Keeping track of domain name jurisprudence

Author:Justin Soong-Hoon Chay - Brian Beckham
Position:WIPO Arbitration and Mediation Center
SUMMARY

These days it is hard to imagine life without the Internet and domain names. They each serve as important online marketing tools for businesses of all sizes, with domain names increasingly seen as invaluable virtual real estate in an ever-expanding digital landscape. At the same time, brand owners face a constant threat from unscrupulous actors who misappropriate their trademarks by registering... (see full summary)

 
FREE EXCERPT

The abuse of brand owners’ trademark rights in domain names, often referred to as “cybersquatting,” can be remedied by initiating proceedings under a mechanism known as the Uniform Domain Name Dispute Resolution Policy (UDRP).

WIPO’s Arbitration and Mediation Center is both the author of the UDRP, and the global leader in domain name dispute resolution services under the UDRP. In recent years, the UDRP caseload of the WIPO Center has continued to increase, with filing rates breaking new records. In 2016, the number of cases rose by 10 percent on the previous year, with trademark owners filing over 3,000 UDRP cases with WIPO. Since 1999 when the UDRP was first implemented, the WIPO Center has processed almost 40,000 UDRP-based cases, involving parties from nearly 180 countries and some 500 WIPO panelists of 65 nationalities.

In addition to handling UDRP-related disputes, the WIPO Center monitors decisions issued by the appointed external experts who weigh up the cases (referred to as “panelists”) to identify areas of consensus in UDRP jurisprudence. In the 18 years since the UDRP’s implementation, the WIPO Center has reported periodically on these consensus positions by panelists. Version 1.0 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions was released in 2005, and Version 2.0 in 2011.

Since then – and in line with the broader evolution of online behavior – UDRP jurisprudence has continued to evolve, with consensus positions emerging on a wide range of issues that are common to many UDRP cases. Version 3.0 of the WIPO Overview, released in May 2017, outlines consensus positions on nearly 100 topics, providing nearly 1,000 case citations on issues ranging from whether a brand owner has standing to file a claim to procedural questions.

Cited in nearly every UDRP-related pleading and decision, the WIPO Overview 3.0 offers invaluable guidance for parties to domain name disputes, and is a go-to reference tool for WIPO panelists.

Notable highlights

Notable highlights of the WIPO Overview 3.0 include the companion issues of trademark rights and the test for “confusing similarity”, the timing of domain name registrations, consolidation of claims against multiple respondents, and free speech defenses.

Trademark rights. A brand owner filing a UDRP complaint must, as a first step, adequately demonstrate that they own rights in a trademark or service mark. This is most often done by providing copies of trademark registration...

To continue reading

REQUEST YOUR TRIAL