Chan, Peter --- "The Uniform Domain Name Dispute Resolution Policy as an Alternative to Litigation" [2002] MurdochUeJlLaw 12; (2002) 9(2) Murdoch University Electronic Journal of Law

The Uniform Domain Name Dispute Resolution Policy as an Alternative to Litigation

Author:	Peter Chan BCom, LLB
Issue:	Volume 9, Number 2 (June 2002)

Contents:

• Introduction
• Objectives
• Forum Shopping & Complainant Bias
• Panellist Roster
• Procedural Issues
• Finality of Process
• Relation to the Courts
• Substantive Issues
• Bad Faith
• Famous Trademarks
• Reasoning of UDRP Decisions
• Notice and Computation of Time
• UDRP Reforms
• An Australian Perspective: Litigation v UDRP
• Conclusion
• Bibliography
• Notes

Introduction

1. The Uniform Domain Name Dispute Resolution Policy (UDRP) is an international dispute resolution procedure that presently allows trademark holders to seek arbitration over the control of a domain name, and if successful, to gain control over the domain name.[1] It was approved by ICANN[2] in October 1999, with the first case decided in December 1999.[3]

2. Within a few years, the UDRP has dramatically changed the dispute resolution scene for domain names. With litigation being the previous primary solution, the UDRP clearly demonstrates the power of alternative dispute resolution with over 4000 proceedings resolved over more than 7000 domain names.[4] This many cases would surely have placed a tremendous burden on the legal system, especially with the Internet growing exponentially. As the UDRP handles more disputes, it must be ensured that the policy achieves its objectives, in particular to become just and unbiased.

   Objectives

3. There are three key objectives of the UDRP. Firstly, it seeks to create globally uniform rules for resolving domain name - trademark disputes. Secondly, and most importantly, it attempts to provide an inexpensive, quick, just and generally lightweight process[5] to resolve such disputes. Finally, it intends to resolve only the most abusive cases of cybersquatting, as there is great sensitivity in replacing national law with global law. It is very important to note that the UDRP was not intended to be the global trademark arbiter regarding domain name disputes or to replace the courts.

4. Thus, the UDRP represents a policy trade-off. It significantly reduces the cases of abusive cybersquatting, though it also increases the cases of 'reverse domain name hijacking'.[6] Certain critics have thus claimed that the UDRP has become a forum for expanding trademark rights at the expense of free speech.[7] Although such cases are rare, the claims certainly still have strong merit, and highlight the tenuous balance between the two sides.

   Forum Shopping & Complainant Bias

5. At present, the complainant is given full discretion as to the choice of provider, though respondents can decide for a three-member panel partially at their own expense. This discretion has led to 'forum shopping', which leads to bias in the decisions. The costs of the three providers[8] for a single panellist do not differ much, with the cheapest usually being NAF, and the most expensive being CPR.[9] For three-member panels, the costs vary more and would have more of an influence in the complainant's choice of provider, even though the costs of legal assistance may be much higher.[10]

6. Strong evidence of forum shopping comes from statistical data of dispute outcomes. As of 7 July 2001, for example, WIPO held 58% of the overall caseload with the complainant winning 82.2% of the time, NAF held 34% with a win percentage of 82.9%, and CPR holding only 1% and winning only 59.1% for the complainant.[11] This statistical evidence clearly shows that WIPO and NAF both have large market shares and also high percentages of wins for the complainant. Forum shopping clearly exists, and thus has a biased effect towards the dispute result.

   Panellist Roster

7. One of the main reasons for the providers' ability to influence the decisions in the complainant's favour is by virtually choosing the panellists. The UDRP only states that the panellists must be impartial and independent, without placing rules to ensure that this is happening.[12] Many of the panellists now feature on the roster of more than one provider.[13] This complicates the bias question further because the differences in case outcomes cannot be solely attributed to providers staffed with their own particular panellists. Further evidence of the problems regarding the panellist roster was shown when Geist's study of over 3000 UDRP cases concluded that the largest controlling factor in determining case outcomes is in fact the influence over panel composition, not the panellists per se.[14]

8. The most important finding in Geist's study was the notable difference in case outcomes for single versus three-member panel cases. In single panel cases, where the provider chooses the panellist, the complainant wins around 83% of the disputes.[15] Single panel cases constitute around 90% of the overall caseload. In three-member panels, the provider's influence is greatly diminished because the provider must choose one panellist each from lists submitted by the complainant and the respondent.[16] In these cases, the complainant only wins around 60%.[17] These statistics clearly demonstrate single panel cases favour the complainant. This is even though the respondent can later opt for a three-member panel, but an advantage still exists for the complainant because the provider was selected by the complainant.

