comparative means of resolving dn

8/14/2019 Comparative Means of Resolving DN

1/48

1

A comparative study of the means of resolving domain name disputes: seekingthe most desirable legal mechanism and policy for Jordan

Rami M Olwan


2/48

2

Dedication & Appreciation

I dedicate this research paper to my father who taught me to love knowledge andnot to be satisfied with what I have.

I also want to thank my intellectual property professor Tim Wu for agreeing tosupervise the research paper and for his valuable comments on the earlier draft

of the paper.


3/48

3

Abstract

The research tries to examine the extent to which the Jordanian legal system is capable of dealing with the

problem of cybersquatting. It argues that the current Jordanian legal system is not currently capable of

dealing with the problem of cybersquatting, and this is due to several reasons. The research paper pin

points several flaws inherent in the current domain name registration system and policy of the National

Information Technology Center (NITC), the only entity responsible for registration of (.jo) ccTLDs. The

research paper examines the different mechanisms followed worldwide to deal with domain name disputes;

although there are no single formula or approach, and ccTLDs registries adopt several mechanisms at the

same time to solve domain name disputes, the paper compares these systems and tries to suggest a

comprehensive system for NITC and Jordan based on situation of the country.

The paper argues that NITC has not adopted a specific domain name dispute resolution policy to deal with

domain name disputes under the .jo space and a clear policy for resolution must be put in place.

The paper mainly examines two options available to the legislator in Jordan which are either to amend the

existing laws of trademarks, unfair competition or to have a specific legislation to deal solely with

cybersquatting. Further, this paper argues that unfair Jordanian competition laws should be amended to

cope fully with the problem of cybsesquatting; furthermore, the NITC should change its current registration

policy to be compatible with the international standards followed world wide by the ccTLDs registries. The

paper also provides suggestions and recommendations for development of .jo domain name space.

Introduction

The rapid growth of the Internet in recent years and the proliferation of

Information Communication Technologies (ICT) are making a dramatic and profound

impact on the way humans communicate, conduct business, and sell their goods and

services. 1 New technologies have transformed the business world, have generated new

commercial models, and have presented the world economy with new challenges.

1 Rami Olwan, Conflict between trademark and domain names , AGIP Bulletin, issue 6 (2003), available atwww.agip.com/download_file.aspx?file_id=42&lang=en , (last visited on Nov 29, 2006).
http://www.agip.com/download_file.aspx?file_id=42&lang=enhttp://www.agip.com/download_file.aspx?file_id=42&lang=enhttp://www.agip.com/download_file.aspx?file_id=42&lang=en


4/48

4

Businesses, individuals and governments have attempted to gain from the potential

profits that the Internet offers. 2

The business potential encouraged by the internet and the culture of cyberspace

has created a race for registering domain names 3 and a new market place, a market which

companies rightly, wish to exploit their trademarks. 4 Two companies may register the

same trade mark in different classes under the trademark system, but they can not register

the same domain name in cyberspace because each domain name is unique and the

Domain Name System (DNS) does not allow registration of same domain names; this has

created the legal problem of cybsersquating. Cybersquatting can be defined as thepractice of registering famous trademarks as domain names and trying to sell them for

large companies for hefty sums of money.

When the internet was in its early stage of development, few were worried about

cybersquatting. The internet was largely a military, research and education medium for

the Defense Department and academics and was not being used for commercial purposes.

With the onset of commercial usage in early 1995, conflict surfaced between trademark

owners and domain name holders 5 or between the trademark system in the real world and

the domain name system in cyberspace.

The issue of Internet Governance has gained increasing prominence in recent

years as the importance of an effective and efficient domain name system becomes ever

2 id3 Mo Zhang, Governance of Internet Domain Names Against Cyberquatting in China: A Framework and Legal Perspective , 26 Hasting Intl & Comp L.R, 1 (2002 ).4 Andrew D Murray, Internet Domain Names: The Trademark challenge , International Journal ofInformation Technology Vol 6, No 3, 9 (1998).5 See the Oral Testimony of Mr. Gabe Battista on the hearing before the subcommittee of the one hundredfifth congress, first session on internet domain name trademark protection, November 5, Serial No. 62,138- 139 (1997).


5/48

5

more apparent 6. While much of the focus has centered on the operations of the Internet

Corporation for Assigned Names and Numbers (ICANN), the role of national

governments has sometimes been overlooked. 7

The E-commerce development report prepared by United Nations Conference on

Trade and Development (UNCTAD) has recognized the importance of policy decisions

that are reguired in relation to country code Top Level domains (ccTLDs) of developing

countries. 8 According to the report, developing countries should formulate policies which

take into account appropriate legal, culture, economic and linguistic requirements. 9

Although there have been many studies that consider ccTLDs registrations and domainname dispute policies and resolution, there has been no study on domain names disputes

in English in Jordan. This paper attempts to asses the current domain name registration

and dispute resolution system for Jordan (.jo) and tries to provide suggestions for

improvement.

The paper will focus on the protection of domain names under the ccTLD .jo

space; specifically, the paper will look at trademark and unfair competition laws in

Jordan to see to what extent these laws can combat cybersquatting. The main purpose of

the paper is to asses the .jo domain name registration system and dispute resolution

policy adopted by NITC. The paper proceeds in three parts. In part I, I will give an

overview of domain names; in part II, I will examine broadly the means and legal

mechanism adopted worldwide to resolve domain names disputes. In part III, I will asses

6 Micheal Geist, government And Country- Code Top Level Domains: A Global Survey, preliminary report,December (2003), available atwww.michaelgeist.ca/component/option,com_docman/task,doc_download/gid,6/ -(visited on November 15, 2006)7 id8 See Ecommerce report of 2002 prepared by UNCTAD, available athttp://r0.unctad.org/ecommerce/ecommerce_en/edr02_en.htm (visited on October 31, 2006)9 id
http://r0.unctad.org/ecommerce/ecommerce_en/edr02_en.htmhttp://r0.unctad.org/ecommerce/ecommerce_en/edr02_en.htmhttp://r0.unctad.org/ecommerce/ecommerce_en/edr02_en.htm


6/48

6

the current ccTLDs system for Jordan concentrating particularly on the current adopted

registration policies to solve domain name disputes. In Part IV, I will examine the

American perspective on domain name disputes; I will consider specifically Neustar

policies for .us domain name registration, Anti Cybersquatting Protection Act (ACPA)

and American case law. In the final part V, I conclude by proposing concrete steps that

the Jordanian government and NITC could take to significantly enhance the registration

system for .jo and the domain name dispute resolution mechanism currently adopted.

I. Domain Names Basics (Overview of domain names)

For the sake of introducing the reader to domain names, I will define what domainnames are and the domain name system (DNS). I will also mention types of domain

names and differentiate between the registrar and the registries. Finally, I will consider

ICANN, and its relationship with the registries of each country.

A. Meaning of Domain Names and Domain Name System (DNS)

There are multiple meanings for domain name 10 , and this depends on the

technical or non-technical background of the person who is trying to define it. For the

purposes of this paper, a domain name is human-friendly form of Internet addresses, and

is commonly used to find websites. 11 Domain names identify a particular computer

server that is connected to the internet, and they are used either as an email or World

Wide Web site address. Domain names are alphanumeric combinations typically

comprised of an abbreviation, a name or an acronym, followed by a period and one of the

10 See for example the multiple meanings for domain name at wikipedai, available athttp://en.wikipedia.org/wiki/Domain_name (visited on October 31, 2006)11 WIPO Frequently Asked Questions About Internet Domain Names, available athttp://www.wipo.int/amc/en/center/faq/domains.html (visited on October 31, 2006), see Also the ITMA,Domain name definition available at www.itma.org.uk/pdf_downloads/publications/domain-names.pdf (visited on October 31, 2006)
http://en.wikipedia.org/wiki/Domain_namehttp://en.wikipedia.org/wiki/Domain_namehttp://www.wipo.int/amc/en/center/faq/domains.htmlhttp://www.wipo.int/amc/en/center/faq/domains.htmlhttp://www.itma.org.uk/pdf_downloads/publications/domain-names.pdfhttp://www.itma.org.uk/pdf_downloads/publications/domain-names.pdfhttp://www.wipo.int/amc/en/center/faq/domains.htmlhttp://en.wikipedia.org/wiki/Domain_name


7/48

7

three world wide generic top- level domain categories. 12 I will discuss below what is

the Domain Name System (DNS).

Computers on the network uses different operating systems such as Microsoft,

Apple and Macintosh, and they all need a common language to communicate with each

other; one of the languages that they use is the DNS. The DNS provides the mechanism

for converting domain names into Internet Protocol (IP) addresses and then back again 13

and that enables users to locate computers through the use of names rather than

numbers. 14 The DNS is essentially a global addressing system that locates, translates

numerical IP addresses and facilitates identification of a specific website on theinternet. 15 Domain names are registered in a first come first served basis and this basic

principle has been adopted widely by all registrars and registries. I will discuss the

difference between these two when I study their roles.

