WIPO’s revised Overview 3.0 assesses evolutions in UDRP jurisprudence

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WIPO’s new third edition of its UDRP Jurisprudential Overview describes panellist consensus positions and refers readers to hundreds of relevant decisions on UDRP case law. Expanding on its earlier second edition (dating from 2011), WIPO Overview 3.0 covers almost twice the number of substantive and procedural questions encountered by parties in UDRP cases. Key takeaways include: the importance of comprehensively evidencing trade mark rights; how panellists assess the threshold confusing similarity test; the role of (new) TLDs; the delicate balance in assessing potential user confusion versus claims of fair use; the rejection by panellists of the so-called "retroactive" bad faith registration doctrine; the use of domain names without content in bad faith (such as for phishing and email fraud schemes); and a host of procedural guidelines on supplemental filings, settlement procedures, and consolidation scenarios.

Under the Uniform Domain Name Dispute Resolution Policy (UDRP), WIPO panellists appointed to decide domain name disputes are strictly speaking not bound by precedent; that said, UDRP jurisprudence has evolved over time to form clear consensus positions on a wide number of substantive and procedural issues. Such panel consensus assists in the overall consistency and predictability of UDRP cases to the benefit of all domain name system stakeholders. To further assist in maintaining UDRP stability, WIPO's Arbitration and Mediation Center has compiled the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition as a reference tool for panellists and UDRP parties alike.

WIPO Overview 3.0 expands on the 2011 WIPO Overview 2.0, capturing gradual trends in UDRP jurisprudence. Key highlights are discussed below.

Under the Policy, paragraph 4(a)(i), the UDRP's first element requires a complainant to "have rights" in a trade mark or service mark, and to prove that the disputed domain name is identical or confusingly similar to their mark. The UDRP's first element is widely seen as a threshold test to assess whether the complainant has standing to file the UDRP complaint.

Complainants should rely on trade marks active at the time of filing (that is, not pending trade mark registrations) when demonstrating rights in their mark. Complainants are advised to comprehensively document proof of trade mark rights (using for example registration certificates and, if applicable, a licence), otherwise their complaints may be denied for lack of standing.

If relying on unregistered (or common law) trade mark rights, to establish standing, complainants should demonstrate the mark's acquired distinctiveness with specific evidence indicating: (i) the length of use of the trade mark; (ii) sales volume; (iii) the extent of advertising; (iv) media recognition; and (v) consumer surveys.

Failing to provide evidence of a mark's acquired distinctiveness may result in a denial under the first element. In K-Tek Computers (2015), the complainant claimed trade mark rights in Computer Refurb, a mark the panel found "descriptive at best". The complainant had not provided evidence that the mark had acquired distinctiveness (that is, that consumers came to exclusively associate "computer refurb" with the complainant's offerings), and the complaint was denied under the first element for lack of standing.

Panellists assess confusing similarity via a relatively straightforward side-by-side comparison of the domain name and the textual components of the relevant mark. (This can sometimes include an aural or phonetic comparison of the trade mark and the domain name.)

Recognisability is the crux of the UDRP's confusing similarity assessment. If a trade mark is recognisable in the domain name, even if accompanied by other terms (including geographical terms or pejorative terms such as "sucks"), panellists will find confusing similarity. Obvious misspellings, or translations and transliterations of marks in domain names also trigger a finding of confusing similarity for purposes of UDRP standing.

In some less prima facie obvious cases, panellists may consider the broader case context (including website content, or a respondent's pattern of conduct in registering domain names targeting third party marks) to affirm confusing similarity between a domain name and trade mark. Such considerations are often material under the second and third elements.

Top-level domains (TLDs) whether .com, .club, .nyc, are typically disregarded under the confusing similarity test as standard domain name registration requirements.

However, where the TLD and the second-level portion of the domain name combine to create a recognisable mark, panellists may assess the domain name in its entirety as to confusing similarity: see Totaljobs Limited (2017) (finding total.jobs considered confusingly similar to the Totaljobs mark). Another oft-cited example is for the domain name tes.co and the famous Tesco mark for Tesco shops.

Still, panellists may consider the meaning of a TLD under the second and third elements, for example where a TLD (such as .feedback) initially suggests potential fair use (see De Beers Limited (2016)).