9. Furthermore, significant caseload allocation bias existed with only six NAF panellists handling more than half of all their cases. In addition, the winning percentage was an astonishing 94%.[18] Similarly WIPO has six panellists handling just under 20% of their cases.[19] This bias clearly contradicts the impartial random case allocation claimed by the providers. There are also panellists who have never been selected for single panel duty. These include well-known people who are critical of the UDRP, including Professor Milton Mueller and Professor A. Michael Froomkin.[20]

   Procedural Issues

   Finality of Process

10. A shortcoming of the UDRP is that the decision is not final. A losing respondent can still seek legal action within ten days after the decision is handed down to temporarily prevent its implementation.[21] This in essence prolongs the whole process, which is against the UDRP's second objective of achieving a quick process. However, it does allow a form of appeal, even though ten days is very short in jurisdictions with strict rules of pleading. This further leads to concern as to the effect of the UDRP decision on the courts. The lack of guidance from the UDRP has led to some courts placing little emphasis on the UDRP decision.[22] These concerns would be eliminated if the UDRP decisions were final within the system.

    Relation to the Courts

11. The UDRP has no guidelines regarding panellist actions when a national court holds a dispute resolution process regarding a domain name.[23] There are no general rules about how the Panel should interpret a court's verdict. For example, in one case the complainant applied to both the Court and WIPO.[24] The national Court decision came first and was passed to the panel, but the Court decision was virtually ignored. In this situation, the panel should have instead suspended its review of the dispute and not issued its own resolution.

12. The remedies of the UDRP are limited to cancelling or transferring domain names.[25] Thus if the complainant is seeking damages for misuse of the domain name, then legal action at the courts will have to be taken. The main concern that follows is concerning the lack of legislation specifically dealing with the cyberspace issues.[26] However, it is critical to note that the primary objective of the UDRP is to deal with the most abusive cases of cybersquatting and resolve them quickly. The courts should still handle the uncertain and ambiguous cases, which require more detailed evidentiary procedures and analysis. Perhaps a temporary ban on the respondent registering more similar domain names would provide better relief for the successful complainant.

    Substantive Issues

    Bad Faith

13. The definition of "bad faith" is crucial in the UDRP. It is the most difficult to prove of the three criteria in challenging a domain name[27] as is seen by the list of indications of bad faith in UDRP Paragraph 4(b). The factors are specified as "without limitation", thus making the list non-exclusive, and allowing much space for panellists to consider what constitutes bad faith. This occurs in particular for WIPO and NAF panellists, who tend to stretch UDRP definitions of important terms, if they initially believe the registrant to be a bad actor.[28] Furthermore, some panellists have even considered that satisfaction of the first general criteria automatically meets the bad faith element because it is similar in wording to the fourth indication of bad faith.[29]

14. The requirement for both bad faith 'registration' and 'use' is difficult in tackling the situation of passive warehousing, where the registrant does not use the domain, leave details nor attempt to sell or transfer it. The first emergence of the 'inaction doctrine'[30] occurred in the 'telstra.org' case.[31] The panel concluded that in this case, the circumstances of inactivity were sufficient to amount to bad faith. Although in many later cases the inaction doctrine has inferred bad faith in passive warehousing cases[32] it runs a great risk of being misapplied[33] or overlooked[34] without ICANN guidance.

    Famous Trademarks

15. Despite the explicit limitation of the UDRP to registered trademark holders, it has been taken to extend to common law trademarks as well.[35] In the "juliaroberts.com" case, the complainant relied on her famous name to be successfully transferred the domain name.[36] However, it does not extend to situations when the name is a common word.[37] An important reform thus would be to develop special rules for common law trademarks because previous cases have shown that the light process of the UDRP is unsuited to these situations.

