UDRP: How useful is it?
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a contract-based framework designed to facilitate the resolution of internet domain-name disputes. Established and policed by the Internet Corporation for Assigned Names and Numbers (ICANN), it is a non-national system which, because of the nature of domain-names, has proven very important in the resolution of trademark disputes.(1) In order to register a domain-name in any of the domains that follow the UDRP, the registrar must first sign a contract: an agreement that the domain-name “…will not infringe upon or otherwise violate the rights of any third party” and to participate in an arbitration-like proceeding if a claim is brought against the individual by any third party.(2) The UDRP currently applies to the majority of key top-level domains including .com, .org and .net, as well as many country code domains. Thus, whilst it is ‘soft law’, the UDRP can be seen to have real global reach. It begs the question then, in an age wherein intellectual property protection has struggled to come to terms with the emergence of digital media unconfined by territory or borders, is this form of ‘unconventional’ lawmaking the answer?
As it currently stands, however, the answer to this seems to be that it is probably not. The UDRP still has numerous flaws, for example; it is weighted heavily in favour of trademark owners who, because of the resources at their disposal, can raise disputes at will, and if the complaint fails, raise another. Furthermore, the importance of any judgment in UDRP proceedings is limited by the fact that in many jurisdictions the decision of the UDRP administrative panel can ultimately be overturned by the national courts. (3) In the US this falls under the Anticybersquatting Consumer Protection Act (ACPA).(4) Indeed, there have been a number of instances wherein US courts have heard appeals against UDRP decisions. Moreover, since the UDRP was introduced in 1999, the purchasing of domain-names has continued to evolve and it is now common for individuals or companies to buy large portfolios of domain-names. In this regard then, these individuals can claim they were unaware of any trademark infringement when purchasing these portfolios and as such, the UDRP can be challenged.
This is not to say the UDRP is without merit: it is a policy with true international scope, and one that has proven successful, most notably in high profile cases such as that of Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com”. (5) It represents a policy born of necessity and has proven a key tool in counteracting the emerging IP threat of cybersquatting (the registering of known trademarks as domain-names with the sole intent of later selling the domain-name to the trademark owner for a profit).
To conclude, while the UDRP can be seen as successful, cost effective and wide-reaching in many ways, ultimately, because of its numerous limitations – most significantly that it can be overturned by national courts – the importance of this ‘soft law’ is debatable. As commentators such as Yu suggest, however, a ‘hardening’ of this law could prove more effective.(6)
(1) Sheldon W Halpern, Craig Allen Nard, Kenneth L Port, Fundamentals of US Intellectual Property Law. Copyright, Patent, Trademark, (2010) p.377
(3) Paragraph 4(k) http://www.icann.org/en/dndr/udrp/policy.htm
(6) Peter K Yu, Intellectual Property and Information Wealth: issues and practices in the digital age, (2007), p.5