Domain Name - Domain Name Dispute Resolution

One of ICANN's first tasks was to begin developing an international dispute resolution policy for domain name disagreements. The resulting Uniform Domain Name Dispute Resolution Policy (UDRP) stipulated that entities using one of the three most common top-level domains—.com.,.net, and.org—must resolve any trademark-based domain name squabbles via litigation, arbitration, or formal agreement before a registered name could be transferred or canceled. In 1999, the organization approved two domain name dispute resolution service providers: World Intellectual Property Organization (WIPO) and National Arbitration Forum. The following year, ICANN selected two more dispute resolution services providers: eResolution and CPR Institute for Dispute Resolution. To have a case reviewed by these arbitrators typically costs $1,500.

In the late 1990s, pop singer Madonna was one of several celebrities to file a complaint over the use of a trademarked name in a domain name by an unauthorized agent. Madonna alleged that Dan Parisi used her name to attract viewers to his pornographic Web site at www.madonna.com. According to an October 2000 article in E-Commerce Times, Madonna was required to demonstrate that "the domain name registered by Parisi was identical or confusingly similar to a trademark or service mark in which Madonna has rights; Parisi had no legitimate interests in respect of the domain name; and the domain name had been registered and used in bad faith." Because Parisi could not satisfactorily justify his use of the word "Madonna" in his domain name, a three-member panel of WIPO came to the conclusion that the defendant was using the trademarked name to lure Internet users into visiting his site in hopes of finding information related to Madonna. As a result, WIPO found in favor of Madonna in October of 2000, and ordered Parisi to transfer the domain name rights to the entertainer.

Large corporations also made use of UDRP. In 2000, the Esquire.com domain name was transferred to publishing house Hearst at the behest of WIPO, which also ordered several domain names using the Harry Potter trademark to be transferred to AOL Time Warner.

Offering additional legal options to U.S.-based trademark holders is the Anti-Cybersquatting Consumer Protection Act, a federal law passed by the U.S. Congress in 1999. Those found guilty of cybersquatting—attempting to use a trademark in a domain name to profit from it, either by capitalizing on name recognition or by selling the domain name to the trademark holder at an elevated price—can be fined up to $100,000 in damages. According to the April 2001 issue of the San Diego Business Journal, the act "differs from the Uniform Dispute Resolution Process in that it is a court proceeding, rather than an administrative proceeding, and is U.S. law rather than internationally enforced policy."