WHAT TYPES OF DISPUTES AREN’T SUBJECT TO UDRP ARBITRATION?

UDRP arbitrations focus solely on disputes that meet all of the following criteria:

1. The domain name is identical or confusingly similar to trademarks or service marks to which the complainant has rights;
2. The respondent has no rights or legitimate interests in respect to the domain name; and
3. The domain name is registered and is being used in bad faith.

The complainant has the burden of proving all of the above three elements.

The UDRP Policy was implemented to address abusive cybersquatting – “squatting” on a piece of virtual property, a domain name, to which the respondent doesn’t have any right (see “Basic Trademark Principles Apply” below.) Specifically, ICANN adopted the policy in order to give trademark owners a quick and inexpensive method for obtaining possession of domain names, which were registered for improper purposes. The rationale behind the simplified UDRP proceeding involves XCompany suing someone who registered a domain name containing the company name, such as XCompany.com with the intent to sell that domain name to XCompany at a huge price, or to confuse customers into thinking that when they go to XCompany.com, they are visiting XCompany’s official website.

The UDRP Policy was not intended to address contractual or other business disputes between parties with a pre-existing relationship. Many UDRP complainants have lost because they tried to litigate business disputes through the UDRP process.¹ Likewise, partnership disputes are usually not appropriate for UDRP resolution.² The same is true of employment disputes.³

Moreover, UDRP proceedings are decided on the papers. Because the UDRP panelists do not hear live testimony, they are not as well-equipped to get to the bottom of complex factual patterns or to judge credibility as regular arbitrators or judges. For that reason, when the facts are hotly disputed and/or complex, UDRP panels may rule against the complainant on the grounds that UDRP arbitration is not the appropriate forum [See, e.g., Love v. Barnett, FA 944826 (Nat. Arb. Forum May 14, 2007)]:

[W]hen the parties differ markedly with respect to the basic facts, and there is no clear and conclusive written evidence, it is difficult for a Panel operating under the Rules to determine which presentation of the facts is more credible. National courts are better equipped to take evidence and to evaluate its credibility.

First Nationwide Exchange, Inc. v. Reskyu, FA 956937 (Nat. Arb. Forum May 24, 2007) noted:

In 1999, the World Intellectual Property Organization (“WIPO”) produced a report in which it noted that good faith disputes between competing right holders or other competing legitimate interests, over whether two names were misleadingly similar, would not fall within the scope of the UDRP.

CHOOSING THE UDRP ARBITRATOR

The following entities provide UDRP arbitration services:⁴

• The National Arbitration Forum.
• World Intellectual Property Organization.
• Asian Domain Name Dispute Resolution Centre, with offices in Beijing, Hong Kong and Seoul.
• The Czech Arbitration Court.

Unlike civil arbitration or federal or state court litigation (in which plaintiff’s counsel must file suit and try the case in the specific court where jurisdiction and venue lie – in other words, where the trier of act is), UDRP proceedings are decided solely on the pleadings. So the location of the arbitrators doesn’t much matter.

However, American attorneys litigating a UDRP dispute involving a .com, .net or .org domain name are clearly going to file the arbitration with the national Arbitration Forum or World Intellectual Property organization unless there is a very specific reason to go elsewhere.⁵

Complainant can specify a panel of either one or three arbitrators. If you choose a three-arbitrator panel, then you generally can request three specific panelists. Counsel for complainant should study the available panelists to decide which UDRP provider has the most appropriate panelists and which specific panelists to request. You can search WIPO’s panelists at http://www.wipo.int/amc/en/domains/panel.html#1 and NAF’s athttp://domains.adrforum.com/panel.aspx.

TRAP FOR THE UNWARY

There are very specific rules concerning submission of the UDRP complaint and the response. Each UDRP provider has its own “supplemental rules” providing specific details particular to that provider, in addition to ICANN’s policies. The response should be submittedboth by email and by mail or online. If you don’t submit in both ways, your response may be rejected and your client may be defaulted, which is in the panel’s discretion.⁶

BASIC TRADEMARK PRINCIPLES APPLY

A basic understanding of trademark law is important to UDRP disputes. In the United States, unlike many other countries, the first to use a trademark in commerce (and not the first to submit a trademark application or to obtain a trademark registration) usually has senior rights to the trademark. Also, domain names generally do not confer any intellectual property rights whatsoever. {See generally http://www.examiner.com/x-11931-Law-Examiner%7Ey2009m7d14-Domain-names-versus-trademarks.]

