A Fun Primer on WIPO, ICANN, and the Uniform Domain Name Dispute Resolution Policy
By John Norwood · May 28, 2014 · 2014 Ark. L. Notes
In categories: Alternative Dispute Resolution, Intellectual Property, International and Immigration Law, Snapshot
WIPO, the World Intellectual Property Organization, acting through the Uniform Domain Name Dispute Resolution Policy, provides a simpler alternative to resolving domain name disputes than is normally available in civil courts. WIPO is a platform of the United Nations, with 186 member states participating in the effort to end intellectual property theft. It is headquartered in Geneva, which is also a host of UN regional headquarters. 1 Although not the only service provided by WIPO, domain name dispute resolution through binding arbitration is a large portion of its operations.
In the early days (pre-21st century) trademark owners and famous entertainers, athletes and celebrities were often victimized by the misappropriation of their names by villains who used a famous mark or name as part of a domain name. In such cases trademark owners and famous individuals were generally limited to remedies under the federal Lanham Act. 2 One such case was Hasbro, Inc. v. The Internet Entertainment Group.”3 In this case the Hasbro Corporation, makers of the famous children’s board game “Candyland,” filed suit against the registrant of the domain name “candyland.com.” The site was entirely pornographic. The court held for the Hasbro Corporation, finding that the use of the famous Candyland name as a domain name constituted dilution by tarnishment and violated the Lanham Act.4 The domain name was turned over to Hasbro. A similar result obtained in a lawsuit filed by PETA (People for the Ethical Treatment of Animals) against a registrant of the domain name “PETA.org.” The registrant in question used the letters PETA to stand for “People Eating Tasty Animals.” The registrant defended the lawsuit on the basis of “parody,” but the court rejected this defense, noting that one could not know that a parody was intended by looking at the domain name itself.5
In the U.S. statutory remedies were given to victims of fraudulent domain name registration through the Anticybersquatting Consumer Protection Act of 1999.6 Under this law bad faith registration of a famous name or mark as a part of a domain name could result in damages of up to $100,000 being awarded. However, there have been very few reported cases wherein victims of fraudulent domain name registrations have actually been awarded damages. The fact that many registrants are located outside of the U.S. is just one of several factors making successful civil litigation very problematic.
The ICANN Uniform Domain Name Dispute Resolution Policy: ICANN, the Internet Corporation for Assigned Names and Numbers, was formed in 1998. It describes itself as “a not-for-profit public-benefit corporation with participants from all over the world dedicated to keeping the Internet secure, stable and interoperable. It promotes competition and develops policy on the Internet’s unique identifiers…”7Until very recently ICANN’s primary functions were carried out in Los Angeles, but will now be spread out over three “hub offices” in Los Angeles, Istanbul, and Singapore. The uniform domain name dispute resolution policy (UDRP) was first adopted by ICANN in August of 1999 and has now been agreed to by all accredited registrars. The policy requires that all domain name registrants submit to a mandatory administrative hearing in the event that a third party (“complainant”) asserts that:
- i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, AND
- ii) you have no rights or legitimate interests in respect of the domain name, AND
- iii) your domain name has been registered and is being used in bad faith.8
WIPO: The World Intellectual Property Organization has proven to be far and away the most popular domain name dispute resolution service provider. Arbitration under WIPO is much faster and cheaper than civil litigation. Fees range from $1,500 to $5,000, depending on the number of domain names in dispute and the number of panelists requested to hear the case.9 There is also the benefit of avoiding jurisdictional issues when the potential defendants either reside in a foreign country or cannot be located at all. However, the only remedy available to a successful complainant is to have the domain name turned over to him or her; monetary damages are not available. WIPO’s three criteria for infringement are the same as those stated by ICANN (above).
The cases: On its website WIPO offers a list of the most commonly cited cases, referenced by both the complainants and the respondents.10 According to the website, more than 27,000 cases have been decided by WIPO over the years. These cases serve as precedents, much as in traditional courtrooms. The WIPO web site is quite user friendly, providing easy access to all of the WIPO decisions. A search by “domain name categories” is available, to include such categories as: associations and institutions, industry and commerce, education, and individuals. Sub categories are also available, and since the sub categories “entertainment – music and film” as well as “sports” are especially interesting to a great many people these are the categories of primary focus in this paper.
