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Copyright © International Chamber of Commerce (ICC). All rights reserved. ( Source of the document: ICC Digital Library )
by Andrea Mondini*
A. The Domain Name System
Every computer connected to the Internet has a unique Internet Protocol Address (‘IP Address’) consisting of a series of numbers which identifies said computer within the Internet. The function of an IP Address is thus comparable to a telephone number. However, because IP Addresses consist of long series of numbers, they are difficult for humans to memorise. A domain name is the user-friendly form of an Internet address: It is a name corresponding to the respective IP Address and allowing contact to the respective computer by entering a name instead of a series of numbers.
The Domain Name System (‘DNS’) is an Internet protocol that provides mapping between a computer’s IP Address and a domain name. The domain name system is thus comparable to a telephone book. The Internet Corporation for Assigned Names and Numbers (‘ICANN’) is the body responsible for managing and coordinating the DNS to ensure that each IP Address is unique and that all Internet users can reach each other. ICANN achieves this by overseeing the distribution of unique IP Addresses and domain names and by ensuring that each domain name maps the correct IP Address.1
Domain names consist of several parts (at least two), separated by dots. In a domain name, the part following the last dot is called the Top-Level Domain (‘TLD’). The part of the domain name which precedes the TLD is referred to as the Second-Level Domain (‘SLD’).
Generic TLDs (‘gTLDs’) include notably the popular ‘.com’, ‘.net’, ‘.org’, ‘.biz’ and ‘.info’ TLDs. Further, each country has its country code TLD (‘ccTLD’) such as ‘.ch’, ‘.uk’, ‘.de’, ‘.fr’, etc. In addition, the New gTLD programme launched in 2012 allows applicants to register and operate a TLD of their own choosing (such as, e.g., ‘.bosch’ or ‘.lighting’.2
B. The Registrars
ICANN accredited several companies (‘Registrars’) to provide domain registration services under one or more TLD to applicants seeking to register domains. SLDs are registered on a "first-come, first-served basis": The applicant can freely choose the SLD provided that no identical domain name already exists, and the Registrars do not have the power to check whether the domain name is identical or confusingly similar to the trademark or the name of a third party. As a consequence, it is technically [Page71:] possible for an applicant to register a domain name that is identical or confusingly similar to the trademark or name of a third party and thus may infringe such third-party’s rights.
C. Abusive Domain Name Registrations
In the second half of the nineties, when many companies where not yet fully aware of the increasing importance of domain names, third parties started abusively registering domain names: taking advantage of the fact that domain names are registered on a "first-come, first-served" basis, such third parties abusively engaged in the practice of registering domain names corresponding to the trademark or names of companies that had not yet registered them as domain names, and then requesting high payments for the transfer of such domain names (so-called ‘cybersquatting’). If a domain name corresponding to the trademark was already registered, they registered slight variations (e.g. ‘mc-donalds.com’ instead of ‘mcdonalds.com’) or obvious misspellings (e.g. ‘goolge.com’ instead of ‘google.com’) of existing domain names (so-called ‘typosquatting’).
In the late nineties, when trying to obtain the transfer of such domain names in court litigation, trademark owners faced significant jurisdictional and enforcement problems due to the ubiquity of the Internet. It was thus often cheaper and quicker for companies to pay the requested ransom instead of litigating the case, and this situation of course rendered cybersquatting and typosquatting practices even more profitable and rampant.
This situation led to the adoption of a unique dispute resolution mechanism tailored specifically for the resolution of domain name disputes: The Uniform Domain-Name Dispute Resolution Policy.
A. The Genesis of the UDRP
In 1997, by request of the United States government, the World Intellectual Property Organization (‘WIPO’) undertook a consultation process aimed at making recommendations to the ICANN on issues arising out of the interface between Internet, domain names and intellectual property rights. In its Final Report of the WIPO Internet Domain Name Process of 30 April 1999 (‘Final Report’), WIPO pointed out that disputes over domain names and intellectual property rights presented a number of particular characteristics, that domain names gave rise to global presence, that such global presence might give rise to infringements of intellectual property rights in several jurisdictions, that domain name disputes needed to be resolved swiftly considering how easy, inexpensive and quick it is to register domain names, and that there was a disproportion between the low cost of obtaining an Internet domain name and the high cost incurred by an intellectual property owner fighting an infringement through litigation.
