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.