keeping the u in the udrp jane mutimear bird & bird [email protected]
TRANSCRIPT
Why “U” is good
Uniformity means
predictability/certainty
sense of fairness
lower costs
Different types on non-uniformity
Differences between providers of the UDRP
in rules and policy
in approach to cases - certainly between
panelists
Differences between decided cases
application of different law
different decisions on similar facts
Differences with country code dispute procedures
Differences between providers
WIPO, NAF, [eResolution], CPR, ADNDRC
Percentage win to complainant:
WIPO - 82.2%
NAF - 82.9%
eRes - 63.4%
CPR - 59.1% statistics from Fair.com? Prof Geist
Why is there a difference?
Does forum-shopping lead to biased results?
Unlikely. Panelists independent. Few rely on UDRP
as source of income.
Non-uniform case load distribution?
Possible - top 6 NAF panelists decided 53%
Different interpretation of rules
Possible. Does burden of proof shift to respondent to
prove positive case?
Number of default cases - probable (Scott Donahey)
Differences between cases
Most obvious with “difficult” cases - which are on the
borderline of what UDRP is meant to cover
eg personality cases
contrast JimiHendrix.com (respondent claimed
ran fan site and domain name preceded tm - not
accepted. Evidence of speculation).
With BruceSpringsteen.com (respondent ran
unofficial site, had 100s of other registrations.
Held legitimate use - not blocking)
Differences between cases
Sucks decisions (or decisions which suck?)
Seen as issue of free speech - not really.
Failure to overcome first hurdle of confusing similarity
Many decisions decided on basis that non-English
speakers would not know derogatory meaning of
“sucks”.
Should we apply this principle when judging
confusing similarity with IDNs?
Sucks cases
Dixonssucks.com “The first and immediately striking element in the Domain Name
is the Complainant's name. Adoption of it in the Domain Name
is inherently likely to lead some people to believe that the
Complainant is connected with it. Some will treat the additional
"sucks" as a pejorative exclamation and therefore dissociate it
after all from the Complainant; but equally others may be
unable to give it any very definite meaning and will be confused
about the potential association with the Complainant”
Sucks cases - Wal-martsucks.com
“No reasonable speaker of modern English would find it likely that
Wal-Mart would identify itself using the Wal-MartSucks.com name.
Complainant had no evidence of any potential confusion”
“The panel understands the phrase ‘identical or confusingly similar’ to
be greater than the sum of its parts. The policy was adopted to
prevent cybersquatting. This describes respondent’s behavior. Thus
the panel concludes that a domain name is identical or confusingly
similar to trademark for purposes of the policy when the domain name
includes the trademark or a confusingly similar approximation,
regardless of the other terms in the domain name.”
ie failed first element but still won.
Walmartcanadasucks.com v wallmartcanadasucks.com
Walmartcanadasucks.com
confusingly similar, no legitimate interest and
bad faith
wallmartcanadasucks.com
not confusingly similar as presence of “sucks”
indicates not site of the trade mark owner.
Differences between cases
Section 15(1) Rules of Procedure:
“A panel shall decide a complaint on the
statements and documents submitted and in
accordance with the Policy, these Rules and any
rules or principles of law that it deems
applicable”
Reliance on UDRP precedent can indirectly apply law
which may not be applicable (paper to be published by
Wotherspoon and Cameron at fasken.com)
Application of local law
Although may not strictly be needed under UDRP at
present (if explanations under the rules expanded) may
help with IDNs
Local laws have had to deal with whether a translation or
transliteration of a trade mark infringes the trade mark.
Panelists will need to draw on this experience in
determining confusing similarity.
Panelist will need to determine which is the appropriate
law where eg Japanese trade mark and Chinese
registrant using similar text.
Country code domains
Some adopted UDRP
Some implemented own, very different LDRPs
Some implemented UDRP variations
Many in the process of looking at possibility of LDRP
WIPO Best Practices [minimum practices] guidance
good start
Good to have a basic international standard with
ccTLD specific variations
Making the UDRP more U?
Enhance the examples given in the rules. Eg Sucks
sites could be dealt with.
Consider whether with enhancement s15(1) could be
abolished - probably not with need to deal with IDNs.
Explain when the burden of proof shifts to respondent
Making the UDRP more U
Consider introduction of appeal
Never get true case law development with flat
structure
Costs - complainant pays if loses?
Ensure that IDN registrations (whether within the
ICANN structure or outside) have a dispute resolution
procedure which adhere to min standards
