The GigaLaw Guide to UDRP Resources

Here is a list of resources, with links, to important documents on ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP), which allows a trademark owner to seek the transfer or cancellation of a domain name in .com and other popular generic top-level domains (gTLDs):  

UDRP

• Policy

• Rules

• WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition

UDRP Dispute Providers

• World Intellectual Property Organization (WIPO)

  • Home Page

  • Supplemental Rules

  • Decisions

• The Forum (formerly the National Arbitration Forum)

  • Home Page

  • Supplemental Rules (.doc)

  • Decisions

• Czech Arbitration Court

  • Home Page

  • Supplemental Rules

  • Decisions

• Asian Domain Name Dispute Resolution Centre

  • Home Page

  • Supplemental Rules (.doc)

  • Decisions

• Arab Center for Dispute Resolution

  • Home Page

  • Supplemental Rules

  • Decisions

• Canadian International Internet Resolution Centre

  • Home Page

  • Supplemental Rules

  • Decisions

GigaLaw Blog Posts on the UDRP (Partial List):

• How Long Does a UDRP Case Take?

• The UDRP Applies to These Top-Level Domains

• These Countries Have Adopted the UDRP

• Where to Search UDRP Decisions

• Differences Between the UDRP and the URS (Summarized)

• 10 Differences Between WIPO and NAF

• Beware of Extra Fees in UDRP Proceedings

• How to Stay Informed About Domain Name Dispute Decisions

• How to Lose a UDRP Complaint: Don’t Support the Facts

• The Most Embarrassing Way to Lose a UDRP Complaint

• Why ‘Generic’ Domain Names are Inappropriate for UDRP Complaints

• The Rising Popularity of Canceling a Domain Name Registration in a UDRP Case

• How to Save $1,000 on the UDRP Filing Fee

• The Efficiency of Large UDRP Complaints

Comparing and Contrasting Domain Name Statistics at the Forum and WIPO

The Forum (formerly known as the National Arbitration Forum) recently released some statistics on its 2014 caseload for domain name disputes, and the data provides some interesting insights.

The Forum's news release states that the domain name dispute provider handled 1,836 cases last year under the Uniform Domain Name Dispute Resolution Policy (UDRP), involving 3,174 domain names. That averages out to 1.73 domain names per complaint.

By contrast, the World Intellectual Property Organization (WIPO) -- which released its statistics six months earlier -- remained the most active provider of UDRP services, handling 2,634 cases with a total of 5,591 domain names (or, 1.76 domain names per complaint).

Without providing data on the previous year, the Forum's news release states that the number of domain name filings was "steady" in 2014. In its recent Report of the Director General to the WIPO Assemblies, WIPO said it saw an increase of 2% in "cybersquatting case filings" last year (although it is unclear whether that increase applies only to the UDRP or also to all of the domain name dispute policies administered by WIPO, which includes services for many country-code top-level domains, or ccTLDs).

The Forum reported that trademark owners prevailed in UDRP disputes "92% of the time," which presumably takes into account cancellations as well as transfers. The Forum notes that this number rose from 88% the previous year.

WIPO provides more detailed reporting on case outcomes, but looking only at those that resulted in a full transfer, cancellation or denial, it appears as if complainants prevailed in 90.16% of the reported domain name disputes at WIPO.

The bottom line appears to be that WIPO again handled the largest number of UDRP complaints in 2014 but that the average number of domain names per complaint and the outcome remains about the same at these two largest domain name dispute providers -- with a "steady" or slight increase over the previous year.

Of course, we are already nearing the end of 2015, so it will be quite interesting to study the current year's domain name data as well, which will include a significantly higher number of disputes involving new gTLDs, as well as more filings under the Uniform Rapid Suspension System (which generally applies only to the new gTLDs).

Related GigaLaw blog posts:

• 10 Differences Between WIPO and NAF
• Domain Name Dispute Filings Rise as New gTLDs Launch
• Why the URS is (So Far) an Unpopular Domain Name Dispute Policy

Stark Reminders of the Very High Bar for a URS Dispute

As the Uniform Rapid Suspension System (URS) makes clear, this new domain name dispute policy "is not intended for use in any proceedings with open questions of fact, but only [for] clear cases of trademark abuse." Indeed, unlike the well-established Uniform Domain Name Dispute Resolution Policy (UDRP), which has a lower burden of proof, the URS explicitly sets a very high bar for a trademark owner: "clear and convincing evidence."

