A primer on domain name arbitration.
Later this week Domain Name Wire will cover the pending spat between Rogers Cadenhead and MGM regarding his domain name, WarGames.com. I have procured a copy of MGM’s original complaint and Cadenhead’s response. Before going into the details of the case later this week, let’s review what a UDRP is.
UDRP stands for Uniform Domain Name Dispute Resolution Policy. All registrars in the .biz, .com, .info, .name, .net, and .org top-level domains follow the Uniform Domain Name Dispute Resolution Policy. Under the policy, most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name. Disputes alleged to arise from abusive registrations of domain names (for example, cybersquatting) may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider.
To invoke the policy, a trademark owner either files a complaint in a court of proper jurisdiction against the domain name holder or submits a complaint to an approved dispute resolution service provider.
These dispute-resolution companies act as arbitrators between the domain registrant and the company claiming to have an infringed trademark. There are four approved arbitrators. In practice, most disputes are handled by The National Arbitration Forum and World Intellectual Property Organization.
Companies usually prefer to invoke the UDRP and arbitration compared to a lawsuit because it costs them as little as $1,500 plus legal fees.
In order for a complainant to obtain the transfer of a domain during an arbitration, it must prove three things:
1. The domain name is identical or confusingly similar to a trade or service mark in which the complainant has rights.
2. The domain registrant has no legitimate rights or interests in the domain name.
3. The domain name has been registered and used in “bad faithâ€.
In the case of Metro-Goldwyn-Mayer Studios Inc. v. World Readable (Cadenhead’s company), MGM must prove all three of the above. As I post the details about this case later this week you can decide for yourself.
I have personally never been involved in a UDRP arbitration. I’m not a lawyer, either. But I’ve read a number of decisions. And I have been threatened with a cease and desist order by a large government entity regarding one of my domains. In that case, the government entity (which shall remain unnamed) said I was capitalizing on the organization’s goodwill regarding a particular name. Here’s the rub: They owned .net and owned .com. They starting using .net after I registered .com. They were basically trying to scare me and I called their bluff. I sent a response letter to them and never heard back.
Arbitration is not perfect. There’s a lot of case history about various arbiters deciding cases in seemingly contradictory manners. The arbitration firms are also competing for business, which may cause them to find in favor of the organizations that are complainants.
Stay tuned for more information about the Wargames.com case.