Readers may recall prior INTA Bulletin
articles regarding a particular domain name registrar’s strategy to prevent appropriate and effective use of the Uniform Domain Name Dispute Resolution Policy by trademark owners. (See “UDRP Hijacking Thwarted—How a Registrar’s Strategy Backfired
,” Vol. 66, No. 7, Apr. 1, 2011; “UDRP Hijacking: Avoiding an Involuntary Passage to India
,” Vol. 64, No. 4, Feb. 15, 2009.) The registrar, Lead Networks Domain Pvt. Ltd., of Mumbai, had apparently advertised its willingness to assist its customers in preventing implementation of UDRP panel transfer orders through the use of shell entities and court filings in India. After examination of Lead Networks’ actions in relation to 61 UDRP transfer orders, ICANN (Internet Corporation for Assigned Names and Numbers) determined that Lead Networks had violated UDRP-related provisions of the Registrar Accreditation Agreement (RAA), and it allowed Lead Networks’ RAA to expire.
In what could be a similar initiative by a different domain name registrar, a number of trademark owners have recently encountered difficulties in obtaining implementation of UDRP transfer orders from a domain registrar based in South Korea. Paragraph 3(b)(xiii) of the UDRP Rules of Procedure requires UDRP complainants to submit to the jurisdiction of either (a) the courts of the principal office of the relevant registrar or (b) the respondent’s address as shown in the Whois record for the relevant domain name for any challenges to a UDRP panel’s decision cancelling or transferring a domain name. Paragraph 4(k) of the UDRP requires that any court action challenging a UDRP transfer or cancellation order must be filed within ten days of issuance of the UDRP decision to prevent the registrar from implementing the transfer or cancellation. In accordance with Paragraph 4(k), the registrar will not proceed with the transfer or cancellation if it receives a court clerk–stamped copy of a complaint within the ten-day appeal window.
In a number of recent instances involving different trademark owners and different marks but the same registrar and registrants based in South Korea, UDRP panels’ transfer orders have gone unheeded by the registrar. The modus operandi in each of the cases has been similar: the respondent filed a procedurally deficient legal action in Seoul District Court requesting an injunction preventing implementation of the UDRP transfer order. In certain cases the deficient legal actions were not filed within the ten-day window set forth in UDRP Paragraph 4(k), but in all cases the registrar indicated that it would not proceed with domain name transfer in light of the pending legal action. At least one such action was dismissed by the Seoul District Court for “lacking grounds” under Korean law.
The registrar has continued to refuse to implement the UDRP transfer orders even when provided with a copy of the court’s order dismissing the deficient legal action and notwithstanding Paragraph 4(k)’s language indicating that such a court dismissal order will result in implementation by the registrar of the UDRP transfer or cancellation order. Trademark owners have also reported receiving a variety of additional explanations from the registrar as to why it will not implement particular UDRP transfer orders, including references to alleged but undocumented additional legal actions and to clearly inapplicable UDRP rules and procedures.
At least two complaints have been submitted by trademark owners to ICANN within the last month concerning the domain name registrar described in this article. The authors understand that ICANN is currently investigating the matter and has made initial contact with the registrar. Trademark owners and their counsel who have encountered similar issues with this registrar should consider submitting a written complaint to the ICANN Contractual Compliance Department (Ms. Stacy Burnette, Director, at firstname.lastname@example.org
). Paragraphs 3.8 and 5.3.6 of the RAA may be relevant to any such complaint to ICANN.
Many domain name registrars work hard to comply with their ICANN accreditation obligations and are valuable members of the Internet community. Nonetheless, given the actions of a few “bad actor” registrars, all trademark owners are encouraged to thoroughly investigate both the registrant and the concerned registrar before filing a UDRP complaint because of the possible reemergence of UDRP hijacking by the registrar described in this article. The UDRP typically provides an efficient and effective means of obtaining the transfer of domain names that have been registered and used in bad faith. However, possible collusion between a registrar and cybersquatters, and the associated delays in obtaining implementation of a UDRP transfer order, could counsel in favor of pursuing a court action rather than a UDRP proceeding. Where appropriate, litigation under the anticybersquatting laws may provide an effective alternative to a lengthy post-UDRP battle with a registrar that is operating in flagrant violation of its ICANN accreditation obligations.
Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest.
© 2011 International Trademark Association