On 26 August 1999, based on recommendations provided in the Final Report, the ICANN adopted the UDRP setting forth the general principles governing domain name dispute resolution.3 Simultaneously, the ICANN issued the Rules for Uniform Domain Name Dispute Resolution Policy (‘UDRP Rules’).4 Both texts entered into force on 1 December 1999. The [Page72:] current version of the UDRP Rules is the version approved by the ICANN Board of Directors on 28 September 2013, which are in effect since 31 July 2015.5
B. The Dispute Resolution Service Providers
The ICANN accredited the following Dispute Resolution Service Providers (‘DRS Provider’) to administer domain name disputes under the UDRP:
When filing a complaint under the UDRP (‘Complaint’), trademark owners asserting that a domain name registration infringes their trademark (‘Complainants’) are free to choose one of the above DRS Providers. This opportunity for "forum shopping" has attracted some criticism: The Complainant by definition is always a trademark owner, and it has been pointed out that this situation creates a competitive environment in which Complainants pick the DRS Provider perceived as the most likely to rule in their favor. Therefore, it has been criticised that the DRS Providers have an incentive to be trademark-owner friendly in order to attract Complainants.6
This article will focus mainly on the UDRP as administered by the WIPO Arbitration and Mediation Centre, which deals with the largest number of domain name disputes. The number of the domain name cases administered by the WIPO Arbitration and Mediation Center to date exceeds 37,000 cases. Approximately 84% of the UDRP cases administered by the WIPO Arbitration and Mediation Center were resolved in favor of the Complainant (i.e. trademark owner).7
The WIPO Arbitration and Mediation Center issued its own set of rules, namely the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (‘WIPO Supplemental Rules’), which apply in addition to the UDRP and the UDRP Rules and became effective as of 1 December 1999.8 Revised WIPO Supplemental Rules are in effect since 14 December 2009.9 The first Complaint was filed with the WIPO Arbitration and Mediation Center on 2 December 1999 and decided on 14 January 2000.10
The UDRP and the UDRP Rules apply to most of the gTLDs (such as ‘.com’, ‘.biz’, ‘.org’) as well as to the New gTLDs. Moreover, the WIPO Arbitration and Mediation Center has been appointed as DRS Provider for domain name disputes regarding more than 70 ccTLDs 11.
C. The UDRP Is a Dispute Resolution Mechanism Sui Generis
1. The nature and scope of the UDRP
The UDRP is a dispute resolution mechanism sui generis. It is not arbitration, notably because under the UDRP there is no arbitration clause between the Complainant (i.e. the trademark owner) and the respondent (the registrant of the disputed domain name, the ‘Respondent’).
Rather, the UDRP is a quasi-administrative procedure12 incorporated on a contractual basis by reference into the registration agreement entered into [Page73:] between the respective Registrar and each domain name registrant.13 In order to register a domain name, any domain name registrant must submit to the mandatory administrative proceedings provided under the UDRP in the event that a third party asserts that the domain name registrant was not entitled to register the domain name which thus needs to be transferred or deleted. These mandatory proceedings are to be conducted according to the UDRP, to the UDRP Rules and to the specific Rules of the selected DRS Provider (such as the WIPO Supplemental Rules).14
On the other hand, in order to be accredited by ICANN to provide domain registration services, ICANN requires all Registrars to sign a Registrar Accreditation Agreement in which the Registrars undertake to include the UDRP in all of their agreements with domain name applicants.15 The UDRP requires Registrars to cancel, transfer or otherwise make changes to domain name registrations upon receipt (i) of an order by a court or arbitral tribunal, and/or (ii) upon receipt of a decision by a Panel appointed under the UDRP (‘Panel’) requiring such action in an administrative proceeding to which the registrant was a party and which was conducted under the UDRP.
The roles of the parties involved in the UDRP mechanism is illustrated in the following drawing:
According to paragraph 4(a) of the UDRP, this procedure is only available for disputes concerning an alleged abusive registration of a domain name, i.e. a registration, which meets the following cumulative criteria:
(i) The disputed domain name registered by the Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) The Respondent has no rights or legitimate interests with respect to the Disputed Domain Name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
These three elements, which are the substantive core of the UDRP, will be discussed in detail below in chapter .
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D. Commencing the UDRP proceedings
As a first step, a Complainant (i.e. the trademark owner) shall select one of the accredited DRS Providers by submitting its Complaint to such DRS Provider.16 The selected DRS Provider will then administer the proceedings.
The Complainant must submit its Complaint electronically.17 In accordance with paragraph 3(b) of the UDRP Rules, the Complaint must specify inter alia the e-mail address and contact details of the Complainant and of the Respondent and of their representatives, if any; whether the Complainant elects to have the dispute settled by a single-member or a three-member Panel and, in the event that the Complainant elects a three-member Panel, the names and contact details of three potential panelists (‘Panelists’); the domain name that is the subject of the dispute; the Registrar with which the domain name is registered; the trademark or service mark upon which the Complaint is based (including a description of the goods or services for which the mark is used); and the grounds upon which the Complaint is made, as well as the remedies which are sought.18 In addition, the Complaint must contain a declaration that the Complainant will submit to the jurisdiction of the courts at the location of the principal office of the Registrar or of the domain name holder’s address in the event of any challenge to a UDRP decision cancelling or transferring the domain name.19
On the substance, paragraph 4(a) of the UDRP requires the Complainant to show (i) that the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights, (ii) that the domain name holder has no rights or legitimate interests in respect of the domain name, and (iii) that the domain name has been registered and is being used in bad faith. These three substantive elements of the test will be discussed in more detail below.
Upon receipt of a Complaint, the DRS Provider must submit a verification request to the Registrar. In its verification request, the DRS Provider requests the Registrar to lock the domain name, i.e. to take measures preventing the Respondent from modifying the registration information (‘Lock’).
