Reducing Inconsistency in UDRP Cases
David Wotherspoon and Alex Cameron
pretive guidance, and whose decisions would be bindingIntroduction
on the lower arbitral panels. These shortcomings under-
mine the legitimacy of the UDRP as a legal process, andn October 24th, 1999, the Internet Corporation for
have created the perception that the UDRP is, at bestOAssigned Names and Numbers (ICANN) imple-
arbitrary, and at worst unjust. They represent a funda-mented the Uniform Domain Name Dispute Resolution
mental failure in terms of the objectives of the UDRP,Policy (UDRP).1
According to the Final Report of the
which have been expressed as including the following:WIPO Internet Domain Name Process,2
a report from
the World Intellectual Property Organization (the (a) The procedure should allow all relevant rights
``WIPO Report''), the UDRP was adopted with the objec- and interests of the parties to be considered and
tives of creating global uniformity in the adjudication of ensure procedural fairness for all concerned par-
domain name disputes, and reducing the expense of ties; and
lengthy and jurisdictionally strained litigation.3
The
(b) The procedure should be uniform or consistent
UDRP was not intended to serve as the ultimate arbiter
across all open gTLDs.5
of all trademark disputes on the Internet, nor was it
We propose that the UDRP be amended so thatdesigned to preclude recourse to the judicial system. It
panels can apply specific definitions that outline the con-was and continues to be directed at addressing only cases
stituent elements of section 4(a). Furthermore, Rule 15(a)of bad faith cybersquatting.
should be amended so that adjudication of disputesThe UDRP has been adopted by all accredited
would be achieved by exclusive reference to the UDRPdomain-name registrars, including those for domain
without reference to legal principles of particular juris-names ending in .com, .net, .org, .biz and .info, as well as
dictions. Finally, an appeal tribunal should be consti-certain registrars of country top level domains (``TLDs'').
tuted so that panels and parties could have recourse to aRegistrants of generic top level domain (``gTLD'') names
body of well-established UDRP precedent.must enter into a contract with a domain name registrar.
Although the terms and conditions of these contracts
vary with the individual registrars, the dispute resolution
mechanism remains the same for all registrants because Overview of the UDRP
all gTLD domain name registration contracts incorpo-
he majority of all domain name disputes not dis-rate the UDRP. Therefore, owners of gTLDs, irrespective
Tposed of by settlement between the parties areof jurisdiction or registrar, are bound by the same dis-
resolved under the UDRP, which is incorporated by ref-pute resolution policy.
erence into all gTLD domain name registration agree-The UDRP has proven to be an effective means of
ments. These agreements require domain name regis-resolving domain name disputes. There are, however, a
trants to submit to a mandatory administrativenumber of shortcomings in the UDRP that affect its
proceeding if a complaint is filed regarding their domainlegitimacy and fairness. The most glaring of these lies in
name. The Rules govern the administrative proceedingsthe failure to delineate the elements outlined in section
initiated pursuant to the UDRP.4(a) of the UDRP and in the application of Rule 15(a) of
the Rules for Domain Name Dispute Resolution Policy The UDRP is applied by four ICANN-approved dis-
(the ``Rules'').4
These shortcomings have resulted in pute resolution service providers (``DRP''s): the National
inconsistency in the decisions of arbitral panels. As it Arbitration Forum, World Intellectual Property Organi-
stands, complainants are unable to ascertain the case zation (WIPO), the CPR Institute for Dispute Resolution
they must meet in order to succeed and respondents are and the Asian Domain Name Dispute Resolution
unable to be certain of the terms of their registration Center.6
Each dispute resolution provider maintains a
contracts. These problems have been compounded by list of arbitrators, from which administrative panels
the lack of an appeal tribunal that could provide inter- (``Panels'') are formed to adjudicate disputes.
David Wotherspoon is a partner, and Alex Cameron is an associate, at the Vancouver office of Fasken Martineau DuMoulin LLP. The authors wish to
thank Leticia Santos Lewis, LLM, for her assistance in research and in the preparation of an early draft of this paper.
