UDRP reform - WIPO and ICA form project team

The Court of Arbitration of the World Intellectual Property Organization (WIPO) and the Internet Commerce Association (ICA) are joining forces: both organizations have put together a project team to examine reforms to the UDRP.

On October 24, 1999 - exactly 25 years ago to the day - the Internet administration ICANN introduced the Uniform Domain Name Dispute Resolution Policy (UDRP) to resolve international domain name disputes. Trademark owners were convinced by the UDRP right from the start, as it was quick (it usually only takes a few weeks from the filing of a complaint to the decision), inexpensive (fees start at US$ 1,500) and effective (if the trademark owner wins, the disputed domain is transferred to him, which is only possible in exceptional cases under German law). On December 2, 1999, the World Wrestling Federation Entertainment Inc. applied for the first UDRP proceedings in the dispute over the domain worldwrestlingfederation.com; on January 14, 2000, the arbitration court decided to transfer the domain. Since then, over 70,000 further proceedings have followed. Even though there have been a number of minor updates over the years, the substantive core of the UDRP is still based on the regulations from 1999.

This could change soon. In mid-October 2024, WIPO and the ICA, which primarily represents the interests of domain traders, jointly announced that they were working on a reform of the UDRP. The main aim of the project is to maintain the UDRP as an efficient and predictable out-of-court dispute resolution mechanism for clear-cut trademark disputes. However, there does not seem to be too much need for change; the press release states that any recommendations for reform must be underpinned by a proven, compelling need for change; case-specific or anecdotal shortcomings of the UDRP, on the other hand, would not justify a comprehensive revision. The project team, coordinated by Brian Beckham (WIPO) and Zak Muscovitch (ICA), consists of experts and UDRP stakeholders from around the world, including Sarah Deutsch (ICANN), Paul Keating (lawyer) and Nat Cohen (domain investor). The project team has already held a number of discussions, including with ccTLD registries such as Nominet, registrars (Tucows, Namecheap, GoDaddy), UDRP arbitrators (Forum, CAC and CIIDRC), proponents of UDRP reform (Georges Nahitchevansky and Steve Levy) and lawyers specializing in representing domain owners (Gerald Levine and John Berryhill). The very fact that WIPO is including domain investors in its discussions shows not only that the industry has matured, but also that the importance of secondary trading in domains will continue to grow.

The project is independent of ICANN and therefore runs outside the usual policy processes. The review is limited to the existing trademark law framework of the UDRP and is based on the practical experience of panelists, legal advisors, parties and providers. A draft report is currently being prepared and is expected to be made available to a wider public in early 2025. The final report will then be forwarded to ICANN for consideration in any UDRP review.

The WIPO announcement can be found at:
https://www.wipo.int/amc/en/domains/res ... eview.html

The number of initiatives to reform the Uniform Domain-Name Dispute Resolution Policy (UDRP) has grown: the high-caliber UDRP Exploratory Group is planning improvements to the domain arbitration procedure, but the core of the existing regulations is to remain untouched.

In order to resolve cross-border conflicts in domain disputes, the Internet administration ICANN introduced its own arbitration rules on October 24, 1999 with the UDRP. Since then, the UDRP has long since established itself, as it is fast (it usually only takes a few weeks from the filing of a complaint to the decision), inexpensive (fees start at US$ 1,500) and effective (in the event of victory, the trademark owner receives the disputed domain, which is only possible in exceptional cases under German law). Even though there have been minor updates over the years, the substantive core of the UDRP is still based on the 1999 regulations. Some time ago, US lawyer Gerald M. Levine, author of the book “Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting”, launched a weekly telephone conference in which current UDRP decisions are reviewed and practical issues are discussed. The “UDRP Exploratory Group” initiative has emerged from this. The regular participants include Zak Muscovitch, Nat Cohen, Steve Levy and Georges Nahitchevansky, four other renowned UDRP specialists who have already been involved in numerous UDRP proceedings.

Their common goal is to develop a substantively limited set of proposed amendments that have a high likelihood of acceptance and benefit both complainants and respondents. The proposals are still in progress; however, there are already first drafts of recommendations for improvement that leave the core of the UDRP untouched. For example, it is proposed to introduce a limited appeal; the review would - similar to the appeal under German civil procedure law - be limited to errors of law in the first instance, and decisions would always be made by a three-judge panel. To prevent the risk of “forum shopping”, it is also proposed that ICANN provide a “Companion” that offers a uniform approach to problems that frequently arise in the UDRP, incorporates the views of all arbitration tribunals and is available to all parties involved, i.e. a kind of standard commentary that serves as a guide for practitioners. It is also being discussed whether the domain registrar should be involved in the service of a notice of appeal, as the domain holder places more trust in him than in an arbitration tribunal with which he is not yet familiar; this should prevent a domain holder from inadvertently ignoring the UDRP procedure. On the other hand, the introduction of financial penalties against cybersquatters is expressly rejected - they would simply not be enforceable; a ban on further domain registration could also be easily circumvented. There are also some procedural suggestions for improvement; these include uniform and clear rules for supplementary submissions, which are regularly not provided for in the UDRP. On the other hand, withdrawal of a complaint should only be permitted at the discretion of the arbitration tribunal; this is intended to prevent the complainant from being able to avoid “reverse domain name hijacking”.

It remains to be seen whether the proposals of the UDRP Exploratory Group will prevail. However, efforts to create a modern UDRP are increasing. The Court of Arbitration of the World Intellectual Property Organization (WIPO) and the Internet Commerce Association (ICA) have also joined forces and put together a project team in autumn 2024 to examine reforms. The project team has held a number of discussions, including with ccTLD registries such as Nominet, registrars (Tucows, Namecheap, GoDaddy), UDRP arbitrators (Forum, CAC and CIIDRC) and lawyers specializing in representing domain owners (Gerald Levine and John Berryhill). The very fact that WIPO is including domain investors in its discussions shows not only that the industry has matured, but also that the importance of secondary trading in domains will continue to grow.

Further information can be found at:
https://udrp.group/