Here’s what domain investors would like to see happen during the review of the UDRP.
For the first time in the 18 years since it was introduced, the Uniform Dispute Resolution Policy (UDRP) regarding cybersquatting is being reviewed.
This is an issue for domain name investors to watch. Expect certain interests to push for new rules that make it easier to take away domain names even when it’s not warranted.
In the domain investor’s corner is Internet Commerce Association (ICA), a trade group representing domainer interests. Yesterday, the ICA issued its platform (pdf) for changes it believes should be made.
Notably, none of the changes have to do with the language of the policy itself. It is generally agreed that the requirements for forcing a domain owner to transfer a domain are fair. It’s how they are implemented that is the problem.
The platform includes five sections: accountability, transparency, uniformity, predictability and balance. Here are the major proposals from each section, along with some commentary.
Accountability
- Dispute Resolution Providers (DRP) should be under contract, not just accredited by ICANN. (Many people are surprised to learn that groups like National Arbitration Forum and World Intellectual Property Organization do not have contractual relationships with ICANN.)
- Compliance Framework for oversight, standards and monitoring of DRPs.
- Procedure to make complaints against DRPs.
- Regular review of UDRP. (Once every 18 years probably isn’t enough.)
Transparency
- Require all DRPs to disclose their ownership, affiliations and management.
- Establish standards and procedures for panelist accreditations and de-accreditations. (How panelists are accredited (or not) is a bit of a mystery.)
- Require DRPs to follow an established and fair procedure for appointing panelists to UDRP cases. (This is a big one for me. DRPs can assign whomever they want to be a panelist on a given case. They can assign the same person to be a panelist on all cases if they want. There are reasons that there’s not an even split between panelists and cases. For example, a panelist isn’t available or the language of the dispute. But DRPs should be required to follow a round-robin assignment queue. It only skips in the case of language, in which a round robin with panelists that speak the language is used. If DRPs are concerned that a panelist isn’t capable of handling a certain type of case then they should be deaccredited, not skipped.)
- Require transparent UDRP disclosure. (The only way to make sure DRPs are doing their job is to be able to monitor them effectively. Right now they disclose data however they want.)
Uniformity
- Establish a uniform set of supplementary rules.
- Prohibit inconsistent supplementary rules. (This would obviously be solved by establishing a uniform set.)
- Revise rules to clarify that complainants and respondents can nominate panelists from any DRP roster. Apparently, right now it’s not clear if respondents can.
Predictability
- Require all DRPs and panelists to subscribe to a single consensus view to avoid rogue interpretations. Right now only WIPO publishes a consensus view and panelists don’t have to follow it.
Balance
- If a DRP allows staggered fees in which the complainant doesn’t have to make the final payment until a response is received, and if the complainant fails to make the final payment, then a finding of bad faith should be made against the complainant and it should be barred from filing another UDRP to any DRP. (I didn’t know this was an option at some DRPs. Apparently, complainants will file a UDRP and hope the domain owner doesn’t respond. If the owner does respond, they drop the case by failing to make the second payment. At that point, the domain owner already went through the trouble of responding.)
- Additional unsolicited submissions should be prohibited. If a complainant wants to make an additional submission under exceptional circumstances then it should explain the circumstance to the panel and not submit the additional information until it gets approval from the panel. (This makes sense…even when a panel says an additional submission was not allowed, they have already read it and it might prejudice them.)
- Require DRPs to accredit domain name lawyers in addition to trademark lawyers. (Honestly, I’d prefer a rule that says anyone who works at a law firm that represents parties in UDRPs should be prohibited from serving as a panelist.)
Additional thoughts
I have two other ideas that should be considered.
- Include a checkbox on the complainant’s form that says “I certify that I am claiming trademark rights that predate the domain registrant’s ownership of the domain name.” This could eliminate a lot of RDNH filings.