71
72 Canadian Journal of Law and Technology
Under the UDRP, a complainant chooses the DRP As is evident from the plain language of the Rule, it
with which to file a complaint. The DRP will then provides no guidance to the parties or the arbitrator(s) as
ensure that certain administrative and procedural to what test should be applied when determining
requirements have been met before forwarding the case whether complainants have established a violation of
on to an arbitration Panel. The complainant may choose section 4(a) of the UDRP. As a result, the law applied to
to have the case heard by a single Panelist or by a three- disputes governed by the UDRP has been inconsistent.
person Panel. If a single Panelist is chosen by the com- In a review of many of the cases decided under the
plainant, the respondent may still elect to have the case UDRP, several conflicting patterns of decisions have
decided by a three-person Panel. The cost for both the emerged. First, Panels vary in the extent to which they
complainant and respondent depends on the number of will resort to the ``principles of law'' permitted by Rule
Panelists chosen. For one disputed domain name, the 15(a). Second, where such legal principles are applied or
cost for a single person Panel ranges from US$1,000 to considered, Panels have often applied the law of an inap-
$2,000 and for a three-person Panel from US$2,500 to propriate or unrelated jurisdiction. Finally, where Panels
$4,500.7
have applied principles enunciated in prior Panel deci-
sions, Panels often fail to acknowledge that those deci-Once selected, the Panel is required to decide the
sions may be based on the law of an unrelated jurisdic-case in accordance with the UDRP and the Rules.8
tion.There are only three remedies a Panel can award: cancel-
lation of a domain name,9
rejection of the complaint, or
transfer of the domain name from the respondent to the
complainant.
History of the Application of
In order to succeed in a complaint under the Rule 15(a)UDRP, a complainant must provide written submis-
he provision in Rule 15(a) that permits Panels tosions, and documents or other evidence where necessary,
Tconsider and apply ``any rules or principles of lawin order to demonstrate each of the elements of section
that it deems applicable'' is very broad. However, Rule4(a) of the UDRP. Section 4(a) reads:
15(a) is silent on if or how legal principles are to be4. Mandatory Administrative Proceeding
selected or applied, and Panels have taken a number of
This Paragraph sets forth the type of disputes for which you
vastly different approaches. In some cases, Panels haveare required to submit to a mandatory administrative pro-
declined to apply national statutory or case law alto-ceeding. These proceedings will be conducted before one of
the administrative-dispute-resolution service providers listed gether and have elected instead to rely solely on their
at www.icann.org/udrp/approved-providers.htm (each, a own interpretation of the language of the UDRP and the
``Provider''). Rules. Other Panels have declined to apply legal princi-
(a) Applicable Disputes -- You are required to ples from any national jurisdiction, but have relied on
submit to a mandatory administrative proceeding previous Panel decisions as a source of precedent. In yet
in the event that a third party (a ``complainant'')
other cases, Panels have drawn extensively on legal prin-asserts to the applicable Provider, in compliance
ciples in rendering decisions. We will review some exam-with the Rules of Procedure, that
ples of each of these approaches in turn.(i) your domain name is identical or confusingly
similar to a trademark or service mark in which
the complainant has rights; and
Panels declining to apply the
(ii) you have no rights or legitimate interests in
law of a particular jurisdictionrespect of the domain name; and
In many of the decisions in which Panels decline to(iii) your domain name has been registered and is
apply the law of a particular jurisdiction, there is a clearbeing used in bad faith.
statement that the dispute was decided solely on theIn the administrative proceeding, the complainant must
basis of section 4(a) of the UDRP or on the basis ofprove that each of these three elements are present.
previous UDRP Panel decisions.10
In other cases, Panels
It is not surprising that, in the absence of clear defi- acknowledge that legal principles are applicable and
nitions in the operative section, inconsistent legal could be considered pursuant to Rule 15(a) but then
frameworks have been applied in disputes under the choose not to refer to any legal principles.11
UDRP.
