Commerce and the Internet in the UK and Ireland’ (Routledge-Cavendish, 1st Ed, 2006).
18. Helfer, Laurence, ‘International Dispute Settlement at the Trade Mark Domain Name Interface’ (2001) 29(1) Pepperdine Law Review 87.
19. Hornle, Julia, ‘The Uniform Domain Name Dispute Resolution Procedure: Is Too Much of a Good Thing a Bad Thing’ (2008) 11(3) Science and Technology Law Review 253.
20. Karjiker, Sadulla, ‘The new gTLDs and the resolution of trade mark disputes’ (2014) 25(2) Stellenbosch Law Review 408.
21. Kelley, Patrick, ‘Emerging Patterns in Arbitration Under the Uniform Domain-Name Dispute-Resolution Policy, (2002) 17(1) Berkeley Technology Law Journal 181.
22. Kesan, Jay, and Andreas Gallo, ‘ICANN/UDRP Performance - An Empirical Analysis’ (Working Paper #03-8, University of Illinois, October 2003).
23. Klerman, Daniel, ‘Forum selling and Domain-Name Disputes’ (2016) 48 Loyola University Chicago Law Journal 561, 581.
24. Klerman, Daniel, and Greg Reilly, ‘Forum Selling’ (2016) 89 Southern California Law Review 241.
25. Lindsay, David, ‘International Domain Name Law ICANN and the UDRP’, (2009) 6(1) SCRIPTed 181.
26. Lindsay, David, ‘International Domain Name Law: ICANN and the UDRP’ (Hart Publishing, 1st Ed, 2007) 192.
27. Lindsay, David, ‘Internet Domain Name Dispute Resolution’ (Paper presented at BLEC Congress 2002, Melbourne, 30 April 2002).
28. Lipton, Jacqueline, ‘Bad Faith in Cyberspace: Grounding Domain Name Theory in Trademark, Property and Restitution’ (2010) 23(2) Harvard Journal of Law & Technology 448.
29. Lipton, Jacqueline, and Mary Wong, ‘Trademarks and Freedom of Expression in ICANN’s New gTLD Process’ [2012] MonashULawRw 10; (2012) 38(1) Monash University Law Review 188.
30. Loutocky, Pavel, ‘Are we getting good decision by top-level domain name dispute resolution providers?’ (2015) 9(1) Masaryk University Journal of Law and Technology 111.
31. Magee, John, ‘Domain Name Disputes: An assessment of the UDRP as Against Traditional Litigation’ (2003) 1, Journal of Law Technology & Policy 203.
32. Mahler, Tobias, ‘Generic Top-Level Domains A Study of Transnational Private Regulation’ (Edward Elgar Publishing, 1st Ed, 2019).
33. Mercer, John, ‘Cybersquatting: Blackmail on the Information Superhighway’ (2000) 6 Boston University Journal of Science & Technology 11.
34. Murray, Andrew, Information Technology Law: The Law and Society (Oxford University Press, 3rd Ed, 2016).
35. Port, Kenneth ‘Trademark Monopolies in the blue nowhere’ (2002) 28(3) William Mitchell Law Review 1091.
36. Prahl, Dennis, and Eric Null, ‘The New Generic Top-Level Domain Program: A New Era of Risk For Trademark Owners and the Internet’ (2011) 101(6) The Law Journal of the International Trade Mark Association 1757.
37. Preet Singh, Harman, ‘Domain Name Disputes and Their Resolution under UDRP Route: A Review” (2018) 6(12) Achieves of Business Research 147.
38. Riordan, Jaani, ‘The Liability of Internet Intermediaries’ (Oxford University Press, 1st Ed, 2016).
39. Roy, Alpana and Althaf Marsoof, ‘Bad faith’ and ‘rights or legitimate interests’ under domain name law — emerging themes from the UDRP and auDRP’ (2015) 20 Media and Arts Law Review 283.
40. Roy, Alpana, and Althaf Marsoof, ‘The brave new world of ICANN’s ‘new gTLDs: an overview’ (2018) 40(10) European Intellectual Property Review 649.
41. Schwartz, Jonathan, ‘Making the Consumer Watchdog’s Bark as Strong as its Gripe: Complaint Sites and the Changing Dynamic of the Fair Use Defense’ (2006) 16 Albany Law Journal of Science & Technology 87.
42. Simon, David, ‘An Empirical Analysis of Fair Use Decisions Under the Uniform Domain-Name Dispute-Resolution Policy’ (2012) 53(1) Boston College Law Review 65.
43. Sorkin, David, ‘Judicial Review of ICANN Domain Name Dispute Decisions’ (2001) 18 The John Marshall Institutional Repository 35.
44. Stewart Smith, Ashlie, ‘Trademark Holders Beware: Source-Indicating gTLDs Are Here’ (2017) 57(2) Journal of the Franklin Pierce Center for Intellectual Property 153.
45. Swinson, John and Karen Litherland, ‘Update: the new gTLDs’ (2015) 2(6-7) Australian Media, Technology and Communications Law Bulletin 87.
46. Thornburg, Elizabeth, ‘Fast, Cheap, and Out of Control: Lessons from the ICANN Dispute Resolution Process’ (2002) 6 Journal of Small and Emerging Business 191.
47. Torremans, Paul, ‘Research Handbook on Cross-Border Enforcement of Intellectual Property’ (Edward Elgar, 1st Ed, 2014).
48. Trimble, Marketa, ‘Territorialization of the Internet Domain Name System’ (2018) 45 Pepperdine Law Review 623.
49. Woodard, Elizabeth, ‘The UDRP, ADR, and Arbitration: Using Proven Solutions to Address Perceived Problems with the UDRP’ (2009) 19(4) Fordham Intellectual Property, Media and Entertainment Law Journal 1169.
50. Wotherspoon, David, and Alex Cameron, ‘Reducing Inconsistency in UDRP Case’ (2006) 1 Canadian Journal of Law and Technology 71.
1. AG Spalding and Bros v AW Gamage Ltd 84 LJ Ch 449, 113 LT 198, 31 TLR 328, [1914-15] All ER Rep 147, 32 RPC 273.
2. Amazon.com Inc v Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman WIPO Case Number D2006-0517 (28 June 2006).
3. America Online Inc v Johuanthan Investments Inc WIPO Case Number D2001-0918 (14 September 2001).
4. Ansell Healthcare Products Inc v Australian Therapeutics Supplies Pty Ltd WIPO Case Number D20011-0110 (2 April 2001).
5. AREAS S.A. v Andres Sanchez Garcia WIPO Case No. D2015-1482 (9 November 2015).
6. ASDA Group Limited v Mr Paul Kilgour WIPO Case Number D2002-0857 (11 November 2012).
7. Audi AG v Hans Wolf WIPO Case Number D2001-0148 (15 May 2001).
8. Berlei Hestia Industries Limited v Bali Co Inc [1973] HCA 43; [1973] 129 CLR 353.
9. Bridgestone Firestone Inc, Bridgestone Firestone Research, Inc and Bridgestone Corporation v. Jack Myers WIPO Case Number D2000-0190 (6 July 2000).