Within two (2) business days of receiving the DRS Provider’s verification request, the Registrar shall provide the information requested in the verification request and confirm that a Lock of the domain name has been applied. The Registrar shall not notify the Respondent of the proceeding until the Lock status has been applied. The Lock shall remain in place through the remaining pendency of the UDRP proceeding.
If the Complaint complies with the UDRP and the UDRP Rules, the DRS Provider shall, within three days from receipt of the fee to be paid by the Complainant, forward the Complaint to the Respondent.
The Respondent must submit its response (‘Response’) to the Complaint within 20 days from the date of commencement of the proceedings, i.e. from the date the Complaint is forwarded to the Respondent.20 The Response must be submitted electronically and must inter alia specify – in addition to the Respondent’s defense – the e-mail address and contact details of the Respondent, and, in the event that the Complainant has elected a single-member Panel, whether the Respondent elects instead to have the dispute decided by a three-member Panel and the names and contact details of three candidates to serve as one of the Panelists.21
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E. The Panelists
If neither of the parties has elected a three-member Panel, the DRS Provider must appoint a single-member Panel from its list of Panelists.22 If either of the parties elects to have the dispute decided by a three-member Panel, the DRS Provider must appoint three Panelists.23 In doing so, the DRS Provider must endeavor to appoint one Panelist from the list of candidates submitted by each of the parties. The third Panelist will be appointed from a list of five candidates submitted by the DRS Provider to the parties in a manner that balances the preferences of both parties.24
The UDRP Rules do not provide for a procedure to challenge a Panelist, but merely state that a Panelist must disclose promptly to the DRS Provider circumstances giving rise to justifiable doubts as to his or her impartiality or independence. In such a case, the DRS Provider may, in its discretion, appoint a substitute Panelist.25
F. Time and Cost
The Administrative Procedure normally should be completed within 60 days.
The costs of the UDRP proceedings are set by the DRS Provider: For a case filed with the WIPO Center involving between one and five domain names that is to be decided by a single Panelist, the fee is US$1,500. For a case that is to be decided by three Panelists, the fee is US$4,000.26
The Complainant is responsible for paying the total fees charged by the DRS Provider for decision by a single Panelist. The only situation where the Respondent has to share in the fees is when the Respondent chooses to have the case decided by three Panelists and the Complainant had chosen a single Panelist.
No attorney fees may be awarded to the winning party.
G. The Procedure
The UDRP Rules provide that the procedure must be conducted exclusively in writing. In other words, there will be no in-person hearings (nor hearings by telephone conference, video conference or web conference) unless otherwise decided by the Panel in its discretion and as (rare) exception to this rule.27
Unless otherwise agreed by the Parties, the UDRP proceedings are conducted in the language of the registration agreement between the domain name holder and the Registrar, subject to the authority of the Panel to determine otherwise, having regard to the specific circumstances.28
Paragraph 15(a) of the UDRP Rules provides that the Panel shall decide a Complaint on the basis of the statements and documents submitted by the Parties and in accordance with the UDRP, the UDRP Rules and any rules and principles of law that it deems applicable. In practice, Panelists rarely apply legal provisions of a specific jurisdiction, but rather decide the Complaints on the basis of the parties’ submissions and of the UDRP provisions.
Often, Respondents do not file a Response. In such instances, the Respondent’s default does not automatically result in a decision in favor of the Complainant. Rather, the Complainant must nevertheless establish each [Page76:] of the three elements required by paragraph 4(a) of the UDRP. Although a Panel may draw appropriate inferences from a Respondent’s default (e.g. as to factual allegations which appear to be credible), paragraph 4 of the UDRP requires the Complainant to support its assertions with actual evidence in order to succeed in a UDRP proceeding, and this principle also applies in the event of Respondent’s default. There are many cases in which although no Response had been filed, the Panel nonetheless decided in favor of the Respondent because the Complainant has failed to prove the three elements required by paragraph 4(a) of the UDRP.
H. The Substantive Issues under the UDRP
Paragraph 4(a) of the UDRP requires the Complainant to cumulatively prove each of the following three elements in order to obtain a decision that a domain name should be either cancelled or transferred to the Complainant.
1. The disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights.
As a first element, paragraph 4(a)(i) of the UDRP requires the Complainant to show that the disputed domain name is identical or confusingly similar to the trademark or service mark in which the Complainant has rights. The term "trademark or service mark" as used in paragraph 4(a)(i) of the UDRP encompasses both registered and unregistered (in some jurisdictions referred to as "common law") marks.
Due to the global nature of the Internet and of the Domain Name System, it does not matter in which jurisdiction(s) the trademark rights exist. It is sufficient if the Complainant shows that it has rights in one trademark in any jurisdiction which is identical or confusingly similar to the domain name.
While the UDRP makes no specific reference to the priority date of the Complainant’s trademark or service mark, such rights must be in existence at the time the Complaint is filed. A pending trademark application would not by itself be sufficient to establish trademark rights for the purpose of the UDRP.