    Reasoning of UDRP Decisions

16. An examination of the UDRP cases to date display significant flaws in the dispute resolution process. A clear example of the numerous inconsistent decisions and their probabilistic nature occurred regarding certain domain names similar to and including "quirkautos.com".[38] The Quirk business complained about all the registrations, though in three separate cases. The first two cases held in favour of the complainant, but the third held otherwise. As under the UDRP the panels are not bound by precedent, more guidance is needed in the UDRP to ensure panellists achieve consistency in approach.[39] The present UDRP gives too much freedom to the panellist in formulating decisions. In the case regarding the domain name "rockportboatline.com", the competitor was the registrant of the complainant's trademark domain name.[40] The dispute was ruled in favour of the competitor, with very little analytical reasoning provided. Other instances are of panellists exceeding the scope of the Policy. In the outrageous "barcelona.com"' case, the transfer was ordered not because the registrant lacked rights to it, but because the city had "better or legitimate rights".[41]

    Notice and Computation of Time

17. An area that has been heavily criticised has been the fact that there is no requirement for actual notice, only attempted notice for a short period of time.[42] It is further unfair to the respondent because the date of commencement is when the provider, whilst employing "reasonably available means", sends the notice.[43] Such a policy that can start the running of time when the emails have been sent is clearly bias and unfair.[44] The respondent must then submit a response to the Provider within only twenty days of commencement of administrative proceedings.[45]

18. High respondent default rates[46] can be attributed to either the short response periods allowed or the abandonment of the domain by the registrant, though it tends to be attributed to the latter. However, the brief response period does contribute to the general high percentage of complainant wins because the complainant has all the time to properly set arguments and prepare evidence, whereas the respondent only has a few weeks to obtain legal representation and prepare a response. Reform should involve increasing response periods by at least three-fold, in addition to improving notice requirements.

19. The Supplemental Rules provide different details as to obtaining extensions of time to reply. Though the other providers follow the UDRP rules[47] NAF contains more detailed and arduous requirements placed upon the respondent to obtain an extension.[48] The Supplemental Rules thus, without ICANN supervision, can allow providers to utilise it to achieve a competitive advantage. The problem of 'sandbagging'[49] demonstrates this, where for instance, NAF's Supplemental Rule 7 allows additional written statements to be submitted and only five days for the respondent to reply. This is a direct attempt to favour the complainant, especially as there are no length limits, and violates the existing rules in the UDRP.

    UDRP Reforms

20. An important reform would be to make three-member panels mandatory. It diminishes the possibility of poorly reasoned or wrongly decided cases by placing more responsibility on panellists, and by requiring them to justify their decisions to the other panellists. It also completely changes the panellist selection process by reducing the influence the provider has over panellist selection. Even though this would increase the cost of an UDRP action, it is still much cheaper than traditional litigation. Furthermore, if the respondent defaults, the complainant should be allowed to change to a single panellist to reduce costs for uncontested cases.[50]

21. One of the key reforms to remove the problem of forum shopping is to allow for the registrar to select the provider to arbitrate the dispute. This reform is suited towards a self-regulatory, private-sector model of Internet governance.[51] Registrar service is competitive, particularly as previously monopolistic markets are now opening to competition. The registrar has more balanced incentives than the complainant in selecting the provider, because some of their key customers may be the complainants themselves. A customer unhappy with the provider chosen can change registrars. However, ICANN must still set proper accreditation standards for providers.[52]

22. In proving the required elements of the UDRP, more detail is required on meeting the standard of proof for the complainant and the extent that respondents carry some standard of proof. In addition, clarification is required as to whether the burden of proof ever shifts to the respondent. This would significantly improve the consistency in findings of bad faith.

    An Australian Perspective: Litigation v UDRP

23. Trademarks exist in Australia subject to the Trade Marks Act[53] or the common law, subject to the "passing off" right of action[54] A trademark is typically infringed when a person 'uses as a trademark' a sign that is substantially identical or deceptively similar to the trademark.[55] It is the concept of 'uses as a trademark' that is most important regarding domain names. Passing off actions though are usually made in addition with s52 of the TPA[56] which has numerous advantages, such as eliminating the necessity to prove that customers have been misled. However, the conduct must take place in 'trade or commerce'. Fair trading legislation extends the remedies available through litigation further, because it avoids the difficulty of registering a generic name under trademark law.[57]

24. The primary question is whether a domain name that is identical or similar to a trademark will amount to an infringement of the Act. In Australia, this depends on the nature of the use and nature of the registration held by the complainant. In a trademark register, registrations are split into goods and services with limited geographical scope, whereas a domain name is absolute.[58] The domain name registrations are also usually accepted on a "first come, first served" basis. These factors in effect lie at the centre of the dispute regarding trademarks and domain names.