Julia Roberts:11 The complainant, a world famous actress, filed a complaint against Russell Boyd, who had registered the domain name “juliaroberts.com.” The web site featured a picture of a woman named Sari Locker and next to nothing about Julia Roberts. Also, the domain name was registered for sale on e-Bay under “auction.” The panel applied the three criteria (stated above) and ruled that: (1) the domain name was confusingly similar to the actress’ name, (2) the respondent had no rights/interests in the domain name, and (3) the domain name was being used in bad faith. The panel found that the domain name was identical to Julia Roberts’ name, and that Ms. Robert’s name was well known, so that a trademark registration was not necessary to protect its use. The panel then held that the respondent’s own testimony demonstrated his lack of a legitimate interest in the name, noting that Mr. Boyd had stated that if Ms. Roberts had asked for the domain name “she would own it by now.” He also admitted that he owned several other domain names of famous actors and other celebrities. Finally, he stated that he still believed that Julia Roberts was “nifty, crazy, wacko cool,” and the panel did not feel that this was a legitimate interest. Regarding the issue of bad faith, the ICANN policy states that the following constitute evidence of “bad faith:”
(1) the registrant acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant or to a competitor of the complainant; OR
(2) The registrant acquired the domain name in order to prevent the rightful owner of the name from reflecting the mark in a corresponding domain name (provided there was a pattern of such conduct); OR
(3) The registrant’s primary purpose was to disrupt the business of a competitor; OR
(4) The registrant intentionally attempted to attract, for commercial gain, internet users to the web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark.
Applying the policy statement above, the panel held that the totality of the facts clearly indicated that the registration of the domain name was made in bad faith. The domain name was transferred to Ms. Roberts.
Madonna:12 The famous singer (Madonna Ciccone) filed a complaint against Dan Parisi, who had registered the domain name “madonna.com.” The web site contained explicit photographs and other objectionable material. This case would seem to be a slam dunk for Madonna, but the respondent had several interesting arguments, including: there was a disclaimer on the web site stating that it was not associated with the entertainer; the website creator owned a legitimate trademark in Tunisia for the use of the term Madonna; and the term “Madonna” was not exclusive to the entertainer, but is rather associated with the Virgin Mary and also with a hospital in Lincoln, Nebraska. Also, unlike in the Julia Roberts case, the registrant had made no attempt to sell the domain name. However, the panel found that the respondent could not show a bona fide, or good faith use of the word Madonna. The panel felt that his primary reason for using the name “Madonna” in the domain name was to drive traffic to the web site from viewers who were seeking information about the entertainer. He could not even show that he was a fan or had a personal interest in the word “madonna,” other than his hope that it would increase traffic to the site. The domain name was transferred to Madonna.
Bruce Springsteen:13 The well known musician filed a complaint against Jeff Burgar, registrant of the domain name “brucespringsteen.com.” Mr. Burgar provided a lengthy response to this complaint, and his reply included counterarguments that had not been used before in WIPO cases. The panel noted that “brucespringsteen.com” redirects to “celebrity1000.com,” a site also owned by Mr. Burgar. Many other sites owned by Mr. Burgar redirected to Celebrity1000, including websites whose domain names were other celebrities’ names. Mr. Burgar’s response to the facts presented had a prevailing theme of comparison to magazines. He claimed that the domain name in question did not besmirch Mr. Springsteen’s name at all, and merely contained information about the musician. Mr. Burgar argued that the domain name and site could reasonably be compared to a magazine that discussed celebrities on the cover. Further, Mr. Burgar noted that the singer’s “official site” was located at “brucespringsteen.net,” and that the .com domain was not preventing Mr. Springsteen from using his name in an official website. Further, Mr. Burgar noted that he gained no profit or other questionable benefit from the domain name, and hence was not in bad faith.
