As I continue leafing through my old law dissertation, I’m reminded just how uncharted the domain name world was before the UDRP came along in 1999. It was, quite frankly, the Jurassic period of online dispute resolution. Or perhaps more accurately, the Wild West (though some might argue it still is).
Back then, Network Solutions Inc. (NSI) controlled the .com namespace under contract from the US government. Their policies on trade mark conflicts were famously vague – critics said NSI was “forcing a terribly flawed trade mark policy down the throats of its customers.” In many cases, they simply suspended disputed domains and left the parties to fight it out in court. No one was happy (apart from some lawyers!)
And if you wanted your domain back from that purgatory? You needed a court order from a US court. The perfect system, as long as you had deep pockets and a penchant for transatlantic litigation.
One dispute I highlighted in my dissertation involved the domain prince.net, with the American Prince Sports Group on one side, and UK-based Prince plc on the other. Despite the US company’s trade mark registrations, a UK court sided with Prince plc, recognising their prior use. It helped that the two companies had coexisted peacefully until domain names came into play. But the first-come, first-served nature of registrations tipped the balance.
Another example was epix.com, in which Interstellar Starship Services fended off a challenge from the US trade mark owner Epix Inc. Interstellar, which promoted theatre groups, sought a declaratory judgment of non-infringement – and won. Their proactive approach kept their website online and avoided NSI’s “suspend first, ask questions later” attitude. The case showed just how far trade mark owners were willing to go to acquire domains, and how unpredictable the outcomes could be.
Both cases revealed the chaos and uncertainty of the pre-UDRP era, where there was little structure, inconsistent decisions, and very few ways for a smaller business to defend itself without going to court.
Thankfully, the introduction of the UDRP in 1999 brought much-needed order. It’s not perfect, but it’s consistent, and its impact has been profound. I’ve even had the privilege of contributing to its development, most recently as part of the joint ICA-WIPO submission during the UDRP’s ongoing review.
We’ve come a long way since those lawless early days, and I’m proud that Com Laude is now one of the top-three UDRP filers globally. A bit more efficient than trying to drag NSI into court, I’d say.