the UDRP

This page looks at the Uniform Domain Name Dispute Resolution Process (UDRP), an ICANN mechanism for addressing disputes about gTLD domain names.

It covers -

• background to the UDRP
• who is involved
• an outline of the process
• criticisms and defences
• statistics and tracking disputes

The Domains & the DNS profile considers domain name disputes as a phenomenon, along with the 1999 US Anticybersquatting Consumer Protection Act (ACPA). The auDRP - based on the UDRP and covering disputes in the dot-au ccTLD - is discussed in the auDA profile elsewhere on this site.

     background

ICANN established the UDRP to handle disagreements about the allocation of domain names.

The UDRP involves arbitration and decision-making by a small number of non-government arbitral bodies: alternate dispute resolution (ADR) [aka alternative dispute resolution] services. Decisions are made on a case by case basis, rather than using detailed guidelines or an extensive body of precedent.

That has led to what some have criticised as bias or inconsistency. Others have highlighted problems with lack of an appeal body, one result being that some disputants have taken disagreements to favourable fora such as courts in particular US states.

     who is involved

Around 60% of the UDRP disputes have been heard by the World Intellectual Property Organization's Domain Name Dispute Resolution Service (DNDRS), arguably because plaintiffs are comfortable with WIPO's aesthetic of the 'sacredness' of intellectual property.

The others are the CPR Institute for Dispute Resolution (CPR), National Arbitration Forum (NAF) and the Asian Domain Name Dispute Resolution Centre (ADNDRC). The latter replaced Canada-based eResolution (eRes), which withdrew in late 2001.

John Selby's 2004 paper Competitive Provider Selection under the ICANN UDRP: Are ICANN's goals being achieved? comments that

A Provider's perceived reputation in the Complainant market appears to impact significantly on its ability to compete. Anecdotal evidence suggests that WIPO's strong international reputation is one reason for its success. Criticisms of the UDRP system by members of eResolution appear to have contributed to the decline in its reputation amongst Complainants and therefore to a decline in its market share. For the purposes of Provider competition, the validity or inaccuracy of such criticisms is unfortunately irrelevant. The way in which Complainants react to such criticism is of paramount importance.

Towards the end of 2000 WIPO sought comments on trademark and domain name issues in strengthening the regime. It subsequently released draft 'Best Practice' guidelines to curb "abusive and bad faith registrations of protected names, and to resolve related disputes" regarding domain name disputes.

Those guidelines reflect calls from Australia and other countries for a set of voluntary guidelines covering the development of practices and policies. In April 2001 WIPO issued a detailed interim report on its current domain name dispute resolution process. The report summarizes submissions on proposals to extend the process to personal names, geographic locations and trade names.

     the process

The 'Process' aims at addressing disputes about domain names - eg cybersquatting - in a way that's more speedy and economical than recourse to international courts and that doesn't get bogged down in disagreements between different national/regional jurisdictions (eg French versus US courts).

A perspective on such arbitration is provided by Dealing in Virtue: International Commercial Arbitration & the Construction of a Transnational Legal Order (Chicago: Uni of Chicago Press 1998) by Yves Dezalay & Bryant Garth and in the much drier Law & Practice of International Commercial Arbitration (London: Sweet & Maxwell 1999) by Alan Redfern & Martin Hunter.

This site features a short profile on ADR - including Australian and overseas legislation - and particular projects concerned with B2B and B2C ADR.

Although ICANN has a quasi-governmental responsibility for and administration of the net, the UDRP is enforced through contract rather than regulation.

Domain name registrars accredited by ICANN incorporate the UDRP into individual domain name registration agreements. In effect, the UDRP binds registrants through their contracts with registrars such as VeriSign/Network Solutions and MelbourneIT "to submit" to "mandatory administrative proceedings" initiated by third-party "complainants."

The scope of such UDRP proceedings is limited to claims of "abusive" registrations of Internet domain names and covers no other disputes.

Complainants in UDRP proceedings must prove that the disputed "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights," that the registrant has "no rights or legitimate interests in respect of the domain name," and that the domain name "has been registered and is being used in bad faith." The UDRP identifies tests of "bad faith" and grounds for demonstrating a registrant's "rights and legitimate interests" in a domain name.

Complainants initiate UDRP proceedings directly with one of the dispute resolution service providers designated by ICANN. The UDRP and the UDRP Rules prescribe detailed procedures for appointing either a solo arbitrator or a three-member panel to conduct the inquiry.

The UDRP is fashioned as an "online" procedure administered via the net. Although a panel may opt in exceptional cases to hold live or teleconference hearings, it is expected to base its decision on "the statements and documents submitted" in accordance with the UDRP, the UDRP Rules, and any "rules and principles of law that it deems applicable."

In the absence of "exceptional circumstances," a panel is expected to issue its decision within fourteen days of its appointment. If the panel rules in the complainant's favor, the only available remedy is for the registrar to cancel the domain name registration or transfer it to the complainant.

A registrar may automatically implement a UDRP panel decision after ten days unless the aggrieved registrant notifies the registrar within this ten day period that it has "commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted" as required by the UDRP Rules.

