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European Intellectual Property Review

2003

International domain name disputes: rules and practice of the UDRP

Anri Engel Subject: Information technology. Other related subjects: Intellectual property Keywords: Dispute resolution; Domain names; Registration; Trade marks *E.I.P.R. 351 One of the most remarkable events in the past, particularly for solving international legal problems originating through the nature of the borderless internet on the one hand and intellectual property rights of some users on the other hand, was the foundation of the ICANN (Internet Corporation for Assigned Names and Numbers) in 1998 as a worldwide internet administration and the introduction of UDRP (Uniform Domain Name Dispute Resolution Policy) in 1999 for effective and cost saving international domain name disputes. The statistical data from ICANN1 show that UDRP is commonly used and has been a success story in regard to the numbers of disputes which have been submitted for decision by UDRP panels. But nevertheless, and despite a majority of supporters, UDRP has also been criticised.2 Some people believe that UDRP is biased towards trade mark owners, is unfair,3 or lacks legitimacy.4 On December 1, 1999 ICANN implemented UDRP (Uniform Domain Name Dispute Resolution Policy)5 on the recommendation of WIPO.6 UDRP was designed to provide a fast and inexpensive procedure used by trade mark holders around the world against those who register internet domain names in bad faith and without rights or other rightful interests. As trade mark litigation is an expensive, slow and, ultimately, a process with rigorous standards of proof in regard to local jurisdiction,7 the UDRP provides a benefit to trade mark owners and domain holders particularly in foreign countries who wish to push their rights to domain names registered in the United States or through accredited registrars in other countries.8 UDRP is described as an expedited administrative proceeding whereby the holder of trade mark rights initiates a complaint by filing one with an approved dispute resolution provider.9 The policy has been adopted by all accredited domain name registrars for gTLD and is incorporated into all registration agreements set forth by ICANN. The scope of UDRP is limited and applies only to cyber squatting and similar abusive forms of domain name registration and also only to domain names registered in the generic top-level domains (.com, .org, .info etc.), which constitute the bulk of the domain names registered worldwide. For so-called countrycode top-level domain names (.uk, nl, .de etc.) the UDPR only applies if a country administrator has voluntarily adopted it.

Uniform Domain Name Dispute Resolution Policy ( UDRP ) The legal nature of UDRP Decisions
The legal nature of UDRP is not easy to define, because the implementation of UDRP is nearly without precedent.10 First, UDRP is not an arbitration policy in the common way. UDRP does not have any binding effect other than on the registrar of the controversial domain name, because it is a set of contractual provisions that are incorporated by reference into registration contracts between ICANNapproved registrars and domain name registrants.11 As a result of this, penal decisions do not prejudice the outcome of any subsequent court proceedings. To receive ICANN accreditation, registrars must agree to include special terms imposing UDRP in agreements with registrants.12 That means that UDRP *E.I.P.R. 352 itself is to be legally qualified as specific contract terms which have been promulgated autonomously by an accredited registrar and finally, by ICANN.13 Secondly, it also takes the sting out of problems according to the conflict of laws: as a matter of principle, panels are not supposed to apply any particular national law at all, but to interpret the policy as it is, i.e. as a body of rules which have been developed autonomously for the purpose of dispute settlement in respect to domain name conflicts .14 Otherwise, panels might use national legislation if they find them useful and appropriate for the interpretation of UDRP.15 Of course, this noticeable conflict of law rules stands in absolute discrepancy with the conflict of law rules in most countries, where generally an explicit selection of applicable law is demanded.16 Connected to the legal nature of UDRP as contract terms, a serious contractual problem arises, because the whole structure of UDRP could break down if the individual agreement under which it is concerted is valid. The arising legal problems have to be assessed under the rules of private international law of the parties involved

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and with respect to each case.17 UDRP as contract terms is an integral part of the contract between the ICANN accredited registrar and the registrant. But, UDRP is available only in English and will be included in the contract, usually, linked to the ICANN website or handed out as a hard copy. In almost all cases where the domain name was registered by a European registrar, this will than apply for that contract and for all relations between the registrar and the registrant, and the national law of the registrar's country or European law.18 From the standpoint of German or French laws, as a part of national laws harmonised within the European Union, the UDRP written only in English (as contract terms) violates consumer protection rights. Although the English language is spoken more or less by many people in Europe, not all people would be comfortable making a contract in English or would be familiar with the English legal terms, even though their English is of a high level.19 Therefore the integration of UDRP into such national contracts is void. The registrant might sue for a declaratory judgment with the findings that the registrant is not bound to take part in UDRP proceedings and cannot lose any rights. Generally, such a decision takes precedence over UDRP if the respondent notices the time limitation in the UDRP 4(k).20 As a way out, ICANN could provide official (approved) translations of UDRP or allow the use of its own registrar translations. In any cases, from a practical point of view the risk is limited, because, even UDRP allows both respondent and complainant to sue in a court of competent jurisdiction.21 The only problem is that, after declaration of the UDRP decision, the provider must wait only 10 days before implementing the decision. Thus, after 10 days, the respondent regularly loses his domain name to the complainant, although his (national) consumer protection rights might be violated through the void implementation of UDRP in his contract. A similar problem could arise in question of rules for arbitration under national law.22

UDRP and its Rules

UDRP is divided into the UDPR itself and the UDRP Rules. While UDRP applies to preconditions of claims for filing a complaint, posing potential defences and decisions that can be utilised by the panellist, the UDRP Rules contain only rules for the proceedings and formalities.23 As ICANN does not execute UDRP proceedings directly, but one of the approved dispute resolution providers, each individual provider has implemented supplemental rules24 covering such topics as fees, word and page limits, and guidelines, the means for communicating with the provider and panel, and the form of cover sheets.25 All providers charge different fees depending on the number of selected panellist and domain names.

Dispute resolution providers

Proceedings under UDRP are executed by four ICANN-approved dispute resolution providers: WIPO (Word Intellectual Property Organization),26 NAF *E.I.P.R. 353 (National Arbitration Forum),27 CPR (Institute for Resolution)28 and ADNDRC (Asian Domain Name Dispute Resolution Centre).29 The former provider eRes (eResolution Consortium) shut down its operations in December 2001 and is currently undergoing bankruptcy proceedings.30

Comparison of provider fees

The provider fee system depends on the selected numbers of panellists and domain names. For a single panellist and one domain number, NAF charges US$950, ADNDRC US$1,000, WIPO US$1,500 and CPR US$2,000. For a three-member panel NAF charges US$2,500, ADNDRC US$2,500, WIPO US$3,000 and CPR US$4,500. While NAF has the most differentiated fee structure depending on the numbers of domain names the other providers charge more globally and within these providers, CPR is the most expensive31 (see Table 1).

Table 1 A comparison of dispute resolution provider fees

Provider NAF32 1 2 3 4-5 6-10 Number of Domain Names up to 10 Single Panellist US$950 US$1,100 US$1,250 US$1,400 US$1,750 Three-member Panel US$2,500 US$2,500 US$2,500 US$2,500 US$3,500

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ADNDRC33

1-2 3-5 6-9 10 or more

US$1,000 US$1,200 US$1,600 US$3,000 US$1,500 US$2,000 US$2,000 US$2,500 to be determined

US$2,500 US$3,000 US$3,600 US$7,000 US$3,000 US$4,000 US$4,500 US$6,000 to be determined

WIPO34 CPR35

1-5 6-10 1-2 3-5 more than 6

UDRP Proceedings Filing a complaint The complainant

Any person or entity may initiate an UDRP proceeding by submitting a complaint via email or hard copy32 to any ICANN-approved provider.33 Representation of the complainant through a ( admitted or certified ) lawyer is not obligatory but the providers recommend the consultation of a specialised lawyer.34 Parties are not required to appear at the provider's forum's physical location, unless under special circumstances, as determined by the panel.35

The election of panels

In the complaint it has to be designated, whether the complainant chooses to have the dispute conducted by a three-member panel or by a single-member panel. If the complainant elects a threemember panel, he may submit a list of preferred panellists from any approved provider's list of panellists.36 In this case the respondent has the right to suggest a preferred panellist as well. After submission, the provider selects one panellist from the complainant's and one from the respondent's list. If one the other party does not submit a list of preferred panellists, the provider makes the selection(s). Additionally the provider selects a third presiding panellist either a panellist who is on both the complainant's and the respondent's list or by provider's decision if one or both parties decline to submit a list of preferred panellists.37 In the case of a single-member panel the provider chooses the panellist but the complainant should suggest a preferred panellist as well, even though provider is not bound to this suggestion.38

*E.I.P.R. 354 The claim grounds

In the complaint the grounds on which the complaint is made have to be explicitly described, because UDRP sets down that the complainant must signify all facts which are required for the decision already presented in the complaint.39 Therefore the complainant must present all required facts to justify his claims according to UDRP s.4 (I-iii) as follows: (1) the respondent's domain name is identical or confusingly similar to the complainant's trade mark; (2) the respondent lacks any rights or legitimate interest in the domain name; and (3) the respondent must have registered and must be using the domain name in bad faith. Because discovery and hearings in a UDRP proceeding are not allowed,40 the complainant (as well as the respondent in his reply) should submit all relevant written facts (email/hard copy) or if possible, supported by documents. It should be noted that all providers have for both the complaint and response a word- or pagelimit ranging between 3,000 and 5,000 words, or 10 pages.41

Available remedies
Already in the complaint the deliberate remedies available under the UDRP have to be specified. According to UDRP s.4(i), the complainant can apply for cancellation or transfer of the respondent's domain name registration. UDRP does not have a provision for fines or punitive damages.42

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Additional statements
Additionally, the complainant must make three different statements. First, he must state that a copy of the complaint and the cover sheet have been sent off as prescribed by the Supplemental Rules of the provider to the response.43 Generally the complainant can do this by email, fax (with confirmation) or postal or courier service (pre-paid postage and return receipt requested).44 Secondly, he must state that he is in agreement with respect to any challenges to the decision in the administrative proceeding cancelling or transferring the domain name, to the jurisdiction of the courts in at least one specified Mutual Jurisdiction .45 Mutual jurisdiction under UDRP means a court jurisdiction at the location of either the principal office of the domain name registrar or the address of the domain holder.46 Thirdly, he must submit a signed statement surrounding possible claims against the following persons or entity: -- provider and panellist (except in the case of wrongful deliberation); -- registrar; -- registry administrator, and -- ICANN.47

Commencement of proceedings
The provider requests the concerned registrar(s) to provide explicit details concerning the disputed domain names.48 If the complaint contains all the required specifications, the provider forwards the complaint, together with general information about the UDRP proceeding to the respondent.49 The provider will send the complaint to all addresses shown in the domain name's registration data to guarantee receipt by the respondent. For further forwarding, both the complainant and the respondent have to specify one correspondence address.50 The provider forwards the complaint within three calendar days following receipt of the initial fixed fees, which is different for every UDRP provider,51 to be paid by the complainant.52 In the practice of UDRP, the date of forwarding is equivalent to the commencement date of the proceeding, in so far as the rule is not clear-cut in UDRP Rules s.4(c).53 As we will see later, the commencement date of the proceeding is significant for the beginning of the period within which a response has to be filed. In the case of an insufficient complaint, the complainant has five calendar days within which to correct any deficiencies. After this lapse of time the proceeding will be deemed withdrawn, but without prejudice. The complainant would be free to submit a new complaint.54 Unless the UDRP Rules s.11 provides the possibility for the UDRP proceedings to be held in a language55 other than English, most of the cases decided have been held in English only.56

Filing a response Timing of a response

The most important procedural element of the response is its timing,57 because the respondent has to file a response within only 20 days of the date of commencement of the proceeding. In most cases the respondent *E.I.P.R. 355 will have less then 20 days for responding as the date of commencement can be prior to the actual receipt of the complaint.58 Moreover, it the respondent requires regular legal advice and needs to look for a specialised and experienced lawyer, which is quite time-consuming. Therefore, in some justified cases, the respondent can request extra time for filing a response.59 Occasionally panels tend to extend the time period automatically without request, if the delay is of short length.60 But generally speaking, failure to submit a proper response within 20 days will be treated as a default by the respondent and can have devastating consequences. First, the panel may make its decision in the absence of any response; after delinquency the panel is not obliged to take this response into consideration, because, according to UDRP Rules 5(e), the panel shall decide the dispute solely based on the complaint if a response is not submitted. Secondly, the respondent will lose his rights to selection of a three-member panel and the designation of candidates for a three-member panel.61

Formalities of a response
The formalities of the response correspond to filing a complaint such as word- or page-limit, to submitting certain documents in hard copy and electronic form, etc.62 Usually, as the respondent as well as the complainant can only submit a plea once, the respondent should carefully respond

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specifically to the statements and allegations contained in the complaint and include any and all bases for the respondent to retain registration and use of the disputed domain name .63 Only NAF has implemented a right for any party to submit additional written statements and documents to the forum and the opposing party or parties within five calendar days of the respondent's response, following payment of a US$250 fee.64

Panel election and fees

The respondent has a right to elect a three-member panel if the complainant has elected a singlemember panel.65 Only in this case must the respondent pay one-half of the fees for the panel.66 The respondent's halffee shall be made together with the submission of his response to the provider, and, if the required payment is not made, the dispute shall be decided by a single-member panel. In all other cases, if the complainant alone has elected a three-member panel or the respondent is content with the complainant's election of a single-member panel, the complainant is exclusively liable for paying all fees.67

The panel and the decision Constitution of the panel

If neither the complainant nor the respondent has elected a three-member panel the provider appoints the panel within five calendar days of receiving the response or five days after the deadline, if no response is filed.68 However, if one of the parties has elected a three-member panel, this party shall provide names and contact details for three candidates from any ICANN-approved provider's list of panellists.