B.Types of Domain Names

There are two types of domain names and they are: generic Top Level Domains

(gTLDs) and Country Code Top Level Domains (ccTLDs). 16 Generic domains are the

most prized and are meant to indicate a global presence. 17

12 IAN C. BALLON, E-COMMERCE AND INTERNET LAW, 11-01 (2001).13 id14 UNCTAD & WIPO, Domain name Disputes Settlement, 5, available at

www. unctad .org/en/docs//edmmisc232add35_en.pdf (visited on November 3, 2006).15 id16 In addition to these two types of domain names, there is also Alternative Domain Names (ADR) providedby New Net, which currently registers domain names with several different TLDs, including .shop, .art,Inc, .kids, .family, .travel, .club .xxx, and .law. These domain names are not approved by ICANN, andtherefore most studies do not mention them. There is a special dispute resolution policy for them. Disputeresolution providers, NAF and WIPO handle their disputes under the New.net gTLDs. See www.new.net(visited on November 23, 2006)17 MICHAEL CHISSICK AND ALISTAIR KELMAN, ELECTONIC COMMERCE LAW ANDPRACTICE , 24 (2000)
http://www.unctad.org/en/docs//edmmisc232add35_en.pdfhttp://www.unctad.org/en/docs//edmmisc232add35_en.pdfhttp://www.unctad.org/en/docs//edmmisc232add35_en.pdfhttp://www.unctad.org/en/docs//edmmisc232add35_en.pdfhttp://www.new.net/http://www.new.net/http://www.unctad.org/en/docs//edmmisc232add35_en.pdf


8/48

8

In the 1980s, seven gTLDs (.com, .edu, .gov, .int, .mil, .net, and .org) were created. 18 In

addition to these seven gTLDs, ICANN introduced on November 16, 2000, the following

domain names: .aero, .biz, .coop, .info, .museum, .name and .pro, and since March 2004

it has been in the process of introducing the following sponsored TLD and these include:

asia, .cat, .jobs, .mobi, .post, .tel and travel. 19

ccTLDs on the other hand consist of two or more letters that correspond to the

two-lettered abbreviations for countries. 20 The Internet Assigned Names Numbers

Authority (IANA) established ccTLDs, and delegated the responsibility of management

to the designated country managers who operated them in accordance with local policiesadopted to best meet the economic, cultural, and linguistic circumstances of the country

in question. 21 Each ccTLDs is assigned from the country code standard ISO 3166 22,

which is maintained by the ISO 3166 Maintenance Agency. 23The registrations of the

ccTLDs have increased in the last years 24 and this necessitated having clear registration

and policy rules for domain names.

The requirement for registration varies between the different gTLD and

ccTLDs. 25 Some of them are open, in the sense that there are no restrictions on the

18 See ICANNs website at the following address http://www.icann.nl/tlds/ 19 JULIAN S. MILLSTEIN, JEFRREY D NEUBURGER AND JEFFREY WEINGART, DOINGBUSINESS ON THE INTERNET (1997)20 Grace Ghan, Domain name protection in Hong Kong: Flaws and proposals for reform , International

Journal of Law and Information Technology Vol 13 No 2 , 213 (2005)21 id at 21322See http://unstats.un.org/unsd/methods/m49/m49alpha.htm (visited on November 29, 2006)23 See http://www.iso.org/iso/en/prods-services/iso3166ma/index.html (visited on November 29, 2006)24 See for example the study prepared by OECD that found that the number of domain name registrationsunder ccTLDs of OECD member countries has doubled from July 2000 to July 2002 from 6.7 millions to15 millions. The study is available athttp://www.oecd.org/document/54/0,2340,en_21571361_34590630_25596278_1_1_1_1,00.html(visited on November 21, 2006)25 TORSTEN BETTINGER , DOOMAIN NAME AND LAW PRACTICE , 6 (2005)
http://www.icann.nl/tlds/http://www.icann.nl/tlds/http://unstats.un.org/unsd/methods/m49/m49alpha.htmhttp://unstats.un.org/unsd/methods/m49/m49alpha.htmhttp://www.iso.org/iso/en/prods-services/iso3166ma/index.htmlhttp://www.iso.org/iso/en/prods-services/iso3166ma/index.htmlhttp://www.oecd.org/document/54/0%2C2340%2Cen_21571361_34590630_25596278_1_1_1_1%2C00.htmlhttp://www.oecd.org/document/54/0%2C2340%2Cen_21571361_34590630_25596278_1_1_1_1%2C00.htmlhttp://www.oecd.org/document/54/0%2C2340%2Cen_21571361_34590630_25596278_1_1_1_1%2C00.htmlhttp://www.iso.org/iso/en/prods-services/iso3166ma/index.htmlhttp://unstats.un.org/unsd/methods/m49/m49alpha.htmhttp://www.icann.nl/tlds/


9/48

9

persons or entities that may register domain names. 26 Others are restricted, in that only

persons or entities satisfying certain conditions (for example, resident in the territory)

may register domain names. 27

I will discuss some of these restrictions when we study the registration requirement of the

ccTLDs .jo.

C. ICANNs Role

Network Solutions Inc (NSI) had an exclusive contract with the National Science

Foundation (NSF) from 1993 to 1998 to register the .com, .net, .org, and .edu domain

names. In June 1998, the United States government recommended that a private, not-for-profit international corporation assume management of the domain name system, and in

November 1998, the United States government and ICANN signed a Memorandum of

Understanding recognizing ICANN's new authority. 28 ICANN manages the domain name

system while dozens of registrars register domain names in the gTLDs. 29 ICANNs

purpose is to assign the numbers used as Internet protocol addresses to the regional

registries, delegate responsibility for registering names, develop procedures to resolve

disputes over registration of domain names, and regulate aspects of the internet. 30

In the majority of the ccTLD registries, governments retain direct control or have

instituted a formalized relationship with their national ccTLDs. 31 We will see to what

extent Jordans government maintains control over its ccTLDs. jo domain name space.

26 id27 id29 See the MOU available at http://www.ntia.doc.gov/ntiahome/domainname/icann-memorandum.htm ( lastvisited on November 29, 2006)30 The list of the accredited registrars is available at http://www.icann.org/registrars/accredited-list.html(last visited on November 29, 2006)

30 SIEGURN D. KANE, TRADEMARK LAW- A PRACTIONERS GUIDE, s 11:2.2 (Year)31 BALLON, Supra note 14
http://www.ntia.doc.gov/ntiahome/domainname/icann-memorandum.htmhttp://www.ntia.doc.gov/ntiahome/domainname/icann-memorandum.htmhttp://www.icann.org/registrars/accredited-list.htmlhttp://www.icann.org/registrars/accredited-list.htmlhttp://www.ntia.doc.gov/ntiahome/domainname/icann-memorandum.htm


10/48

10

D.The Role of Registrars and Registries

The responsibilities for the registration of domain names in each gTLDs are

divided between the registry and the registrar. The registry is the entity entrusted with the

organization, administration and management of the TLD, including maintenance of the

corresponding databases and the associated public inquiry services (WHOIS services),

the operation of the domain name register, the operation of the main server of the register

for the TLD, and the dissemination of the TLD zone files. 32 The registrars on the other

hand are entities that, under contract to the registries, provide domain name registration

services to registrants.33

Each registrar is accredited by ICANN34

and must adopt certainrules established by ICANN, such as the Uniform Domain Name Dispute Resolution

Policy (UDRP). Registrars are free to set their own fees, however, and may offer various

services in addition to registering domain names. For example, Verisign Global Registry

Service is a private company that is in charge of the master list of the .com, and .net,

domain names. Verisign also functions as one of the many registrars that offer

registration services. All registrars charge a fee to register a domain name, except for the

.edu domain, which is provided free of charge for qualified institutions. 35

ccTLDs administrators on the other hand are responsible for the registration and the

management of the ccTLDS. The responsible entities for the ccTLD can be either

government, private, educational and others. 36

32 BETTINGER, Supra note 26 at 2233 id34 The list of the accredited registrars is available at http://www.icann.org/registrars/accredited-list.html35 KANE,supra note 31 at S 11:2.436 See Michael Geists Governance Project available at http://www.cctldinfo.com/home.php (last visited onNovember 29, 2006)
http://www.icann.org/registrars/accredited-list.htmlhttp://www.icann.org/registrars/accredited-list.htmlhttp://www.cctldinfo.com/home.phphttp://www.cctldinfo.com/home.phphttp://www.cctldinfo.com/home.phphttp://www.icann.org/registrars/accredited-list.html


11/48

11

In a survey conducted by professor Michael Geist and the Telecommunication

Standardization Bureau (TSB) of the International Telecommunication Union (ITU) on

the role of national governments with their domestic top-level domain 37, it was found that

governments are deeply involved in domain name administration at the national level and

virtually every government that responded either manages, retains direct control, or is

contemplating a formalized relationship with its national ccTLD. 38 We will examine to

what extent this is true in connection with .jo domain name space.

E. Relationship between ICANN and ccTLD registries

Currently there are two mechanisms by which ccTLD registries can formalize

their relationship with ICANN. The first is a legally binding agreement entitled ccTLD

Sponsorship Agreement that sets out the obligations of a ccTLD registries and ICANN.

