UDRP Review a Risk?
February 9, 2016
As you likely know, in early 2014, new gTLD domains started going live and becoming available for registration.
As part of the New gTLD Program, the Internet Corporation for Assigned Names and Numbers (ICANN) set up a process to review the various rights protection mechanisms (RPMs) by which brand owners assert their trademarks against cybersquatted and other infringing domain names (perhaps the most well-known of the new processes set up for new gTLDs is the Uniform Rapid Suspension “URS” procedure). ICANN directed that this review take place 18 months after the first new gTLDs went online.
Public Comments Advise Against a UDRP Review
In October of last year, ICANN published a preliminary report on this review process for public comment. A number of different stakeholders made submissions, including the International Trademark Association (INTA) and the World Intellectual Property Organization (WIPO). While these stakeholders generally supported a review of the newly-created RPMs, such as the infrequently used URS and the as-yet-to-be used Post-Delegation Dispute Resolution Procedure (PDDRP), they strongly advised against a UDRP review.
Why the resistance? Haven’t brand owners complained, for years, that there are flaws in the UDRP that could be improved? Wouldn’t such companies want to see the UDRP strengthened to make cybersquatting less attractive by adding, for example, a loser pays system? Or changing section 4(a)(iii)’s requirement so that the accused domain needed to be registered OR be used in bad faith (rather than “and” be used in bad faith)?
Simply put, the overarching concern among commenters is that a UDRP review could result in its being made weaker rather than more favorable to brand owners.
What’s at Stake with a UDRP Review?
Commonly Accepted Principles
The UDRP, which has been in use for over 15 years now, was originally created as a less expensive and faster alternative to costly litigation. It deals solely with those issues that are critical to determining whether a contested domain violates the rights of a trademark owner and eliminates all extraneous questions such as the award of monetary damages and costs to prevailing complainants.
In this very narrow and focused role, the UDRP has resulted in over 50,000 decisions by hundreds of panelists and involving parties in some 180 countries. This has created an extensive set of commonly accepted principles (though technically not “precedents”), many of which have been collected in such well-regarded guides as the WIPO Overview 2.0. Both the INTA and the WIPO take the position that this very solid and stable foundation, upon which both complainants and respondents have come to rely, would be put at risk were the UDRP to be subject to modification in any substantive way.
Safeguards for Respondents
The public comment submissions point out that a number of safeguards benefitting respondents are incorporated into UDRP practice such as: procedures affecting the language of each case, the availability of deadline extensions, and the requirement of mutual jurisdiction selection. Further, in many cases panels have issued decisions adverse to trademark owners even in the face of a default by the respondent. The commenters conclude that there is no compelling reason to open the UDRP for review, which may put these safeguards, and the fairness of the policy, at risk.
Personally, I expect that if the UDRP were to be opened for possible revision and was thereby substantially weakened, it might no longer serve its intended purpose. This could lead more trademark owners to resort to court action, resulting in more cost for all involved. In turn, this would motivate complainants to try and recoup some of their costs and seek monetary damage awards against cybersquatters.
The bottom line is that I agree with the INTA and WIPO position as it aims to protect the stability of the policy. The UDRP has worked efficiently for many years and has shown its flexibility in handling new gTLD disputes. The significant dangers of opening the policy to modification outweigh the few and relatively minor benefits that might be realized by such a process. Of course, there’s no telling whether the various forces at play within the ICANN community will ultimately line up behind this review process but I can predict, with a high degree of certainty, that it will be a long time before this is fully known.