The panel’s finding was that the second and third criteria stated in the policy (no rights or legitimate interest in the name, and registration in bad faith) had not been met. They held that Mr. Burgar had registered the domain name under the name “Bruce Springsteen Club,” and that its purpose was to provide information about the entertainer, which was a legitimate right or interest. In so doing the panel noted that an internet search for “Bruce Springsteen” returned thousands of hits, not all of which could be official sources. Hence, there was nothing misleading to confuse a reader of the purpose of the site. Also, the panel held that since Mr. Burgar had not attempted to sell the domain name or to prevent the entertainer from using the domain name, the filing was not in bad faith. Mr. Springsteen’s complaint was dismissed.
Tom Cruise:14 The famous actor filed a complaint against the registrant of the domain name “tomcruise.com.” The registrant / respondent was Network Operations Center / Alberta Hot Rods. The president of Alberta Hot Rods was none other than the aforementioned Jeff Burgar of Bruce Springsteen fame, and the redirect was to the equally memorable site “celebrity1000.com.” The case was filed six years after the Bruce Springsteen case, and here Mr. Burgar’s arguments failed the carry the day. The primary reason for this result was the fact that the “celebrity” web site contained a link to merchandise through amazon.com. This intent to profit from Mr. Cruise’s name served as the death blow for Mr. Burgar’s case, and the domain name was transferred to Tom Cruise.
Many other famous entertainers have brought WIPO claims based on an alleged bad faith domain name filing. Included among the domain names subject to a WIPO hearing are:
- jimihendrix.com (D2000-0364): transferred15
- jethro-tull.com and jethrotull.com (D2000-0475): transferred
- sting.com (D2000-0596): complaint denied16
- celinedion.com (D2000-1838): transferred
- backstreetboys.com (D2001-0654): transferred17
- vanmorrison.com (D2002-0417): transferred
- pamelaanderson.com (D2002-1104): transferred
- piercebrosnan.com (D2003-0519): transferred
- carmenelectra.com (D2003-0852): transferred
- jimmykimmel.com (D2006-0402): transferred
- genekelly.com (D2008-0342): transferred18
- jimcarrey.com (D2009-0563): transferred
- cheechandchong.com (D2009-1273): transferred19
- ladygagadress.com (D2013-1506): transferred20
- and last but not least: marlonbrando.es (DES2012-0010): transferred21
Summary: of the 138 cases in this category, all but 13 were decided in favor of the complainant.
The world of sports has been the subject of numerous WIPO cases. For example, the U.S. Olympic Committee was successful in a WIPO proceeding involving the domain name “usolympicstore.com.” The London Organizing Committee for the 2012 Olympic Games was successful in an action involving the domain name “mylondon2012.com.”22
Dan Marino:23 The famous NFL quarterback filed a complaint against the registrant of the domain name “danmarino.com.” The registrant was a company located in Houston, Texas. Mr. Marino had actually registered a domain name which was exactly the same as the one in dispute, but the registration unintentionally lapsed. Despite the fact that the respondents failed to file a response to the complaint, the sole panelist took the time and effort to thoroughly explain why the filing of the domain name was in bad faith. Applying the policy paragraph which outlined the four circumstances which constituted evidence of “bad faith,” the sole panelist found that the respondent’s filing violated items (2) and (4) of the paragraph. In this regard it was noted that the respondent had registered at least 50 other domain names bearing the names of famous people, which clearly constituted a pattern of conduct. Also, the “danmarino.com” site automatically linked to www.multicenter.com, another site owned by the respondent, which provided a variety of sports, entertainment, trivia and other programs for commercial gain. For these and other reasons the domain name was transferred to Mr. Marino.
Other Sports Figures
Among the many domain names which have been successfully challenged by famous sports figures are the following:
- venusandserenawilliams.com (D2000-1673): transferred24
- seveballesterostrophy.com (D2001-0351): transferred
- mikeschmidt.com (D2006-0603): transferred
- kareemabduljabbar.com (D2007-1841): transferred
- lancearmstrongfoundation.com (D2007-1945): transferred
- pele.com (D2010-1533): transferred
- miketyson.com (D2011-1758): transferred
Summary: all but two of the forty one cases in this category were resolved in favor of the complainant.