10. Britannia Building Society v Britannia Fraud Prevention WIPO Case Number D2001-0505 (6 July 2001).
11. Canyon Bicycles GmbH v Domains by Proxy WIPO Case Number D2014-0206 (14 March 2014).
12. ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176.
13. CPP Inc v Virtual Sky WIPO Case Number D2006-0201 (28 March 2006).
14. DFO Inc v Christian Williams WIPO Case Number D2000-0181 (14 May 2000).
15. Do The Hustle LLC v Tropic Web WIPO Case Number 2000-0624 (21 August 2000).
16. E & J Gallo Winery v Hanna Law Firm WIPO Case Number D2000-0615 (3 August 2000).
17. Erven Warnink v J. Townend & Sons (Hull) Ltd [1980] R.P.C. 31.
18. Estée Lauder Inc v Estelauder.com, Estelauder.net and Jeff Hanna WIPO Case Number D2000-0869 (25 September 2000).
19. Extreme Networks Limited, Extreme Drinks Limited v Ex Drinks LLC WIPO Case Number Case No. D2013-0197 (18 March 2013).
20. Ferrero S.p.A v Fistagi S.r.I WIPO Case Number D2001-0262 (23 May 2001).
21. Houghton Mifflin Co v Weatherman Inc WIPO Case Number D2001-0211 (25 April 2001).
22. Jappy GmbH v Satoshi Shimoshita WIPO Case Number D2010-1001 (28 September 2010).
23. Justice for Children v R neetso / Robert W. O’Steen WIPO Case Number D2004-0175 (4 June 2004).
24. Koninklijke Phillip Electronics NV v In Seo Kim WIPO Case Number D2001-1195 (12 November 2001).
25. Lululemon Athletica Canada Inc v Domain Administrator National Arbitration Forum Claim No FA1505001621406 (18 June 205).
26. Magnum Piering Inc v Mudjackers WIPO Case Number D2000-1525 (29 January 2001).
27. Marvel Manufacturing Company Inc v Koba Internet Sales LP WIPO Case Number D2008-0265 (5 May 2008).
28. Mister Auto SAS v Wharton Lyon & Lyon WIPO Case Number D2018-1330 (3 August 2018) 6.
29. Monty and Pat Roberts Inc v Bill Keith WIPO Case Number D2000-0299 (9 June 2000).
30. Netflix Inc v Domains By Proxy LLC National Arbitration Forum Claim No FA1505001620796 (1 June 2015).
31. Nikon Inc v Technilab WIPO Case Number D2000-1774 (26 February 2001).
32. Nokia Corporation v Nokia Ringtones & Logos Hotline WIPO Case Number D2001-1101 (18 October 2001).
33. Oki Data Americas Inc v ASD Inc WIPO Case Number D2001-0903 (6 November 2001).
34. Personal and Pedro Lopez WIPO Case Number D2003-0166 (8 May 2003).
35. Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491.
36. Reckitt & Colman Ltd v Borden Inc [1990] UKHL 12; [1990] 1 All E.R. 873.
37. Seek America Networks Inc v Tariq Masood and Solo Signs WIPO Case Number D2000-0131.
38. Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66.
39. Skattedirektoratet v Eivind Nag WIPO Case Number D2000-1314 (18 December 2000).
40. Societé Air France v Virtual Dates Inc WIPO Case Number D2005-0168 (24 May 2005).
41. Telaxis Communications Corp v William E Minkle Case Number D2000-0005 (5 March 2000).
42. Telstra Corporation Limited v Nuclear Marshmallows WIPO Case Number D2000-0003 (18 February 2000).
43. The Republic of Turkey v Haval Kurdistan WIPO Case No D2006-0184 (17 May 2006).
44. The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v
45. The Sports Cafe Ltd v The Registrar of Trade Marks [1998] FCA 1614.
46. Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S & S Enterprises Ltd WIPO Case Number Case No. D2000-0802 (9 September 2000).
47. Vivendi Universal v Mr Jay David Sallen and GO247.com,Inc WIPO Case Number D2001-1121 (7 November 2001).
48. Wachovia Corporation v Alton Flanders WIPO Case Number D2003-0596 (19 September 2003).
49. Weber-Stephen Products Co v Armitage Hardware WIPO Case Number D2000-0187 (11 May 2000).
50. World Wrestling Federation Entertainment Inc v Ringside Collectibles WIPO Case Number D2000-1306 (24 January 2001).
1. auDA, .au Dispute Resolution Policy, Adopted 15 May 2016, Policy Number 2016-01.
2. Competition and Consumer Act 2010 (Cth).
3. Copyright Act 1968 (Cth)
4. Copyright Act 1987 (Singapore, cap 63, rev ed 2006)
5. Copyright, Designs and Patents Act 1988 (UK)
6. The Lanham (Trademark) Act of 1946 15 USC §1125.
7. Trade Marks Act 1994 (UK).
8. Trade Marks Act 1995 (Cth).
9. World Intellectual Property Organization, Uniform Domain Name Dispute Resolution Policy, Adopted 26 August, 1999, Implemented 24 October 1999.
10. World Intellectual Property Organization, Rules for Uniform Domain Name Dispute Resolution Policy, Adopted 28 September 2013, implemented 31 July 2015.
11. World Intellectual Property Organization, Uniform Rapid Suspension System (“URS”), Implemented 1 March 2013.
12. World Intellectual Property Organization, Uniform Rapid Suspension System (URS) Rules, Implemented 28 June 2013.
1. Australian Football League, “Giants”, (Australia), Australian Registered Trade Mark Number 1346730, Registered from 20 February 2010.
2. Branthover, Ned, UDRP – A Success Story: A Rebuttal to the Analysis and Conclusions of Professor Mueller in “Rough Justice” (2002) < https://www.inta.org/Advocacy/Documents/INTAUDRPSuccesscontraMueller.pdf>.
3. Harvard University, Overview of Trademark Law <https://cyber.harvard.edu/metaschool/fisher/domain/tm.htm>.
4. Humphries, Matthew, gTLDs explained: What’s the process and how much will you have to pay ICANN? (20 June 2011) <https://www.geek.com/geek-pick/gtlds-whats-the-process-and-how-much-pay-icann-1392947/>.
5. Hurter, Eddie, Aspects of nature and online resolution of domain name disputes (2011) <http://uir.unisa.ac.za/bitstream/handle/10500/5589/dissertation_hurter_e.pdf;jsessionid=DC79F9F10C9DA51E10BA62BF5B8578C6?sequence=1> .
6. Hutchinson, James, ‘Can Trade Mark Protection Respond to the International Threat of Cybersquatting?’ (2001) 1 Journal of Information Law & Technology <https://warwick.ac.uk/fac/soc/law/elj/jilt/2001_1/hutchinson/>.