25. Infringement of a trademark will occur if the goods or services displayed on the alleged domain name address are of the same description.[59] Infringement is also possible if the domain name holder displayed "closely-related" goods or services, though a defence exists if it can be proven that the sign would not likely deceive or cause confusion.[60] However, there will usually be no infringement if the domain name is in relation to entirely unrelated goods or services, except if it is a well-known trademark[61] As infringement requires a 'use as a trademark', infringement is unlikely if the domain name is not used in the course of trade.[62] This highlights a major weakness in seeking litigation instead of the UDRP. If the domain name holder adopts passive warehousing or does not use it in the course of trade, the domain name use and registration is unlikely to constitute infringement, whereas utilising the UDRP would more likely find decision for the complainant through the inaction doctrine.

26. There have been several formal court cases in the US that have dealt with domain names under trademark and passing off laws. The best example is the Panavision International LP v Toeppen[63] case, where Toeppen sought a large sum of money for the domain name, "panavision.com". A significant finding was that a domain name does not purely act as an address or like a telephone number. Following this, it was held that Toeppen attempted to extort money from Panavision, which constituted a commercial use under the federal Trademark Dilution Act 1996 (US)[64] Another similar decision involved the "intermatic.com" domain name.[65] Protection of well-known trademarks in Australia would be through s120(3) and (4) of the Act. Presented with the same facts, these US cases would most likely have had a similar conclusion in Australia. However, the differences substantively between US legislation and the UDRP have minimised since the introduction of the ACPA.[66]

27. Similarly, the UK has had cybersquatting cases which involved trademarks and passing off. In the One in a Million case[67] the registrant was a company that registered domain names of well-known businesses and attempted to sell them. The decision made clear that the conduct of selling domain names constituted passing off and trademark infringement. The Court held that it was of no injustice to the defendants to assume that, as the names were of no value to them, they would only attempt unlawful acts in this situation.[68] This case shows that cybersquatting will be treated harshly by the courts in the UK.

28. Although most cases have been domestic in other countries, there are jurisdictional considerations and legal strategies to be considered at an international level, unlike the UDRP. In Prince plc v Prince Sports Group plc[69] the UK-based IT company took the US-based defendant to a UK court seeking a declaration that the threats of trademark infringement were unjustified. It was held there was no infringement based on the UK trademark legislation because the trademark registrations of the IT company were in no way similar to the goods or services provided by the sports group.[70] Under Australian law, the decision would be similar, unless the trademark was considered to be well-known.[71]

29. To date, Australia has had no case law that considers whether registration or use of a domain name constitutes trademark infringement or passing off.[72] However, New Zealand has had case law that follows the One in a Million case regarding passing off.[73] Australia would follow a similar path, because the passing off law in Australia is based on English law. Importantly though, passing off laws can be used to protect a domain name as well.[74]

    Conclusion

30. Whilst the cases of other jurisdictions provide useful guidance to Australian courts, the lack of case law in Australia makes the litigious path a precarious one. The UDRP on the other hand, having resolved many disputes in this area, is definitely a useful method of settling such disagreements. The process is inexpensive and quick compared to traditional litigation, but it is also clearly flawed. Complicated cases are best to still use litigation, especially those with multiple legitimate claimants, though straightforward cases should fully utilise the UDRP. Thus, depending on the circumstances of the case, traditional litigation would be a more appropriate solution than through the UDRP.

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Notes

[1] Currently applies to ".com", ".net", and ".org" generic top-level domains (gTLDs) and a few small country code top-level domains (ccTLDs). Full list of such countries on <http://arbiter.wipo.int/domains/guide/index.html> . (Accessed on 4 February 2002).

[2] Internet Corporation for Assigned Names and Numbers (ICANN).

[3] World Wrestling Federation Entertainment, Inc. v Michael Bosman (WIPO Case No. D99-0001). <http://arbiter.wipo.int/domains/decisions/html/1999/d1999-0001.html> (Accessed on 19 February 2002).

