**To be answered by Larre or Rob only.  Comments encouraged, but I
don't want an answer from anyone but one of these two Researcher.**

Larre and Rob, your work and knowledge in the area of domain names is
extensive, so I'm confident one of you will be able to sort this out
for me.

Scenario:

A hosting company offers "free domain name with hosting package" and
further guarantees that you can take your domain name with you if you
leave at the conclusion of your contract, but you're then responsible
for renewal fees.

Hosting company then cuts off all communications with customers. 
Customers seek hosting elsewhere, then discover that they cannot take
their domain names with them - they are registered to "A Customer of
Hosting Company".

They contact the Registrar in an attempt to get their domain name
released, and the Registrar informs them that "our hands are tied. 
You have to get Hosting Company to change the Admin contact first."

Except...Hosting Company isn't answering phones, faxes, e-mails,
certified letters, singing telegrams or letters wrapped around bricks
and heaved through their windows.  They've only posted a note to their
customers on their web page telling them to contact the Registrar.

Customers are stuck.  Registrar says "Talk to your hosting company". 
Hosting company says "Talk to the Registrar".  Dog, meet tail.  Chase.
 Discuss.

Question:

What does ICANN have to say about this?  Can ICANN force the Registrar
to release the names?  Or is the Registrar just as stuck as the
customers?

Thanks!

Thanks for asking!

You're definitely involved in a basketball match -- as it stands, the
registrar can just bounce the ball back into the hosting provider's
court without action. The ICANN Uniform Domain Name Dispute Resolution
Policy (UDRP) process can, in qualified cases, cut the Gordian Knot,
albeit at a price of about $750 - $2,000.

Under the UDRP, there are three causes that are considered grounds for
successfully challenging domain name ownership:

1. The domain name you are complaining about is identical or
confusingly similar to a trademark or service mark in which you have
rights; and
 
2. The registrant of the domain name you are complaining about has no
rights or legitimate interests in respect of that domain name; and
 
3. The registrant has registered and is using the domain name you are
complaining about in bad faith.

Keep in mind that the only remedies available under the UDRP are
cancellation of the infringing domain name or transfer of its
registration to the trademark holder. This process does not impose
fines or fees upon those found to have infringed upon your domain
name(s).

The Berkman Center for Internet and Society at Harvard Law School has
prepared a guide to the UDRP process. I have excerpted their Timeline
as an overview of the procedure:

"Timeline

The following timeline provides a sense of the pace of a UDRP
proceeding. Though the panel has the discretion to extend the time
restrictions under exceptional circumstances, in most cases, disputes
are resolved within 60 days of filing. To see the process in flowchart
form, see the WIPO Guide to the Uniform Dispute Resolution Policy,
Topics B [ http://www.arbiter.wipo.int/domains/guide/index.html#b ].

Day 0: The complainant files a complaint with the provider of his
choice and sends a copy to the respondent (holder of the domain name)
at the address shown on the registrar's Whois database. See How to
Search for Domain Name Holders and Patterns of Registration. At this
point, the provider reviews the complaint for compliance with the UDRP
rules and the provider's own supplemental rules. If the complaint is
in compliance, the proceeding continues; if the complaint is
deficient, the complainant has 5 days to remedy the deficiencies or
the complaint will be deemed withdrawn.

Day 3: By this time the provider must send a copy of the complaint to
the registrar of the domain name in question and a copy to the
respondent.

Day 23: Within 20 calendar days of the formal commencement of the
administrative proceeding, the respondent must respond specifically to
the allegations in the complaint and offer any bases for the retention
of the domain name. The respondent will be deemed to have defaulted if
no response is filed within this 20-day window.

Day 28: After the receipt of the respondent's response to the
complaint, the provider has 5 days to appoint a panel.

Day 42: A decision will be rendered within 14 days of the panel's
appointment.

Day 45: The panel has 3 days to notify the parties of the decision.

10 business days later: Unless the adversely affected domain name
holder has filed suit in a court of mutual jurisdiction by this date,
the registrar will implement the decision of the panel, canceling or
transferring the domain name according to the remedy sought in the
complaint."