7. ICANN, ‘Objection and Dispute Resolution’ <https://newgtlds.icann.org/en/program-status/odr>.
8. ICANN, ‘Trademark Clearinghouse Guidelines’ (November 2013) <https://www.trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH%20guidelines%20v1.2_0.pdf>.
9. ICANN, Delegated Strings <https://newgTLDs.icann.org/en/program-status/delegated-strings>.
10. ICANN, Registry Agreement (9 January 2014) <https://newgtlds.icann.org/sites/default/files/agreements/agreement-approved-09jan14-en.htm>.
11. ICANN, Trademark Clearinghouse FAQ <https://newgTLDs.icann.org/en/about/trademark-clearinghouse/faqs>.
12. ICANN, Trademark Post-delegation Dispute Resolution Procedure (Trademark PDDRP), 2011, <https://archive.icann.org/en/topics/new-gTLDs/pddrp-clean-19sep11-en.pdf>.
13. ICANN, Uniform Rapid Suspension System (2013) <https://newgTLDs.icann.org/en/about/trademark-clearinghouse/rpm-requirements-28feb14-en.pdf>.
14. ICANN, Uniform Rapid Suspension System (2013) <http://newgTLDs.icann.org/en/applicants/urs/procedure-01mar13-en.pdf> .
15. INTA Internet Community, The UDRP by All Accounts Works Effectively Rebuttal to Analysis and Conclusions of Professor Michael Geist in “Fair.com?” and “Fundamentally Fair.com” (6 May 2002) 4 <https://www.inta.org/Advocacy/Documents/INTAUDRPSuccesscontraGeist.pdf>.
16. Lipton, Jacqueline, ‘Looking back on the first round of New gTLD Applications: Implications for the future of domain name regulation’ (Paper Series: No.31, Global Commission on Internet Governance, May 2016) <https://www.cigionline.org/sites/default/files/gcig_no31web.pdf>.
17. Maria Barratta, Olivia, and Theodore Davis, Trademark rights and protection in the USA (12 November 2018) <https://www.lexology.com/library/detail.aspx?g=8b8df1d2-b75b-4db5-a431-2c2013be7e92>.
18. McCarthy, Kieran, eResolution quits domain arbitration (4 December 2001) <https://www.theregister.co.uk/2001/12/04/eresolution_quits_domain_arbitration/>.
19. Muscovitch, Zak, Domain Name Dispute Study (28 August 2012) <https://dnattorney.com/NAF-DomainNameDisputeStudy-Aug28.pdf>.
20. Muscovitch, Zak, UDRP Panelists: Getting the Standard Right where No Response is Filed (7 March 2019) <http://www.circleid.com/posts/20190307_udrp_panelists_getting_standard_right_where_no_response_is_filed/> .
21. New York Football Giants Inc, “Giants” (United States) United States Registered Trade Mark Number 1174598, Registered from 20 October 1981.
22. NFL Properties LLC, “Giants” (Australia) Australian Registered Trade Mark Number 338375, Registered from 28 September 1979.
23. OECD, Enhancing the Contributions of SMEs In a Global and Digitalised Economy (2017) 5 <https://www.oecd.org/mcm/documents/C-MIN-2017-8-EN.pdf>.
24. Robert Mitchell, Domain-Name Wars: Rise of Cybersquatters (8 September 2009) <https://www.cio.com/article/2424985/domain-name-wars--rise-of-the-cybersquatters.html>.
25. Satistica, E-commerce share of total global retail sales from 2015 to 2023 (2019) <https://www.statista.com/statistics/534123/e-commerce-share-of-retail-sales-worldwide/>.
26. Sawinyh, Nick, Will using alternate TLDs affect your SEO negatively? (14 September 2017) <https://www.semrush.com/blog/will-using-alternate-tlds-affect-your-seo-negatively/>.
27. Uffelman, Jonathan, and Margaret Esquenet, Tenuous Common-Law Trademark Rights Inadequate to Sustain UDRP Complaint <https://www.lexology.com/library/detail.aspx?g=e94db663-eb66-4768-8960-699ebc553d3f>.
28. Whois, Gmail.sucks Domain Search (5 December 2019) <http://whois.domaintools.com/gmail.sucks> .
29. Whois, Kindle.Sucks Domain Search (5 December 2019) <http://whois.domaintools.com/kindle.sucks> .
30. World Intellectual Property Organization, Rules for New gTLD Dispute Resolution for Existing Legal Rights Objections, Implemented 20 June 2011, <https://www.wipo.int/export/sites/www/amc/en/docs/wipolrorules.pdf>.
31. World Intellectual Property Organization, ‘Rights Protection Mechanisms for New Top-Level Domains (TLDs)’ <https://www.wipo.int/amc/en/domains/rpm/>.
32. World Intellectual Property Organization, Annual Financial Reports and Financial Statements (2017) 5 <https://www.wipo.int/edocs/pubdocs/en/wipo_pub_finstatements_2017.pdf>.
33. World Intellectual Property Organization, Schedule of Fees and Costs: New gTLD Pre-Delegation Legal Rights Objection Procedure <https://www.wipo.int/amc/en/domains/lro/fees/#1>.
34. World Intellectual Property Organization, The Management of Internet Names and Addresses: Intellectual Property Issues (30 April 1999)1-3 < https://www.wipo.int/export/sites/www/amc/en/docs/annex09.pdf>.
35. World Intellectual Property Organization, WIPO Arbitration and Mediation Center End Report on Legal Rights Objection Procedure 2013, (December 2013) <https://www.wipo.int/export/sites/www/amc/en/docs/lroreport.pdf>.
36. World Intellectual Property Organization, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (2017) <https://www.wipo.int/amc/en/domains/search/overview3.0/>.
37. World Intellectual Property Organization, The Recognition of Rights and the Use of Names in the Internet Domain Name System (September 2001) <http://www.wipo.int/export/sites/www/amc/en/docs/report-final2.pdf> .
[1] Oliver Gutierrez, ‘Get Off My URL: Congress Outlaws Cybersquatting in the Wild West of the Internet’ (2001) 17(1) Santa Clara High Technology Law Journal 139, 140-146; Robert Mitchell, Domain-Name Wars: Rise of Cybersquatters (8 September 2009) <https://www.cio.com/article/2424985/domain-name-wars--rise-of-the-cybersquatters.html>.
[2] Jordan Arnot, ‘Navigating Cybersquatting Enforcement in the Expanding Internet’ (2014) 13 The John Marshall Review of Intellectual Property Law 321.
[3] World Intellectual Property Organization, Uniform Domain Name Dispute Resolution Policy, Adopted 26 August, 1999, Implemented 24 October 1999.
[4] World Intellectual Property Organization, Rules for Uniform Domain Name Dispute Resolution Policy, Adopted 28 September 2013, Implemented 31 July 2015.
[5] Alpana Roy and Althaf Marsoof, ‘Bad faith’ and ‘rights or legitimate interests’ under domain name law — emerging themes from the UDRP and auDRP’ (2015) 20 Media and Arts Law Review 283, 283-284.
