human rights, 'arranged' marriages and nullity law: when do 'force', parental


 

 

 

204 

Denning Law Journal 2015 Vol 27 pp 204-240 

 

THE MODEL FOR A PATH FORWARD. 

A PROPOSAL FOR A MODEL LAW DEALING 

WITH CYBER-SQUATTING AND OTHER 

ABUSIVE DOMAIN NAME PRACTICES 
 

James Plotkin
 

 
 

1. INTRODUCTION 
 

The internet is without a doubt the most powerful network ever 

developed. Its connective capacity and speed are peerless. One of the 

internet‘s primary applications is and always has been e-commerce. Given 

the prevalence of online shopping,
1
 strong online presence is a 

commercial necessity, and the preferred means of identifying a business 

online is by a domain name containing the business‘ trademark. A single 

domain name can only be associated with a single website. Domain names 

are therefore a scarce resource. 

Cyber-squatters exploit this resource by registering domain names that 

are either identical or confusingly similar to well-known trademarks. They 

then attempt to sell the domain name(s) to the legitimate trademark holder 

for a profit.  

Little is written today about domain name dispute resolution and 

cyber-squatting. The majority of the literature on the subject was 

published between 2000 and 2003. This is surprising given the fact that 

the incidence of cyber-squatting has not abated since the internet‘s early 

days and has in fact been on the rise for the past nine years.
2
 

                                                      

 James Plotkin, LLB, JD jamesplotkin@gmail.com 

1
 In 2010, Canadians placed nearly 114 million orders while shopping online, 

averaging about 10 orders per person. Orders totalled $15.3 billion, with an 

average value of $1,362 per person per year. See: ‗Online Shopping‘ (Statistics 

Canada, 20 December 2012) <http://www.statcan.gc.ca/pub/11-402-

x/2012000/chap/retail-detail/retail-detail01-eng.htm> accessed 5 October 2014. 
2
 The World Intellectual Property Organization (WIPO) has received increasing 

numbers of complaints since 2005. See: ‗WIPO UDRP Domain Name Decisions 

(gTLD)‘ (World Intellectual Property Organization – Arbitration and Mediation 

Center) <http://www.wipo.int/amc/en/domains/decisionsx/> accessed 2 October 

2014. 



THE DENNING LAW JOURNAL 

 

 

205 

The current legal framework surrounding domain names comports two 

major components: 1) national trademark laws; and 2) the Internet 

Corporation for Assigned Names and Numbers (ICANN) Uniform 

Dispute Resolution Policy (UDRP).
3
 The United States is the only 

jurisdiction to enact a purpose-built piece of legislation aimed at abusive 

domain name registration practices. That law is called the 

Anticybersquatting Consumer Protection Act (ACPA).
4
 

Given that cyber-squatting is as prevalent as ever, the current 

regulatory regime is clearly inadequate to deal with this issue. Both the 

UDRP and ACPA suffer from significant shortcomings. The proposed 

solution represents a major change to the current cyber-squatting 

framework  ̠a model law dealing with cyber-squatting and other abusive 

domain name practices. This purpose-built piece of model legislation 

would create causes of action for cyber-squatting and what is known as 

reverse-domain name hijacking, the practice of instituting false cyber-

squatting claims to have a domain name transferred from a registrant.
5
  

First, this paper briefly describes the Domain Name System (DNS), 

defines cybersquatting, and presents data demonstrating a need for further 

regulation. Next the paper examines the existing legal regime, namely the 

UDRP and the ACPA.
6
 While both of these instruments are useful, they 

suffer from certain legal (and, in the case of the UDRP, empirical) 

shortcomings. Finally, this paper makes the case for a model law dealing 

with cyber-squatting and other abusive domain name practices and 

elaborates on several key provisions of the proposed model law.
7
 

                                                      
3
 ‗Uniform Domain Name Dispute Resolution Policy‘ (Internet Corporation for 

Assigned Names and Numbers, 24 October 1999) 

<https://www.icann.org/resources/pages/policy-2012-02-25-en> accessed 29 

September 2014. Note that certain country-code top level domain registries have 

established their own dispute resolution policies. These policies generally 

strongly resemble the UDRP. One such example is the Canadian Internet 

Registration Authority (CIRA): Canadian Dispute Resolution Policy (CDRP).  
4
 15 USC s1125(d) and 15 USC s1114(2)(D)(v). 

5
 Sallen v Corinthians Licenciamentos [2001] 273 F3d. 

6
 While it is beyond the scope of this paper to examine a large number of national 

trademark laws, Part 4 below briefly explains why domain names do not fit neatly 

into the trademark context.  
7
 The Author recognizes that ICANN‘s recent initiative allowing private entities 

to register their own ‗Generic Top-Level Domains (gTLDs) is perhaps a more 

current issue. It falls outside the scope of this paper and has therefore 

intentionally been excluded. This is because the process for registering these 

gTLDs is different from that relating to domain names; so too is the dispute 

resolution framework. ICANN has established a sunrise period for each new 



A PROPOSAL FOR A MODEL LAW DEALING WITH CYBER-

SQUATTING 

 

206 

This Edition of the Denning Law Journal has running through it a 

common thread: Magna Carta. While the proposals set out in this writing 

fall well short of anything resembling a ―Great Charter of the Internet‖, it 

does touch on some of the subject matter such a document would cover, 

namely property rights and access to swift justice. In that regard, it is 

fitting that this paper be included in an edition celebrating the 800
th
 

anniversary of Magna Carta, for had such a document been written today, 

it is not unreasonable to think that domain names, as digital property 

rights, may have garnered the Barons‘ attention.   

 

2. THE DNS AND CYBER-SQUATTING PRIMER 

Before delving into the current cyber-squatting legal framework, and 

potential regulatory innovations, it is useful to first briefly define exactly 

what cyber-squatting is and introduce the Domain Name System (DNS), 

the vehicle with which cyber-squatters ply their trade. This section also 

presents data demonstrating that cyber-squatting is still a problem in need 

of regulation. 

 

a. The DNS 
 

At its core, the internet, like all networks, is little more than a web of 

connections (albeit a particularly vast and complex one). In the same way 

that the postal system relies on physical addresses to identify the source 

and destination of mail, the internet relies upon ―internet protocol (IP) 

addresses‖ to identify computer systems allowing information to be 

transferred between them.
8
 

IP addresses consist of sets of numbers which themselves break down 

into binary bits.
9
 Early developers of the internet rightly thought that this 

system would be cumbersome as it is difficult for individuals to remember 

long sets of integers. The DNS was created to address this problem. A 

domain name is composed of a hierarchical set of ―labels‖ separated by 

                                                                                                                         
gTLD registration allowing trademark holders to submit claims for domains in 

the new TLD. In contrast, the present paper offers a new model for ex post 

dispute resolution. 
8
 David Lindsay, International Domain Name Law: ICANN and the UDRP (1st 

edn, Hart Publishing 2007) 3. 
9
 John Postel and A Cooper, ‗The US Domain (RFC 1480)‘ (USC/Information 

Sciences Institute, June 1993) <http://tools.ietf.org/html/rfc1480> accessed 2 

October 2014. 



THE DENNING LAW JOURNAL 

 

 

207 

periods (.).
10

 Each domain name consists of a ―top-level domain‖ (TLD) 

and a ―second-level domain‖.
 11

  

TLDs are contained in all web addresses and occupy the right-most 

portion of a domain name. There are several categories of TLDs. Among 

the most notable ones are ―generic top-level domains‖ (gTLDs) - such as 

―.com‖, ―.net‖ and ―.edu‖- and ―country-code top level domains‖ 

(ccTLDs) –like ―.ca‖, ―.us‖ and ―.eu‖. Each must be administered by a 

registry responsible for registering the second-level domains under the 

TLD.
12

 

To the left of the TLD in the domain name lays the second-level 

domain. This is the part of the domain name that bears the greatest 

significance to internet users as they are unique and identify a defined 

address space on the web. It is also the part of the domain name that is 

susceptible to cyber-squatting and is thus the subject of the present 

inquiry.
13

 

 

b. Cyber-squatting 
 

Cyber-squatting has come to connote several different activities. 

―Classic cyber-squatting‖ could be defined as the act of registering 

domain names that are either identical or confusingly similar to 

trademarks, and then attempting to sell the domain name(s) to the 

legitimate trademark holder for a profit. The U.S. Court of Appeal for the 

9
th
 Circuit offered the following definition:  

 

―Cybersquatting is the internet version of a land grab. 

Cybersquatters register well-known brand names as internet 

domain names in order to force the rightful owner of the marks to 

                                                      
10

 Paul Mockapetris, ‗Domain Names – Implementation and Specification (RFC 

1035)‘ (USC/Information Sciences Institute, 1987) 

<http://tools.ietf.org/html/rfc1035> accessed 2 October 2014. 
11

 Domain names may contain further sub-levels (third level domain, fourth level 

domain etc.), but for the purposes of this writing, only TLDs and second level 

domains are relevant.  
12

 For example, Verisign Inc is the registry responsible for the ‗.com‘ and ‗.net‘ 

gTLDs. The Canadian Internet Registration Authority (CIRA) is responsible for 

administering the ‗.ca‘ ccTLD. 
13

 From this point forward, the term domain name will reference second-level 

domains. 



A PROPOSAL FOR A MODEL LAW DEALING WITH CYBER-

SQUATTING 

 

208 

pay for the right to engage in electronic commerce under their own 

name.‖
14

 

 

A related activity known as ―typo-squatting‖ consists of registering a 

domain name that is nearly identical to an existing website, save that it 

contains a typo that people commonly make when trying to access that 

site.
15

 This is done to divert traffic from the intended website to the ―typo 

site‖ for the purposes of generating advertising revenue or gaining 

exposure for the website‘s content. Panels constituted under the UDRP 

have found that the Policy captures typo-squatting.
16

 Typo-squatting has 

also been captured by the ACPA (see Section 3C below).
17

 

―Domaining‖ is another deceitful practice by which the alleged cyber-

squatter registers a domain name (usually containing a trademark) that he 

or she believes will see a high volume of traffic with the goal of 

generating advertising revenue.
18

 Here the cyber-squatter never actually 

tries to sell the domain name, though he or she is profiting from it all the 

same. 

