The letter the World Intellectual Organization (WIPO) sent to ICANN prior to the UDRP Webinar in the beginning of May makes a very good (funny) reading. It is one of these cases when you read something and you can’t help but wonder: are we on the same planet? The major issue with WIPO’s letter is that it is based on the false premise that the UDRP is a fair system. This is inaccurate – and, in any case, we cannot possibly make such a certain assertion unless and until we actually review the UDRP.
The UDRP is 10 years old. It was created back in 1999 and, since then, it has never been amended. This is problematic because any system of adjudication, especially one that is flexible and vulnerable like the UDRP, cannot possibly evolve without making mistakes in the process. For this reason, most evolving systems include checks and balances and provide a solid mechanism that allows the evolution of the system to continue undisrupted. The UDRP does not have these checks and balances. This was the concession we made a decade ago, because, back then, cybersquatting was novel, unfamiliar and dangerous. Cybersquatting now is not something new, it certainly does not sound unfamiliar and the UDRP has managed to address it. But, during this process, the UDRP became a much larger system than anticipated: it became the vehicle for the incremental expansion of trademark law.
So, for a change, let’s start from the premise that the UDRP cannot be a purely fair system and that it requires a careful review; better yet, let’s try to see the WIPO arguments from this point of view.
“The UDRP has been offering an effective solution for trademark owners, domain name registrants, and registration authorities”.
This is only partly true: the UDRP provides an effective solution for trademark owners, it does not provide an effective solution for domain name registrants and, in the larger picture, registration authorities do not really care that much as long as the domain name stays alive and they collect the registration fees.
The benefits for registrants WIPO suggests, are that “the UDRP has provided an accessible framework for established legal norms. Their application benefits from non-exhaustive registrant safe harbors at a substantive level (rights and legitimate interests) […]”. Two issues with this statement. The first one has to do with the ‘established legal norms’, which was never part of the deal. Due to the administrative nature of the UDRP and its lack of checks and balances, the UDRP rules cannot be (and should not be) considered to produce normative authority. The second one is the idea that the UDRP has safe harbors; this is a big mistake, since the UDRP’s paragraph 4c is really a very narrow outline of basic rights a registrant has. Fundamental protections for free speech, fair use and criticism are missing from the UDRP.
“By accommodating evolving norms and practices, the UDRP has proven to be a flexible and fair dispute resolution system”.
Again this is not entirely accurate. The UDRP is flexible – but not fair. I have many issues with this part of the WIPO letter. It again talks about ‘evolving legal norms’, which I consider to be extremely problematic. If we are officially using this terminology, then the need for the review of the UDRP becomes even greater and more relevant. Rules are part of a process where they get challenged and debated before they acquire their normative legal status. This never occurred in the context of the UDRP. And, the letter doesn’t stop there. It asserts that “the UDRP has incrementally developed as a public system of jurisprudence”, yet the UDRP has not undergone nearly the required process. The UDRP is an administrative system that does not even match arbitration archetypes, so how can we consider it as a ‘public system of jurisprudence’?
“With exponential DNS growth around the corner and untested new RPMs in development, this is in any event the wrong time to revise the UDRP”
I think we need to ask ourselves another question: will there ever be a good time to revise the UDRP? The truth is that this is the perfect time to review the UDRP and we should not by any chance make this review contingent upon the new gTLD process. As we proceed to create new mechanisms that procedurally and substantively are based upon the UDRP, we need to make sure that we don’t repeat the same mistakes we did 10 years ago.
The WIPO letter asserts that “the URS is as yet unsettled and presents serious issues in terms of its workability; its procedural and jurisprudential interaction with the UDRP remains largely unaddressed. Even if such issues were satisfactorily resolved, this new RPM will need to settle in practice in a DNS expanded by hundreds of TLDs”. This is not a valid argument. Ten years ago, we went through the same degree of uncertainty and instability with the UDRP. And also, let’s not forget that ICANN is not here to create systems of adjudication, but to ensure that all rights are appropriately addressed. Whether this means having the UDRP or a similar system, it doesn’t matter. There shouldn’t be a long discussion about the nexus between the two systems: the UDRP will be for the URS just another mechanism. This should be simple and WIPO exacerbates an issue that doesn’t exist.
“Institutionally stacked, an ICANN revision process would likely end up overburdening and diluting the UDRP”.
Here are also some interesting inaccuracies.
