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The issue of YouTubeIslam.com and domain disputes

4 August 2009

Kurt Pritz

In the past few days, we have been receiving a large number of emails and phonecalls about the web address YouTubeIslam.com, and a dispute over its ownership.

Because we coordinate the domain name system, ICANN is sometimes wrongly seen as the ultimate authority over anything that happens with the domain name system. The reality is quite different, so this blog post explains ICANN’s role and relates that to this particular issue.

While ICANN does ultimately set the rules by which domain names are registered, it does not possess the power to overturn decisions that are made within the rules. Why? Because ICANN, through its bottom-up policy development, seeks to provide distributed, independent decision making that is placed in the hands most suited toward making these sorts of decisions.

A system for domain disputes

One of the first things that ICANN did shortly after it was created in 1998 was introduce an independent system for deciding on domain name disputes. The Uniform Dispute Resolution Process, known as UDRP, was developed by a wide group of individuals representing a broad cross-section of different interests.

The idea was to create a faster and less expensive alternative to the courts to make decisions about who had ownership rights over a particular domain.

The UDRP allows anyone with a trademark to go to one of four approved UDRP independent arbitrators and request that they review whether a domain infringes their rights. If you want more information, please go to: http://www.icann.org/en/udrp/, or Wikipedia’s article on UDRP, but broadly: the UDRP looks at three main issues when it decides if a domain is infringing someone else’s rights and so should be handed over to that person.

They are:

  • Whether the domain name is identical or confusingly similar to the complainant’s trademark
  • Whether the registrant has any rights or legitimate interests in the domain
  • Whether the domain is being used in “bad faith”

Since the UDRP was first introduced, nearly 30,000 cases have been successfully arbitrated.

What happened in the YouTubeIslam.com case?

In this case, Google went to one of the approved arbitration bodies and asked for the domain to be looked at for trademark infringement.

Google has a trademark in “YouTube”, the very well-known video site, and it argued that the current registrant did not have rights in the name and that it was using the site in “bad faith” – which is a legal term interpreted by the arbiter, but in this case might mean using the site to attract visitors by appearing to associate yourself with someone else.

When the NAF received the complaint, it sent a copy to the registrant of YouTubeIslam.com (actually to all three contacts for the domain: technical, administrative and billing) by email, by post and by fax, and asked them to respond to Google’s claims.

Decision

No one responded to those requests and that meant no-one defended the case, so the process went forward without them. The National Arbitration Forum (NAF) chose an arbitrator to look at the complaint and he, considering the three tests, decided in favor of Google. The arbitrator then directed the registrar of the domain (GoDaddy) to transfer the domain to Google within 10 days of the decision – which means by 5 August 2009: tomorrow.

You can read the NAF’s full decision and explanation at http://domains.adrforum.com/domains/decisions/1266305.htm.

Why did the NAF decide for Google and against the current registrant of YouTubeIslam.com?

According to the decision, the arbitrator found that the domain has been registered, and was being used to trade off YouTube’s name.

Here’s an excerpt from the decision’s “findings” section: “Respondent registered the domain name on January 27, 2007. The disputed domain name resolves to a website where Respondent allows users to upload and view videos and information about the Islamic faith. The disputed domain name’s resolving website copies the look and feel of Complainant’s website, including the use of tabs for different parts of its website such as “Home”, “Channels”, and “Community”, which are identical to those on Complainant’s domain name and resolving website.”


Back to ICANN

So what has this to do with ICANN? For a day-to-day standpoint, very little. ICANN has no role or influence in these proceedings. While ICANN as a community organization did develop the UDRP rules, and while it also has contracts with both the registry (dot-com) and the registrar (GoDaddy), the whole process happened entirely within the rules and so ICANN plays no part in any particular case such as this.

As explained earlier, ICANN doesn’t resolve disputes. The registrar acted in accordance with their contract with ICANN, and the arbitration system worked according to the process as defined.

The decision was not a reflection on the website content. It was purely based on the issue of trademark infringement where Google possesses rights in the YouTube brand.

We can understand why those concerned about the decision may wish to approach ICANN and ask the organization to intervene. Hopefully this post makes it clear why that is not only possible but also why ICANN would not wish to get involved even if it was able: because none of the rules have been broken.

Can the decision be appealed?

If the current registrant of YouTubeIslam.com wishes to contest the decision, it is able to file a lawsuit against it and request that any transfer be stopped until the court process is decided. Ultimately, it is the courts that can decide ownership rights.

Kurt Pritz