Cybersquatting is an international problem and has been since the 

early days of the internet. The World Intellectual Property Organization 

(WIPO) Arbitration and Mediation Center is the world‘s busiest domain 

name dispute resolution provider. Since 2000, it has handled between 

1700-2600 disputes annually with a marked uptake in complaints since 

2005.
19

 In 2013 alone, WIPO administered over 2000 domain name 

disputes.
20

  

                                                      
14

 Interstellar Starship Services, Ltd v Epix, Inc, [2002] 304 F 3d 936, 946. See 

also Harrods Ltd v Sixty Internet Domain Names [2002] 302 F3d 214, 219-20, 

238.  
15

 For example, instead of ‗YouTube‘, one may erroneously enter ‗YouTubr‘ into 

the address bar of a web browser (the ‗r‘ key is directly adjacent to the ‗e‘ key on 

a standard computer keyboard). See Christopher Clark, ‗The Truth in Domain 

Names Act of 2003 and a Preventative Measure to Combat Typosquatting‘ [2004] 

89-6 Cornell L Rev 1476, 1480. 
16

 See for example: Dell Computer Corporation v Clinical Evaluations [2002] No 

D2002-0423; Expedia, Inc v Alvaro Collazo [2003] No D2003-0716; and 

Marriott International, Inc v Seocho [2003] NAF Decision No FA149187. 
17

 Shields v Zuccarini [2001] 254 F 3d 476, 483. 
18

 See for example Teva Pharmaceutical Industries Ltd v Apex Domain Pty Ltd 

[2014] No DAU2014-0001. 
19

 ‗WIPO UDRP Domain Name Decisions (gTLD)‘ (World Intellectual Property 

Organization – Arbitration and Mediation Center) 

<http://www.wipo.int/amc/en/domains/decisionsx/> accessed 12 October 2014.  
20

 Ibid. 



THE DENNING LAW JOURNAL 

 

 

209 

The vast majority of disputes involve only a single domain name, 

though there is no limit to the number of domain names that may be the 

subject of a single UDRP proceeding.
21

 For example, in Hermes 

International v. Brian E. Nielson
22

, the sole panellist granted the transfer 

of 184 domain names to the Complainant. Multiple domain names have 

also been adjudicated in the same action under the ACPA.
23

 

Despite the fact that there are legal implements in place giving 

trademark holders the tools to combat cyber-squatting, the issue is still 

pervasive. The current regulatory framework surrounding domain names 

therefore merits closer inspection to determine if and where it comes up 

short.  

 

3. THE CURRENT SYSTEM – THE ICANN UDRP AND THE 

ACPA 

 

Domain names are currently regulated by means of a few (sometimes 

conflicting) legal regimes. Operating on a transnational level, the ICANN 

UDRP is the most important piece of the domain name regulation. This is 

because every ICANN accredited domain name registrar has incorporated 

the UDRP into the terms of its domain name registration agreements. This 

means that virtually every domain name registrant has agreed to be bound 

by the UDRP. 

The ACPA is the only purpose-built piece of national cyber-squatting 

legislation enacted as of this writing. Its broad scope of application, which 

as demonstrated below stretches far beyond the U.S., is relevant to any 

discussion on global domain name policy. This is particularly true here 

given that this paper advocates a model law approach. The opportunity to 

examine a piece of national legislation with a fifteen-year history is 

essential to plotting a path forward. 

Finally, domain names have received some protection via national 

trademark laws. As discussed more fully in Part 4 below, trademark law is 

ill-equipped to deal decisively with cyber-squatting because domain 

names are conceptually different from (though related to) trademarks 

rendering the application of certain key trademark law concepts difficult. 

 

                                                      
21

 Jean-Francois Poussard, ‗Keep Alert White Paper: Domain Name 

Cybersquatting in 2013‘ (Keep Alert, May 2014) <http://sys.to/cyb13en> 

accessed 10 October 2014. 
22

 [2013] No D2013-1407. 
23

 Harrods (n 14). 



A PROPOSAL FOR A MODEL LAW DEALING WITH CYBER-

SQUATTING 

 

210 

a. The UDRP 
 

In December of 1999, ICANN set afoot its UDRP in an effort to 

combat cyber-squatting. The UDRP was intended to provide a streamlined 

arbitration-style procedure by which a complainant, upon meeting the 

criteria set out in the Policy, could have a domain name containing its 

trademark transferred or cancelled.  

To be successful in a UDRP complaint, a complainant must show that:  

 

(i) The impugned domain name is identical or confusingly similar to a 

trademark or service mark in which the complainant has rights; 

(ii) The registrant has no rights or legitimate interests in respect of the 

domain name; and 

(iii) The registrant registered and is using the domain name in bad 

faith.
24

 

Section 4(c)(i)-(iii) sets out a non-exhaustive list of affirmative 

defences to counter a complaint under Section 4(a): 

(i) before any notice to the registrant of the dispute, its 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; 

(ii) the registrant (as an individual, business, or other organization) 

have been commonly known by the domain name, even if the 

registrant has acquired no trademark or service mark rights; or 

(iii) the registrant is making a legitimate non-commercial or fair use of 

the domain name, without intent for commercial gain to misleadingly 

divert consumers or to tarnish the trademark or service mark at issue. 

 

The UDRP was originally intended to deal with ―easy cases‖ of 

blatantly abusive domain name registrations.
25

 Since the UDRP is agreed 

to by default by every domain name registrant, and given the relatively 

low cost of proceeding under the Policy as compared with any form of 

litigation, the UDRP has seen steady, and at times growing, application 

since its inception.
26

 

                                                      
24

 Uniform Dispute Resolution Policy (UDRP), s 4(a)(i)-(iii). 
25

 See Greame B Dinwoodie, ‗(National) Trademark Laws and the (Non-

National) Domain Name System‘ [2000] 21 U Pa J Int‘l Econ L 495, 511; 

Bernadette Dino, ‗Passive Warehousing Under ICANN‘s Uniform Dispute 

Resolution Policy: A Utilitarian Perspective‘ [2002-2003] 10 Comm Law Cons 

301, 301-302. 
26

 ‗WIPO UDRP Domain Name Decisions (gTLD)‘ (n 2). 



THE DENNING LAW JOURNAL 

 

 

211 

b.  Shortcomings of the UDRP 
 

This subsection examines the shortcomings of the UDRP. These have 

been divided into ―legal shortcomings‖ and ―empirical shortcomings‖. 

 

c. Legal Shortcomings 
 

The UDRP suffers from a number of legal shortcomings. Some of 

these, like the fact that the UDRP fails to stipulate an applicable body of 

law, are general; others are specific to certain countries- for example that 

the UDRP conflicts with certain consumer protection laws.  

 

 No Set Body of Law 
 

Beyond the requirements to prove a claim and the listed affirmative 

defences in Section 4, the UDRP does not prescribe any legal rules to be 

applied by UDRP panels. UDRP Rules 15a states that: ―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.‖
27

 (Emphasis added).  

Reference to national laws may be required to establish whether a 

complainant has a legitimate trademark rights. Section 4(a)(i) of the 

UDRP says ―trademark or service mark in which the complainant has 

rights‖. There is no requirement that the trademark be registered which 

opens the door to allowing complainants to oppose a domain name 

registration on the basis of a common law trademark. Some countries such 

as France and China do not have unregistered trademarks.
28

 For these 

reasons, it would be appropriate for a UDRP panel to refer to a given 

jurisdiction‘s law. 

National laws should not, however, be used as a basis for determining 

confusion or bad faith. The legal tests associated with confusing use of a 

trademark or trademark infringement may vary from jurisdiction to 

jurisdiction. As panels are free to apply whichever legal principles they 

                                                      
27

 ‗Rules for Uniform Domain Name Dispute Resolution Policy (the ―Rules‖)‘ 

(Internet Corporation for Assigned Names and Numbers, 30 October 2009), 

<https://www.icann.org/resources/pages/rules-be-2012-02-25-en> accessed 2 

November 2014. 
28

 France is one such example, less an exception for protection of unregistered 

‗well-known‘ marks pursuant to art 6bis of the Paris Convention for the 

Protection of Industrial Property. See: David I Greenbaum, ‗No Registration, No 

Problem‘ [2013] 40 World Trademark Magazine 90. 



A PROPOSAL FOR A MODEL LAW DEALING WITH CYBER-

SQUATTING 

 

212 

consider appropriate, it is difficult for parties to a UDRP proceeding to 

know exactly what legal standard they have to meet. 

Likewise, the notion of bad faith is not a rigid concept.
29

 There is a 

fair degree of variation in how different UDRP panels have interpreted the 

bad faith requirement. Some have even transferred domain names that 

were registered before the UDRP took effect and when there was no 

attempt to sell the domain name to the complainant.
30

 

How does a panel choose to apply one country‘s laws over another? 

Should the law be that of the complainant‘s jurisdiction, respondent‘s 

jurisdiction or the law of the dispute panel‘s seat? At least one author held 

out hope that UDRP panels could develop a rich corpus of conflict of law 

rules.
31

 This does not seem to have materialized. 

 
 UDRP is not Binding on Courts 

 

Section 4(k) of the UDRP says that: ―The mandatory administrative 

proceeding requirements set forth in Paragraph 4 shall not prevent either 

you or the complainant from submitting the dispute to a court of 

competent jurisdiction for independent resolution before such mandatory 

administrative proceeding is commenced or after such proceeding is 

concluded.‖ Several U.S. Courts have noted the non-binding nature of 

UDRP proceedings.
32

 

The fact that parties to a UDRP proceeding may commence a court 

action at any time clearly undermines the value and finality of a UDRP 

panel decision (and arguably the process as a whole). One of the more 

attractive features of arbitration generally is that it allows for final 

resolution of an issue in a forum that is (often) less costly and time 

consuming than court.
33

 This cost efficiency is challenged by the fact that 

                                                      
29

 See generally Emily Houh, ‗The Doctrine of Good Faith in Contract Law: A 

(Nearly) Empty Vessel?‘ [2005] 1 Utah L Rev 1. 
30

 Hearst Communications Inc and Hearst Magazines Property Inc v David 

Spencer d/b/a/ Spencer Associates, and Mail.com, Inc, [2000] NAF Case No. 