Decision by panel
In the absence of exceptional circumstances, the panel issues its decision within 14 days of its appointment,69 but no decision will be made if the parties agree prior to a settlement or it becomes unnecessary or impossible to continue the proceeding.70 Regarding UDRP Rules s.15(a), a panel has to decide on a complaint on the basis of all statements and documents submitted, in accordance with UDRP, UDRP Rules and any law that it deems applicable. If both the complainant and respondent are located in the same country, the panel should use the rules and principles of this national legal system and must to take into account the relevant court decisions of these countries.71 For the interpretation of UDRP and its rules, the panel shall orientate itself on international principle as well.72 However, especially panels from United States tend to the casual usage of their own national interpretation rules.73 In this case the parties should submit supplementary hints about their national laws in advance.74 In additional to the submitted statements and documents, panels frequently conduct their own independent internet research of the parties' websites and related activities.75 If the decision is made by a three-member panel, *E.I.P.R. 356 the panel's decision shall be made by a majority. Decisions other than transfer or cancellation of the respondent's domain name registration are not available under UDRP.76 UDRP does not provide fines or punitive damages77 or claims for obtaining information about other domain names.78 After issuing the decision, the provider forwards the decision to the parties, the registrar, and ICANN within three days79; additionally this information will be immediately published on the provider's website.80 Enforcement of the decision The panel's decision is enforced by the ICANN-approved registrar where the respondent has registered his domain name. The registrar is required to transfer the domain name 10 business days after receiving the panel's decision, unless the registrar receives appropriate documentation81 from the respondent indicating that he has instituted civil proceedings against the complainant in a jurisdiction to which the complainant has been submitted.82 Only a few respondents tend to initiate a complaint against the former complainant.83 However, the panel's decision will not implemented until the provider receives evidence that the lawsuit has been settled between the parties, that the lawsuit has been dismissed or withdrawn, or that a court decision has been issued in favour of the complainant.84

Time duration of UDRP proceedings

Theoretically it is possible to finish a regular UDRP case between 47 and 57 days (depending on a single or three-member panel) from the submission of the complaint until the issuance of a decision and 10 more days until the transfer or cancellation of a domain name.85 The duration may be shorter if the respondent files his response in less than the 20 days given him under UDRP. In fact, the real

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time duration in UDRP cases86 is usually not much longer than the theoretical time frames of 47 to 57 days and, in some cases, is even shorter.87

The Claim Provisions

As mentioned above, the complainant in a UDRP case has to establish all three elements of the abusive registration claim in order to win the lawsuit as follows: (1) the respondent's domain name is identical or confusingly similar to the complainant's trade mark; (2) the respondent lacks any rights or legitimate interest in the domain name; and (3) the respondent must have registered and must be using the domain name in bad faith.88 This means the complainant is charged with the initial burden of proving these three elements. As a defence and reverse to the complainant, the respondent must demonstrate his rights or legitimate interests to the domain name in regard to UDRP s.4(c)(i)-(iii) by showing only one of the following no comprehensive three circumstances: (1) a bona fide use of the domain name; (2) a common use of the domain name in connection with domain name holder; or (3) a legitimate non-commercial or fair use of the domain name.89

The complainant's trade mark rights

First of all the complainant must show his trade mark right. But the UDRP does not expressly define trade mark or service mark. But regarding UDRP Rules s.15(a), a panel has to decide on a complaint on the basis of all statements and documents submitted in accordance with UDRP, the UDRP Rules and any law that it deems applicable. If the parties are located in the same or in different countries, the panel shall use national rules and national principles and shall take into account relevant national court decisions.90 For interpretation of the UDRP and its rules, the panel shall orientate itself on international principle as well as on reports and recommendations that gave rise to the UDRP. The brief history of the UDRP shows that the *E.I.P.R. 357 policy is intended for only a small, special class of disputes involving abusive registration by cyber squatting.91 According to the main source of UDRP, the Final Report of the WIPO Internet Domain Name Process, trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure because the law with respect to trade names, geographical indications and personality rights is less evenly harmonized throughout the world, although international norms do exist requiring the protection of trade names (sec.) 132 and geographical indications (sec.) 133 .92 As we will see, regardless of limitation, few UDRP cases have broadened the narrow scope of the UDRP.93 providing protection under UDRP.94 It does not matter in which country the trade mark is registered. Any trade mark registered in a national or international patent office applies to UDRP.95 A certificate of registration is sufficient evidence for such a registered trade mark. In several cases, including some of the conflicting trade name disputes, the panel ruled in favour of the respondent but noted that the complainant could have had a good chance for trade mark infringement in a court trial.96 The panels in these cases have interpreted UDRP correctly according to its wording and brief history, and thus rightly reflect the fact that UDRP is narrow in scope and demands bad faith, which is not required in a usual trade mark conflict.97 Madonna.com was an exception. In this case the respondent lost his domain madonna.com to the well-known pop singer Madonna (who registered a US mark Madonna), despite having a Tunisian trade mark of Madonna, because the panel held the respondent's registration of a Tunisian trade mark to be shady, given the presumed lack of severity involved in the process of securing a trade mark in Tunisia.98 Although UDRP does not distinguish between different kinds of trade marks and does not have the task of overtaking the role of a civil court to decide a dispute between two registered trade marks, the panel ruled last but not least, correctly in favour of the complainant, because the respondent had acquired the Tunisian trade mark in bad faith because it appears to be a pretence to justify an abusive domain name registration. 99

The registered trademark A registered trade mark or service mark is the classical right of

The common law trade mark

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Common law trade marks apply to UDRP s.4(a)(i) as well.100 In countries such as the United States or United Kingdom, common law trade marks are acquired through the use of a considerable period of time of a trade mark, even if it is unregistered. Therefore, if a product is sold under a specific brand name, common law trade mark rights have been created. But common law trade mark rights are limited to the local area in which the brand name is used.101 Generally in the United Kingdom in the case of a civil proceeding, these common law rights could be enforced only under an action of passing off .102 This is sometimes a difficult action to prove. For the purpose of UDRP, the complainant may only have to present a considerable number of documents to prove his common law trade mark right.103 But in many other countries there is no possibility of acquiring any rights to a trade mark through usage. For example, no common law trade mark rights exist in the Benelux countries.104 Nevertheless, UDRP panels have expanded common law trade mark protection under UDRP s.4(a)(i) to claimants from the Benelux countries, and it seems that the panel is trying interpret UDRP more and more independently. In the case of the State of the Netherlands v Goldnames Inc, the complainant alleged a common law mark Staten-Generaal, even though in the Netherlands, no common law trade mark *E.I.P.R. 358 exists.105 However, the panel held that the complainant's mark Staten-Generaal (i.e., in English, States General) represents the Dutch state and is reasonably well known throughout the world, as well as within the Netherlands and that this might be viewed as having legally protectable rights in the name.106 There are a few other cases which have widened the scope of UDRP to (unregistered) names of some well-known people as protectable common law trade marks, as per the statement in the section Personality rights below. Generally, in the practice of UDRP, common law trade mark rights have been accepted if they have been used for a longer timeperiod of four,107 six108 or 13109 years for their own products, or only in a time period of few weeks, if the products have been promoted very well in different media.110

Trade names
Trade names are defined as names describing firms (not goods like trade marks) and are not registered in any national or international patent office.111 According to the Final Report of the WIPO Internet Domain Name Process 112 and Second Staff Report on Implementation Documents for the UDRP ,113 trade names are not protected under UDRP. In fact UDRP panels have included trade names as common law trade marks under UDRP protection, for instance, American Singles ,114 Seekamerika ,115 BuyPc.com ,116 Dr.Math ,117 and others.

Personality rights
Because of the discrepancies throughout the world in the application of personality rights, the Final Report of the WIPO Internet Domain Name Process explicitly excluded personality rights for the purposes of the administrative procedure of the UDRP.118 But in practice panellists have included personality rights of wellknown people such as actresses, writers and others in the protection of UDRP and have treated these personality rights as common law trade mark rights. In jeanettewinterson.com, 119 the well-known UK author Jeanette Winterson did not have a registered trade mark in her name, like the famous actress Madonna (US trade mark Madonna).120 The panellist ruled that the UDRP Rules do not require that the complainant's trademark be registered by a government authority or agency for such a right to exist . Ignoring the personality rights exclusion found in the Final Report, the panellist turned to English common law, because both parties were domiciled in the United Kingdom, and held that there were common law trade mark rights in the real name Jeanette Winterson.121 For determination of the complainant's claim the panellist referred not to the important paragraph 167 where the limitation for personality rights was laid down but to the general paras 149-150 of WIPO's Final Report on the Internet Domain Name Process.122 In later decisions on the personality rights of the US actress Julia Roberts,123 the UK author Margaret Drab *E.I.P.R. 359 ble and the Swiss actress Isabelle Adjani, some panels have simply relied on the Winterson decision even though there are no judicial precedents.124 Only rarely have panels discussed the obvious problem between the limitation of personality rights laid down in the Final Report of the WIPO Internet Domain Name Process on the one hand and an a number of decisions under UDRP in which the panel has treated the name of a famous person as constituting an unregistered trade mark or service mark sufficient for the purposes of UDRP s.4(a)(i). In sting.com, 125 the panellist tried to find a balance in this conflict.126 He argued correctly that in adopting the procedure proposed in the WIPO Report, ICANN did not vary this limitation on its application. It must be concluded, therefore, that ICANN did not intend the procedure to apply to personality rights .127 The same problem has arisen in regard to names of universities. In the practice of UDRP, some panels have treated university names as trade marks. With incredibly weak and short-sighted

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determination the panel ruled in oxford-university.com that the complainant's rights and legitimate interests in the name OXFORD UNIVERSITY are manifestly long-standing and settled .128 In this decision there was no argument or doubt about the limited protection of names under UDRP found in the Final WIPO Report. In universityofalberta .com, the panel followed the complainant's argument that he has a trade mark under statutory law of the University of Alberta and Canadian trade mark law.129 Following this UDRP practice, the panel in uni-stuttart .com ruled that the complainants name enjoys a legal protection equivalent to trade mark or service mark protection and must beconsidered as being covered by the UDRP in oxford-university.com and universityof alberta.com. The panel argued that the complainant has statutory rights in Germany namely in Universitt Stuttgart under which the complainant is internationally known,130 and ignored any internal limitation applying to personality rights. As has been seen in the practice of the UDRP, there is an increasing tendency to include the legal protection of trade names, names or personality rights under the UDRP. While the names of universities and well-known persons already fall under the UDRP today, the question arises whether this cannot be valid for names of cities and even for all companies and individual names.131 It is clear that the UDRP has already lost and will completely lose its limitation for abusive cases of cybersquatting and cyber piracy, if panels do not respect the internal limitations.132

Geographical names
Like personality rights, geographic names (e.g., Berlin, Amsterdam, Russia) were explicitly excluded from the scope of the UDRP in the Final Report of the WIPO Internet Domain Name Process.133 In the practice of UDRP, exceptions were held if geographical names were registered as trade marks, as in barcelona.com 134 and stmoritz.com. 135 In cases where complainants did not register geographical names as trade marks, however, geographical names may nonetheless qualify for protection as (unregistered) trade marks under UDRP, if complainants show that the geographical names have become distinctive for the goods or services of a particular trader.136 In this respect, geographical names may be protected as trade marks in the same way as descriptive or generic names have shown to have become distinctive.137 But the fact that a trade mark may also be a geographical indication means that the trade mark owner cannot claim exclusive use of the mark.138 It is therefore a question of evidence in each case as to whether a complainant has proven that the geographical name qualifies as a trade mark and as to whether the *E.I.P.R. 360 elements of illegitimacy and bad faith are established.139

The respondent's identical or confusingly similar domain name

The respondent's domain name must be identical or confusingly similar to the complainant's trade mark (registered or common trade mark).140 While some experts have argued that the meaning of the confusingly similar element might be assessed in relation to the interpretation of likelihood of confusion in UDRP s.4(b)(iv),141 others are of the contrary opinion, that the identity or confusing similarity standard is not coexistent with the traditional trade mark analysis of likelihood of confusion .142 In fact, in the cases of the determining a identical or confusingly similar domain name, panels decide on a traditional interpretation of trade mark law principles (similarities in letters, the same meaning or understanding).143 For this reason, in the practice of UDRP, the respondents domain name has been held identically or confusingly similarity, even if it differs from the complainants mark only in one letter144 or a suffix ( sucks 145 and others146). But in some cases the panels have ruled inconsistently. Many panels have expressly held that the identical or confusingly similar element may be satisfied if the trade mark and domain name are identical, even if there is no likelihood of confusion.147 In a different way, the panel in Newport News, Inc v VCV Internet conducted a classic trade mark analysis of likelihood of confusion and concluded that the complainant had not met its burden under the identity or confusing similarity standard, although he had recognised that the domain name newportnews.com was for all practical purposes identical to the complainant's Newport News trade mark.148 UDRP should clarify the analysis required to establish identity or confusing similarity in order to prevent further inconsistent decisions. Nevertheless, in most cases, the identical or confusingly similar element usually generates less problems than the legitimate interest and bad faith elements.149

No respondent's right or legitimate interest

In an administrative proceeding the complainant must prove that the respondent has no rights or legitimate interests in respect to the domain name according to UDRP s.4(a)(ii). Most of the panellists accept as proof this negative feature, if the complainant presents the fact that the respondent does not have a corresponding trade mark right or that the complainant's trade mark has a well-known

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reputation, so that the respondent must have known its existence.150 As a subsequent defence and rebuttal of the complainant, the respondent must demonstrate his rights to and legitimate interest in the domain name for purposes of UDRP s.4(a)(ii) according to a no comprehensive enumeration of three circumstances in UDRP s.4(c)(i)-(iii) by showing only one.

Respondent's own trade mark rights or derivate rights

Undoubtedly the respondent owns rights or legitimate interests regarding UDRP s.4(a)(ii) if he can prove his own trade mark rights identical to the domain name.151 But the respondent's rights or legitimate interest may have been acquired before the notice of the dispute.152 In any case, the panel in madonna.com 153 held that the respondent's Tunisian trade mark of Madonna, which he had acquired before notice of the dispute, did not give a right to and legitimate interests in the domain name Madonna.com because the Tunisian trade mark office do not perform substantive examination of infringement in jurisdictions outside Tunisia . Because the respondent did not have any connection to Tunisia the panel ruled correct that under the circumstances, *E.I.P.R. 361 some might view Respondent's Tunisian registration itself as evidence of bad faith because it appears to be a pretense to justify an abusive domain name registration .154 Although the UDRP decision did not give a judicial precedent, panels will probably consider Tunisian trade mark rights under UDRP as insufficient rights or interest if the owner is located in an other country and has no connection with or business in Tunisia.155 Besides his own trade mark rights the respondent can have a right or legitimate interest as well if he has derived the domain name from his own marks, as in the case Exclaim Technologies v Net Exclaimation disputing the domain name exclaim.com and the derivative of the respondent's name Net Exclaimation .156

Bona fide use of the domain name for offering goods and services
According to UDRP s.4(c)(i) the respondent shall prove that the domain name has been actively used in connection with a bona fide offering of goods or services before any notice of the dispute.157 The domain registration only is insufficient for a prior use; but if the respondent has used the domain name for addressing a website, for email addresses, etc., panels have considered this activity as a prior use, and also if the respondent has offered the domain name for sale to the complainant or someone else. In most UDRP cases,158 panels have ruled that even registration of multiple (only) generic and descriptive domain names as an offering of sale is a legitimate business activity, giving a legitimate interest to the respondent regarding UDRP s.4(c)(i).159 As a common defence of the respondent, the argument that the domain name was registered because of a generic or descriptive name for selling corresponding goods or services has became very popular. Most of the respondents alleged that they had already made preparations to use the generic domain name for the bona fide offering of goods or services, and panels have ruled in their favour.160 Against this broad interpretation of a legitimate interest , some panels have determined a more restrictive interpretation.161 In libro.com, 162 the respondent alleged that the complainant's trade mark Libro is the common word for book in the Spanish and Italian languages and had registered the domain name with the intention of using the domain name to establish a virtual book store by giving no evidence of facts that indicate that he had made preparations to use the domain name for a virtual book store. In fact, the respondent only used the address www.libro.com for redirecting users to its website at restaurants.com. 163 Therefore the panel in libro.com ruled absolutely correctly that the only assertion of making preparations to use the domain name for the bona fide offering of goods or services is the insufficient demonstration of rights or legitimate interests required by paragraph 4(a).164

Commonly known by the domain name

The respondent can prove his rights or legitimate interests as well by showing that he is commonly known under the domain name, even though the respondent has acquired no trade mark or service mark rights. The commonly known requirement will normally not be an onerous requirement to be proven, and does not require evidence of an extensive international reputation, but simply consists of facts from the specific market in which the respondent deals.165 For instance, in sixnet.com, the respondent's use as a Canadian internet provider of a domain name for its website in a two-year period (1996-1998) was sufficient for commonly *E.I.P.R. 362 known .166 In penguin.org, 167 the respondent was able to keep penguin.org, because his nickname was Penguin, and in venesign.com, the respondent had legitimate interest in venesign.com , because that domain name corresponded to its company name VeneSign CA .168

Legitimate non-commercial or fair use of a domain name

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According to UDRP s.4(c)(iii) a respondent can show legitimate interest in his domain name, if he is making legitimate non-commercial or fair use of the domain name. Even personal reasons are sufficient, as in maruti.com, where the panel held, that the respondent's domain name registration, in accordance with the name of a member of his family for family purposes, was fair and thus a legitimate interest.169 In UDRP practice the question has arisen whether respondents who had registered sucks domain names (e.g. walmartcanadasucks.com) for protesting against the business practices of a company (e.g. Wal-Mart Stores), could have a legitimate interest in the sucks domain name as a freedom of speech. In most of the decisions, complainants have prevailed, because the panels have found a sucks domain name to be confusingly similar to the complainant's trade mark. In the opinion of these panels, the freedom of speech does not extend to the registration and use of an offensive domain name according to the complainant's trade mark of the target.170 However, in a number of other cases panels have held the contrary opinion, declining to find a sucks domain name confusingly similar to the complainant's trade mark.171 The panel in Lockheed Martin Corporation v Dan Parisi held that a sucks domain cannot be considered confusingly similar to the trade mark.172 Freedom of speech is a particular US Constitution notion, and it does not automatically apply to all countries and all respondents. Although, freedom of speech is not listed as one of the examples as a right or legitimate interest in a domain name, the list in UDRP s.4(c) is not exclusive, and panels are free to consider the exercise of free speech for criticism as a right or legitimate interest in the domain name. Moreover, the internet is, above all, a framework for global communication, and the right to free speech should be one of the foundations of internet law.173 In addition, relative to the current nature of the internet and how users conduct internet searches it is more convinced that sucks domain names are not confusingly similar to the complainant's trade mark because, generally, a user of an internet search engine will be able to readily distinguish the respondent's sucks site for criticism from the complainant's sites for goods or services. It should be clarified that sucks domain names cannot be confusingly similar to trade marks but sucks domain names may possibly be registered in bad faith if the respondent only disturbs the business of the complainant and does not express criticism.

