Back in April, I published a post explaining the push within the ICANN community to review, and potentially reform, the Uniform Domain Name Dispute Resolution Procedure (UDRP). On Wednesday, an article in World Trademark Review reported that ICANN has published a report asserting that a full-scale review of the UDRP is not recommended.
 
This comes as hugely positive news for certain constituencies, including many trademark owners and UDRP providers, especially the World Intellectual Property Organization (WIPO). Earlier this year ICANN hosted a webinar to discuss the topic of UDRP review, and the majority of participants raised strong opposition to the notion.

Over the past few months, the topic of reforming the Uniform Domain Name Dispute Resolution Procedure (UDRP) has garnered discussion and debate among the intellectual property community and within ICANN. In May of last year, ICANN’s Registration Abuse Policies Working Group (RAPWG), a division of the Generic Names Supporting Organization (GNSO), recommended that a Policy Development Process be initiated by requesting an Issues Report to investigate the current state of the UDRP. Specifically, the RAPWG advised that the investigation should focus on two issues (direct quote): 
 
1. How the UDRP has addressed the problem of cybersquatting to date, and any inefficiencies/inequalities associated with the process
2. Whether the definition of cybersquatting inherent within the existing UDRP language needs to be reviewed or updated
 
It’s worth pointing out that nowhere in the text of the UDRP is the term “cybersquatting” explicitly stated, let alone defined. By “inherent within the…language,” the RAPWG is likely referring to the three conditions that must be met in order for the Panel to order the transfer of the domain name(s) in question from the respondent to the complainant. Those three conditions are:
 
1. The domain name is identical or confusingly similar to a trademark or service mark in which the   complainant has rights
2. The registrant has no rights or legitimate interests in respect of the domain name
3. The registrant registered and is using the domain name in "bad faith"
 
These have been the three parameters by which UDRP decisions have been arbitrated since ICANN adopted the UDRP from the World Intellectual Property Organization (WIPO) in 1999. In February, the RAPWG began its investigation, and earlier this month it decided to consult with UDRP providers, panelists and lawyers for insight. According to Managing IP, the group plans to release its findings in an Issues Report during the next ICANN Public Meeting in Singapore in June; this Report will then be open to public comments, the feedback of which will be integrated into a Final Report. That Final Report could identify the need for a Policy Development Process, which could then lead to changes in the UDRP.

The push for UDRP review has been driven, at least within the ICANN community, by the RAPWG, which consists of multiple representatives from registrars and registries, as well as some from the intellectual property constituency. For the most part, the motivation behind this push has been a belief that some aspects of the UDRP unfairly favor complainants, i.e., trademark owners, at the expense of registrants. Proponents of UDRP reform call for sanctions against Reverse Domain Name Hijacking, and believe that trademark owners should be prohibited from filing complaints against domain name owners when the domain registration clearly predates their trademark registration.

Another possible factor behind this push may lie in ICANN’s new gTLD program, through which different organizations will be able to apply for any domain name extension they like. Certain registrars and registries have expressed interest in applying for new gTLDs of their own. Language in the Draft Applicant Guidebook for New gTLDs (which lists the rules and regulations governing the application procedure) prohibits registrars that have lost UDRP decisions on multiple occasions from applying for new gTLDs. While this is not explicitly stated in any ICANN documents as a reason behind registrars’ push for UDRP reform, it does not take a great stretch of the imagination to consider it as a possible motivating factor.

On the other hand, those who support the UDRP as it currently exists stress the need for complementary mechanisms that work in coordination with the UDRP to help address the cybersquatting problem. Erik Wilbers, Director of the WIPO Arbitration and Mediation Center, argued in a letter to ICANN that many UDRP-related issues “tend not to be rooted in the UDRP itself, but rather in its, often profit-driven, application by certain providers and their constituents.” He points to the tried-and-true dependency of the UDRP, saying that any process that jeopardizes the principles and practices of the UDRP would seriously limit its effectiveness.

In my experience, the UDRP has been an invaluable tool from trademark owners. It will be interesting to see how the RAPWG’s investigation progresses. Hopefully, if reform is eventually deemed necessary, it will proceed in a balanced way that ensures that the UDRP is fair to both complainants and respondents.

Scammers are constantly searching for new and more deceptive ways to trick people into giving away their money.  Most recently, FairWinds received this notice from the “World Intellectual Property Database” urging our DigitalDNA business, which brokers domain and website deals, to renew its international trademark registration:

Some of you might have picked up on the fact that the “WIPD” looks a lot like “WIPO,” the World Intellectual Property Organization.  They even mimicked WIPO’s font and logo.  DigitalDNA has an international trademark registration pending with WIPO, and that is likely how WIPD found us: the people behind WIPD appear to have pulled information from WIPO’s public database and sent fake notices seeking registration renewal fees from trademark owners.  Aside from recognizing the obvious discrepancy in the name and acronym, what really tipped us off was the URL the notice directs to.  WIPO – the real WIPO – would never use a .BIZ domain.  As a specialized agency of the United Nations, WIPO uses the .INT extension.

We wanted to post this to make sure other companies are aware of this scheme, and to warn them not to fall for it.  We have also gotten in touch with our contacts at WIPO to alert them, and they are working to stop this scam.

A controversial domain name dispute over ErgonomicDesigns.com recently came to my attention. Ergonomic Designs Limited, the Complainant, filed the complaint with the World Intellectual Property Organization (WIPO) against Stylish Solutions Limited, the Respondent. The result of the dispute was a transfer. As someone who is very familiar with and sees domain name disputes on a daily basis, the troubling part of this case is the glaring fact that the Complainant does not have a registered trademark for the term ERGONOMIC DESIGNS.

The Complainant claimed that it had acquired common law trademark rights, but the company was only created three years ago, which is likely not enough time to establish common law trademark rights in such a generic term. Despite this fact, the Panel found that the term ERGONOMIC DESIGNS had acquired secondary meaning based on the evidence provided, which included the Complainant’s business registration under that name; its primary domain, ErgonomicDesigns.co.uk; mentions of the Complainant in magazines; and web search statistics showing that 54,000 visitors had searched for the Complainant using those terms.

In my opinion, the Panel made an error by exceeding the scope of its mandate. This type of decision should have been left to the UK or EU Community trademark offices. The Complainant does not hold a trademark for the term ERGONOMIC DESIGNS, therefore, under the UDRP, the complaint should have been denied despite all of the evidence provided by the Complainant.

By single-handedly determining that the Complainant had developed secondary meaning in its arguably generic name and awarding a transfer of the domain, the Panel granted the Complainant a de facto trademark. In doing so, the Panel denied the Respondent ownership of a name which might very well have been rejected by a trademark office examiner since generic words can not gain trademark rights regardless of how extensively they are used. In the Respondent’s own words, the words ERGONOMIC DESIGNS “cannot be the subject of a trademark because they describe goods or services and do not serve to identify a particular brand … the term is wholly descriptive”.

It is unfortunate that the Panel did not pay more heed to the Respondent’s argument because, upon review of these facts, it is clear that this is a case of what has earned the names “Reverse Domain Name Hijacking” (RDNH), which is an abuse of the Uniform Domain Name Dispute Resolution Policy (UDRP). This is not to say that the Complainant’s argument rose to the level of a false assertion of trademark rights, I simply think that it took a very long stretch of the imagination for the Panel to come to the decision that it did. It is my conclusion, therefore, that the Panel should have rejected the claim without prejudice and suggested that the Complainant re-file the complaint after it had passed muster with a trademark office and obtained a registration.

For another perspective on this decision, check out Michael Berkens' post over at The Domains.