[6] David Lindsay, ‘International Domain Name Law: ICANN and the UDRP’ (Hart Publishing, 1st Ed, 2007) 192; Michael Gist, ‘Fair.com? An examination of the Allegation of Systemic Unfairness in the ICANN UDRP’ (2002) 27(3) Brooklyn Journal of International Law 903.
[7] Lipton, Jacqueline, ‘Looking back on the first round of New gTLD Applications: Implications for the future of domain name regulation’ (Paper Series: No.31, Global Commission on Internet Governance, May 2016) <https://www.cigionline.org/sites/default/files/gcig_no31web.pdf>.
[8] Dennis Prahl and Eric Null, ‘The New Generic Top-Level Domain Program: A New Era of Risk For Trademark Owners and the Internet’ (2011) 101(6) The Law Journal of the International Trade Mark Association 1757.
[9] Mohd Amir Ansari et al, ‘Cybersquatting and its effectual position in India’ (2015) 6(2) International Journal of Scientific & engineering Research 880.
[10] John Mercer, ‘Cybersquatting: Blackmail on the Information Superhighway’ (2000) 6 Boston University Journal of Science & Technology 11.
[11] Julia Hornle, ‘The Uniform Domain Name Dispute Resolution Procedure: Is Too Much of a Good Thing a Bad Thing’ (2008) 11(3) Science and Technology Law Review 253, 254.
[12] Harman Preet Singh, ‘Domain Name Disputes and Their Resolution under UDRP Route: A Review” (2018) 6(12) Achieves of Business Research 147, 151.
[13] World Intellectual Property Organization, Uniform Domain Name Dispute Resolution Policy, Adopted 26 August, 1999, Implemented 24 October 1999, Rule 4(a)(i).
[14] World Intellectual Property Organization, Uniform Domain Name Dispute Resolution Policy, Adopted 26 August, 1999, Implemented 24 October 1999, Rule 4(a)(ii)
[15] Ibid 4(a)(iii).
[16] World Intellectual Property Organization, Uniform Domain Name Dispute Resolution Policy, Adopted 26 August, 1999, Implemented 24 October 1999, 4(a)(i).
[17] Scott Donahey, ‘Divergence in the UDRP and the Need for Appellate Review’ (2002) 5 Journal of Internet Law 10.
[18] David Sorkin, ‘Judicial Review of ICANN Domain Name Dispute Decisions’ (2001) 18 The John Marshall Institutional Repository 35, 48; Wachovia Corporation v Alton Flanders WIPO Case Number D2003-0596 (19 September 2003).
[19] CPP Inc v Virtual Sky WIPO Case Number D2006-0201 (28 March 2006); Amazon.com Inc v Steven Newman a/k/a Jill Wasserstein a/k/a Pluto Newman WIPO Case Number D2006-0517 (28 June 2006).
[20] Christine Farley, ‘Confusing the Similarity of Trademarks Law in Domain Name Disputes’ (2019) 52(3) Akron Law Review 608, 613.
[21] Christine Farley, ‘Confusing the Similarity of Trademarks Law in Domain Name Disputes’ (2019) 52(3) Akron Law Review 608, 613.
[22] Societé Air France v Virtual Dates Inc WIPO Case Number D2005-0168 (24 May 2005).
[23] America Online Inc v Johuanthan Investments Inc WIPO Case Number D2001-0918 (14 September 2001).
[24] Societé Air France v Virtual Dates Inc WIPO Case Number D2005-0168 (24 May 2005), 6(A).
[25] Vivendi Universal v Mr Jay David Sallen and GO247.com,Inc WIPO Case Number D2001-1121 (7 November 2001).
[26] Koninklijke Phillip Electronics NV v In Seo Kim WIPO Case Number D2001-1195 (12 November 2001).
[27] America Online Inc v Johuanthan Investments Inc WIPO Case Number D2001-0918 (14 September 2001), 6.
[28] ASDA Group Limited v Mr Paul Kilgour WIPO Case Number D2002-0857 (11 November 2012).
[29] Ibid 6(A).
[30] World Intellectual Property Organization, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (2017) 1.7 < https://www.wipo.int/amc/en/domains/search/overview3.0/>.
[31] World Intellectual Property Organization, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (2017) 1.13 < https://www.wipo.int/amc/en/domains/search/overview3.0/>.
[32] Jacqueline Lipton, ‘Looking back on the first round of New gTLD Applications: Implications for the future of domain name regulation’ (Paper Series: No.31, Global Commission on Internet Governance, May 2016) <https://www.cigionline.org/sites/default/files/gcig_no31web.pdf>.
[33] Eddie Hurter, Aspects of nature and online resolution of domain name disputes (2011) 136 <http://uir.unisa.ac.za/bitstream/handle/10500/5589/dissertation_hurter_e.pdf;jsessionid=DC79F9F10C9DA51E10BA62BF5B8578C6?sequence=1> .
[34] Trade Marks Act 1994 (UK) s5(2); Trade Marks Act 1995 (Cth) s10, s44; Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491.
[35] World Intellectual Property Organization, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (2017) 1.7 <https://www.wipo.int/amc/en/domains/search/overview3.0/>.
[36] Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66.
[37] Toyota Jidosha Kabushiki Kaisha d/b/a Toyota Motor Corporation v. S & S Enterprises Ltd WIPO Case Number Case Number D2000-0802 (9 September 2000).
[38] Polaroid Corporation v Sole N Pty Ltd [1981] 1 NSWLR 491.
[39] Ansell Healthcare Products Inc v Australian Therapeutics Supplies Pty Ltd WIPO Case Number D20011-0110 (2 April 2001); Britannia Building Society v Britannia Fraud Prevention WIPO Case Number D2001-0505 (6 July 2001).
[40] The Sports Cafe Ltd v The Registrar of Trade Marks [1998] FCA 1614.
[41] World Intellectual Property Organization, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (2017) 1.7 <https://www.wipo.int/amc/en/domains/search/overview3.0/>.
[42] Berlei Hestia Industries Limited v Bali Co Inc [1973] HCA 43; [1973] 129 CLR 353.
[43] Laurence Helfer, ‘International Dispute Settlement at the Trade Mark Domain Name Interface’ (2001) 29(1) Pepperdine Law Review 87, 94.
[44] Seek America Networks Inc v Tariq Masood and Solo Signs WIPO Case Number D2000-0131, 4.
[45] World Intellectual Property Organization, The Recognition of Rights and the Use of Names in the Internet Domain Name System (September 2001) 78 <http://www.wipo.int/export/sites/www/amc/en/docs/report-final2.pdf> .
[46] James Hutchinson, ‘Can Trade Mark Protection Respond to the International Threat of Cybersquatting?’ (2001) 1 Journal of Information Law & Technology <https://warwick.ac.uk/fac/soc/law/elj/jilt/2001_1/hutchinson/>.
