Tag Archives: Uniform Domain Name Dispute Resolution Policy

Domain name disputes: the UDRP 10 years on by Tony Willoughby

Legal context: Domain name disputes now form a significant practice area for IP lawyers. However, they rarely merit the expense of litigation. The favoured route to resolution of these disputes tends to be the Alternative Dispute Resolution (ADR) policies for the various domains, the most used of which is the Uniform Domain Name Dispute Resolution Policy (UDRP), which celebrates its 10th anniversary this year (2009).Key points: Complaints launched under the UDRP are decided by independent panellists selected from lists held by the various UDRP service providers, one of which is the World Intellectual Property Organization. The panellists are mainly trade mark lawyers. They come from all over the world. That fact combined with the fact that there is no system of binding precedent under the UDRP means that there is scope for divergence of view among panellists. Of late, panellists have been demonstrating potentially significant divergence of views in relation to the practices of domainers (ie entities whose business is the commercial exploitation of domain names). This article celebrates the success of the UDRP over the last 10 years, but highlights the need for consensus among panellists if the UDRP is to maintain its usefulness in the face of these new domainer practices and principally the automated bulk transfer and commercialisation of domain names.Practical significance: If some route to consensus is not found (by amendment to the UDRP or otherwise), there is a risk that the outcome of disputes involving domainers as respondents will become something of a lottery, leading to a reduced willingness on the part of rights owners to rely on an otherwise cheap and effective form of ADR.To download this research in paper by Tony Willoughby in the Journal of Intellectual Property Law & Practice in full, see:
jiplp.oxfordjournals.org/cgi/content/abstract/4/10/714

Bad Faith in Cyberspace: Grounding Domain Name Theory in Trademark, Property and Restitution by Jacqueline D. Lipton [Harvard Journal of Law and Technology]

Abstract: The year 2009 marks the tenth anniversary of domain name regulation under the Anti-Cybersquatting Consumer Protection Act (ACPA) and the Uniform Domain Name Dispute Resolution Policy (UDRP). Adopted to combat cybersquatting, these rules left a confused picture of domain name theory in their wake. Early cybersquatters registered Internet domain names corresponding with others’ trademarks to sell them for a profit.However, this practice was quickly and easily contained. New practices arose in domain name markets, not initially contemplated by the drafters of the ACPA and the UDRP. One example is clickfarming – using domain names to generate revenues from click-on advertisements. To avoid trademark liability, most clickfarmers and cybersquatters utilize personal names, geographic and cultural indicators, and generic terms as domain names. The application of current regulations to these practices is unclear, largely because of the lack of a coherent policy basis for domain name regulation.This article develops a new model for domain name regulation. It incorporates trademark policy within a broader theoretical framework incorporating aspects of restitution and property theory. The author suggests that a broader theoretical approach to domain name regulation would facilitate the development of more coherent domain name rules in the future. This discussion is particularly timely in light of the forthcoming implementation of a new generic Top Level Domain (gTLD) application process.To download this paper from the Harvard Journal of Law and Technology in full, see:
ssrn.com/abstract=1484763

New UDRP Rules – Implementation Process and Paperless Filing at WIPO: What You Need To Know

WIPO logoOn October 30, 2009, the Internet Corporation for Assigned Names and Numbers (ICANN) Board approved WIPO’s proposal to amend the Rules for Uniform Domain Name Dispute Resolution Policy (Rules) to allow for electronic-only filing of pleadings under the Uniform Domain Name Dispute Resolution Policy (UDRP).

On December 7, 2009, ICANN announced a phased implementation procedure for the modified Rules.

The modified Rules become mandatory on March 1, 2010, and prior to that, provision is made for the optional filing of UDRP pleadings in electronic-format by email and notification in accordance with the new Written Notice provisions in the modified Rules. The WIPO Center will be inviting such filings and commencing use of the Written Notice provisions as of December 14, 2009. Parties who elect not to make use of this new WIPO facility may continue to file pleadings in hard copy up until February 28, 2010.

The modified version of the Rules, along with the WIPO Center’s new WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (Supplemental Rules), and the leaner filing and notification facility offered by WIPO during the transition phase, includes procedural modification of benefit to both Parties to a WIPO UDRP proceeding. These are expected to include time and cost saving for both Parties in preparing and submitting pleadings, and continuing safeguards for fair notice of the dispute to Respondents (including WIPO’s obligation as a UDRP Provider to send the Respondent the full Complaint including all annexes by email on Notification of the proceedings, along with sending Written Notice of the dispute to the Respondent’s available postal information, and also by fax).

Below are answers to some frequently asked questions regarding these changes and what they may mean for Parties filing UDRP pleadings with the WIPO Center.

Should you need additional procedural information, please do not hesitate to write to or contact the WIPO Center directly at arbiter.mail@wipo.int or by phone at +41 22 338 8247.

Can I file my UDRP Complaint or Response including all annexes with WIPO solely in electronic format?

Yes. As of December 14, 2009, you will be able to file your Complaint or Response (including all applicable annexes) in electronic format only. This can be done by simply submitting to the WIPO Center at domain.disputes@wipo.int. Relevant guidance on format modalities can be found in the modified WIPO Supplemental Rules at Annex E. As of March 1, 2010, you will be required to file all pleadings in electronic format only, in accordance with the modified Rules.