The bad faith requirement Regarding UDRP s.4(a), the complainant bears the burden of showing
that first, the respondent has registered the domain name in bad faith and secondly, that the respondent is using the domain name in bad faith. If the complainant fails to prove both cumulative circumstances, the registration and use in bad faith, he cannot claim the transfer of the respondent's domain name and will lose the case.174 A vivid case is miele.net, 175 where the panel denied transfer of the domain name. The respondent registered the domain name to promote his business as authorised by the complainant as the trade mark owner whose products he was selling with the full authority of the trade mark not in bad faith. The later (only) use of the domain name in bad faith was not sufficient according to UDRP s.4(b). In telaxis.com, 176 the claimant failed to prove the requirement for bad faith registration and lost. Although the respondent has redirected the disputed domain names to the websites of the claimant's competitors or to pornographic websites, which is surely a bad faith use, the respondent's registration of the domain name telaxis.com was not in bad faith because under the preliminary website established by the respondent at www.telaxis.com he showed use or *E.I.P.R. 363 demonstrable preparations to use in the offering of real estate services. The UDRP provides in s.4(b)(i)-(iii) three examples for typical registrations in bad faith and in s.4(b)(iv) one for use in bad faith, which are not exclusive. But in practice the UDRP panels often reach the bad faith determination through inference rather than direct evidence. They often use the same acts to prove that the registration and the use were in bad faith.177

Offers to sell the domain name

The primarily for selling cases are the classic cybersquatting cases, which means that some persons register domain names similar to trade marks or trade names belonging to major companies with the intent to sell them back for a hefty profit.178 It is a common assumption that a respondent who has offered to sell the domain name to the complainant in most of the cases had registered the domain name in bad faith.179 In amerianvintage.com, 180 it was considered that even offering to sell the domain name to the owner of the trade mark can be sufficient evidence for registration and use in bad faith, if the respondent has claimed more than the own registration cost (approx. US$70).181 But, if the complainant has asked to

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purchase the domain name while the respondent was not planning on selling it, as in cityutilities.com, 182 it will not be an indication of bad faith registration and use even if the respondent later, after researching the value of the domain, offered to sell it for US$75,000. In trigonbluecrossblueshield.com, 183 the panel found even that repeated refusal of the respondent to transfer the contested domain name, which it had used in a bona fide offering of goods or services, to the complainants for an amount equal to its costs of registration determined bad faith registration and use. Moreover, panels have found many of other indications justifying bad faith registration and use as primarily for selling . In amerianvintage.com the panel concluded that despite the missing response and no contrary evidence, it was possible to infer that the domain name was registered and used in bad faith even if the complainant was not sure if the respondent originally intended to register and use the domain name in bad faith .184 Besides other facts, it might be indicated as a bad faith registration and use if the respondent has taken active steps to conceal his true identity by operating under a name that is not a registered business name, or that he has failed to correct falsified contact details, in breach of his registration agreement, as in telstra.org. 185 A problem has arisen because, in some cases, the sale of domain names has been considered as a legitimate interest,186 while in other cases it has been recognised as an indication of bad faith.187 It should be clear that only consideration of all facts in each case according to the narrow scope of UDRP can help find a lawful decision. For this reason it is sometimes dangerous to refer or orientate oneself too much on previous cases, because in fact, it is very seldom that a single case is identical to another.

Pattern of blocking trade mark owners

Another way for the complainant to show the respondent's bad faith is to prove that the respondent has registered the domain in order to prevent him from reflecting his mark in the domain name, provided that he has engaged in a pattern of such conduct (according to UDRP s.4(b)(ii)). The circumstances that there must be a pattern of conduct implies that it cannot be a respondent who has registered only one domain name even if he is not a competitor.188 For that reason the panel in danmarino.com 189 correctly ordered the transfer of the domain name to the complainant, because the respondent registered at least 50 other domain names and showed a pattern of conduct . On the other hand the panel in rogaine.net 190 ignored the pattern of conduct requirement and found that, even though no pattern of preclusive registration by the respondent had been demonstrated, the respondent was acting in bad faith by preventing the complainant from using his trade mark in a corresponding domain name. He mainly justified his decision, noting that the list of bad faith circumstances of registration and use in paragraph 4(b) of the policy is illustrative, not exclusive . It is true that panels are not limited to find more circumstances than the four predefined in UDRP s.4(b) but newly created circumstances have to reach a similar level of requirement (or corresponding) and the panel shall express these new circumstances. Otherwise, we would lose the binding character of UDRP, and panels *E.I.P.R. 364 would be free to create easy provisions for registration and use in bad faith. But the panel in rogaine.net argued only briefly and did not give proper motivation for these exceptional cases.

Purpose to disrupt competitors

The bad faith requirement may be found under UDRP, where the respondent has registered his domain name primarily for the purpose of disrupting the business of a competitor . While in turquoise buffalo.com 191 both the complainant and the respondent were in fact competitors, because they were involved in the same business in the same town, in estelauder.com, 192 the panel ruled that the respondent law firm which had set up a website for consumer complaints about Estee Lauder's products was considered to be a competitor of the complainant. The panel justified its decision with a broader doubtful definition of competitor for the purpose of UDRP: one who acts in opposition to another . The fact that the terms of paragraph 4(b)(iii) of the Policy, unlike those of paragraph 4(b)(iv), do not require that a party be motivated by commercial gain , further supports the point that the genre of competition referred to need not be commercial .193 The definition of competitor in estelauder.com is nearly borderless and does not reflect the reasonable meaning of the word and the narrow scope of UDRP. To prevent other cases from adopting this broad interpretation of competitor in the future, UDRP must clarify the explicit definition of competitor .

Creating a likelihood of confusion

This example of bad faith is mentioned and defined in UDRP s.4(b)(iv) and should be interpreted in

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such a way, that the use of bad faith implies bad faith registration.194 In eddibower.com, 195 the respondent deliberately used the misspelling of the complainant's trade mark Eddie Bauer, because he directed website visitors to his website bigfoot.com where he sold clothing like the complainant. Similarly in wwwwwf.com the respondent directed visitors to his pornographic website thesexpage .com, 196 because he dropped the period between the third and fourth w on purpose, of thus misspelling of the complainant's website www.wwf.com.

Results and Conclusions

Theoretically speaking, those who accept that cybersquatting and cyber piracy are illegal and that something must definitely be done about them, must be satisfied with the effective procedure of the UDRP in solving these problems.197 Since its implementation in 1999 until April 10, 2003 a huge number of 6,813 decided and many pending cases have confirmed this opinion. In addition to many advantages, there are, however, several critical points which suggest some improvements. One of the best advantages is the speed and simplicity of the UDRP process. Theoretically it is possible to finish a case within 47 to 57 days, and in fact the actual time duration is not much longer. The restricted evidence the use of modern communication, the virtual absence of in-person hearings, and the absence of an appeal instance have accelerated UDRP cases. Additionally, the success of UDRP has been supported by the relatively low cost of the panels198 and the easy enforcement of the decisions through the approved provider. It is a gigantic step forward that the claimant need not hunt down a cyber squatter in China, Russia, or Cambodia and struggle with unfamiliar legal systems. Anyone who has conducted trials and the more than often important enforcement of the decision in foreign, underdeveloped, or insecure countries will understand the great improvement brought by UDRP.199 Furthermore, the inclusion of UDRP as ordinary contract terms in each contract between registrar and registrant has raised a problem relating to consumer protection under national law (particularly European law). In any case, according to the UDRP study by Dr Kur of the Max-Planck Institute200 issued in January 2002, it has been established, that the police is satisfactorily functioning as a matter of principle and no major flaws have been identified . As we have seen, this present article basically verifies the summary of the Max Planck Institute as well. Others, such as Prof. Geist in Fair.com 201 and Fundamentally Fair.com 202 or Prof. Mueller in Rough Justice ,203 have criticised that the UDRP is biased towards trade mark owners and promotes shopping among UDRP providers. Both Geist and Mueller argue from a point of view based almost exclusively on statistical data. Geist reviewed over 3,000 cases and Mueller, the first 500 and partially about the first 1,200 cases since the implementation of UDRP. Geist in particular argued that, in order for UDRP to be fair, complainants should not win more than 50 per cent of the time. From this point of view, it is not surprising that he found UDRP practice unfair, because complainants win between 82.9 and 63.4 per cent of the time204: Provider WIPO NAF eResolution 82.2% 82.9% 63.4% Winning rate (58%) (34%) (7%) Quota of all cases

*E.I.P.R. 365 Furthermore, he found out that cases decided by three-member panels compared to single member panels are fairer, because the winning percentage drops to 60 per cent. Therefore he suggests the adaptation to three-member panels. The Geist and Mueller analyses were legitimately criticised and rebutted around the world,205 particularly in two cases by the INTA Internet Committee (INTA--International Trademark Association) issued in May 2002.206 For instance, in Fair.com Geist did not consider in the winning percentage the fact that, in a lot of single cases, the respondent was in default and did not file a proper response. After strong critique he released an update in Fundamentally Fair.Com to bolster his analysis and results by showing statistical win rates in three-member panels in relation to one-member panels-excluding all default cases--as follows: Provider WIPO NAF eResolution 68% 69% 50% Single-member panel 48% 42% 47% Three-member panel

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68% (overall)

46% (overall)

In both analyses Geist's conclusions are based on the very doubtful understanding that three-member panels will decide more correctly than one-member panels, which is extremely biased. But it is more logical that respondents are more likely to choose three-member panels when they believe they have a viable defence and want a say in the selection of the panel. This is especially true, given the fact that respondents must pay for a portion of the dispute resolution cost if they elect to have the dispute heard in front of three-member panel 207 (according to UDRP Rules s.19). If a respondent truly believes in his right in the domain name and in the worthiness of its case, it is more likely that he is willing to pay for a better chance with a three-member panel trial. Moreover, Geist failed in his forum shopping critique as well, even when he asserts that such forumshopping has recently claimed its first victim, owing to the fact that the provider, eResolution, which had the lowest complainant winning rate declared bankruptcy.208 The fact that complainants favour certain providers is not sufficient in implying that UDRP is biased in favour of trade mark owners, and the bankruptcy of the relatively young eResolution could have other reasons, such as bad management, the laying off or leaving of key employees, etc. Geist failed to explore and analyse other potential scores of provider selection, such as the reputation of a provider, its familiarity with the provider and its rules, costs, location, etc. The bare statistics in Geist's studies hardly provide sufficient measure of the fairness of a decision making process.209 Besides the more statistically based dispute above, there are few other critical points within UDRP. Several decisions have shown that a few requirements of UDRP are unclear and panels tend to broaden the narrow scope of UDRP. ICANN should counteract the inconsistencies in some decisions and should recognise the narrow scope of UDRP for abusive cases of cybersquatting and cyber piracy. For this reason, ICANN should establish a standing committee to carry out an investigation of controversial points in UDRP and publish the results and recommendations through the transmission to panels and affected persons.210 In particular the most controversial points concern the following: (1) the condition under which trade names, personality rights and geographical names are protected under UDRP (although they were actually excluded), (2) the general condition under which a domain name is confusingly similar and, particularly, in relation to sucks domain names (UDRP s.4(a)(i)); (3) the interpretation of pattern of conduct for bad faith registration and use (UDRP s.4(b)(ii)); (4) the interpretation of competitor for bad faith registration and use (UDRP s.4(b)(iii)); (5) the interpretation and scope of the freedom of speech argument according to non-commercial or fair use (UDRP s.4(c)(iii)). Moreover, it has often been held that ICANN should implement an appellate process for all or certain decisions.211 This is understandable in the sense of preventing poor decisions, but otherwise an appellate instance would prolong the procedure. A suggestion would be to allow an appeal only in exceptionally controversial cases, which could be proven by appeal panels themselves or through other specialised panels. E.I.P.R. 2003, 25(8), 351-365
1. Until April 10, 2003 a total of 6,813 proceedings about 11,539 domain names dispositions cases by decision, 826 proceedings about 1,160 domain names cases without decision, and 714 indisposed proceedings about 714 domain names, see ICANN's statistical summary of proceedings under UDRP (on the web, April 18, 2003) www.icann.org/udrp/proceedingsstat. htm. See Techs., Inc v Int'l Elec. Communications Inc [htmlease .com] [2000] WIPO D2000-0270; Teradyne, Inc v 4Tel Tech. [4tel.com] [2000] WIPO D2000-0026; Deutsche Telekom AG v callistogermany.net [telekom.com] [2000] WIPO D2000-0951. Eddie Bauer, Inc v Paul White D/B/A Spider Inc [eddiebower .com] [2000] eResolution AF-024. 2. For a good overview about different UDRP supporters and critics see the website of Caslon Analytics Pty Ltd, an Australian internet research, analysis and strategies consultancy (on the web, April 20, 2003) www.caslon.com.au/icannprofile6.htm. See Badgley, n.89 above, at pp.369-370. World Wrestling Federation Entertainment, Inc v Matthew Bessette [www.wwf.com and www.stonecold.com] [2000] WIPO D2000-0256. 3. Especially Michael Geist, Fair.com?: An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP , http://aix1.uottawa.ca/%EBgeist/geistudrp.pdf and Fundamentally Fair.com? An Update on Bias Allegations and the ICANN UDRP , http://aix1.uottawa.ca/%EBgeist/fairupdate.pdf (both on the web, April 20, 2003).See Madonna Ciccone, p/k/a Madonna v Dan Parisi and Madonna.com [madonna.com] [2000] WIPO D2000-0847 where the panel held: A Tunisian trademark registration is issued upon application without any substantive examination. Although recognized by certain treaties, registration in Tunisia does not prevent a finding of infringement in jurisdictions outside Tunisia. Under the circumstances, some might view Respondent's Tunisian registration itself as evidence of bad faith because it appears to be a pretence to justify an abusive domain name registration. We find at a minimum that it does not evidence a legitimate interest in the disputed name under the circumstances of this case. See n.2 (2nd ser.) above, p.389. 4. Jonathan Weinberg, ICANN and the Problem of Legitimacy (2000) 50 Duke L. J. 187 at p.209 et seq. http://www.law. duke.edu/shell/cite.pl?50+Duke+L.+J.+187 (on the web, April 5, 2003).See ibid. Between an average of US$1,000 for one panellist and US$3,000 for three panellists. 5. See UDRP on ICANN's website: www.icann.org/dndr/udrp/policy.htm (on the web, March 6, 2003). The ICANN Policy applies to common law trademarks as well as registered trademarks , see s.G(3) of the WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP), http://arbiter.wipo.int/domains/guide/#g (on the web, April 18, 2003).The author has conducted several unsuccessful enforcements in Russia

