Nat Cohen traveled to Geneva to learn more about the current state of UDRP. Here’s what he learned.
Last October, at the suggestion of attorneys John Berryhill and Zak Muscovitch, I flew to Geneva to attend a workshop presented by WIPO entitled WIPO Advanced Workshop on Domain Name Dispute Resolution: Update on Precedent and Practice.
I hoped to gain a better understanding of whether, despite the UDRP’s flaws and the pro-complainant bias built into the procedures, the UDRP retains a core of integrity so that domain owners can have some trust that they will receive a fair hearing when they are brought before a UDRP panel.
I’ve been very interested in the UDRP for nearly 15 years, since it was first introduced. I’ve directly experienced the good and the bad of the UDRP. I won one of the first UDRP decisions dealing with a domain based on trademarked dictionary word –craftwork.com, only then to lose my next UDRP – on crew.com. The crew.com decision was cited as one of the most egregious from the early days of the UDRP as the majority of the panel disregarded trademark law to give the complainant, J. Crew, total commercial rights to a common, everyday dictionary word.
Many UDRP disputes followed. Each time I was required to defend my integrity and my business practices before unseen strangers who would pass judgment on my intentions and on the viability of the business my family depends on for our livelihood.
It is not a comfortable feeling to have one’s fate depend so greatly on others – especially when the judgments they pronounce are so inconsistent and some of them express hostility towards the business of investing in domain names.
My curiosity got the better of me. The workshop offered a chance to learn first-hand the views of those in charge of implementing the UDRP. So off to Geneva I went.
The workshop is intended primarily for panelists and attorneys who are active in the UDRP. I was the only domain investor in attendance. I may have been the only attendee who wasn’t a lawyer.
Here’s what I learned-
1. Even though most of the attendees are attorneys who primarily represent Complainants, I felt welcomed. Some attendees said they were glad that a domain investor attended and were genuinely interested in my perspective. Others treated me as a bit of a curiosity, like an exotic animal in the zoo that they had never expected to encounter.
2. Despite some serious blind spots, WIPO appears to be trying to implement the UDRP with integrity.
WIPO staff said that when the outcome of a UDRP dispute depends on an interpretation that is a subject of disagreement among panelists, WIPO will not assign the dispute to a panelist whose views on the matter are already well known, as that would pre-determine the decision. Instead, they assign a panelist who has not yet staked out a position on the subject to give a fresh look at the matter. They also use three-member panels as an educational tool for less experienced panelists. When the Respondent and Complainant have each selected a very experienced panelist, then WIPO may select a less experienced panelist for the role of Presiding Panelist so that the less experienced panelist can benefit from the experience of his or her co-panelists. While one might assume that the role of Presiding Panelist would be assigned to the most experienced of the panelists, it is often the opposite. This approach helps give WIPO a broad roster of panelists with experience in the issues that arise in complex UDRP disputes.
3. I had not fully appreciated that as a non-profit agency of the UN, WIPO is not as motivated by profit as other UDR providers that are private, for-profit, corporations (e.g. NAF). I previously thought that the biggest threat to the integrity of the UDRP is that under pressure to make a profit from their operations, UDR providers would compete against each other to be the most biased in favor of the complainant, since it is the Complainant who picks the UDR provider. While this remains a serious concern as long as Complainants are solely empowered to select the forum, because WIPO does not appear to be motivated by profit it does not need to be so eager to chase after Complainant’s dollars which may lessen the corrosive effect of forum shopping. (As more UDR providers come online, competition may intensify which is likely to exacerbate the problem of forum shopping.)
That WIPO does not need to chase after profits manifests itself in other ways. My understanding is that WIPO loses money on its domain dispute service. WIPO also encourages parties to settle and has refunded over $5 million in filing fees to Complainants when disputes have settled after the UDRP is filed.