[47] Robert Burrell and Michael Handler, ‘The Intersection Between Registered and Unregistered Trade Marks’ [2007] FedLawRw 15; (2007) 35(3) Federal Law Review 375.
[48] Erven Warnink v J. Townend & Sons (Hull) Ltd [1980] R.P.C. 31; Reckitt & Colman Ltd v Borden Inc [1990] UKHL 12; [1990] 1 All E.R. 873.
[49] Competition and Consumer Act 2010 (Cth) Sch 2 s18, s29.
[50] ConAgra Inc v McCain Foods (Aust) Pty Ltd [1992] FCA 176; AG Spalding and Bros v AW Gamage Ltd 84 LJ Ch 449, 113 LT 198, 31 TLR 328, [1914-15] All ER Rep 147, 32 RPC 273.
[51] The Lanham (Trademark) Act of 1946 15 USC §1125.
[52] Olivia Maria Barratta and Theodore Davis, Trademark rights and protection in the USA (12 November 2018) <https://www.lexology.com/library/detail.aspx?g=8b8df1d2-b75b-4db5-a431-2c2013be7e92>; Harvard University, Overview of Trademark Law <https://cyber.harvard.edu/metaschool/fisher/domain/tm.htm>; Jonathan Uffelman and Margaret Esquenet, Tenuous Common-Law Trademark Rights Inadequate to Sustain UDRP Complaint <https://www.lexology.com/library/detail.aspx?g=e94db663-eb66-4768-8960-699ebc553d3f>.
[53] Marketa Trimble, ‘Territorialization of the Internet Domain Name System’ (2018) 45 Pepperdine Law Review 623, 650.
[54] David Lindsay, ‘International Domain Name Law: ICANN and the UDRP’ (Hart Publishing, 1st Ed, 2007) 192.
[55] World Intellectual Property Organization, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (2017) 1.3 <https://www.wipo.int/amc/en/domains/search/overview3.0/>.
[56] Skattedirektoratet v Eivind Nag WIPO Case Number D2000-1314 (18 December 2000), 5(A), 6(i).
[57] The Republic of Turkey v Haval Kurdistan WIPO Case No D2006-0184 (17 May 2006), 6(A)(b); David Lindsay, ‘International Domain Name Law: ICANN and the UDRP’ (Hart Publishing, 1st Ed, 2007) 192.
[58] World Intellectual Property Organization, Uniform Domain Name Dispute Resolution Policy, Adopted 26 August, 1999, Implemented 24 October 1999, Rule 4(b)(i).
[59] Ibid 4(b)(ii).
[60] Ibid 4(b)(iii).
[61] World Intellectual Property Organization, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (2017) 2.2 <https://www.wipo.int/amc/en/domains/search/overview3.0/>.
[62] Ferrero S.p.A v Fistagi S.r.I WIPO Case Number D2001-0262 (23 May 2001), 6.
[63] Nokia Corporation v Nokia Ringtones & Logos Hotline WIPO Case Number D2001-1101 (18 October 2001), 6(C).
[64] Weber-Stephen Products Co v Armitage Hardware WIPO Case Number D2000-0187 (11 May 2000), 6(B).
[65] Oki Data Americas Inc v ASD Inc WIPO Case Number D2001-0903 (6 November 2001).
[66] World Wrestling Federation Entertainment Inc v Ringside Collectibles WIPO Case Number D2000-1306 (24 January 2001), 6(B).
[67] Nikon Inc v Technilab WIPO Case Number D2000-1774 (26 February 2001).
[68] Houghton Mifflin Co v Weatherman Inc WIPO Case Number D2001-0211 (25 April 2001), 6(B).
[69] Magnum Piering Inc v Mudjackers WIPO Case Number D2000-1525 (29 January 2001), 6(B).
[70] World Intellectual Property Organization, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (2017) 2.8 <https://www.wipo.int/amc/en/domains/search/overview3.0/>.
[71] Marvel Manufacturing Company Inc v Koba Internet Sales LP WIPO Case Number D2008-0265 (5 May 2008), 6(B).
[72] The Royal Bank of Scotland Group plc, National Westminster Bank plc A/K/A NatWest Bank v Personal and Pedro Lopez WIPO Case Number D2003-0166 (8 May 2003), 6.2.
[73] Bridgestone Firestone Inc, Bridgestone Firestone Research, Inc and Bridgestone Corporation v. Jack Myers WIPO Case Number D2000-0190 (6 July 2000), 6.
[74] Justice for Children v R neetso / Robert W. O’Steen WIPO Case Number D2004-0175 (4 June 2004), 8.
[75] Estée Lauder Inc v Estelauder.com, Estelauder.net and Jeff Hanna WIPO Case Number D2000-0869 (25 September 2000), 6(b).
[76] E & J Gallo Winery v Hanna Law Firm WIPO Case Number D2000-0615 (3 August 2000), 6(b); DFO Inc v Christian Williams WIPO Case Number D2000-0181 (14 May 2000) 9.
[77] Steve Hedley, ‘The Law of E-Commerce and the Internet in the UK and Ireland’ (Routledge-Cavendish, 1st Ed, 2006) 184.
[78] Monty and Pat Roberts Inc v Bill Keith WIPO Case Number D2000-0299 (9 June 2000), 6.
[79] World Intellectual Property Organization, WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (2017) 2.6.1 <https://www.wipo.int/amc/en/domains/search/overview3.0/>.
[80] Ibid 2.6.2.
[81] World Intellectual Property Organization, Uniform Domain Name Dispute Resolution Policy, Adopted 26 August, 1999, Implemented 24 October 1999, Rule 4(c).
[82] World Wrestling Federation Entertainment Inc v Ringside Collectibles WIPO Case Number D2000-1306 (24 January 2001).
[83] Alpana Roy and Althaf Marsoof, ‘Bad faith’ and ‘rights or legitimate interests’ under domain name law — emerging themes from the UDRP and auDRP’ (2015) 20 Media and Arts Law Review 283, 286-288.
[84] World Wrestling Federation Entertainment Inc v Ringside Collectibles WIPO Case Number D2000-1306 (24 January 2001).
[85] Alpana Roy and Althaf Marsoof, ‘Bad faith’ and ‘rights or legitimate interests’ under domain name law — emerging themes from the UDRP and auDRP’ (2015) 20 Media and Arts Law Review 283, 286-288.
[86] World Intellectual Property Organization, The Management of Internet Names and Addresses: Intellectual Property Issues (30 April 1999)1-3 <https://www.wipo.int/export/sites/www/amc/en/docs/annex09.pdf>.
[87] Michael Froomkin, ‘Wrong Turn in Cryberspace: Using ICANN to route around the APA and the Constitution’ (2000) 50 Duke Law Journal 17, 60.
[88] auDA, .au Dispute Resolution Policy, Adopted 15 May 2016, Policy Number 2016-01, Schedule A, Rule 4(a)(iii).
[89] David Lindsay, ‘Internet Domain Name Dispute Resolution’ (Paper presented at BLEC Congress 2002, Melbourne, 30 April 2002) 8.3.3.