FA0093763. 
31

 See Laurence R Helfer, ‗Whither the UDRP: Autonomous, Americanized, or 

Cosmopolitan?‘ [2004] Cardozo J Int‘l & Comp L 493, 504. 
32

 Sallen (n 5); Weber-Stephen Products Co. v. Armitage Hardware [2000] Case 

No. D2000-0187 and Building Supply Inc, [2000] 54 USPQ 2d 1766; Parisi v 

Netlearning, Inc, [2001] 139 F Supp 2d 745. 
33

 Thomas J Stipanowich, ‗Arbitration: The ―New Litigation‖‘ [2010] 1 U Ill L 

Rev 1, 4. 



THE DENNING LAW JOURNAL 

 

 

213 

UDRP panel decisions are not binding. So too is the time efficiency in the 

event that one of the parties chooses to re-litigate the issue before a court.  

 

 Complainant Driven Selection Process 
 

One of the most biting criticisms of the UDRP is the fact that the 

complainant driven provider selection process provides a major incentive 

for dispute resolution providers and panellists to be ―complainant 

friendly.‖
34

 One author noted that there is ―statistical evidence that 

selection of dispute resolution service providers by challengers leads to 

forum shopping that biases the results.‖
35

 While this is discussed in 

greater depth in part ii (Empirical Shortcomings) below, consider the 

following.  

WIPO is the largest UDRP dispute resolution provider; NAF is the 

second largest. In 2000, WIPO and NAF together accounted for about 

90% of UDRP disputes decided annually.
36

 A third provider, eResolutions 

(based in Quebec) accounted for about 7% of UDRP disputes. 

eResolutions ceased offering UDRP arbitration services in 2001.
37

 Its 

President, Professor Karim Benyekhlef, spoke out in a press release in 

which he condemned the whole UDRP framework as being biased in 

favour of complainants and blamed WIPO in specific for perpetuating the 

problem.
38

 Whether or not Professor Benyekhlef was correct, 

eResolutions was the only UDRP provider that demonstrated a more 

balanced record of decisions.
39

 

 

 Panellists Tend to be Pro-Intellectual Property by Nature 
 

Unlike courts which tend to be made up of judges with various 

practice or academic backgrounds, the overwhelming majority of UDRP 

                                                      
34

 Laurence R Helfer and Graeme B Dinwoodie, ‗Designing Non-National 

Systems: The Case of the Uniform Domain Name Dispute Resolution Policy‘ 

[2001] 43 WM & Mary L Rev 144, 210. 
35

 Milton Meuller, ‗Rough Justice, An Analysis of ICANN‘s Uniform Dispute 

Resolution Policy (v2.1)‘ <http://www.acm.org/usacm/IG/roughjustice.pdf>, 2. 
36

 Ibid. 
37

 Kieren McCarthy, ‗eResolution Quits Domain Arbitration: Blames WIPO‘ 

(The Register, 4 December 2001) 

<http://www.theregister.co.uk/2001/12/04/eresolution_quits_domain_arbitration/

> accessed 12 November 2014. 
38

 Ibid. 
39

 Meuller (n 35) 11. 



A PROPOSAL FOR A MODEL LAW DEALING WITH CYBER-

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214 

panellists are practicing or retired intellectual property lawyers. These 

individuals (understandably) tend to favour strong intellectual property 

rights enforcement. In any case in which a respondent‘s defense is not 

based on intellectual property rights, the argument could be made that the 

average panellist would be less receptive to that line of argumentation.  

One common example is when respondents raise freedom of 

expression defenses. In 2013, three WIPO UDRP panels assessed 

complaints in which the respondent mounted a freedom of expression 

defense.
40

 The domain names were transferred in two of those cases. The 

complaint was denied in the third, but on the grounds that the complainant 

did not meet the standard set out in Section 4(a) of the UDRP.  

Wal-Mart Stores, Inc. v. Walsucks and Walmarket Puerto Rico is a 

well-known WIPO panel decision dealing with a group of domain names 

which were variations on the theme ―Wal-MartSucks.com‖.
41

 That 

decision seems to all but ignore the respondent‘s freedom of expression 

argument altogether: ―For purposes of deciding this proceeding, the Panel 

need not explore the content of Respondent‘s website, nor the relevance of 

the quantum of expression on his website.‖
42

 One would think that in 

order to determine whether a registrant is making legitimate use of a 

domain name, it would be germane to in fact view the website‘s content, 

especially when a freedom of expression defense has been mounted.  

None of this conclusively proves systemic bias or pre-judgment by 

UDRP panellists. However, some UDRP decisions, like Wal-Mart, 

demonstrate a marked disinclination towards freedom of speech defenses 

to UDRP complaints. 

 

 Little Protection Against Reverse-Domain Name Hijacking 
 

Rule 15(e) of the UDRP Rules defines reverse-domain name hijacking 

as ―using the Policy in bad faith to attempt to deprive a registered 

domain-name holder of a domain name.‖ As noted, the UDRP was 

originally conceived to deal with the most blatant and uncontroversial 

instances of cyber-squatting.
43

 ICANN recognized this by adding the 

                                                      
40

 The Priory in New Zealand of the Most Venerable Order of the Hospital of St 

John of Jerusalem v 24-7 Ltd / Domains By Proxy, LLC, [2012] Case No D2012-

2301; Deskan S/A v PRQ Inet KB / Internet.bs Corp. / Fundación Private Whois 

[2013] Case No D2013-1112; and Yellowstone Mountain Club LLC v Offshore 

Limited D and PCI [2013] Case No D2013-0097. 
41

 [2000] Case No D2000-0477. 
42

 Ibid. 
43

Dinwoodie (n 25) 511. 



THE DENNING LAW JOURNAL 

 

 

215 

affirmative defences at Section 4(c)(i)-(iii). This has proven to be 

inadequate in that the UDRP does not provide any meaningful sanctions 

for frivolous or abusive process as is the case in civil litigation.
44

 The low 

cost of a UDRP proceeding makes it an attractive avenue for a 

complainant who, despite not having a strong chance of success, is willing 

to launch a complaint in the hopes that it will go unopposed. 

 

 UDRP Does Not Protect Against ―Passive Warehousing‖ 
 

Passive warehousing refers to the practice of registering potentially 

sought after domain names without intent to use them or actively market 

them as would a classic cyber-squatter. Instead, the passive warehouser 

relies on instances in which a trademark holder seeks to register a domain 

name, finds out that it is already registered to someone else, and then 

offers that individual (the warehouser) a sum of money for the domain 

name.
45

  

This activity is objectionable under the spirit of the UDRP and would 

be captured by a broad definition of cyber-squatting. Since Section 4(a)(ii) 

requires that a complainant show not only registration, but use in bad 

faith, a passive warehouser should not be caught by the UDRP.
46

  

This seems to make a distinction where none should exist. There are 

perfectly obvious instances of passive-warehousing which by all accounts 

would be objectionable under the UDRP but for the ―use in bad faith‖ 

requirement. This wording therefore obfuscates the UDRP‘s purpose by 

allowing an entire sub-category of genuine cyber-squatting to go 

unaddressed.  

 

 UDRP Does Not Protect Personal Names That Are Not Registered as 
Trademarks 

 

                                                      
44

 Catherine A Shutz and Courtney A Hofflander, ‗Reverse-Domain Name 

Hijacking and the Uniform Dispute Resolution Policy: Systematic Weaknesses, 

Strategies for the Respondent, and Proposed Policy Reforms‘ [2013] Cybaris IP L 

Rev 218, 233-234. 
45

 See Dino (n 25) 301. 
46

 This is consistent with the findings of ICANN‘s second staff report. See 

‗Second Staff Report on Implementation Documents for the Uniform Dispute 

Resolution Policy‘ (Internet Corporation for Assigned Names and Numbers, 25 

October 1999) <http://www.icann.org/udrp/udrp-second-staff-report-

24oct99.htm> para 4.1(c). 



A PROPOSAL FOR A MODEL LAW DEALING WITH CYBER-

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216 

Strictly speaking, the UDRP is only supposed to apply to existing 

―trademarks of service marks‖.
47

 This excludes personal names of famous 

individuals who have not obtained trademark rights therein. Despite the 

fact that the UDRP should properly exclude complaints of this kind, 

several have been made and some have resulted in the impugned domain 

name(s) being transferred or cancelled. Both Bruce Springsteen and Julia 

Roberts were successful in front of WIPO UDRP panels.
48

 Sting was less 

fortunate.
49

 

Apart from the unfortunate Section 4(a)(1)‘s wording, there is no 

reason why the definition of cyber-squatting should exclude instances in 

which alleged cyber-squatter‘s buy up domain names containing famous 

individuals‘ names. These domain names are valuable to (and have been 

targeted by) cyber-squatters in the same way as those containing well-

known trademarks. That said, given that the Policy currently excludes 

these rights, the fact that UDRP panels have found in favour of 

complainants in these scenarios is disconcerting.  

 

 Conflict With Consumer Protection Laws 
 

Some authors have voiced concern about potential conflicts between 

the UDRP and national consumer protection laws.
50

 Under both French 

and German law, it would appear that at least some domain name 

registrants would be considered consumers under the relevant consumer 

protection statutes.
51

 These laws prohibit clauses in consumer contracts 

which require mandatory submission to arbitration. In cases where the 

respondent in a UDRP proceeding fits under the definitions of consumer 

set out in these laws, the UDRP clauses found in domain name 

registration agreements would be invalidated. 

In Canada, consumer protection laws would not appear to prohibit 

incorporating the UDRP into domain name registration agreements. The 

only two provinces whose consumer protection legislation addresses the 

                                                      
47

 UDRP s 4(a)(i). 
48

 Bruce Springsteen v Jeff Burgar and Bruce Springsteen Club [2000] Case No 

D2000-1532; and Julia Fiowna Roberts v Russel Boyd [2000] Case No D2000-

0210. 
49

 Gordon Sumner, p/k/a Sting v Michael Urvan [2000] Case No D2000-0596. 
50

 For an in depth discussion on how the incorporation of the UDRP into internet 

registrar/registrant contracts may be counter to the consumer protection laws in 

France and Germany, see: Holger P Hestermeyer, ‗The Invalidity of ICANN‘s 

UDRP Under National Law‘ [2002] 3 Minn Intell Prop Rev 1, 32. 
51

 Hestermeyer (n 50) 36-37. 