Also, the goods and/or services for which the mark is registered or used in commerce, the filing date, date of registration, and date of claimed first use, are in principle not relevant to the first element of the test. These factors may however be relevant under the second and third elements of the test. For example, the fact that a domain name may have been registered before a Complainant has acquired trademark rights does not by itself preclude a Complainant’s standing to file a UDRP case, nor a Panel’s finding of identity or confusing similarity under the first element. However, if the domain name has been registered before a Complainant has acquired trademark rights, a Complainant will as a rule not be able to prove the Respondent’s bad faith.
The first element of the UDRP serves essentially as a standing requirement: The existence of the Complainant’s rights in a trademark or service mark is in other words the "entry ticket" to the UDRP proceedings. The test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine whether there is a likelihood of confusion from the perspective of the Internet users. In order to satisfy this test, the relevant trademark would generally need to be [Page77:] recognizable as such within the domain name; as a rule, the addition of generic, descriptive or negative terms is regarded as insufficient to dispel the risk of likelihood of confusion. The confusing similarity test under the UDRP usually involves a visual or aural comparison of the Complainant’s trademark with the domain name. The applicable top-level suffix in the domain name (e.g. ".com") is as a rule disregarded under the confusing similarity test (because it is a technical requirement and thus non-distinctive).
In the early days of the UDRP there was no consensus whether the addition of pejorative terms such as "sucks" to a trademark creates a likelihood of confusion. Meanwhile the consensus view is that domain names containing such pejorative terms are confusingly similar for the purposes of the UDRP.29
2. The Respondent has no rights or legitimate interests with respect to the disputed domain name
As a second element of the test, paragraph 4(a)(ii) of the UDRP requires the Complainant to show that the Respondent has no rights or legitimate interests with respect to the disputed domain name.
According to paragraph 4(c) of the UDRP, any of the following circumstances, in particular but without limitation, demonstrate the domain name holder’s rights or legitimate interests to the domain name for the purposes of paragraph 4(a)(ii) UDRP:
i. Before having received any notice of the dispute, the domain name holder used, or made demonstrable preparations to use, the disputed domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
ii. The domain name holder (as an individual, business, or other organisation) has been commonly known by the domain name, even without having acquired any trademark or service mark rights; or
iii. The domain name holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
While the overall burden of proof rests with the Complainant, Panels have recognised that this could result in the often-impossible task of proving a negative, requiring information that is often primarily within the knowledge of the Respondent. Therefore, Panels have decided that a Complainant is only required to make a prima facie case that the Respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of proof shifts to the Respondent to raise appropriate allegations and submit evidence demonstrating is rights or legitimate interests in the domain name. If the Respondent fails to come forward with such appropriate allegations and evidence (e.g. in cases where the Respondent did not file any Response), a Complainant is generally deemed to have satisfied paragraph 4(a)(ii) of the UDRP. If the Respondent does come forward with some allegations and/or evidence of relevant rights or legitimate interests, the Panel then weighs all the evidence, with the burden of proof always remaining on the Complainant.
An issue which is highly relevant in practice is whether a reseller/distributor of trademarked goods or services shall be deemed to have rights or [Page78:] legitimate interests in a domain name which contains such trademark. The Panelists’ consensus view (as reflected in the leading decision Oki Data Americas, Inc. v ASD, Inc., WIPO Case No.D2001-0903, <okidataparts.com>), is that normally a reseller or distributor can be making a bona fide offering of goods and services and thus have a legitimate interest in the domain name if (i) it actually offers the trademarked goods at issue, (ii) if it uses the site to sell only the trademarked goods in question, and (iii) if the site accurately and prominently discloses the registrant’s relationship (or absence of relationship) with the trademark owner. The Respondent must also not have attempted to "corner the market" by registering numerous domain names that reflect the trademark. Many Panels subscribing to this view have also found that not only authorised but also unauthorised resellers may fall within such principles. Pay-per-click (PPC) websites would not normally fall within such principles where such websites seek to take unfair advantage of the value of the trademark. However, it should be noted that some Panels take the position (while subscribing to the consensus view) that it will generally be very difficult for a Respondent to establish rights or legitimate interests where that Respondent has no relevant trade mark rights and has used a domain name identical to the Complainant’s trademark without the trademark owner’s permission.
A further recurring issue is whether a Respondent automatically has rights or legitimate interests in a domain name if such domain consists of generic or descriptive dictionary words. For example, would a Respondent have a right or legitimate interest in a domain name comprising the word ‘blackberry’ if it argues that it wishes to use it to sell blackberries? The consensus view is that if the Complainant makes a prima facie case that the Respondent has no rights or legitimate interests, and the Respondent fails to show any rights or legitimate interests, then the Respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a dictionary word or phrase. A relevant factor is whether the domain name is used in connection with a purpose relating to its generic or descriptive meaning (in the above example, a Respondent may well have a right to a domain name ‘blackberries’ if it uses it for a genuine site for such fruit but not if the site is aimed at selling computers or smartphones). Normally, in order to find rights or legitimate interests in a domain name based on the generic or dictionary meaning of a word or phrase contained therein, the domain name would need to be genuinely used or at least demonstrably intended for such use in connection with the meaning relied upon by Respondent.30
3. The disputed domain name has been registered and is being used in bad faith
As a third element, paragraph 4(a)(iii) of the UDRP requires the Complainant to show that the disputed domain name has been registered and is being used in bad faith.