I would be remiss if I did not mention a few cases involving well known entities from the Natural State. Wal-Mart, with its home office in Bentonville, Arkansas, has vigorously defended the Wal-Mart name both through WIPO proceedings as well as in civil court. In one interesting civil case Wal-Mart was actually the defendant, the plaintiff being a gentleman by the name of Charles Smith.25 He filed suit in a federal court in Georgia, seeking a declaratory judgment that he had the right to use the domain name “walocaust.com” along with similar domain names such as “walqaeda.com.” The District Court entered a declaratory judgment in Smith’s favor, finding that Smith’s activities did not violate any of Wal-Mart’s trademark rights, and that the sale of novelty merchandise (such as coffee mugs which bore such expressions as Walocaust, Walqaeda, Freedom Hater Mart, and Benton-Villebullies Always was protected under the first amendment as a parody.26
Among the numerous WIPO cases filed by Wal-Mart are those involving so called “sucks” sites. The first such complaint was filed in 2000 against respondents who bore the names Walsucks and Walmarket Puerto Rico, with addresses in Newfoundland, Canada. The disputed domain names were: “walmartcanadasucks.com,” “wal-martcanadasucks.com,” “walmartuksucks.com,” “walmartpuertorico.com,” and “walmartpuertoricosucks.com.”27 Kenneth Harvey was identified as the “administrative contact.” In a lengthy decision the panel found in favor of the complainant and ordered the transfer of all of the sites to Wal-Mart.
At first blush one might conclude that the panel’s decision rejects “freedom of speech” claims by domain name registrants of “sucks” sites, but in fact nothing could be further from the truth. At the end of the decision the sole panelist stated that:
Certain trademark holders might choose to characterize this decision as supporting action against “-sucks” formative domain names in other contexts. The Panel intends this decision to serve neither of these aims. This decision is directed to a blatant case of abuse of the domain name registration process – no more, no less.28
Among the “blatant abuses” cited by the panel were the following:
- In a previous WIPO case Wal-Mart prevailed against the same respondent as a result of his filing the domain name “walmartcanada.com.” The respondent immediately registered the names in question in this case.
- None of the domain names were being used for any legitimate purpose. The respondent’s only visible activity was to threaten Wal-Mart with litigation and to force Wal-Mart to expend resources to protect its marks. The sole panelist concluded that the respondent’s sole purpose was to interfere with Wal-Mart’s legitimate business activities.
- The respondent did not actually use the sites to express opinions about Wal-Mart. The existence of the sites was solely to annoy and harass Wal-Mart.
- The respondent offered to sell the “walmartcanada.com” domain name to Wal-Mart for $5 million, and in fact let Wal-Mart know that all of the domain names were for sale for the right price.
Two months later a WIPO panel decided another case filed by Wal-Mart, this one involving the domain name “wal-martsucks.com.”29 The respondent in the case conceded that his original intention upon registration of the name was to sell it for profit, and further conceded that this constituted “bad faith.” However, he claims that he had a “change of heart” when he learned of Wal-Mart’s abusive employment and consumer practices, so that the web site is no longer being used in bad faith. The panel held that the respondent could potentially have a legitimate interest in using the “sucks” site to offer critical commentary about Wal-Mart; in fact, the panel noted that the UDRP Policy specifically states that a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark, can establish legitimate rights. However, the panel felt that the respondent’s “change of heart” appeared to have been driven by his dispute with Wal-Mart, and was too little, too late. Thus, the respondent’s admitted bad faith doomed his case to failure, and the domain name was transferred to Wal-Mart.
Two months later the “sucks” issue was seemingly put to rest in another case involving Wal-Mart and Kenneth Harvey, the “administrative contact” in the first case described above. The domain name in question here was “wallmartcanadasucks.com.” In this case Mr. Harvey claimed that the site was being run as a “freedom of expression” site. Although stating that “the respondent hardly appears with clean hands,” the panel accepted Mr. Harvey’s statement.30 The panel then held that the domain name presented no possibility of consumer confusion, as no one seeing the “sucks” domain name would believe that the web site was associated with Wal-Mart. This results in the first of the three requirements of the policy (likelihood of confusion) not being met. It was further held that as the respondent was using the site as a foundation for criticism of Wal-Mart, he had rights or a legitimate interest in respect of the domain name as a foundation for criticism of Wal-Mart. Finally, the domain name was not registered and was not being used in bad faith.
