The World Intellectual Property Organization wrote a legal primer that summaries the lessons learned from 380 decisions as of 2011 under the Uniform Dispute Resolution Policy (UDRP). The following is just the beginning of the detailed and highly educational WIPO treatise.
Decision-making authority under the Uniform Domain Name Dispute Resolution Policy and Rules (UDRP) lies exclusively with the appointed panels. To assist awareness of their views on certain questions that commonly arise in proceedings under the UDRP, the WIPO Arbitration and Mediation Center has produced the following update and extension of its informal overview of panel positions on key procedural and substantial issues. This WIPO Overview 2.0 includes new decision references supporting each line of opinion, with over 380 decisions (formerly 100) from over 180 (formerly 80) different UDRP panelists now listed. Reflecting the evolution of the Domain Name System and UDRP jurisprudence, the number of issues included in the WIPO Overview has doubled.
While some of these issues arise only infrequently, all of them are, or are perceived to be, relevant to the operation of the UDRP. On most of these issues, consensus or clear majority views have developed. Certain other questions attract a diversity of views. The WIPO Center’s identification of questions and careful and conservative evaluation of opinions is based on some 20,000 UDRP cases it has administered through March 31, 2011. Detailed information on all views is available from the WIPO Center’s online Legal Index of WIPO UDRP Panel Decisions, its full text decision search facility, and the full posting of all decisions.
This WIPO Overview was originally created and has been updated and expanded in recognition of the need that has been expressed to identify, as much as possible, consensus among UDRP decisions, so as to maximize the consistency of the UDRP system. It should be understood that, with UDRP decisions covering a multitude of facts and arguments, genuine differences of opinion may be difficult to avoid on particular issues, all the more so where panelists and parties come from a multitude of jurisdictions. Moreover, these opinions must be formed in the context of a rapidly evolving Domain Name System and Internet. However, it is hoped that this update on the UDRP experience will be found helpful by identifying views expressed by panels and providing decisions which help to put those views in context.
While predictability remains a key element of dispute resolution systems, neither this WIPO Overview nor prior panel decisions are binding on panelists, who will make their judgments in the particular circumstances of each individual proceeding. Also, it remains the responsibility of each case party to make its own independent assessment of decisions relevant to its case. In particular, parties should note that the present WIPO Overview cannot serve as a substitution for each party’s obligation to argue and establish its case under the UDRP.
The initiative for this WIPO Overview 2.0 was welcomed by the WIPO Domain Name Panelists Meetings convened in Geneva in October 2009 and 2010. The contents, which also reflect discussions at these Meetings, have benefited from substantial contribution and informal review by a number of the most experienced WIPO panelists. The WIPO Center, in consultation with its panelists, will on appropriate occasions consider undertaking further updates. (The original edition of this WIPO Overview will also continue to be accessible on the WIPO Center’s website.)
The following is the list of issues discussed in detail in the WIPO
1. First UDRP Element
1.1 Does ownership of a registered trademark to which the domain name is identical or confusingly similar automatically satisfy the requirements under paragraph 4(a)(i) of the UDRP?
1.2 What is the test for identity or confusing similarity, and can the content of a website be relevant in determining this?
1.3 Is a domain name consisting of a trademark and a negative term confusingly similar to the complainant’s trademark? (“sucks cases”)
1.4 Does the complainant have UDRP-relevant trademark rights in a trademark that was registered, or in which the complainant acquired unregistered rights, after the domain name was registered?
1.5 Can a complainant show UDRP-relevant rights in a geographical term or identifier?
1.6 Can a complainant show UDRP-relevant rights in a personal name?
1.7 What needs to be shown for the complainant to successfully assert common law or unregistered trademark rights?
1.8 Can a trademark licensee or a related company to a trademark holder have rights in a trademark for the purpose of filing a UDRP case?
1.9 Is a domain name consisting of a trademark and a generic, descriptive or geographical term confusingly similar to a complainant’s trademark?
1.10 Is a domain name which contains a common or obvious misspelling of a trademark (i.e., typosquatting) confusingly similar to a complainant’s trademark?
1.11 Are disclaimed or design elements of a trademark considered in assessing identity or confusing similarity?
2. Second UDRP Element
2.1 Is the complainant required to prove that the respondent lacks rights or legitimate interests in the disputed domain name?
2.2 Does a respondent automatically have rights or legitimate interests in a domain name comprised of a dictionary word(s)?
2.3 Can a reseller/distributor of trademarked goods or services have rights or legitimate interests in a domain name which contains such trademark?
2.4 Can a criticism site generate rights or legitimate interests in the disputed domain name?
2.5 Can a fan site generate rights or legitimate interests in the disputed domain name?
2.6 Do parking and landing pages or pay-per-click (PPC) links generate rights or legitimate interests in the disputed domain name?
2.7 Does a respondent trademark corresponding to a disputed domain name automatically generate rights or legitimate interests?
3. Third UDRP Element
3.1 Can bad faith be found if the domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?
3.2 Can there be use in bad faith when the domain name is not actively used and the domain name holder has taken no active steps to sell the domain name or to contact the trademark holder (passive holding)?
3.3 What constitutes a pattern of conduct of preventing a trademark holder from reflecting the mark in a corresponding domain name?
3.4 Can constructive notice, or a finding that a respondent “knew or should have known” about a trademark, or willful blindness, form a basis for finding bad faith?
3.5 What is the role of a disclaimer on the web page of a disputed domain name?
3.6 Can statements made in settlement discussions be relevant to showing bad faith?
3.7 Does the renewal of the registration of a domain name amount to a registration for the purposes of determining whether the domain name was registered in bad faith?
3.8 Can third-party or “automatically generated” material appearing on a website form a basis for finding registration and/or use in bad faith?
3.9 Can use of a privacy or proxy registration service form a basis for finding bad faith?
3.10 Can the use of “robots.txt” or similar mechanisms to prevent website content being accessed in an on-line archive form a basis for finding in bad faith?
3.11 Can tarnishment of a trademark form a basis for finding bad faith?
4. Procedural Questions
4.1 What deference is owed to past UDRP decisions dealing with similar factual matters or legal issues?
4.2 Will the WIPO Center put an unsolicited supplemental filing before a panel, and in what circumstances would a panel accept such filing?
4.3 What is the proper language of the proceeding and what are the relevant considerations in this regard?
4.4 Under what circumstances can a refiled case be accepted?
4.5 May a panel perform independent research when reaching a decision?
4.6 Does failure of a respondent to respond to the complaint (respondent default) automatically result in the complainant being granted the requested remedy?
4.7 What is the standard of proof under the UDRP?
4.8 Under what circumstances may further domain names be added to a filed complaint?
4.9 Who is the proper respondent in a case involving a privacy or proxy registration service?
4.10 Does delay in bringing a complaint prevent a complainant from filing under the UDRP?
4.11 Can a registrar be liable as a registrant under the UDRP?
4.12 Can UDRP proceedings be suspended for purposes of settlement?
4.13 Can a panel decide a case under the UDRP based on a respondent’s consent to transfer?
4.14 What is the relationship between UDRP proceedings and court proceedings?
4.15 To what extent is national law relevant to a panel assessment of rights and legitimate interests and/or bad faith?
4.16 Can multiple complainants bring a single consolidated complaint against a respondent? Can a single consolidated complaint be brought against multiple respondents?
4.17 In what circumstances should a finding of Reverse Domain Name Hijacking or abuse of process be made?