About the WIPO Overview 3.0

The World Wide Web celebrated its 25th anniversary in 2014. Its ubiquity both as a commercial medium – facilitating trillions of dollars in trade annually – and as a means of disseminating information globally is self-evident. Sometimes heralded as one of humankind's greatest innovations, for all of its positive attributes, even looking back to its early days the internet has also provided a platform for a range of bad-faith practices across territorial borders including intellectual property infringement. To help maintain the overall integrity of the Internet's Domain Name System (DNS), at the request of the United States government supported by all member states, in 1999 following an extensive process of international consultations, the World Intellectual Property Organization (WIPO) created the Uniform Domain Name Dispute Resolution Policy (UDRP) to address cross-border trade mark-abusive domain name registrations, a practice widely known as cybersquatting. Adopted by ICANN as a much needed standardised alternative to multi-jurisdictional court litigation, the UDRP provides an efficient remedy for brand owners and predictability for domainers, fosters consumer protection for end users, and acts as a safe harbour for DNS registration authorities. As a globally recognised best-practice, it is also the basis for a significant number of country code top-level domain (ccTLD) dispute resolution policies. Since creating the blueprint for the UDRP, WIPO as of early 2017 has processed over 37,000 UDRP-based cases decided by nearly 500 experts covering some 65 nationalities and 21 languages, and involving parties from over 175 countries. As the DNS expands, including as an engine for economic growth, and further to ICANN's approval of scores of new top-level domains, the potential for cybersquatting and resulting consumer harm persists – making WIPO's not-for-profit institutional investment in continued UDRP predictability, for all DNS stakeholders, all the more important. In furtherance of transparency and accessibility, this WIPO investment includes a keyword-searchable legal index of WIPO UDRP panel decisions, a full-text search facility on all posted decisions, real-time WIPO case statistics, UDRP training workshops, WIPO panellists meetings, and the WIPO Jurisprudential Overview. Beyond these resources, WIPO has successfully initiated paperless e-filing, case language, and settlement practices. Understanding the relationship between UDRP operations and policy, WIPO notes that the fabric of UDRP jurisprudence, carefully woven over many years, can easily be torn apart. It is hoped that as ICANN embarks on a review of the UDRP, resources such as the WIPO Jurisprudential Overview 3.0 assist responsible decision-making that works for all DNS stakeholders. Under the UDRP, decision-making authority rests exclusively with the appointed external panels, based on the facts and circumstances of each case. While the UDRP does not operate on a strict doctrine of binding precedent, it is important for the overall credibility of the UDRP system that filing parties can reasonably anticipate the result of their case. Often noting the existence of similar facts and circumstances or identifying distinguishing factors, WIPO panels strive for consistency with prior decisions. In so doing, WIPO panels seek to ensure that the UDRP operates in a fair and predictable manner for all stakeholders while also retaining sufficient flexibility to address evolving internet and domain name practices. With this collective aim, the WIPO Arbitration and Mediation Center has produced the WIPO Jurisprudential Overview version 3.0, to summarize consensus panel views on a range of common and important substantive and procedural issues. Following a review of thousands of WIPO panel decisions issued since WIPO Overview 2.0, this edition has been updated to include express references to almost 1,000 representative decisions (formerly 380) from over 265 (formerly 180) WIPO panellists. The number of cases managed by the WIPO Center has nearly doubled since its publication of WIPO Overview 2.0; as a result, the number of issues covered in the WIPO Jurisprudential Overview 3.0 has significantly increased to reflect a range of incremental DNS and UDRP case evolutions. While the overall purpose of the WIPO Jurisprudential Overview is to assist in predictability, it is important to point out that – as with any legal system – differences of opinion may exist on some specific issues and in certain outlier cases; all the more so as the UDRP operates across fact patterns and jurisdictions. Furthermore, neither this WIPO Jurisprudential Overview nor prior UDRP decisions are strictly binding on panellists, who will consider the particular facts and circumstances of each individual proceeding in a manner they consider fair. At the same time, panel findings tend to fall within the views summarised in the WIPO Jurisprudential Overview 3.0. Finally, parties should note that the WIPO Jurisprudential Overview cannot serve as a substitution for each party's obligation to argue and establish their particular case under the UDRP, and it remains the responsibility of each party to make its own independent assessment of prior decisions relevant to its case. The consensus views laid out in the WIPO Jurisprudential Overview 3.0 have been welcomed by UDRP Panellists inter alia at WIPO's panellists meetings convened in Geneva through 2016. The contents reflect the meetings' constructive dialogue, as well as substantial contribution and informal review from a number of the most experienced WIPO panellists. As WIPO UDRP jurisprudence matures, the WIPO Center, in consultation with its panellists, will on appropriate occasions consider undertaking further updates in whole or in part to the WIPO Jurisprudential Overview 3.0. (The original edition and WIPO Overview 2.0 will continue to be accessible on the WIPO Center's website for reference.)

Pursuant to the Policy, paragraph 4(a)(ii), the UDRP's second element requires that complainants show that respondents lack rights or legitimate interests in a disputed domain name. Respondents may affirm rights or legitimate interests inter alia on fair use grounds, including free speech and nominative fair use. However, these arguments may fail if there is a risk that the domain name would (falsely) imply complainant endorsement or affiliation.

