You’ve got a friend in UDRP

WIPO’s Brian Beckham reveals how new TLDs are affecting the Arbitration and Mediation Center’s workload

Domain names in new TLDs made up 10.5 percent of the centre’s caseload last year, which was also up overall on 2014. What is the centre having to do to deal with this increase in cases?

The World Intellectual Property Organization (WIPO) Arbitration and Mediation Center’s administration of Uniform Domain Name Dispute Resolution Policy (UDRP) cases is facilitated through a tailor-made case management database. We are always looking at ways to adapt such tools not only to further streamline our operations against increased case filings, but also to achieve a high degree of consistency in our case administration.

On another resource note, we are fortunate to have a highly motivated team of bright young lawyers and dedicated support staff from around the world. In terms of numbers, new TLDs continue to occupy an increasingly significant proportion of case numbers: almost 15 percent of filings so far in 2016.

With new TLDs, are UDRP cases having to retread lots of old ground? What are the benefits of having already established case law? Are any new issues creeping up as a result new TLDs?

While readers will know that UDRP cases do not operate on a strict principle of binding precedent, both filing parties and UDRP panellists alike unquestionably rely on consensus positions articulated in WIPO-created resources such as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and the WIPO Legal Index—both of which cover experiences gained through nearly 35,000 WIPO UDRP cases.

These resources lend themselves to a great degree of consistency in decisions and provide parties with reasonable assurance of the degree of merit to their respective cases.

New TLD cases have largely tracked existing first element jurisprudence in confirming this criterion as a ‘standing’ threshold. In some cases, panels have been exploring whether a particular new TLD itself may affect the second and third element analysis, particularly where parties using the same mark in different classes may legitimately co-exist (for example, and Overall, however, early new TLD cases have not so far presented any groundbreaking or landmark jurisprudential issues.

How effective is the transfer procedure operating at the moment? Are registrars/registries transferring contested domains as quickly and efficiently as they can?

While the WIPO centre does not actively participate in the implementation of UDRP decisions, we note anecdotally that the most registrars have been appropriately implementing UDRP decisions. In some cases, however, new registrars are facing something of a learning curve, and in some rare cases, UDRP case implementation matters are brought to the attention of the Internet Corporation for Assigned Names and Numbers (ICANN).

Filing parties may themselves use ICANN’s complaint form. While not related to new TLDs as such, we have also experienced some growing pains with registrar implementation of party settlement requests pursuant to the UDRP lock rules change in July 2015. We continue to work with parties, registrars, and ICANN on rationalising this still relatively new practice.

What are the key issues being considered in the RPM review and how could UDRP change?

The working group has only recently begun its work. An ICANN workplan has been established that tentatively provides for review of the UDRP sometime in 2018, with other rights protection mechanisms being considered prior to the UDRP (including the Uniform Rapid Suspension). In light of the extended timeline for review, and noting in particular the review of the URS slated to precede any UDRP review, it is somewhat premature to speculate on the key issues and possible changes to the UDRP.

However, as stated in the WIPO centre’s submission to ICANN in November of 2015, “[a]n inventory of early aspirations expressed by brand owners illustrates the complexity of UDRP amendment.”

“These include: ‘loser-pays’ sanction, reduced timelines, lower filing fees (even via ICANN subsidy), injunctive relief, registry decision implementation, bad‑faith presumption for repeat offenders, registrant portfolio disclosure, domain name blacklisting instead of transfer, WhoIs enhancements, addressing infringing content beyond the domain, and revisiting the role of registration authorities.”

In any event, we consider it important that ICANN’s review process does not end up destabilising the proven functioning of this globally-used trademark enforcement mechanism.

Readers may also be interested to learn that as of 4 July 2016, WIPO has been providing a new domain name dispute resolution service for the .fr, .pm, .re, .tf, .wf, and .yt country code TLDs.

An updated procedure managed by registry AFNIC in collaboration with the WIPO centre is now available to resolve .fr (France) and .re (Reunion Island) domain name disputes.

Under the same procedure, the WIPO centre now also offers dispute resolution services in relation to domain names registered under .pm (St Pierre and Miquelon), .tf (French Southern Territories), .wf (Wallis and Futuna Islands) and .yt (Mayotte).

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