THE DENNING LAW JOURNAL 

 

 

217 

binding nature of arbitration agreements in consumer contracts are 

Quebec and Ontario.
52

 The relevant provisions of those laws only prevent 

the clauses from prohibiting a consumer from suing in court. As discussed 

above, the UDRP expressly allows for court proceedings concurrent with 

or consecutive to UDRP proceedings. These provisions therefore should 

not apply. 

 

 Conflict With Language Laws 
 

The UDRP was only officially drafted in English.
53

 To this day, 

ICANN has not released an official version of the UDRP in any other 

language.
54

 This appears to be a serious oversight on ICANNs part given 

the international application of the Policy. More than being an 

inconvenience to non-English speakers, the unilingual nature of the UDRP 

may in fact invalidate its application in certain countries. 

French law and its ―legendary contempt‖ for the use of other 

languages on its territory require that consumer contracts be in French.
55

 

Incorporating the UDRP by reference therefore appears to offend that law. 

German law requires that the contract be in a language understandable to 

the parties.
56

 In a contract between a German registrant and registrar, that 

language would likely be German. The UDRP clause would therefore fall 

under those laws as well. 

 

d. Empirical Shortcomings 
 

The UDRP is often criticized as being substantively one-sided. While 

this may or may not be the case, the fact that it is applied by dispute 

resolution providers in a one-sided manner is empirically verifiable.
57

 In 

2000, complainants won 67.5% of WIPO UDRP proceedings and 71.5% 

                                                      
52

 Art 11.1 of the Quebec Consumer Protection Act, c P-40.1; and s 6(2) of the 

Ontario Consumer Protection Act, 2002, SO 2002 ch 30 sch A. 
53

 Hestermeyer (n 50) 38. 
54

 See ‗Uniform Domain-Name Dispute-Resolution Policy‘ (Internet Corporation 

for Assigned Names and Numbers) <https://www.icann.org/resources/pages/udrp-

2012-02-25-en> accessed on 13 November 2014. Even though the page linking to 

the UDRP may be viewed in English, French, Spanish, Arabic, Russian (Cyrillic) 

and Chinese, as of 13 November 2014, the Policy itself is still only accessible in 

English. 
55

 Hestermeyer (n 50) 42. 
56

 Hestermeyer (n 50) 41. 
57

 Meuller (n 35) 34.  



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218 

of NAF proceedings.
58

 eResolution decided only 44.5% of disputes in 

favour of complainants; it filed for bankruptcy in 2001.
59

 

 Thirteen years later, the numbers are even more skewed in favour of 

complainants. In 2013 WIPO decided in favour of complainants 91% of 

the time.
60

 NAF edged WIPO out at 92%.
61

 The fact that panel decisions 

are decided overwhelmingly in favour of complainants is not itself 

sufficient proof of bias, though it does raise questions.  

Forum shopping has been labelled as an endemic issue the UDRP‘s 

application.
62

 While complainant bias is the most obvious factor in 

selecting a UDRP dispute resolution provider, given that complainant bias 

is nearly uniform across all providers, it cannot be the sole factor. One 

exhaustive empirical study of UDRP proceedings conducted in 2005 

showed an unequivocal bias by providers towards nationals from their 

own countries.
63

  

The same study found that the panellist selection process itself favours 

complainants. In the event that the complainant opts for a single panellist 

(and the respondent does not request a three-member panel), the provider 

chooses the panellist.
64

 When the provider chooses the sole panellist, 

complainants win 80% of the time whereas in the case of three-member 

panels –where each party chooses one panellist– complainants only win 

63% of the time.
65

 

If one is of the opinion that the UDRP itself is skewed towards 

complainants, this data is not very revelatory. It would simply show that 

UDRP dispute resolution providers are faithfully applying a complainant-

centric Policy. However, if it is in fact true that the UDRP is balanced 

from a policy perspective, then this data shows conclusively that UDRP 

dispute resolution providers and panellists are biased towards 

complainants.   

 

                                                      
58

 Ibid 11. 
59

 Ibid and McCarthy (n 37). 
60

 Poussard (n 21) 8.  
61

 Ibid 21. 
62

 Meuller (n 35) 2. 
63

 Jay P Kesan and Andres A Gallo, ‗The Market For Private Dispute Resolution 

Services - An Empirical Re-Assessment Of ICANN-UDRP Performance‘ 11 

Mich. Telecomm Tech L Rev 285, 296. 
64

 UDRP Rules, r 6(b). 
65

 Kesan (n 63) 300. See also Michael Geist, ‗Fair.com? An Examination of the 

Allegations of Systemic Unfairness in the ICANN UDRP‘ (2002) 27 Brook J 

Int‘l L 903, 926. 



THE DENNING LAW JOURNAL 

 

 

219 

e. The ACPA and its Case Law 
 

The ACPA was enacted by the U.S. Congress in 1999 to explicitly 

deal with cyber-squatting. The law (an amendment to the Lanham Act) 

gives trademark holders a new cause of action against cyber-squatters and 

also allows for a plaintiff to bring an action in rem against a domain name 

itself. The law also comports a provision offering relief for litigants who 

believe they are the victim of reverse-domain name hijacking.
66

  

In determining the optimal path forward, it is relevant to examine the 

ACPA and some of its case law for at least two reasons: 1) The ACPA is, 

as of this writing, the only national law in force that directly addresses 

cyber-squatting; and 2) Given U.S. federal courts‘ position on jurisdiction 

over cyber-squatting claims (discussed more fully below), the ACPA has 

significant extra-territorial effect and relevance. 

 

f. The ACPA 
 

The ACPA is found at 15 U.S.C. §1125(d) and 15 U.S.C §1114(2)(D). 

The provisions under § 1125(d) create a cause of action for trademark 

holders against cyber-squatters. §1114(2)(D)(i)-(iv) deal with limiting 

domain name registrars, registries, or other domain name registration 

authorities‘ liability when they comply with court and panel orders. 

§1114(2)(D)(v) is a novel provision allowing a registrant believing that 

his or her domain name was transferred by a UDRP panel in error to have 

a court declare that it is the rightful owner and restore its registration. 

  

 Bad faith registration of a domain name - §1125(d)(1)(A) 
 

§1125(d)(1)(A) makes it actionable to register a domain name that is 

identical or confusingly similar to a trademark with a ―bad faith intent to 

profit from that mark‖.
67

 §1125(d)(1)(B) sets out nine factors to be 

considered in determining whether the bad faith requirement is met. Some 

of the factors mirror those found in the UDRP such as ―the extent to 

which the domain name consists of the legal name of the person or a name 

that is otherwise commonly used to identify that person‖
68

 or ―the 

person‘s prior use, if any, of the domain name in connection with the bona 

fide offering of any goods or services‖
69

. Others are unique to the ACPA. 

                                                      
66

 15 USC s 1125 (3)(C) for definition of reverse-domain name hijacking.  
67

 15 USC s 1125(d)(1)(A)(i). 
68

 Ibid s 1125(d)(1)(B)(i)(II). 
69

 Ibid s 1125(d)(1)(B)(i)(III). 



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220 

Unlike the UDRP, the factors set out in this section are non-exhaustive 

and need not all be considered in every instance.  

One of the main advantages of an action under §1125(d)(1)(A) 

of the ACPA over a UDRP proceeding is the availability of the full 

suite of common law and equitable remedies including damages, 

accounting of profits and injunctions.  

 
 In rem action against domain name - §1125(d)(2)(A). 

 

In certain cases, the ACPA also allows a plaintiff to undertake an 

action in rem against the domain name itself.
70

 This is permitted when: 1) 

The plaintiff is unable to obtain in personam jurisdiction over the 

registrant; or 2) The plaintiff, having exercised due diligence, cannot 

locate the registrant.  

The ACPA therefore favours actions in personam but allows an 

individual to sue a domain name directly if necessary. This is in 

recognition of the fact that people who register domain names that affect 

the holders of U.S. trademark rights are situated around the world and that 

registrants often provide false information to domain name registrars 

during registration.
71

 Unlike an action under §1125(d)(1)(A), proceeding 

under this provision limits the available remedies to the cancellation or 

transfer of the domain name.  

 

 Preventing reverse-domain name hijacking - §1114(2)(D)(v) 
 

Reverse-domain name hijacking occurs when a trademark holder uses 

the UDRP mechanism to bully a registrant out of a validly registered 

domain name.
72

 §1114(2)(D)(v) addresses this abusive practice by 

empowering individuals who believe that their domain names should not 

have been cancelled or transferred to have that domain returned. 

§1114(2)(D)(v) reads as follows: 

 

                                                      
70

 15 USC s 1125(d)(2)(A). 
71

 See Kieren McCarthy, ‗77% of Domain Name Registrations Stuffed with 

Rubbish‘ (The Register, 17 February 2010) 

<http://www.theregister.co.uk/2010/02/17/domain_name_problems/> accessed 9 

December 2014. 
72

 Ryan R Owens, ‗Domain-Name Dispute-Resolution after Sallen v Corinthians 

Licenciamentos & Barcelona.com, Inc v Excelentisimo Ayuntameiento De 

Barcelona‘ 18:1 Berkeley Tech LJ 257, 262. 



THE DENNING LAW JOURNAL 

 

 

221 

A domain name registrant whose domain name has been 

suspended, disabled, or transferred under a policy [UDRP] 

described under clause (ii)(II) may, upon notice to the mark 

owner, file a civil action to establish that the registration or use of 

the domain name by such registrant is not unlawful under this 

chapter. The court may grant injunctive relief to the domain name 

registrant, including the reactivation of the domain name or 

transfer of the domain name to the domain name registrant. 

 

The provision gives the court the power to grant injunctive relief 

requiring the domain name to be returned to its rightful owner. The 

provision does not, however, expressly give courts permission to award 

damages.   

 

g. Case law under the ACPA 
 

The following is a brief look as three key decisions under the ACPA. 

They demonstrate how American courts have given the ACPA a broad 

reading, extending far beyond the U.S. border. 

 

 Sallen v Corinthians Licenciamentos
73

 

 

In 1998, Jay Sallen, a resident of Massachusetts, registered 

―corinthians.com‖ with Network Solutions Inc. (NSI). Corinthians 

Licenciamentos (―Corinthians‖) was a Brazilian soccer team with 

trademark rights in the word ―corintheoa‖ (the Portuguese equivalent to 

Corinthian). Sallen contacted Corinthians offering to sell the domain name 

to the team. Corinthians responded with a cease and desist letter 

demanding that he turn the domain name over to it. Sallen did not comply.  