Respondents may assert they have rights or legitimate interest in a domain name by virtue of their use of the corresponding website for fair use, including "free speech". As WIPO Overview 3.0 states, noncommercial free speech can take the form of criticism sites, made apparent from critical words or phrases in the domain name, such as "sucks" or "beware of". Panellists scrutinise whether such domain names resolve to websites with genuine non-commercial free speech rather than websites using free speech as a pretext.

Recognisability is the crux of the UDRP’s confusing similarity assessment. If a trade mark is recognisable in the domain name, even if accompanied by other terms (including geographical terms or pejorative terms such as “sucks”), panelists will find confusing similarity

For example, in Royal Institution of Chartered Surveyors (2016), the complaint was denied as to the domain name rics-corruption.com, which resolved to a website featuring criticism from the respondent, who had previously been expelled from the complainant's accredited body of surveyors. However, the panellist transferred the domain name ricsfrance.com to the complainant, as ricsfrance.com redirected visitors to the respondent's own website where he simply advertised his competing business.

The UDRP explicitly (and through case law) protects fair use and free speech. That said, these concepts do not necessarily allow a respondent to use a domain name identical to a complainant's trade mark, insofar as this risks internet users mistakenly believing the domain name is affiliated with or endorsed by the complainant (see Puravankara Projects Limited (2014) transferring the domain name puravankaraprojects.com, which misappropriated the complainant's corporate name).

Similarly, words in a domain name descriptive of or related to the complainant may demonstrate a respondent's lack of rights or legitimate interests. Thus, domain names reflecting a flea control brand coupled with words such as "cats", "fleas" or "puppies" (such as capstarpuppies.com) may affirm a lack of legitimate rights and interests (see Eli Lilly (2016)).

The Oki Data test established in Oki Data Americas, Inc (2001) allows resellers, distributors and service providers – whether authorised or not – to use a domain name containing a complainant's trade mark to make related bona fide offerings of goods or services (for example, repair of the complainant's goods) when certain conditions are met. As with free speech cases, however, panellists have found the risk of user confusion from a domain name implying affiliation with the complainant can override the respondent's claim to rights or legitimate interests. In Johnson & Johnson (2015), the panel noted that even had the respondent met the Oki Data test requirements, the respondent did not have rights or legitimate interests due to "impermissible impersonation" in the domain name, which featured the complainant's Listerine brand and the Turkish word for Turkey, which implied an impermissible affiliation with the complainant's activities in Turkey.

Under the Policy, paragraph 4(a)(iii), the UDRP's third element requires that complainants show the respondent both registered and used a domain name in bad faith. Complainants should be aware that under WIPO Overview 3.0, panellists generally do not find registration in bad faith if the domain name was registered before the complainant's trade mark rights arose. Panellists will however examine all the circumstances when determining bad faith registration and bad faith use. Notably, bad faith use can be found in cases of passive holding or use of a domain name for non-website use, such as phishing or email fraud.

WIPO Overview 3.0 clarifies the consensus panel view that if a domain name was registered before a complainant's trade mark rights accrued, such registration is typically not deemed bad faith registration, as the registrant could not have contemplated or targeted a non-existent trade mark at the time of registration.

The UDRP explicitly and through case law protects fair use and free speech. That said, these concepts do not necessarily allow a respondent to use a domain name identical to a complainant’s trade mark, insofar as this risks internet users mistakenly believing the domain name is affiliated with or endorsed by the complainant

The earlier WIPO Overview 2.0 indicated a highly limited and evolving exception under the "retroactive" bad faith registration approach, followed by a handful of select panellists in 2009 and 2010. This approach drew upon paragraph 2 of the UDRP, which states: "By applying to register a domain name ... you hereby represent and warrant to us that ... you will not knowingly use the domain name in violation of any applicable laws or regulations." Under the "retroactive" bad faith registration approach, panellists considered UDRP paragraph 2 the registrant's warranty (at the time of registration) not to use the domain name in bad faith – therefore, the registrant's bad faith use of the domain name renders the original domain name registration in bad faith. Under this now defunct doctrine, in highly limited circumstances, a registration preceding the complainant's trade mark rights could have been considered in bad faith (see for example City Views Limited (2009) ("Mummygold"), and Octogen Pharmacal (2009) ("Octogen")).

As WIPO Overview 3.0 notes, panellists have not followed the "retroactive" bad faith registration approach of Mummygold and Octogen (see for example TOBAM (2016), citing decisions declining to follow the "retroactive" bad faith approach). Panellists have instead confirmed the requirement of bad faith at the time the domain name is registered. A complainant today will not prevail under an argument of "retroactive" bad faith registration.