Rule 15(a) acts to supplement section 4(a) and to
Decisions relying solely on the UDRPprovide Panels with some guidance about how they are
In a number of cases, Panels have stated that theto decide complaints:
dispute was decided solely based on the text of the15. Panel Decisions
UDRP. For example, in Shirmax Retail Ltd.12
(in which
(a) A Panel shall decide a complaint on the basis of the
the respondent was successful), the Panel expresslystatements and documents submitted and in accor-
refused to consider principles of Canadian trademarkdance with the Policy, these Rules and any rules
and principles of law that it deems applicable. law despite the fact that both the complainant and the
Reducing Inconsistency in UDRP Articles 73
been judged under Swiss law for trade names that wererespondent were companies domiciled in Canada. In
registered in purely a defensive way. The administrative pro-response to the first element of the test under the UDRP
ceedings do not allow to [sic] inquire in details [sic] about
(requiring the complainant establish that the respon- the state of French and United States law in that regard, this
dent's domain name is identical or confusingly similar to difficult question being properly to be [sic] adjudicated by
ordinary courts of law.their trademark), the respondent argued that under
Canadian trademark law ``mere identicality is insuffi- It appears that in deciding that it was not ``allowed''
cient to support a conclusion that two marks are con- to consider legal principles, the Panel misinterpreted
fusing''. In rejecting this submission, the Panel declined Rule 15(a), which specifically permits Panels to apply
the ``[respondent]'s invitation to stray from the clear lan- rules or principles of law that it determines are appli-
guage of the ICANN Policy'' and held that ``mere identi- cable.
cality of a domain name with a registered trade-mark is
sufficient to meet the first element of the test [under the Decisions relying on prior
UDRP], even if there is no likelihood of confusion what- UDRP decisions as precedent
soever''.
In an increasing number of cases, Panels have relied
In the SGS Société Général de Surveillance S.A. deci- on prior UDRP decisions as a source of precedent. For
sion,13
the Panel elected to rely solely on the UDRP example, in 3636275 Canada, dba eResolution v.
because the parties were resident in different jurisdic- eResolution.com,18
the Panel held as follows:
tions:
Although entitled to consider principles of law deemed
No particular principles of law nor territorial law seem applicable, the Panel finds it unnecessary to do so in any
to apply in this case . . . [T]he Complainant, the Respondent depth. The jurisprudence which is being rapidly developed
and the Registrant are resident in different countries. by a wide variety of Panelists worldwide under the ICANN
UDRP provides a fruitful source of precedent.On that ground, the Panel considers that this case is to
be resolved by a direct and exclusive application of the The Panel relied primarily on five cases previously
[UDRP] and its Rules.
decided under the UDRP. However, even though the
In Empresa Brasileira de Telecomunica¸c~oes S.A.,14
Panel expressly declined to apply legal principles, the
the complainant argued that the Panel should apply the Panel noted that courts in the United States had come to
law of the United States which was where the respon- similar conclusions in analogous circumstances.
dent was domiciled. The Panel declined to apply United
The same Panelist used identical language in BWR
States law and stated that it would consider only the
Resources Ltd. v. Waitomo Adventures Ltd.,19
in which
UDRP. The Panel emphasized that the case should be
both parties were from New Zealand. Once again, after
``analysed at a global level'' because ``the domain name in
indicating that he needed only rely on UDRP jurispru-
dispute correspond [sic] to a gTLD [sic] without linkage
dence, the Panelist went on to bolster his conclusion
with any national territory, nor with any national terri-
with New Zealand statutory and case law references.
tory, nor with any national legislation in particular''.15
Although the authors have not conducted a statis-
In a final example, Gestevision Telecinco, S.A. v.
tical analysis of Panel decisions, it is their impression
Trazos Infografia, S.L.,16
where the parties were both resi-
that, as the body of Panel decisions has grown, the
dent in Spain and had based their arguments on Spanish
number of decisions citing at least one prior Panel deci-
law, the Panel stated that no national law should be
sion has increased dramatically since the inception of the
applied since the dispute was related to a domain name
UDRP. The significance of this apparent trend is further
with a global level.
discussed below.
Decisions claiming lack of authority to apply Decisions applying the legal
substantive law of any jurisdiction principles of a particular jurisdiction
In some cases, Panels have claimed that they do not In contrast to the cases discussed above, many
have the authority to apply principles of law from a Panels have expressly drawn upon national laws in
particular jurisdiction. For example, in France Telecom v. deciding disputes. These decisions fall broadly into one
Les pages jaunes francophones,17
the complainant was of two camps.