According to the agreement, ICANN will recognize the registry and will maintain a

secure and authoritative database for the registry under its supervision. The registry will

be obliged to follow ICANNs policies and make a financial contribution on a yearly

basis. 39 The second mechanism is an exchange of letters between ICANN and the ccTLD

registry designed for those for whom a simple statement of commitment is more

37 See Geist, supra note 7 at 2. Also, the members of the council of European National Top-Level DomainRegistries (CENTER) in their comments on the survey conducted believe that the report is misleading since

it insists on the involvement of governments in the internet and denies the crucial part of the private sectorthat it had historically played, and the one it still has today in the growth and continued stability of theinternet. See Some comments on professor Michael Geists Government and country- code top level Domains: A global survey , available at http s://www.centr.org/doc s /2004/02/centr-roundup-200401.pdf (last visited on November 29, 2006)38 See supra note 7 at 239 See Model ccTLDs Sponsorship Agreement, available at http://www.icann.org/cctlds/model-tscsa-31jan02.htm , (visited on December 21, 2006), see ICANN formalizes relationship with another threeccTLD managers, 19 June 2006, available at http://www.icann.org/announcements/announcement-19jun06.htm , (visited on November 27, 2006)
https://www.centr.org/docs/2004/02/centr-roundup-200401.pdfhttps://www.centr.org/docs/2004/02/centr-roundup-200401.pdfhttps://www.centr.org/docs/2004/02/centr-roundup-200401.pdfhttps://www.centr.org/docs/2004/02/centr-roundup-200401.pdfhttps://www.centr.org/docs/2004/02/centr-roundup-200401.pdfhttp://www.icann.org/cctlds/model-tscsa-31jan02.htmhttp://www.icann.org/cctlds/model-tscsa-31jan02.htmhttp://www.icann.org/cctlds/model-tscsa-31jan02.htmhttp://www.icann.org/announcements/announcement-19jun06.htmhttp://www.icann.org/announcements/announcement-19jun06.htmhttp://www.icann.org/announcements/announcement-19jun06.htmhttp://www.icann.org/announcements/announcement-19jun06.htmhttp://www.icann.org/announcements/announcement-19jun06.htmhttp://www.icann.org/cctlds/model-tscsa-31jan02.htmhttp://www.icann.org/cctlds/model-tscsa-31jan02.htmhttps://www.centr.org/docs/2004/02/centr-roundup-200401.pdf


12/48

12

appropriate than a legal binding agreement. 40 Some ccTLDs registries do not prefer to

enter into a formal binding agreement with ICANN this is because they are not

compatible with ICANN standards and policies and the agreement will oblige them to do

so in limited period of time and this may be difficult to some of them.

I will explore below Jordan and particularly its registry, NITC, Which has not entered

into any formal or non formal agreement with ICANN.

II. Legal Mechanisms for Resolving Domain Name Disputes

The WIPO ccTLD Best practices for the Prevention and Resolution of IntellectualProperty Disputes 41 does not specify the different legal mechanisms adopted to solve

domain name disputes nor does it provide ccTLDs administrators (registries) with clear

rules on what they should adopt, but merely gives general guidelines that should be taken

into consideration when adopting name registration policies and procedures. 42 It only

states that registries can either adopt the Alternative Dispute Resolution (ADR) or the

Uniform Domain Dispute Resolution Policy (UDRP) model and that is all without taking

into consideration the conditions of each country and the particular dispute resolution

policies that are suitable for it more than others. I will study below the different legal

mechanisms that can be adopted for resolving domain name disputes. I will concentrate

particularly on answering this question: is there a more preferable mechanism that can be

adopted? Which legal mechanism is better than others for Jordan? Are there specific

40 See for example the exchange of letters between ICANN with United Kingdom country code Top-LevelDomain (ccTLD) manager, Nominet, available at http://www.icann.org/announcements/announcement -30jun06.htm (visited on November 29, 2006)41 See The WIPO ccTLD Best Practices available athttp://www.wipo.int/amc/en/domains/bestpractices/index.html (visited on October 31, 2006)42 id
http://www.icann.org/announcements/announcement-30jun06.htmhttp://www.icann.org/announcements/announcement-30jun06.htmhttp://www.icann.org/announcements/announcement-30jun06.htmhttp://www.wipo.int/amc/en/domains/bestpractices/index.htmlhttp://www.wipo.int/amc/en/domains/bestpractices/index.htmlhttp://www.wipo.int/amc/en/domains/bestpractices/index.htmlhttp://www.icann.org/announcements/announcement-30jun06.htmhttp://www.icann.org/announcements/announcement-30jun06.htm


13/48

13

reasons and conditions for determining this? Before addressing this question, I will

consider the different legal mechanisms available, and then I will concentrate particularly

on Jordans situation and answer specifically these questions.

A. ICANNs use of ADR to Resolve Domain Name Disputes

On April 30, 1999 the world intellectual Property Organization (WIPO) submitted its

report concerning intellectual property 43 issues associated with domain name registration

to ICANN. On September 29, 1999 ICANN, approved it and responded by publishing its

new policy in relation to domain name disputes.44

ICANNs mechanism for combatingcybersquatting is the Uniform Domain Name Dispute Resolution Policy (UDRP) 45,

which became affective on December 1, 1999. The UDRP applies to biz, .com, .info,

.name, .net, and .org. 46 Unlike registration in the gTLDs, there is no obligation on part of

the ccTLD administrators or registries to adopt the UDRP. On the contrary, it is left to

them to decide whether to accept the UDRP, and if so to make it part of their registration

agreement with the domain name registrant. 47 The UDRP provides a mandatory

administrative proceeding for the trademark owners to challenge domain names

43 WIPO has until now submitted two reports; the first report is called the First WIPO Internet DomainName Process (1999) which mainly suggested to ICANN to adopt a uniform administrative dispute-resolution procedure for domain name disputes in all gTLDs. The first report can be found athttp://www.wipo.int/amc/en/processes/process1/report/ (last visited on December 30, 2006). The SecondWIPO Internet Domain Name Process (2001) mainly address further issues that have not be dealt with inthe first report and this includes international nonproprietary names for pharmaceutical substances, namesof international intergovernmental organizations, personal names, geographical indications and trade

names. The report came to the conclusion that there is no need now to broaden the scope of the UDRP tooffer protection of those intellectual property rights. The report can be found athttp://www.wipo.int/amc/en/processes/process2/rfc/rfc3/index.html (last visited December 30, 2006)44 CHISSICK AND KELMAN, supra note 18 at 29.45 The UDRP is available at http://www.icann.org/udrp/udrp.htm (last visited on November 29, 2006)46 It is important to note that .biz, .aero, .coop, .museum,.Info, name, .pro and other gTLDs all have theirown dispute resolution policies in addition to having the UDRP. To view the different adopted policies,please visit WIPOs website at the following address http://www.wipo.int/amc/en/domains/gtld/registry/ (visited on November 3, 2006).47 BALLON, supra note 13 at 39
http://www.wipo.int/amc/en/processes/process1/report/http://www.wipo.int/amc/en/processes/process1/report/http://www.wipo.int/amc/en/processes/process2/rfc/rfc3/index.htmlhttp://www.wipo.int/amc/en/processes/process2/rfc/rfc3/index.htmlhttp://www.icann.org/udrp/udrp.htmhttp://www.icann.org/udrp/udrp.htmhttp://www.wipo.int/amc/en/domains/gtld/registry/http://www.wipo.int/amc/en/domains/gtld/registry/http://www.icann.org/udrp/udrp.htmhttp://www.wipo.int/amc/en/processes/process2/rfc/rfc3/index.htmlhttp://www.wipo.int/amc/en/processes/process1/report/


14/48

14

registered by others. 48 The UDRP is meant to enable trademark owners to resolve domain

name disputes without having to go to court. Questions of trademark invalidity are not

within the preview of any UDRP proceedings. 49

Certain ccTLDs have not yet developed a domain name dispute policy on their own, but

rather have adopted the UDRP entirely as it is, and referred any case related to their

ccTLDs to the WIPOs Arbitration and Mediation Center. The UDRP has been adopted

by certain managers of ccTLDs in the following countries: Namibia (.nu), Tuvalu (.tv),

Samoa (.ws) and many more. 50

I will provide below a general overview of the UDRP system since many domain namedisputes have been brought under the UDRP, especially of course those related to gTLDs.

One of the most important features of the UDRP is that its decisions are not final, and the

losing party in the UDRP proceedings can bring an action against the wining party in a

court of a competent jurisdiction 51 within ten days of the issuance of the decision and its

implementation. 52 Also, the UDRP does not cover all kind of abuses that relate to

trademark infringements in cyberspace, but only cases of deliberate bad faith registration

of domain names and all other issues related to trademark validity are not within the

scope of the UDRP 53. The only relief that the UDRP offers to the trademark owner is to

48 KANE, supra note 31 at S: 11:2.449 id50 For a complete list of all the countries that followed the UDRP and recognize WIPO in its Arbitrationand Mediation Center as the Dispute Resolution Provider, visit the WIPOs website at the following

address: http://www.wipo.int/amc/en/domains/cctld/index.html (visited on November 3, 2006).51 The court of competent jurisdiction is in general either the location of Registrars principal office or theregistrants address as shown in Whois database. If we compare the number of UDRP complaints to thenumber of cases that have been brought in front of courts challenging the decisions, it will be clear that invery minor cases the UDRP decisions have been challenged. This of course is due to several reasons.Among them is that domain name registrant are usually poor and cannot afford paying court fess, which arealways more expensive than UDRP, and secondly many domain name registrants do not know that UDRPdecisions can be challenged or simply they are not interested to defend their postion anymore.52 para 4 (k)53 para 5
http://www.wipo.int/amc/en/domains/cctld/index.htmlhttp://www.wipo.int/amc/en/domains/cctld/index.htmlhttp://www.wipo.int/amc/en/domains/cctld/index.html


15/48

15

transfer or cancel the disputed domain name. 54 The transfer or the cancellation of domain

name might be the best relief to the trademark owner who has not suffered any loss as a

result of registering his domain name as a trademark, but in other situation the relief

under the UDRP is not sufficient and the trademark owner has to file a suit in front of the

competent court in the situation where he requests damages as a result of registering his

trademark in cyberspace.

