The Uniform Dispute Resolution Process (UDRP) established by the Internet
Corporation for Assigned Names and Numbers (ICANN) has attracted comment
from people ranging from specialists in the field to the average curious
mind wanting to be heard. In his comment, Oscar S. Cisneros while
acknowledging the advantages of setting up a dispute resolution process in
an age where internet is the most widely used form of conducting business
globally is concerned that the system is biased against domain owners.
According to Cabell, who taught a course on the UDRP in Harvard, this
could be due to the fact that the trademark owner gets to choose an
arbitrator from the list provided by ICANN. Obviously, there are just as
many comments rejecting that view.
Oscar Cisneros also mentions a variety of other disadvantages of the UDRP.
But the issue of “unfairness” reigns supreme and dampens the idea of the
UDRP. That being said, every new process put into place has its teething
problems and the UDRP is no different
The UDRP was formed in 1999. It is an online process where trademark
holders can bring complaints against domain names. Although it is neither
a court proceeding nor an arbitration, ICANN has the power to order the
deletion or transfer of domain names and the fact that a trademark owner
gets to choose an arbitrator. This has formed the basis of many arguments
alleging bias to trademark owners. However, according to a paper written
by M. Scott Donahey in response to a study held by Prof Michael Geist of
University of Ottawa the reason that complainants come out victorious in a
major chunk of these cases is because the rate of default judgments is
quite high. As with any form of litigation a default judgment would make
the plaintiff/applicant victorious. So is the case with UDRP cases. In
many cases the respondent doesn’t respond and therefore a judgment or a
decision is made in favor of the complainant. Donahey says that “the
distinguishing factor is not who selected the panelists but whether the
cases were default cases or contested cases”. A release by the
International Trademark Association titled The UDRP by All Accounts Works
Effectively Rebuttal to Analysis and Conclusions of Professor Michael
Giest in “Fair.com?” and “Fundamentally Fair.com” states that the UDRP was
designed for “clear cases of abusive registrations” and that complainants
are very cautious in bringing claims to the UDRP and when they do they
provide “compelling and substantial evidence of the respondents bad faith”
and therefore it should not surprise anyone that the complainants come out
victorious. The rebuttal goes on to mention that the UDRP has a lot of
features that are very favorable to respondents. For example, panelists
are asked to place judgment on the merits of the case even when the
respondent hasn’t responded and therefore not every default judgment
favors the complainant.
The UDRP is still a very new process and in my opinion it has been dealt
its share of blows. The kinks will only get ironed out once a precedent
starts to set. The process has been judged harshly and preconceived
notions make it all the more harder for it to prove itself as an effective
tool for trademark owners and domain name holders. I agree that the
process itself is not without problems, however writing it off as being
unfair and biased is a little premature. Also, if one looks at one of the
criteria to file a complaint one realizes that the policy really does try
to create fairness. It requires the domain name to be “confusingly
similar” to the complainants trademark. This leaves a wide area for the
respondent to disprove the complainant. Similarly it also gives the
trademark holders the avenue to bring forth complaints. The criteria is
broad without being obscure and encompasses the interests of both sides.
The connotation of bias possible could come from the fact that ICANN
intended the UDRP to be a process for trademark owners. Just because a
procedure is put into place for safeguarding the rights of vulnerable
groups does not automatically mean that the process is biased in favor of
that group. We need to wait a few more years before we can label the
process as being unfair and biased, we need to look at all the facets of
the policy and understand where the reasoning comes from before we can
write off a perfectly good policy and its perfectly good intention to not
serving justice.
One Response
After having read the comment, I would be inclined to say yes. Maybe the UDRP has been misunderstood. But another urgent question arises: Is the UDRP really necessary? The trademark owners and the domain name holders might as well bring all their disputes before the courts. They are traditionally regarded as a safe and competent organ of conflict resolution, and why not let the judges decide on the domain name disputes too?
To answer that question one should consider the fact that the internet is changing by the second. New ideas, new information, and new concepts are born; Radiohead releasing their new album to download, Facebook becoming a new social society, and students posting exam papers on an IP blog. Due to the nature of the internet, I find it crucial for trademark rightholders to have a skilled alternative – with the authority to delete domaine names – than spending years litigating a case. By the time they finish, the domaine name might even not exist anymore. Moreover, the trademark owners simply cannot afford to wait that long for a decision. They are risking their trademark loosing its distinctiveness while the litigation is ongoing. Time is money – even online.
The UDRP might be misunderstood, but I still think that the industry needs UDRP to solve their disputes simply because it is the best avaible solution. I am not saying that there is no room for improvement, but instead of spending time critizing the UDRP, experts should instead try to help it improve.
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