Steve Levy ⬥ 30 October
We write about trademark enforcement and domain disputes, but we rarely discuss how these policies – which allow for the resolution of disputes over domain names to take place outside of a court room – came to be. And it’s an important topic, since having a single, agreed-upon process for recourse was a milestone in domain name enforcement.
Well, here it is – the history of the Uniform Dispute-Resolution Procedure (UDRP) in a nutshell.
It all began in the late nineties, when the U.S. Government – having acknowledged and defined what it dubbed ‘The Trademark Dilemma’ – asked the World Intellectual Property Organization (WIPO) to study domain name and trademark issues. In a Statement of Policy released by the National Telecommunications and Information Administration (NTIA), the USG explained the significance of trademark protection to consumers, trademark holders, and the Internet community as a whole:
“When a trademark is used as a domain name without the trademark owner’s consent, consumers may be misled about the source of the product or service offered on the Internet, and trademark owners may not be able to protect their rights without very expensive litigation. For cyberspace to function as an effective commercial market, businesses must have confidence that their trademarks can be protected. On the other hand, management of the Internet must respond to the needs of the Internet community as a whole, and not trademark owners exclusively.”
In April of 1999, WIPO drafted and delivered the requested report to the newly-created Internet Corporation for Assigned Names and Numbers (ICANN), the non-profit organization in charge of managing Internet domain names. The report laid out the Uniform Dispute-Resolution Procedure (UDRP) in Chapter 3, and by the fall of 1999, ICANN had approved the implementation of the URDP and registrars agreed to abide by the procedures. By the end of the same year, WIPO and the National Arbirtration Forum (NAF) became the first approved dispute-resolution providers.
Almost 15 years later, WIPO and the NAF are still my preferred UDRP dispute-resolution providers. Expert panelists decide on the complaints, and the process is far less expensive and time-consuming than litigation. That doesn’t mean that complainants, respondents, and their counsel should assume that this form of dispute resolution is simply an administrative exercise. Complainants must submit sufficient evidence in support of three clearly defined elements designed to ensure that freedom of speech and other rights are upheld and protected, too. The elements, outlined in the beginning of each decision written by UDRP panelist(s), are as follows:
- the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
- Respondent has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
While disputes are reviewed by expert panelists – specialists well versed in the areas of domain names and trademarks – it’s important to note that the UDRP is not designed to resolve complex cases involving issues better suited to the courts – only “predatory and parasitical practices” such as “deliberate, bad faith registration as domain names of well-known and other trademarks” (WIPO Final Report, Par. 23 (1999)). For a wealth of examples and analyses of the types of cases that the UDRP has handled, please follow this blog for a fresh, new case review each week.