According to paragraph 4(b) of the UDRP, the following circumstances, in particular but without limitation, shall be evidence of registration and use of a domain name in bad faith:
i. Circumstances indicating that Respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the [Page79:] owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of the Respondent’s documented out-of-pocket costs directly related to the domain name; or
ii. Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
iii. Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
iv. By using the domain name, Respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of its website or location or of a product or service on its website or location.
The most obvious case of bad faith is where that Respondent has registered the domain name primarily for the purpose of selling it for profit to the trademark owner. This is the classic cybersquatting situation which had prompted the adoption of the UDRP in the first place.
It should be noted that paragraph 4(a)(iii) of the UDRP requires the Complainant to show that the Respondent registered and is using the domain name in bad faith. The problem is that in practice Claimants are often confronted with the situation that the Respondent does not actively use the domain name (i.e. the domain name does not resolve to a website). In such situations, Panels have found since the early days of the UDRP31 that the fact that "passive holding" of the domain name (i.e. the domain name does not resolve to a website, and the Respondent made no active attempt to sell or to contact the trademark holder), does not as such prevent a finding of bad faith. The Panel must examine all the circumstances of the case to determine whether the Respondent is acting in bad faith. Examples of what may be cumulative circumstances of bad faith include the fact that the Complainant’s trademark (which has been registered by Respondent as a domain name) is well-known, the fact that Respondent failed to file a Response to the Complaint, and/or any attempt by the Respondent to conceal its identity.
Despite the double requirement of registration and use in bad faith, Panels may draw inferences about whether the domain name was used in bad faith given the circumstances surrounding registration, and vice versa. Nevertheless, in the author’s view, a finding of bad faith should not be made lightly: considering that the burden of proof is on the Complainant, domain name holders should be presumed to act in good faith, unless the overall circumstances show otherwise.
I. The Panel’s Decision
The only remedies available under the UDRP are either the cancellation of the domain name or its transfer to the Complainant.32 No damages can be awarded under the UDRP. In addition, the Panel’s decision must be in writing and reasoned. If a three-member Panel is involved, the decision can be made by a majority vote, and sometimes a Panelist adds a dissenting opinion. The Panel must decide the case and forward its decision to the [Page80:] DRS Provider for notification to the parties within 14 days of the Panel’s appointment.33 Upon the Panel’s reasoned request, the DRS Provider may extend this deadline by one or two weeks. The DRS Provider must then communicate the decision to the parties and to the relevant Registrar within three days from its receipt from the Panel.34
UDRP decisions are not binding precedents for later Panelists. However, Panels consider it desirable that their decisions are consistent with prior Panel decisions dealing with similar fact situations to ensure predictability, consistency and fairness of the UDRP system.
J. Implementation and Publication of the Panel’s Decision
The Registrar with which the contested domain name is registered at the time the decision is rendered must implement the Panel’s decision ordering the transfer or the cancellation of the domain name at issue.
The Registrar is required to implement the Panel’s decision 10 business days after it receives notification of the decision from the dispute resolution service DRS Provider, except if the Registrar receives information from the domain name registrant (Respondent) in that 10-day period that it is challenging the decision in court (see below).35
Each Registrar establishes its own guidelines concerning the implementation of the transfer or cancellation of a domain name registration pursuant to UDRP decisions.
Upon receipt of the Panel’s decision, the Registrar must within three business days communicate the implementation date of the decision to the parties, the DRS Provider and the ICANN.36 Unless the Panel decides otherwise, the DRS Provider must publish the full text of each decision on a publicly accessible website.37 However, should the Panel find that a Complaint was brought in bad faith as defined in paragraph 15(e) of the UDRP Rules, only the particular portion of the decision shall be published and not the rest of the decision which may be held confidential.38
K. Parallel Court Proceedings
Although the Respondent is obliged to submit to UDRP proceedings initiated against Respondent, it must be stressed that both parties are free to submit their dispute to a national court, either before, during or after the proceedings under the UDRP.39
The Complaint and the Response must identify any other legal proceedings commenced or terminated in connection with or relating to the domain name(s), which are the subject of the Complaint. A party wishing to commence legal proceedings pending an administrative proceeding must promptly notify the Panel and the DRS Provider.40
The Panel has discretion to decide whether to suspend or terminate the UDRP proceedings or to continue and take a decision if the legal proceedings are commenced before or during the administrative proceedings.41
If legal proceedings have been initiated against the Complainant, the Registrar will not implement a Panel’s decision ordering the cancellation or transfer of that domain name. The Registrar will take no further action [Page81:] until receipt of evidence that the dispute between the parties has been resolved, or of the dismissal or withdrawal of the domain name holder’s legal proceedings.42
Paragraph 3 (xii) of the UDRP Rules requires the Complainant to state in the Complaint that Complainant will submit, with respect to any challenges of a UDRP decision canceling or transferring the domain name, to the jurisdiction of the courts at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction) or (b) the domain-name holder’s address.
