Monday, 26 October 2009

Domain names: a UDRP epiphany

Tony Willoughby writes:

In my article "Domain name disputes: the UDRP 10 years on", Journal of Intellectual Property Law & Practice 2009 4: 714-725; abstract here), I expressed certain views about the advisability/acceptability of panellists (dispute adjudicators) ‘stretching’ the meaning of the UDRP to cover modern domainer practices.

The situation has changed dramatically with two decisions issued recently by Scott Donahey, the distinguished US panellist who decided the very first case under the UDRP (WIPO Case No. D1999-0001). He has had an epiphany, now realising that he and most of the rest of us panellists have misunderstood the UDRP for the last 10 years. Scotts’ two recent decisions (as with all WIPO UDRP decisions) are to be found on the part of the WIPO website at www.wipo.int dealing with domain names. They are WIPO Cases Nos. D2009-0643 (mummygold.com) and D2009-0786 (octogen.com).

The upshot is that he and some other of the leading WIPO panellists are now willing to find that a domain name registration is an abusive registration under paragraph 4(a)(iii) of the Policy notwithstanding that there is no evidence to suggest that the domain name was registered in bad faith. In other words, the ‘and’ in paragraph 4(a)(iii) can mean ‘or’. It may also lead to renewals equating to registrations, contrary to the consensus view to date (See paragraph 3.7 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions).

For an indication of the extent of the change advocated/applied in these decisions reference should be had to that part of the WIPO index dealing with good faith registration and bad faith use, which lists a series of cases all taking a materially different line.

The matter is currently the subject of some debate and my concern is that nobody should assume that my preferred route (as described in the article) is the likely route forward for the next decade. Indeed, it may soon be seen to be heterodox.

1 comment:

  1. I completely agree with the ultimate conclusion which Scott Donahey reaches, but I am rather less convinced by the reasoning.

    There are a number of ways to look at this, and similarly various reasons why I disagree with Scott's thinking. The first and most straightforward is as follows. When a registrant applies to register a domain name, they give various representation. The relevant part of paragraph 2 reads as follows:

    "By applying to register a domain name... you hereby represent and warrant to us that... (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party..."

    The fact that "will" is included here is not designed to put an ongoing obligation on the registrant - it is merely an acknowledgement that the registrant is *applying* to register a domain name, and that if and when the domain name *is* registered (ie. in the future) the registration will, to the registant's knowledge, not infringe third party rights.

    The event of registration occurs in the very near future for most of us these days, but I suspect some NICs which operate under the UDRP still require a level of manual involvement before the registration is effected, and many more will have done back in 1999, when the UDRP was adopted.

    In summary then, the representation *has* to be in the future tense, simply because registration has not happened at the point the representation is given.

    Secondly, when reading paragraph 2 it is clear that these representations were included in the UDRP as a 'CYA'. They are contractual promises given by the registrant to ICANN and are designed to limit the risk that ICANN finds itself more intimitely involved in a dispute than it would like.

    They were never intended to form part of the factors set out in paragraph 4 which underpin any finding of an abusive registration.

    Finally, the "and issue", if I can call it that, has been around for over 10 years. We are all very much aware of it, and I'm sure many have spent time scratching their heads trying to shoe-horn an apparent "or" situation to meet this criterion.

    Other registries have taken stock of this and adopted "or" systems - Nominet being a perfect example.

    Even ignoring both that lingusitically the future tense had to be used, and also the clear reasoning behind the representations (and final sentence statement) in paragraph 2, surely the fact that other registries had identified the issue and tailored their policies accordingly suggests that if ICANN, with all their various boards and regular meetings, *still* did not "fix" this issue, the issue never existed in the first place?
    It was working how it was always intended to work.

    Just as an observation on this situation - and let's assume that I am wrong and Scott is right. It is worth noting the "to your knowledge" wording in paragraph 2, as some commentators are overlooking its significance, and the logical oddity of having to give a warranty about your future knowledge of future event... Can this really be what paragraph 2 therefore meant?

    I come back to the first point I made - I absolutely agree that we need to adapt our understandings of registry policies to take into account 'domainer' activities (or ideally registries need to amend their policies accordingly), but I think this is not so much as an epiphany, but rather simply a matter of after spending ten years staring at the same document, anyone would begin to see things that perhaps were not there.

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