The Uniform Domain Name Dispute Resolution Policy (UDRP) represents a fascinating approach to trade mark disputes with domain names, and is a policy which is poised for evolution over the coming years.
Summary of session
This session, put on by the Intellectual Property Constituency (IPC) of the GNSO, served to introduce the IPC to stakeholders in APAC. The session focused on the Uniform Domain Name Dispute Resolution Policy (UDRP), its procedure, and how the policy will evolve in the future.
The UDRP represents a non-judicial (insofar as it operates separately from national law) approach to the issue of cybersquatting, with a focus on being both time and cost-effective. The UDRP was established in 1999 and is primarily administered by the World Intellectual Property Office.
Complaints under the UDRP are mainly made in respect of cybersquatting – basically the use of a domain name which includes the trade mark of the complainant without the complainant’s permission. While complaints of this nature are usually pursued through national courts, due to the international nature of domain names and the desire to encourage alternative dispute resolution, the UDRP was established to arbitrate these disputes.
For a domain name to be deregistered under the UDRP, three elements must be met:
The complainant’s trade mark must be identical or confusingly similar to the domain name; and
The registrant must lack rights or legitimate interests; and
The domain name must be registered and used in bad faith.
After outlining the UDRP and going into each of these elements, the remainder of the session was spent discussing the benefits and negatives of the policy, and the upcoming review of the policy.
Some suggestions for improvement included:
Changing the wording of the third element from ‘registered and used’ to ‘registered or used’.
Adding further remedial measures for repeat or serial offenders.
Adding a process for optional mediation.
Adding an appeals process.
Adding a process to deal with respondents in default.
Broadly, many of the panellists erred away from adding bespoke components to the UDRP, such as mediation or default processes, which would pull the UDRP away from being a general policy which can be altered by the managers of the relevant TLDs. Additionally, while there was a strong showing of support for retaining the status quo of the UDRP, panellists did generally concede that some ‘tightening’ of the rules was required, particularly around ensuing a consistent quality of panellists. Suggestions such as a transparent process for allocating panellists would assist in this regard.
This was a fascinating session which did a fantastic job of outlining the UDRP, and the nuances in taking trade mark law (national law) and applying it to domain names (not bound by national law).
This distinction can be firstly seen in the first element of the UDRP. There, the complainant’s trade mark must be identical or confusingly similar to the relevant domain name – a simple assessment of trade mark infringement, right? Well yes, but this isn’t a universal test of infringement!
Take Australia for example. Here, s 120 of the Trade Marks Act 1995 (Cth) states that infringement occurs where a sign is substantially identical with, or deceptively similar to, a registered trade mark. So, in Australia, the sign doesn’t have to be 100% identical, and the test for similarity isn’t based purely on confusion (well, maybe not in name – s 10 clarifies that ‘deceptively’ similar means likely to deceive or cause confusion). Is this an issue? Probably not – there’s many different tests for infringement out there, with the United Kingdom using an identical or ‘likelihood of confusion’ test (not dissimilar to the UDRP) and the European Union also using an identical or ‘likelihood of confusion’ test.
Now, naturally these are minor differences, and nobody is prejudiced by them. But they do illustrate that the UDRP is an overlay on national trade mark law, and could be seen as an amalgamation of it.
But how else is the UDRP starting to begin to replicate national law? How about with procedure! One of the hot topics during the session was whether parties should be given the right to appeal, how the UDRP should treat respondents in default (where respondents don’t respond to complaints), and whether mediation should be included in the process.
These are all issues that national courts have had down pat for years. The right to appeal? That’s effectively a human right! But the UDRP, and associated processes, aren’t tied to any country, and the UDRP itself wasn’t meant to be prescriptive in matters of procedure.
In the session, I think it was fair to say that most people were hesitant to extend the reach of the UDRP much in this direction. Adding appeals would simply add cost to the process, and in any case, parties can take the dispute to national courts at any point. This particular point, that national courts are always there if parties want it, was frequently raised against the notion that the UDRP should become a bigger ‘system’ as opposed to a policy.
I agree. Broadly, arbitral proceedings (UDRP isn’t strictly an arbitration, but forgive my impreciseness) are meant to be alternative dispute resolution, and not a replacement to national courts. Now, yes, in some dispute’s parties agree to use arbitration in exclusion to court proceedings, but that’s aside from what we’re faced with here in the UDRP.
Much of the focus in the session was about how any review of the UDRP should retain the low-cost nature of the process and retain the approachable nature of the policy. In my view, adding procedural ‘add-ons’ to the UDRP would move away from this, so I’m heartened to see that much of the community feels the same way.