Courts are not bound by UDRP Panel decisions. Where a domain name subject to a UDRP Panel decision becomes subject to a court proceeding (for example, because a Respondent elects to take the matter to court under paragraph 4(k) of the UDRP); such court case will generally be decided under the applicable national law (and not under the UDRP criteria).
As already mentioned, the UDRP is a dispute resolution mechanism sui generis. Although some of its features are similar to "regular" arbitration, there are significant differences. The differences and similarities will be discussed below.
A. Differences between UDRP and arbitration
1. No arbitration clause under the UDRP
A striking difference to arbitration is that under the UDRP there is no arbitration clause between the Complainant (i.e. the trademark owner) and the Respondent (i.e. the domain name holder). Nor a contractual relationship between the Complainant and the Registrar is required.
The UDRP is based on the principle that in its registration agreement with its Registrar accredited by ICANN, each and every domain name holder must submit to the UDRP administrative proceedings for the event that a third party asserts in a Complaint the three elements of paragraph 4(a) of the UDRP. In other words, the UDRP gives trademark owners the option (instead of, e.g., filing a law suit in court) to file the quick and inexpensive UDRP proceedings if they believe that a domain name is abusive in the sense of paragraph 4(a) of the UDRP, and the holder of that domain must submit to such proceedings.
2. No need to enforce the UDRP decision in court
Whereas arbitration awards need to be enforced in court if the losing party does not comply voluntarily, there is no need to enforce an UDRP decision in court. Rather, the Registrar is under the contractual obligation to ICANN as the accrediting body to implement UDRP decisions when it receives a decision ordering the transfer or cancellation of a domain name. The Registrar will thus directly take the technical steps required to transfer/cancel the domain name.
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3. Neither party is prevented from submitting the dispute to the court
Whereas an arbitration clause generally precludes the parties from submitting the dispute to a state court, the UDRP neither prevents the trademark owner nor the holder of the domain name from submitting the dispute to a court of competent jurisdiction before the UDRP proceedings are commenced or after such proceedings are concluded (paragraph 4(k) of the UDRP).
This means in particular that the trademark owner has the option to proceed under the UDRP or before state courts. Although the trademark owner will usually opt for the UDRP because it is faster, less expensive and involves less procedural and enforcement difficulties than court proceedings, there may be situations where the Complainant’s chances of success may be better in court than under the UDRP proceedings (e.g. if claimant does not have a trademark).
4. No communication between the parties and the Panel
Unlike in arbitration proceedings, even after the file has been transmitted to the Panel, no party nor their attorneys may have any direct communication with the Panel. Rather, all communications shall be made to the case administrator appointed by the DRS Provider who in turn will forward them to the Panel.43
5. No hearings, no witnesses
In UDRP proceedings, there shall as a rule be no hearings and no interrogation of witnesses or experts. Although paragraph 13 of the UDRP Rules of Procedure allows the Panel, as an exceptional matter to hold a hearing, this almost never happens in practice.
6. Courts are not bound by UDRP decisions
A further significant difference is that state courts are not bound by UDRP decisions, whereas arbitral awards are binding on state courts. Further, whereas (limited) possibilities to appeal an arbitral award before courts usually exist under national laws, no appeal possibility exists against UDRP decisions. Rather, each party remains free to submit the dispute to the competent national court, even if the dispute has already been decided by an UDRP Panel.
To this effect, the UDRP expressly provides that if a Panel decides that the domain name registration at issue should be canceled or transferred, the Registrar will wait 10 business days after receiving the Panel’s decision before implementing that decision. The Registrar will then implement the decision unless it has received from the domain name holder during that 10 business day period official documentation (such as a copy of a Complaint, file-stamped by the clerk of the court) that the domain name holder has commenced a lawsuit against the Complainant in a jurisdiction to which the Complainant has submitted under paragraph 3(b)(xiii) of the UDRP Rules (in general, that jurisdiction is either the location of the domain name’s holder principal office or of its address as shown in the ICANN WHOIS database.44 If the Registrar receives such documentation within the 10-business-day period, it will not implement the Administrative Panel’s decision, and it will take no further action, until it receives satisfactory evidence (i) of a resolution between the parties; or (ii) that the lawsuit has [Page83:] been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing the lawsuit or ordering that the domain name holder does not have the right to continue to use that domain name.
7. Time and costs
Last but not least, UDRP proceedings are far less laborious, less expensive and faster than arbitration proceedings. Usually, the fees for UDRP proceedings are around US$1,500 (excluding the costs for own legal representation) and such proceedings are concluded within 60 days from filing of the Complaint.
A further difference is the lack of discretion under the UDRP regarding the allocation of costs and attorneys’ fees: Even if the Complainant wins, the fees charged by the DRS Provider must be borne by the Complainant. No attorneys’ fees may be awarded to the winning party.
B. Similarities between UDRP and arbitration
Despite the above significant differences, UDRP proceedings have some features similar to arbitration proceedings.
