A look at the qualifications of UDRP arbitration panelists.
[Editor’s note: a few weeks ago a couple readers, who were distraught by a recent domain dispute that seemed to be decided unfairly, asked what it takes to be a UDRP panelist who decides domain disputes. I asked Enrico Schaefer, an attorney with Traverse Legal, PLC, to write an article about the UDRP arbitration qualification process.]
Domain name disputes are important matters for both trademark holders and domainers. Trademark holders want to protect their marks in the on-line world. Domainers are sometimes forced to respond to allegations of cybersquatting, even when they register high-value generic or descriptive domain names. The Uniform Dispute Resolution Policy (UDRP) was designed to resolve disputes between trademark holders and domain registrants. UDRP disputes are submitted to arbitration before the National Arbitration Forum (NAF) or World Intellectual Property Organization (WIPO) who assign one or more expert panelists to decide whether the domain will be transferred from the domain registrant to the complaining trademark holder.
Clients often ask us, “How do I know that I will get a fair decision in a NAF or WIPO arbitration proceeding?” Since the decision of a NAF or WIPO panel can often be the final determination of one’s rights in a domain name, this question is an important one. UDRP proceedings, like all other arbitration proceedings, are creatures of contract law. Arbitration proceedings allow parties to specify, via private contractual relationships, that they wish to have their disputes decided outside of the judicial system. ICANN requires all registrars of generic top-level domains (gTLDs) to adopt the UDRP, and some country code TLDs have adopted the UDRP as well (e.g. .tv, .ws, and .nu). Every person who registers a gTLD domain agrees to be bound to the UDRP as part of the registration agreement and submit to arbitration. Other domain extensions have similar arbitration requirements and proceedings designed to resolve these matters without having to go to court. Therefore, all registrants are subject to the private UDRP contract through their registration agreements with their registrar. Since arbitration agreements are private contracts, in theory, the UDRP could call for domain name disputes to be decided by a panel of three monkeys. The UDRP sets out the qualifications for arbitration providers, which in turn set out the qualifications for the arbitrators themselves.
ICANN examines potential arbitration providers, such as WIPO and NAF, to determine whether they can handle domain dispute arbitration proceedings in a fair, efficient, and orderly manner. ICANN approved arbitration providers are required to maintain a list of at least 20 neutrals, all of which must be trained in the UDRP policy, domain name dispute law, and the technology applicable to domain names. ICANN favors providers that provide neutrals from a wide range of countries, and the provider’s supplemental rules and internal procedures must demonstrate that the provider understands the UDRP and its rules.
Both WIPO and NAF have similar requirements for arbitrator qualifications. WIPO requires arbitrators to have both a legal background and considerable experience in the field of intellectual property. WIPO arbitrators are required to give their academic qualifications and a history of their legal experience, as well as a list of their spoken languages. Most high-level positions with WIPO require a minimum of 12 years of experience. NAF arbitrators are required to be attorneys and must have substantial experience litigating trademark disputes. NAF also likely requires several years of experience, but their internal hiring requirements are not disclosed to the public. There are some people who complain that arbitrators tend to be trademark attorneys who primarily enforce trademarks for large companies. They complain that this creates a bias in favor of trademark holders. While it is certainly true that many of the arbitrators on the panel lists at both WIPO and NAF who represent large companies in trademark matters, it is also true that these attorneys defend as much trademark litigation as they prosecute. Corporations sue each other in court far more often then they bring UDRP arbitrations against domainers. These panelists are trained to prosecute and defend trademark litigation. If a bias exists in favor of trademark holders, it is under the language of the UDRP and trademark statutes.
Like in any court of law, there is variability in the bias and experience of WIPO and NAF panelists. ICANN and the arbitration providers have reasonable measures in place to make sure that arbitrators are well qualified.
Enrico Shaefer is an attorney with Traverse Legal, a law firm that specializes in internet law and domain name disputes.