Why has WIPO updated its UDRP jurisprudential overview?
In the simplest terms, trademark-abusive behaviour on the internet continues to evolve and expand, and over time the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center’s Uniform Domain Name Dispute Resolution Policy (UDRP) cases and decisions addressing such trademark abusive behaviour have evolved to keep pace with modern infringement and enforcement strategies.
Since publication of the WIPO Jurisprudential Overview 2.0 in 2011 to now, we have observed a sufficient coalescence of a number of issues that warranted an update to the overview to enhance its status as a contemporary and relevant tool. The number of topics covered by the WIPO Jurisprudential Overview 3.0 now approaches 100.
In this sense, periodic updates to the overview are somewhat of a design feature. Just as the manner in which certain substantive and procedural issues are addressed in panel decisions evolves over time, the way these issues are reflected in tools such as the overview demands corresponding updates.
What are some of the common procedural mistakes being made that have been clarified with the WIPO Jurisprudential Overview 3.0?
UDRP filing parties and their counsel should always marshal sufficient evidence and arguments to support a winning case. Particularly against the background of seemingly limitless cybersquatting opportunities (sometimes described by brand owners as whack-a-mole), while panels are mindful that brands must seek to strike a reasonable balance between efficiency and enforcement costs, it is important that party counsel not take anything for granted. Unlike certain court procedures, the UDRP rules, in principle, foresee a single round of pleadings, making it all the more important to cover the required bases in your complaint or response.
One obvious example is being sure to attach a copy of your trademark registration certificate, beyond any list of representative registrations. There is a growing reluctance of panels to issue procedural orders to obtain such information if it is not included in the pleadings.
Another area covered in detail is the process for complainants submitting a ‘standard settlement agreement’ and obtaining a refund of two-thirds of their WIPO filing fees. WIPO uniquely offers this refund.
Finally, an issue covered in significant detail is consolidation of claims against multiple related respondents. Almost a dozen examples are listed of the types of factors panels have looked at in assessing whether a claim for consolidation is made out.
On many such issues, the new WIPO overview offers step-by-step guidance for parties.
Reverse domain name hijacking has been clarified. Is this appearing in UDRP disputes more often? What do trademark owners need to take away from this update?
Reverse domain name hijacking (RDNH) has increased in relatively modest terms and while the number of such cases per year has risen over the UDRP’s almost 20 years of operation, it still represents a very small fraction of total cases.
It has also been observed that while concerns are sometimes raised about the lack of formal sanction against complainants in RDNH findings, for the entire time the UDRP has existed, the relative cost on trademark owners of policing their marks on the internet to prevent consumer confusion and harm wildly exceeds the cost of a domain name registration. Moreover, at least outside the courts, cybersquatters face no sanctions or disincentive to repeat infringements.
In practical terms, trademark owners should be forthcoming in their pleadings about the nature of their case. Panellists tend to take a dim view of what may appear to be material complainant omissions, for example, negotiations for the purchase of a domain name, that are only brought to light by the respondent.
Trademark owners should also anticipate reasonable potential defences, such as potential fair use, to their claim.
Perhaps most pointedly, trademark owners should be aware of the consensus position of UDRP panels on the issue of bad faith registration. As is stated in Section 3.8.1 of the WIPO Jurisprudential Overview 3.0: “Subject to [limited exceptions], where a respondent registers a domain name before the complainant’s trademark rights accrue, panels will not normally find bad faith on the part of the respondent.”
What was the reasoning behind the clarification of the relationship between the URS and UDRP? Are trademarks owners confusing the two?
This section is offered as practical guidance. Some parties have inquired about the relationship between the Uniform Rapid Suspension (URS) system and UDRP prior to considering whether to file a UDRP case. In a few cases, parties have somewhat mechanically relied on the fact that a URS determination was made in their favour to support a corresponding finding in a UDRP case. Noting the differences in process and criteria between the two mechanisms, panels have squarely rejected this approach, and instead clarified that a UDRP case is to be determined on its own merits.
Would you say that there is now a settled body of case law, practice and procedure behind UDRP? Do you have any predictions about what might come up in the fourth edition?
Although it is important to point out that, strictly-speaking, prior UDRP cases have no formal precedential effect, without question there is a settled body of UDRP case law. Beyond the passage of time, it is this fact that has allowed us to produce the WIPO Jurisprudential Overview 3.0.
In terms of a potential fourth edition, to some extent this may depend on what happens in the Internet Corporation for Assigned Names and Numbers’s (ICANN) review of the UDRP (presently scheduled to commence some time in early 2018). If, as many stakeholders hope, this review does not substantially alter the well-functioning and proven UDRP, then the fourth edition is more likely to represent targeted and relevant evolutions to case jurisprudence.
In this respect, however, brand owners have been indicating that they will seek to change the current requirement of proving both bad faith registration ‘and’ bad faith use to require proving bad faith registration ‘or’ use. Another wish often heard from brand owners is for a loser-pays model. If such foundational changes are made to the UDRP, naturally the scope of changes in a fourth overview would be broader.
Another possible outcome is that the ICANN review would suggest ‘combining’ the URS and the UDRP (on more or less its current substantive terms) such that the UDRP is employed only in defended (and intuitively, more substantively nuanced) cases as an ‘appeals’ layer. The current WIPO Jurisprudential Overview 3.0 would then logically provide the legal foundation for parties and panels to assess such appeals cases.
In any event, only with the passage of some years following any ICANN revision of the UDRP, would a revision to the WIPO Jurisprudential Overview be possible—since it is meant to capture case trends observed across decisions.