1. Administered disputes
UDRP disputes are administered by accredited DRS Providers. Their role is somewhat comparable to the role of institutions administering arbitration proceedings, such as the ICC. For example, the DRS Provider has to properly notify the Complaint to the Respondent, collects the fees and makes payment to the Panel, appoints the Panel (see below), forwards the file to the Panel as soon as the Panel is appointed, scrutinises the Panel’s draft decision and forwards the final decision to the parties and the Registrar.
The DRS Provider administering most of the UDRP proceedings is the WIPO Arbitration and Mediation Center in Geneva, which, in addition to the UDRP proceedings, also administers arbitration proceedings under the WIPO Arbitration, Mediation and Expert Determination Rules.
2. Appointment of the Panelists
Similar to institutions administering arbitration proceedings, each DRS Provider maintains and publishes a publicly available list of Panelists showing their qualifications and is responsible for appointing the Panelists in each UDRP proceeding.
3. Impartiality and independence
Just like in arbitration proceedings, a Panelist in UDRP proceedings shall be impartial and independent from the parties and shall have, before accepting appointment, disclosed to the DRS Provider any circumstances giving rise to justifiable doubt as to the Panelist’s impartiality or independence. If, at any stage during the administrative proceeding, new circumstances arise that could give rise to justifiable doubt as to the impartiality or independence of the Panelist, that Panelist shall promptly disclose such circumstances to the DRS Provider. In such event, the DRS Provider shall have the discretion to appoint a substitute Panelist.45
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The UDRP clearly is a success story: The fact that more than 47,000 UDRP disputes have been resolved by the various DRS Providers since its adoption speaks for itself.46 It is widely accepted that the UDRP solved a strongly felt need for the time- and cost-efficient resolution of trademark infringement situations caused by abusive domain name registrations.
What are the secrets of the UDRP’s success?
UDRP proceedings allow resolving domain name disputes that due to the ubiquity of the Internet would otherwise raise complex issues of international jurisdiction, governing law and enforcement.
UDRP proceedings are extremely fast and inexpensive: The fees of just US$1,500 (excluding the costs for own legal representation) and the fact that such proceedings are usually concluded within 60 days from filing the Complaint are the key of the UDRP’s success.
On the other side, UDRP disputes can be decided so quickly and at such low costs only because the procedure is strongly standardized and streamlined:
One might object that under such restrictions, the UDRP decisions are not more than "rough justice". However, the UDRP is designed to quickly and inexpensively resolve clear-cut cases of bad-faith registration and use of domain names. If there is no clear-cut bad faith, the Complaint should be dismissed. Furthermore, since the UDRP decisions are non-binding on courts, both parties remain free to submit their case to a court. Therefore, the parties’ right to be heard in judicial proceedings where all arguments and evidence may be submitted under the applicable procedural rules is preserved. In any event, the cases where a UDRP decision is later submitted to a state court by a party dissatisfied with the outcome of the UDRP decision are quite rare. Only a very small fraction of all UDRP decisions is later contested in court.47 This shows that the UDRP decisions are generally well accepted, despite the limitations to present one’s case and the exclusion of witness evidence.
The low UDRP fees make these proceedings attractive for trademark owners, but on the other hand such low fees are financially not very attractive for the professionals acting as Panelists. If one further considers the short deadline of just 14 days to study the file (which often exceeds 100 pages) and provide a reasoned decision, it is fair to say that Panelists rather have an idealistic than a financial motivation when serving under the UDRP.
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The beauty of the UDRP is that it provides an alternative dispute mechanism although there is no arbitration clause between the Claimant (trademark owner) and the Respondent (domain name holder). This is achieved by requiring each domain name applicant to accept the UDRP in its registration agreement with the Registrar on the one side and by contractually requiring each Registrar to implement the UDRP in its accreditation contract with ICANN on the other side. This legal construction allows for a "quasi-arbitration" in situations where there is no contractual relationship (and thus no arbitration clause) between Claimant and the potential Respondent.
It would be worthwhile taking the UDRP as a model to devise fast and inexpensive dispute resolution mechanisms for other types of disputes that present standard fact patterns, a high number of similar cases that call for quick and inexpensive resolution (such as, e.g., cyber-bullying, privacy, data protection disputes, etc.).
Perhaps the most relevant field where a system similar to the UDRP could be adopted would be on social media platforms such as Facebook, Instagram and Twitter. With the number of social media users expected to exceed 2.5 billion48 in 2017, said networks are becoming one of the primary channels of communication and interaction. However, they also present new challenges with regard to the users’ privacy and personality rights and the rights of copyright owners.
Although Twitter’s Terms of Use, for example, assure users that they retain rights to all the content they post, copyright infringements are frequent and seeking justice takes years of legal battle at a very high cost. And although the social media platforms in general allow users to request to remove infringing content (so-called ‘take down notices’), if such a request is denied, the user currently has no option but to file a lengthy and costly law suit in court. Perhaps UDRP-like procedure could provide a solution to this situation.
KEYWORDS
IP Address
A unique string of numbers that identifies each computer using the Internet.
DNS
The Domain Name System converts alphabetic names into numeric IP addresses.
ICANN
The Internet Corporation for a
Assigned Names and Numbers is a non-profit organisation responsible for managing domain names.