After notification, the registrar "will take no further action" until it receives "satisfactory" evidence of the resolution of the dispute, the dismissal or withdrawal of the lawsuit, or a court order that the registrant does "not have the right to continue using" the domain name.

     criticisms and defenses

The UDRP has been strongly, although sometimes unfairly, criticised.

Two of the most influential studies have been the Rough Justice report from Syracuse University's Convergence Center and Michael Geist's valuable jurimetric study Fair.com? An Examination of the Allegations of Systemic Unfairness in the UDRP (PDF), which examined 3,094 UDRP decisions.

The Syracuse report suggests that interpretation of the UDRP by WIPO and forum-shopping by litigants have created a system biased towards large trademark holders. Geist considers patterns in decisionmaking by single and multiple person panels. His analysis complements arguments in the Syracuse report. His 2000 paper on ICANN's Uniform Dispute Resolution Processes: Lessons in ADR is also of value; Fair.com was updated (PDF) in early 2002.

Critics of the studies have responded that 'correlation does not prove causation', arguing that they are methodologically flawed - counting numbers but not identifying whether the decisions by arbitrators were correct.

One UDRP supporter, for example, comments that most decisions have been correct (with faulty judgements representing a "tiny percentage of the total ... a smaller percentage than happens in courts of law for most democracies"), that many defendants do not contest the claim against them and lose by default rather than bias, and that the UDRP is exceptionally inexpensive relative to other legal mechanisms.

The 70 page 2002 study (PDF) by the Max Planck Institute for Foreign & International Patent, Copyright & Competition Law Intellectual Property Institute concluded that the UDRP has been operating satisfactorily although there is a need for fine-tuning regarding free speech and rules concerning the burden of proof. There's a more qualified endorsement in The ICANN Uniform Domain Name Dispute Policy: The UDRP in Perspective After Nearly Two Years (PDF) by US practitioner G. Gervaise Davis III and in David Lindsay's International Domain Name Law: ICANN and the UDRP (Oxford: Hart 2007).

The UDRP by All Accounts Works Effectively (PDF) and UDRP - A Success Story (PDF), two 2002 documents from the International Trademark Association (INTA), provide another response to the Geist and Syracuse studies.

Ian Stewart's Federal Communications Law Journal May 2001 article (PDF) on The Best Laid Plans: How Unrestrained Arbitration Decisions Have Corrupted the Uniform Domain Name Dispute Resolution Policy argues that the UDRP as such is defensible but has been distorted by the individual arbitrators.

It is a call for restraint, in line with Jonathan Weinberg's more incisive article on ICANN & the Problem of Legitimacy, Stacey King's 2000 The 'Law That It Deems Applicable': ICANN, Dispute Resolution & the Problem of Cybersquatting paper and Joseph Liu's 1999 Legitimacy and Authority in Internet Coordination: A Domain Name Case note.

Holger Hestermeyer's 2002 paper The Invalidity of ICANN’s UDRP Under National Law suggests that problems might be addressed by enshrining the UDRP in a global treaty. Kevin Heller's 2001 paper The Young Cybersquatter's Handbook: A Comparative Analysis of the ICANN Dispute and Zohar Efroni's 2005 The Anticybersquatting Consumer Protection Act and the Uniform Dispute Resolution Policy: New Opportunities for International Forum Shopping? paper consider the UDRP and ACPA. There is a broader review in Adam Waxer's 1999 The Domain Name Fiasco: The Legal Battle Between the Current Domain Registration System and Traditional Trademark Law (PDF), complemented by Igor Motsnyi's 2003 paper Protection of Celebrities Names and Trade Marks under the ICANN Uniform Domain Name Dispute Resolution Policy.

There is a more spirited defence in Doublas Hancock's 2001 paper An Assessment of ICANN's Mandatory Uniform Dispute Resolution Policy in Resolving Disputes Over Domain Names and the crisp 2002 paper by Bradley Freedman & Robert Deane on The Uniform Domain Name Dispute Resolution Policy: A Practical Guide.

     tracking disputes

As of October 2002 around 11,000 proceedings had been initiated under the UDRP. By June 2007 the WIPO Arbitration service had heard some 11,051 disputes; the overall number of proceedings was over 20,000.

2000 - 1,857
2001 - 1,557
2002 - 1,207
2003 - 1,100
2004 - 1,176
2005 - 1,456
2006 - 1,824
2007 - 2,156

73% of the 2,156 complaints filed with WIPO under the UDRP in 2007 were of disputed .com domains. The top five sectors for complaints in that year were biotechnology and pharmaceuticals, banking and finance, information technology, retail and entertainment. Pharmaceutical manufacturers remained the top complainants due to variations of protected names registered for websites offering/ linked to online sale of medicines.

For a sense of how the UDRP is evolving we recommend Scott Donahey's monthly digest in association with the UDRP resources at the Berkman Center for Internet & Society and the Domain Name Law Reports (DNLR).

ICANN also offers a dispute search engine.



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