To bring a trademark infringement action, the trademark owner must file a complaint in

hard copy and electronically with a dispute resolution service provider approved by

ICANN.55

The complaint must select either a one member or a three-member panel tohear the dispute and must pay a fee based on the size of the panel. UDRP, provides relief

for trademark holders if they can provide mainly according to article 4 (a) of the policy

the following 56:

(i) Domain name is identical or confusingly similar to a trademark or service mark in

which the complainant has rights; and

(ii) The domain name registrant has no rights or legitimate interests in respect of thedomain name; and

(iii) The domain name has been registered and is being used in bad faith.

54 para 4 (i) . In almost all cases, the trademark owner would want the transfer of the domain name to

him,since cancellation of the domain name would not help and would allow another cybesquatter to registerit and demand high amounts of money.55 KANE, supra not 30 at 11:2.4. ICANN has approved until now 5 domain name dispute resolutionproviders, one of them is currently not working anymore due to financial problems and that is e-Resolution(Canada). The other four are World Intellectual Property Organization WIPO (Geneva),http://www.wipo.int/portal/index.html.en , National Arbitration Forum (US) at http://www.arb-forum.com/ ,CPR: International Institute for Conflict Prevention and Resolution (US) at http://www.cpradr.org/ , andAsian Domain Name Dispute Resolution Center ADNDRC (Beijing and Hong Kong) , athttp://www.adndrc.org/adndrc/index.html56 See http://www.icann.org/udrp/udrp-policy-24oct99.htm
http://www.wipo.int/portal/index.html.enhttp://www.wipo.int/portal/index.html.enhttp://www.arb-forum.com/http://www.arb-forum.com/http://www.cpradr.org/http://www.cpradr.org/http://www.adndrc.org/adndrc/index.htmlhttp://www.adndrc.org/adndrc/index.htmlhttp://www.icann.org/udrp/udrp-policy-24oct99.htmhttp://www.icann.org/udrp/udrp-policy-24oct99.htmhttp://www.icann.org/udrp/udrp-policy-24oct99.htmhttp://www.adndrc.org/adndrc/index.htmlhttp://www.cpradr.org/http://www.arb-forum.com/http://www.wipo.int/portal/index.html.en


16/48

16

There are three ways in which a legitimate interest in the domain name can be

demonstrated according to paragraph 4b 57 and these are as follows:

(i) use of, or demonstrable preparations to use, the domain name or a name correspondingto the domain name in connection with a bona fide offering of goods or services; or

(ii) you (as an individual, business, or other organization) have been commonly known

by the domain name, even if you have acquired no trademark or service mark rights; or

(iii) you are making a legitimate noncommercial or fair use of the domain name, without

intent for commercial gain to misleadingly divert consumers or to tarnish the trademarkor service mark at issue.

There is no single Arab country that has formally adopted the UDRP or has gained the

endorsement of WIPO except the U.A.E 58, and the process has taken UAENIC 59, the

ccTLD registrar for .ae nearly a year to be accomplished. 60

UDRP was successful in decreasing the number of domain name disputes that has been

brought in front of the approved domain name dispute providers since 1999 61, but that

does not mean that the UDRP is prefect and some commentators have criticized heavily

its decisions 62. There are many suggestions put in place to deal with the problems that

57 ibid58 United Arab Emirates is the only Arab country that succeeded in adopting very clear rules for resolvingdomain name disputes for its ccTLDs .ae. The WIPO provides domain name dispute administrationservices for ae. ccTLDs. See UAE nic dispute Resolution policy available at

http://nic.ae/english/registration/dispute.jsp (visited Nov, 2, 2006). But it is important to note that theU.A.E does not have clear laws that deal with cybersquatting and in the event that a case has been broughtin front of local courts usual general laws will be applied.59 UAENICs website is available at http://www.nic.ae/english/index.jsp (last visited on December 6, 2006)60 See Courts to settle Web domain name disputes, available at http://www.active-domain.com/news/2002may-1.htm (visited on November 5, 2006)61 On October 16, 2006, WIPO have handled 25, 000 domain name cases since 1999 when the UDRP wasapproved by ICANN. The numbers of UDRP cases filled have declined over the years.62 See for example, Dr. Milton Muller, Rough Justice, An Analysis of ICANNs Uniform Dispute ResolutionPolicy , available at www.acm.org/usacm/IG/roughjustice.pdf (last visited on November 30, 2006), Michael
http://nic.ae/english/registration/dispute.jsphttp://nic.ae/english/registration/dispute.jsphttp://www.nic.ae/english/index.jsphttp://www.nic.ae/english/index.jsphttp://www.active-domain.com/news/2002may-1.htmhttp://www.active-domain.com/news/2002may-1.htmhttp://www.active-domain.com/news/2002may-1.htmhttp://www.acm.org/usacm/IG/roughjustice.pdfhttp://www.acm.org/usacm/IG/roughjustice.pdfhttp://www.active-domain.com/news/2002may-1.htmhttp://www.active-domain.com/news/2002may-1.htmhttp://www.nic.ae/english/index.jsphttp://nic.ae/english/registration/dispute.jsp


17/48

17

the UDRP is facing. 63 It is argued that registries must not adopt the UDRP as it is and

must draft special policies based on the UDRP, but takes into consideration the many

criticism that has been directed toward the UDRP , I will explain how that can be done

when I am discussing the situation in Jordan.

B. ccTLDs Registrars Procedures for Resolving Domain Name Disputes

Since ICANN is not responsible for managing ccTLDs and there is no formal

obligation on the part of the registry to follow ICANNs UDRP, most of the registries

have adopted their own dispute resolution policies to solve domain name disputes. Aminority of the registries have either adopted the UDRP in its pure form or developed

their own ccTLD dispute resolution policy based on the UDRP model. These dispute

resolution policies do not differ a lot from UDRP, and they are based on it or correspond

closely to it both in procedural terms and in their substantive decision criteria. 64

Geist, Fair.com? An Examination of the Allegation of Systemic Unfairness in the ICANN , available athttp://www.brooklaw.edu/students/journals/bjil/bjil27iii.php (last visited on November 30, 2006), M. ScottDonahey, A proposal for an Appellate Panel for the Uniform Domain Name Dispute Resolution Policy ,Journal of International Arbitration, Vol18 No.1, 131-134.(2001). Dori Kornfeld, Evaluating the Uniform Domain Name Dispute Resolution Policy , available athttp://cyber.law.harvard.edu/icann/pressingissues2000/briefingbook/udrp-review.html (last visited on

November 30, 2006). And Holger P. Hestermeyer, The Invalidity of ICANNs UDRP under National Law,3 Minn. Intell.Prop.Rev.1 (2002).63

See for example, the suggestions of Professor William Fisher III in the Internet Law program in hispresentation about domain names, Harvard (2004). Among the suggestion put forward by Professor Fisherare: repudiation of domain name and relaying on search engines instead, improved UDRP, more gTLDs,elimination of protection for generic domain names and increased latitude for criticism and parody. SeeWilliam fisher, Dorikornfeld, Dotan Oliar and David Adams, domain names, available athttp://cyber.law.harvard.edu/ilaw/mexico_2006_module_8_domain (last visited on December 6, 2006)64 See for example the Canadian Internet Registration Authority (CIRA) dispute resolution policy, availableat http://www.cira.ca/en/cat_dpr_policy.html (last visited on December 6, 2006), and The AustralianDomain Name Administrator (.auDRP) domain name dispute resolution policy, available athttp://www.auda.org.au/audrp/audrp-overview (last visited on December 6, 2006).
http://www.brooklaw.edu/students/journals/bjil/bjil27iii.phphttp://www.brooklaw.edu/students/journals/bjil/bjil27iii.phphttp://cyber.law.harvard.edu/icann/pressingissues2000/briefingbook/udrp-review.htmlhttp://cyber.law.harvard.edu/ilaw/mexico_2006_module_8_domainhttp://cyber.law.harvard.edu/ilaw/mexico_2006_module_8_domainhttp://www.cira.ca/en/cat_dpr_policy.htmlhttp://www.cira.ca/en/cat_dpr_policy.htmlhttp://www.auda.org.au/audrp/audrp-overviewhttp://www.auda.org.au/audrp/audrp-overviewhttp://www.cira.ca/en/cat_dpr_policy.htmlhttp://cyber.law.harvard.edu/ilaw/mexico_2006_module_8_domainhttp://cyber.law.harvard.edu/icann/pressingissues2000/briefingbook/udrp-review.htmlhttp://www.brooklaw.edu/students/journals/bjil/bjil27iii.php


18/48

18

These disputes resolution policies are mostly found in developed countries and most

important ccTLDs. 65 Each ccTLDs registry must adopt its own policy for resolving

domain name disputes and not merely copy it from the UDRP. Adopting a specific policy

is a form of recognition of the identity and specific condition of the country. It is

important to note that developing countries mostly did not adopt either the UDRP nor

have they developed their own policy based on it; rather they left the matter unclear. I

will discuss to what extent this is true in Jordan.

