WIPO Conference "As the UDRP turns 20: looking back, looking ahead"

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Jane Lambert

When I was a graduate student at UCLA in the early 1970s I wanted to consult a book. I learned that it was not in our library but that it might be at Berkeley.  I filled out a simple form which someone typed into a keyboard,  Not long afterwards I received a reply.  At the time I was not very impressed because the same result could have been achieved by telex or even telegram. Since then I have learned about DARPA and discovered that some of the early work on what is now the internet was carried out at UCLA at about the time I was there.  It has occurred to me that I may have sent one of the world's first emails.

About 15 years later I was definitely sending and receiving emails because I had subscribed to Telecom Gold. I had installed a dedicated telephone line to my chambers at 72 Bridge Street in Manchester and bought a dial-up modem which I connected to my Amstrad 8256 computer.  The modem was very temperamental but it worked.  I even received some instructions through Telecom Gold from John Kay who was Vice-Chair of the Northern Branch of the Society for Computers and Law which I had founded in 1985 and chaired for four years.

As Chair of the Northern Branch and a Council member of the Society for Computers and Law, I was invited to join the British Computer Society by Ron McQuaker.  Through my membership of the BCS, I received a copy of Computing every week and it was in that newspaper that I learned about the work of Sir Tim Berners-Lee in CERN.  I also met many of the pioneers of computer law such as Professor Bryan Niblett, John Morris of the National Computing Centre and Simon Chalton of Dibb Lupton in Leeds.  Prof Niblett was a great exponent of arbitration for the resolution of computer supply disputes and he encouraged me to join the Chartered Institute of Arbitrators.

In or about 1995 the Institute held a seminar in London on arbitration of intellectual property disputes with the World Intellectual Property Organization ("WIPO")   One of the speakers at that seminar was Dr Francis Gurry who had written a rather good book on the law of confidence.  We exchanged business cards and he put me on the WIPO mailing list.  It was from the WIPO's bulletins that I learned of the establishment of an Arbitration and Medication Centre within the WIPO.

From the middle of the 1990s businesses and governments started to take an interest in Sir Tim's work on the world wide web. Some of them even began to create websites.  These were identified by strings of numbers which were difficult to memorize.  The solution was to represent those numbers mnemonically in Latin characters and Arabic numerals. These had to be registered centrally so that all machines on the network could identify the precise location of the resource.  We call those mnemonics "domain names".

In the early days, registration of domain names was carried out informally by academic institutions on a first-come-first-served basis.  This was open to abuse by speculators who registered the names of well-known companies with whom they had no connection as domain names and offered to transfer those domain names to the business owners at a substantial ransom.  The courts offered a remedy of sorts against these speculators through actions of passing off and trade mark infringement (see British Telecommunications Plc and others v One In A Million Ltd and others 1998] Masons CLR 165, [1997-98] Info TLR 423, [1998] ITCLR 146, [1999] WLR 903, [1998] 4 All ER 476, [1999] 1 ETMR 61, [1999] 1 WLR 903, [1998] EWCA Civ 1272, [1999] ETMR 61, [2001] EBLR 2, [1999] FSR 1). The problem with going to court is that litigation is expensive, time-consuming and uncertain.  Many of those speculators were in countries without robust trade mark or passing off laws.  Furthermore, litigation did not always go in favour of the claimant even in countries with comprehensive intellectual property laws (see Prince Plc v Prince Sports Group Inc. [1998] FSR 21).

A better solution came with the privatization of the domain name system following a memorandum of understanding between the US Department of Commerce and the Internet Corporation for Assigned Names and Numbers ("ICANN") of 25 Nov 1998. ICANN was and is a not-for-profit corporation under the laws of California representing internet stakeholders which was entrusted with the task of administering the domain name system.  It reserved to itself responsibility for regulating generic domain names such as ".com" for businesses, ".org" for organizations and ".net" for networks.

ICANN invited private companies from all over the world to become registrars of generic top-level domain names subject to certain conditions. One of those conditions was that every applicant for the registration of a domain name had to represent and warrant that to the applicant's knowledge the registration of the domain name would not infringe upon or otherwise violate the rights of any third party.  Every registration agreement had to incorporate standard terms for the resolution of disputes known as the Uniform Domain Name Dispute Resolution Policy ("the UDRP").

Paragraph 4 (a) of that Policy requires applicants to submit to a mandatory administrative proceeding if a third party complains that:

(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) the registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
If the complaint is upheld, the registrar has to transfer the disputed domain name to the complainant or cancel the registration.  If it fails to do so the registrar risks losing its right to register generic top-level domain names which can be very lucrative indeed.

Under the UDRP, ICANN has the right to appoint dispute resolution service providers to resolve disputes between trade or business name owners and domain name owners.  Currently, it has appointed the Arab Centre for Dispute Resolution, the Asian Domain Name Dispute Resolution Centre, the Canadian International Internet Dispute Resolution Centre, the Czech Arbitration Court Arbitration Centre for Internet Disputes, the National Arbitration Forum and the WIPO. Each of those service providers has a panel of experienced IP lawyers and other experts to determine disputes under the UDRP.  The very first domain name dispute to have been resolved under the UDRP was Case No. D99-0001 World Wrestling Federation Entertainment, Inc. v. Michael Bosman which was decided by Mr Scott Donahey on 11 Jan 2000.

For the trade mark or business name owner, the UDRP and similar schemes for the resolution of country code domain name disputes has a number of advantages.  First, of all it is quick.  Disputes are resolved within weeks of the issue of proceedings compared to months or even years between the issue of a claim form and judgment.  Secondly, it is cheap.  The WIPO charges US$1,500 to resolve a dispute over a single domain name.  Finally, it is conclusive.  The registrar implements the panellist's decision almost immediately.

