The Uniform Domain Name Dispute Resolution Policy (UDRP), which has been the preferred way for trademark owners to resolve cybersquatting issues for 20 years, applies to registrants of .com and other specified domain names because it appears in the relevant registration and renewal agreements to which every registrant must agree when registering or renewing a domain name.
Or does it?
One recent UDRP decision raises an intriguing question about whether the UDRP applies to a domain name registrant that says it never agreed to the policy.
Background: UDRP in Registration Agreements
In the beginning — that is, when the UDRP was adopted in 1999 — I recall legitimate questions being raised about how a newly created policy could be applied retroactively to domain names that were already registered. In other words, some people understandably questioned whether the UDRP, which appears as a contractual obligation in registration agreements, could apply to a registrant that entered into an agreement before the UDRP even existed.
Through the years, though, this question seems to have faded, as most (if not all) current domain names were created or renewed in the past two decades.
As a result, it is now commonly accepted that all registrants of domain names to which the UDRP applies are indeed contractually bound by the UDRP — as required by the registrars’ agreement with ICANN, which says, “Registrar shall comply with the Uniform Domain Name Dispute Resolution Policy (‘UDRP’) identified on ICANN's website…, as may be modified from time to time.”
Registrars include language about the UDRP in the registration agreements to which their customers (that is, domain name registrants) must agree. For example, GoDaddy’s domain name registration agreement says:
You agree to be bound by our current Dispute Resolution Policy. This policy is incorporated herein and made a part of this Agreement. You can view the Uniform Domain Name Dispute Resolution Policy online. You agree that GoDaddy may from time to time modify its Dispute Resolution Policy. GoDaddy will post any changes to its Dispute Resolution Policy at least thirty (30) days before they become effective. You agree that by maintaining your domain name registrations with GoDaddy after the updated policy becomes effective that you agree to the Dispute Resolution policy as amended. You agree to review GoDaddy's website periodically to determine if changes have been made to the Dispute Resolution Policy.
As a result, the UDRP service providers make clear to domain name registrants in UDRP proceedings (who are known as “respondents”) how and why the UDRP applies. For example, the “transmittal coversheet” that WIPO requires for UDRP complaints contains the following notice to domain name registrants.
The [UDRP] Policy is incorporated by reference into your Registration Agreement with the Registrar(s) of your domain name(s), in accordance with which you are required to submit to a mandatory administrative proceeding in the event that a third party (a Complainant) submits a complaint to a dispute resolution service provider, such as the Center, concerning a domain name that you have registered.
Similarly, the Forum informs domain name registrants:
Anyone who has registered a domain name in a generic top level domain (like .com, .net, or .org) has already agreed to participate in this [UDRP] process.
Disputes About Disputes
A few early UDRP decisions addressed the issue of whether the UDRP actually applied to the dispute being decided. For example, in one case from 2001, a respondent argued that it “did not accept the UDRP procedure.” And in a more recent case, from 2014, the respondent “claim[ed] that it did not agree to arbitration and cannot be bound to th[e] proceeding.” In both cases, the panels rejected these arguments — even, in the 2014 decision, writing that “Respondent’s claim is wholly without merit because it agreed to submit itself to ICANN policies explicitly, and the UDRP is an ICANN Policy, with the National Arbitration Forum being a provider thereunder.”
But the issue of UDRP applicability received renewed — albeit fleeting — attention in a new, 2019 decision, involving the domain name <mywaybettyford.com>.
The facts of the Betty Ford case are, as the panel said, complex, involving a dispute between the U.S. owner of the trademark BETTY FORD CENTER and the respondent, a German company that had a license to use the trademark MY WAY BETTY FORD KLINIK, which was owned by another German company. Ultimately, according to the UDRP decision, the Germany companies became “embroiled in a series of lawsuits,” after which the respondent registered the disputed domain, and then the complainant rejected the respondent’s request for a trademark license.
Among the respondent’s defenses in the UDRP case was an argument that the UDRP did not event apply to the dispute. As stated in the decision:
As a preliminary matter, the Respondent contends that the UDRP was not contractually incorporated into its contract with Internet24.de GmbH, through whom the Respondent registered the disputed domain name. The Respondent adds that it never accepted any subsequent contract incorporating the UDRP, either with the company that acquired Internet24.de GmbH or with any registrar for the disputed domain name.
The Complainant responds that the Respondent is bound by the UDRP because it renewed, or at least did not object to renewal of, the disputed domain name via companies whose registration agreements did require submission to the UDRP.
The issue is a fascinating one: If a registrar, despite an obligation via its ICANN registrar accreditation agreement to ensure that its customers agree to the UDRP, fails to do so, does the UDRP apply to disputes over any domain names registered by those customers?
Unfortunately, the panel in the Betty Ford case did not tell us the answer. Instead, the panel said that it was unnecessary to decide that question because it was denying the complainant’s request for a domain name transfer on other grounds: “it is a complex business dispute that exceeds the relatively limited ‘cybersquatting’ scope of the UDRP, and would be more appropriately addressed by a court of competent jurisdiction.”
So, the intriguing question remains unanswered, left to be addressed, maybe, in a future domain name dispute.