from France and the respondent was from the United
States. In considering whether the complainant had
Where parties are from the same jurisdiction
established that the respondent had no rights or legiti-
When both parties are domiciled in the samemate interests in respect of the domain name under
country, Panels have often drawn upon legal principlessection 4(a)(ii), the Panel refused to inquire into whether
from that jurisdiction.20
In Madonna Ciccone, p/k/athe registration of a domain name solely to preserve
Madonna v. Dan Parisi and ``Madonna.com'',21
wherepriority was considered to be legitimate (in either juris-
both parties were from the United States, the Paneldiction). The Panel stated the following:
applied legal principles from the United States exten-. . . It might well be that under the laws of some jurisdic-
sively. For example, the Panel determined that, althoughtions, the registering of domain names to preserve a priority
of right would not be deemed worthy of protection, as it has one aspect of its role was to make findings of fact within
74 Canadian Journal of Law and Technology
. . . [i]t is legitimate under paragraph 15(a) of the Rules thatthe scope of the UDRP, their decision would be based
the Panel should look at principles of law deemed appli-on the United States civil standard of ``preponderance of
cable. Since the Respondent is domiciled in the United
the evidence'': States, and any legal action would have to be taken against
him in that country, it is therefore helpful to look at princi-We recognize that other standards may be employed in
ples of law set out in decisions of Courts in the Unitedother jurisdictions. However, the standard of proof
States.employed in the United States seems appropriate for these
proceedings generally, and in particular for this proceeding
which involves citizens of the United States, actions occur-
ring in the United States and a domain name registered in
the United States.
Problems Arising From the
In Microsoft Corporation v. Amit Mehrota,22
the Application of Different
Panel decided that in the circumstances of the case, it
Legal Principleswas appropriate to ``look to rules and principles of law
set out in decision of the Courts of the United States in he problems inherent in Panels taking different
determining whether the complainant has met its Tapproaches to the scope of discretion provided by
burden''. In support of its decision, the Panel quoted the Rule 15(a) is obvious. Some panels choose to access a
following passage from the WIPO Report: range of legal sources, and some choose to confine their
decisions to the wording of the UDRP and its jurispru-. . . [I]f the parties to the procedure were resident in one
country, the domain was registered through a registrar in dence. As a result, the same case could yield a variety of
that country and the evidence of bad faith registration and results, depending on which Panel was to preside. Com-
use of the domain name related to activity in the same
pounding this concern is the lack of a mechanism forcountry, it would be appropriate for the decision-maker to
ensuring that the parties are aware of a Panel's choice ofrefer to the law of the country concerned in applying [Sec-
tion 4(a) of the UDRP].23
law, and thus entire arguments may be dismissed or
made in vain. While the reasoning adopted by Panels toIn deciding to apply United States law in Estate of
support their approach is apparently logical in the con-Stanley Getz aka Stan Getz v. Peter Vogel,24
the Panel
text of individual decisions, it is inconsistent with thereasoned that:
goal of global uniformity and has bred inconsistency and
Since both the Complainant and the Respondent are
unpredictability in the adjudication of UDRP disputes.domiciled in the United States, and since United States'
courts have recent experience with similar disputes, to the A particularly disconcerting trend is the application
extent that it would assist the Panel in determining whether
of legal principles drawn from jurisdictions unrelated to
the Complainant has met its burden as established by Para-
the parties. While expressly permitted by Rule 15(a),graph 4(a) of the [UDRP], the Panel shall look to rules and
which allows a Panel to refer to ``any rules and principlesprinciples of law set out in decisions of the courts of the
United States. Since Getz was a resident of the State of of law that it deems applicable'', applying unrelated legal
California at the time of his death and since his estate is principles can obviously put the parties at a serious loss.
being probated in the courts of the State of California under
When one considers that such principles are sometimesCalifornia law, to the extent that it would assist the Panel,
applied in the absence of any notice to the parties, whichthe Panel shall also look to the law of the State of California.
results in the parties not having the opportunity to make
In Which? Limited v. James Halliday,25
although submissions to the Panel on these principles, two conclu-
both parties were from England and the Panelist deter- sions can be reached. One, the arguments raised by the
mined it was appropriate to apply principles of English parties were not heard or were disregarded, which is an
law, he explicitly indicated the choice of law was based obvious breach of natural justice. Secondly, the decision-
on the domicile of the respondent: making process is arbitrary.
. . . Since the Respondent is domiciled in the United
These cases usually fall into one of the three catego-Kingdom, and any legal action would have to be taken
ries discussed below.against him in that country, the Panel considers principles of
law set out in decisions of Courts in the United Kingdom. I
do so in deference to the legal submissions in the Response.