In May 2000, Corinthians undertook a UDRP preceding before a 

WIPO arbitration panel to have the domain name transferred.
74

 The panel 

found that the domain name was confusingly similar to Corinthians‘ 

trademark and that Sallen had registered and used it in bad faith. The 

Panel ordered that the domain name be transferred to Corinthians.  

Sallen filed an action under the ACPA in the U.S. District Court for 

the District of Massachusetts to have the WIPO panel decision reviewed. 

His action was based on §1114(2)(D)(v) (the provision that addresses the 

practice of reverse-domain name hijacking).  

                                                      
73

 Sallen (n 5). 
74

 Corinthians Licenciamentos LTDA v Sallen [2000] No D2000-0461. 



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222 

The District Court refused Sallen‘s claim on the grounds that no actual 

controversy existed between the parties at the time the action was 

brought.
75

 On appeal, the US Court of Appeal for the First Circuit found 

that it had jurisdiction as Sallen‘s claim was based on a federal statute.  

Corinthians argued that the Court lacked subject-matter jurisdiction 

because the ―corintheao‖ trademark was registered in Brazil, not in the 

U.S. The Court found this argument unpersuasive. It based its reasoning 

on the language in §1114(2)(D)(v) which uses the term ―mark owner‖. 

The Lanham Act
76

 comports separate definitions for the terms ―mark‖ and 

―registered trademark‖. ―Mark‖ is defined broadly and does not that 

require the trademark be registered in the U.S. In fact, the definition of 

―mark‖ (which itself refers to the definition ―trademark‖) does not appear 

to set any territorial limitations.
77

 In other words, the definition applies to 

trademarks that are used as such anywhere in the world.  The Court made 

reference to the fact that in drafting the ACPA, Congress intended to 

signal its awareness of the ―international nature of trademark disputes‖.
78

 

While the Court actually agreed with the WIPO Panel on the merits, it 

made a rather grand statement when it said: ―A [federal] court‘s 

§1114(2)(D)(v) decision that a party is not a cybersquatter under the 

ACPA, and that a party has a right to use a domain name, necessarily 

negates a WIPO decision that a party is a cybersquatter under the 

UDRP.‖
79

 Keep in mind that the trademark at issue was not registered in 

the U.S. This case stands for the proposition that if a foreign complainant 

obtains an award from a UDRP panel based on non-U.S. trademark rights, 

an American court will still assert jurisdiction over a complaint brought 

under the ACPA. The sole basis for this is that the ACPA is a federal 

statute enabling parties to bring causes of action relating to domain names, 

and that Congress‘ legislative intent was clear. 

One author calls Sallen a ―startling precedent endorsing the view that 

a federal statute in the U.S. can trump an international convention.‖
80

 This 

                                                      
75

 art III, s 2, Clause 1 of the United States Constitution limits the jurisdiction of 

U.S. federal courts to actual cases and controversies dealing with (among other 

things) federal law.  
76

 15 USC s 1051 et seq. 
77

 Sallen (n 5) 24. 
78

 The Court obviously misspoke here and should have at least said ‗internet 

related trademark disputes‘ or ‗cyber-squatting related disputes‘.  
79

 Sallen (n 5) 28. 
80

 Aaron J Horowitz, ‗U.S. Jurisdictional Monopolization of International 

Cybersquatting Disputes: A review of Current Inequities and Future 

Consequences‘ [2006] 11 J. Tech L & Pol‘y 191, 203. 



THE DENNING LAW JOURNAL 

 

 

223 

seems to be a slight overreaction in that the UDRP is not an international 

convention; it is a policy created by a private entity. While it is true that, 

in effect, the UDRP may have a broader and more pervasive application 

than many international treaties, it is still incorrect to call it an 

international legal instrument. While strictly speaking incorrect, the 

author‘s point is well taken. The Corinthians decision demonstrates at 

least one U.S. court‘s disregard for international norms that touch on 

extra-territorial IP rights.  

From a practical perspective, a ruling of this nature under the ACPA 

will only have effect if the registrar that registered the impugned domain 

is located either in the U.S. or a jurisdiction in which a U.S. court decision 

will be recognized and enforced. NSI is a U.S. based registrar. Any order 

made by a U.S. federal court would therefore be binding upon it. Had the 

domain name been registered with a Chinese registrar, things may have 

been different.  

 

 Harrods Ltd. v Sixty Internet Domain Names
81

 

 

Harrods UK (―Harrods‖) operates a high end department store in 

London, England. Harrods Buenos Aires (HBA) was once a wholly-

owned subsidiary of Harrods but had since begun operating 

independently. HBA registered 60 domain names containing the 

―Harrods‖ trademark. Both companies owned registered trademarks in 

―Harrods‖ in different countries (Harrods being the owner of the U.S. 

trademark). After a breakdown in negotiations and an unsuccessful law 

suit for, among other things, passing-off in England, Harrods filed an 

action in the Eastern District of Virginia against HBA citing breaches of 

the ACPA.
82

 Unable to show that the Court had personal jurisdiction over 

HBA, Harrods brought an action in rem against the domain names 

themselves.  

The District Court held in favour of Harrods with reference to 54 of 

the domain names but granted summary judgement in favour of HBA for 

six. On appeal, the U.S. Court of Appeal for the Fourth Circuit upheld the 

Trial Judge‘s ruling as to the 54 domains to be transferred to the Plaintiff 

but overturned the summary judgement ruling finding that it was 

inappropriate given the Plaintiff‘s lack of opportunity to conduct 

discoveries. Citing the United States Supreme Court, the Fourth Circuit 

based its decision on an old Common Law doctrine dealing with damage 

                                                      
81

 Harrods (n 14). 
82

 Note that NSI, the registrar with which the 60 domains were registered was 

located in Virginia.  



A PROPOSAL FOR A MODEL LAW DEALING WITH CYBER-

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224 

caused by an absentee owner‘s land ―suits for injury suffered on the land 

of an absentee owner, where the defendant‘s ownership of the property is 

conceded but the cause of action is otherwise related to rights and duties 

growing out of that ownership.‖
83

 The Court ruled that HBA was 

tantamount to an absentee owner of the domain names which were 

causing the Plaintiff damage.   

The Harrods Court‘s reasoning is dubious. The equivocation between 

a domain name registrant and an absentee land owner is not seamless. For 

one thing, the decision is unclear as to whether the domain names were 

actually in use or if they were simply parked. In the second case, the 

analogy makes a little more sense. However, if the domain names were 

being used in connection with a bona fide offering of goods or services, it 

is hard to see how the analogy finds application. Another problem with 

this decision is the assertion that a domain name is situated at the seat of 

the registrar that registered it. While NSI is located in Virginia, the servers 

containing the information and files that made up the website were not. If 

the website is ―situated‖ anywhere, would it not be in the jurisdiction in 

which those servers are located? 

The Harrods case further extends the ACPA‘s reach to allow transfers 

of domain names in instances where there is legitimate concurrent use of 

the same trademark by two entities. Unlike Corinthians, the Plaintiff in 

Harrods actually did have a U.S. trademark registration. At the same time, 

while Corinthians dealt with a more classic example of cyber-squatting, 

the Court in Harrods transferred the domain names in spite of the fact that 

HBA had legitimate trademark rights therein, an outcome that should 

never be reached by a UDRP panel.
84

 While not expressly saying so, the 

Court in this case essentially said that a foreign trademark can ―infringe‖ a 

U.S. trademark for the purposes of a domain name dispute under the 

ACPA.  

 

 NBC Universal, Inc. v NBCUniversal.com
85

 

 

No decision rendered under the ACPA is as expansionist as the 

District Court for the Eastern District of Virginia in NBC Universal. Junak 

Kwon registered ―NBCUniversal.com‖ in Korea with a Korean registrar. 

NBC undertook a WIPO UDRP proceeding in which Kwon failed to 

appear. Kwon brought an action in a Korean court causing the UDRP 

                                                      
83

 Harrods (n 14) 225. 
84

 This is likely why Harrods UK never bothered undertaking a UDRP proceeding 

and instead chose to challenge HBA in the courts of England and then the US. 
85

 [2005] 78 F Supp 2d 715, 717-18. 



THE DENNING LAW JOURNAL 

 

 

225 

panel to abstain from ordering the transfer of the domain name pending 

the Korean Court‘s decision. NBC Universal concurrently started an in 

rem action under the ACPA. In spite of the fact that the Korean action was 

already pending, the District Court refused to stay proceedings on the 

grounds that the action in Korea was in personam whereas the action 

before it was in rem. The Court seemingly ignored the fact that despite 

this legal technicality, the subject-matter of the disputes was identical.  

As to jurisdiction, the Court found that because Verisign Inc., the 

registry that administers the ―.com‖ gTLD registry is located in Virginia, 

it had jurisdiction over the claim. This reasoning is based on § 

1225(d)(2)(A) of the ACPA: 

 

The owner of a mark may file an in rem civil action against a 

domain name in the judicial district in which the domain name 

registrar, domain name registry, or other domain name authority 

that registered or assigned the domain name is located if—  

(i) the domain name violates any right of the owner of a mark 

registered in the Patent and Trademark Office, or protected under 

subsection (a) or (c) of this section; (Emphasis added). 

 

This means that the U.S. District Court for the Eastern District of 

Virginia has jurisdiction over any ―.com‖, ―.net‖ or ―.gov‖ domain name 

(it manages the registries for those TLDs as well as the ccTLDs ―.cc‖ and 

―.tv‖), even if the it is registered by a non-U.S. citizen with a registrar in a 

foreign jurisdiction, as was the case in NBC Universal. 

The foregoing three cases show that U.S. courts are ready to accept 

jurisdiction over ACPA claims in a broad range of circumstances in which 

a court would traditionally decline jurisdiction. This is largely facilitated 

by the in rem jurisdiction conferred by §1225(d)(2)(A) of the ACPA.  

Sallen allows a litigant to pursue a reverse-domain name hijacking 

claim against a party whose trademarks are registered outside the U.S. 

