Domain Names - Revised Supplemental Rules Prevent Single Filing Against Multiple Registrants

The National Arbitration Forum’s revised UDRP Supplemental Rules became effective on January 1, 2006. The revised definition of ‘respondent’ (now limited to a single person or entity listed in the WHOIS database as the domain name registrant) means that complainants may no longer file a single complaint against multiple registrants proven to be a single entity.

While most of the revised Supplemental Rules do not have a material effect on the filing of complaints under the UDRP (e.g., increased filing fees and the limitation on each party to a single additional submission), the new definitions section has a significant impact on a fairly common type of domain dispute.

Under UDRP Rule 1, the ‘respondent’ is defined as the “holder of a domain name registration against which a complaint is initiated”. NAF’s Supplemental Rule 1(d) now defines the respondent further. “The holder of a domain name registration”, as used in UDRP Rule 1, (i) means the single person or entity listed in the WHOIS registration information at the time of the filing of the complaint with NAF, and (ii) once the registrar has verified registration, is limited to the single person or entity as verified by the registrar.

In practice, determining the “holder of the domain name registration” requires a simple search of the WHOIS database for the domain name. The person or entity listed as the registrant is the ‘holder’ and therefore the respondent.

A problem arises from the fact that domain name registrants often supply the WHOIS database with inaccurate or unreliable contact information. In fact, serial cybersquatters often register infringing domain names under various aliases. The World Intellectual Property Organization (WIPO) panelist in Adobe Systems Inc v. Domain OZ held for the first time that the evidence established that Domain OZ, the listed registrant of the ‘adobeacrobat.com’ domain name, and Names OZ, the listed registrant of the ‘acrobatreader.com’ domain name, were in reality the same domain name registrant. Accordingly, it allowed the complainant to submit one complaint concerning both domain names, because requiring the complainant to file two separate, identical complaints would “place an unjustifiable economic burden on the complainant” and “burden ... the administrative process”.

Before the new rules, NAF arbitrators followed this line of cases as well. For instance, in Yahoo! v. Vorot the panel recognized that the complainant would be faced with an “unjustifiable economic burden” if it was required to bring ten separate administrative proceedings, and that “it would be a burden on the administrative process to require it to duplicate its effort in the same case”. Accordingly, the panel accepted as true that the ten domain name registrants were, in fact, one respondent. Other similar cases include Yahoo! v. Zviely, International PADI Inc v. Smith and DC Comics v. Sensible Internet Retail Inc.

NAF’s new rule prevents the arbitrator from determining whether the complainant has sufficiently proved that two different listings in the WHOIS database are indeed one and the same. Paragraph 4(f) of the UDRP empowers the arbitrator to consolidate disputes in the event of multiple disputes between parties. However, there is little incentive to consolidate multiple filings because NAF’s Supplemental Rule 17(c) states that all fees paid to NAF are non-refundable.

This new rule will not change the many domain disputes filed under the UDRP that involve a single domain name registrant. However, the registration of multiple domain names under different aliases is a fairly common circumstance. The new definition of ‘respondent’ creates a significant distinction between NAF and the other administrators of disputes under the UDRP. If a dispute involves multiple infringing domain names registered by one entity under various aliases, a complainant seeking to resolve the dispute in a cost-effective manner must take into account NAF’s new Supplemental Rules and, as a result, may instead consider a WIPO proceeding as an alternative.