It is not strictly necessary to do so, because I find that the Explicit application of legal principles
Complainant succeeds in terms of the [UDRP]. However, I
from unrelated jurisdictionsbelieve that the case law in the United Kingdom supports
the view I have taken. This phenomenon is most apparent when explicitly
done, such as in the decision in Wal-Mart Stores, Inc. v.
Walmarket Canada.27
Although the parties were from
Where parties are from different jurisdictions
Canada and Thailand, the Panel applied principles of
In cases involving complainants and respondents law drawn from the jurisprudence of the United States
from different jurisdictions, some decisions have explic- and the United Kingdom. The Panel made the following
itly stated that the respondent's residence is the determi- statements in this regard:
native factor in deciding which law ought to apply. For It is legitimate under paragraph 15(a) of the Rules that the
example, the Panel in Harrods Limited v. Robert Boyd,26
Panel should look at principles of law deemed applicable.
found: Since the Respondent appears to be domiciled in Canada,
Reducing Inconsistency in UDRP Articles 75
any legal action would have to be taken against him in that In the 3636275 Canada case,31
for example, the
country. If the Respondent is to operate in Thailand, then Panel cited several previous decisions of WIPO Panels.
action could be taken there. The Panel has not had cited to
Although the complainant was from Canada and theit decisions of Superior Courts in Thailand or Canada. Prin-
respondent was from the United States, the Panel reliedciples of law set out in decisions of Courts in the United
States and the United Kingdom in similar cases could easily on decisions where the parties were from a variety of
be of assistance to Canadian or Thai courts. The law pro- legal jurisdictions. One of the prior decisions, Bennett
tecting intellectual property, whilst admitting of local differ-
Coleman & Co. Ltd. v. Lalwani and Long Distance Tele-ences, is often quite similar, given the various international
phone Company,32
specifically referred to the laws oftreaties on intellectual property.
India, and thus principles of Indian law were indirectly
Without any further explanation or analysis to jus-
applied to the parties in the 3636275 Canada dispute.
tify its bald assumptions or the conclusion it had
The Panel in Hipercor, S.A. v. Miguel A. González33
reached, the Panel in this case went on to specifically
stated that it would apply principles of Spanish lawdiscuss and apply case law from the United States and
because both parties resided in Spain. However, therethe United Kingdom. The Panel did not discuss whether
was no Spanish law actually applied in the decision. Ineither Thailand or Canada were even parties to the same
fact, by citing prior WIPO decisions that were decided``various international treaties'' as the United Kingdom
partially on the basis of United States law, it was Unitedor the United States.28
States law that was indirectly applied.
Similarly, in General Optica, S.A. v. RMC, S.L.,34
theUse of unrelated legal principles to bolster
Respondent asserted that the law of Spain, where botha decision decided on other grounds
parties were domiciled, should be applied. The Panel
In other instances, Panels are less obvious in their appeared to agree:
application of unrelated legal principles. In Veuve Cli-
Taking into account that the laws that govern primarily
quot Ponsardin, Maison Fond ée en 1772 v. The this Administrative Panel decision are the UDRP and Rules,
Polygenix Group Co.,29
the Parties were from France and and that any other subsidiary norm has to be according to
Canada. Despite the Panel's declaration that ``although the parties' applicable law; due to both parties having siege
and address in Spain, the principles and laws of the Spanishentitled to consider principles of law deemed applicable,
State shall be taken into account.the Panel finds it unnecessary to do so in any depth'', it
went on to note that ``[c]ourts in the United States have Once again, the Panel did not actually apply
come to similar conclusions about those who act in a Spanish law in its decision. As in Hipercor, a previous
manner similar to the Respondent who endeavour to WIPO case,35
United States jurisprudence was cited.36
sell domain names to trade-mark owners for a profit''.
Similarly, in Empresa Brasileira de Telecomuni-
ca¸c~oes S.A.,30
the complainant was domiciled in Brazil
Recommendationsand the respondent was domiciled in the United States.
The Panel asserted that the case was decided by ``taking he UDRP was intended to provide an expeditious
into account only the Policy's principles''. Nevertheless, Tand efficient mechanism for the resolution of
the Panel cited previous decisions from courts in the domain name disputes involving alleged abusive registra-
United States and the United Kingdom, other legal prin- tions. While the UDRP has succeeded in providing a fast
ciples from the United States, the Brazilian Trade-mark and inexpensive process, this success has come at the
Act, and international treaties in support of its decision. expense of consistency, predictability and fairness.
