Just as the number of domain names and domain name disputes have expanded significantly in recent years, so, too, has WIPO's "Overview," which has been updated to address the growing complexity of cases under the Uniform Domain Name Dispute Resolution Policy (UDRP).
WIPO has just published the third edition of its "WIPO Overview of WIPO Panel Views on Selected UDRP Questions" -- commonly referred to as "WIPO Jurisprudential Overview 3.0." The document addresses some of the most common, important and difficult issues that frequently arise in UDRP cases.
WIPO Overview 3.0 is the first update to this document in six years -- a time period in which a lot of changes have come to the domain name system, including the arrival of more than 1,200 new generic top-level domains (gTLDs) and a new domain name dispute policy (the Uniform Rapid Suspension System, or URS).
"Following a review of thousands of WIPO panel decisions issued since WIPO Overview 2.0, this edition has been updated to now include express references to over 800 representative decisions (formerly 380) from over 250 (formerly 180) WIPO panelists," according to an introduction to WIPO Overview 3.0. "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 this WIPO Jurisprudential Overview 3.0 has significantly increased to reflect a range of incremental DNS and UDRP case evolutions."
New and Expanded Topics
New or expanded topics addressed in WIPO Overview 3.0 include the following:
- The relevance of a top-level domain name -- a topic I have written about before. The Overview says: "Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity (e.g., for a hypothetical TLD '.mark' and a mark 'TRADEMARK', the domain name <trade.mark> would be confusingly similar for UDRP standing purposes)."
- The relationship between the UDRP and the URS -- another topic I have written about before. Citing a decision in which I successfully represented a trademark owner in both a URS and a UDRP proceeding, the Overview says, "There have... been UDRP proceedings filed where the same domain name was previously subject to a URS case. In such event, the UDRP complaint should make this clear."
- WIPO's role in implementing a UDRP decision -- an issue that occasionally arises when a registrar fails to transfer a domain name despite a UDRP order to do so. In my experience, this is often attributable to ignorance, not defiance, but in either case enlisting WIPO's assistance can be helpful. Although the Overview makes clear that WIPO's role "normally ends upon notification of a panel decision to the parties and registrar," it also says that parties may "raise such implementation matters to the WIPO Center’s attention."
The Role of the Overview
In any event, WIPO Overview 3.0 should be helpful to any party filing or defending a UDRP complaint. Not only does the document explain the consensus view on many issues, it also provides numerous citations to relevant decisions, which can provide a useful resource for additional research.
Still, as the Overview itself makes clear, not all UDRP issues are entirely settled, and (as in all legal proceedings) the facts of each case will be important.
As the Overview states, the document "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."
Therefore, parties would be wise to consult the newly expanded and even more helpful Overview -- but, they still must conduct appropriate research and analysis to prepare and present the strongest possible arguments in a UDRP case.