Beware the UDRP

The dubious origins of the UDRP - the Uniform Domain Name Dispute Resolution Policy - are already well known: John Postel begat ICANN (posthumously, via his lawyers, Jones Day Reavis and Pogue), ICANN begat GAC (the Government Advisory Committee, with its heavy WIPO presence) and GAC (again by way of WIPO and Jones Day Reavis and Pogue) begat the UDRP. An unholy mess indeed, and due credit must go to Ted Byfield in his sometime guise as the Roving Reporter (writing in Tasty Bits From The Technology Front) for figuring it all out.

WIPO was brought into the DNS governance melee by the US Government at the same time that it set up ICANN to administer Internet names and numbers, over fears that consumers were becoming confused or misled by names of trademarks (or names similar to trademarks) within names of Web sites unrelated to and unauthorized by the trademark holder. As a UN organization established for the benefit of (and largely paid by) intellectual property interests, it is of little surprise that the process WIPO responded with - the UDRP - has been criticised by many as grossly insensitive to the needs of individual domain-name holders and biased in favour of trademark owners.

The Policy, approved in October last year by the Internet Corporation for Assigned Names and Numbers (ICANN), provides for out of court arbitration if a domain name 'dispute' arises. It creates a form of mandatory arbitration which constitutes a substantial change to the way domain name disputes were previously treated, making it easier, in particular, for trademark owners to claim domain-names held by other parties - particularly so-called 'cyber-squatters'. Prior to the UDRP it was a Wild West scenario in the land of domain legislation. Network Solutions, Inc. (NSI), the hitherto sole domain-name registrar, had maintained a laissez-faire, 'hear no evil, see no evil' approach to domain disputes, refusing to act unless a party that objected to a registered domain could produce a certified trademark identical to another party's name. The UDRP changed all that by allowing a trademark owner, or anyone with 'common law' rights to a trademark, to file an administrative complaint in the case that a domain-name is held to satisfy all (or some, depending on who you believe) of the following conditions:

	1) The domain name is identical or 'confusingly similar' to a trademark or service mark in which the complainant has rights; and 2) The domain-name registrant (or 'respondent' in UDRP-speak) is held to have 'no rights or legitimate interests' in the domain name; and 3) The domain name was registered 'in bad faith'.

The UDRP is administered by accredited dispute resolution service providers (called 'providers' for short), of which there are currently four: the World Intellectual Property Organisation itself, the National Arbitration Forum (NAF - duly lampooned by Mr. Byfield in previous editions of Telepolis), eResolution, and CPR Institute for Dispute Resolution. Each provider follows the Rules for Uniform Domain Name Dispute Resolution Policy and their own supplemental rules, available from the provider in question.

The UDRP allows individuals and corporations who believe that they can prove the criteria above to take their complaints - as paying clients - to the provider of their choice. But whereas most arbitration systems allow for the plaintiff and defendant in a case to select an arbiter each, and one between them, the UDRP in its wisdom allows the complainant to elect to have just one arbiter look at the case. This, of course, places the providers in a less than disinterested position: the most popular (and therefore fiscally fittest) arbitration provider is not going to be the fairest, but the one which provides the best results for the client - the one, that is, which proves most likely to get the domains their clients want. Not at an auspicious set up you might think: wouldn't that lead to providers competing with each other to successfully take domain names for their clients? Well, in short, yes it would.

A look at the results

ICANN now publishes regular league tables of decisions from the UDRP providers which (and you have to believe your trusty correspondent on this one: it's from industry sources) lawyers and intellectual property consultants are now actively using to advise their clients on where to go to get the domain names they want. Let's look at a few of the figures to see which of the providers is giving the best bang for the buck...

Starting with the big boys, we see that WIPO has dealt with by far the most rulings so far. Of 1162 cases filed with them to date, 492 have reached a decision and 150 cases (23%) have been withdrawn. Of those decided upon, 6 (1%) have been cancelled and 388 (61%) have resulted in positive decisions and transfers of the domain to the client, whereas only 98 (15%) were 'complaints denied', or decided in favour of the original domain holder.(Figures correct as of end of August 2000: see for the latest statistics from WIPO)

Of the 535 filings received to date by the National Arbitration Forum, 113 are pending. Of those which have been decided, 273 (71%) have been so in favour of the complainant, whilst only 71 (18%) have been found in favour of the respondent. Split decisions have occurred in only 2 instances, and cases that have been suspended, withdrawn or dismissed account for only 10%. Of cases decided in favour of the complainant by NAF, forum panelists have issued orders for 264 transfers (96% of the total) and 9 cancellations (3%). 'Complainants almost always receive the relief they request if they prevail,' says a NAF representative.

eResolution has looked at 170 cases so far, of which 10% have been suspended, withdrawn or dismissed, and of which 34 are pending. Of the remainder, 55% have resulted in a positive result for the complainant, whilst 45% have produced a positive result for the respondent. There have also been 2 split decisions, and out of 170 cases, 45 transfers have been made for complainants, with 1 domain being suspended.

CPR is currently the most difficult provider to assess, given that it has taken on only 5 cases so far, of which 4 are pending. The only case it has decided to date has, however, been given in favour of the complainant.

The wary reader will draw their own conclusions from these figures, but they seem to suggest at the very least that those taking a dispute to NAF or WIPO stand a 65-70% chance of getting the domain they want, provided they pay their fees. Quake in fear, therefore, if you hold a domain and are approached to submit a defense as a 'respondent' by either of these groups - your name could well be about to wriggle out of your grasp. It is interesting the see that eResolution, the other major provider, is producing a much less favourable success rate for claimants. The reason for this seems to lie in their strict interpretation of ICANN guidelines. 'We have found that many trademark holders don't try to prove each requirement stated in section 4a of the ICANN Policy,' says Emmanuelle Létourneau, Case Administrator at eResolution:

	'Merely having a trademark is not sufficient under the UDRP process: the Complainant must prove all three of the requirements, not just one or two.'

NAF and WIPO don't seem to be taking such a tough line on the guidelines, though: a NAF representative suggests that 'a complainant without a registered mark can still prevail if s/he has common law rights in a mark. There are many UDRP decisions enforcing "common law" rights.'

If, as these comments seem to suggest, providers are indeed at odds in their interpretation of ICANN's guidelines, there may be no end of latitude for them to make pro-claimant decisions on any number of counts. What counts as a 'confusingly similar' domain is not yet clearly defined, for example, leaving domain owners with the possibility of having their domain name taken from them if there exists even a slight 'confusion' between a site they operate and an extant trademark. Does this, many are asking, cover parodic sites or sites which lampoon known marks? Perhaps not, but the notion that a paid and partial UDRP provider with elastic interpretations of guidelines which in themselves have a dubious legitimacy should have the right to decide on such a matter is disturbing, to say the very least.

In almost 2500 proceedings to date under the UDRP, 948 names have been transferred to those bringing cases, whereas only 241 have resulted in a successful case for the respondent, and just 44 in a split decision. But given that many in the Internet community still doubt the legitimacy of ICANN and WIPO and their policies, and that the last ICANN meeting in Yokohama, Japan was dogged by claims of the interests of big business being put first over the user, a decision making procedure - in the form of the UDRP - which seems to operate so powerfully in favour of corporate interests may not come as a huge surprise to Telepolis readers. US E-commerce, still pumped on VC, is ready to pay to stake out its intellectual property online - and what ICANN and WIPO have offered, by way of the UDRP, seems to be proving itself the perfect means to get the job done.