In both of these cases, there is no way of knowing It also bears remembering that the UDRP is a term
what persuasive or decisive impact the supporting juris- of all gTLD registration contracts. As such, the principle
prudence cited by the Panel had on the final outcome of of contractual certainty requires that registrants should
the case. be entitled to ascertain the implications of the UDRP at
the time they enter their contracts. That Panels may
apply different laws to the UDRP and therefore come toImportation of unrelated legal principles
inconsistent conclusions is a clear erosion of the prin-through reliance on UDRP case law
ciple of contractual certainty. A party should know whatEspecially unsettling, though, are those circum-
laws it is subjecting itself to when agreeing to the termsstances in which a Panel has applied a previous Panel
of a contract.decision without acknowledging that the decision was
based, in whole or in part, on the law of a jurisdiction In the view of the authors, the Policy and Rules
that is unrelated to the immediate parties. The result is should be amended in three ways in order to create and
that the parties to the immediate dispute are indirectly enforce a uniform set of legal parameters for deter-
and perhaps inadvertently subjected to the laws of an mining cases under the UDRP. These changes, discussed
unrelated jurisdiction. The significance of this problem is below, are intended to reflect a respect for the principle
highlighted by the fact that Panels appear to be relying of contractual certainty and result in greater consistency,
on prior Panel decisions with increasing frequency. predictability and fairness in the UDRP. Notably, these
76 Canadian Journal of Law and Technology
commercial gain to misleadingly divert con-changes will not decrease the efficiency of the UDRP.
sumers or to tarnish the trademark or serviceQuite the contrary.
mark at issue.
These sections do not, however, define the termsAdding definitions in the UDRP
found in section 4(a) -- namely, ``identical'', ``confusingly
As it is currently drafted, the UDRP does not pro- similar'', ``rights or legitimate interests'' and ``bad faith''.
vide Panels with sufficient guidance for evaluating dis- Rather, they provide non-exhaustive lists of circum-
putes. This may, in part, account for why many Panels stances that would tend to indicate ``bad faith'' and
have so often taken recourse to national laws pursuant to ``legitimate interests'' respectively. Nowhere in the
Rule 15(a), to the effect described above. UDRP are Panels provided any guidance on the issue of
Sections 4(b) and (c) of the UDRP are a good first whether a trademark or service mark is identical or con-
step. These sections set out how Panels are to determine fusingly similar to a domain name.
bad faith and legitimate interests under the UDRP. They These gaps in the UDRP have been filled to an
read as follows: extent by reference to legal principles as permitted by
b. Evidence of Registration and Use in Bad Faith -- Rule 15(a). As detailed above and discussed further
For the purposes of Paragraph 4(a)(iii), the following circum-
below, this approach leads to inconsistent results.stances, in particular but without limitation, if found by the
Panel to be present, shall be evidence of the registration and There are a number of dispute resolution policies
use of a domain name in bad faith: around the world, primarily for country code domain
(i) circumstances indicating that you have registered names, that go further than the UDRP in enumerating
or you have acquired the domain name primarily
the elements that must be proven by a complainant.
for the purpose of selling, renting, or otherwise
One of the best examples is the Canadian Internet Regis-transferring the domain name registration to the
tration Authority Dispute Resolution Policy (the ``CIRAcomplainant who is the owner of the trademark
or service mark or to a competitor of that com- Policy'').37
The CIRA Policy includes detailed definitions
plainant, for valuable consideration in excess of of the terms ``Mark'', ``Rights in a Mark'', ``Confusion'',
your documented out-of-pocket costs directly
``Use'', ``Legitimate Interests'' and ``Bad Faith''. Forrelated to the domain name; or
example:
(ii) you have registered the domain name in order to
A ``Mark'' is:prevent the owner of the trademark or service
mark from reflecting the mark in a corre- (a) a trade-mark, including the word elements of a
sponding domain name, provided that you have design mark, or a trade name that has been used in
engaged in a pattern of such conduct; or Canada by a person, or the person's predecessor in
title, for the purpose of distinguishing the wares,(iii) you have registered the domain name primarily
services or business of that person or predecessor orfor the purpose of disrupting the business of a
a licensor of that person or predecessor from thecompetitor; or
wares, services or business of another person;(iv) by using the domain name, you have intention-
ally attempted to attract, for commercial gain, (b) a certification mark, including the word elements
Internet users to your web site or other on-line of a design mark, that has been used in Canada by a
location, by creating a likelihood of confusion person or the person's predecessor in title, for the
with the complainant's mark as to the source, purpose of distinguishing wares or services that are
sponsorship, affiliation, or endorsement of your of a defined standard;
web site or location or of a product or service on
(c) a trade-mark, including the word elements of a
your web site or location.
