Keeping the “U” in the UDRP

1. Keeping the “U” in the UDRP Jane Mutimear Bird & Bird jane.mutimear@twobirds.com

2. Why “U” is good • Uniformity means • predictability/certainty • sense of fairness • lower costs

3. 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

4. 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

5. 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)

6. 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)

7. 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?

8. 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”

9. 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.

10. 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.

11. 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)

12. 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.

13. 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

14. 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

15. 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