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during 1997-1999 as a foreign lawyer in Moscow. 6. See the final report of the First WIPO Internet Domain Name Process from April 30, 1999 on the WIPO website, which originated through comprised extensive consultations with WIPO member states and interested circles: http://wipo2. wipo.int/process1/report/index.html (on the web, April 18, 2003).See for general information Dan Tysver, Common Law Trademark Rights (on the web, April 18, 2003) www.bitlaw.com/trademark/common.html. cf. n.10 (1st ser.) above, at p.72. See Diane Cabell, Overview of Domain Name Policy Development (on the web, September 23, 2002) www.eon.law. 7. harvard.edu/udrp/syllabus.html. For more details see David Brainbridge, Intellectual Property (4th ed., 1999), pp.671-691; David Brainbridge, Introduction to Computer Law (4th ed., 2000), p.131; T. Hart and L. Fazzani, Intellectual Property Law (2nd ed., 2000), pp.109-121.See n.3 (1st ser.) above, Fair.com? . 8. See n.7 above and Christopher Gibson, Digital Dispute Resolution--Internet Domain Names and WIPO's Role (2001) 2 Cri (Computer und Recht International) 33 at p.35.According to UDRP s.4(a)(i).n.3 (1st ser.) above, Fundamentally Fair.com? An Update on Bias Allegations and the ICANN UDRP . 9. About all approved UDRP providers see: www.icann.org/dndr/udrp/approved-providers.htm (on the web, April 16, 2003). cf. n.23 above, at pp.244, 245.See Milton Mueller, Rough Justice--An Analysis of ICANN's Uniform Dispute Resolution Policy (on the web, May 2, 2002) http://dcc.syr.edu/roughjustice.htm or http://dcc.syr .edu/report.htm (on the web, April 18, 2003). 10. See Annette Kur, UDRP (A Study by the Max-Planck Institute for Foreign and International Patent, Copyright and Competition Law, Munich in Cooperation with Institute for Intellectual Property Law and Market Law, University of Stockholm and Institute for Information Law, Technical University of Karlsruhe), p.12 (on the web, April 15, 2003) www. intellecprop.mpg.de/OnlinePublikationen/2002/UDRP-study-final-02.pdf. See State of the Netherlands v Goldnames Inc [statengeneraal. com] [2001] WIPO D20010520 where the complainant contends that Dutch law applies to this case, at least by analogy, and asserts that Dutch courts have repeatedly held that the use of a domain name similar to an institute of the Complainant (e.g. staten-generaal.nl; tweedekamer.nl) constitutes a tort vis--vis the complainant (complaint p.7) (the tweede kamer being the lower house of the Dutch parliament). Although the panel notes, however, that in a decision rendered on August 3, 2000, in a case involving the name <tweedekamer. com>, a Dutch court denied relief on the ground that no tort was committed where the registered name had the com designation as opposed to the nl designation. the panel followed last but not least the claimant's arguments.See n.3 (1st ser.) above, Fair.com? . 11. See s.1 UDRP, www.icann.org/dndr/udrp/policy.htm (on the web, April 17, 2003).See n.23 above, at pp.244, 245.For instance, n.10 (1st ser.) above, at p.72 and n.23 (1st ser.) above, at p.250. 12. See s.3.8 of ICANN's Registrar Accreditation Agreement: Domain-Name Dispute Resolution. During the term of this agreement, registrar shall have in place a policy and procedures for resolution of disputes concerning registered Names. Until different policies and procedures are established by ICANN under section 4, registrar shall comply with the Uniform Domain Name Dispute Resolution Policy identified on ICANN's website [www.icann.org/general/consensus-policies. htm]. The agreement is available under www.icann.org/registrars/ra-agreement17may01.htm (on the web, April 17, 2003).See Findings of Fact in Cedar Trade Associates v Gregg Ricks [buypr.com] [2000] FA FA0002000093633.INTA Internet Committee: The UDRP by All Accounts Works Effectively Rebuttal to Analysis and Conclusions of Professor Michael Geist in Fair.com? and Fundamentally Fair .com? , http://www.inta.org/downloads/tap_udrp_2paper2002.pdf and Ned Branthover, (INTA Internet Committee): UDRP--A Success Story: A Rebuttal to the Analysis and Conclusions of Professor Milton Mueller in Rough Justice , www.inta.org/down loads/tap_udrp_1paper2002.pdf (both on the web, April 18, 2003). 13. See n.10 above, at p.12.See s.4 (Factual Background) in MathForum.com LLC v Weiguang Huang [drmath.com] [2000] WIPO D20000743.INTA Internet Committee; n.12 (3rd ser.) above. 14. ibid. See s.3 (Factual Background) in Tourism and Corporate Automation Ltd v TSI Ltd [tourplan.com] [2000] eResolution AF-0096.See n.3 (1st ser.) above, Fundamentally Fair.com? , at p.4. 15. See ICANN's UDRP Rules, s.15(a): A panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the policy, these rules and any rules and principles of law that it deems applicable. , available at: www.icann.org/dndr/udrp/uniform-rules.htm (on the web, April 19, 2003). Complainant's OXYGEN mark has by the subject of extensive advertising and media attention, including a prominent commercial announcing the launch of the Oxygen cable television network, which aired during Super Bowl XXXIV. See s.4 (Factual Background) in Oxygen Media, LLC v Primary Source [Oxygen.com] [2000] WIPO D2002-0362.For more details see n.13 (3rd ser.) above, at pp.6-7. 16. See Art.27 of the German EGBGB (Einfhrungsgesetz zum BGB).n.42 above, at s.IV 1 d. cf. n.2 (2nd ser.) above, at p.391. 17. See n.10 above, at p.12.See s.167 of the Final Report of the WIPO Internet Domain Name Process: Thus, registrations that violate trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure. Those in favour of this form of limitation pointed out that the violation of trademarks (and service marks) was the most common form of abuse and that the law with respect to trade names, geographical indications and personality rights is less evenly harmonized throughout the world, although international norms do exist requiring the protection of trade names and geographical indications. See n.6 (1st ser.) above.See n.10 (1st ser.) above, at p.72 and n.2 (2nd ser.) above, at p.390. 18. Compare the analysis focusing on European law (particularly German and French law) in Holger P. Hestermeyer, The Invalidity of ICANN's UDRP Under National Law (2002) 3 Minnesota Intell. Prop. Review 1 at p.34, http://mipr.umn.edu/archive/pdf/hestermeyer.pdf (on the web, June 5, 2002) or http://mipr.umn.edu/archive/articles/Hestermeyer2002_03_01.htm (on the web, January 19, 2003). cf. n.96 above, s.4.1(c). 19. For more details see n.18 above, at p.39.See MatchNet plc v MAC Trading [americansingle.com] [2000] WIPO D2000-0205. 20. See n.18 above, at p.31.See SeekAmerika Network v Tariq Masood and Soole Sign [seek-amerika.com] [2000] WIPO D2000-0131. 21. See UDRP 4(k): before such mandatory administrative proceedings is commenced or after such proceeding in concluded .See Findings of Fact in Cedar Trade Associates v Gregg Ricks [buypr.com] [2000] FA FA0002000093633. 22. Detailed in n.18 above, at p.43.See s.4 (Factual Background) in MathForum.com LLC v Weiguang Huang [drmath.com] [2000] WIPO D20000743. 23. See Wolter W. Bettnik, Domain Name Dispute Resolution under the UDRP: The First Two Years [2002] E.I.P.R. 244.See n.6 (1st ser.) above, at s.167. 24. See all on the web, April 18, 2003: NAF Supplemental Rules in effect February 1, 2002 [www.arbitrationforum.com/domains/UDRP/rules.asp]; WIPO Supplemental Rules in effect December 1, 1999 [http://arbiter.wipo.int/domains/rules/supplemental.html]; CRP Supplemental Rules in effect May 22, 2000 [www.cpradr.org/ICANN_RulesAndFees.htm] and ADNDRC Supplemental Rules in effect February 28, 2002 [www.adndrc.org/adndrc/hk_supplemental_rules.html]. Jeanette Winterson v Mark Hogarth [jeanettewinterson.com/org/net] [2000] WIPO D20000235; for comments see Belinda Isaac, Editorial Personal Names and the UDRP: A Warning to Authors and Celebrities [2001] Ent. L.R. (Entertainment Law Review) 43 at pp.45-48, Database Westlaw 2002. 25. See the requirements of the UDRP Rules s.1, www.icann. org/dndr/udrp/uniform-rules.htm (on the web, April 17, 2003).See n.3 (2nd ser.), above. 26. WIPO is based in Geneva (Switzerland) and the parent body and its successors (the United International Bureau for the Protection of Intellectual Property) have been in existence since 1893. ICANN approving WIPO received on December 1, 1999 and has been the most popular dispute provider since introduction into UDRP. See UDRPinfo.com: www.udrpinfo.com/prov.php (on the web, April 18, 2003).See s.4.3 in Jeanette Winterson v Mark Hogarth, n.24 (2nd ser.) above: The complainant does not rely upon any registered trademarks but on her common law rights in her real name, JEANETTE WINTERSON. The complainant's case is that, under that mark, she has achieved international recognition and critical acclaim for the works identified above and that use of that mark has come to be recognized by the general public as indicating an association with words written and produced exclusively by the complainant. As a result, the complainant asserts that she has common law rights in the mark, which are sufficient for the purposes of this complaint. 27. NAF was founded in 1986 and is based in Minneapolis, Minnesota. This arbitration forum has experience especially in trials connected to banks, insurance companies and computer makers. NAF got ICANN accreditation on December 23, 1999.See s.6.3 The Rules do not require that the complainant's trademark be registered by a government authority or agency for such a right to exist. In this respect, the panel refers to WIPO's Final Report on the Internet Domain Name Process [April 30, 1999] paras 149-150; see n.96, above. 28. CPR was founded in 1979 and is located in New York City. CPR is a group comprised of the general counsel of 500 international corporations and the partners of a lot of major law firms. The CPR has been ICANN approved since May 20, 2000 and has conducted until April 18, 2003 only 78 gTLD cases (including pending decisions). See www.cpradr.org/ICANN_Cases.htm (on the web, April 18, 2003).See Julia Fiona Roberts v Russell Boyd [juliaroberts.com] [2000] WIPO D2000-0210. 29. ADNDRC is a joint undertaking between CIETAC (China International Economic and Trade Commission) established in April 1956 and HKIAC (Hong Kong International Arbitration Centre), established in 1985. The ADNDRC has been ICANN approved since December 3, 2001. See www.adndrc.org/adndrc/index.html (on the web, April 18, 2003).Compare Landon P. Moreland and Colby B. Springer, Celebrity Domain