design mark, that is registered in CIPO; or
c. How to Demonstrate Your Rights to and Legiti-
(d) the alphanumeric and punctuation elements of anymate Interests in the Domain Name in Responding
badge, crest, emblem or mark in respect of whichto a Complaint -- When you receive a complaint, you
the Registrar of Trade-marks has given publicshould refer to Paragraph 5 of the Rules of Procedure in
notice of adoption and use pursuant toparagraphdetermining how your response should be prepared. Any of
9(1)(n) of the Trade-marks Act (Canada).38
the following circumstances, in particular but without limi-
tation, if found by the Panel to be proved based on its . . .
evaluation of all evidence presented, shall demonstrate your
``Confusingly Similar''. A domain name is ``Confusingly
rights or legitimate interests to the domain name for pur-
Similar'' to a Mark if the domain name so nearly resembles
poses of Paragraph 4(a)(ii):
the Mark in appearance, sound or the ideas suggested by the
(i) before any notice to you of the dispute, your use Mark as to be likely to be mistaken for the Mark.39
of, or demonstrable preparations to use, the
The CIRA Policy also specifies that a complainantdomain name or a name corresponding to the
domain name in connection with a bona fide must prove its case on ``a balance of probabilities''.
offering of goods or services; or
The CIRA policy, by providing greater uniformity,
(ii) you (as an individual, business, or other organiza-
will undoubtedly provide more predictability and con-tion) have been commonly known by the
sistency than is currently found in decisions under thedomain name, even if you have acquired no
UDRP. While the definitions established in the CIRAtrademark or service mark rights; or
Policy may provide only a useful starting point for the(iii) you are making a legitimate noncommercial or
fair use of the domain name, without intent for implementation of the proposed amendments to the
Reducing Inconsistency in UDRP Articles 77
UDRP, at the very least they demonstrate that it is pos- undermine the goal of a global uniformity in resolving
sible to define the terms in section 4(a) with some speci- domain name disputes.
ficity. In our view, one of the best ways to create legal In the view of the authors, prior to a decision being
predictability in the UDRP is to better enumerate in the rendered, parties are also entitled to know the legal prin-
UDRP terms such as ``identical'', ``confusingly similar'', ciples that will or will not be applied in the adjudication
``bad faith'' and ``rights or legitimate interests''. of disputes. At a minimum, a party to a UDRP pro-
ceeding should know what law will be applied in
advance of submitting argument so that it can argue the
Amendment of Rule 15(a) relevant law. As it stands now, the lack of predictability
has resulted in parties not knowing until after an awardAlthough in many UDRP cases the application of
is rendered which legal principles would be applied.the law of a particular jurisdiction might not clearly and
directly affect the outcome of the case, the potential for The authors therefore recommend that Panels
problems is real. For example, many countries outside should not be entitled to apply whatever law they
the United States do not embrace the concept of choose. Rule 15(a) should be amended to delete the
``famousness''40
in their trademark laws. Another reference to ``and any rules or principles of law that [the
example is found in section 9 of the Canadian Trade- Panel] deems applicable''.
marks Act, under which ``public authorities'' in Canada
The UDRP should also be amended to provide thatare able to obtain registration of ``official marks''. These
Panels should rely on existing UDRP decisions as prece-are virtually unexpungeable marks that offer a broader
dent, but only to the extent that these decisions do notscope of protection than ordinary trademarks -- sec-
refer to the legal principles or the laws of a particulartion 9 prohibits others from using a mark that is ``likely
jurisdiction. In other words, if a prior decision relied onto be mistaken for'' a section 9 official mark. Ordinary
the laws of, for example, Canada, in determining thetrademarks protect only against the use of confusing
issue of bad faith, then that decision should not be reliedmarks and that requires a comparison of a number of
on for the purpose of defining bad faith in a subsequentfactors including, inter alia, the similarity of the marks,
case.the nature of the trade, the nature of the wares or ser-
vices. It follows from these examples that, on an identical By providing definitions, removing reliance on laws
fact pattern under the UDRP, the outcome in a given of a particular territory and developing precedent within
case could depend entirely on whether or not a Panel the UDRP, several things will happen. First, through the
decided to apply the unique legal concepts of ``famous- application of more uniform principles will come greater
ness''or ``official marks''. Whether or not these two con- certainty in results. Second, reliance on previous deci-
cepts are applied will have an impact on the breadth of sions will provide guidance to parties and panels alike
protection given to a mark and on whether or not a therefore increasing certainty. Combined, these will
mark and a domain name are confusingly similar under bring more contractual certainty and help make the
the UDRP. UDRP more fair.