UDRP
The Uniform Domain-Name Dispute-Resolution Policy.
TLD
Top-level domains such as .com or .de
SLD
Second-level domain, e.g. ‘apple’ in ‘apple.com’
WIPO
World Intellectual Property Organization
Registrar
A company, which provides domain name registrations.
Complainant
The trademark owner who files a UDRP complaint.
Respondent
The registrant of the disputed domain name responding to a UDRP Complaint.
DRS Provider
Dispute resolution service provider under the UDRP
* Partner, TIMES Attorneys, Zurich
1 See www.icann.org.
2 See May 2011 Applicant Guidebook, http://www.icann.org/en/topics/new-gtlds/comments-7-en.htm.
3 See http://www.icann.org/dndr/udrp/policy.htm.
4 See http://www.icann.org/en/dndr/udrp/uniform-rules-24oct99-en.htm.
5 See https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en.
6 See, e.g., https://www.law.berkeley.edu/files/bclt_AnnualReview_Emerging_Final.pdf.
7 See http://www.wipo.int/amc/en/domains/.
8 See http://www.wipo.int/amc/en/domains/rules/supplemental/index.html.
9 See http://www.wipo.int/amc/en/domains/supplemental/eudrp/. The main changes concern the submission per electronic mail, file size and format modalities.
10 See WIPO Case No. D99-0001(14 January 2000) available at http://www.wipo.int/amc/en/domains/decisionsx/list.jsp?prefix=D&year=1999&seq_min=1&seq_max=199.
11 List of ccTLDs serviced by the WIPO Arbitration Center, http://www.wipo.int/amc/en/domains/cctld/.
12 Bettinger Thorsten/Waddel Allegra, Domain Name Law and Practice, second edition, Oxford 2015, p. 1266).
13 Paragraph 1 of the UDRP.
14 Paragraphs 1 and 4 of the UDRP.
15 See https://www.icann.org/resources/pages/approved-with-specs-2013-09-17-en.
16 See paragraph 4(d) of the UDRP. A Complaint submitted to the WIPO Arbitration and Mediation Center must be sent to the following address: domain.disputes@wipo.int. An Online Complaint Filing Form for Complaints under the UDRP is available at http://www.wipo.int/amc/en/domains/filing/udrp/eudrpComplaint.jsp .
17 Paragraph 3 of the WIPO Supplemental Rules.
18 Under the WIPO Supplemental Rules, the description of the grounds upon which the Complaint is made may not exceed 5,000 words (Article 11 of the WIPO Supplemental Rules).
19 Paragraph 3(b) of the UDRP Rules.
20 Paragraph 5(a) and 4(c) of the UDRP Rules.
21 Paragraph 5(c) of the UDRP Rules.
22 See paragraph 6(b) of the UDRP Rules. In accordance with aragraph 6(a) of the UDRP Rules, each DRS Provider must maintain and publish a list of panelists with their qualifications. Currently, the WIPO Arbitration and Mediation Center’s list contains 454 panelists from 56 countries: http://www.wipo.int/amc/en/domains/panel/panelists.html.
23 Paragraph 6(c) of the UDRP Rules.
24 Paragraph 6(e) of the UDRP Rules. Under the Supplemental Rules, a party must submit the names of its three candidates in order of preference and the WIPO Arbitration and Mediation Center must, subject to availability, respect such order (Article 8(a) of the WIPO Supplemental Rules).
25 Paragraph 7 of the UDRP Rules.
26 See http://www.wipo.int/amc/en/domains/fees/index.html.
27 Paragraph 13 of the UDRP Rules.
28 Paragraph 11 of the UDRP Rules.
29 See, e.g., WIPO Case No. D2009-0327 – airfrance-suck.com.
30 See http://www.wipo.int/amc/en/domains/search/overview2.0/#22.
31 This issue had already been addressed and decided in the third WIPO case ever filed, i.e. Telstra Corporation Limited v Nuclear Marshmallows, WIPO Case No. D2000-0003, which still is one of the most often cited UDRP decisions.
32 Paragraph 4(i) of the UDRP.
33 Paragraph 15 of the UDRP Rules.
34 Paragraph 16(a) of the UDRP Rules.
35 Paragraph 4(k) of the UDRP.
36 Paragraph 16(a) of the UDRP Rules.
37 The decisions issued by WIPO Panels are available at http://www.wipo.int/amc/en/domains/decisionsx/index.html.
38 Paragraph 16(b) of the UDRP Rules.
39 Paragraph 4(k) of the UDRP.
40 Paragraph 18(b) of the UDRP Rules.
41 Paragraph 18(a) of the UDRP Rules.
42 Paragraph 4(k) of the UDRP.
43 Paragraph 8 of the UDRP Rules.
44 See Paragraphs 1 and 3(b)(xiii) of the UDRP Rules for more details.
45 Paragraph 7 of the UDRP Rules.
46 Bettinger/Waddel, op. cit., p. 1270.
47 Bettinger/Waddel, op. cit., p. 1333.
48 See https://www.statista.com/statistics/278414/number-of-worldwide-social-network-users/.