C. National Courts (litigation)

Almost all ccTLDs registries give the power to the local courts to resolve domainname disputes, although many do not have special expedited procedure for domain

names, and they treat them just like ordinary cases brought in front of regular courts.

In Japan, for example, trademark owners have two options: either to bring their claim in

front of the Japanese Arbitration Center for Intellectual Property based on the JD-DRP

procedure 66 or file a case in accordance with Unfair Competition Prevention Law (UCPL)

.67 Japanese courts have provided their opinion on domain name disputes 68 on different

occasions.

In China also disputes over domain names can be either resolved through a panel

process of the Dispute Resolution Service Provider recognized by China Internet

Network Information Center (CNNIC) 69 or judicial process in a competent peoples

65 See MCCARTHY ON TRADEMARKS AND UNFAIR COMPETITION 216,217 (2006)66 The policy is available at http://www.nic.ad.jp/en/drp/index.html (last visited on December 6, 2006).67 Bent. T. Yonehara, LANDOFTHERISINGSUN.CO.JP , A review of Japans Protection of Domain NameAgainst Cybersquatting, 43 IDEA 207, 225 (2003).68 For example Kabbushiki Kaisha JACCSS Co., Ltd v. Yugen Kaisha Nihonkai Pkuto, Sankyo KabushikiKaisha v. Zhu Jiajun, id at 226-228.69 Please visit the center website at the following address http://www.cnnic.cn/en/index/index.htm
http://www.nic.ad.jp/en/drp/index.htmlhttp://www.nic.ad.jp/en/drp/index.htmlhttp://www.cnnic.cn/en/index/index.htmhttp://www.cnnic.cn/en/index/index.htmhttp://www.cnnic.cn/en/index/index.htmhttp://www.nic.ad.jp/en/drp/index.html


19/48

19

court. 70 It will be useful in some instances to bring the case in front of the local courts in

the situation where there is not only an infringement of trademark by registering it as a

domain name, but also where a damage has been inflicted upon the trademark and the

trademark owner is requesting a compensation or if there is metaging or other forms of

trademark infringements.

Usually, before bringing an action for trademark infringement, a number of practical

measures will be taken by the trademark owner including sending a cease and desist letter

to the domain name registrants and entering into a form of agreement with him if he

approves transferring the domain name for a reasonable amount of money that thetrademark owner is ready to pay. That will save the trademark owner time initiating a

legal action in the national court 71 or even in accordance with the UDRP. National courts

must adopt special expedited procedure in resolving domain name disputes, and they

must train and educate their judges on the technological issues related to the internet so

they can issue decisions that take into consideration the development taking place in

technology.

D. Mediation

Some of the ccTLD registries also provide for a binding or voluntary mediation 72

proceeding before commencement of the adversarial dispute resolution proceedings. For

example Nominent, the registry responsible for the registration of .uk ccTLD, provides

mediation as a first level of solving domain names disputes. An appointed mediator will

contact each side through a series of telephone calls to encourage communication

70 Zhang, supra note 3 at 771 For the practical measures that can be taken before initiating legal proceedings, see Trademarks inCyberspace, September 19, 2002 (Brussels).72 For a definition of mediation, see wikipedia available at http://en.wikipedia.org/wiki/Mediation (visitedon December 6, 2006).
http://en.wikipedia.org/wiki/Mediationhttp://en.wikipedia.org/wiki/Mediationhttp://en.wikipedia.org/wiki/Mediation


20/48

20

between the parties, and help them to generate options for settlement. 73 In the event that a

settlement between the parties has not been reached, the mediator cannot force one and

the dispute will be referred to the second stage and that is issuance of a decsion by the

appointed panel of experts. 74 Also, AFNIC, the registry for ccTLD (.fr), follows a

mediation proceedings conducted online by the Centre de Mediation et dArbitrage de

Paris (CMAP). 75

It is argued that mediation is necessary for any registries so it can open discussion

between the disputed parties as much as possible so they can understand each other and

this might help in resolving the domain name disputes on an early stage, save money andlet the parties in control of the resolution rather than impose it upon them.

After the discussion of the different legal mechanism adopted to solve domain name

disputes, I will consider the situation of Jordan in connection with the management of the

.Jo ccTLD and the policy adopted to solve domain name disputes.

III. Jordan

I will firstly examine the National Information Technology Center (NITC)

responsible for registration of ccTLDs for Jordan (.jo), and then I will go through its

registration procedure and conditions of registration. I will examine the dispute resolution

mechanism it has adopted to solve domain name disputes, and then finally I will discuss

73 See Nominents website available at http://www.nominet.org.uk/disputes/drs/mediation/ (last visitedDecember 1, 2006)74 See Nominent at http://www.nominet.org.uk/disputes/drs/experts/ (last visited December 1, 2006)75 For more information about AFNIC service of mediation, please visit the following website athttp://www.afnic.fr/doc/ref/juridique/parl_en?PHPSESSID=ab7e496a17fb97680553000c3b444705 (lastvisited on December 1, 2006)
http://www.nominet.org.uk/disputes/drs/mediation/http://www.nominet.org.uk/disputes/drs/mediation/http://www.nominet.org.uk/disputes/drs/experts/http://www.nominet.org.uk/disputes/drs/experts/http://www.afnic.fr/doc/ref/juridique/parl_en?PHPSESSID=ab7e496a17fb97680553000c3b444705http://www.afnic.fr/doc/ref/juridique/parl_en?PHPSESSID=ab7e496a17fb97680553000c3b444705http://www.afnic.fr/doc/ref/juridique/parl_en?PHPSESSID=ab7e496a17fb97680553000c3b444705http://www.nominet.org.uk/disputes/drs/experts/http://www.nominet.org.uk/disputes/drs/mediation/


21/48

21

Jordanian laws that can be applied in case of domain name disputes (mainly trademark

and unfair competition laws).

A. NITC

Currently ccTLDs .jo are administrated and controlled by independent

government institution entity called National Information Technology Center (NITC).

NITC is the Local Registrar for the .jo ccTLD. It has exclusive rights to do this job and

anyone wishing to register a domain name under .jo must do so through it. 76

Before NITC there was a previous entity responsible for the same functions of NITC

called the National Information Center (NIC). NIC was responsible for establishing andmanaging integrated National information System (NIS), linking various information

centers in the public & private sectors and coordinating their efforts to facilitate the

provision, accessibility, and exchange of integrated, comprehensive, and timely

information to increase competitiveness of the Jordanian society at the regional and

international levels . 77 NITC aims to follows up on responsibilities of NIS and to be a

major contributor to Jordan's economic and social development through creating a

connected society, connected businesses and connected government . Despite the gradual

move by certain ccTLD administrators 78 toward a formal relationship with ICANN,

neither the Jordanian government nor the NITC has entered into any kind of formal

agreement with ICANN to date. It is not clear why NITC has not entered into any form of

76 see the NITCs website at http://www.dns.jo/About_us.aspx (visited on November 22, 2006)77 See NITCs brochure available at http://www.nic.gov.jo/En/NITC%20Brochure.doc (visited onNovember 2, 2006)78 ICANN has interred with sponsorship agreements with the ccTLDs managers of Australia (.AU), Kenya(Ku), Japan (JP), Taiwan (.tw), and Malawai (.mw) and Brundi (.bi) and others. Only with two managers ofArabic ccTLDS a similar agreement was reached and these are Sudan (.su) and Palestine (.ps). See all theagreements available at ICANNs website at http://www.icann.org/cctlds/agreements.html (Last visited onNovember 22, 2006).
http://www.dns.jo/About_us.aspxhttp://www.dns.jo/About_us.aspxhttp://www.nic.gov.jo/En/NITC%20Brochure.dochttp://www.nic.gov.jo/En/NITC%20Brochure.dochttp://www.icann.org/cctlds/agreements.htmlhttp://www.icann.org/cctlds/agreements.htmlhttp://www.icann.org/cctlds/agreements.htmlhttp://www.nic.gov.jo/En/NITC%20Brochure.dochttp://www.dns.jo/About_us.aspx


22/48

22

agreement with ICANN, but as we have mentioned that the sponsorship agreement will

require the registry to adhere to certain obligations which the registry might feel that it

can not fulfill and this might persuade it not to sign the sponsorship agreement with

ICANN.

It is argued that NITC needs to study the benefits that may be reaped as a result of

entering into those kinds of agreements, and how that can develop particularly the .jo

domain name space.

