Tackling bad faith registration of domain names in a fast-changing landscape

• Author: John McElwaine - Christopher D. Casavale
• Position: Partner - Associate, Nelson Mullins LLP, Charleston, South Carolina, USA

The origins of the UDRP

Acknowledging the threat that cybersquatting represented to consumer trust and to the safety, security, and stability of the Internet, in the late 1990s the United States Government asked the World Intellectual Property Organization (WIPO) to conduct a consultative study on domain name and trademark issues pdf and to develop recommendations to combat related online abuses. WIPO’s recommendations culminated in the UDRP, which has proven to be a highly successful and effective online tool for protecting brand owners’ rights and for building consumer confidence in global e-commerce.

In April 1999, WIPO presented its report to the then-newly-formed Internet Corporation for Assigned Names and Numbers (ICANN) recommending a quick, efficient, cost-effective and uniform procedure to address cybersquatting. The WIPO Report also provided forward-looking recommendations on registrant contact information, a topic that ICANN is only now addressing following the implementation of the European Union’s General Data Protection Regulation (GDPR). In the six months following the launch of the WIPO report, the ICANN community, through its multi-stakeholder policy development process, made a few minor changes to WIPO’s proposed policy.

Unpacking the UDRP

The UDRP requires a complainant to establish three elements, namely, that:

the domain name is confusingly similar to the complainant’s trademark;

the registrant has no rights or legitimate interests in the domain name; and that

the domain name has been registered and is being used in "bad faith".

A successful UDRP complainant can elect either to have the disputed domain name transferred to its control, or to have it cancelled. The UDRP was adopted as a binding “consensus policy” (meaning the UDRP was required to be implemented by registries and registrars to all ICANN-managed domains, such as “.com”) by the ICANN Board in October 1999. A month later, the WIPO Arbitration and Mediation Center (“the WIPO Center”) became the first accredited UDRP dispute-resolution service provider, and in December 1999, the first domain name case was filed with the WIPO Center.

The first 20 years: trends and challenges

The first domain name case was brought by the World Wrestling Federation for . Over the following 12 months, the WIPO Center handled 1,857 domain name cases. Ten years later, in 2010, it managed 2,696 UDRP cases. With the exception of a small dip in its caseload in 2013, the WIPO Center has...