Since the creation of the UDRP procedure at the end of 1999, law practitioners have expressed their desire for a memorandum summarizing the consensuses among UDRP decisions. The main argument was based around the classical concept of legal certainty. The World Intellectual Property Organization was receptive and has started publishing official Overviews. The third issue was announced on May 23, 2017 (version 3.0), replacing the previous one published in 2011(version 2.0). During the past 6 years, more than 17000 UDRP decisions have been rendered. In the new Overview more than 1000 decisions have been examined against 380 previously, and more than 265 panels have been quoted as opposed to 180 in the previous edition. In total, the WIPO provides solutions to about 64 issues, as opposed to 2011 when only 46 issues had been examined. Hence, needless to say that there have been some significant changes that are worth examining.
1/ The consequences of the multiplication of TLDs
Indeed, many gTLDs have been created with the launch of the new gTLDs project by ICANN. The first cycle of applications opened in January 2012. After examination, the new gTLDs were allowed on the market in October 2013. A second wave of applications is announced around 2020.
To date, these new gTLDs were neglected in the appreciation of the 3 criteria which compose a UDRP complaint. It now appears they would be of importance concerning proof of rights or legitimate interests as well as registration and use in bad faith.
According to the Overview 3.0, they would become relevant when the TLDs are “descriptive of or relate to goods or services (…), a geographical region, or other term associated with the complainant”. In this event, the choice of TLD would allow parties to argue in their favour.
For example, the panel decided for the domain name <hugoboss.clothing> that the respondent had chosen his extension with the sole purpose of benefitting from the well-known HUGO BOSS clothes brand. The extension would have accentuated the confusion created by the respondent for that sole purpose. In this case, the respondent had no rights or legitimate interests in the domain name and had registered and used it in bad faith. the panel ruled in favour of a transfer. (WIPO, n°D2014-2022, Hugo Boss Trade Mark Management GmbH & Co. KG, Hugo Boss AG v. Whois Agent, Whois Privacy Protection Service, Inc. / Tiagra Investments, Christopher Murphy).
The same observations are relevant for IDNs (International Domain Name) which have recently been the subject of great developments. Thanks to them, a registrant can now register a domain name that includes non latin letters or symbols. Many countries have taken the opportunity to register the extension of their country, as Qatar did for example. Panels are now taking these translated domain names into account while rendering decisions in UDRP proceedings.
2/ What evidence is relevant?
A second issue, which had remained unsolved by the Overview 2.0 to date,, was dealt with in the new version. Indeed, paragraph 4(c) of the UDRP principles lays down3 scenarios susceptible of allowing a respondent to demonstrate his rights and legitimate interests in the use of a domain name. However, there is no indication as to the type of evidence that panels would consider sufficient in order to demonstrate such scenarios. As of now, the Overview 3.0 sets recommendations to parties and has also annexed a selection of relevant UDRP decisions (WIPO Overview 3.0, para.2.5).
Thus, the OMPI lists 3 main factors that are the “nature of the domain name” the “circumstances beyond the domain name itself” and “commercial activity”. All elements are both defined and illustrated for educational purposes.
Concerning the second factor, it is said that panels look “at the domain name and any additional terms appended to it (…), panels assess whether the overall facts and circumstances of the case support a claimed fair use”. Relevant circumstances would be, for example, looking at whether the respondent has a tendency to register domain names including trademarks, or whether internet users would be misled into believing that the website belongs to the complainant, or yet again whether the domain name is used in relation to bona fide activities.
3/ Enforcement of UDRP decisions
A third issue concerns procedure. It is the first time that the WIPO raises the question of the enforcement of UDRP decisions. The Overview 3.0 reminds us that the WIPO’s involvement ends with the notification of the decision to parties and to the registrar, the latter being subject to a contractual obligation with ICANN to execute the decision. The registrar can be held liable.
In this way, if a complainant is faced with difficulties ensuring enforcement of its decision, they can now contact ICANN. A procedure exists to ensure compliance with the decision.
4/ The relationship between the URS and UDRP procedures
The URS procedure was created to handle disputes concerning new gTLDs. As the UDRP procedure can also be used to settle such disputes it is possible for a complainant to use both procedures in order to try and achieve their purpose. The complainant may hesitate as to which procedure should be used. The WIPO specifies that a complainant can file a UDRP complaint after a URS complaint, and even while a URS complaint is ongoing, but, it is not possible to open a URS complaint if a UDRP procedure is ongoing. The reason for this is that the standard of proof differs in both procedures. In URS procedures, the complainant must demonstrate the facts by “clear and convincing evidence”, while panels do a “balance” in UDRP procedures (WIPO, D2016-1172, SRAM, LLC v. Li Qing).
5/ WIPO recommendations and reminders
Finally, WIPO warns that the Overview is destined to parties and is not mandatory for panels to follow. Panels are free to decide regarding the facts of the case in a way they deem fair. Parties themselves cannot simply copy the content of the Overview without adding any elements to their complaint.
In conclusion, the new version published by WIPO is helpful to practitioners by shedding new light on the procedures. This procedure is still complex. The drafting of a UDRP complaint requires the assistance of a specialized attorney. Dreyfus & associés has been specialized in this field for years, and will be able to provide you the advice and assistance needed each step of the procedure, which has gotten more complicated over the years.