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Names: ICANN Arbitration Pitfalls and Pragmatic Advice (2001) 17 Computer & High Tech. L.J. 385 at p.388 (Santa Clara Computer and High Technology Law Journal), Database Lexis Nexis 2002. 30. See UDRPinfo.com website: www.udrpinfo.com/prov.php (on the web, April 19, 2003). Gordon Sumner, p/k/a Sting v Michael Urvan [2000] [sting .com] WIPO D2000-0596. 31. See n.10 above, at p.10.See Duncan Curley, Cybersquatters Evicted? Protecting Names under the UDRP [2001] Ent. L.R. 91 at p.92, Database Westlaw 2002. 32. Some Supplemental Rules demanding in the case of hard copies additional copies (four copies ADNDRC , s.3(1)(d); four copies WIPO, s.3c; and three copies NAF, s.4b).Compare as well Jann Six, Zur Rechtspraxis des WIPOSchiedsgerichts im Streit um Domainnamen im Internet , at p.3, http://weblaw.ch/jusletter/Artikel.jsp?ArticleNr=860&language =1 (on the web, April 23, 2003). 33. UDRP Rules s.3(a)(b).Also n.97 above, at p.522. 34. For instance WIPO, http://arbiter.wipo.int/domains/guide/index.html#c (on the web, April 18, 2003).See n.96 above, s.167. 35. cf. UDRP Rules ss.13 and 15(a).See Excelentisimo Ayuntamiento de Barcelona v Barcelona.com Inc [barcelona.com] [2000] WIPO-D20000505. 36. UDRP Rules s.3(b)(iv).See Kur- und Verkehrsverein St. Moritz v StMoritz.com [stmoritz.com] [2000] WIPO D2000-0617. 37. See s.X in Christopher S. Lee, The Development of Arbitration in the Resolution of Internet Domain Name Disputes (Fall 2000) 7 Rich. J.L. & Tech. 2 [The Richmond Journal of Law and Technology], http://Richmond.edu/jolt/v7il/article2.html (on the web, April 24, 2002).See s.5 in City of Hamina v Paragon International Projects Ltd [portofhamina.com] [2001] WIPO D2001-0001. See H. Thomas Strmer, Das ICANN-Schiedsverfahren --Knigsweg bei Domainstreitigkeiten , s.III 1, 38. www.netlaw.de/newsletter/news0103/icann.htm (on the web, April 21, 2003).See s.6 in MIRC Electronics Ltd v Onida.com [onida.com] [2001] WIPO D2001-1061. 39. cf. UDRP Rules s.3(viii)(ix)(xv).See under discussion in Sorel Corporation v Domaine Sales Ltd [sorel.com] [2001] NAF FA0102000096674: Respondent has shown that Sorel is used as a geographic term. Complainant cannot claim an exclusive right to use the name SOREL as it is not exclusively associated with complainant's business. 40. See UDRP Rules ss.13 and 15(a).See s.5 in Mt. Eliza Graduate School of Business and Government Ltd v Rom Graphics [mteliza.net/com] [2000] eResolution AF-00831 and detailed also under s.5.1 in Daydream Island Resort Investments Pty Ltd v Alessandro Sorbello [daydreamisland-.com] [2001] eResolution AF-0586. 41. See WIPO Supplemental Rules s.10 (word-limit 5,000 words); NAF Supplemental Rules s.4 (a)/5(a) (word-limit 10 pages); CPR Supplemental Rules s.4 (word-limit 10 pages); ADNDRC Supplemental Rules s.13 (word-limit 3,000 words); n.24 above.See UDRP s.4(a). 42. See n.8 above.See n.23 (1st ser.) above, at p.246. 43. cf. UDRP Rules s.3(b)(xii).A. Robert Badgley, Improving ICANN in Ten Easy Steps: Ten Suggestions for ICANN to Improve its Anticybersquatting Arbitration System (Spring 2001) U. Ill. J.L. Tech. & Pol'y 109, at p.118 (University of Illinois Journal of Law, Technology & Policy), Database Lexis Nexis 2002. 44. Regarding UDRP Rules s.2(b). cf. n.62 (1st ser.) above, at p.1113 and s.6 in Televisa v Retevision Interactiva SA [eresmas.com/net/org] [2000] WIPO D2000-0264 [difference in two prefixed letters er between respondent's erasmas(.com/net/org) and the complainant's trade mark esmas]. 45. UDRP Rules s.3(b)(xiii).See BIC Deutschland GmbH & Co KG v Paul Tweed [tippex .com and tipp-ex.com] [2000] WIPO D2000-0418; Hewlett-Packard Company v Cupcake City (Hewlittpackard-Dom) [hewlittpackard. com] [2000]; Inter-IKEA Systems BV v Technology Education Center [e-ikea.com] [2000] WIPO D2000-0522. 46. cf. UDRP Rules s.1.See National Westminster Bank Plc v Purge I.T. and Purge I.T. Ltd [natwestsucks.com] [2000] WIPO D2000-0636; WalMart Stores, Inc v Walsucks and Walmarket Puerto Rico [walmartcanada sucks.com] [2000] WIPO D2000-0477. But in a subsequent Wal-Mart case a second panel ruled that it could not see how a domain name including sucks can ever be confusingly similar to a trademark ; in WalMart Stores v wallmartcanadasucks [wallmartcanadasucks.com] [2000] WIPO D2000-1104. 47. See UDRP Rules s.3(b)(xiii).See s.5.1 in EAuto, LLC v Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc [eautolamps.com] [2000] WIPO D2000-0047. For a general overview of the UDRP procedures see the WIPO's flow chart: (on the web, September 15, 2002) 48. http://arbiter.wipo.int/domains/models/udrpflowchart.doc. For example: Shirmax Retail Ltd/Dtaillants Shirmax Lte v Ces Marketing Group Inc [thyme.com] [2000] eResolution AF-0104. 49. UDRP Rules s.2(a). For all practical purposes, the panel recognizes that the domain name in question is identical to the Complainant's NEWPORT NEWS trademark ; under s.4A. in: Newport News, Inc v Vcv Internet [newportnews.com] [2000] eResolution AF-0238. 50. Detailed in n.42, above, s.III 2.See n.2 (2nd ser.) above, at p.356. 51. For further details about the different provider fees see n.10 above.See n.23 (1st ser.) above, at p.246. 52. See UDRP Rules ss.19 and 4(a). cf. Infospace.com Inc v Infospace Technolopy Co Ltd [microinfospace. com] [2000] WIPO D2000-0074; ISL Marketing AG, and the Union des Associations Europennes de Football v The European Unique Resources Organisation 2000 BV [euro2000.com] [2000] WIPO D2000-0230; Fuji Photo Film Co Ltd and Fuji Photo Film USA Inc v Fuji Publishing Group LLC [fuji.com] [2000] WIPO D2000-0409. 53. See n.42 above s.III 2.See ISL Marketing AG, n.56 (2nd ser.) above. 54. See UDRP Rules s.4(b).See Madonna Ciccone, p/k/a Madonna v Dan Parisi and Madonna.com, n.3 (2nd ser.) above. 55. According to UDRP Rules s.11 the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the Parties, or specified in the Registration Agreement . Regarding UDRP Rules s.1, The Registration Agreement means the agreement between a Registrar and a domain-name holder . ibid. 56. Some exceptional cases in Spanish: Banco Espaol de Crdito, SA v Miguel Duarte Perry Vidal Taveira [2000] WIPO D2000-0018 and Hipercor, SA v Miguel A. Gonzlez [2000] WIPO D2000-0045.See n.36 (2nd ser.) above. 57. See n.7 above. Exclaim Technologies v Net Exclaimation [exclaim.com] [2000] eResolution AF-0160. 58. cf. Torsten Bettinger, ICANN's Uniform Domain Name Dispute Resolution Policy (2000) 4 CR (Computer und Recht) 234 at p.236.See UDRP s.4(c)(i): before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. 59. According to UDRP Rules s.5(d).One exception was in J. Crew International, Inc v crew.com [crew.com] [2000] WIPO D2000-0054, where the majority of the panel determined that the respondent is a speculator because he had registered generic domain names for the purpose of selling them to someone else. One panel dissented and said that The decision creates a new and unauthorized test out of whole cloth, based on assumptions of fact by arbitrators without evidence on the subject, instead of using the appropriate and carefully crafted three step test for required evidence set out by the ICANN' Policy and Rules. In my judgment, the majority's decision prohibits conduct which was not intended to be regulated by the ICANN policy. This creates a dangerous and unauthorized situation whereby the registration and use of common generic words as domains can be prevented by trademark owners wishing to own their generic trademarks in gross . 60. See the following extract from s.6 of the case Telstra Corporation Ltd v Barry Cheng Kwok Chu, WIPO D2000-0423 WIPO received the response June 6, 2000, one day after the deadline for a response of June 5, 2000. By email on that day WIPO informed the parties' representatives of this fact and pointed out that the WIPO Centre calculates time deadlines by including the day in question and weekends in the day count and stated that any weight to be given to the lateness' of the response is solely in the discretion of the panellist. The panel determines that in all the circumstances and in the absence of any submissions by either party, it is appropriate to extend the time for receipt of a response to June 6, 2000 . cf. Car Toys, Inc v Informa Unlimited, Inc [cartoys.net] [2000] NAF 93682; Philippe Tenenhaus v Telepathy, Inc [daf.com] [2000] NAF 94355; General Machine Products Company, Inc v Prime Domains (a/k/a Telepathy, Inc) [craftwork.com] [2000] NAF 92531; Allocation Network GmbH v Steve Gregory [allocation. com] [2000] WIPO D2000-0016. 61. See n.7 above.See Shirmax Retail Ltd/Dtaillants Shirmax Lte v Ces Marketing Group Inc [thyme.com] [20000] eResolution AF-0104; Dog.com, Inc v Pets.com, Inc [dogs.com] [2000] NAF 93681; Datastream International Ltd v Micro Management Systems [datastream.com] [2000] NAF FA 0003000094382; SportSoft Golf, Inc v Sites to Behold Ltd [golfsociety.com] [2000] NAF FA0006000094976; General Machine Products Company, Inc v Prime Domains (a/k/a Telepathy, Inc) [craftwork.com] [2000] NAF 92531. 62. cf. UDRP Rules s.5(b)(i). Sd-Chemie AG v tonsil.com [tonsil.com] [2000] WIPO D2000-0376 and LIBRO AG v NA Global Link Ltd [libro.com] [2000] WIPO D 2000-0186. 63. See UDRP Rules s.5(I), but some panellists have allowed the complainant to submit additional pleadings in rebuttal to the response, even though this material was not really requested by the panel according to UDRP Rules s.12, see n.8 above. LIBRO AG v NA Global Link, n.66 (2nd ser.) above. 64. For further details see NAF Supplemental Rules s.7(a-d), n.24 above.Commented in Matthias Leistner, WIPO Arbitration and Mediation Center: Bad faith use and registration of domain names (2000) 3 Cri (Computer und Recht International) 83 at pp.83-85.

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65. See UDRP Rules s.5(b)(iv), 3(b)(iv).See s.6.2 in LIBRO AG v NA Global Link, n.67 (2nd ser.) above: While in principle the registrations of descriptive names are perfectly legal in most countries and may constitute considerable value, the mere speculation in generic domain names without showing any demonstrable evidence of plans for the bona fide use is not sufficient to prove legitimate interest in a domain name. Speculation itself is not recognized under the UDRP as a legitimate interest and the UDRP should not be interpreted to hold that mere speculation in domain names is a legitimate interest. 66. cf. UDRP Rules s.6(c). cf. n.23 (1st ser.) above, at p.248 and also Stephen Jones, A Child's First Steps: The First Six Months of Operation -The ICANN Dispute Resolution Procedure For Bad Faith Registration Of Domain Names [2001] E.I.P.R. 66 at p.73, Database Westlaw 2002. 67. See UDRP Rules s.6(c). Digitronics Inventioneering Corporation v @Six.Net Registered [sixnet.com and six.net] [2000] WIPO D2000-0008. 68. See UDRP Rules s.6(b).See Penguin Books Ltd v Katz Family [penguin.org] [2000] WIPO D2000-0204. 69. cf. UDPR Rules s.15(b).See VeneSign Inc v VeneSign C.A. [venesign.com] [2000] WIPO D2000-0303. 70. In this case the panel shall terminate the administrative proceeding, see UDRP Rules s.17(a)(b).See Maruti Udyog Ltd v Tella Rao [maruti.com] [2000] WIPO D2000-0518. 71. See n.42.See n.23 (1st ser.) above, at p.248; National Westminster Bank Plc v Purge I.T. and Purge I.T. Ltd [natwestsucks.com] [2000] WIPO D2000-0636; Wal-Mart Stores, Inc v Walsucks and Walmarket Puerto Rico [walmartcanadasucks.com and other] [2000] WIPO D20000477; Cabela's Incorporated v Cupcake Patrol [cabelassucks.com] [2000] NAF FA0006000095080. 72. See Tourism and Corporate Automation Ltd v TSI Ltd [tourplan.com] [2000] AF-0096, where the arbitrator came from the United States, the domain name holder registered his name with an Australian registrar, and the complainant was a New Zealand company with London offices.See Wal-Mart Stores v wallmartcanadasucks [wallmart canadasucks.com] [2000] WIPO D2000-1104; Bloomberg LP v Secaucus Group [michaelbloombergsucks.com] [2000] NAF 97077 (different as the majority of the panels held that the respondent's domain name is confusingly similar but not registered in bad faith because he used the website with the intention to link it to a free speech site). 73. See n.62 above, at p.1112. Lockheed Martin Corporation v Dan Parisi [lockheedsucks .com and lockheedmartinsucks.com] [2000] WIPO D2000-1015 ( Both common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word sucks or other language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark ). 74. See details in n.42 above.See in a non- sucks but related case: Bridgestone Firestone, Inc, Bridgestone/Firestone Research, Inc, and Bridgestone Corporation v Jack Myers [bridgestone-firestone.net] [2000] WIPO D2000-0190. (The respondent, a former employee of the complainant, registered the domain name bridgestone-firestone.net for publishing his pension dispute with the complainant.) 75. See s.7 of Tough Traveler, Ltd v Kelty Pack, Inc [kidcarrier .com] [2000] WIPO D2000-0783, where the panel found similar, voluminous results in its independent Nexis and Internet searches to justify the respondent's claims.Compare Dawn Osborne, ICANN Dispute Resolution -A Resounding Success! (on the web, April 20, 2003) www.domainnotes.com/news/print/0,,5281_489951,00.html; Brian Young, World Wrestling Federation Entertainment, Inc v Michael Bosman: ICANN's Dispute Resolution Policy At Work (2000) 1 N.C.J.L. & Tech 3 [North Carolina Journal of Law & Technology] (on the web, April 20, 2003) www.jdt. unc.edu/vol1/wwf.htm. 76. See UDRP s.4(i).See Miele, Inc v Absolute Air Cleaners and Purifiers [miele .net] [2000] WIPO D2000-0756. 77. See n.8 above.See Telaxis Communications Corp v William E. Minkle [telaxis.com and telaxis.net] [2000] WIPO D2000-0005. 78. See Yahoo! Inc v Eitan Zviely [atlantayahoo.com] [2000] WIPO D2000-0273, where Yahoo asked that the panel compel the respondent to produce a list of domain names he has registered incorporating and/or misspelling the Yahoo! mark. Yahoo's request was legally denied.See n.23 (1st ser.) above, at p.248. 79. See UDRP Rules s.16(a).See n.10 (1st ser.) above, at p.6, and n.79 (2nd ser.) above. 80. See UDRP Rules s.16(b). Tourism and Corporate Automation Ltd v TSI Ltd [tour plan.com] [2000] eResolution AF-0096. 81. Official documentation (such as a copy of a complaint, file stamped by the clerk of the court) , see UDRP s.4(k); compare as well n.62 above, at p.1112. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc v Big Daddy's Antiques [americanvintage.com] [2000] WIPO D2000-0004. 82. According to UDRP Rules s.3(b)(xiii) and UDRP s.4(k) and as well n.23 above, at p.244.Similar in Blue Cross and Blue Shield Association and Trigon Insurance Company, Inc d/b/a Trigon Blue Cross Blue Shield v Inter-Active Communications, Inc [trigonbluecrossblueshield.com] [2000] WIPO D2000-0788. 83. According to Bettinger, a German panellist (WIPO), only once a respondent has instituted a civil proceeding against the complainant (Information based on the first 1,000 UDRP cases until June 2000), see n.62 above, at p.237.See s.6 in City Utilities of Springfield, Missouri, aka City Utilities v Ed Davidson [cityutilities.com] [2000] WIPO D2000-0407. 84. cf. UDRP s.4(k).See Blue Cross and Blue Shield Association, n.86 (2nd ser.) above. 85. cf. WIPO's UDRP flowchart (n.52 above); but unequal the 52 days according to A. Robert Badgley, Internet Domain Names and ICANN Arbitration: The Emerging Law of Domain Name Custody Disputes , (Spring 2001) 5 Tex. Rev. Law & Pol. 343 at 354 (Texas Review of Law & Politics), Database Lexis Nexis 2002. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc, n.85 (2nd ser.) above. 86. Issuing decisions after 60-71 days the complainant was received without having received any response in following cases: 60 days in Yahoo! Inc. and GeoCities v Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc. [ayhoo.com] [2000] WIPO case No.D2000-0587; 71 days in August Storck KG v Unimetal Sanayi ve Tic AS [merci.com] [2001] WIPO D2001-1125; and after 66 days in a case where even the respondent was granted an extension of time to file his response in: Julia Fiona Roberts v Russell Boyd [juliaroberts.com] [2000] WIPO D2000-0210. Telstra Corporation Ltd v Nuclear Marshmallows [telstra.org] [2000] WIPO D2000-0003. 87. 43 days after issuance the complainant received a decision (but the response failed to submit a response in time; thus the decision was based only on the complainant's allegations), see in: August Storck KG v Tony Mohamed [werthersoriginal.com] [2000] WIPO D2000-0196 and after 36 days with even having a response in: Seiko Epson Corporation and Epson America, Inc v Distribution Purchasing & Logistics Corp [epsonstore.com] [2000] NAF FA0094219. cf. Car Toys, Inc, v Informa Unlimited, Inc [cartoys.net] [2000] NAF 93682, Philippe Tenenhaus v Telepathy, Inc [daf.com] [2000] NAF 94355; General Machine Products Company, Inc v Prime Domains (a/k/a Telepathy, Inc) [craftwork.com] [2000] NAF 92531; Allocation Network GmbH v Steve Gregory [allocation.com] [2000] WIPO D2000-0016. 88. See UDRP s.4(a).See Microsoft Corporation v Amit Mehrotra [microsoft.org] [2000] WIPO D2000-0053. 89. See Matthew E. Searing, What's In A Domain Name? A Critical Analysis Of The National And International Impact On Domain Name Cyber squatting (2000) 40 Washburn Law Journal 111 at p.133 (on the web, April 2, 2003) http://washburn law.edu/wlj/40-1/articles/sear.pdf. cf. ABN AMRO Holding NV v Cor de Ruiter [abn.info] [2001] WIPO D2001-1434. 90. See n.42 above, s.III6.See Daniel C. Marino, Jr v Video Images Productions [danmarino. com] [2000] WIPO D2000-0598 [The respondents have registered the domain name primarily for the purpose of disrupting the business of complainant in his own online ventures. The respondents appear to have registered the domain name in order to prevent the complainant from using the Dan Marino trade mark in a corresponding domain name himself. According to Network Solutions, Inc's Whois database, the respondents have registered a pattern of at least 50 other domain names]. 91. cf. s.4.1(c) of the Second Staff Report on Implementation Documents for the UDRP, www.icann.org/udrp/udrp-second-staffreport24oct99.htm (on the web, April 18, 2003). Pharmacia & Upjohn Company v Moreonline [rogaine.net] [2000] WIPO D2000-0134. 92. See n.6 above, s.167 of the Final Report of the WIPO Internet Domain Name Process. Gene Shultz Turquoise Buffalo Gallery v Matthew Leo [turquoisebuffalo.com] [2000] NAF FA0003000094359. 93. With severe criticism Stewart: arbitrators have corrupted the policy in their decisions against cyber squatters , in Ian L. Stewart, The Best Laid Plans: How Unrestrained Arbitration Decisions Have Corrupted the Uniform Domain Name Dispute Resolution Policy (May 2001) 53 Fed. Comm. L.J. 509 at p.521 (The Legal Studies Forum), Database Lexis Nexis 2002 or (on the web, April 18, 2003) www.law.indiana.edu/fclj/pubs/v53/no3/stewart.pdf. Este Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna [estelauder.com, estelauder.net] [2000] WIPO D2000-0869. 94. Explicit in UDRP s.4(a).See s.6 c in Este Lauder Inc, ibid. 95. See the following case, where an American complainant based on the word mark Infospace filed a complaint against a Chinese respondent, which did not have a registered trade mark in China but was granted legitimate interest through its business under the name Infospace. Infospace.com Inc v Infospace Technolopy Co Ltd [microinfospace.com] [2000] WIPO D2000-0074.See n.23 (1st ser.) above, at p.249. 96. Until April 10, 2003 a total of 6,813 proceedings about 11,539 domain names dispositions cases by decision, 826 proceedings about 1,160 domain names cases without decision, and 714 indisposed proceedings about 714 domain names, see ICANN's statistical summary of proceedings under UDRP (on the web, April 18, 2003) www.icann.org/udrp/proceedingsstat. htm. See Techs., Inc v Int'l Elec. Communications Inc [htmlease .com] [2000] WIPO D2000-0270; Teradyne, Inc v 4Tel Tech. [4tel.com] [2000] WIPO D2000-0026; Deutsche Telekom AG v callistogermany.net [telekom.com] [2000] WIPO D2000-0951. Eddie Bauer, Inc v Paul White D/B/A Spider Inc [eddiebower .com] [2000] eResolution AF-024.

