INTERNET DOMAIN NAME DISPUTES

The problem of conflicting domain names continues. A company “Houston Bill” may be transacting may be operating a barbeque restaurant utilizing a website with the domain name Houstonbill.com. Another restaurant may start up and register the domain name Houston-bill.com.

It would be helpful if Houston Bill had registered the mark “Houstonbill” as a trademark. (Registering such a mark is problematic since the dominant element is a geographic term. However, that is something for a different discussion.)

The ability of stop the newcomer from using the domain name Houston-Bill.com can be dependant upon the success of a domain name dispute proceeding utilizing the rules and procedures of the “Internet Corporation for Assigned Names and Numbers” or ICANN. Note that ICANN does not participate in these disputes. However, the ICANN “Uniform Domain Name Dispute Resolution Policy” is incorporated by reference in each domain name registration agreement. This is the agreement created between the domain name owner and the registrar, e.g., Network Solutions.

There are a limited number for private entities qualified or recognized as “Dispute Resolution Service Providers” by ICANN to hear and rule on domain name disputes. The service providers follow the Uniform Domain Name Dispute Resolution Policy, which may be supplemented by their own rules. The service providers are compensated by the fees charged to the complaining party. The actual dispute is decided by a panelist appointed by the service provider.

The proceedings are designed to proceed quickly. The goal is to have a determination within 45 days of the filing of the complaint.

The process starts with Houston Bill filing a complaint (likely limited to 10 pages) that must identify the Complainant, specify the preferred means for the service provider to communicate with the complainant, whether the dispute is to be resolved by one or three panelists (the complainant is paying for the panel), identify the Respondent (domain name holder of “Houston-Bill) and any contact information, specify the domain name at issue, the registrar of the domain name, specify any trademarks on which the complaint is based and the goods or services with which the mark is used.

Also the compliant must specify the manner in which the domain name is identical or confusingly similar to the trademark of the complainant and why the Respondent should be considered as having no rights in the domain name, and why the domain name should have been considered as having been registered and being used in bad faith. These are the essential element that must be proven by the Complainant through affidavit or written attachment.

The service provider serves the complaint upon the respondent (the domain name holder of Houston-Bill). Completion of service or reasonable steps to achieve service begin the commencement date. The respondent has 20 days to respond to the complaint. A panel (one or three person) is selected by the service provider within 5 calendar days of receipt of the Respondent’s answer. The panel is to make its decision within 14 days. There are no oral hearings or witness testimony. The panel may order that the domain name Houston-Bill be transferred to Houston Bill.