- Right now the panel can only deny the claim or accept it, which results in the transfer (or sometimes cancellation) of the domain. Perhaps there’s a middle road that could resolve cases, such as “Don’t show this type of ad on this domain anymore.”
John says
I would like it if someone,anyone ( Andrew ?) would set up a database to collate all information on UDRP decisions that are set aside by the COURT JUDGEMENTS following the UDRP decisions. If only to embarrass the biased Panelists who made the UDRP decisions in first place but also to set the records straight.
I also saw that a certain UK law firm has been involved in several UDRP’s and that they were “economical with the truth” . They should be reported to the SRA in UK and then action will be taken against them for such dishonorable conduct. They are doing something similar were a UK law firm involved in a case in USA was deemed by US Judge to have misled the Court. SRA is now taking actions against them. I hope anyone on here who knows of such recent case can report it with evidence.
Acro says
Most importantly, these changes should have no retroactive enforcement for current active registrations. Otherwise, I foresee an increase in lawsuits filed by Respondents against predatory Complainants that were handed the domains via a UDRP.
John says
Spot on. I have taken 2 Court cases and won 2.
I definitely will take any UDRP to Court no matter what, and do not take any S*** from the Complainant think they can walk over me.
John says
I would also like to see someone target DomainTools for all the information that they provide to Complainants .They will have to watch carefully when the new EU legislation comes in to force !!
Andrew Allemann says
Which cases?
John says
Essque.com was most recent (2008) I lost at first level but won at appeal.
The other I am bound by confidentiality but was long time (years) ago and under table compromise agreement.
C.S. Watch says
Your additional revisions are in line with the UDRP mandate—address targeting to unburden the courts. Your clause, ‘I certify that I am claiming trademark rights which predate the domain registrant’s ownership of the domain name,’ should be right at the signature line of a complaint. It would protect the DRPs as well as the parties. The complainants getting the 100K+ handed down in federal court are understandably turning on the DRPs, squealing: ‘You sell to me, why didn’t you tell to me?’
(Complainants would have to be forewarned that if the owner purchased the domain, and the original owner predated the mark, the 100K+ for hijacking is still looming.)
Your ‘middle road’ infringement option is also an overdue update that should have shown up at the advent of PPC and registrar parking pages. The email loop is in place from DRPs to registrars. DRPs could have a ‘Cease & Desist’ form online. Complainants fill in their TM registration data (or website for common law rights), their field of trade, and the offending website URL. This routes from the DRP to the registrar, cc’ing to the domain contact email. The ‘C&D plus 30 days’ would be the required first step in filing a complaint. If a domain registrant complies within the 30 days, for instance, is that mark holder as likely to launch a UDRP dispute?
Complaints would be expected to contain two screencaptures, ‘Registrant’s site before, and X days after, the C&D date.’ Maybe $25 for mark holders to submit a C&D, which for the DRP could be a cost-free email autoforward. (Requiring that the C&D issue with concurrent postal notice would be higher ethical ground.) The UDRP sidesteps due process to strip huge assets, and trademark disputes are not in the purview, so it is critical that the UDRP not be used as a tool in a snatch-n-grab.
The UDRP hemorrhages credibility at these above weak points: feigned ignorance and ambush thievery. What counterargument defeats such easy fixes?
Nick says
Do you think the changes made will be any of what ICA wants? What do the lobbyist of the corporations that abuse it want?
Andrew Allemann says
The danger is that trademark groups will push for changes to the UDRP itself, especially the third prong. That prong requires the complainant to show that you registered AND used the domain in bad faith.
Some people would like to see that changed to registered OR used the domain in bad faith. So if you registered somethingweird.com in 1995 and a company comes along today with that name, and the parked page ads start reflecting what Something Weird is doing, you’d risk losing the domain.
Anon says
So, where’s the ask that losing Complainants pay the winning Respondent’s DRP and attorney’s fees for Respondent having to have defended its own property out of the blue?
Rod Tv says
Good Point