The domain-dispute bible updated
The WIPO Arbitration and Mediation Center recently released the second version of its Overview of WIPO Panel Decisions, the bible for domain disputes. Erik Wilbers and David Roache-Turner explain the work involved in putting the document together to Fionn O’Raghallaigh
On March 30, a year and a half of work finally bore fruit. WIPO released the new 2.0 version of its Overview of WIPO Panel Views on Selected UDRP Questions.
The new version of the Overview does exactly what it promises: it describes the consensus position of panelists on questions that continually pop up in UDRP decisions, and explains the several positions taken where consensus is lacking. Because of its usefulness to both seasoned veterans of the UDRP and first-timers, it has taken on the nickname of domain dispute bible.
The 2.0 Overview shows how much the UDRP and the domain name system have evolved since the first version appeared in 2005 – it includes 20 extra questions. The importance of the Overview is reflected in the amount of times the document is cited by UDRP panelists in decisions, not just in WIPO decisions but also those of other UDRP providers.
“We actually raised this project at our panelists meeting in October 2009,” says Erik Wilbers, Director of the WIPO Arbitration and Mediation Center. He adds that drawing up the list of what should go into the book was a two-part process. “The first one is that we look at the existing issues from the first WIPO Overview and bring those up to date.” The second part is identifying new issues. This is easier than it sounds. “We hardly have to look,” says Wilbers. “We see new issues addressed by panels in their decisions, as well as gradual developments in treatment of long-existing issues.”
It helps that Wilbers and his colleague David Roache-Turner, Head of Domain Name Dispute Resolution Section, who are the two main drivers behind the new Overview, read almost every UDRP decision between them.
“If you look at the so-called ‘sucks’ cases, in the original WIPO Overview, the majority view essentially was that a domain consisting of a trademark and a negative term would generally meet the confusing-similarity threshold, whereas a minority held that it would not,” says Roache-Turner. “We looked at all of the relevant WIPO panel decisions on that point since the 2005 version was published, and found there were hardly any more WIPO panels applying the minority view.” This was the case whether the issue was considered qualitatively or quantitatively, he adds: “What really stood out was that the previously stated majority view had been incrementally developed by panelists through their decisions over the past six years or so into something much closer to a consensus. As such, it seemed appropriate to reflect that long-observed shift in jurisprudence in the consensus view as it is now expressed in the 2011 version.”
So, once this preparatory work was done, the two got down to the nitty-gritty of drawing up a list of questions. “So when we drew up a draft list,” says Australian Roche-Turner, “we challenged one another here to come up with more.” The challenge was also extended to a trusted group of experienced panelists, to chip in with their own thoughts.
However, not just any topic can get in. “We don’t include a new topic or update an existing one based on one, two, or three decisions,” says Wilbers. “In some cases it might be an issue that develops over many years. We are not artificially trying to reflect or construe consensus when it is not there.”
The finished product
And now the final version is out, with a total of 46 questions, up from the 26 in the first version. Wilbers believes the 2.0 version illustrates the difference between the domain name system when the original Overview came out and today: “Whether we refer to privacy, language, or automated registrations, we see reflected evolution within the domain name system.”
“If you look at the 2005 version, it reflects that in the beginning cybersquatting still seemed to concern more ad hoc bad faith registrations by individuals who would try to sell the domain name to the corresponding trademark owner, which was seen as the core form of cybersquatting back then. Now the focus has shifted to responses to domaining, in which bulk registration and monetization strategies have become vastly more sophisticated.”
This latest Overview comes out just as Icann is looking into potentially changing the UDRP (see box), although it is likely to be a long time before anything concrete happens. Wilbers believes this version of the Overview should be a reminder to those looking at changing the UDRP not to upset something that has worked well so far. “We hope that this updated version of the WIPO Overview serves as an acknowledgement of the many, many people globally who have contributed to this body of jurisprudence. We also hope this unique and freely available WIPO resource not only helps parties and panelists around the world, but that it may additionally serve as an illustration of the need to apply expert care in the development and any review of ADR mechanisms for the domain name system.”
While any change to the UDRP is likely to be some way off, both Wilbers and Roche-Turner expect the Overview to be updated more frequently than every six years, which was the time between this version and the previous one. “It is likely to be shorter than that I think,” explains Wilbers. “I would say we are probably looking at one or two years from now to publication of the third edition WIPO Overview.”
At a glance: New additions
Sucks sites: It is now consensus that a pejorative term added to a mark is generally confusingly similar. In the older version, the minority view, particularly held by US panelists, was that a pejorative term added to a trademark was not confusingly similar.
Generic words: The latest Overview has a slightly updated take on generic words. It is now consensus view that words are only generic when used in connection with particular goods or services.
Automated registrations: The practice of computer programs automatically bulk registering domains was not considered in the last Overview. The Overview states the Panels mainly find respondents must accept the consequences of turning a blind eye to any third-party trademarks when using programs to bulk register.
National law: The role national law has to play in the UDRP is generally irrelevant. The only circumstance under which national law might be applied is when the “location or nationality of the parties” is the same, “or where a specific concept of national law is judged germane to an issue in dispute”.
Licensee rights: It is now considered consensus that a licensee of a trademark or a related company such as a subsidiary or parent to the registered holder of a trademark is considered to have rights in a trademark under the UDRP.
Laches: The doctrine or defense of laches as such does not generally apply under the UDRP, but in appropriate and limited circumstances a defense of laches under the UDRP is applicable where the facts so warrant.
The UDRP under review
The early stages of what might lead to the first change in the UDRP have got under way at Icann. A group, including representatives of the IP community, has been formed to draft an issues report into the “current state” of the UDRP. The review is the result of a motion passed by Icann’s policy making body, the Generic Names Support Organization (GNSO) Council, which wants the paper to examine two issues. The first will look at “how the UDRP has addressed the problem of cybersquatting to date, and any insufficiencies/inequalities associated with the process”.
The second part is to examine “whether the definition of cybersquatting inherent within the existing UDRP language needs to be reviewed or updated. The issue report should include suggestions for how a possible policy development process on this issue might be managed.”
Icann has also held a webinar with contributions from UDRP providers, academics and lawyers to help inform the paper. The report is due to be published before the end of May, and will be posted for public comment on Icann’s website. A final report, reflecting some of the public comments, will then be produced some time after this. This could lead to a so-called policy development process, which would look at making changes to the UDRP. However, any change would probably take years to happen.