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97. For a good overview about different UDRP supporters and critics see the website of Caslon Analytics Pty Ltd, an Australian internet research, analysis and strategies consultancy (on the web, April 20, 2003) www.caslon.com.au/icannprofile6.htm. See Badgley, n.89 above, at pp.369-370. World Wrestling Federation Entertainment, Inc v Matthew Bessette [www.wwf.com and www.stonecold.com] [2000] WIPO D20000256. Especially Michael Geist, Fair.com?: An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP , 98. http://aix1.uottawa.ca/%EBgeist/geistudrp.pdf and Fundamentally Fair.com? An Update on Bias Allegations and the ICANN UDRP , http://aix1.uottawa.ca/%EBgeist/fairupdate.pdf (both on the web, April 20, 2003).See Madonna Ciccone, p/k/a Madonna v Dan Parisi and Madonna.com [madonna.com] [2000] WIPO D2000-0847 where the panel held: A Tunisian trademark registration is issued upon application without any substantive examination. Although recognized by certain treaties, registration in Tunisia does not prevent a finding of infringement in jurisdictions outside Tunisia. Under the circumstances, some might view Respondent's Tunisian registration itself as evidence of bad faith because it appears to be a pretence to justify an abusive domain name registration. We find at a minimum that it does not evidence a legitimate interest in the disputed name under the circumstances of this case. See n.2 (2nd ser.) above, p.389. 99. Jonathan Weinberg, ICANN and the Problem of Legitimacy (2000) 50 Duke L. J. 187 at p.209 et seq. http://www.law. duke.edu/shell/cite.pl?50+Duke+L.+J.+187 (on the web, April 5, 2003).See ibid. Between an average of US$1,000 for one panellist and US$3,000 for three panellists. 100. See UDRP on ICANN's website: www.icann.org/dndr/udrp/policy.htm (on the web, March 6, 2003). The ICANN Policy applies to common law trademarks as well as registered trademarks , see s.G(3) of the WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP), http://arbiter.wipo.int/domains/guide/#g (on the web, April 18, 2003).The author has conducted several unsuccessful enforcements in Russia during 1997-1999 as a foreign lawyer in Moscow. 101. See the final report of the First WIPO Internet Domain Name Process from April 30, 1999 on the WIPO website, which originated through comprised extensive consultations with WIPO member states and interested circles: http://wipo2. wipo.int/process1/report/index.html (on the web, April 18, 2003).See for general information Dan Tysver, Common Law Trademark Rights (on the web, April 18, 2003) www.bitlaw.com/trademark/common.html. cf. n.10 (1st ser.) above, at p.72. See Diane Cabell, Overview of Domain Name Policy Development (on the web, September 23, 2002) www.eon.law. 102. harvard.edu/udrp/syllabus.html. For more details see David Brainbridge, Intellectual Property (4th ed., 1999), pp.671-691; David Brainbridge, Introduction to Computer Law (4th ed., 2000), p.131; T. Hart and L. Fazzani, Intellectual Property Law (2nd ed., 2000), pp.109-121.See n.3 (1st ser.) above, Fair.com? . 103. See n.7 above and Christopher Gibson, Digital Dispute Resolution--Internet Domain Names and WIPO's Role (2001) 2 Cri (Computer und Recht International) 33 at p.35.According to UDRP s.4(a)(i).n.3 (1st ser.) above, Fundamentally Fair.com? An Update on Bias Allegations and the ICANN UDRP . 104. About all approved UDRP providers see: www.icann.org/dndr/udrp/approved-providers.htm (on the web, April 16, 2003). cf. n.23 above, at pp.244, 245.See Milton Mueller, Rough Justice--An Analysis of ICANN's Uniform Dispute Resolution Policy (on the web, May 2, 2002) http://dcc.syr.edu/roughjustice.htm or http://dcc.syr .edu/report.htm (on the web, April 18, 2003). 105. See Annette Kur, UDRP (A Study by the Max-Planck Institute for Foreign and International Patent, Copyright and Competition Law, Munich in Cooperation with Institute for Intellectual Property Law and Market Law, University of Stockholm and Institute for Information Law, Technical University of Karlsruhe), p.12 (on the web, April 15, 2003) www. intellecprop.mpg.de/Online-Publikationen/2002/UDRP-study-final02.pdf. See State of the Netherlands v Goldnames Inc [statengeneraal. com] [2001] WIPO D2001-0520 where the complainant contends that Dutch law applies to this case, at least by analogy, and asserts that Dutch courts have repeatedly held that the use of a domain name similar to an institute of the Complainant (e.g. staten-generaal.nl; tweedekamer.nl) constitutes a tort vis--vis the complainant (complaint p.7) (the tweede kamer being the lower house of the Dutch parliament). Although the panel notes, however, that in a decision rendered on August 3, 2000, in a case involving the name <tweedekamer. com>, a Dutch court denied relief on the ground that no tort was committed where the registered name had the com designation as opposed to the nl designation. the panel followed last but not least the claimant's arguments.See n.3 (1st ser.) above, Fair.com? . 106. See s.1 UDRP, www.icann.org/dndr/udrp/policy.htm (on the web, April 17, 2003).See n.23 above, at pp.244, 245.For instance, n.10 (1st ser.) above, at p.72 and n.23 (1st ser.) above, at p.250. 107. See s.3.8 of ICANN's Registrar Accreditation Agreement: Domain-Name Dispute Resolution. During the term of this agreement, registrar shall have in place a policy and procedures for resolution of disputes concerning registered Names. Until different policies and procedures are established by ICANN under section 4, registrar shall comply with the Uniform Domain Name Dispute Resolution Policy identified on ICANN's website [www.icann.org/general/consensus-policies. htm]. The agreement is available under www.icann.org/registrars/ra-agreement17may01.htm (on the web, April 17, 2003).See Findings of Fact in Cedar Trade Associates v Gregg Ricks [buypr.com] [2000] FA FA0002000093633.INTA Internet Committee: The UDRP by All Accounts Works Effectively Rebuttal to Analysis and Conclusions of Professor Michael Geist in Fair.com? and Fundamentally Fair .com? , http://www.inta.org/downloads/tap_udrp_2paper2002.pdf and Ned Branthover, (INTA Internet Committee): UDRP--A Success Story: A Rebuttal to the Analysis and Conclusions of Professor Milton Mueller in Rough Justice , www.inta.org/down loads/tap_udrp_1paper2002.pdf (both on the web, April 18, 2003). 108. See n.10 above, at p.12.See s.4 (Factual Background) in MathForum.com LLC v Weiguang Huang [drmath.com] [2000] WIPO D20000743.INTA Internet Committee; n.12 (3rd ser.) above. 109. ibid. See s.3 (Factual Background) in Tourism and Corporate Automation Ltd v TSI Ltd [tourplan.com] [2000] eResolution AF-0096.See n.3 (1st ser.) above, Fundamentally Fair.com? , at p.4. 110. See ICANN's UDRP Rules, s.15(a): A panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the policy, these rules and any rules and principles of law that it deems applicable. , available at: www.icann.org/dndr/udrp/uniform-rules.htm (on the web, April 19, 2003). Complainant's OXYGEN mark has by the subject of extensive advertising and media attention, including a prominent commercial announcing the launch of the Oxygen cable television network, which aired during Super Bowl XXXIV. See s.4 (Factual Background) in Oxygen Media, LLC v Primary Source [Oxygen.com] [2000] WIPO D2002-0362.For more details see n.13 (3rd ser.) above, at pp.6-7. 111. See Art.27 of the German EGBGB (Einfhrungsgesetz zum BGB).n.42 above, at s.IV 1 d. cf. n.2 (2nd ser.) above, at p.391. 112. See n.10 above, at p.12.See s.167 of the Final Report of the WIPO Internet Domain Name Process: Thus, registrations that violate trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure. Those in favour of this form of limitation pointed out that the violation of trademarks (and service marks) was the most common form of abuse and that the law with respect to trade names, geographical indications and personality rights is less evenly harmonized throughout the world, although international norms do exist requiring the protection of trade names and geographical indications. See n.6 (1st ser.) above.See n.10 (1st ser.) above, at p.72 and n.2 (2nd ser.) above, at p.390. 113. Compare the analysis focusing on European law (particularly German and French law) in Holger P. Hestermeyer, The Invalidity of ICANN's UDRP Under National Law (2002) 3 Minnesota Intell. Prop. Review 1 at p.34, http://mipr.umn.edu/archive/pdf/hestermeyer.pdf (on the web, June 5, 2002) or http://mipr.umn.edu/archive/articles/Hestermeyer2002_03_01.htm (on the web, January 19, 2003). cf. n.96 above, s.4.1(c). 114. For more details see n.18 above, at p.39.See MatchNet plc v MAC Trading [americansingle.com] [2000] WIPO D2000-0205. 115. See n.18 above, at p.31.See SeekAmerika Network v Tariq Masood and Soole Sign [seek-amerika.com] [2000] WIPO D2000-0131. 116. See UDRP 4(k): before such mandatory administrative proceedings is commenced or after such proceeding in concluded .See Findings of Fact in Cedar Trade Associates v Gregg Ricks [buypr.com] [2000] FA FA0002000093633. 117. Detailed in n.18 above, at p.43.See s.4 (Factual Background) in MathForum.com LLC v Weiguang Huang [drmath.com] [2000] WIPO D2000-0743. 118. See Wolter W. Bettnik, Domain Name Dispute Resolution under the UDRP: The First Two Years [2002] E.I.P.R. 244.See n.6 (1st ser.) above, at s.167. 119. See all on the web, April 18, 2003: NAF Supplemental Rules in effect February 1, 2002 [www.arbitrationforum.com/domains/UDRP/rules.asp]; WIPO Supplemental Rules in effect December 1, 1999 [http://arbiter.wipo.int/domains/rules/supplemental.html]; CRP Supplemental Rules in effect May 22, 2000 [www.cpradr.org/ICANN_RulesAndFees.htm] and ADNDRC Supplemental Rules in effect February 28, 2002 [www.adndrc.org/adndrc/hk_supplemental_rules.html]. Jeanette Winterson v Mark Hogarth [jeanettewinterson.com/org/net] [2000] WIPO D20000235; for comments see Belinda Isaac, Editorial Personal Names and the UDRP: A Warning to Authors and Celebrities [2001] Ent. L.R. (Entertainment Law Review) 43 at pp.45-48, Database Westlaw 2002. 120. See the requirements of the UDRP Rules s.1, www.icann. org/dndr/udrp/uniform-rules.htm (on the web, April 17, 2003).See n.3 (2nd ser.), above. 121. WIPO is based in Geneva (Switzerland) and the parent body and its successors (the United International Bureau for the Protection of