4. Nevertheless, WIPO continues to have serious blind spots that undermine the integrity of its implementation of the UDRP: 1) it does not see the conflict of interest that is created when it permits Panelists to also act as Complainant’s representatives, and 2) while it takes responsibility for determining who is entitled to be accredited as a Panelist, it takes no responsibility for Panelist behavior once they are accredited. There are panelists on WIPO’s roster from the earliest days of the UDRP who are most politely characterized as “rogue” panelists. These “rogue” panelists decide cases according to their personal preferences even when these preferences conflict with the UDR policy and with principles of trademark law. Yet although the only reason that these rogue panelists are able to decide cases is that WIPO or another UDR provider accredited them, WIPO washes its hands of any responsibility for their continued accreditation.
There are, in addition, questions about WIPO’s neutrality in its accreditation of panelists. WIPO has rejected several applications of highly-respected professors and experienced attorneys who are considered even-handedness in their treatment of domain owners, while WIPO then accredits as panelists active trademark attorneys of no special distinction who make a living representing trademark holders.
At the workshop, the head of WIPO’s UDRP program stated that WIPO has never de-accredited a panelist. Yet I learned recently that Dr. Milton Mueller, a well-respected professor who is one of the drafters of the UDRP, after serving as an accredited panelist for several years during the early years of the UDRP was then mysteriously dropped from WIPO’s roster of panelists. Is it a coincidence that Dr. Mueller is the lead author of Rough Justice, an influential paper that is critical of the UDRP, and that he had a reputation for being more willing to deny complaints than many of his fellow panelists? WIPO’s erasing of Dr. Mueller from the list of accredited panelists deserves explanation and is cause for concern.
5. WIPO tries to bring consistency to the implementation of the UDRP. WIPO publishes and maintains the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition“, otherwise known as “WIPO Overview 2.0”.
This overview provides the consensus and majority positions on dozens of questions that arise in decided a UDRP, such as whether there can be bad faith if the domain name was registered before trademark rights were acquired.
The Workshop, which WIPO has been offering for many years, is itself an attempt to bring greater consistency to the implementation of the UDRP. An in-depth review of all aspects of the UDRP was provided by experienced panelists David Bernstein and Tony Willoughby with the aim of encouraging a common interpretation of the UDRP among the panelists. While Bernstein and Willoughby largely agreed, it was also instructive to learn the areas where they disagreed.
6. I was surprised to learn the extent that the panelists are left to their own devices in deciding how to implement and interpret the UDRP.
The UDRP resulted from a lengthy policy development process after extensive discussions and was then ratified by ICANN with input from its many stakeholders. Yet individual panelists are given free rein to interpret the UDRP as they see fit and those interpretations have evolved over time.
Now fifteen years after it was first adopted, is the UDRP being implemented in the way its drafters intended, or is it now primarily a vehicle for the panelists to impose their own views?
ICANN has apparently abdicated any oversight role over the UDRP. The absence of ICANN oversight means there is no authority that can correct problems in the implementation of the UDRP, such as misapplication of the policy, incorrect interpretations, inconsistent decisions, or rogue panelists. WIPO does not view its role as determining the proper interpretation of the UDRP. The panelists must therefore take on, whether willingly or unwillingly, the responsibility to interpret and implement the UDRP.
An interpreter of a text can exert more influence than the author of the text. For similar reasons some view St. Paul as more influential than Jesus.
Panelists are similar to High Priests. The panelists, like High Priests, claim authority as servants of a text, yet, like High Priests, they claim sole authority to determine the meaning of the text. While all panelists cite the language of the UDRP to support their decisions, their decisions are often in conflict. Are the panelists applying the UDRP as written or twisting it to fit their own preferences? We cannot say because the panelists are the ones charged with telling the rest of us what the UDRP means.