Harrods endorses the idea that a foreign trademark can ―infringe‖ a U.S. 

trademark for the purposes of determining rightful ownership over a 

domain name.  Under NBC Universal, the U.S. District Court for the 

Eastern District of Virginia has jurisdiction over any second-level domain 

under the ―.com‖, ―.net‖ or ―.gov‖ gTLDs registered worldwide. NBC 

Universal also shows at least one American Court‘s unwillingness to 

decline jurisdiction even when another seemingly competent court is 

addressing substantively the same issue.  

 

 

 



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226 

h. Shortcomings of the ACPA 
 

Being the only national law to deal directly with the problem of 

cybersquatting, any proposal for a model law should examine the ACPA‘s 

shortcomings to avoiding potential pitfalls. 

On the positive side, the ACPA is a powerful vehicle for trademark 

holders. It also provides a certain degree of balance by allowing a 

registrant to fight what it thinks is a bad UDRP panel decision. The case 

law outlined above, however, shows what may arguably be called an 

unjustifiable overreaching by American courts. 

The Court in Sallen showed a total disregard for the Respondent‘s 

foreign trademark rights. The internet is a global network whereas 

trademark rights are necessarily territorial. The Sallen Court‘s assertion 

that Congress‘ use of the term ―domain name‖ in the ACPA gives it 

jurisdiction to hear any case relating to a domain name regardless of other 

jurisdictional factors is problematic. This approach would be 

unsustainable if other countries enacted similar laws and their national 

courts began taking the same view. Forum shopping would likely become 

an issue. 

Harrods shows even greater disregard for foreign trademark rights. As 

noted, the global nature of the internet sometimes conflicts with the 

territorial nature of trademarks. The UDRP deals with this by adopting a 

―first to register‖ system. In other words, in a competition between two or 

more trademark holders, the first to register the domain name should get it 

and the others should have no recourse so long as the registrant has a 

―legitimate interest‖ in the domain name. The Respondent in Harrods did 

have a legitimate interest in the domain names in question; it was a 

registered trademark holder (though not of U.S. trademarks). The idea that 

a foreign trademark could be treated as ―infringing‖ a U.S. trademark for 

the purposes of determining domain name rights shows a wanton 

disregard for non-U.S. jurisdictions, also known as the rest of the world. 

Finally, If the Court in NBC Universal‘s reasoning is to stand, the fact 

that Verisign Inc. is located in Virginia has the effect of granting a single 

U.S. District Court jurisdiction over the whole .com TLD which is 

currently comports more than 100 million domain names and growing.
86

 

The Court‘s indifference to the pending litigation in Korea over the same 

issue is also troubling. In addition to being an affront to judicial economy, 

                                                      
86

 Sean Michael Kerner, ‗Dot Com Domains Top 105 Million Names‘ (Enterprise 

Networking Planet, 2 January 2013) 

<http://www.enterprisenetworkingplanet.com/netsp/dot-com-domains-top-105-

million-names.html> accessed 2 November 2014.  



THE DENNING LAW JOURNAL 

 

 

227 

conflicting judgements from two different national courts may cause 

enforcement issues, particularly when the domain name registry is not 

located in one of the states in which a court action has been brought.  

Some authors have pointed to the growing unease in certain countries 

vis-à-vis the current state of internet governance.
87

 Not everyone is 

comfortable with the U.S. Government‘s significant influence over 

ICANN. In fact, at a 2005 UN summit, more than 170 countries pressured 

the U.S. Government to relinquish its unilateral oversight over ICANN; it 

refused.
88

   

There has even been talk of private companies in other countries 

starting their own intranets which would be excluded from ICANN‘s 

control.
89

 Users of these intranets would not be excluded from the greater 

internet, but they would be excluded from the UDRP. Given the ruling in 

Sallen, however, it is debatable as to whether even these drastic measures 

would be enough to prevent a U.S. court from accepting jurisdiction under 

the ACPA. 

 

4. A POTENTIAL PATH FORWARD – A MODEL LAW ON 

CYBER-SQUATTING AND OTHER ABUSIVE DOMAIN NAME 

PRACTICES 

 

Having established that the current domain name regulatory 

framework can be improved upon, this paper proposes a model law 

dealing with cyber-squatting and other abusive domain name practices 

made to work in place of or in tandem with the UDRP. Before addressing 

the substantive provisions of the model law as well as its benefits and 

shortcomings, we must first establish that regulation is in fact the best 

form of action, and that a model law is the most rational regulatory 

avenue. 

 

a. Is Regulation the Best Form of Action? 
 

Most countries, with the notable exception of the U.S., have not 

enacted national legislation dealing with cyber-squatting, relying instead 

upon trademark laws and the UDRP to address the issue. Based on the 

shortcomings of the UDRP and national trademark laws, and given the 

                                                      
87

 Horowitz (n 80). See also Christopher Rhoads, ‗In Threat to Internet‘s Clout, 

Some are Starting Alternatives‘ (Yale Global, 31 January 2006) 

<http://yaleglobal.yale.edu/display.article?id=6906> accessed 2 November 2014. 
88

 Horowitz (n 80) 212. 
89

 Rhodes (n 87). 



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228 

established fact that cyber-squatting is a problem that shows no sign of 

stopping or slowing down under the current regulatory framework, further 

regulatory efforts are warranted.  

Since cyber-squatting only directly affects a relatively small subset of 

the population (i.e. trademark holders and domain name registrants) 

market-based solutions are inapplicable.
90

 Unlike perpetrators of online 

copyright infringement, cyber-squatters are relatively few in number 

compared with the total number of internet users. A broad-based 

educational regime would therefore have little effect. Further, most cyber-

squatters likely know that what they are doing is objectionable, or at least 

that it contravenes the UDRP; this does not seem to stop them. 

 

a. What Form Should the Regulation Take? 
 

A Model Law is the Best Regulatory Approach 

 

As set out in Section 5 below, this paper espouses the idea of a model 

law on cyber-squatting and other abusive domain name practices. There 

are potential alternatives, for example, a convention to amend national 

trademark laws to include specific causes of action for cyber-squatting. 

Another route would be advocating for a re-vamped UDRP that takes into 

consideration the legal and empirical shortcomings referenced above.  

A model law approach would be superior to a convention in that it 

would create actual legal provisions outlining new causes of action and 

legal procedures that an adopting country could implement with minimal 

legislative effort. Since uniform interpretation is a goal, having experts in 

the area draft purposeful provisions (and potentially provide explanatory 

notes) would maximize that objective. A convention on this subject-matter 

would, by contrast, create obligations for signatories without providing 

any concrete guidance on how to fulfil them. 

The model law approach is also superior to advocating for a re-

vamped UDRP. Even if ICANN could be persuaded to retool the UDRP 

to the point where all of the above mentioned concerns would be 

addressed, the fact remains that it is a policy created by a U.S. non-profit 

with the U.S. government backing. ICANN itself has been accused of 

operating in a less than democratic manner.
91

 The Model law would 

achieve the result of a reworked UDRP while respecting national 

                                                      
90

 While it can be argued that cyber-squatting indirectly affects society as a 

whole, the average individual may be entirely unaware of these practices. 
91

 See: A Michael Froomkin, ‗Wrong Turn In Cyberspace: Using ICANN To 

Route Around The APA And The Constitution‘ [2000] 50 Duke LJ 17. 



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229 

sovereignty and the fact that the internet is a truly international (or more 

accurately supra-national) space. The model law would also be capable of 

working in tandem with the UDRP offering disputants the choice to 

proceed under that Policy if they so choose.  

In addition to the above approaches, there is also the option of 

allowing individual countries to figure cyber-squatting out themselves (or 

not). The Author does not believe that an uncoordinated, de-centralized 

effort is appropriate given the global nature of the problem and that the 

structure of the internet makes compartmentalized regulation a challenge. 

Be it a model law or some other instrument, the chosen approach should 

seek to promote a harmonized regime.  

 

b. Is There a Legal Basis for a Model Law Framework? 
 

There is a legal basis for a model law dealing with cyber-squatting and 

other abusive domain name practices. The model law approach‘s 

flexibility allows the adopting country to adjust the model law to fit 

seamlessly into the country‘s existing legal regime. This assures respect 

for the rule of law. Since there is no existing international instrument 

dealing directly with cyber-squatting, the model law would not conflict 

with adopting countries‘ existing treaty obligations. 

  

c. Which is the Appropriate Level (or Levels) of Government to 
Implement the Model Law? 

 

The appropriate level of government to deal with the adoption and 

implementation of the model law depends on the constitutional framework 

of the country in question. In Canada, the model law would almost 

certainly have to be adopted at the provincial level in accordance with 

Article 92(13) of the Constitution Act (1867)
92

 (Property and Civil Rights 

in the Province). The model law will also include certain procedural 

provisions (discussed in more detail below) which would engage Article 

92(14) (The Administration of Justice in the Province) as well. 

 

d. Do the Benefits of a Model Law Outweigh its Costs? 
 

The model law is a particularly economic approach for at least two 

reasons:  

 

                                                      
92

 30 & 31 Victoria, c 3 (UK). 



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230 

1) Since it is already drafted, the adoption process is much smoother and 

less time-consuming for legislators and legislative drafters. This makes it 

less demanding on the public purse.  

2) It uses each adopting country‘s existing legal system. The law‘s 

procedural provisions will reference the adopting jurisdiction‘s existing 

procedural rules rather than create new procedures.  

 
While the subset of the population that will benefit directly from the 

model law is relatively small, adopting it does not pose any obvious social 

cost given that: 1) it is ―complain-driven‖; and 2) it poses no budgetary 

cost (i.e. need to create a regulatory body or bureaucracy).  

 

e. The Model Law’s Provisions Must be Clear, Consistent, 
Comprehensible, and Accessible to Users 

 

In order to maximize the model law‘s utility, an effort should be made 

to both employ a plain language drafting style and, wherever appropriate, 

define terms exhaustively. This approach maximizes both transparency 

and certainty for potential litigants. 

One example of how this will be implemented in the model law is the 

reverse-domain name hijacking provision. As discussed more fully below, 

that provision will begin by exhaustively defining reverse-domain name 

hijacking. This is not the case under the UDRP. UDRP Rule 15(e) defines 

reverse-domain name hijacking as: ―the filing of a complaint in bad faith, 

resulting in the abuse of the UDRP administrative process.‖ This 

definition is vague. First, the provision does not tell us what constitutes 

abuse of the UDRP process. Second, the provision fails to define bad 

faith. The UDRP offers examples of bad faith registration at Section 4(b), 

but that provision clearly does not apply to the term bad faith as used in 

Rule 15(e). The model law provision will list factors for courts to apply 

when considering whether to grant a plaintiff‘s cause of action. 