I have been a member of the WIPO panel since 2003.  My first case was between the Microsoft Corporation and TheBizz Int over the domain name in April 2004 (see Case No. D2004-0124 Microsoft Corporation v. TheBuzz Int). Every year the WIPO holds a one-day conference for panellists at its head office in Geneva. I attended my first conference in 2005 and I described it in Needled in Geneva on 18 Oct 2005.  I have been coming every year since then.

The 2019 annual conference took place on 21 Oct.  Its title was:  "As the UDRP turns 20: looking back, looking ahead." Because this was the 20th anniversary of the UDRP, the WIPO invited brand owners, trademark practitioners, party counsel, registrars, administrators, academics, and other domain name and internet stakeholders to join the panellists at this event.  

The meeting started at 09:00 with a short videotaped address from Dr Gurry. He discussed the early history of the internet and how the UDRP came to be adopted. Gonzalo Bleda, Legal Officer, Internet Dispute Resolution SectionTy Gray, Head, Laws and Treaties Database Section, WIPO Global Databases Division read out some statistics. Some 45,000 domain name disputes have been resolved under the UDRP. The WIPO is by far the largest domain name dispute resolution provider. The country with the most complainants is the USA but it also has a lot of respondents. Many complaints also come from France, Germany and the UK. 

Andrew Lothian of Demys Limited and Tony Willoughby, an IP consultant, took us through paragraph 4 (a) of the UDRP, reminded us of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions and discussed how panellists had interpreted and applied the policy in the past. They recalled an interview between the complainant Jeanette Winterson and Mark Hogarth which was reported in The Times (see Case No. D2000-0235 Jeanette Winterson v. Mark Hogarth 27 May 2000):

"Hello, is that Mark Hogarth?
Speaking
So why do you want to be me? This is Jeanette Winterson.
You�re the first author who has rung me up. I have had a lot of hate mail though which is really distressing.
Don't you think we might be distressed?
You hadn't registered it yourself.
....
So why have you done this?
To make money basically.
...
What are you going to do with the names?
Well, if the writers don't want them, maybe I'll exploit them myself, set up a website or pass it on to somebody else to set up. It will be good for writers. It will sell their books.
Suppose I want to sell my own books? What right do you have to 3% of a writer's earnings?
It is only for one year.
So what do you want from me, Mark?
I haven't really thought about it yet."

The next speakers, Robert Badgley of Karbal Cohen Economou Silk & Dunne LLC and Luca Barbero of Studio Barbero recited a poem they had composed about the UDRP. It was hilarious  They both have the build and demeanour of opera singers. Their performance might have been even more memorable had they sung their ditty.

Easily the most interesting talk came from Aimee Gessner, Senior Legal Counsel to the BMW Group. BMW makes and sells its cars and motorcycles in a lot of countries and has therefore registered a lot of trade marks.  It also does business as a bank, licenses merchandise and provides a lot of services. Although it has a massive legal budget its resources are not unlimited. It was interesting to learn about the sort of cases it pursues and those it leaves alone,

The morning session was rounded off by Ingrida Kariņa-Bērziņa of COBALT Law and Charlotte Spencer, Legal Officer, Internet Dispute Resolution Section who discussed the various country code dispute resolution policies that exist.  Most of those policies are based on the UDRP but there are some differences. For instance, the third probandum can be satisfied if a domain name is registered or used in bad faith. A few countries such as the UK provide for mediation and appeals.

The morning session could be characterized fairly as looking back at the UDRP's achievements over the last 20 years. In the afternoon, the conference looked forward.  Erik Wilbers, the Director of the Arbitration and Mediation Centre, announced that the UDRP was likely to be reviewed and maybe revised. Possibilities include getting rid of the requirement in paragraph 4 (a) (i) that similarity, should be confusing, removing the requirement that registration and use should be in bad faith, introducing a mediation and an appeal stage in the procedure and permitting a successful party to recover its costs. There was some support for dispensing the registration and use in bad faith requirement but the general consensus was to leave things as they are.  Many doctrines such as "passive holding" as an act of bad faith have been developed through the case law. There is no reason why panellists could not adapt to new challenges in the way that they had in the past.

As it is very difficult if not impossible to seek redress from a panellist's decision in the courts in England and countries with a similar legal system, I argued that there was a case for an appellate tribunal to correct the occasional injustice.  The idea of the unsuccessful party contributing to the successful party's costs was rejected by mosy as unenforceable but it seemed to me that such a sanction might be useful if a registry has behaved badly by, for example, registering domain names that infringe well-known marks without justification or unjustified use of a privacy service.

After the meeting, the WIPO offered us cocktails and a last chance to network before scattering to different parts of the world.  I learn a lot from these meetings not only about domain names but also about IP law and practice generally. Over the years I have gathered a lot of contacts and made more than a few friends.

Anybody wishing to discuss this article or domain names generally may call me on +44 (0)20 7404 5252 during office hours.  They can also consult my NIPC Brandin blog or send me a message through my contact page.

Post Script
The WIPO has also published an article on the conference entitled WIPO Conference – As the UDRP Turns 20: Looking Back, Looking Ahead (24 Oct 2019).  Apparently, 390 persons attended the conference - 140 domain name dispute resolution panellists and over 250 members of the public. The WIPO articles has some photos of Dr Gurry's video at the start of the day and a group photo at the end.