Cybersquatting under Different Dispute Resolution Mechanisms
Contents
The World Intellectual Property Organization ("WIPO") defines cybersquatting as “the preemptive, bad faith registration of trademarks as domain names by third parties who do not have rights in such names”. Cybersquatting takes advantage of the "first come, first served" principle of domain name registration and in most cases, the primary motivation for cybersquatting is to receive commercial offers from the rightful owners. As a result, effective alternative dispute resolution mechanisms have had to be adopted to meet the needs and challenges arising from the disputes between domain name registrants and trademark owners.
While the Internet Corporation for Assigned Names and Numbers ("ICANN") adopted the globally recognized dispute resolution mechanisms, the Uniform Domain Name Dispute Resolution Policy ("UDPR") and the Uniform Rapid Suspension ("URS"); Turkey also adopted a dispute resolution mechanism for “.tr” domain names in 2022, called the TR Network Information System (“TRABIS”). The rules for TRABIS are regulated under the Regulation on Internet Domain Names (“Regulation”) and the Communiqué on Internet Domain Names Dispute Resolution Mechanism ("Communiqué"), which are secondary legislation to the Electronic Communications Law No. 5809 ("Law").
This article presents a comparative approach to the domain name dispute resolution mechanisms to be applied in the event of a cybersquatting incident.
UDPR
UDPR establishes the terms and conditions of a dispute between a registrant and a third party regarding the use of an Internet domain name. Under the UDPR, the following criteria must be met in order for the UDPR to apply:
The domain name must be identical or confusingly similar to a trademark or service mark in which the third party has rights,
The registrant must not have any legal interest in the domain name,
The domain name must be registered and used in bad faith.
An important point to note is that the UDRP allows filing more than one application.
It should be noted that the UDRP costs applicants between USD 1,500 and 4,000. In addition, the entire process takes approximately 8 weeks to complete. Notably, the UDRP does not provide a quick resolution for the applicants.
URS
The URS was adopted by ICANN in 2013, to address the need to suspend the use of the domain name. The main difference between the UDRP and the URS is that the URS provides a temporary suspension of the domain name registration during the registration period. In addition, the URS is less expensive (approx. USD 375) and faster than the UDRP, as the process takes approximately 3 weeks to complete. Another element of the URS that differs from the UDRP is the burden of proof. In the case of the URS, the complainant only has to provide clear and convincing evidence, while the UDRP requires more detailed evidence.
It should be noted that, under the relevant ICANN provisions, a URS complaint may not be filed if there is a pending URS or UDRP proceeding involving the same domain name. Nevertheless, there is no impediment to filing a URS or UDRP complaint after the conclusion of the first case, provided it was filed before the other mechanism.
TRABIS
The Law has granted the Information Technologies and Communications Authority ("Authority") broad powers with respect to Internet domain names and cybersecurity. Pursuant to the Law, the Authority handles ".tr" domain name disputes through TRABIS. The Communiqué states that disputes arising from .tr domain names are resolved by an Internet domain name dispute resolution service provider (Currently, the Information Technologies and Internet Security Association (BTIDER) and the TOBB UYUM Mediation and Dispute Resolution Center), which follows a path similar to the UDRP.
The requirements for application are set out in the Regulation as follows:
The disputed domain name is similar or identical to a trademark, trade name, business name or other identifying mark owned or used in commerce,
The registrant has no legal right or connection to the domain name,
Allocation or use of this domain name by the domain name owner is in bad faith.
It should be noted that TRABIS costs applicants between TRY 4.500 and 13.500 (approx. USD 145 and 440) depending on whether a single arbitrator or a panel of arbitrators is selected. In addition, the entire process takes approximately 3-4 weeks to complete.
Like the UDRP, the Internet Domain Name Dispute Resolution Service Provider allows multiple applications.
Conclusion
In light of all of the above, we can conclude that both the UDRP and the URS serve different aspects of domain name disputes, each of which is specific to the needs of Internet law. The URS, on the other hand, largely follows the principles set forth in the UDRP. As the threat of cybersquatting incidents increases by the day, it is critical for trademark owners to have a clear understanding of how to protect their rights.
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