[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] 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.