UDRP

This page looks at the Uniform Domain Name Dispute Resolution Process (UDRP). 

     background

ICANN established the UDRP to handle disagreements about the allocation of domain names. 

The UDRP involves arbitration and decision-making by a small number of non-government arbitral bodies. Decisions are made on a case by case basis, rather than using detailed guidelines or an extensive body of precedent. That has led to what some have criticised as bias or inconsistency. Others have highlighted problems with lack of an appeal body, one result being that some disputants have taken disagreements to favourable fora such as courts in particular US states. 

Around 80% of the UDRP disputes have been heard by the World Intellectual Property Organization's Domain Name Dispute Resolution Service (DNDRS), arguably because plaintiffs are comfortable with WIPO's aesthetic of the 'sacredness' of intellectual property. The others are the CPR Institute for Dispute Resolution, eResolution and the National Arbitration Forum. 

Towards the end of 2000 WIPO sought comments on trademark and domain name issues in strengthening the regime. It subsequently released draft 'Best Practice' guidelines to curb "abusive and bad faith registrations of protected names, and to resolve related disputes" regarding domain name disputes.

Those guidelines reflect calls from Australia and other countries for a set of voluntary guidelines covering the development of practices and policies. In April 2001 WIPO issued a detailed interim report on its current domain name dispute resolution process. The report summarizes submissions on proposals to extend the process to personal names, geographic locations and trade names.   

The 'Process' aims at addressing disputes about domain names - eg cybersquatting - in a way that's more speedy and economical than recourse to international courts and that doesn't get bogged down in disagreements between different national/regional jurisdictions (eg French versus US courts). 

A perspective on such arbitration is provided by Dealing in Virtue : International Commercial Arbitration & the Construction of a Transnational Legal Order by Yves Dezalay & Bryant Garth (Chicago, Uni of Chicago Press 98).

The UDRP's been strongly, although sometimes unfairly, criticised. 

One of the most influential studies has been the Rough Justice report from Syracuse University's Convergence Center. It suggests that interpretation of of the UDRP by WIPO and forum-shopping by litigants have created a system biased towards large trademark holders.

Ian Stewart's Federal Communications Law Journal May 2001 article (PDF) on The Best Laid Plans: How Unrestrained Arbitration Decisions Have Corrupted the Uniform Domain Name Dispute Resolution Policy argues that the UDRP as such is defensible but has been distorted by the individual arbitrators. It is a call for restraint, in line with Jonathan Weinberg's more incisive article on ICANN & the Problem of Legitimacy.

For a sense of how the UDRP is evolving we recommend the Domain Name Law Reports (DNLR), a public database of ICANN domain name dispute case law, and Scott Donahey's monthly digest in association with the UDRP resources at the Berkman Center for Internet & Society.

ICANN also offers a dispute search engine.

   overview of the process

Although ICANN has a quasi-governmental responsibility for and administration of the net, the UDRP is enforced through contract rather than regulation. Domain name registrars accredited by ICANN incorporate the UDRP into individual domain name registration agreements. In effect, the UDRP binds registrants through their contracts with registrars such as Network Solutions and MelbourneIT "to submit" to "mandatory administrative proceedings" initiated by third-party "complainants."

The scope of such UDRP proceedings is limited to claims of "abusive" registrations of Internet domain names and covers no other disputes. Complainants in UDRP proceedings must prove that the disputed "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights," that the registrant has "no rights or legitimate interests in respect of the domain name," and that the domain name "has been registered and is being used in bad faith." The UDRP identifies tests of "bad faith" and grounds for demonstrating a registrant's "rights and legitimate interests" in a domain name.

Complainants initiate UDRP proceedings directly with one of the dispute resolution service providers designated by ICANN. The UDRP and the UDRP Rules prescribe detailed procedures for appointing either a solo arbitrator or a three-member panel to conduct the inquiry. The UDRP is fashioned as an "online" procedure administered via the net. Although a panel may opt in exceptional cases to hold live or teleconference hearings, it is expected to base its decision on "the statements and documents submitted" in accordance with the UDRP, the UDRP Rules, and any "rules and principles of law that it deems applicable."

In the absence of "exceptional circumstances," a panel is expected to issue its decision within fourteen days of its appointment. If the panel rules in the complainant's favor, the only available remedy is for the registrar to cancel the domain name registration or transfer it to the complainant.

A registrar may automatically implement a UDRP panel decision after ten days unless the aggrieved registrant notifies the registrar within this ten day period that it has "commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted" as required by the UDRP Rules. After notification, the registrar "will take no further action" until it receives "satisfactory" evidence of the resolution of the dispute, the dismissal or withdrawal of the lawsuit, or a court order that the registrant does "not have the right to continue using" the domain name.

As of May 2001 3,622 separate proceedings concerning 6,410 separate domain names have been initiated under the UDRP.

   national rules

Most nations have rules, of varying complexity, to deal with domain disputes.

auDA (described on the next page of this profile) has proposed a UDRP-based scheme, the auDRP. It's British counterpart, Nominet, is considering changes to the UK domain name dispute resolution process. The proposed rules would feature a two stage process in which the parties would enter mediation for the two weeks. If unsuccessful, the case would be referred to an arbitrator.

   what is cybersquatting? 

Cybersquatting involves registering a domain name to profit by selling it to the business or individual (eg Nike, British Telecom, Madonna) with the same corporate name, product name or trademark. 

It's contentious, as bodies such as the Domain Name Rights Coalition (DNRC), the Association for Domain Owners Rights (ADOR) and the loopier TLD Lobby (TLDL) consider that it's an exercise of intelligence/investment rather than bad faith and because they perceive many of the remedies as being biased in favour of large businesses. One man's cybersquatting is another man's commercial savvy, all within the rules of domain naming within different countries (and using different registries).   

Globally, a pattern's emerging as courts support the owners of existing business names and trademarks over those who're considered to acted in bad faith by registering a domain name with the sole objective of on-selling that name. James Hutchinson's UK Journal of Information, Law & Technology paper on Can Trade Mark Protection Respond to the International Threat of Cybersquatting?" offers a succinct review of US and UK litigation about cybersquatting and 'passing off'. For a broader perspective we recommend the cogent UK Journal of Information Law & Technology paper by Richard Wu on New Rules for Resolving Chinese Domain Name Disputes - A Comparative Analysis.

Critics of course have pointed out that justice favours those who can afford a shoal of QCs. Action by trademark owners is however understandable, as many have spent hundreds of millions of dollars over several decades in promoting awareness of a brand. Indeed, a major part of the market value of a business may be its brand. 'Name recognition' is thus of significant and legitimate concern.



   next page  (auDA and the Australian regime)