In certain circumstances, complainants may successfully argue that a domain name registration preceding trade mark rights was nonetheless in bad faith. The panel in Pixers (2015) listed several factors relevant in this regard. Also, complainants have prevailed, for example, in cases where a respondent had insider knowledge such as having handled the complainant's marketing and being aware of the complainant's plans to obtain the relevant trade marks, or where the respondent had advance knowledge of an impending product launch (see for example INTERTEX (2017), and Aveva Group Plc (2015)).

The oft-cited case of Telstra (2000) established that passive holding of a domain name (where the domain name does not resolve to an active website) would not bar a finding of use in bad faith. Panels will instead look to "all the circumstances of the case" before finding whether the respondent is "acting in bad faith". Typically the strength of a complainant's trade mark, the respondent's use of false contact details or a privacy/proxy service to mask contact details, and the lack of evidence showing the respondent's good faith use are sufficient for a panellist to find bad faith use in a passive holding scenario (see also Dr Martens (2017)).

A complainant today will not prevail under an argument of “retroactive” bad faith registration.

Use of a domain name for non-website use can be considered use in bad faith, especially where the use involves malware distribution or fraudulent emails sent under the guise of a complainant's agent (offering employment, soliciting payment, etc). See for example Tetra Laval Holdings (2015) where the registrant fraudulently used the domain name to perpetrate phishing fraud and even provided contact details of one of complainant's employees in the WhoIs.

Procedural questions feature prominently in WIPO Overview 3.0. Highlights include panellist consensus positions regarding supplemental filings, the UDRP case standard settlement practice, and consolidation scenarios.

Complainants sometimes respond to a respondent's response by filing an unsolicited supplemental filing. Under the UDRP Rules, panellists are not obligated to accept unsolicited supplemental filings. However, panellists may accept such filings in certain circumstances, for example when a party responds to another party’s arguments which could not have been anticipated at the time it filed its complaint or response (see Pro Natura (2016)). Panellists will weigh all relevant circumstances in assessing whether to accept such filings, including the interest of due process.

Panellists occasionally issue procedural orders requesting supplemental filings from parties if, for example, a panellist believes it would benefit from further evidence supporting an undocumented assertion that was prima facie credible. See Wipro Enterprises Ltd (2017). 

Paragraph 17 of the UDRP allows suspension of a UDRP proceeding to facilitate settlement negotiations and to implement the parties' settlement agreement. To initiate settlement in a UDRP proceeding, a complainant should request a 30-day suspension of the proceeding (an extension of 30 days can be requested if needed). WIPO will then send a notification of suspension, and standard settlement form to the parties.

Upon receipt of a signed standard settlement form, WIPO will then issue a notice of settlement to the parties and registrar, allowing the registrar to unlock the disputed domain name so it may be transferred to the complainant's control. Once the complainant confirms the settlement was implemented, WIPO will dismiss the proceedings and, as a unique WIPO practice, refund the panel portion of the complainant's filing fee (usually $1,000). Refunds are not possible for settlements after a panellist has been appointed.

Complaints may be consolidated against multiple nominally different registrants, and WIPO accepts such complaints on a preliminary basis, with the panel having ultimate authority to decide whether to accept consolidation. Panels accept consolidation requests if the domain names are subject to "common control" and if the consolidation would be "fair and equitable to all parties" while also procedurally efficient.

While the WIPO Overview 2.0 outlined a few consolidation factors, the WIPO Overview 3.0 significantly details the fact patterns or case characteristics considered by panelists in determining whether to accept a consolidation request – such as (i) any shared characteristics in the (nominally different) registrants' email addresses, phone numbers, etc, (ii) shared characteristics in the websites the domain names redirect to, (iii) naming patterns in the domain names, and (iv) the nature of the marks targeted by the registrants.

In BMW (2016), the panellist accepted the complainant's consolidation request, noting that each of the domain names incorporated the complainant's trade mark and that the name of several of the complainant's products, and all three respondents had registered domain names resolving to websites advertising counterfeit products, or linked to the same websites offering the products for sale.

The panellist consensus positions discussed above are just a few of the important updates in WIPO Overview 3.0. WIPO Overview 3.0 features numerous other changes, discussions and details well worth your time.

Parties to domain name disputes should educate themselves on updates in WIPO Overview 3.0, especially as they may affect how UDRP decisions are argued and decided for years to come. WIPO’s UDRP decisions enjoy a global reputation, and are respected by courts worldwide.

Justin Chay

Brian Beckham

© WIPO 2017. Justin Chay is a legal case manager with the WIPO Arbitration and Mediation Center. Brian Beckham heads WIPO's Internet Dispute Resolution Section