[90] Telstra Corporation Limited v Nuclear Marshmallows WIPO Case Number D2000-0003 (18 February 2000); Audi AG v Hans Wolf WIPO Case Number D2001-0148 (15 May 2001).
[91] Audi AG v Hans Wolf WIPO Case Number D2001-0148 (15 May 2001).
[92] Do The Hustle LLC v Tropic Web WIPO Case Number 2000-0624 (21 August 2000).
[93] Telaxis Communications Corp v William E Minkle Case Number D2000-0005 (5 March 2000).
[94] Jappy GmbH v Satoshi Shimoshita WIPO Case Number D2010-1001 (28 September 2010), 6.24.
[95] Extreme Networks Limited, Extreme Drinks Limited v Ex Drinks LLC WIPO Case Number Case Number D2013-0197 (18 March 2013), 6(c).
[96] World Intellectual Property Organization, Rules for Uniform Domain Name Dispute Resolution Policy, Adopted 28 September 2013, Implemented 31 July 2015, Rule 15(a).
[97] Elizabeth Woodard, ‘The UDRP, ADR, and Arbitration: Using Proven Solutions to Address Perceived Problems with the UDRP’ (2009) 19(4) Fordham Intellectual Property, Media and Entertainment Law Journal 1169, 1197.
[98] David Wotherspoon and Alex Cameron, ‘Reducing Inconsistency in UDRP Case’ (2006) 1 Canadian Journal of Law and Technology 71, 72.
[99] Elizabeth Woodard, ‘The UDRP, ADR, and Arbitration: Using Proven Solutions to Address Perceived Problems with the UDRP’ (2009) 19(4) Fordham Intellectual Property, Media and Entertainment Law Journal 1169, 1198.
[100] World Intellectual Property Organization, Rules for Uniform Domain Name Dispute Resolution Policy, Adopted 28 September 2013, Implemented 31 July 2015, 15(a).
[101] World Intellectual Property Organization, Uniform Domain Name Dispute Resolution Policy, Adopted 26 August, 1999, Implemented 24 October 1999, Rule 4(d)).
[102] Michael Gist, ‘Fair.com? An examination of the Allegation of Systemic Unfairness in the ICANN UDRP’ (2002) 27(3) Brooklyn Journal of International Law 903, 906.
[103] Pablo Cortes, Online Dispute Resolution for Consumers in the European Union (Routledge Research, 1st Ed, 2010) 118.
[104] Pablo Cortes, ‘An Analysis of the UDRP Experience: Is it Time for Reform?’ (2008) 24(4) Computer Law and Security Report 1, 8.
[105] Michael Gist, ‘Fair.com? An examination of the Allegation of Systemic Unfairness in the ICANN UDRP’ (2002) 27(3) Brooklyn Journal of International Law 903, 906-912; John Magee, ‘Domain Name Disputes: An assessment of the UDRP as Against Traditional Litigation’ (2003) 1, Journal of Law Technology & Policy 203, 209.
[106] Kieran McCarthy, eResolution quits domain arbitration (4 December 2001) <https://www.theregister.co.uk/2001/12/04/eresolution_quits_domain_arbitration/.
[107] Pablo Cortes, Online Dispute Resolution for Consumers in the European Union (Routledge Research, 1st Ed, 2010), 124.
[108] Elizabeth Thornburg, ‘Fast, Cheap, and Out of Control: Lessons from the ICANN Dispute Resolution Process’ (2002) 6 Journal of Small and Emerging Business 191, 220.
[109] Andrew Murray, Information Technology Law: The Law and Society (Oxford University Press, 3rd Ed, 2016) 427-428.
[110] Pablo Cortes, ‘An Analysis of the UDRP Experience: Is it Time for Reform?’ (2008) 24(4) Computer Law and Security Report 1, 8.
[111] Ned Branthover, UDRP – A Success Story: A Rebuttal to the Analysis and Conclusions of Professor Mueller in “Rough Justice” (2002) 6 < https://www.inta.org/Advocacy/Documents/INTAUDRPSuccesscontraMueller.pdf>.
[112] Jay Kesan and Andreas Gallo, ‘ICANN/UDRP Performance - An Empirical Analysis’ (Working Paper #03-8, University of Illinois, October 2003) 105.
[113] Ibid.
[114] David Simon, ‘An Empirical Analysis of Fair Use Decisions Under the Uniform Domain-Name Dispute-Resolution Policy’ (2012) 53(1) Boston College Law Review 65, 70.
[115] Daniel Klerman and Greg Reilly, ‘Forum Selling’ (2016) 89 Southern California Law Review 241, 298.
[116] Daniel Klerman, ‘Forum selling and Domain-Name Disputes’ (2016) 48 Loyola University Chicago Law Journal 561, 581.
[117] Daniel Klerman and Greg Reilly, ‘Forum Selling’ (2016) 89 Southern California Law Review 241, 297.
[118] World Intellectual Property Organization, Annual Financial Reports and Financial Statements (2017) 5 <https://www.wipo.int/edocs/pubdocs/en/wipo_pub_finstatements_2017.pdf>.
[119] Daniel Klerman, ‘Forum selling and Domain-Name Disputes’ (2016) 48 Loyola University Chicago Law Journal 561, 581.
[120] Zak Muscovitch, Domain Name Dispute Study (28 August 2012) <https://dnattorney.com/NAF-DomainNameDisputeStudy-Aug28.pdf>.
[121] Elizabeth Woodard, ‘The UDRP, ADR, and Arbitration: Using Proven Solutions to Address Perceived Problems with the UDRP’ (2009) 19(4) Fordham Intellectual Property, Media and Entertainment Law Journal 1169, 1194.
[122] Michael Froomkin, ‘ICANN's "Uniform Dispute Resolution Policy"- Causes and (Partial) Cures’ (2002) 67 Brooklyn Law Review 605, 690.
[123] World Intellectual Property Organization, Rules for Uniform Domain Name Dispute Resolution Policy, Adopted 28 September 2013, Implemented 31 July 2015, Rule 3(b)(iv).
[124] Ibid 3(b)(iv); 5(c)(iv).
[125] Patrick Kelley, ‘Emerging Patterns in Arbitration Under the Uniform Domain-Name Dispute-Resolution Policy, (2002) 17(1) Berkeley Technology Law Journal 181, 189.
[126] David Lindsay, ‘International Domain Name Law ICANN and the UDRP’, (2009) 6(1) SCRIPTed 181, 182.
[127] Pavel Loutocky, ‘Are we getting good decision by top-level domain name dispute resolution providers?’ (2015) 9(1) Masaryk University Journal of Law and Technology 111, 115-119.
[128] World Intellectual Property Organization, Rules for Uniform Domain Name Dispute Resolution Policy, Adopted 28 September 2013, Implemented 31 July 2015, Rule 7.