A pair of URS determinations involving a very well-known trademark makes clear just how high this bar really is -- and the decisions should serve as a warning to trademark owners that might want to reconsider whether (or, at least, when) the URS is an appropriate legal path to pursue.

Both of the decisions relate to the trademark NETFLIX, in two URS cases filed by Netflix, Inc., against separate domain name registrants. The NETFLIX trademark is quite popular for its association with video rental and video-on-demand services. Indeed, one tech site reported in a headline, "Netflix is now more popular than eating and sex."

Yet, in both URS cases -- involving <netflix.website> and <netflix.news> -- the trademark owner lost, allowing the registrants to keep their domain names.

For those unfamiliar with the domain name dispute system, the Netflix losses might seem stunning. And for those familiar only with the UDRP, the decisions against a well-known trademark owner might seem perplexing. But, a basic understanding of the URS and a simple reading of the determinations is enlightening.

To be clear, in both cases the examiner found that the disputed domain names were identical or confusingly similar to the NETFLIX trademark. But that conclusion addresses only one of the URS's three legal tests.

Passive Holding

In the <netflix.website> case, Netflix admitted that the registrant was not using the domain name, and the registrant somewhat confusingly said that he was "not the registered owner" of the domain name (despite a verification from the registrar). While the UDRP contains a well-established doctrine of "passive holding" that nevertheless can give rise to bad faith even where a domain name is not being used (emanating from the oft-cited Telstra Corporation Limited v. Nuclear Marshmallows decision), the examiner in the <netflix.website> case concluded: "I find that the evidence is not clear and convincing that the domain name is being used in bad faith." As a result, Netflix failed to prove all three elements of the URS and lost the case.

Fan Site

In the <netflix.news> case, decided by the same examiner, the registrant insisted that he intended to create a fan site using the domain name, "with news and updates on the Complainant’s service." The URS examiner obviously had suspicions about the truth of this statement, noting that it was "self-serving" and that "Respondent has failed to put into the record any facts which support his claim." Despite this, however, the examiner observed that the URS requires an examiner to reject a complaint if "genuine issues of material fact remain in regards to any of the elements." As a result, the examiner concluded: "Because this record raises, but does not provide adequate information to conclude whether or not Respondent has a legitimate right or interest to the domain name, I must find for the Respondent on this element."

Lessons Learned

To be clear, both of the issues in the Netflix cases -- passive holding of a domain name and a declared interest in creating a fan site -- are commonly raised in UDRP cases but (unlike the outcomes here) frequently result in decisions for trademark owners.

And, the passive holding fact pattern has arisen in multiple URS cases with determinations that favor trademark owners. Indeed, in another URS case also involving the NETFLIX trademark (and the domain name <netflix.video>), an earlier URS examiner issued a decision in favor of Netflix, writing: "Respondent’s current 'passive' use of the disputed domain name is another factor that supports a finding of the requisite bad faith."

So, how can the outcome in the <netflix.website> and <netflix.news> URS cases be justified? The answer lies in the "clear and convincing" burden of proof for URS proceedings as well as the significant limitations on trademark owners to argue their cases (including a minuscule 500-word limit).

As a result, the lesson is clear: Not all domain name disputes are appropriate for the URS, which creates a very high bar for trademark owners and important advantages for domain name registrants.

Differences Between the UDRP and the URS (Summarized)

 As new generic top-level domains (gTLDs) grow in popularity, the Uniform Rapid Suspension System (URS) is often an alternative and attractive option to the longstanding Uniform Domain Name Dispute Resolution Policy (UDRP).

The URS is certainly less expensive than the UDRP, and a decision is reached more quickly.

But, as I've written before, the URS has not gained much traction, in part because the remedy for a successful trademark owner is simply a temporary suspension of the disputed domain name. The UDRP, on the other hand, provides a more permanent (and sometimes more desirable) solution by allowing a transfer of the domain name.

The difference in remedies between the UDRP and the URS is not the only consideration for a trademark owner thinking about how to proceed. In many cases, for example, the URS is not even an option, give that it applies almost exclusively to the new gTLDs (and not to traditional TLDs such as the most popular .com).

So, in the interest of providing a quick overview of the important differences between the UDRP and the URS, I have prepared the following chart with brief summaries:

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