Berkman Center for Internet and Society
Harvard Law School
The UDRP Process
http://cyber.law.harvard.edu/udrp/process.html

As outlined in this document, the procedure consists of the following
steps, though every step will not necessarily apply to each specific
complaint:

-- Filing a Complaint 
   http://cyber.law.harvard.edu/udrp/process.html#complaint

-- Filing a Response 
   http://cyber.law.harvard.edu/udrp/process.html#response

-- Fees and Fines
   http://cyber.law.harvard.edu/udrp/process.html#fees
 
-- Implementation of Remedies and the Right to Litigate
   http://cyber.law.harvard.edu/udrp/process.html#remedies

-- Choosing a Provider
   http://cyber.law.harvard.edu/udrp/process.html#provider
   http://www.icann.org/dndr/udrp/approved-providers.htm

-- Searching for Domain Name Holders/Patterns of Registration
   http://cyber.law.harvard.edu/udrp/process.html#search 

-- Registering Domain Names as Trademarks in the US 
   http://cyber.law.harvard.edu/udrp/process.html#trademarks

-- Registering a Domain Name
   http://cyber.law.harvard.edu/udrp/process.html#register

-- Conducting Domain Name Searches 
   http://cyber.law.harvard.edu/udrp/process.html#conduct


Considerations
**************

The UDRP assumes applicability of a trademark or service mark. Though
there is a certain amount of leeway given in terms of time from the
beginning of use and scope (in the United State) to potential
registrants of trademarks, domain names alone are not always
considered to qualify as trademarks.

If the domain name(s) in question does not infringe upon a current
trademark, then this ICANN arbitration procedure might not be the best
possible resolution option. In such cases, the dispute would need to
be pursued under the Intellectual Property and Communications Omnibus
Reform Act of 1999 (Anticybersquatting Consumer Protection Act),
ammending Section 43 of the Trademark Act of 1946 (15 U.S.C. 1125).
Though the basis for the UDRP procedures, direct civil litigation
under this statute offers a broader definition of fair use of domain
names and cyber piracy.

Oppedahl & Larson LLP
Anticybersquatting Consumer Protection Act
http://www.patents.com/acpa.htm


FURTHER STUDY
**********************************************************************

Intellectual Property in Cyberspace
Domain Names and Trademarks
http://cyber.law.harvard.edu/property00/domain/main.html

Howard University of Law
Trademarks Copyright and the Internet
Google HTML version of corresponding .pdf document
http://216.239.33.100/search?q=cache:FwvxSZONQjYC:www.law.howard.edu/info/jambar/lmtimaprez.pdfimaprez.htm


**********************************************************************

Google Search Terms:

UDRP steps
"domain name piracy"
"civil litigation" "domain name piracy"
"domain name piracy" group OR "class action" lawsuits

It's always a pleasure to assist a colleague. If anything I've said is
unclear, if you require further expansion on a particular aspect, or
have other questions about the material provided, please, feel free to
ask.

--larre

---

Clarification of Answer by larre-ga on 18 May 2003 18:23 PDT

The ICANN UDRP Complaint requirements:
**************************************

(a) Any person or entity may initiate an administrative proceeding by
submitting a complaint in accordance with the Policy and these Rules
to any Provider approved by ICANN. (Due to capacity constraints or for
other reasons, a Provider's ability to accept complaints may be
suspended at times. In that event, the Provider shall refuse the
submission. The person or entity may submit the complaint to another
Provider.)

(b) The complaint shall be submitted in hard copy and (except to the
extent not available for annexes) in electronic form and shall:

(i) Request that the complaint be submitted for decision in accordance
with the Policy and these Rules;

(ii) Provide the name, postal and e-mail addresses, and the telephone
and telefax numbers of the Complainant and of any representative
authorized to act for the Complainant in the administrative
proceeding;

(iii) Specify a preferred method for communications directed to the
Complainant in the administrative proceeding (including person to be
contacted, medium, and address information) for each of (A)
electronic-only material and (B) material including hard copy;

(iv) Designate whether Complainant elects to have the dispute decided
by a single-member or a three-member Panel and, in the event
Complainant elects a three-member Panel, provide the names and contact
details of three candidates to serve as one of the Panelists (these
candidates may be drawn from any ICANN-approved Provider's list of
panelists);

(v) Provide the name of the Respondent (domain-name holder) and all
information (including any postal and e-mail addresses and telephone
and telefax numbers) known to Complainant regarding how to contact
Respondent or any representative of Respondent, including contact
information based on pre-complaint dealings, in sufficient detail to
allow the Provider to send the complaint as described in Paragraph
2(a);