As a result of this case it would seem that Wal-Mart would have a difficult time winning a “sucks site” case barring extreme conduct by the domain name registrant. However, two other WIPO cases on point suggest that Wal-Mart has not entirely abandoned its efforts in this regard. In 2006 Wal-Mart filed a complaint against a registrant over the domain name “walmartsucks.com.” (note the lack of a hyphen). The registrant was a company known as Mighty LLC, with an address in Charlestown, Nevis.31 For reasons unknown the proceeding was “terminated” without a decision. For a while the domain name was inactive, but within the control of Melbourne IT in Australia, described in its web site as a “world leader in the supply of domain name registration.” Now it is gone from the internet entirely. Also in 2006 Wal-Mart prevailed in a case involving the domain name “walmartblows.com.”32 In this case the respondent (a resident of Hong Kong) did not submit a response. Wal-Mart argued that formulating a domain name by adding a derogatory term to the complainant’s mark results in a name which is confusingly similar to the original mark. The sole panelist stated that “there have been a number of UDRP panel decisions that have held that a domain name which consists of a disparaging word such as ‘sucks’ and a trademark must in all circumstances be confusingly similar because not all internet users speak English fluently.”33 However, other decisions have held to the contrary.34 The sole panelist then stated that blanket propositions on the matter should be avoided, and careful consideration should be given to whether the particular term in question may cause confusion. The panelist then came to the following conclusion:
In the current case, the Panel finds that a domain name which uses the term ‘blows’ as a suffix to the Complainant’s mark could cause confusion as to whether the Complainant owned or operated the website. This is because the term ‘blows’ used in a derogatory or critical term relies on idiomatic usage of American English which many Wal-Mart customers or potential customers might not appreciate. Without appreciating that the term ‘blows’ may constitute a derogatory or critical term, it would not be obvious that the site was unrelated to the Complainant. In these circumstances, a visitor may be confused as to whether the Complainant owned or operated the website.35
As the respondent did not submit a response, the other elements of the UDRP Policy were easily found to exist, and as a result Wal-Mart prevailed and the domain name was transferred to them.
Over the years Wal-Mart has been involved in more than 80 WIPO cases, involving many creative efforts by registrants to take advantage of the well-known Wal-Mart name. In almost all cases the company has prevailed, but not always. A couple of “losers” involve the following domain names:
- boycottwalmart.com: D2006-0812
- samclub.com: D2005-049236
- and of course a few of the “sucks” cases
Another large and well-known Arkansas entity is the University of Arkansas. Founded in 1871, the U of A is one of the largest employers in the state. The Fayetteville campus has been the complainant in two WIPO cases. In 2004 the university filed a complaint against the domain name “universityofarkansas.com.”37 The respondent, known as “Freedom Domains,” with an address in New York City, did not file a response. The web site contained graphic pictures of aborted fetuses. The sole panelist hearing the case found that the domain name was identical or confusingly similar to the complainant’s mark, that the respondent had no right or legitimate interest in the domain name, and that the respondent registered and used the domain name in bad faith. It was noted that the respondent was thought to be the same entity that was seeking to sell “high traffic pro-life domains” for only $999. The domain name was thus transferred to the university. Today anyone typing in “universityofarkansas.com” is transferred to the official U of A web site.
In 2009 the University of Arkansas brought a WIPO action in an effort to obtain ownership of the domain name “razorbacks.com,” which had been registered by FanMail.com, LLC, of Huntsville, Alabama.38 The respondent had registered similar names such as “aggies.com” and “wolverines.com.” One of the products sold was a “vanity E mail service,” such as JohnDoe@razorbacks.com. The domain name had in fact been registered many years earlier, and the university had sent the respondent a cease and desist letter seven years after the registration. Five years later (2008) the university again contacted the registrant, who responded by stating that the university’s claim to the domain name were lost as a result of laches, waiver and estoppel. The WIPO claim was filed in 2009, thirteen years after the initial registration.
