How do domain name disputes arise?

A domain name is a textual address for a location on the internet, and is used to establish a presence on the internet.Many organisations register as their domain names their own names, initials or trademarks (in text form), or words that are descriptive of their products or services or that are otherwise associated with them. Domain names are usually issued on a "first come, first served" basis. Disputes over who is entitled to a particular domain name may arise where there is more than one party interested in using the same domain name.The parties to a typical domain name dispute are the registrant of the domain name (the "registrant") and the party applying to take over the domain name (the "complainant").

Domain name registration in Singapore

The Singapore Network Information Centre (SGNIC) Private Limited ("SGNIC"), a wholly owned subsidiary of the Info-communications Development Authority of Singapore, is the registration authority for Singapore domain names (i.e. domain names ending in ".sg").

When SGNIC registers a domain name, it does not assess the legality of the domain name or whether the registration or use of the domain name infringes the rights of a third party. SGNIC's domain name registration agreements allow SGNIC to remove a domain name if, in SGNIC's determination, the continued entry of the domain name on the database would be wrongful or where fraud has been committed in the registration process for the domain name.

The Singapore Domain Name Dispute Resolution Policy

The Singapore Domain Name Dispute Resolution Policy ("SDRP") and its accompanying Rules and Supplemental Rules establish an alternative dispute resolution mechanism for resolving ".sg" domain name disputes. The dispute resolution service provider under the SDRP is a joint secretariat of the Singapore Mediation Centre and the Singapore International Arbitration Centre (the "Secretariat").

Under paragraph 4(a) of the SDRP, a registrant of a ".sg" domain name is required to submit to a "mandatory administrative proceeding" when a complainant asserts that:

(1)       the registrant's domain name is identical or confusingly similar to a name, trade mark or service mark in which the complainant has rights;

(2)       the registrant has no rights or legitimate interests in respect of the domain name; and

(3)       the registrant's domain name has been registered or is being used in bad faith.

The complainant must prove each of the three elements he has asserted in the administrative proceeding. The interpretation of these elements is aided by two deeming, but non-exhaustive, provisions in the SDRP.

Under paragraph 4(b) of the SDRP, the following circumstances are treated as evidence of the registration and use of a domain name in bad faith:

(1)       circumstances indicating that the registrant has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant, who bears the name or is the owner of the trade mark or service mark, or to a competitor of that complainant, for valuable consideration in excess of the registrant's documented out-of-pocket costs directly related to the domain name;
 

(2)       the registrant has registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct;
 

(3)       the registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
 

(4)       by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant's website or other on-line location, by creating a likelihood of confusion with the complainant's name or mark as to the source, sponsorship, affiliation, or endorsement of the registrant's website or location or of a product or service on the registrant's website or location.

Under paragraph 4(c) of the SDRP, the following circumstances are deemed to demonstrate the registrant's rights or legitimate interests to the domain name:

(1)      before any notice to the registrant of the dispute, the registrant's 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;
 

(2)       the registrant (as an individual, business or other organization) has been commonly known by the domain name, even if the registrant has acquired no trade mark or service mark rights; or
 

(3)       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 trade mark or service mark at issue.

The SDRP is designed primarily to cater for instances of registration or use of domain names in bad faith.One example is the cybersquatting scenario, where a registrant registers a domain name with a view to making a profit by selling it to the proprietor of the corresponding trade mark, or the owner of the goodwill in the mark (if it is unregistered), or to some other interested person.

Using the Singapore Domain Name Dispute Resolution Service

The complainant initiates the dispute resolution process by submitting a complaint to the Secretariat.The Secretariat will review the complaint for administrative compliance with the SDRP and its subsidiary Rules.
If the complaint is in order,the Secretariat would forward the complaint to the registrant.The registrant has 15 working days to submit a response to the Secretariat. This period may be extended by the Secretariat at the request of the registrant, or by written agreement of the parties with the approval of the Secretariat.If a registrant fails to submit a response,the dispute will be decided based on the complaint.

The dispute will be dealt with by an administrative panel (referred to as the "Panel") appointed by the Secretariat. The Panel may comprise one or three members. Generally, the Secretariat will appoint a single-member Panel. If either the complainant or the registrant elects to have the dispute decided by a three-member Panel, the Secretariat will appoint three panellists. The Panel's fees will be paid in its entirety by the complainant if the Panel comprises only one member or the complainant elects to have the dispute decided by a three-member Panel. The Panel's fees will be borne equally by the complainant and the registrant if the complainant opts for a one-member Panel but the registrant elects for a three-member Panel.

When a complainant submits a complaint, the complainant and the registrant will be invited to consider whether they wish to have the dispute mediated by the Panel before the Panel is called upon to decide the dispute. If both parties agree to have the dispute mediated first, the Panel will facilitate discussions between them to help them resolve the dispute amicably. Possible settlement options include an agreement that the domain name be transferred to the complainant not immediately but at an agreed time in the future,or the retention of the domain name by the registrant but with clear and visible links on the registrant's homepage to the complainant's website. The complainant and the registrant will elect, in the complaint and response respectively, whether to let the same Panel decide the dispute if the parties fail to reach a settlement after mediation. If either party wishes to have the dispute decided by a different Panel, the complainant will have to commence a new administrative proceeding before a different Panel.

Once the Panel is appointed, the Secretariat will notify the parties of the panellist or panellists and the dates by which mediation should be concluded and/or the Panel will forward its decision on the complaint to the Secretariat. The Secretariat will also forward the file to the Panel.

Generally, the communications between the parties and the Panel are made through the Secretariat. The Panel may conduct the administrative proceeding in such manner as it considers appropriate, so long as it ensures that the parties are treated with equality and each party is given a fair opportunity to present its case. The Panel may request, in its sole discretion, for further statements or documents from either party. There will be no in person hearings (including hearings by teleconference, videoconference or web conference) unless the Panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint.

The Panel decides the dispute in accordance with the SDRP, the Rules for the SDRP and any rules and principles of law of Singapore that it deems applicable. In the absence of exceptional circumstances, the Panel will forward its decision to the Secretariat within ten working days after the date of its appointment. The Secretariat will communicate the full text of the decision to each party within three working days after receiving the decision from the Panel.

The administrative proceeding does not prevent the complainant or registrant from submitting the dispute to a Singapore court before the administrative proceeding is commenced or after the administrative proceeding is concluded. However,neither party shall initiate any legal proceedings in respect of a domain name dispute that is the subject of a pending administrative proceeding.

SGNIC will implement the decision of the Panel ten working days after it is notified by the Secretariat of the Panel's decision, unless SGNIC receives from the registrant during that ten working day period a sealed copy of a writ of summons or an originating summons showing that the registrant has commenced a lawsuit against the complainant in respect of the domain name. If SGNIC receives such documentation within the ten working day period, SGNIC will not implement the Panel's decision, and SGNIC will take no further action until it receives satisfactory evidence of a resolution between the parties or that the court proceedings have been dismissed or withdrawn, or a copy of the Singapore court order dismissing the registrant's lawsuit or ordering that the registrant does not have the right to continue using that domain name.

Benefits of using the Singapore Domain Name Dispute Resolution Service

Under the SDRP, an administrative proceeding may be concluded in as short as 30 working days from the date the complainant submits a complaint with the SDRP secretariat. The service may cost as little as $2,750 (for a single-member Panel to decide disputes pertaining to up to five different domain names). The SDRP administrative proceeding therefore offers a quicker and cheaper way of resolving ".sg" domain name disputes compared to litigation in the courts.