Can I still file a UDRP Complaint or Response with WIPO in hard copy?

Yes, until February 28, 2009. The WIPO Center will continue to allow Parties to file hard copy pleadings until February 28, 2010, as provided for in the ICANN announcement.

Does filing my UDRP Complaint or Response in electronic format with WIPO mean that I no longer have to ship multiple sets of hard copies?

Yes. The modified Rules remove the requirement for paper pleadings, and from December 14, 2009, either Party to a WIPO UDRP proceeding may elect to file their Complaint or Response (as well as any other substantive documents which may be required in accordance with paragraph 12 of the Rules) in electronic-only format (e.g. – by email).

Will I have to file my WIPO UDRP Complaint or Response in electronic format from March 1, 2010?

Yes. From March 1, 2010, the modified Rules and modified WIPO Supplemental Rules become mandatory, and all WIPO UDRP proceedings will need to be filed and administered under the modified Rules from that date. This means that Complaints and Responses filed with WIPO on or after March 1, 2010 will need to be submitted electronically including all annexes. The relevant file format and size guidelines for the filing of electronic pleadings and annexes can be found in Annex E to the modified WIPO Supplemental Rules.

What is the (recommended) file size for one email communications according to the modified WIPO Supplemental Rules?

10 MB. Other than by prior arrangement with the WIPO Center, the size of any email communication (including attachments) transmitted to the WPO Center in connection with any UDRP proceeding should be no larger than 10 MB (ten megabytes). When larger amounts of data need to be transmitted the files can be “split” across more than one email communication.

What is the (recommended) size modality for individual files?

10 MB. Other than by prior arrangement with the WIPO Center, the size of any individual file (such as a document in Word, PDF or Excel format) transmitted to the WIPO Center in connection with any UDRP proceeding should itself be no larger than 10 MB (ten megabytes). When larger amounts of data need to be transmitted, larger files can be “split” into a number of separate files or documents each no larger than 10 MB.

What is the (recommended) total file size modality in UDRP cases?

10 MB. The total size of one pleading (including any annexes) filed in relation to a UDRP dispute should not exceed 50 MB (fifty megabytes), other than in exceptional circumstances (including in the case of pleadings concerning a large number of disputed domain names) where previously arranged with the WIPO Center.

I have been named as a Respondent in a WIPO UDRP proceeding being administered under the new facility – does that mean that I will receive full copies of the Complaint filed under the modified Rules more quickly?

Yes, it should. The WIPO Center will send electronic copies by email of Complaints along with complete sets of annexes to Respondents in all cases upon the formal Notification of Complaint and Commencement of Administrative Proceedings. This should enable Respondents to begin the preparation of their Response immediately, as they will have access to all of the relevant pleadings on the day of formal notification.

Will I, as a Respondent, receive notice of the WIPO UDRP proceeding to my physical address?

Yes . The WIPO Center will also send, in accordance with paragraph 2(a)(i) of the modified Rules, Written Notice of the Complaint filed with WIPO to available physical addresses for the Respondent, including those provided in the publicly-available WhoIs records, directly by the Respondent, and/or by Complainant in its Complaint.

Can I as a Respondent provide an additional email address to which I want the Complaint filed with WIPO and annexes to be sent?

Yes. The Written Notice document will provide the Respondent with procedural guidance on how to file its Response, and will invite the Respondent to provide the WIPO Center with any additional email addresses (if any) to which the Respondent would like a copy of the complete Complaint to be sent.

This WIPO announcement was sourced from:
wipo.int/amc/en/domains/rules/eudrp/

ICANN: Announcement Regarding Implementation of Modification to Implementation Rules for Uniform Domain Name Dispute Resolution Policy

ICANN logoOn 30 October 2009, the ICANN Board approved a modification to the Implementation Rules for the Uniform Domain Name Dispute Resolution Policy (“Rules”). The modified Rules now require UDRP claimants and respondents to provide documents to UDRP Providers in electronic form. The modified Rules also change UDRP Provider obligations in forwarding hard copy notice to respondents in UDRP proceedings: the original Rules required Providers to forward a hard copy of the UDRP complaint; under the new Rules, Providers do not have to forward a hard copy of the entire complaint. Providers are now only required to forward a hard copy notice that a UDRP complaint has been filed.

The modified Rules will become mandatory for all UDRP proceedings filed on or after 1 March 2010.

Until 1 March 2010, UDRP Providers may elect to follow the hard copy notice (without complaint) requirement as set forth in the modified Rules. For all UDRP proceedings filed on or after 1 March 2010, all UDRP Providers must follow the updated requirements. At that time, even if a UDRP Provider’s supplemental rules contain provisions conflicting with the modified Rules, the modified Rules will guide the proceedings.

Providers may allow, but must not require, UDRP complainants and respondents to submit complaints and responses in electronic form prior to 1 March 2010. For all UDRP proceedings filed on or before 28 February 2010, complainants and respondents may elect to submit their documents in hard copy form, as set forth in the original Rules.

This ICANN announcement was sourced from:
icann.org/en/announcements/announcement-07dec09-en.htm