The WIPO panel ruled in favor of the respondent. Although the panel was not prepared to accept the argument that the doctrine of laches provided an absolute defense, it felt that the considerable delay in bringing the case did color the merits of the dispute. Further, the university could not convince the panel that the respondent acted in bad faith. As the vanity E-mail addresses offered to users of the website were legitimate, the respondent had demonstrated a bona fide interest in the domain name. Particularly hurtful to Arkansas Razorback fans was the panel’s finding that “razorbacks” was a fairly common term (such as a type of animal) and could refer to something other than the university’s sports teams. Finally, the “razorbacks.com” web site contained a disclaimer, disavowing any affiliation with the University of Arkansas. Ultimately, the university could not prove to the satisfaction of the panel (with due consideration given to the excessive delay) that all three conditions for domain name infringement were met, and therefore the complaint was dismissed.39
In this paper I have endeavored to provide basic information on the operations of the World Intellectual Property Organization and the procedures whereby they implement the Uniform Domain Name Dispute Resolution Policy. I have used as examples cases involving famous entertainers and sports figures. As a resident of Arkansas I have also included some interesting WIPO cases involving two of the state’s largest and best known entities: Wal-Mart and the University of Arkansas. These two entities, along with many others, have taken advantage of the WIPO domain name dispute resolution polices to quickly and efficiently resolve disputes involving the registration of domain names.
 15 U.S.C. 1051
 1996 Lexis 11626 (D.C. Wash 1996).
 For assurance that the site remains within the control of Hasbro, go to: http://www.candyland.com
 PETA v. Doughney, 263 F.3d 359 (4th Cir. 2001).
 15 U.S.C. 1125 (d) and 15 U.S.C. 8131
 ICANN web site, at: https://www.icann.org/en/help/dndr/udrp/policy
 Schedule of fees under the UDRP: http://www.wipo.int/amc/en/domains/fees/
 25 most cited decisions in complaint: http://www.wipo.int/amc/en/domains/statistics/cases_cited.jsp?party=C
 Case D2000-0210. The first number in the citation represents the year. This case was decided on May 5, 2000
 Case D2000-0847
 Case D2000-1532
 Case D2006-0560
 Not to worry – Jimi Hendrix is still dead. The complaint was filed by Experience Hendrix, LLC, a company formed by the family of the late Jimi Hendrix.
 The panel noted that the word “sting” is just a word, not a name.
 There were at least ten filings of versions of the name “backstreetboys”
 Like Mr. Hendrix, Mr. Kelly is still dead. The complaint was filed by the Gene Kelly Image Trust.
 Their real names are “Richard” and “Tommy.” Amazingly, they are still alive, and are currently on tour.
 Her real name is Steffani Germanotta. Ate My Heart, Inc. is her company through which she owns the Lady Gaga trademarks.
 The complaint was filed in Spanish by the Marlon Brando living trust. And yes, he is still muerto.
 U.S. Olympic Committee case: D2000-0189; London Organizing Committee case: D2010-0145
 Case D2000-0598
 There were actually three similar domain names registered with the names of the Williams sisters
 Charles Smith v. Wal-Mart Stores, Inc., 537 F.Supp.2d 1302 (D.C. Ga. 2008).
 Both “walocaust.com” and “walqaeda.com” are now gone from the internet.
 Case D2000-0477
 Case D2000-0477, Frederick Abbott, Sole Panelist
 Case D2000-0662. The respondent was listed as Richard MacCloud. His address was given as: 21 Simpson Avenue, Toronto, ON M8Z1C9, United States of America. I am NOT making this up!
 The panel stated that “the respondent may be acting unfairly. He may be engaged in unwarranted disparagement. He may be acting childishly. He may be retaliating for having lost earlier Cybersquatting cases. But this does not necessarily mean that he may be forced to transfer the accused domain name to the complainant under the UDRP, considering the purpose.”
 Case D2006-2277
 Case D2006-0811
 Citing: Case D2001-1121 and Case D2001:1195.
 Citing: CaseD2003:0002 and Case D2002-1117
 The decision is written in Chinese.
 Case D2004-1030. The university’s official web site is: http://www.uark.edu
 Case D2009-1139
 The site is still up and running. Consumers are currently being offered the chance to buy more than 60 vanity E mail addresses, including: aggies.com, army.com, badgers.com, gamecocks.com, go-bama.com, and longhorns.com.