[4] As at 1 February 2002, there were 4243 disputes resolved regarding 7394 domain names. In addition, there were still 337 disputes still pending regarding 547 domain names. On the other hand, there were 551 disputes without decisions regarding 810 domain names. <http://www.icann.org/udrp/proceedings-stat.htm> (Accessed on 3 February 2002).

[5] Proceedings usually take 45 days or less from complaint to conclusion.

[6] 'Reverse domain name hijacking' involves large corporations evicting legitimate domain holders from valuable domains they seek.

[7] White G, "ICANN's uniform domain name dispute resolution policy in action" (2001) 16(1) Berkeley Technology Law Journal 229. See also Mueller M, Rough Justice: An Analysis of ICANN's Uniform Dispute Resolution Policy (Version 2.1) at 4, where Mueller describes it as a "complex social negotiation over the control of words and their function as messages, identifiers and locaters in a globally networked space". <http://dcc.syr.edu/roughjustice.pdf> (Accessed on 9 February 2002).

[8] The three providers are World Intellectual Property Organization (WIPO), National Arbitration Forum (NAF) and the CPR Institute for Dispute Resolution (CPR). There was previously a fourth provider, eResolution (eRes), though it folded its operations. <http://www.eresolution.ca> (Accessed on 17 February 2002).

[9] For single panellist, single domain cases, NAF cost US$1150, WIPO cost US$1500 and CPR cost US$2000. <http://www.arbforum.com/domains/UDRP/fees.asp> (Accessed on 13 February 2002), <http://arbiter.wipo.int/domains/fees/index.html> (Accessed on 17 February 2002) and <http://www.cpradr.org/ICANN_RulesAndFees.htm> (Accessed on 7 February 2002) respectively.

[10] For three-member panels, single domain cases, NAF cost US$2500, WIPO cost US$3000 and CPR cost US$4500. See Note 9 for sources.

[11] Also, eResolution held 7% winning only 63.4% (though it is closed now). Obtained from Geist M, "Fair.com?: An Examination of the Allegations of Systemic Unfairness in ICANN UDRP", (August 2001) at 6. <http://aix1.uottawa.ca/~geist/geistudrp.pdf> (Accessed on 8 February 2002).

[12] UDRP Rules at Paragraph 7. <http://www.icann.org/udrp/udrp-rules-24oct99.htm> (Accessed on 3 February 2002).

[13] Geist, Note 11 at Annex One. As at 31 July 2001, there were 63 panellists with more than one provider.

[14] Geist, Note 11 at 8.

[15] Geist, Note 11 at 8.

[16] UDRP Rules at Paragraph 6(c)-(e). The complainant and respondent also have some influence over the choice of the third panellist.

[17] Geist, Note 11 at 8.

[18] However, many of those were default cases.

[19] The statistics as of 7 July 2001. Geist, Note 11 at Annex Two.

[20] Professor Milton Mueller was the author of the UDRP study, Rough Justice. See Note 7.

[21] The case of Jay David Sallen d/b/a J.D.S. Enterprises v. Corinthians Licenciamentos LTDA, No. 00-CV-11555 (D. Mass. filed Aug. 3, 2000) ["Corinthians.com"] has led to doubts in the US about the UDRP's guarantee of registrant's rights. It basically suggests that if there is no fraud claim, any successful trademark plaintiff can moot the registrant's court action by disclaiming any want to bring a Lanham Act claim.

[22] For example, when the complaint of Weber-Stephen Products Co v Armitage Hardware (Case No. D2000-0187) was taken before the US Federal Court, it was noted by a judge that the ICANN proceedings would not be binding and declined to comment on the amount of deference (if any) the Court would give that decision. <http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0187.html> (Accessed on 19 February 2002).

[23] Rose Communications, "Domain Name Dispute Procedure And Related Issues", May 2001. <http://www.rose.es/udrpenglish.htm> (Accessed on 18 February 2002).

[24] Sidamsa-Continente Hipermercados, S.A. v Rose Communications, S.L (WIPO Case No. D2000-1748). <http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1748.html> (Accessed on 18 February 2002).

[25] UDRP at Paragraph 4(i). <http://www.icann.org/udrp/udrp-policy-24oct99.htm> (Accessed on 3 February 2002).

[26] The US was the first country to introduce cyberspace-specific trademark legislation with the Anti-Cybersquatting Consumer Protection Act of 1999 (ACPA). Australia, however, would rely mostly on Trade Practices, Fair Trading and Trade Mark legislation.