[129] Peter Chan, ‘The Uniform Domain Name Dispute Resolution Policy as an Alternative to Litigation’ (2002) 9(2) Murdoch University Electronic Journal of Law 12.
[130] Michael Gist, ‘Fair.com? An examination of the Allegation of Systemic Unfairness in the ICANN UDRP’ (2002) 27(3) Brooklyn Journal of International Law 903.
[131] Michael Gist, ‘Fair.com? An examination of the Allegation of Systemic Unfairness in the ICANN UDRP’ (2002) 27(3) Brooklyn Journal of International Law 903; Patrick Kelley, ‘Emerging Patterns in Arbitration Under the Uniform Domain-Name Dispute-Resolution Policy, (2002) 17(1) Berkeley Technology Law Journal 181, 189.
[132] Kenneth Port, ‘Trademark Monopolies in the blue nowhere’ (2002) 28(3) William Mitchell Law Review 1091, 1115.
[133] Paul Torremans, ‘Research Handbook on Cross-Border Enforcement of Intellectual Property’ (Edward Elgar, 1st Ed, 2014).
[134] Jay Kesan and Andres Gallo, ‘ICANN/UDRP Performance - An Empirical Analysis’ (Working Paper #03-8, University of Illinois, October 2003) 103-104.
[135] World Intellectual Property Organization, Rules for Uniform Domain Name Dispute Resolution Policy, Adopted 28 September 2013, Implemented 31 July 2015, Rule 2(ii)(A).
[136] Ibid 2(f).
[137] Ibid 5(a).
[138] Peter Chan, ‘The Uniform Domain Name Dispute Resolution Policy as an Alternative to Litigation’ (2002) 9(2) Murdoch University Electronic Journal of Law 12.
[139] Michael Froomkin, ‘ICANN's "Uniform Dispute Resolution Policy"- Causes and (Partial) Cures’ (2002) 67 Brooklyn Law Review 605, 674-677, 702.
[140] Ibid.
[141] World Intellectual Property Organization, Rules for Uniform Domain Name Dispute Resolution Policy, Adopted 28 September 2013, Implemented 31 July 2015, Rule 5(b).
[142] INTA Internet Community, The UDRP by All Accounts Works Effectively Rebuttal to Analysis and Conclusions of Professor Michael Geist in “Fair.com?” and “Fundamentally Fair.com” (6 May 2002) 4 <https://www.inta.org/Advocacy/Documents/INTAUDRPSuccesscontraGeist.pdf>.
[143] Mister Auto SAS v Wharton Lyon & Lyon WIPO Case Number D2018-1330 (3 August 2018) 6.
[144] Zak Muscovitch, UDRP Panelists: Getting the Standard Right where No Response is Filed (7 March 2019) <http://www.circleid.com/posts/20190307_udrp_panelists_getting_standard_right_where_no_response_is_filed/> .
[145] Ibid.
[146] John Magee, ‘Domain Name Disputes: An assessment of the UDRP as Against Traditional Litigation’ (2003) 1 Journal of Law, Technology and Policy 203, 208.
[147] Jonathan Schwartz, ‘Making the Consumer Watchdog’s Bark as Strong as its Gripe: Complaint Sites and the Changing Dynamic of the Fair Use Defense’ (2006) 16 Albany Law Journal of Science & Technology 87.
[148] AREAS S.A. v Andres Sanchez Garcia WIPO Case Number D2015-1482 (9 November 2015) 6(C).
[149] Colm Brannigan, ‘The UDRP: How Do You Spell Success?’ (2004) 5(1) Digital Technology Law Journal 2.
[150] Peter Chan, ‘The Uniform Domain Name Dispute Resolution Policy as an Alternative to Litigation’ (2002) 9(2) Murdoch University Electronic Journal of Law 12.
[151] World Intellectual Property Organization, Uniform Domain Name Dispute Resolution Policy, Adopted 26 August, 1999, Implemented 24 October 1999, Rule 4(b)(i)-(iv).
[152] World Intellectual Property Organization, Rules for Uniform Domain Name Dispute Resolution Policy, Adopted 28 September 2013, Implemented 31 July 2015, Rule 15(a).
[153] Jacqueline Lipton, ‘Looking back on the first round of New gTLD Applications: Implications for the future of domain name regulation’ (Paper Series: No.31, Global Commission on Internet Governance, May 2016) <https://www.cigionline.org/sites/default/files/gcig_no31web.pdf>.
[154] Jacqueline Lipton, ‘Bad Faith in Cyberspace: Grounding Domain Name Theory in Trademark, Property and Restitution’ (2010) 23(2) Harvard Journal of Law & Technology 448, 481.
[155] World Intellectual Property Organization, Rules for Uniform Domain Name Dispute Resolution Policy, Adopted 28 September 2013, Implemented 31 July 2015, Rule 5(b).
[156] INTA Internet Community, The UDRP by All Accounts Works Effectively Rebuttal to Analysis and Conclusions of Professor Michael Geist in “Fair.com?” and “Fundamentally Fair.com” (6 May 2002) 4 <https://www.inta.org/Advocacy/Documents/INTAUDRPSuccesscontraGeist.pdf>.
[157] Jacqueline Lipton, ‘Looking back on the first round of New gTLD Applications: Implications for the future of domain name regulation’ (Paper Series: No.31, Global Commission on Internet Governance, May 2016) 1 <https://www.cigionline.org/sites/default/files/gcig_no31web.pdf>.
[158] Christine Haight Farley, ‘Confusing the Similarity of Trademarks Law in Domain Name Disputes’ (2019) 52(3) Akron Law Review 607, 635.
[159] Ibid 612.
[160] ICANN, ‘Objection and Dispute Resolution’ <https://newgtlds.icann.org/en/program-status/odr>.
[161] ICANN, ‘Trademark Clearinghouse Guidelines’ (November 2013) <https://www.trademark-clearinghouse.com/sites/default/files/files/downloads/TMCH%20guidelines%20v1.2_0.pdf>.
[162] ICANN, Uniform Rapid Suspension System (2013) <http://newgTLDs.icann.org/en/applicants/urs/procedure-01mar13-en.pdf> .
[163] ICANN, Trademark Post-delegation Dispute Resolution Procedure (Trademark PDDRP), 2011, <https://archive.icann.org/en/topics/new-gTLDs/pddrp-clean-19sep11-en.pdf>.
[164] Sadulla Karjiker, ‘The new gTLDs and the resolution of trade mark disputes’ (2014) 25(2) Stellenbosch Law Review 408, 424.
[165] ICANN, Uniform Rapid Suspension System (2013) <https://newgTLDs.icann.org/en/about/trademark-clearinghouse/rpm-requirements-28feb14-en.pdf>; World Intellectual Property Organization, ‘Rights Protection Mechanisms for New Top-Level Domains (TLDs)’ <https://www.wipo.int/amc/en/domains/rpm/>; ICANN, Trademark Clearinghouse FAQ <https://newgTLDs.icann.org/en/about/trademark-clearinghouse/faqs>.
[166] Ibid.