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Intellectual Property) have been in existence since 1893. ICANN approving WIPO received on December 1, 1999 and has been the most popular dispute provider since introduction into UDRP. See UDRPinfo.com: www.udrpinfo.com/prov.php (on the web, April 18, 2003).See s.4.3 in Jeanette Winterson v Mark Hogarth, n.24 (2nd ser.) above: The complainant does not rely upon any registered trademarks but on her common law rights in her real name, JEANETTE WINTERSON. The complainant's case is that, under that mark, she has achieved international recognition and critical acclaim for the works identified above and that use of that mark has come to be recognized by the general public as indicating an association with words written and produced exclusively by the complainant. As a result, the complainant asserts that she has common law rights in the mark, which are sufficient for the purposes of this complaint. 122. NAF was founded in 1986 and is based in Minneapolis, Minnesota. This arbitration forum has experience especially in trials connected to banks, insurance companies and computer makers. NAF got ICANN accreditation on December 23, 1999.See s.6.3 The Rules do not require that the complainant's trademark be registered by a government authority or agency for such a right to exist. In this respect, the panel refers to WIPO's Final Report on the Internet Domain Name Process [April 30, 1999] paras 149-150; see n.96, above. 123. CPR was founded in 1979 and is located in New York City. CPR is a group comprised of the general counsel of 500 international corporations and the partners of a lot of major law firms. The CPR has been ICANN approved since May 20, 2000 and has conducted until April 18, 2003 only 78 gTLD cases (including pending decisions). See www.cpradr.org/ICANN_Cases.htm (on the web, April 18, 2003).See Julia Fiona Roberts v Russell Boyd [juliaroberts.com] [2000] WIPO D2000-0210. 124. ADNDRC is a joint undertaking between CIETAC (China International Economic and Trade Commission) established in April 1956 and HKIAC (Hong Kong International Arbitration Centre), established in 1985. The ADNDRC has been ICANN approved since December 3, 2001. See www.adndrc.org/adndrc/index.html (on the web, April 18, 2003).Compare Landon P. Moreland and Colby B. Springer, Celebrity Domain Names: ICANN Arbitration Pitfalls and Pragmatic Advice (2001) 17 Computer & High Tech. L.J. 385 at p.388 (Santa Clara Computer and High Technology Law Journal), Database Lexis Nexis 2002. 125. See UDRPinfo.com website: www.udrpinfo.com/prov.php (on the web, April 19, 2003). Gordon Sumner, p/k/a Sting v Michael Urvan [2000] [sting .com] WIPO D2000-0596. 126. See n.10 above, at p.10.See Duncan Curley, Cybersquatters Evicted? Protecting Names under the UDRP [2001] Ent. L.R. 91 at p.92, Database Westlaw 2002. 127. See NAF Supplemental Rules s.16; n.24 above.See ss.6.3-6.4 and 6.5 in Gordon Sumner, p/k/a Sting v Michael Urvan, n.30 (2nd ser.) above: In the opinion of this administrative panel, it is doubtful whether the Uniform Policy is applicable to this dispute. Although it is accepted that the complainant is world famous under the name STING, it does not follow that he has rights in STING as a trademark or service mark. Unlike the personal names in issue in the cases Julia Fiona Roberts v Russell Boyd, Jeannette Winterson v Mark Hogarth, and Steven Rattner v BuyThisDomainName (John Pepin), the personal name in this case is also a common word in the English language, with a number of different meanings. The following are the entries for sting from Merriam-Webster's Collegiate Dictionary. 128. See ADNDRC Supplemental Rules s.15, n.24 above.See s.7 (Applicable Disputes) in The Chancellor, Masters and Scholars of the University of Oxford v DR Seagle [oxford-univer sity.com] [2000] WIPO D2000-0308. 129. See WIPO Supplemental Rules s.9 and Annex d, n.24 above.See s.5 in The Board of Governors of the University of Alberta v Michael Katz d.b.a. Domain Names for Sale [universityof alberta.com] [2000] WIPO D2000-0378: The complainant asserts that because no party other than the complainant can have a legitimate right to use the domain names under Section 54(2) of the Universities Act of Alberta, RSA 1980 and Section 9 (1) (n) (ii) of the Trademarks Act of Canada, RSC 1985, the marks cannot be used by any other party than the Complainant. 130. See CRP Supplemental Rules s.13; n.24 above.See s.3 in University of Stuttgart v Domain Search [uni-stuttart. com] [2000] WIPO D20000932. 131. Some Supplemental Rules demanding in the case of hard copies additional copies (four copies ADNDRC , s.3(1)(d); four copies WIPO, s.3c; and three copies NAF, s.4b).Compare as well Jann Six, Zur Rechtspraxis des WIPOSchiedsgerichts im Streit um Domainnamen im Internet , at p.3, http://weblaw.ch/jusletter/Artikel.jsp?ArticleNr=860&language =1 (on the web, April 23, 2003). 132. UDRP Rules s.3(a)(b).Also n.97 above, at p.522. 133. For instance WIPO, http://arbiter.wipo.int/domains/guide/index.html#c (on the web, April 18, 2003).See n.96 above, s.167. 134. cf. UDRP Rules ss.13 and 15(a).See Excelentisimo Ayuntamiento de Barcelona v Barcelona.com Inc [barcelona.com] [2000] WIPO-D20000505. 135. UDRP Rules s.3(b)(iv).See Kur- und Verkehrsverein St. Moritz v StMoritz.com [stmoritz.com] [2000] WIPO D2000-0617. 136. See s.X in Christopher S. Lee, The Development of Arbitration in the Resolution of Internet Domain Name Disputes (Fall 2000) 7 Rich. J.L. & Tech. 2 [The Richmond Journal of Law and Technology], http://Richmond.edu/jolt/v7il/article2.html (on the web, April 24, 2002).See s.5 in City of Hamina v Paragon International Projects Ltd [portofhamina.com] [2001] WIPO D2001-0001. See H. Thomas Strmer, Das ICANN-Schiedsverfahren --Knigsweg bei Domainstreitigkeiten , s.III 1, 137. www.netlaw.de/newsletter/news0103/icann.htm (on the web, April 21, 2003).See s.6 in MIRC Electronics Ltd v Onida.com [onida.com] [2001] WIPO D2001-1061. 138. cf. UDRP Rules s.3(viii)(ix)(xv).See under discussion in Sorel Corporation v Domaine Sales Ltd [sorel.com] [2001] NAF FA0102000096674: Respondent has shown that Sorel is used as a geographic term. Complainant cannot claim an exclusive right to use the name SOREL as it is not exclusively associated with complainant's business. 139. See UDRP Rules ss.13 and 15(a).See s.5 in Mt. Eliza Graduate School of Business and Government Ltd v Rom Graphics [mteliza.net/com] [2000] eResolution AF-00831 and detailed also under s.5.1 in Daydream Island Resort Investments Pty Ltd v Alessandro Sorbello [daydreamisland-.com] [2001] eResolution AF-0586. 140. See WIPO Supplemental Rules s.10 (word-limit 5,000 words); NAF Supplemental Rules s.4 (a)/5(a) (word-limit 10 pages); CPR Supplemental Rules s.4 (word-limit 10 pages); ADNDRC Supplemental Rules s.13 (word-limit 3,000 words); n.24 above.See UDRP s.4(a). 141. See n.8 above.See n.23 (1st ser.) above, at p.246. 142. cf. UDRP Rules s.3(b)(xii).A. Robert Badgley, Improving ICANN in Ten Easy Steps: Ten Suggestions for ICANN to Improve its Anticybersquatting Arbitration System (Spring 2001) U. Ill. J.L. Tech. & Pol'y 109, at p.118 (University of Illinois Journal of Law, Technology & Policy), Database Lexis Nexis 2002. 143. Regarding UDRP Rules s.2(b). cf. n.62 (1st ser.) above, at p.1113 and s.6 in Televisa v Retevision Interactiva SA [eresmas.com/net/org] [2000] WIPO D2000-0264 [difference in two prefixed letters er between respondent's erasmas(.com/net/org) and the complainant's trade mark esmas]. 144. UDRP Rules s.3(b)(xiii).See BIC Deutschland GmbH & Co KG v Paul Tweed [tippex .com and tipp-ex.com] [2000] WIPO D2000-0418; Hewlett-Packard Company v Cupcake City (Hewlittpackard-Dom) [hewlittpackard. com] [2000]; Inter-IKEA Systems BV v Technology Education Center [e-ikea.com] [2000] WIPO D2000-0522. 145. cf. UDRP Rules s.1.See National Westminster Bank Plc v Purge I.T. and Purge I.T. Ltd [natwestsucks.com] [2000] WIPO D2000-0636; WalMart Stores, Inc v Walsucks and Walmarket Puerto Rico [walmartcanada sucks.com] [2000] WIPO D2000-0477. But in a subsequent Wal-Mart case a second panel ruled that it could not see how a domain name including sucks can ever be confusingly similar to a trademark ; in WalMart Stores v wallmartcanadasucks [wallmartcanadasucks.com] [2000] WIPO D2000-1104. 146. See UDRP Rules s.3(b)(xiii).See s.5.1 in EAuto, LLC v Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc [eautolamps.com] [2000] WIPO D2000-0047. For a general overview of the UDRP procedures see the WIPO's flow chart: (on the web, September 15, 2002) 147. http://arbiter.wipo.int/domains/models/udrpflowchart.doc. For example: Shirmax Retail Ltd/Dtaillants Shirmax Lte v Ces Marketing Group Inc [thyme.com] [2000] eResolution AF-0104. 148. UDRP Rules s.2(a). For all practical purposes, the panel recognizes that the domain name in question is identical to the Complainant's NEWPORT NEWS trademark ; under s.4A. in: Newport News, Inc v Vcv Internet [newportnews.com] [2000] eResolution AF-0238. 149. Detailed in n.42, above, s.III 2.See n.2 (2nd ser.) above, at p.356. 150. For further details about the different provider fees see n.10 above.See n.23 (1st ser.) above, at p.246. 151. See UDRP Rules ss.19 and 4(a). cf. Infospace.com Inc v Infospace Technolopy Co Ltd [microinfospace. com] [2000] WIPO D2000-0074; ISL Marketing AG, and the Union des Associations Europennes de Football v The European Unique Resources Organisation 2000 BV [euro2000.com] [2000] WIPO D2000-0230; Fuji Photo Film Co Ltd and Fuji Photo Film USA Inc v Fuji Publishing Group LLC [fuji.com] [2000] WIPO D2000-0409. 152. See n.42 above s.III 2.See ISL Marketing AG, n.56 (2nd ser.) above. 153. See UDRP Rules s.4(b).See Madonna Ciccone, p/k/a Madonna v Dan Parisi and Madonna.com, n.3 (2nd ser.) above. 154. According to UDRP Rules s.11 the language of the administrative proceeding shall be the language of the Registration Agreement unless otherwise agreed by the Parties, or specified in the Registration Agreement . Regarding UDRP Rules s.1, The Registration Agreement means the agreement between a Registrar and a domain-name holder . ibid.

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155. Some exceptional cases in Spanish: Banco Espaol de Crdito, SA v Miguel Duarte Perry Vidal Taveira [2000] WIPO D2000-0018 and Hipercor, SA v Miguel A. Gonzlez [2000] WIPO D2000-0045.See n.36 (2nd ser.) above. 156. See n.7 above. Exclaim Technologies v Net Exclaimation [exclaim.com] [2000] eResolution AF-0160. 157. cf. Torsten Bettinger, ICANN's Uniform Domain Name Dispute Resolution Policy (2000) 4 CR (Computer und Recht) 234 at p.236.See UDRP s.4(c)(i): before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services. 158. According to UDRP Rules s.5(d).One exception was in J. Crew International, Inc v crew.com [crew.com] [2000] WIPO D2000-0054, where the majority of the panel determined that the respondent is a speculator because he had registered generic domain names for the purpose of selling them to someone else. One panel dissented and said that The decision creates a new and unauthorized test out of whole cloth, based on assumptions of fact by arbitrators without evidence on the subject, instead of using the appropriate and carefully crafted three step test for required evidence set out by the ICANN' Policy and Rules. In my judgment, the majority's decision prohibits conduct which was not intended to be regulated by the ICANN policy. This creates a dangerous and unauthorized situation whereby the registration and use of common generic words as domains can be prevented by trademark owners wishing to own their generic trademarks in gross . 159. See the following extract from s.6 of the case Telstra Corporation Ltd v Barry Cheng Kwok Chu, WIPO D2000-0423 WIPO received the response June 6, 2000, one day after the deadline for a response of June 5, 2000. By email on that day WIPO informed the parties' representatives of this fact and pointed out that the WIPO Centre calculates time deadlines by including the day in question and weekends in the day count and stated that any weight to be given to the lateness' of the response is solely in the discretion of the panellist. The panel determines that in all the circumstances and in the absence of any submissions by either party, it is appropriate to extend the time for receipt of a response to June 6, 2000 . cf. Car Toys, Inc v Informa Unlimited, Inc [cartoys.net] [2000] NAF 93682; Philippe Tenenhaus v Telepathy, Inc [daf.com] [2000] NAF 94355; General Machine Products Company, Inc v Prime Domains (a/k/a Telepathy, Inc) [craftwork.com] [2000] NAF 92531; Allocation Network GmbH v Steve Gregory [allocation. com] [2000] WIPO D2000-0016. 160. See n.7 above.See Shirmax Retail Ltd/Dtaillants Shirmax Lte v Ces Marketing Group Inc [thyme.com] [20000] eResolution AF-0104; Dog.com, Inc v Pets.com, Inc [dogs.com] [2000] NAF 93681; Datastream International Ltd v Micro Management Systems [datastream.com] [2000] NAF FA 0003000094382; SportSoft Golf, Inc v Sites to Behold Ltd [golfsociety.com] [2000] NAF FA0006000094976; General Machine Products Company, Inc v Prime Domains (a/k/a Telepathy, Inc) [craftwork.com] [2000] NAF 92531. 161. cf. UDRP Rules s.5(b)(i). Sd-Chemie AG v tonsil.com [tonsil.com] [2000] WIPO D2000-0376 and LIBRO AG v NA Global Link Ltd [libro.com] [2000] WIPO D 2000-0186. 162. See UDRP Rules s.5(I), but some panellists have allowed the complainant to submit additional pleadings in rebuttal to the response, even though this material was not really requested by the panel according to UDRP Rules s.12, see n.8 above. LIBRO AG v NA Global Link, n.66 (2nd ser.) above. 163. For further details see NAF Supplemental Rules s.7(a-d), n.24 above.Commented in Matthias Leistner, WIPO Arbitration and Mediation Center: Bad faith use and registration of domain names (2000) 3 Cri (Computer und Recht International) 83 at pp.83-85. 164. See UDRP Rules s.5(b)(iv), 3(b)(iv).See s.6.2 in LIBRO AG v NA Global Link, n.67 (2nd ser.) above: While in principle the registrations of descriptive names are perfectly legal in most countries and may constitute considerable value, the mere speculation in generic domain names without showing any demonstrable evidence of plans for the bona fide use is not sufficient to prove legitimate interest in a domain name. Speculation itself is not recognized under the UDRP as a legitimate interest and the UDRP should not be interpreted to hold that mere speculation in domain names is a legitimate interest. 165. cf. UDRP Rules s.6(c). cf. n.23 (1st ser.) above, at p.248 and also Stephen Jones, A Child's First Steps: The First Six Months of Operation --The ICANN Dispute Resolution Procedure For Bad Faith Registration Of Domain Names [2001] E.I.P.R. 66 at p.73, Database Westlaw 2002. 166. See UDRP Rules s.6(c). Digitronics Inventioneering Corporation v @Six.Net Registered [sixnet.com and six.net] [2000] WIPO D2000-0008. 167. See UDRP Rules s.6(b).See Penguin Books Ltd v Katz Family [penguin.org] [2000] WIPO D2000-0204. 168. cf. UDPR Rules s.15(b).See VeneSign Inc v VeneSign C.A. [venesign.com] [2000] WIPO D2000-0303. 169. In this case the panel shall terminate the administrative proceeding, see UDRP Rules s.17(a)(b).See Maruti Udyog Ltd v Tella Rao [maruti.com] [2000] WIPO D2000-0518. 170. See n.42.See n.23 (1st ser.) above, at p.248; National Westminster Bank Plc v Purge I.T. and Purge I.T. Ltd [natwestsucks.com] [2000] WIPO D2000-0636; Wal-Mart Stores, Inc v Walsucks and Walmarket Puerto Rico [walmartcanadasucks.com and other] [2000] WIPO D20000477; Cabela's Incorporated v Cupcake Patrol [cabelassucks.com] [2000] NAF FA0006000095080. 171. See Tourism and Corporate Automation Ltd v TSI Ltd [tourplan.com] [2000] AF-0096, where the arbitrator came from the United States, the domain name holder registered his name with an Australian registrar, and the complainant was a New Zealand company with London offices.See Wal-Mart Stores v wallmartcanadasucks [wallmart canadasucks.com] [2000] WIPO D2000-1104; Bloomberg LP v Secaucus Group [michaelbloombergsucks.com] [2000] NAF 97077 (different as the majority of the panels held that the respondent's domain name is confusingly similar but not registered in bad faith because he used the website with the intention to link it to a free speech site). 172. See n.62 above, at p.1112. Lockheed Martin Corporation v Dan Parisi [lockheedsucks .com and lockheedmartinsucks.com] [2000] WIPO D2000-1015 ( Both common sense and a reading of the plain language of the Policy support the view that a domain name combining a trademark with the word sucks or other language clearly indicating that the domain name is not affiliated with the trademark owner cannot be considered confusingly similar to the trademark ). 173. See details in n.42 above.See in a non- sucks but related case: Bridgestone Firestone, Inc, Bridgestone/Firestone Research, Inc, and Bridgestone Corporation v Jack Myers [bridgestone-firestone.net] [2000] WIPO D2000-0190. (The respondent, a former employee of the complainant, registered the domain name bridgestone-firestone.net for publishing his pension dispute with the complainant.) 174. See s.7 of Tough Traveler, Ltd v Kelty Pack, Inc [kidcarrier .com] [2000] WIPO D2000-0783, where the panel found similar, voluminous results in its independent Nexis and Internet searches to justify the respondent's claims.Compare Dawn Osborne, ICANN Dispute Resolution -A Resounding Success! (on the web, April 20, 2003) www.domainnotes.com/news/print/0,,5281_489951,00.html; Brian Young, World Wrestling Federation Entertainment, Inc v Michael Bosman: ICANN's Dispute Resolution Policy At Work (2000) 1 N.C.J.L. & Tech 3 [North Carolina Journal of Law & Technology] (on the web, April 20, 2003) www.jdt. unc.edu/vol1/wwf.htm. 175. See UDRP s.4(i).See Miele, Inc v Absolute Air Cleaners and Purifiers [miele .net] [2000] WIPO D2000-0756. 176. See n.8 above.See Telaxis Communications Corp v William E. Minkle [telaxis.com and telaxis.net] [2000] WIPO D2000-0005. 177. See Yahoo! Inc v Eitan Zviely [atlantayahoo.com] [2000] WIPO D2000-0273, where Yahoo asked that the panel compel the respondent to produce a list of domain names he has registered incorporating and/or misspelling the Yahoo! mark. Yahoo's request was legally denied.See n.23 (1st ser.) above, at p.248. 178. See UDRP Rules s.16(a).See n.10 (1st ser.) above, at p.6, and n.79 (2nd ser.) above. 179. See UDRP Rules s.16(b). Tourism and Corporate Automation Ltd v TSI Ltd [tour plan.com] [2000] eResolution AF-0096. 180. Official documentation (such as a copy of a complaint, file stamped by the clerk of the court) , see UDRP s.4(k); compare as well n.62 above, at p.1112. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc v Big Daddy's Antiques [americanvintage.com] [2000] WIPO D2000-0004. 181. According to UDRP Rules s.3(b)(xiii) and UDRP s.4(k) and as well n.23 above, at p.244.Similar in Blue Cross and Blue Shield Association and Trigon Insurance Company, Inc d/b/a Trigon Blue Cross Blue Shield v Inter-Active Communications, Inc [trigonbluecrossblueshield.com] [2000] WIPO D2000-0788. 182. According to Bettinger, a German panellist (WIPO), only once a respondent has instituted a civil proceeding against the complainant (Information based on the first 1,000 UDRP cases until June 2000), see n.62 above, at p.237.See s.6 in City Utilities of Springfield, Missouri, aka City Utilities v Ed Davidson [cityutilities.com] [2000] WIPO D2000-0407. 183. cf. UDRP s.4(k).See Blue Cross and Blue Shield Association, n.86 (2nd ser.) above. 184. cf. WIPO's UDRP flowchart (n.52 above); but unequal the 52 days according to A. Robert Badgley, Internet Domain Names and ICANN Arbitration: The Emerging Law of Domain Name Custody Disputes , (Spring 2001) 5 Tex. Rev. Law & Pol. 343 at 354 (Texas Review of Law & Politics), Database Lexis Nexis 2002. Mary-Lynn Mondich and American Vintage Wine Biscuits, Inc, n.85 (2nd ser.) above. 185. Issuing decisions after 60-71 days the complainant was received without having received any response in following cases: 60 days in Yahoo! Inc. and GeoCities v Data Art Corp., DataArt Enterprises, Inc., Stonybrook Investments, Global Net 2000, Inc., Powerclick, Inc., and Yahoo Search, Inc. [ayhoo.com] [2000] WIPO case No.D2000-0587; 71 days in August Storck KG v Unimetal Sanayi ve Tic AS [merci.com] [2001] WIPO D2001-1125; and after 66 days in a case where even the respondent was granted an extension of time to file his response in: Julia Fiona Roberts v Russell Boyd [juliaroberts.com] [2000] WIPO D2000-0210. Telstra Corporation Ltd v Nuclear Marshmallows [telstra.org] [2000] WIPO D2000-0003. 186. 43 days after issuance the complainant received a decision (but the response failed to submit a response in time; thus the decision was based only on the complainant's allegations), see in: August Storck KG v Tony Mohamed [werthersoriginal.com] [2000] WIPO D2000-0196 and