B. Domain Name Registration for ccTLDs .Jo

The registration of .jo domain names can either be done by the registrant himselfor by his agent. 79 NITC has recently adopted a new registration service that allows the

registrants to register their domain names wholly online. 80 This is an improvement from

the previous system that reguired registrants visiting personally the NITC with the

required documents. Registration directly under .Jo is possible and NITC offers a wide

range of .jo Second Level domain names. 81 Legal or natural persons may apply and the

identity of the applicant must be established. The registration is semi-closed and is only

open for Jordanian citizens or to international companies having a local presence or

branch office in Jordan. 82 As other registries, NITC registers domain names on a first

come first served basis, and domain names can be registered for an active or inactive

79Not any agent can register the .jo domain name; he must have a licensed active office, and must be

authorized to represent the applying organization in Jordan. See provision 1 (5) of the Jordanianregistration policy.80See the .Jo new registration website at http://www.dns.jo/login.aspx81 These include .com.jo (for commercial organization), .org.jo for noncommercial organization), .net.jo.(for network and ISPs with a valid Jordanian license), .edu.jo for educational institutions), .gov.jo (forgovernmental institutions), .mil.jo. (for military organization). jo (for all corporate and commercial entities)and name.jo (for personal names).82 Provision 1.5 of the domain name registration policy available at http://www.nis.gov.jo/dns/reg.html (lastvisited on November 22, 2006)
http://www.dns.jo/login.aspxhttp://www.dns.jo/login.aspxhttp://www.nis.gov.jo/dns/reg.htmlhttp://www.nis.gov.jo/dns/reg.htmlhttp://www.nis.gov.jo/dns/reg.htmlhttp://www.dns.jo/login.aspx


23/48

23

usage. 83 There is no requirement that the domain name must be used in any time after it

had been registered 84 and the applicant must provide full administrative and technical

information . 85 Any registered domain name must not conflict with public ethics and can

be cancelled if that has been proven later. 86 Deletion of .jo can occur either through a

written request by the owner to affect deletion or a because of failure to pay annual fees

after the lapse of the 90 days on hold period. 87 Rejection of registration can be for

different reasons including: incompletion of application form, non compliance with

public ethics, registration of confusing and misleading domain name, primary and

secondary DNS are not responding properly and personnel names are not supported withthe reguired legal documents. 88 Transfer of a domain name is allowed provided that the

original holder confirms the transfer, and submits new application and pays a transfer

fee.89

The price of registering domain name under the .jo domain name space varies according

to the requested domain name. Initial annual registration fee for second level domain

name is JD 50 ($75), while the registration fee under the first level domain costs JD 100

($141). There is also a renewal fee for of 25 JD ($35) for the second level domain and a

renewal fee of JD 50 ($70) for first level domain. 90

83 Provision 1.3 of the domain registration policy84 See provision 1.385 See provision 1.1786 See provision 4.387 See provisions 2.1 and 2.288 See provision 4.1-889 See provision 590 For more information, please visit http://www.dns.jo/Registration_policy.aspx (last visited on December21, 2006)
http://www.dns.jo/Registration_policy.aspxhttp://www.dns.jo/Registration_policy.aspxhttp://www.dns.jo/Registration_policy.aspx


24/48

24

Personal domain names are allowed to be registered under the .jo, and are restricted to

natural and individual persons who are either Jordanian citizens above 18 or non

Jordanians residing in Jordan. 91

C. Domain Dispute Resolution System in Jordan

It is difficult to say that there is a domain name dispute resolution system in

Jordan, and this because there are no real practice or clear rules set out by the NITC that

specify the exact procedure that should be followed in the event that a trademark has

been registered in bad faith as a domain name under the .jo domain space. AlthoughNITC claims that cybersquatting never occurs due to its stringent registration requirement

and procedure, this is may not be true and clear rules of dispute resolution must always

be there even if cybersquatting does not happen or has rarely occurred. I will mention

below the limited rules that NITC adopts in the case of conflict.

NITC requires all registrants of the .jo ccTLD to comply with specific rules for conflict

of domain names with trademarks. What are these rules? And are they effective enough?

Provision 3 of the .jo Domain Name Registration policy Agreement provides as follows:

3.1 For disputes over a domain name between two or more organizations, NITC exempts

itself from all responsibility for the verification of rights to a name. NITC cannot act as

arbiter of disputes arising out of this kind of conflict, and it is not NITCs responsibility

to check availability of names in resources that are not Jordanian. In case of a conflict

NITC will suspend the domain name until further official notification of settlement is

received.

91 See the registration policy for .jo personal domain names available at http://www.nitc.gov.jo/En/reg.htm(visited on November 22, 2006)
http://www.nitc.gov.jo/En/reg.htmhttp://www.nitc.gov.jo/En/reg.htm


25/48

25

3.2 NITC will abide by all court orders without being named as party to a lawsuit.

3.3 NITC will not be liable for any interruption of business, or any indirect damages of

any kind (including losses of profits) or otherwise.

3.4 If legal action is taken regarding the use of a name, NITC reserves the right to revoke,

suspend or delete the name as it sees necessary. These are basically the rules that govern

the registration and dispute resolution of the .jo domain space. Although they are very

short to be named as domain name conflict rules, I will provide my own analysis and

criticism below.

D. Domain Name CasesDomain name cases have not been brought in front of the Jordanian courts until

now, although there have been some cases related to disputed domain names owned by

Arabic trademark owners or domain name registrants residing in the Arabic world either

registered as a gTLDs 92 or ccTLDs. 93 One of the domain name cases that have been

92 For example, the Arabic JAZEERA SPACE CHANNEL brought a complaint in accordance with theUDRP in front of WIPO against AJ Publishing aka Aljazeera Publishing, claiming that the later hasregistered in bad faith its famous trademark as a domain name www.aljazeera.com , and had therefore notallowed JAZEERA to establish its own website. The panel denied the complaint because the domain nameof the respondent www.aljazeera.com was registered on April 12, 1996 before the trademark right of thecompliant (AL JAZEERA) was established. It is also interesting further to note that the panel found that thecomplainant was brought in bad faith, and constituted reverse domain name hijacking since thecomplainant knew that they the had no prospect of success under the policy, and still filed the complaint.See the full decision available at http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0309.html (visited on November 2, 2006). There are also many domain name cases for gTLDs brought infront of the dispute resolution providers approved by ICANN for domain name registrants or trademarkholders located in the Arabic world. For example, see the domain name case of AMRGI, Inc. v. Metalco,which was brought by AMRGI, Inc (USA) against the domain name registrant of METALCO.COM who

was based in Amman, Jordan. The panelist denied the complaint since the registrants use of theMETALCO mark in commerce was long prior to the Respondent's adoption of the METALCO domainname, and therefore the registrant has superior rights. See the full decision at http://www.arb -forum.com/domains/decisions/95016.htm , (last visited on November 2, 2006). See also TAGI & AGIP vs.Fadi Mahassel, available at http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0907.html(visited on November 23, 2006)93 See for example the complaint that was brought in front of WIPO by Sony Erison vs. Mohamed Ali AalAli, who registered the domain name www.sonyericsson.ae with UAE Network Information Center(UAEnic). WIPO sole panelist decided to transfer the domain name to the complainant since the respondenthas offered to sell the disputed domain name for the grossly excessive price of $1,000,000, and that
http://www.aljazeera.com/http://www.aljazeera.com/http://www.aljazeera.com/http://www.aljazeera.com/http://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0309.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0309.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0309.htmlhttp://www.arb-forum.com/domains/decisions/95016.htmhttp://www.arb-forum.com/domains/decisions/95016.htmhttp://www.arb-forum.com/domains/decisions/95016.htmhttp://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0907.htmlhttp://www.sonyericsson.ae/http://www.sonyericsson.ae/http://www.sonyericsson.ae/http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0907.htmlhttp://www.arb-forum.com/domains/decisions/95016.htmhttp://www.arb-forum.com/domains/decisions/95016.htmhttp://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0309.htmlhttp://www.wipo.int/amc/en/domains/decisions/html/2005/d2005-0309.htmlhttp://www.aljazeera.com/http://www.aljazeera.com/


26/48


27/48

27

provision that discuss domain names in general 96 even in their new ecommerce laws that

have been introduced recently to deal mainly with electronic contracts and other issues. 97

There are two important questions that needs to be answered in connection with domain

name disputes in Jordan. First, we need to consider whether the existing trademark and

unfair competition laws can be readily applied to bad faith registration of trademarks as

domain names registration. The second question deals with the competence of the

Jordanian courts to adjudicate conduct that has occurred under the .jo space in the event

that a domain name dispute has been brought in front of it. I will answer these important

questions after I give a brief introduction on intellectual property laws in Jordan anddiscuss trademark and unfair competition laws and see to what extent they can be applied

in domain name dispute contexts.

E. Intellectual property Laws in Jordan

On April 11, 2000 Jordan became the 136 th member of the World Trade

Organization (WTO) after negotiations that lasted for two years. The Jordanian

parliament ratified the treaty on February 24, 2000. Achieving such a goal in a limited

period of time was not easy and major economic and legislative reforms were made to

bring the Jordanian foreign trade regime into conformity with WTO requirements. 98 Most

96 Bahrain was the only Arabic country that adopted certain provisions for domain names in its Legislative

Decree No 28 of 2002 that deals with Electronic Transactions. The law covers and provides appropriatelegal framework for all electronic commercial and transactional activities. In article 21 of the said law, theMinister of telecommunication has the power to issue any law that regulates the use and registration ofdomain names. It is interesting to note the researcher is not aware of any law that has been issued in thatregard. The ecommerce law is available at http://www.commerce.gov.bh/English/DomesticTrade/Laws.htm(visited on November 15, 2006).97 Among the countries that have introduced new ecommerce laws are the United Arab Emirates, Egypt,Kuwait, Jordan, Tunisia, Bahrain and Palestine.98 See Jordans Foreign Trade Policy website at http://www.jftp.gov.jo/main.htm (visited on November 4,2006)
http://www.commerce.gov.bh/English/DomesticTrade/Laws.htmhttp://www.jftp.gov.jo/main.htmhttp://www.jftp.gov.jo/main.htmhttp://www.jftp.gov.jo/main.htmhttp://www.commerce.gov.bh/English/DomesticTrade/Laws.htm


28/48

28

important amendments and draft laws that were introduced and made in the field of

intellectual property rights. 99These laws include: Patent law No 32 for 1999 100,

Trademark Law No. 34 for 1999 101, Law Amending the copyright Protection Law No 29

for 1999 102, Industrial Design and Model law No 14 for 2000 103, Plant Varieties law No

24 for 2000 104 and Geographical Indication Law No 8 for 2000 105 and Unfair

Competition and Trade Secret Law No. 15 for 2000. 106 Also other amendments were

made to many other laws as well 107 , but their discussion is beyond the scope of this paper.