7. The evolving and dynamic nature of UDRP interpretation was on display at the WIPO workshop. Despite the professed goal of all involved to implement the UDRP in a consistent manner, the panelists are often experienced professionals with well-considered views who do not easily defer to a viewpoint with which they disagree. Strong differences of opinion persist among panelists, therefore it can be crucially important which panelist is selected to decide a dispute. For instance, Berstein expressed comfort with a “criticism site” operating on a domain that is an exact match of a trademark, while long-time panelist Richard Lyon thought such a use was confusing and illegitimate and that the domain itself should indicate that it is a criticism site, for instance by including “sucks” or “boycott” in combination with the trademark term.
8. Another more subtle difference was in the approach panelists took to perceived deficiencies in the UDRP. Some took the UDRP as written and accepted that it might not be suited to resolve every problematic domain registration. Others were more troubled by not being able to arrive at what they believed to be the correct outcome by following the language of the UDRP. Some panelists admitted at times taking an “end justifies the means” approach in which they first come up with what they think is the correct decision, and then liberally “interpret” (also known as unilaterally rewrite) the UDRP to support their position.
Several panelists expressed particular concern about the situation in which a domain is registered in good faith but then is used to target in bad faith a trademark that arose after the domain was registered. Under the UDRP as written, a domain that is registered in good faith cannot be transferred regardless of how it is later used. There was a sharp division in views towards the “renewed in bad faith” approach championed by Bernstein and certain other panelists, that they claim justifies a transfer in these circumstances. Willoughby, the co-leader of the workshop, and many other panelists disagree with this approach. A benefit of attending the workshop was to hear first hand the various perspectives articulated by the panelists themselves.
As Zak Muscovitch noted in his post about the WIPO Workshop, one of the risks in opening up the UDRP to reform is that many panelists appear to be in favor of changing the requirements in the UDRP for transferring a domain name from “registered AND used bad faith” to “registered OR used in bad faith”. Such a change in the UDRP would clearly permit the transfer of domains that are registered in good faith but then later intentionally put to a bad faith use. But it would be a huge threat to domain investors who have registered generic domains in good faith and then parked them with no intention of targeting a trademark holder, only to have a WIPO panelist find, years later, that a link on a parked page was evidence of ‘bad faith use’, and thus satisfied a condition for transfer of the domain under the UDRP.
9. A concerning aspect of the workshop is that both the Panelists and the Complainant attorneys who attended appear at times to view themselves as being on the same “side,” with troublesome domain registrants on the other side. It is not surprising, as a Panelist and a Complainant attorney is often one and the same person. The majority of the attendees are attorneys who primarily represent complainants. At times, the discussion veered towards a primer on how to use the UDRP to win your case. Some panelists spoke about the clever ways that they managed to find in favor of the complainant even though they could not find solid support for their decision in the UDR Policy itself.
10. I was able to meet with many of the panelists in attendance (including one or two who had ruled against my companies in UDRP disputes). Several conversations started at the workshop continued through email after the workshop ended, and in one case, led to an enjoyable lunch in DC with another attendee, a Complainant’s attorney who lives in the DC area.
11. It was great pleasure to see and spend time with the domain attorneys who attended the workshop – John Berryhill and his wife Mari Jo Keukelaar, Paul Keating and Zak Muscovitch. I could see how attending the workshop benefited their practice, as they could better understand the nuances of how certain panelists interpret different fact situations and which panelists might be more or less favorable under specific circumstances. The workshop also gave them an opportunity to engage the panelists on hot-button topics and provide a fresh perspective that the panelists may not have considered before, especially those panelists who have spent their careers representing trademark holders.
12. Geneva is a charming city. Its old quarter with centuries-old stone buildings and churches is great for walking. It is quiet and there are very few cars.
13. WIPO wins the contest for “best view from a cafeteria.” (see photo below)
I came away from the workshop much better informed yet still uncertain about the prospects for the long-term integrity of the UDRP. The seriousness with which WIPO and the workshop leaders took their responsibility to implement the UDRP is encouraging. Yet it also demonstrated why a system that relies so heavily on active Complainants’ attorneys to play the roles of judge, jury and executioner is not one that can reliably produce a fair outcome for domain registrants.