Table Of ContentDOMAIN NAME LAW AND PRACTICE
AN INTERNATIONAL HANDBOOK
SECOND EDITION
DOMAIN NAME
LAW AND
PRACTICE
An International Handbook
SECOND EDITION
Edited By
Torsten Bettinger
Allegra Waddell
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Second Edition published in 2015
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PREFACE
The present volume is the second edition of a treatise on domain name law and is a com-
prehensive guide to the technical and organizational basis of the domain name system and
Internet governance structure. It is also a reflection on the early attempts to reconcile Internet
activity and governance and a substantial review of the significant developments of the past
decade since the publication of the previous edition. While this handbook relates to devel-
opments over a relatively short period of time in the traditional sense, it is an ambitious text
which gives account of the rapid changes in the national and international technical and legal
framework in response to entirely novel and unprecedented legal issues and developments.
A decade ago, the world was coming to terms with the new era of the internationalization
of trade and communication and was in the process of regularizing national law and inter-
national procedures for resolving the novel and widespread legal problems accompanying
such change. Up to the end of the 1990s, there was a lack of court decisions and widespread
uncertainty as to how to address the new tort of cybersquatting and other Internet-related
intellectual property law issues. Compounding the harm, as many cases of cybersquatting
involved foreign parties, rightsholders often lacked recognition and enforcement of judicial
decisions. All interested parties were subject to the laws of a “digital Klondike”, the principle
of “first come first served”.
In response to these new and unique circumstances, national legislators and courts in most
jurisdictions addressed the major intellectual property and competition law issues and were
assisted by norm-setting efforts by international bodies. On October 3, 2001, the General
Assembly of the World Intellectual Property Organization (WIPO) and the Paris Union pre-
sented a Joint Recommendation concerning Provisions on the Protection of Marks and other
Industrial Property Rights in Signs on the Internet. This document provided a legal frame-
work and guide for national authorities to ascertain whether the use of a sign on the Internet
contributed to the acquisition, maintenance or infringement of a mark or other industrial
property right in the sign, or whether such use constitutes an act of unfair competition.
Additionally, in light of the complex questions of jurisdiction, applicable law, and enforce-
ment that arise when resorting to national judicial systems and the resulting delays and costs,
alternative dispute resolution procedures were established at the international and suprana-
tional level which allowed intellectual property owners to rectify abuses of rights in domain
name registrations more efficiently. Chief among these, the Uniform Domain Name Dispute
Resolution Policy (UDRP) and the dispute resolution process for “.eu” domain names
established by European Commission Regulation (EC) 874/2004 of April 2004 have been
successful in addressing abusive cybersquatting, with over 50,000 domain name disputes
administered to date.
Thus, at the time of the publication of the first edition of this volume, a reliable interim status
had been achieved at both the national and international level, permitting a logical point of
reflection from which the first edition took perspective.
The story since that time has been written in large part by the Internet Corporation for
Assigned Names and Numbers (ICANN). Founded in 1998 and responsible for the coordi-
nation and maintenance of the domain name system, ICANN has been constantly evolving
policy and procedures regarding the registration of domain names and the resolution of
technical and legal disputes over such registrations.
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Preface
In its early years, ICANN presided over a limited number of restrained expansion rounds of
the domain name space, reaching 22 Generic Top-Level Domains by 2011. However, from
as early as 2005, ICANN was planning an unprecedented expansion round for the delegation
of a potentially unlimited number of TLDs to any applicant ranging from nonprofit institu-
tions to local and regional governments to private corporations. The New gTLD Program,
formally launched in 2011, instigated a radical change and development to both the DNS
and to various supporting mechanisms and procedures within ICANN.
This second edition, released at the twilight of the New gTLD Program, provides an account
of its administration and the problems and issues which arose, and benefits from perspective
on the maturation of legislative and dispute resolution processes developed both prior to and
for the Program.