[27] UDRP at Paragraph 4(a). The other two criteria is for the domain name to be "identical or confusingly similar to a trademark or service mark" and the registrant having "no rights or legitimate interests" in the domain name.

[28] Mueller, Note 7 at 22. For example, failure to accept an offer to buy the name "tonsils.com" for $100 was held to prove that a higher price was demanded. Süd-Chemie AG v. tonsil.com (WIPO Case No. D2000-0376). <http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0376.html> (Accessed 19 February 2002).

[29] Compare the words of UDRP Paragraph 4(a)(i) with those of Paragraph 4(b)(iv).

[30] The term was used in White G, "ICANN's uniform domain name dispute resolution policy in action" (2001) 16(1) Berkeley Technology Law Journal 229. See also Gunning P and Flynn P, "Trade Marks and Domain Names" [2001] CyberLRes 4 at Heading 8.3. <http://www2.austlii.edu.au/~graham/CyberLRes/2001/4/> (Accessed on 11 January 2002).

[31] Telstra Corp. Ltd. v. Nuclear Marshmallows (WIPO Case No. D2000-0003). <http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0003.html> (Accessed on 19 February 2002).

[32] See for example, Teledesic LLC v McDougal Design (WIPO Case No. D2000-0620) and Hewlett-Packard Company v Greg Martineau (NAF Case No. FA0008000095359). <http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0620.html> and <http://www.arbforum.com/domains/decisions/95359.htm> respectively. (Accessed 19 February 2002).

[33] Some cases have merely treated the telstra.org case as binding authority without conducting fact-specific analysis, such as in SeekAmerica Networks Inc v Tariq Masood and Solo Signs (WIPO Case No. D2000-0131). <http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0131.html> (Accessed on 19 February 2002).

[34] The inaction doctrine was completely overlooked in Sporoptic Pouilloux S.A. v William H. Wilson (WIPO Case No. D2000-0265). <http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0265.html> (Accessed on 18 February 2002).

[35] The first such case was Jeanette Winterson v Mark Hogarth (WIPO Case No. D2000-0235). <http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0235.html> (Accessed on 19 February 2002).

[36] Julia Fiona Roberts v Russell Boyd (WIPO Case No. D2000-0210). <http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0210.html> (Accessed 19 February 2002).

[37] Gordon Sumner, p/k/a Sting v Michael Urvan (WIPO Case No. D2000-0596) ["sting.com"]. <http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0596.html> (Accessed 19 February 2002).

[38] Quirk Nissan, Inc. v Michael J. Maccini (NAF Case No. FA0006000094959), Quirk Works, Inc. v Michael J. Maccini (Case No. FA 0006000094963) and Daniel J. Quirk, Inc. v Michael J. Maccini (Case No. FA0006000094964). <http://www.arbforum.com/domains/decisions/94959.htm> , <http://www.arbforum.com/domains/decisions/94963.htm> and <http://www.arbforum.com/domains/decisions/94964.htm> . (Accessed on 19 February 2002).

[39] The only guidance is through UDRP Rules Paragraph 15(a), which in essence allows the application of any rules and principles of law as it sees fit. See Levy J, "Precedent and Other Problems with ICANN's UDRP Procedure". <http://dnlr.com/reporter/levyicann.shtml> (Accessed on 5 February 2002).

[40] Rockport Boat Line v Gananoque Boat Line (Case No. FA0004000094653). <http://www.arbforum.com/domains/decisions/94653.htm> (Accessed on 18 February 2002).

[41] Excelentisimo Ayuntamiento de Barcelona v Barcelona.com Inc. (WIPO Case No. D2000-0505). <http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0505.html> (Accessed 19 February 2002).

[42] The requirements under UDRP Paragraph 2(a) are too easily satisfied, and does not guarantee notice in situations such as when a person is on holiday for a month.

[43] UDRP Rules at Paragraph 4(c). It states that date of commencement of administrative proceedings is when Paragraph 2(a) is satisfied, which involves the notice requirement.

[44] UDRP Rules at Paragraph 2(f) states that Internet communications are deemed to be made when it was transmitted and not when it is received.

[45] UDRP Rules at Paragraph 5(a).

