ICANN Dispute Resolution Procedure explained

ICANN's new dispute resolution procedure applies to virtually all domain name registrants. (Before ICANN acted, NSI, which had a monopoly on domain name registrations in the United States, had its own dispute resolution system, which handled disputes between its domain name registrants and trademark holders.)

What You Must Prove to Win

To win your case in the ICANN procedure, you'll have to prove three things:

•The domain name at issue is identical or confusingly similar to a mark that you own, whether or not the mark has been registered as a trademark in the U.S. or abroad,

•The registrant has no rights or legitimate interests in the domain name, and

•The domain name was registered and/or is being used in bad faith.

You must prove similar things to prevail in a lawsuit based on the federal Anti-Cybersquatting Consumer Protection Act. The Anti-Cybersquatting Act is, however, as a practical matter, enforceable in the United States alone. The ICANN procedure, on the other hand, can conveniently be used against domain name registrants outside of the U.S. as well. Here's a look at each of these three elements in more detail.

Domain name's confusing similarity to your trademark. You must assert that you own the mark because you were the first to use it or because trademark registration has given you the right to its exclusive use. You must also state that the domain name really is confusingly similar to your mark. If the domain name at issue is preventing you from using your mark as your own domain name, the "identical or confusingly similar" test will probably be satisfied. Registrant's lack of rights or legitimate interests in the name. To prove this element, you must show three things:

•The registrant has never tried to use the domain name (or a similar one) in connection with legitimate commerce, on or off the Web;

•The registrant was never generally known by the domain name, even if the name wasn't used in commerce as a trademark; and

•The registrant isn't using the domain name in any legitimate way. A legitimate use would, for example, consist of use on a non-commercial website that engages in satire or criticism. But the use would not be legitimate if the registrant's actual intent is to divert consumers from your website or business location, or to tarnish your mark by lessening its reputation for quality. Registrant's bad faith. This one is really the flip side of the second item. The registrant has acted in bad faith if you can show any of the following:

•The registrant acquired the domain name with the intent to sell it back to you or your business in particular, or to a competitor of yours, for profit. This wouldn't apply to those who acquire domain names with the intent to auction them off to the highest bidder later, because the plan was not directed specifically at you.

•The registrant has a pattern of acquiring domain names with the intent to block their use by legitimate trademark owners. That is, the registrant is a true cybersquatter.

•The registrant is a competitor who acquired the domain name primarily to disrupt your business.

•The registrant is using the domain name to attract users to the website by creating customer confusion.

How the Process Works

Your first step is to choose a dispute resolution "provider," which is an organization approved by ICANN. So far, ICANN has approved just two providers. Each has its own supplemental rules for dispute resolution, so in addition to ICANN's procedural rules you must follow the provider's rules. You can check them out at the provider's website, listed below. These sites offer detailed discussions about how to navigate the process. To begin your case, you send a complaint to the provider, setting out specific facts that prove the three elements discussed above. Check the provider's website for fee information. Who pays the fees and how much will vary depending on the circumstances and the provider.

After reviewing the complaint for completeness, the provider will send the registrant a copy of the complaint, along with directions on how the registrant can respond and within how much time. The domain name registrant can continue to use the name until the dispute is resolved. The provider will usually issue a response based solely on the complaint and the response. Either party may go to court if the decision is not to their liking. However, if the decision is in your favor, you will get the domain name transferred to you unless the registrant promptly files a lawsuit to prevent it. The ICANN procedure is still new, and there will no doubt be numerous changes to it; the rules may have changed by the time you read this article. Check out the resources listed below to get the most up-to-date rules.

Current Information About Dispute Resolution Procedures

ICANN: icann.org. Go there for the most current information about the new dispute resolution process.