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The Development of Arbitration in the Resolution of

Internet Domain Name Disputes

Published at

http://www.richmond.edu/jolt/v7i1/article2.html

The University of Richmond

Journal of Law and Technology

Rich. J.L. & Tech. 2 (Fall 2000)

Christopher S. Lee

The Catholic University of America

Columbus School of Law

Submitted for Professor Marshall J. Breger

Spring 2000

ABSTRACT

The growing demand for Internet domain names has spawned two types of controversies. The first type of dispute involves an established company, such as the World Wrestling Federation, battling with an individual speculator who reserved the domain name in question before the corporation was able to. The second type of dispute involves two established companies with similar names, such as Massachusetts Institute of Technology (MIT) and Merritt Island Technologies (MIT), vying for the domain name <mit.com>.

Until recently, the courts have been the primary adjudicators of Internet domain name disputes. Unfortunately, time and expense hamper the dispute resolution process. Trademark attorneys indicate that trademark litigation fees can begin at $15,000 to $20,000, and may take as long as six months to three years to resolve.

In an effort to deal with mounting Internet domain name disputes, the Internet Corporation for Assigned Names and Numbers (ICANN) approved the use of arbitration on October 24, 1999. Arbitration offers two primary benefits. First, the arbitration process can be completed in a matter of weeks, instead of months, or even years. And second, the process is considerably less expensive than a protracted court battle.

Internet domain name arbitration is an excellent tool for legal trademark holders to regain exclusive control of their cyberspace trademarks. Some of the benefits of arbitration include speed and relatively limited filing fees. Additionally, many arbitrators are trademark attorneys, significantly more familiar with the rules of trademark law than Federal judges.

Attorneys considering Internet domain name arbitration should consider the three-part test set forth in the Uniform Dispute Resolution Policy Paragraph 4:

1) Identical or confusingly similar mark; and

2) Respondent has no legal right or interest in the domain name; and

3) Respondent has acted in bad faith in registering and/or using the domain name.

All three elements to the test are required in order to prevail. If any part of the test is not satisfied, the challenge will fail, and the respondent will be entitled to keep the disputed domain name.

In general, if the complainant owns the trademark, the complainant will likely prevail in an Internet domain name arbitration case. If both parties have a legitimate interest to the same domain name, or to a similar-sounding domain name, the respondent will likely prevail.

The article examines the development of arbitration in Internet domain name disputes, and analyzes the holdings in the initial arbitration cases.