As previously reported in our August 1999 Newsletter (N.S. 191), the Internet Corporation for Assigned Names and Numbers ("ICANN") was formed at the request of the United States Government to take over the governance of the Internet, including domain name system management and disputes concerning the registration of domain names. ICANN has now implemented its mandatory domain name dispute resolution procedure, which differs significantly from the procedure previously administered by Network Solutions, Inc. ("NSI"). Briefly stated, ICANN requires that a generic Top Level domain name registrant submit to mandatory arbitration proceedings if a third party complains to one of the ICANN accredited dispute resolution providers. The ICANN procedure further provides that the complainant in an arbitration proceeding must assert that: the domain name is identical or confusingly similar to its trademark; the domain name registrant has no rights or legitimate interest in the domain name; and the domain name has been registered and is being used in bad faith. ICANN has identified the following elements as supporting a registrant's legitimate interest in continued ownership of the disputed domain name: the registrant is using (or has a demonstrable preparation to use) the domain name in connection with a bona fide offering of goods or services; the registrant has been commonly known by the domain name, even if he has acquired no trademark rights in the name; or the registrant is making a legitimate non-commercial or fair use of the domain name without intent to confuse consumers or tarnish the trademark at issue.

In contrast to the NSI procedure, the ICANN rules nowhere provide for a suspension of a domain name based upon the submission of a trademark registration. Under the ICANN policy, the parties submit their arguments and evidence and the arbitrator (or arbitrators) then renders a decision. The remedies available are limited to requiring cancellation of the domain name or its transfer to the complainant.