Other trademark law principles can control the outcome of the dispute as well. For example, the UDRP complainant may have used the trademarks years before respondent’s domain name was registered, but still lose because the trademark is deemed “generic” (simply naming the products or services offered), and thus not unworthy of trademark protection.

CONCLUSION

UDRP arbitrations are a quick and inexpensive way to resolve most domain name disputes. They are decided on the papers, and decisions are made months or years before a civil trial can be held. Complainant’s counsel should carefully choose the UDRP provider (if a three-member panel is desired, carefully select the panelists) and focus on proving the three elements of a UDRP case, without throwing in extraneous facts.

Respondent’s counsel should focus on complying with the specific UDRP procedure set forth in the provider’s supplemental rules; then rebut each of the three elements on which the complainant bears the burden of proof.

1. Alexander Floum practices intellectual property law in Walnut Creek. Starting out at a large, international law firm, Alex is the founding president of the Intellectual Property Section of the Contra Costa County Bar Association, and a former adjunct law school professor at Golden Gate School of Law. Additionally, Alex writes the Law Examiner column for Examiner.com.

FOOTNOTES

1See, e.g., Everingham Bros. Bait Co. v. Contigo Visual, FA 440219 (Nat. Arb. Forum Apr. 27, 2005) (“[T]he Panel finds that this matter is outside the scope of the Policy because it involves a business dispute between two parties. The UDRP was implemented to address abusive cybersquatting, not contractual or legitimate business disputes.”); Fuze Beverage, LLC v. CGEYE, Inc., FA 844252 (Nat. Arb. Forum Jan. 8, 2007). (“[T]he Complaint before us describes what appears to be a common-form claim of breach of contract or breach of fiduciary duty. It is not the kind of controversy, grounded exclusively in abusive cyber-squatting, that the Policy was designed to address.”); Frazier Winery LLC v. Hernandez, FA 841081 (Nat. Arb. Forum Dec. 27, 2006) (holding that disputes arising out of a business relationship between the complainant and respondent regarding control over the domain name registration are outside the scope of the UDRP Policy).

2See, e.g., Thread.com, LLC v. Poploff, D2000-1470 (WIPO Jan. 5, 2001) (panel refused to transfer the domain name, stating that the Policy did not apply because attempting “to shoehorn what is essentially a business dispute between former partners into a proceeding to adjudicate cybersquatting is, at its core, misguided, if not a misuse of the Policy”).

3See, e.g., Latent Tech. Group, Inc. v. Fritchie, FA 95285 (Nat. Arb. Forum Sept. 1, 2000) (panel held that a dispute concerning an employee’s registration of a domain name in his own name and his subsequent refusal to transfer it to his employer raised issues of breach of contract and breach of fiduciary duty that were more appropriately resolved in court, not before a UDRP panel).

4The International Institute for Conflict Prevention and Resolution and eResolution were formerly UDRP providers, but are no longer accepting new UDRP complaints. See http://www.icann.org/en/dndr/udrp/ former-providers.htm.

5Country-specific domain names may or may not follow UDRP procedures. You will need to check for the specific domain name. For example, .nu (Niue), .tv (Tuvalu) and .ws (Samoa) follow UDRP procedures, but many country-specific registrars don’t.

6 See, e.g., J.W. Spear & Sons PLC v. Fun League Mgmt., FA 180628 (Nat. Arb. Forum Oct. 17, 2003) (finding that where respondent submitted a timely response electronically, but failed to submit a hard copy of the response on time, “[t]he Panel is of the view that given the technical nature of the breach and the need to resolve the real dispute between the parties that this submission should be allowed and given due weight”); Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) (holding that the respondent’s failure to submit a hard copy of the response and its failure to include any evidence to support a finding in its favor placed the respondent in a de facto default posture, permitting the panel to draw all appropriate inferences stated in the complaint).