“If interests under the ICANN umbrella do not share the wide recognition of the UDRP as an overall success and rather believe it warrants revision, it would seem incumbent upon those interests to advance a transparent rationale for their views and articulate a coherent alternative model”. This actually has been done and there happens to be extensive literature on this by Froomkin, Mueller, Geist and myself, amongst others.
And, of course, if you think that the trademark community will not be pushing for more, here is what they would like to see get in the UDRP. – “Of course, from an IP rights holders’ perspective, there are numerous ways in which the UDRP might be amended. It could operate on condensed timelines and default decisions. Its scope could extend beyond trademark rights, and more recent bad-faith scenarios recorded. Calls have been made for damages options and ‘loser pays’ models. The UDRP could also be expanded to address certain forms of intermediary behavior. Other interests are on record with wish-lists that apparently include the UDRP definition of cybersquatting itself.” Expansion, expansion, expansion.
And, here is my favourite: “The anticipated ICANN process does not inspire confidence that it would meet these standards. Even when it comes to trademark policies, IP institutionally appears to occupy only a minor ICANN role. Indeed, the more vocal advocacy observed thus far does not suggest a desire to enhance the UDRP’s effectiveness as a rights protection vehicle. The present state of the URS illustrates the risks of subjecting an RPM to recycled committee processes, open-microphone lobbying and line-item horse-trading.” Here is the funny part of the letter, I mentioned in the beginning: first, trademark issues in the context of ICANN do not occupy a minor role; really? how is it then that we are discussing trademark protection since the creation of ICANN and trademark owners even have the ability to block an entire process? And, more importantly, is WIPO really serious when it suggests that open-microphone lobbying (I personally find an unsuccessful choice of words) is more dangerous or less transparent than the lobbying that is occurring behind closed doors between trademark owners and governments? Really?
“Fundamental questions about the business and DNS beneficiaries of cybersquatting must be addressed before targeting the very mechanism intended to address this practice”.
Because I don't want to repeat myself, I will add one issue in WIPO's to-do list to ICANN:
"[…]ICANN should first fairly address the following issues:
· the relationship between cybersquatting and the activities, revenues and budgets of DNS actors;
· the incidence of UDRP cybersquatting findings in relation to wider trademark abuse in the DNS overall, with filed UDRP cases merely representing the tip of the iceberg; and
· the degree of proportionality between trademark rights enforcement and domain name registration opportunities in the DNS."
... and let's not forget:
· The degree of trademark bullying and the procedural and substantive deficiencies of the UDRP.
There is really one word that can characterize the WIPO letter: F.U.D – fear, uncertainty, denial.
In its August Board Meeting, ICANN indicated its willingness to proceed to a more streamlined process regarding the supplemental rules that are in place by the various UDRP dispute resolution providers. This is great news and, if ICANN approaches this issue with the willingness to monitor the way UDRP providers offer their services, we might actually be in the process of fixing one of the main flaws of the UDRP.
Within the UDRP framework, “Supplemental Rules” refer to the ability of dispute resolution providers to structure certain aspects of the UDRP’s procedural process independently of ICANN and one another and to design procedures that allow a more competitive dispute resolution regime. Historically, ICANN has only insisted that the centres follow the same rules for the resolution of domain name disputes – the Uniform Domain Name Dispute Resolution Policy and especially its paragraph 4 – as well as some default guidelines that deal with the general structure of the system, e.g. composition of panels, deadlines, language of the proceedings, etc. At the outset, this provided UDRP centres with a certain degree of freedom and flexibility and was intended to provide incentives for both parties, flourishing competition, whilst allowing UDRP providers to distinguish themselves from one another.
However, a lack of proper monitoring on behalf of ICANN combined with the business and financial aspirations of these centres has resulted in centres putting in place and enforcing supplemental rules that have contributed greatly to forum shopping, aiming to please only one of the parties to the detriment of procedural justice.
In my book, “The Current State of Domain Name Regulation: domain names as second-class citizens in a mark-dominated world”, I have argued that the way Supplemental Rules have been integrated within the UDRP system have resulted in a great amount of inconsistency, especially when the UDRP model is meant to be uniform. This is highly problematic as UDRP centres use their supplemental rules to provide false incentives and take advantage of the limited rights the UDRP affords the Respondent. For example, various centers have realized the tight deadlines respondents have to answer to the complaint and have addressed it in a way that places them in an even more obvious disadvantage. The NAF Supplemental Rules, for instance, allow respondents to submit their response after the required twenty days deadline, only if the latter request so in writing and pay a $100 fee, within, however, the twenty day deadline. (Extension for Filing a Response: (a) Paragraph 5(d) of the Rules provides that the Respondent may request additional time to submit a Response, or may be given additional time if the parties stipulate to an extension and NAF approves. Any request by the Respondent for an extension or any joint request by the parties for an extension shall: […](v) be accompanied by an extension fee of $100.)