Creating a freely available database and digest of decisions dealing 

with the model law will also achieve the ends of consistency, accessibility 

and transparency. The United Nations Commission on International Trade 

Law (UNCITRAL) has implemented this strategy in the creation of its 

―Case Law on UNCITRAL Texts‖ (CLOUT) database. The UNCITRAL 

Commission on International Trade Law has noted the positive effects the 

CLOUT database has had on promoting uniform application of 

UNCITRAL texts.
93

 

                                                      
93

 Report of the United Nations Commission on International Trade Law, Forty-

seventh session (7-18 July 2014), (United Nations, New York, 2014), 32. 



THE DENNING LAW JOURNAL 

 

 

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f. All Interested Stakeholders Should be Consulted  
 

The three major stakeholders implicated by cyber-squatting regulation 

are: trademark owners, domain name registrants who are not trademark 

owners and the general public.
94

 Adopting countries should consult 

representatives of these groups before implementing the model law. Since 

the model law will encourage a balanced approach, all three of these 

groups should (in principle) be in favour of it. Representatives of these 

groups will, however, lobby for amendments to the law favourable to their 

respective priorities, which will often collide.  

 

g. How Will Compliance with the Model Law be Achieved? 
 

One of the weaknesses of the model law approach (discussed more 

fully below) as with any international instrument is that a sovereign state 

cannot be forced to adopt it. The hope is that governments will see the 

merits in the model law and wish to adopt it. However, once the model 

law is adopted, compliance will be achieved through the adopting 

country‘s judicial system.  

Once implemented, the model law will be enforceable like any other 

law. Compliance would be encouraged by the fact that the law is backed 

by the executory force of the judicial system. This may be contrasted with 

a model law favouring arbitration where a successful party would, after 

succeeding before the arbitral tribunal, still have to commence 

proceedings before the court in the enforcement jurisdiction (this is known 

as single exequatur or homologation).
95

  

 

Benefits and Shortcomings of a Model Law Approach 

 

As with any regulatory approach, a model law comports both benefits 

and shortcomings. The Author is naturally of the opinion that the former 

outweigh the latter in the present context.  

                                                      
94

 See Warren B Chick, ‗Lord of your Domain but Master of None: The Need to 

Harmonize and Recalibrate the Domain Name Regime of Ownership and 

Control‘ [2008] 16 Int‘l JL & Info Tech 8, 32. 
95

 See A Redfern and M Hunter, Law and Practice of International Commercial 

Arbitration (4th edn, Sweet & Maxwell, 2004), 516; and Antonin I Pribetic, 

‗―Winning is Only Half the Battle‖: Procedural Issues Relating to the Recognition 

and Enforcement of Foreign Arbitral Awards‘ [2009] 8 ICFAI University Journal 

of Alternative Dispute Resolution 11, 13. 



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232 

h. Benefits 
 

As noted in brief above, the model law offers the best of both worlds: 

certainty of content and flexibility of implementation. Different countries 

have varying judicial procedures and systems of adjudication. The most 

obvious distinction is between Common Law and Civil Law jurisdictions. 

The model law‘s drafting will be juridically neutral. This means that the 

provisions of the law will either make use of only neutral terms (i.e. terms 

that do not derive specifically from Common Law or Civil Law) or will 

include the terms applicable in both legal traditions.
96

 

Another benefit is the creation of binding precedent within a given 

jurisdiction and persuasive jurisprudence vis-à-vis other model law 

countries. Like all arbitral awards, the decisions of UDRP panels are not 

binding on future panels.
97

 This has led to inconsistent and often 

conflicting decisions.
98

 In contrast, courts in Common Law jurisdictions 

operate under the principle of stare decisis, the rule that courts are bound 

by prior decisions dealing with the same subject-matter. While this is not 

the case in civil law jurisdictions, there is the notion of jurisprudence 

courante. This doctrine stands for the proposition that, without being 

binding, a steady current of consistent decisions on a legal point 

(especially by a country‘s high court) is highly persuasive on other 

courts.
99

 These doctrines serve the important objective of providing legal 

certainty to litigants (and potential litigants) which is currently lacking 

under the UDRP. 

To amplify the benefit of this new body of case law, the entity 

responsible for drafting the model law should keep and update a 

searchable database which should be freely accessible. As noted above, 

this has already been implemented by UNCITRAL to positive effect.  

                                                      
96

 An example of the latter technique may be found at s 75 of the Canadian 

Bankruptcy and Insolvency Act, RSC, 1985, c B-3: ‗Despite anything in this Act, 

a deed, transfer, agreement for sale, mortgage, charge or hypothec…‘ 
97

 Yun Zhao, ‗Reflection on the Finality of Panel‘s Decisions in Domain Name 

Dispute Resolution Process, With Reference to China‘s Practice‘ [2008-2009] 26 

J Marshall J Comp & Info L 395, 399-400. 
98

 Ibid, 408. 
99

 See Jean-Louis Baudoin, ‗The Impact of the Common Law on the Civilian 

Systems of Louisiana and Quebec‘, in Joseph Dainow, The Role of Judicial 

Decisions And Doctrine In Civil Law And In Mixed Jurisdictions (Louisiana State 

University Press 1974) 13; and Jean Boulanger, ‗Notations sur le Pouvoir 

Créateur de la Jurisprudence Civile‘ [1961] 59 Revue Trimestrielle de Droit Civil 

417. 



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233 

The models law‘s treatment of cyber-squatting and reverse-domain 

name hijacking as legislatively and conceptually separate from trademark 

law is another key benefit. While related, domain names and trademarks 

are not the same. The legal principles surrounding trademark law can be 

ill-fitting in the cyber-squatting context. For example, a key concepts in 

trademark law is consumer confusion. In Canada (like many other 

jurisdictions), in order to demonstrate trademark infringement, a plaintiff 

must show a likelihood that the average Canadian consumer would be 

confused by the defendant‘s mark into thinking that the latter‘s goods or 

services were actually being offered by the plaintiff.
100

 In many cases, the 

average consumer would not be confused by a cyber-squatter‘s use of a 

trademark in a domain name.
101

  

Some jurisdictions including Canada and the U.S. require that a 

defendant ―use‖ a trademark for there to be trademark infringement.
102

 

Cyber-squatters often do not post any content (or relevant content) to the 

domain.
103

 In these cases, even though the defendant is clearly engaging in 

cyber-squatting, a plaintiff in a trademark infringement action would be 

unsuccessful due to its inability to meet the threshold use requirement.
104

 

Other trademark related causes of action such as trademark dilution 

under American trademark law have been applied to the domain name 

context as well.
105

 Some trademark holders have found success with 

dilution arguments.
106

 There are still gaps in protection, however. First, 

the dilution provisions only apply to ―famous trademarks‖.
107

 This short-

changes trademark owners who have not achieved ―fame‖ status, but are 

                                                      
100

 Mattel, Inc v 3894207 Canada Inc [2006] SCC 22, 56. 
101

 Keith Blackman, ‗The Uniform Domain Name Dispute Resolution Policy: A 

Cheaper Way To Hijack Domain Names And Suppress Critics‘ [2001] 15:1 Harv 

JL & Tech 212, 217. 
102

 Clairol International Corp v Thomas Supply & Equipment Co [1968] 55 CPR 

176, 3. 
103

 Blackman (n 101) 218. 
104

 There must also be a commercial component to the use by the cyber-squatter. 

S 4 of the Canadian Trade-marks Act, RSC, 1985, c T-13 requires use ―in the 

normal course of trade‖. The relevant provisions of the Lanham Act require ―use 

in commerce‖. 
105

 Federal Trademark Dilution Act, codified at 15 USC s 1125(c).  
106

 See Intermatic Inc v Toeppen [1996] 947 F Supp 1227. 
107

 The provision reads: ―Subject to the principles of equity, the owner of a 

famous mark that is distinctive, inherently or through acquired distinctiveness, 

shall be entitled to an injunction against another person who, at any time after the 

owner’s mark has become famous, commences use of a mark or trade 

name…‖(Emphasis added). 



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234 

well-known enough to attract a cyber-squatter. Second, the provision is 

only meant to apply to instances in which there is ―blurring‖ or 

―tarnishment‖ of the plaintiff‘s trademark.
108

 In some instances a cyber-

squatter registers a domain name and immediately contacts the trademark 

owner to offer it for sale without populating it with content. In these cases, 

no blurring or tarnishment could have occurred. 

 

i. Shortcomings 
 

Like any international instrument, a model law is only useful if it is 

implemented. Some model laws have been very well received. Two 

examples of these are the UNCITRAL Model Law on International 

Commercial Arbitration and the UNCITRAL Model Law on Electronic 

Commerce which have been adopted in 67 countries (totalling 97 

jurisdictions) and 61 countries (totalling 126 jurisdictions) respectively.
109

 

Others have been made available for adoption for several years without 

implementation by a single jurisdiction.
110

  

Since the U.S. already has the ACPA, it would likely not sign onto the 

model law. Given that U.S. courts have demonstrated a willingness to 

exercise extra-territorial jurisdiction when it comes to domain names, the 

effect of the model law may be attenuated. That said, U.S. courts are 

predisposed to exercise extra-territorial jurisdiction as it is under the 

ACPA. There is no reason why implementing the model law would 

exacerbate that fact. 

Though improving the corpus of international domain name law, the 

model law will not have the effect of creating internationally binding 

precedents. The court decisions in one sovereign country will never have 

binding effect on courts in other sovereign countries; there is thus still 

room for contradictory jurisprudence.  

                                                      
108

 Blackman (n 101) 219. See also Toppen (n 106) and Hasbro Inc v Internet 

Entm’t Group, Ltd, [1996] 40 US P Q 2d 1479. 
109

 See ‗UNCITRAL Texts and Status‘ (United Nations Commission on 

International Trade Law)  

<http://www.uncitral.org/uncitral/en/uncitral_texts.html> accessed 14 November 

2014. 
110

 For example, the UNCITRAL Model Law on International Credit Transfers 

(1992) has not been ratified anywhere, although a directive of the European 

Parliament and of the Council of the European Union based on the principles of 

the model law was issued on 27 January 1997. Another example is the 

UNCITRAL Model Law on Public Procurement (2011) which has yet to be 

adopted. 