As a precondition for the discussion of the legal issues and developments, Part I A presents an
overview of the technical and organizational basis and historical development of the domain
name system. Part I B provides a similar overview of the organization of ICANN and a
review of its governance structures. Part I C reviews the registration principles and the various
dispute resolution systems in connection with the registration of domain names under the
generic Top-Level Domains (gTLDs). Part I D discusses the development and application
of ICANN’s New gTLD Program and identifies the salient issues which impacted gTLD
applicants and the Internet community during the process. Part I E is the country code
Top-Level Domain (ccTLD) counterpart to the gTLD discussion of Part I C, with Part I F
consisting of an in-depth analysis of the “.eu” ccTLD adopted in European Commission
Regulation (EC) 874/2004 of April 28, 2004. Rounding out Part I at Part I G is a section
devoted to assessing the state of the domain name industry and the forces and challenges for
its commercial participants.
Part II comprises presentations of the registration requirements and the domain name law in
30 countries. All are written by acknowledged experts in the field of domain name law who,
as attorneys and panelists in the various national and international alternative dispute settle-
ment procedures and as jurists, have been involved directly in the development of domain
name law.
Each individual national contribution begins with a short summary of the national system
for the protection of trade marks and other intellectual property rights in signs. This is fol-
lowed by a presentation of the registration requirements for the ccTLDs and the alternative
dispute settlement procedures in operation in the country, an aspect of considerable relevance
for the legal practitioner and a major supplement to the protection available through the
ordinary courts.
The author of each contribution then analyses and comments on the – in some countries
already extensive – case law on the protection of trade marks, commercial designations, names
and work titles against registration and use as domain names. The questions of the inde-
pendent protection of domain names as proprietary rights and the liability of the registrar
and registry are treated as separate legal problems. Each country report ends with a
section dealing with the forms of relief available to the owner of intellectual property
rights and with a variety of procedural factors affecting their enforcement against the
registration and use of domain names, plus a section on rules relating to issues of inter-
national jurisdiction, applicable law (private international law) and enforcement in inter-
national conflicts.
Part III examines in detail the wide variety of rights protection mechanisms and other policies
developed by ICANN and other authorities in relation to the domain name system. Part III
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Preface
A starts with a brief introduction to the historical development of the rights protection mech-
anisms implemented during the New gTLD Program, with Parts III B and C pertaining to
those procedures available to challenge TLD applicants prior to delegation and TLD registry
operators after delegation, respectively. These procedures, while in some instances reminiscent
of other existing trade mark-based ADR programs, are unique as they provide direct avenues
to challenge the use of a Top-Level Domain by a registry and not on the basis of individual
domain name registrations. It is Part III D which discusses the New gTLD Program-specific
RPMs developed for such individual domain name registrations.
Part III E consists of a detailed analysis of the dispute resolution procedure set out in the
Uniform Domain Name Dispute Resolution Policy (UDRP), with an exhaustive assessment
of key decisions addressing the most common factual and legal questions and circumstances
arising under the Policy. Part III F provides a brief overview of other ICANN “consensus
policies”, of which the UDRP is only one of many, which address a range of technical and
legal requirements and procedures applicable to domain name registrars. This is followed
in Part III G by an exposition of the alternative dispute resolution procedure for “.eu” and
Part III H which references other ADR procedures utilized in the ccTLD space.
Part IV sets out the WIPO/Paris Convention Joint Recommendation concerning the
Provision on the Protection of Marks and other Industrial Property Rights in Signs on the
Internet.
The work is rounded off in Part V with a quick-reference table summary of the registration
and dispute resolution conditions in other important domain name jurisdictions which are
not represented by a full length national report.
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DISCLAIMER
All information provided in this handbook is provided to the reader as a source of general
information on domain name law and related intellectual property issues. It is hoped that the
information on these pages will provide useful guidance on domain name dispute registration
and dispute resolution, but it cannot take the place of professional advice based upon full
knowledge of the specific circumstances of each case. Readers should therefore consult with
an attorney licensed to practice in the relevant state or country.
While most concerted efforts have been made to ensure the accuracy of the information in
this volume, the editors and the authors cannot guarantee the completeness or timeliness of
any of the information presented on these pages. The Internet is a transient medium. Thus,
references to web locations, data, pricing and registration policies are subject to change with-
out notice.
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