[46] Mueller, Note 7 at 11. The default rate for the first 478 cases was a large 34%.

[47] See UDRP Rules at Paragraph 5(d).

[48] NAF Supplemental Rule 6(a). <http://www.arbforum.com/domains/UDRP/rules.asp> (Accessed on 13 February 2002).

[49] Froomkin M, ICANN's "Uniform Dispute Resolution Policy"- Causes and (Partial) Cures, 19 November 2001 (Draft) at 50. <http://personal.law.miami.edu/~froomkin/articles/udrp.pdf> (Accessed 5 February 2002).

[50] Based on NAF Supplemental Rule 9(c).

[51] Mueller, Note 7 at 20.

[52] ICANN must, as a matter of principle, have no contribution to the selection of providers. See Froomkin M, A Catalog of Critical Process Failures; Progress on Substance; More Work Needed, 13 October 1999. <http://www.law.miami.edu/~amf/icann-udp.htm> (Accessed on 7 February 2002).

[53] Trade Marks Act 1995 (Cth). Now referred to as the 'Act'.

[54] Passing off is an action to prevent financial loss from the defendant's representation that their goods or services are those of the plaintiff.

[55] Trade Marks Act 1995 (Cth) s120.

[56] Trade Practices Act 1974 (Cth). There have been Australian cases that relied on s52. For example, Melbourne IT relied on s52 against a Queensland couple who had registered "melbourne-it.com.au" and were attempting to sell it. See Finlayson G, "Melbourne IT wins day in court" ZDNetAu Technews, 17 August 1999.

[57] Souza C, "Specific remedies for cybersquatting: Part 2" (2000) 3 Internet Law Bulletin 65 at 66-67.

[58] Gunning P and Flynn P, "Trade Marks and Domain Names" [2001] CyberLRes 4 at Heading 7. <http://www2.austlii.edu.au/~graham/CyberLRes/2001/4/#Heading24> (Accessed on 11 January 2002).

[59] Trade Marks Act 1995 (Cth) s120(1).

[60] Trade Marks Act 1995 (Cth) s120(2).

[61] See Trade Marks Act 1995 (Cth) s120(3) and (4).

[62] A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person. Trade Marks Act 1995 (Cth) s17.

[63] [1998] USCA9 991; 141 F 3d 1316 (9th CCA, 1998). <http://www.loundy.com/CASES/Panavision_v_Toeppen.html> (Accessed 21 February 2002).

[64] This US Act seeks to protect famous marks from being weakened through unauthorised use of an identical or similar mark.

[65] Intermatic Inc v Toeppen 947 F Supp 1227 (ND Ill. 1996). <http://www.loundy.com/CASES/Panavision_v_Toeppen.html> (Accessed 21 February 2002).

[66] The Anti-Cybersquatting Consumer Protection Act (ACPA) introduced a new basis for trademark infringement which depends on 'bad faith', similar to the UDRP. See the new s43(d) in the Trade Mark Act of 1946 (15 USC 1125(d)).

[67] Marks & Spencer plc v One in a Million Ltd [1988] FSR 265.

[68] It was mentioned that "[w]here the value of a name consists solely of its resemblance to the name or trade mark of another enterprise, the court will normally assume that the public is likely to be deceived, for why else would the defendants choose it?" See One in a Million note 67 at 271.

[69] CH 1997 P No 2355 (18 July 1997).

[70] See also Interstellar Starship Services Ltd v Epix Ltd 1997 WL 736486 (D Ore 1997).

[71] It must satisfy s120(3) and s120(4) of the Trade Marks Act 1995 (Cth) to be 'well-known'.

[72] However, there is one case where a judgment in default was awarded following an ex parte hearing, in relation to "asxinvestor.com": Australian Stock Exchange Limited & Anor v ASX Investor Services Pty Ltd, Federal Court of Australia proceedings, NG1390 of 1998. Burchett J indicated that he was likely to take the same approach as the UK Court in the One in a Million case.

[73] Oggi Advertising Ltd v McKenzie & Ors (unreported, NZ High Court, Baragwanath J, 2 June 1998). See also Qantas Airways Ltd v The Domain Name Co Ltd (P26-SD99, unreported, 9 December 1999).

[74] If a domain name becomes associated with certain goods or services, a passing off action could prevent other entities from using it in an Internet or non-Internet context.