[167] John Swinson and Karen Litherland, ‘Update: the new gTLDs’ (2015) 2(6-7) Australian Media, Technology and Communications Law Bulletin 87.
[168] Benjamin Boroughf, ‘The New Dot Context: How to Mitigate Trademark Concerns in ICANN's New gTLD Program’ (2014) 10(1) I/S: A Journal of Law and Policy 85, 103.
[169] Whois, Gmail.sucks Domain Search (5 December 2019) <http://whois.domaintools.com/gmail.sucks> .
[170] Whois, Kindle.Sucks Domain Search (5 December 2019) <http://whois.domaintools.com/kindle.sucks> .
[171] Jacqueline Lipton and Mary Wong, ‘Trademarks and Freedom of Expression in ICANN’s New gTLD Process’ [2012] MonashULawRw 10; (2012) 38(1) Monash University Law Review 188, 225.
[172] World Intellectual Property Organization, Uniform Rapid Suspension System (“URS”), Implemented 1 March 2013, Rules 1.2, 7.1; World Intellectual Property Organization, Uniform Rapid Suspension System (URS) Rules, Implemented 28 June 2013.
[173] Alpana Roy and Althaf Marsoof, ‘The brave new world of ICANN’s ‘new gTLDs: an overview’ (2018) 40(10) European Intellectual Property Review 649, 559.
[174] Jaani Riordan, ‘The Liability of Internet Intermediaries’ (Oxford University Press, 1st Ed, 2016) 215.
[175] World Intellectual Property Organization, Uniform Rapid Suspension System (“URS”), Implemented 1 March 2013, Rule 10.2; World Intellectual Property Organization, Uniform Domain Name Dispute Resolution Policy, Adopted 26 August, 1999, Implemented 24 October 1999, Rule 3.
[176] Netflix Inc v Domains By Proxy LLC National Arbitration Forum Claim No FA1505001620796 (1 June 2015).
[177] Lululemon Athletica Canada Inc v Domain Administrator National Arbitration Forum Claim No FA1505001621406 (18 June 205).
[178] World Intellectual Property Organization, Uniform Rapid Suspension System (“URS”), Implemented 1 March 2013, Rule 8.6.
[179] David Simon, ‘An Empirical Analysis of Fair Use Decisions Under the Uniform Domain-Name Dispute-Resolution Policy’ (2012) 53(1) Boston College Law Review 65.
[180] OECD, Enhancing the Contributions of SMEs In a Global and Digitalised Economy (2017) 5 <https://www.oecd.org/mcm/documents/C-MIN-2017-8-EN.pdf>.
[181] Benjamin Boroughf, ‘The New Dot Context: How to Mitigate Trademark Concerns in ICANN's New gTLD Program’ (2014) 10(1) I/S: A Journal of Law and Policy 85, 99.
[182] Adrian Fisher, ‘Expanding the Domain Name System – The Introduction of New gTLDs’ (2009) 28(2) Communications Law Bulletin 5.
[183] Canyon Bicycles GmbH v Domains by Proxy WIPO Case Number D2014-0206 (14 March 2014).
[184] NFL Properties LLC, “Giants” (Australia) Australian Registered Trade Mark Number 338375, Registered from 28 September 1979; New York Football Giants Inc, “Giants” (United States) United States Registered Trade Mark Number 1174598, Registered from 20 October 1981.
[185] Australian Football League, “Giants”, (Australia), Australian Registered Trade Mark Number 1346730, Registered from 20 February 2010.
[186] Jacqueline Lipton and Mary Wong, ‘Trademarks and Freedom of Expression in ICANN’s New gTLD Process’ [2012] MonashULawRw 10; (2012) 38(1) Monash University Law Review 188, 223.
[187] ICANN, Delegated Strings <https://newgTLDs.icann.org/en/program-status/delegated-strings>.
[188] Tobias Mahler, ‘Generic Top-Level Domains A Study of Transnational Private Regulation’ (Edward Elgar Publishing, 1st Ed, 2019).
[189] Nick Sawinyh, Will using alternate TLDs affect your SEO negatively? (14 September 2017) <https://www.semrush.com/blog/will-using-alternate-tlds-affect-your-seo-negatively/>.
[190] World Intellectual Property Organization, Uniform Domain Name Dispute Resolution Policy, Adopted 26 August, 1999, Implemented 24 October 1999, Rule 4(b)(iv).
[191] Ashlie Stewart Smith, ‘Trademark Holders Beware: Source-Indicating gTLDs Are Here’ (2017) 57(2) Journal of the Franklin Pierce Center for Intellectual Property 153, 180.
[192] Copyright Act 1968 (Cth) s119(a); Copyright, Designs and Patents Act 1988 (UK) s97A(1); Copyright Act 1987 (Singapore, cap 63, rev ed 2006) s193DDA.
[193] ICANN, Delegated Strings <https://newgTLDs.icann.org/en/program-status/delegated-strings>.
[194] Ibid.
[195] ICANN, Registry Agreement (9 January 2014) 4.1-4.2 <https://newgtlds.icann.org/sites/default/files/agreements/agreement-approved-09jan14-en.htm>.
[196] Dennis Prahl and Eric Null, ‘The New Generic Top-Level Domain Program: A New Era of Risk For Trademark Owners and the Internet’ (2011) 101(6) The Law Journal of the International Trade Mark Association 1757; Matthew Humphries, gTLDs explained: What’s the process and how much will you have to pay ICANN? (20 June 2011) <https://www.geek.com/geek-pick/gtlds-whats-the-process-and-how-much-pay-icann-1392947/>.
[197] Jacqueline Lipton, ‘Looking back on the first round of New gTLD Applications: Implications for the future of domain name regulation’ (Paper Series: No.31, Global Commission on Internet Governance, May 2016) 2 <https://www.cigionline.org/sites/default/files/gcig_no31web.pdf>.
[198] Marketa Trimble, ‘Territorialization of the Internet Domain Name System’ (2018) 45 Pepperdine Law Review 623.
[199] Satistica, E-commerce share of total global retail sales from 2015 to 2023 (2019) <https://www.statista.com/statistics/534123/e-commerce-share-of-retail-sales-worldwide/>.
[200] World Intellectual Property Organization, Rules for New gTLD Dispute Resolution for Existing Legal Rights Objections, Implemented 20 June 2011.
[201] World Intellectual Property Organization, WIPO Arbitration and Mediation Center End Report on Legal Rights Objection Procedure 2013, (December 2013) 11 <https://www.wipo.int/export/sites/www/amc/en/docs/lroreport.pdf>.
[202] World Intellectual Property Organization, Schedule of Fees and Costs: New gTLD Pre-Delegation Legal Rights Objection Procedure <https://www.wipo.int/amc/en/domains/lro/fees/#1>.
AustLII:
Copyright Policy
|
Disclaimers
|
Privacy Policy
|
Feedback
URL: http://www.austlii.edu.au/au/journals/UNSWLawJlStuS/2020/18.html