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after 36 days with even having a response in: Seiko Epson Corporation and Epson America, Inc v Distribution Purchasing & Logistics Corp [epsonstore.com] [2000] NAF FA0094219. cf. Car Toys, Inc, v Informa Unlimited, Inc [cartoys.net] [2000] NAF 93682, Philippe Tenenhaus v Telepathy, Inc [daf.com] [2000] NAF 94355; General Machine Products Company, Inc v Prime Domains (a/k/a Telepathy, Inc) [craftwork.com] [2000] NAF 92531; Allocation Network GmbH v Steve Gregory [allocation.com] [2000] WIPO D2000-0016. 187. See UDRP s.4(a).See Microsoft Corporation v Amit Mehrotra [microsoft.org] [2000] WIPO D2000-0053. 188. See Matthew E. Searing, What's In A Domain Name? A Critical Analysis Of The National And International Impact On Domain Name Cyber squatting (2000) 40 Washburn Law Journal 111 at p.133 (on the web, April 2, 2003) http://washburn law.edu/wlj/40-1/articles/sear.pdf. cf. ABN AMRO Holding NV v Cor de Ruiter [abn.info] [2001] WIPO D2001-1434. 189. See n.42 above, s.III6.See Daniel C. Marino, Jr v Video Images Productions [danmarino. com] [2000] WIPO D2000-0598 [The respondents have registered the domain name primarily for the purpose of disrupting the business of complainant in his own online ventures. The respondents appear to have registered the domain name in order to prevent the complainant from using the Dan Marino trade mark in a corresponding domain name himself. According to Network Solutions, Inc's Whois database, the respondents have registered a pattern of at least 50 other domain names]. 190. cf. s.4.1(c) of the Second Staff Report on Implementation Documents for the UDRP, www.icann.org/udrp/udrp-second-staffreport24oct99.htm (on the web, April 18, 2003). Pharmacia & Upjohn Company v Moreonline [rogaine.net] [2000] WIPO D2000-0134. 191. See n.6 above, s.167 of the Final Report of the WIPO Internet Domain Name Process. Gene Shultz Turquoise Buffalo Gallery v Matthew Leo [turquoisebuffalo.com] [2000] NAF FA0003000094359. 192. With severe criticism Stewart: arbitrators have corrupted the policy in their decisions against cyber squatters , in Ian L. Stewart, The Best Laid Plans: How Unrestrained Arbitration Decisions Have Corrupted the Uniform Domain Name Dispute Resolution Policy (May 2001) 53 Fed. Comm. L.J. 509 at p.521 (The Legal Studies Forum), Database Lexis Nexis 2002 or (on the web, April 18, 2003) www.law.indiana.edu/fclj/pubs/v53/no3/stewart.pdf. Este Lauder Inc v estelauder.com, estelauder.net and Jeff Hanna [estelauder.com, estelauder.net] [2000] WIPO D2000-0869. 193. Explicit in UDRP s.4(a).See s.6 c in Este Lauder Inc, ibid. 194. See the following case, where an American complainant based on the word mark Infospace filed a complaint against a Chinese respondent, which did not have a registered trade mark in China but was granted legitimate interest through its business under the name Infospace. Infospace.com Inc v Infospace Technolopy Co Ltd [microinfospace.com] [2000] WIPO D2000-0074.See n.23 (1st ser.) above, at p.249. 195. Until April 10, 2003 a total of 6,813 proceedings about 11,539 domain names dispositions cases by decision, 826 proceedings about 1,160 domain names cases without decision, and 714 indisposed proceedings about 714 domain names, see ICANN's statistical summary of proceedings under UDRP (on the web, April 18, 2003) www.icann.org/udrp/proceedingsstat. htm. See Techs., Inc v Int'l Elec. Communications Inc [htmlease .com] [2000] WIPO D2000-0270; Teradyne, Inc v 4Tel Tech. [4tel.com] [2000] WIPO D2000-0026; Deutsche Telekom AG v callistogermany.net [telekom.com] [2000] WIPO D2000-0951. Eddie Bauer, Inc v Paul White D/B/A Spider Inc [eddiebower .com] [2000] eResolution AF-024. 196. For a good overview about different UDRP supporters and critics see the website of Caslon Analytics Pty Ltd, an Australian internet research, analysis and strategies consultancy (on the web, April 20, 2003) www.caslon.com.au/icannprofile6.htm. See Badgley, n.89 above, at pp.369-370. World Wrestling Federation Entertainment, Inc v Matthew Bessette [www.wwf.com and www.stonecold.com] [2000] WIPO D20000256. Especially Michael Geist, Fair.com?: An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP , 197. http://aix1.uottawa.ca/%EBgeist/geistudrp.pdf and Fundamentally Fair.com? An Update on Bias Allegations and the ICANN UDRP , http://aix1.uottawa.ca/%EBgeist/fairupdate.pdf (both on the web, April 20, 2003).See Madonna Ciccone, p/k/a Madonna v Dan Parisi and Madonna.com [madonna.com] [2000] WIPO D2000-0847 where the panel held: A Tunisian trademark registration is issued upon application without any substantive examination. Although recognized by certain treaties, registration in Tunisia does not prevent a finding of infringement in jurisdictions outside Tunisia. Under the circumstances, some might view Respondent's Tunisian registration itself as evidence of bad faith because it appears to be a pretence to justify an abusive domain name registration. We find at a minimum that it does not evidence a legitimate interest in the disputed name under the circumstances of this case. See n.2 (2nd ser.) above, p.389. 198. Jonathan Weinberg, ICANN and the Problem of Legitimacy (2000) 50 Duke L. J. 187 at p.209 et seq. http://www.law. duke.edu/shell/cite.pl?50+Duke+L.+J.+187 (on the web, April 5, 2003).See ibid. Between an average of US$1,000 for one panellist and US$3,000 for three panellists. 199. See UDRP on ICANN's website: www.icann.org/dndr/udrp/policy.htm (on the web, March 6, 2003). The ICANN Policy applies to common law trademarks as well as registered trademarks , see s.G(3) of the WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP), http://arbiter.wipo.int/domains/guide/#g (on the web, April 18, 2003).The author has conducted several unsuccessful enforcements in Russia during 1997-1999 as a foreign lawyer in Moscow. 200. See the final report of the First WIPO Internet Domain Name Process from April 30, 1999 on the WIPO website, which originated through comprised extensive consultations with WIPO member states and interested circles: http://wipo2. wipo.int/process1/report/index.html (on the web, April 18, 2003).See for general information Dan Tysver, Common Law Trademark Rights (on the web, April 18, 2003) www.bitlaw.com/trademark/common.html. cf. n.10 (1st ser.) above, at p.72. See Diane Cabell, Overview of Domain Name Policy Development (on the web, September 23, 2002) www.eon.law. 201. harvard.edu/udrp/syllabus.html. For more details see David Brainbridge, Intellectual Property (4th ed., 1999), pp.671-691; David Brainbridge, Introduction to Computer Law (4th ed., 2000), p.131; T. Hart and L. Fazzani, Intellectual Property Law (2nd ed., 2000), pp.109-121.See n.3 (1st ser.) above, Fair.com? . 202. See n.7 above and Christopher Gibson, Digital Dispute Resolution--Internet Domain Names and WIPO's Role (2001) 2 Cri (Computer und Recht International) 33 at p.35.According to UDRP s.4(a)(i).n.3 (1st ser.) above, Fundamentally Fair.com? An Update on Bias Allegations and the ICANN UDRP . 203. About all approved UDRP providers see: www.icann.org/dndr/udrp/approved-providers.htm (on the web, April 16, 2003). cf. n.23 above, at pp.244, 245.See Milton Mueller, Rough Justice--An Analysis of ICANN's Uniform Dispute Resolution Policy (on the web, May 2, 2002) http://dcc.syr.edu/roughjustice.htm or http://dcc.syr .edu/report.htm (on the web, April 18, 2003). 204. See Annette Kur, UDRP (A Study by the Max-Planck Institute for Foreign and International Patent, Copyright and Competition Law, Munich in Cooperation with Institute for Intellectual Property Law and Market Law, University of Stockholm and Institute for Information Law, Technical University of Karlsruhe), p.12 (on the web, April 15, 2003) www. intellecprop.mpg.de/Online-Publikationen/2002/UDRP-study-final02.pdf. See State of the Netherlands v Goldnames Inc [statengeneraal. com] [2001] WIPO D2001-0520 where the complainant contends that Dutch law applies to this case, at least by analogy, and asserts that Dutch courts have repeatedly held that the use of a domain name similar to an institute of the Complainant (e.g. staten-generaal.nl; tweedekamer.nl) constitutes a tort vis--vis the complainant (complaint p.7) (the tweede kamer being the lower house of the Dutch parliament). Although the panel notes, however, that in a decision rendered on August 3, 2000, in a case involving the name <tweedekamer. com>, a Dutch court denied relief on the ground that no tort was committed where the registered name had the com designation as opposed to the nl designation. the panel followed last but not least the claimant's arguments.See n.3 (1st ser.) above, Fair.com? . 205. See s.1 UDRP, www.icann.org/dndr/udrp/policy.htm (on the web, April 17, 2003).See n.23 above, at pp.244, 245.For instance, n.10 (1st ser.) above, at p.72 and n.23 (1st ser.) above, at p.250. 206. See s.3.8 of ICANN's Registrar Accreditation Agreement: Domain-Name Dispute Resolution. During the term of this agreement, registrar shall have in place a policy and procedures for resolution of disputes concerning registered Names. Until different policies and procedures are established by ICANN under section 4, registrar shall comply with the Uniform Domain Name Dispute Resolution Policy identified on ICANN's website [www.icann.org/general/consensus-policies. htm]. The agreement is available under www.icann.org/registrars/ra-agreement-17may01.htm (on the web, April 17, 2003).See Findings of Fact in Cedar Trade Associates v Gregg Ricks [buypr.com] [2000] FA FA0002000093633.INTA Internet Committee: The UDRP by All Accounts Works Effectively Rebuttal to Analysis and Conclusions of Professor Michael Geist in Fair.com? and Fundamentally Fair .com? , http://www.inta.org/downloads/tap_udrp_2paper2002.pdf and Ned Branthover, (INTA Internet Committee): UDRP--A Success Story: A Rebuttal to the Analysis and Conclusions of Professor Milton Mueller in Rough Justice , www.inta.org/down loads/tap_udrp_1paper2002.pdf (both on the web, April 18, 2003). 207. See n.10 above, at p.12.See s.4 (Factual Background) in MathForum.com LLC v Weiguang Huang [drmath.com] [2000] WIPO D20000743.INTA Internet Committee; n.12 (3rd ser.) above. 208. ibid. See s.3 (Factual Background) in Tourism and Corporate Automation Ltd v TSI Ltd [tourplan.com] [2000] eResolution AF-0096.See n.3 (1st ser.) above, Fundamentally Fair.com? , at p.4. 209. See ICANN's UDRP Rules, s.15(a): A panel shall decide a complaint on the basis of the statements and documents submitted and in

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accordance with the policy, these rules and any rules and principles of law that it deems applicable. , available at: www.icann.org/dndr/udrp/uniform-rules.htm (on the web, April 19, 2003). Complainant's OXYGEN mark has by the subject of extensive advertising and media attention, including a prominent commercial announcing the launch of the Oxygen cable television network, which aired during Super Bowl XXXIV. See s.4 (Factual Background) in Oxygen Media, LLC v Primary Source [Oxygen.com] [2000] WIPO D2002-0362.For more details see n.13 (3rd ser.) above, at pp.6-7. 210. See Art.27 of the German EGBGB (Einfhrungsgesetz zum BGB).n.42 above, at s.IV 1 d. cf. n.2 (2nd ser.) above, at p.391. 211. See n.10 above, at p.12.See s.167 of the Final Report of the WIPO Internet Domain Name Process: Thus, registrations that violate trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure. Those in favour of this form of limitation pointed out that the violation of trademarks (and service marks) was the most common form of abuse and that the law with respect to trade names, geographical indications and personality rights is less evenly harmonized throughout the world, although international norms do exist requiring the protection of trade names and geographical indications. See n.6 (1st ser.) above.See n.10 (1st ser.) above, at p.72 and n.2 (2nd ser.) above, at p.390. 2008 Sweet & Maxwell Ltd and its Contributors