Jordan was the first Arab country to sign an economic agreement with the United States,

the Free Trade Agreement (FTA), and there were several economic and political reasonsthat led the USA to negotiate an FTA with Jordan. 108 FTA deals with certain provisions

to protect intellectual property rights; it defines the nature of copyright and protects

copyright, trademarks and patents. 109 There are no provisions related to domain names,

and the FTA concentrates mainly on provisions governing enforcement of intellectual

property rights, including the availability of injunctions, damages and other remedial

measures. 110 FTA requires Jordan to undertake commitment and regulatory changes that

go beyond what Jordan agreed to in its accession to the WTO. It is clear that the

99 id100 available at http://www.mit.gov.jo/portals/0/tabid/537/patent%20regulation.aspx101 available at http://www.jftp.gov.jo/Docs/Trademark%20Law.pdf 102 available at http://www.jftp.gov.jo/Docs/Copyright%20Law%20Amendments.pdf 103 available at http://www.jftp.gov.jo/Docs/Industrial%20Designs%20and%20Models%20Law.pdf 104 available at http://www.jftp.gov.jo/Docs/Plant%20Varitety%20Law.pdf 105 available at http://www.jftp.gov.jo/Docs/Geographical%20Indications%20Law.pdf 106

available athttp://www.jftp.gov.jo/Docs/Unfair%20Competition%20&%20Trade%20Secrets%20Law.pdf 107 These include for example: Custom Law, General Sales Tax Law, Law on Unifying Fess and Taxes,Safeguard on National Production, Non Jordanian Investment and Consular fees Law and many more.108 See Bashar H. Malkawi, the Intellectual Property provision of the United States- Jordan Free Trade Agreement : Template or Not Template , Journal of world Intellectual Property, vol 9, no 2, 213- 329 (2006),available at www.blackwell-synergy.com/doi/pdf/10.1111/j.1422-2213.2006.00275.x (visited onNovember 10, 2006)109 id110 id
http://www.mit.gov.jo/portals/0/tabid/537/patent%20regulation.aspxhttp://www.mit.gov.jo/portals/0/tabid/537/patent%20regulation.aspxhttp://www.jftp.gov.jo/Docs/Trademark%20Law.pdfhttp://www.jftp.gov.jo/Docs/Trademark%20Law.pdfhttp://www.jftp.gov.jo/Docs/Copyright%20Law%20Amendments.pdfhttp://www.jftp.gov.jo/Docs/Copyright%20Law%20Amendments.pdfhttp://www.jftp.gov.jo/Docs/Industrial%20Designs%20and%20Models%20Law.pdfhttp://www.jftp.gov.jo/Docs/Industrial%20Designs%20and%20Models%20Law.pdfhttp://www.jftp.gov.jo/Docs/Plant%20Varitety%20Law.pdfhttp://www.jftp.gov.jo/Docs/Plant%20Varitety%20Law.pdfhttp://www.jftp.gov.jo/Docs/Geographical%20Indications%20Law.pdfhttp://www.jftp.gov.jo/Docs/Geographical%20Indications%20Law.pdfhttp://www.jftp.gov.jo/Docs/Unfair%20Competition%20&%20Trade%20Secrets%20Law.pdfhttp://www.blackwell-synergy.com/doi/pdf/10.1111/j.1422-2213.2006.00275.xhttp://www.blackwell-synergy.com/doi/pdf/10.1111/j.1422-2213.2006.00275.xhttp://www.blackwell-synergy.com/doi/pdf/10.1111/j.1422-2213.2006.00275.xhttp://www.jftp.gov.jo/Docs/Unfair%20Competition%20&%20Trade%20Secrets%20Law.pdfhttp://www.jftp.gov.jo/Docs/Geographical%20Indications%20Law.pdfhttp://www.jftp.gov.jo/Docs/Plant%20Varitety%20Law.pdfhttp://www.jftp.gov.jo/Docs/Industrial%20Designs%20and%20Models%20Law.pdfhttp://www.jftp.gov.jo/Docs/Copyright%20Law%20Amendments.pdfhttp://www.jftp.gov.jo/Docs/Trademark%20Law.pdfhttp://www.mit.gov.jo/portals/0/tabid/537/patent%20regulation.aspx


29/48

29

provisions are one sided and they do not present the interests of Jordan and they tend to

favor the United States and its big corporations that own intellectual goods and want to

protect their interests as much as possible. 111 Also, Jordan and the US issued a Joint

Statement on Electronic Commerce, the statement discusses many issues related to

electronic commerce including domain names and it requires Jordan to explore the

participation in the Government Advisory Committee of ICANN. 112 I believe that

participation in this advisory committee is beneficial to Jordan and NITC.

1. Jordanian Trademark LawThe legal basis for the protection of trademarks in Jordan is to be found in the

Jordanian Trademark Law No 34 for 1999 (Trademark Law), and Unfair Competition

and Trade Secret Law No 15 for the year 2000 (Unfair Competition Law).

As we have mentioned earlier, there is no domain name law in Jordan, and this means

that we should rely on the existing articles of the trademark and unfair competition laws

to resolve domain name disputes.

Traditional legal thinkers believe that laws can accommodate developments taking place

and no amendments are needed in many occasions, but does this apply on domain name

and cybersquatting? Can lawyers rely on traditional trademark articles to protect their

clients interests in the event of cybersquatting under the .jo domain name space?

It is difficult to answer the above raised question unless an action is brought in front of

the courts that will determine to what extent it is ready to go beyond the articles of the

black law and apply it readily to cybersquatting. I will examine below Jordanian

111 id112 The US- Jordan Joint Statement on electronic commerce is available athttp://www.jordanusfta.com/overview_electronic_commerce_en.asp (last visited on December 1, 2006)
http://www.jordanusfta.com/overview_electronic_commerce_en.asphttp://www.jordanusfta.com/overview_electronic_commerce_en.asphttp://www.jordanusfta.com/overview_electronic_commerce_en.asp


30/48

30

trademark law, and see to what extent they can be applied in domain name dispute

contexts.

Trademark law defines trademark as:

"Any visually perceptible sign used or to be used by any person for distinguishing his

goods or services from those of others and a mark used or proposed to be used upon or

in connection with goods so as to indicate that they are the goods of the proprietor of

such trademark by virtue of manufacture, selection, certification, dealing with or

offering for sale." The law also mentions well- known and collective marks. 113

Article 26 of the Trademark Law states that If the trademark is famous but not

registered, then its owner may demand from the competent court to prevent third parties

from using it on identical goods or services

Article 34 of the Jordanian Trademark Law states that No person shall have the right to

file a lawsuit to claim damages for any infringement upon a trademark not registered in

the Kingdom

Article 38 of the Law specifies trademark infringement as one of the following acts:

A) Counterfeiting a registered trademark under this Law, imitating it in any other way

that misleads the public, or affixing a counterfeit or imitated mark on the same goods for

which the trademark has been registered.

113 Well known marks are defined as the mark with a world renown whose repute surpassed the country oforigin where it has been registered and acquired a fame in the relevant sector among the consumer public inthe Hashemite Kingdom of Jordan.


31/48

31

B) Illegally using a trademark owned by others in the same class of goods or services for

which that trademark is registered.

C) Selling, possessing for the purpose of selling or offering for sale goods bearing atrademark whose use is regarded as an offence under Paragraphs (A) and (B) of this

Article.

It is difficult to determine whether these articles which are applicable on ordinary

trademarks can be also applied when they are registered over the internet as domain

names. Surely it may be argued that they can be applicable. Let us examine each of themand determine to what extent trademark owners can use them in the event that their

trademarks has been registered as domain names.

Jordan trademark law defines trademark in traditional way and does only recognize

visually perceptible sign and not new other form such as sound and smell marks. To be

capable of registration, a mark must be used or proposed to be used to differentiate thegoods and services of one proprietor from the other.

According to articles 26 and 34, famous trademark owners are not allowed to file a law

suit to claim damages, but they are only allowed to prevent third parties from using their

famous trademarks on identical goods or services. I argue that even article 26 is not

helpful for trademark owner to rely upon and that is because the trademark may not be

well-known and even if it is, the only remedy will be to prevent third parties from using

the mark on identical goods and services. This is not applicable in the context of domain


32/48

32

names because domain name are global in their nature and are not limited by goods or

services.

Article 38 deals mainly with trademark infringements and determines the specificsituations when the actual physical act of infringement is taking place. It is argued that

cybersquatting or the act of registering trademarks in bad faith as a domain name cannot

fit properly with category A since it deals with the situation when a trademark is

counterfeited and B since it deals with using a mark illegally in the same class of goods

or services. As for category C it deals with the situation selling and possessing either a

counterfeited or illegal marks. It is apparent when combining articles 26, 34 and 38

together, that they do not fit with cybersquating or any other kind of disputes over

domain name such as typosquatting and cybersmeairng. enforcing trademark rights over

domain names will not help trademark owners since they are outside the context of

consumer confusion and in many situation Jordanian courts will look into this matter to

determine whether an infringement has occurred or not. If the trademark law is not very

helpful, can we apply unfair competition law?