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235 

In spite of the shortcomings to the model law approach, the Author is 

still of the opinion that they are far outweighed by the benefits. 

 

j. Key Provisions of the Model Law 
 

The model law‘s two most important provisions are the cyber-

squatting and the reverse-domain name hijacking causes of action. This 

section will also outline a few other key provisions to be drafted into the 

model law.  

 
k. Cause of Action for Cyber-Squatting 

 

This provision seeks to improve upon Section 4 of the UDRP. The 

UDRP requires the complainant to prove that the respondent has ―no 

rights‖ in the disputed domain name. This asks the complainant to prove a 

negative. Instead, the model law provision will require the plaintiff to 

show that, after exercising reasonable diligence, it is unable to identify 

any legitimate rights in the domain name. The provision will set out a 

non-exhaustive list of what constitutes legitimate rights; this list will 

include express recognition of free expression rights.
111

 Once this 

threshold is met, the burden will shift to the defendant to show that it does 

in fact have a legitimate right. 

The ACPA‘s wording seems to be a good starting point. Like the 

ACPA, the provision will expressly include protection for personal names. 

The provision will also favour the ACPA‘s ―bad faith intent to profit‖ 

language over the UDRP‘s ―registration and use in bad faith‖ language. 

This will capture passive domain name warehousing so long as it can be 

shown that the warehouse‘s only reasonable goal was to lure the 

trademark owner into making an offer to purchase the domain name. The 

bad faith considerations listed in the ACPA will also be incorporated, with 

certain exceptions. For example § 1125(d)(1)(B)(VIII) reads:  

[T]he person‘s registration or acquisition of multiple domain names 

which the person knows are identical or confusingly similar to marks of 

others that are distinctive at the time of registration of such domain 

names, or dilutive of famous marks of others that are famous at the time 

of registration of such domain names, without regard to the goods or 

services of the parties. 

                                                      
111

 The ACPA references ‗bona fide [sic] non-commercial or fair use‘ at s 

1125(d)(1)(B)(IV). Since fair use is a doctrine found exclusively in US law, the 

model law will us more neutral ‗freedom of expression style‘ language.  



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This factor would be excluded. The intention here was to allow the 

court to consider whether the defendant has demonstrated a pattern of 

cyber-squatting. This is not relevant. The cause of action is against cyber-

squatting, not the identification and elimination of cyber-squatters. The 

action is between the plaintiff and defendant. The only relevance is 

whether the defendant has infringed the plaintiff‘s rights. We do not 

consider a defendants prior conduct when determining infringement in the 

patent, copyright and trademark contexts; why should it be considered 

here? 

The model law will also allow in rem actions against websites. Unlike 

the ACPA, this will only be allowed when, after exercising due diligence, 

the plaintiff was unable to locate the defendant. The ACPA also allows for 

an in rem action when the plaintiff is ―unable to obtain in personam 

jurisdiction‖ over a would-be defendant.
112

 This was applied in NBC 

Universal to allow the U.S. District Court to assume jurisdiction even 

though NBC was able to locate the registrant. Limiting in rem actions to 

instances in which the registrant legitimately cannot be found would limit 

the potential for jurisdictional encroachments like the one in NBC 

Universal. 

Cause of Action for Reverse-Domain Name Hijacking 

This provision will provide an individual who feels they have been 

wronged by a domain name dispute panel with a means of retaining their 

domain name and obtaining damages for frivolous or vexatious 

proceedings undertaken by a complainant. The model law‘s reverse-

domain name hijacking provision will exhaustively define the term. One 

possible definition could be the following: ―Reverse-domain name 

hijacking‖ refers to the act of instituting frivolous, vexatious or baseless 

proceedings under the UDRP or another domain name dispute policy. 

The provision would then set out a test for determining whether to 

grant a reverse-domain name hijacking claim. Some of the factors to be 

considered would include the following: 

 

o Assuming the facts alleged by the complainant are true, does 
complainant meet the legal standard required to succeed under the 

relevant policy? 

o Did complainant make an attempt to settle the matter amicably 
with respondent before instituting proceedings? 

o Did complainant undertake any due diligence to determine the 
existence and extent of respondent‘s rights in the disputed domain 

name? 

                                                      
112

 s 1125(d)(2)(A)(ii)(I). 



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o Did respondent attempt to communicate to complainant that it had 
rights in the disputed domain name? 

o Does respondent‘s domain name registration predate 
complainant‘s trademark rights? 

 

Note that none of these factors directly refers to the correctness of the 

panel‘s decision. This is because the reverse-domain name hijacking 

provision is not an ―appeal‖ or ―review‖ of the panel‘s decision so much 

as it is a cause of action against the complainant in that process. This 

approach is necessary due to the inconsistency with which UDRP panels 

apply legal concepts. If the model law allowed for a judicial review of 

panel decisions, courts in each adopting jurisdiction would likely look at 

the case as a function of whether the decision conforms to that 

jurisdiction‘s trademark law. This would thwart the model law‘s 

harmonization objective. 

  

l. Other Key Provisions 
 

A few other key provisions to be included in the model law include: 

 

 Jurisdictional Provision 

The model law will maximize jurisdictional certainty to minimize 

forum shopping. Every jurisdiction has its own body of private 

international law. However, the model law may offer guidance on whether 

the court should accept jurisdiction over a cause of action thereunder. 

Some potential factors for determining jurisdiction could be:  

 

o Residence of parties 
o Location of trademark registration 
o Location of the domain name registry 
o Country in which one of the parties has significant assets or 

business dealings. 

 

The Author does not advocate for any of these in particular. Further 

study should be given to the question of what constitutes the best indicator 

of appropriate jurisdiction. The location of the domain name registry 

(applied in NBC Universal) appears to be a weak factor because it would 

grant exclusive jurisdiction to a single court for each TLD. It is, however, 

a potential factor and should therefore be left on the table until decided 

otherwise by the drafters of the model law. 



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238 

 

 Default Should be Summary or Abridged Proceeding 
 

One of the UDRP‘s benefits is its speed and cost-effectiveness. No 

court process will be as cheap as a UDRP proceeding. However, the 

model law could favour quick and cost-effective resolution by including a 

provision which presumes a summary or simplified procedure wherever 

such an option exists in the adopting country‘s procedural rules.  

The model law would employ neutral language so as not to refer to a 

specific type of procedure. For example, the provision would not 

expressly use the term ―summary proceeding‖ or ―simplified procedure‖ 

as those terms refer to procedural rules that may not exist everywhere. 

Adopting jurisdictions would then be free to modify the text of this 

provision to refer to their own procedural mechanisms. For example, in 

Ontario, the model law could refer to the simplified procedure rules (Rule 

76) in the Rules of Civil Procedure.
113

 

 

 Burden of Proof 
 

The model law should have a provision expressly setting out which 

party has the burden of proof in a given context. This will almost always 

be the plaintiff, though certain provisions -such as the requirement for a 

defendant in a cybersquatting action to show that it does have rights in the 

domain name after the plaintiff demonstrates reasonable diligence in 

trying to ascertain the existence of those rights-  may reverse that 

presumption. 

 

 Stay Provisions 
 

The Model law should comport a stay provision allowing: 1) a party to 

have the court order that a domain name dispute resolution panel stay its 

proceedings pending final resolution by the court; and 2) a party to have a 

proceeding taken under the model law stayed if there is a pending 

proceeding in another model law jurisdiction dealing with the same 

subject-matter.  

 

5. CONCLUSION 

 

                                                      
113

 RRO 1990, reg 194. 



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239 

The current domain name dispute resolution framework is inadequate 

as the UDRP, ACPA and national trademark laws are only partially 

effective. The model law presents a novel solution.  

The model law is superior to the UDRP because: it creates an 

exhaustive legal regime under which no reference need be made to 

trademark law; decisions invoking the model law are final; it eliminates 

the propensity for bias inherent in the complainant/provider-driven UDRP 

panel selection process; the greater variety in legal background of judges 

eliminates the pro-intellectual property slant some UDRP panellists may 

carry; it provides robust protection against reverse-domain name 

hijacking; it captures passive warehousing; it protects personal names; and 

it will not conflict with national consumer protection and language laws.  

The model law‘s key cyber-squatting provision will bear a stark 

resemblance to § 1125(d) of the ACPA. However, the jurisdictional 

provisions in the model law will do a much better job of circumscribing 

the jurisdiction of the national courts in adopting countries.  

Trademark law has never fully addressed cyber-squatting. The fact 

that the model law would be treated as conceptually separate from 

trademark law would allow for the case law developing around the new 

causes of action to be uninhibited by those ill-fitting concepts. 

Since there are currently no international treaties on cyber-squatting, 

there is a legal basis for a model law dealing with cyber-squatting and 

other abusive domain name practices. The appropriate level of 

government to deal with the adoption and implementation of the model 

law depends on the constitutional framework of the country in question.  

The benefits of the model law justify its minimal implementation cost 

because: 1) the model law comes essentially ready for implementation 

cutting the time and cost associated with enacting legislation from the 

ground up; and 2) Since litigants would go before the courts, there would 

be no need to create any additional administrative body for oversight or 

adjudication. 

The law‘s provisions will be clear, consistent and accessible. This will 

be achieved primarily through plain language drafting and properly 

defined terms. All interested stakeholders, namely trademark owners, 

domain name registrants who are not trademark owners and the general 

public, should be consulted before the model law is implemented in each 

adopting country. Compliance with the model law, once enacted, will be 

achieved through the adopting country‘s established judicial system and 

will enjoy the benefit of the executory force attached thereto. 

While it represents a significant undertaking, this paper shows that 

drafting and implementing a model law dealing with cyber-squatting and 

other abusive domain name practices would be the most effective 



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240 

regulatory approach to curbing cyber-squatting and reverse-domain name 

hijacking. The UDRP and ACPA are fifteen years old. Both are laudable 

efforts, but neither has ever adequately measured up to the task of 

eliminating (or greatly diminishing) cyber-squatting. Perhaps, in 2014, it 

is time to revisit the domain name regulatory framework and create a 

complete, harmonizing document in the hopes of addressing the issue 

once and for all.