On another level, this inconsistency in the Supplemental Rules of UDRP providers has an impact on how centers interpret issues concerning the impartiality and independence of their panelists. Each of the centers is allowed to produce its own rules and set its own individual parameters of panelist independence. For instance, WIPO has not produced any substantive rules for party challenges; NAF accepts challenges only after the panelist has been appointed and only within a small time frame; The Asian Domain Name Dispute Resolution Centre allows challenges any time during the procedure but before the rendering of the decision, whilst the newly appointed Czech Arbitration Court does not provide to the parties any guidelines concerning the challenge of panels.
These are just two manifestations of the detrimental effect Supplemental Rules have upon the UDRP. We need to accept that affording the UDRP providers such amount of freedom has produced problematic results and has contributed to the general procedural unfairness the UDRP is currently facing. So, it is indeed a welcoming step to see that the ICANN Board is willing to discuss the role of Supplemental Rules in the UDRP and to see the ICANN staff wanting to impose tighter controls over these rules and their presence in the UDRP.
I can only hope that this is the first step towards slowing down the freedom of the UDRP providers, addressing the issues of inconsistency, eliminating forum shopping and opening the road for a substantive review of the UDRP.
I just happened to come across an article that shows what appears to be another hit in the process that ICANN has placed much of its future on - that is the Uniform Domain Name Dispute Resolution System (UDRP) of course. It all started when attorney Zak Muscovitch released a study concerning the way one of ICANN's accredited UDRP providers - the National Arbitration Forum - is distributing its case load to its various employees. His results show that some of the panelists receive a substantial amount of cases with the majority of these cases being decided in favor of the complaining party (trademark owner). This prompted DomainNameWire to conduct its own study of WIPO panelists and its conclusions were that many of the top 10 panelists have recorded the lowest complainant win.
What does this all mean? Well it means that we are exactly in the same place we were when professor Geist released his study almost 10 years ago. He introduced us to the possibility of forum shopping the same way he introduced us to the fact that we really have no knowledge as to how the centers appoint their UDRP panelists. And, when asked, we always seem to receive abstract and non-satisfying answers. What a great inconsistency for a system that is supposed to be uniform.
So, these results are not really something new and they should not come as a surprise to anyone. Even though it is really the responsibility of each one of the centers to appoint its panels equitably and to the best interests of both parties, the fact that ICANN has left the UDRP on its own and without proper review or control has resulted in a system that demonstrates signs of disintegration (look WIPO's attempt to sidetrack ICANN's Uniform Rapid Suspension System though the initiation of a 'fast-track' process). Needless to say that, at this point, it really makes no difference which center is more bias - the fact remains that the UDRP is disproportionally biased in favor of trademark interests whether this is done through forum shopping or through the intentional appointment of certain panelists.
However, the effect of this study is much more profound. ICANN is currently in the process of using the UDRP as the prototype to suggest the creation of two separate policies - the Uniform Rapid Suspension System URS) and the Post-Delegation Dispute Resolution Procedure (PDDRP). Both processes are conceived, structured and drafted with the whole skeleton of the UDRP in mind - everything, its rules, its procedures, its substance, everything - and have both been justified on the success of the UDRP. Now, what does that tell us about the fairness and justice of these systems?
It actually tells us a lot. It tells us that both systems are about to fail, are about to become biased and are about to create a highly competitive market for the ICANN-accredited centers that will seek to please their trademark customers. Now, if that is done through forum shopping or intentional panel appointments, again it does not really make that much difference. Complainants will still win and both systems will stagnate just like the UDRP.
The UDRP needs an immediate review, especially if it is to be used as the basis for other systems. The fact that the UDRP is so bankable explains why so far none of its stakeholders has initiated any process to review its body both substantially and procedurally; UDRP decisions bring a lot of money and reputation to both the centers and many of their panelists. This is the price of not having in place proper checks and balances that will ensure the proper application of justice.
Views are my own and my own only!