2. Unfair Competition and Trade Secrets Law

Article 2 of the Unfair Competition law defines unfair competition as any

competition contradictory to the honest practices in the commercial and industrial

activities shall be deemed one of the unfair competition acts, and particularly the

following:

1.The activities that may by nature cause confusion with entity, products or commercial

or industrial activities of one of competitors.


33/48

33

2. Untrue assumptions in practicing trade, whereby causing deprivation of trust from one

of the competitors' entity, products or industrial or commercial activities.

3. The data or assumptions which use in commerce may mislead public in respect to the

product's nature, methods of manufacturing, properties, amounts, and availability for use.

4. Any practice that reduces the product reputation, causes confusion in respect to the

product general shape or presentation, or misleads the public on declaring the product

price or the method of counting thereof.

B. If the unfair competition related to a trademark used in the Kingdom either being

registered or not causes public misleading, provisions of paragraph (A) of such articleshall be applied.

C. The provisions of paragraphs (A) and (B) of this article shall be applied on the

services as necessary.

After reading article 2 in sections 1 and 2 of the law, it is argued that cybersquatting or

the act of registering trademarks in bad faith as domain names can fit more appropriately

into unfair competition than trademark laws; this is because the law does not define what

is considered to be unfair competition and the term is flexible enough to include any new

kind of competition that is contradictory to honest practices. But the most important

questions is whether the law can be applied to all forms of cybersquatting? The law

surely accommodates the situation where two competitors work in business and then one

of them registers a domain name that is identical or confusingly similar to the other

trademark or domain name. In this situation this act will be considered unfair

competition, and contradictory to business practices, but does the law cover classical

cybsersquatting and other conflicts over domain names?


34/48

34

In classical cybersquatting, cybersquatters do not do any business, and they are not

competing with the trademark owner, but they want to benefit commercially from selling

the domain name to him. In the situation of typosquatting, the domain name registrant

registers a domain name confusingly similar, but not identical to the trademark. In that

case also the registrant does not want to compete with the trademark owner, but to attract

visitors to his website depending on the fame of the trademark. Also, in the situation of

suck websites there is no sort of competition between the trademark owner and the

domain name registrant, who is only purpose of registering the domain name is the

dissatisfaction with the products of the trademark owner.

In all of these situations, the unfair competition law is not that helpful since there are no

rival competitors in business, so what must the solution be then?

In Japan, the Unfair Competition Prevention Law No 47 for the year 1993 was amended

to deal with domain name cybersquatting. Subparagraph 12, paragraph 1, article 2 of the

Unfair Competition Prevention Law defines unfair competition as an act of a i)

acquiring or holding the right to use a domain name or of using domain name (ii) that is

identical with or similar to another partys specific trademark, service mark or the like,

(iii for the purpose of obtaining an illegal profit (profit making purpose) or causing

damage to the party (damage-cause purpose). It is very clear from the provision that

trademark owners can protect their trademark in cyberspace by relying on the amended

law, but do we need such an amendment in Jordan? I will provide my suggestions on that

matter in the final part of the paper.

F. Criticism of NITCs Approach to domain name registration policies and disputes


35/48

35

NITCs target is to ensure that the .jo namespace is managed properly and fairly

for the people of Jordan. The most important question is what kind of achievements has

NITC made to attain to that target? I will examine below several criticisms to NITC

approach to .jo domain name space in general and domain name disputes particularly. I

argue below that not much has been achieved so far and a lot of work has to be done for

.jo ccTLD namespace. I will examine the suggestions and recommendation for

improvement in the next section of the paper.

1) Closeness of NITC Registry

The NITC is a closed registry in several respects among them is: it did not approveany registrar to register domain name and also it does impose certain restrictions on

the registration of .jo ccTLDs. Although any registry is free to adopt its own

registration policy, I argue that imposing many restrictions will restrict and lessen

domain name registration. NITC Registration requirements must be studied to make

them compatible with world wide registries and international standards.

2) Adopting a Mixed Domain Name Registration System

Usually domain name registry either registers domain names under the top level

or under the second level. Jordan adopts the two at the same time and this does not

correspond with the international standards adopted worldwide. It is argued that

NITC should adopt one of the two main structures: the flat structure (.jo) or the

hierarchical structure (com.jo, edu.jo). I think that it is more appropriate for NITC to


36/48

36

adopt the hierarchical structure for scalability since it offers a greater number of

options for registration of domains. 114

2) Inconsistency and Poor Design of NITCs website

NITC websites provides very basic information and fails to develop significant,

clear and comprehensive information about registration procedure for ccTLD .jo.

Also, the information is not updated frequently and domain name registrants have to

visit the NITC or at least call them to ask for information that is missing from the

website.

The poor design of NITCs website discourages registrants from registering domainnames. The coding of the website is of low standard and its navigation is inept

because of the lack of attention to detail and its slow speed of loading.

3) Poor Drafting of .jo Domain Registration Policy

The domain registration policy for domain names is poorly drafted and this is

evident by its unstudied terms, inconsistency, repetition, uncertainty and by its

attempt to include everything in one single document (renewal, transfer and schedule

of fees, dispute policy). 115 The policy includes at the end of another agreement related

to .jo personal domain names which have only been approved recently. Certain links

are included in the policy, but are not related to the registry or to Jordan. The policy

specifies that Jordanian laws will be applicable to this agreement, but does not tell the

registrant what kind of laws will be applicable to him (civil, criminal, commercial or

114 See for example GhNIC which adopted the hierarchical system after having the two systems, athttp://www.nic.gh/reg_now.php , and see the report submitted for that purpose available athttp:// www.nic.gh/pdf/GhNIC%20Report.pdf (last visited December 4, 2006).115 See the policy available at http://www.dns.jo/Registration_policy.aspx (last visited on December 4,2006)
http://www.nic.gh/reg_now.phphttp://www.nic.gh/pdf/GhNIC%20Report.pdfhttp://www.nic.gh/pdf/GhNIC%20Report.pdfhttp://www.dns.jo/Registration_policy.aspxhttp://www.dns.jo/Registration_policy.aspxhttp://www.dns.jo/Registration_policy.aspxhttp://www.nic.gh/pdf/GhNIC%20Report.pdfhttp://www.nic.gh/reg_now.php


37/48

37

all the laws at once). Finally, the policy does not provide very important definitions

for terms such as resident in Jordan, person and organization.

4) No Domain Nam e Dispute Resolution policy

It is argued that NITC did not adopt a clear policy to solve domain name disputes;

this is evident from reading provision 3 of the jo Domain Name Registration policy.

The policy does not say anything specifically of what are the options and the practical

measures that the trademark owner can take with NITC when his trademark has been

registered in bad faith as a domain name. There is no form of ADR or mediation and

all that is available for the trademark owner is to go to national courts. This is notacceptable according to international standards, and every registry has to adopt its

own policy or use the UDRP mechanism to solve domain name disputes.

5) Unreadiness of the Jordanian Courts

In the event that a domain name dispute related to .jo has been brought in front of

national Jordanian courts, the courts will not be able to issue proper decisions and this

is due to several reasons among them: trademark and unfair competition law does not

deal with the problems of cybersquatting, judges are not knowledgeable on the basic

technological concepts related to the internet and there is no special expatiated

procedure that deals with domain name disputes.

4. An American Perspective

Domain Name law is well developed in the United States. Three developments,

occurring simultaneously, spawned early domain name litigation, particularly but not

exclusively in the area of domain name piracy and these include 116 : technological

developments with the birth of the world wide web, commercial development with the

116 BETTINGER, supra note 26 at 893


38/48

38

realization that the web allowed for immediate, global penetration, and legal

developments with congressional adaptation of the Federal Trademark Dilution Act

1996. 117 The Untied State has the first federal statute world wide which addresses the

clash between trademarks rights and domain names. I will discuss below the ccTLDs

(.us) registration condition and procedure followed by Neustar, The Anti Cyber Squatting

Protection Law (ACPA) and American case law. It is important for Jordan to benefit as

much as possible from other countries experiences, particularly the U.S, to improve its

domain name registration procedure, and dispute resolution systems in order to conform

with international standards.A. Neustar

Neustar is the registrar of domain name for .us, although most American

businesses prefer the generic domain name of .com, but still many chose to register their

.us ccTLDs or register that domain name and reserve it either for future use or as a

precaution strategy to deter bad faith registrants from making money on the account of

the big corporations.

Prior to 2002, the .us top level domain was made available only to certain local

government entities in the United States. But in its June, 1989 White Paper the U.S

government said that it would work with the private sector, state and local government to

determine how best to open up use of the .us for commercial purposes. In 2001, the US

Department of Commerce conducted bidding and awarded the contract to operate and to

manage the .us domain and make it available to the general public. 118

117 id118 MACCARTHY supra note 66 at s 25:72


39/48

39

The .US top-level domain (usTLD) was established in 1985 as the ccTLD for the United

States. 119 It is administered by NeuStar, Inc. 120 The expanded second-level .US domain

was launched on April 24, 2002, enabling companies, nonprofits, government entities and

individuals to establish unique, memorable American addresses online. 121

The UDRP does not apply to us ccTLD because the US Department of Commerce, not

comparative means of resolving dn

Documents