the UDRP

This page looks at the Uniform Domain Name Dispute Resolution Process (UDRP). It also looks at the 1999 US Anticybersquatting Consumer Protection Act (ACPA). 

     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: alternate dispute resolution (ADR) [aka alternative dispute resolution] services. 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 60% 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 (CPR), National Arbitration Forum (NAF) and the Asian Domain Name Dispute Resolution Centre (ADNDRC). The latter replaced Canada-based eResolution (eRes), which withdrew in late 2001

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

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 (Chicago: Uni of Chicago Press 98) by Yves Dezalay & Bryant Garth and in the much drier Law & Practice of International Commercial Arbitration (London: Sweet & Maxwell 99) by Alan Redfern & Martin Hunter.

This site features a short profile on ADR - including Australian and overseas legislation - and particular projects concerned with B2B and B2C ADR.

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

Two of the most influential studies have been the Rough Justice report from Syracuse University's Convergence Center and Michael Geist's valuable jurimetric study Fair.com? An Examination of the Allegations of Systemic Unfairness in the UDRP (PDF), which examined 3,094 UDRP decisions.

The Syracuse report suggests that interpretation of the UDRP by WIPO and forum-shopping by litigants have created a system biased towards large trademark holders. Geist considers patterns in decisionmaking by single and multiple person panels. His analysis complements arguments in the Syracuse report. His 2000 paper on ICANN's Uniform Dispute Resolution Processes: Lessons in ADR is also of value; Fair.com was updated (PDF) in early 2002.

Critics of the studies have responded that 'correlation does not prove causation', arguing that they are methodologically flawed - counting numbers but not identifying whether the decisions by arbitrators were correct.

One UDRP supporter, for example, comments that most decisions have been correct (with faulty judgements representing a "tiny percentage of the total ... a smaller percentage than happens in courts of law for most democracies), that many defendants do not contest the claim against them and lose by default rather than bias, and that the UDRP is exceptionally inexpensive relative to other legal mechanisms.

The 70 page 2002 study (PDF) by the Max Planck Institute for Foreign & International Patent, Copyright & Competition Law Intellectual Property Institute concluded that the UDRP has been operating satisfactorily although there is a need for fine-tuning regarding free speech and rules concerning the burden of proof. The UDRP by All Accounts Works Effectively (PDF) and UDRP – A Success Story (PDF), two 2002 documents from the International Trademark Association (INTA), provide another response to the Geist and Syracuse studies.

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, Stacey King's 2000 The 'Law That It Deems Applicable': ICANN, Dispute Resolution & the Problem of Cybersquatting paper and Joseph Liu's 1999 Legitimacy and Authority in Internet Coordination: A Domain Name Case note. Holger Hestermeyer's 2002 paper The Invalidity of ICANN’s UDRP Under National Law suggests that problems might be addressed by enshrining the UDRP in a global treaty. Kevin Heller's 2001 paper The Young Cybersquatter's Handbook: A Comparative Analysis of the ICANN Dispute considers the UDRP and ACPA.

There's a more spirited defence in Doublas Hancock's 2001 paper An Assessment of ICANN's Mandatory Uniform Dispute Resolution Policy in Resolving Disputes Over Domain Names.

   tracking disputes

We report on major UDRP disputes in Analysphere, our weekly news site.

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. Increasingly those rules are based on the UDRP, with minor modification to reflect local circumstances.

The Australian domain administrator, auDA, has proposed a UDRP-based scheme, the auDRP.

Its 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. In July 2001 Singapore's Network Information Center released proposals for a new UDRP-based scheme.

   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. We've highlighted particular studies - such as Dan Burk's 1995 paper Trademarks Along the Infobahn: A First Look at the Emerging Law of Cybermarks and Michael Blakeney's 1999 Murdoch E-Law Journal article on Interfacing Trade Marks & Domain Names - in a detailed examination in the Intellectual Property guide on this site.

It is 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 is 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 is 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'. Deborah Ezer's 2000 paper Celebrity Names As Web Site Addresses: Extending the Domain of Publicity Rights to the Internet highlights particular issues regarding the 'right of publicity', discussed in more detail in our Intellectual Property Guide here.

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 and Kevin Eng's 2000 Breaking Through the Looking Glass: An Analysis of Trademark Rights in Domain Names Across Top Level Domains paper.

Jessica Litman's 2000 The DNS Wars: Trademarks & the Internet Domain Name System (PDF), like her other writing on intellectual property, deserves consideration.

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.

     ACPA

The UDRP involves arbitration rather than litigation under state/national trade practices or trademark legislation - for example about 'passing off' - or special cybersquatting legislation. The enactment that has attracted most attention is the US Anticybersquatting Consumer Protection Act (ACPA), which came into effect in 1999.

Remedies under the UDRP are limited to transfer or cancellation of the domain name and, compared to litigation in US courts, lega costs are quite low. A domain name holder found to be a cybersquatter under ACPA is liable for damages (statutory damages up to US$100,000 per domain name, or actual damages and profits), plus court costs and lawyers fees.

There is liability if the registrant -

• has a bad faith intent to profit from a protected mark or personal name
• registers, traffics in, or uses a domain name that is
  (a) identical or confusingly similar to a distinctive mark;
  (b) identical, confusingly similar or dilutive of a famous mark; or
  (c) is protected under provisions relating to the Olympics or related marks.

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