(vi) Specify the domain name(s) that is/are the subject of the
complaint;

(vii) Identify the Registrar(s) with whom the domain name(s) is/are
registered at the time the complaint is filed;

(viii) Specify the trademark(s) or service mark(s) on which the
complaint is based and, for each mark, describe the goods or services,
if any, with which the mark is used (Complainant may also separately
describe other goods and services with which it intends, at the time
the complaint is submitted, to use the mark in the future.);

(ix) Describe, in accordance with the Policy, the grounds on which the
complaint is made including, in particular,

(1) the manner in which the domain name(s) is/are identical or
confusingly similar to a trademark or service mark in which the
Complainant has rights; and

(2) why the Respondent (domain-name holder) should be considered as
having no rights or legitimate interests in respect of the domain
name(s) that is/are the subject of the complaint; and

(3) why the domain name(s) should be considered as having been
registered and being used in bad faith

(The description should, for elements (2) and (3), discuss any aspects
of Paragraphs 4(b) and 4(c) of the Policy that are applicable. The
description shall comply with any word or page limit set forth in the
Provider's Supplemental Rules.);

(x) Specify, in accordance with the Policy, the remedies sought;

(xi) Identify any other legal proceedings that have been commenced or
terminated in connection with or relating to any of the domain name(s)
that are the subject of the complaint;

(xii) State that a copy of the complaint, together with the cover
sheet as prescribed by the Provider's Supplemental Rules, has been
sent or transmitted to the Respondent (domain-name holder), in
accordance with Paragraph 2(b);

(xiii) State that Complainant will submit, with respect to any
challenges to a decision in the administrative proceeding canceling or
transferring the domain name, to the jurisdiction of the courts in at
least one specified Mutual Jurisdiction;

(xiv) Conclude with the following statement followed by the signature
of the Complainant or its authorized representative:

"Complainant agrees that its claims and remedies concerning the
registration of the domain name, the dispute, or the dispute's
resolution shall be solely against the domain-name holder and waives
all such claims and remedies against (a) the dispute-resolution
provider and panelists, except in the case of deliberate wrongdoing,
(b) the registrar, (c) the registry administrator, and (d) the
Internet Corporation for Assigned Names and Numbers, as well as their
directors, officers, employees, and agents."

"Complainant certifies that the information contained in this
Complaint is to the best of Complainant's knowledge complete and
accurate, that this Complaint is not being presented for any improper
purpose, such as to harass, and that the assertions in this Complaint
are warranted under these Rules and under applicable law, as it now
exists or as it may be extended by a good-faith and reasonable
argument."; and

(xv) Annex any documentary or other evidence, including a copy of the
Policy applicable to the domain name(s) in dispute and any trademark
or service mark registration upon which the complaint relies, together
with a schedule indexing such evidence.

Forms and templates are generally suppled by your chosen Provider. 

CPR Institute for Dispute Resolution Sample Complaint
http://www.cpradr.org/ICANN_Filing.htm

National Arbitration Forum - Model Forms
http://www.arbforum.com/domains/UDRP/forms.asp

The World Intellectual Property Organization offers an online UDRP
Complaint Submission process, as well as a downloadable Model version:

WIPO - UDRP Complaint
http://arbiter.wipo.int/domains/filing/udrp/index.html

No matter which arbitration provider is selected the following
documentation is recommended for attachment to the UDRP Complaint:

Any documentary or other evidence, including a copy of the Policy
applicable to the domain name(s) in dispute and any trademark or
service mark registration upon which the complaint relies, together
with a schedule indexing such evidence.

--larre

Thank you!  Well organized and easy to follow.  This will help immensely.

Basically what you want to do is to initate a dispute for the domain
name. With documentation, you should have absolutely no problems
winning. It might cost you some time and money though, but it will be
cheaper than going to court. There are quite a few companies that do
Domain Name Dispute Resolution and the decision of the asseser will be
binding.

tisme-ga

You can read the corrent Domain Name Dispute Resolution Policy here: 
http://www.icann.org/udrp/udrp-policy-24oct99.htm


Some companies that will help you are:
http://www.arb-forum.com/ (probably the best one) file a claim online here:
http://www.arb-forum.com/arbitration/complaint.asp

some other companies are listed here:
http://www.udrplaw.net/ReferenceCenter.htm

tisme-ga

Thanks, Missy, for the rating and the tip :) 

--l