
Domain-name disputes such as cybersquatting (profiting from the goodwill of another's trade mark online) are resolved by a compulsory expedited administrative process under ICANN (Internet Corporation of Assigned Names and Numbers). The alternative dispute settlement mechanism is quite different from the consensual nature of arbitration, although arbitration centres including Hong Kong house ICANN approved domain-name dispute-resolution service providers. If you have trademark-based domain-name disputes to resolve, what considerations do you have in mind in determining which right protection mechanism (RPM) to proceed?
ICANN's UDRP (Uniform Dispute Resolution Policy) system 1999, applies to the second level of generic top-level domains (gTLD) of: .aero, .asia, .biz, .cat, .com, .coop, .info, .mobi, .museum, .name, .net, .org, .pro, .tel and .travel. ; and a long list of new gTLDs eg .games in simplified Chinese characters since October 23, 2013. Any registered or unregistered word-mark owner has to show the registered domain name is identical or similar to the mark, the registrant has no right or legitimate interests in the domain, and it has been registered and is being used in bad faith. The general standard of proof is balance of probabilities or the preponderance of the evidence ie more likely than not that the claimed fact is true; and the remedy is cancellation, or transfer of the disputed domain name to the complainant.
ICANN's URS (Uniform Rapid Suspension) system 2013 applies to the new gTLDs, and a few legacy gTLDs have adopted it. An unregistered word-mark owner has to show that the mark has been validated through court proceedings or specifically approved by a statute or treaty. A complainant has to produce clear and convincing evidence in clear cases of trademark abuse to succeed, and the remedy of the temporary suspension of a disputed domain name can be appealed within the URS system.
You can use UDRP and URS conjunctively. Both RPMs, particularly URS, provide a faster and cheaper way to resolve the domain-name disputes internationally than going to court or arbitration, which is jurisdiction-based. In light of the UK decisions of Toth v Emirates [2012} EWHC 517 (Ch) and Yoyo Mail Ltd v Royal Bank of Scotland Group Plc & Ors [2015] EWHC 3509 (Ch), it is probable that the question of abusive registration would be left to domain RPM processes!