However, even in the absence of such hypothetical The two amendments discussed thus far are simple
examples, the UDRP case law outlined above provides and will not increase the time or cost of resolving UDRP
concrete instances where parties must have been sur- disputes. Quite the contrary, time and cost should actu-
prised by the Panel's application of laws of unrelated ally be reduced because, for example, the parties will not
jurisdictions, or by the failure of the Panel to consider have to argue about which national laws might be appli-
legal argument presented, entirely depending on the cable and panels will not have to decide that issue. How-
Panel's view of the scope or necessity of Rule 15(a). These ever, these two amendments alone may not be sufficient
outcomes could not have been anticipated by the parties, to achieve the goal of increased consistency and alone
who no doubt came away from the proceedings with the nor can they be of real assistance in developing a com-
perception that their participation in the process was pelling body of UDRP case law. Therefore, in addition to
largely unnecessary. the recommendations above, we also recommend that
the UDRP be amended to include an appeal tribunal.
The UDRP was developed by reference to the status
of national laws and international treaties. In our view, it
is redundant to allow for consideration of national laws
Appeal tribunalduring the decision-making process because the UDRP
already reflects a somewhat harmonized version of these The UDRP currently permits parties to commence
laws. The practice of referring to territorial laws under- court proceedings at any time before, after or during a
mines a central purpose of the UDRP -- to provide a UDRP dispute.41
The UDRP also permits ``appeals'' of
uniform mechanism for resolution of domain name dis- Panel decisions to courts of ``mutual jurisdiction'' pur-
putes in the face of the borderless nature of the Internet. suant to section 4(k) of the UDRP and Rule 3(b)(xiii) of
By continuing to refer to national laws, Panels will rein- the Rules.42
These appeals are essentially de novo hear-
force jurisdiction specific intellectual property rights and ings.
78 Canadian Journal of Law and Technology
Despite the current abundance of irreconcilable As for further appeals to the court, these should be per-
Panel decisions, the appeal mechanism contemplated by mitted on the narrowest grounds possible. Thus, along
the UDRP has been invoked in only a very few cases. with the recommendations discussed above, we propose
The time and expense involved in appealing a Panel that the UDRP be amended to include an appeal tri-
decision to court, often one located in a foreign jurisdic- bunal.
tion,43
likely explains why so few Panel decisions have
been appealed. The lack of any practical means of appeal
in the UDRP has contributed to the lack of predict-
Conclusionability and inconsistency.
Moreover, under the current system Panels are free mplementation of the UDRP has proven to be an
to decide disputes on their facts without referring to Ieffectivemeans for resolving cybersquatting disputes.
similar previous Panel decisions, and are certainly not Notwithstanding its success, the UDRP can be even
bound to follow previous decisions. As a result, con- better. Various authors have critiqued the UDRP and
flicting decisions are never, nor will they ever be, recon- have made recommendations for improvement.46
In our
ciled. view, the inconsistent application of legal principles by
Panels under Rule 15(a) must be addressed. While theThe creation of an appeal tribunal would help
goal of creating an international system for dealing withaddress many of the inconsistencies noted in the body of
the global problem of cybersquatting is laudable, RuleUDRP caselaw. An appeal tribunal would establish prin-
15(a) has not proven as successful as hoped in furtheringciples and precedent under the UDRP, which lower level
this objective. In some instances, it may even have cor-Panels would be required to follow. In our view, an
rupted the dispute resolution process.appeal tribunal will play a vital role in the development
of a consistent, legitimate, and effective body of ``UDRP We recommend revisions to the UDRP to allow
law'', independent of national laws. adjudication of disputes by exclusive reference to the
UDRP and without reference to legal principles fromAt least one country code domain name adminis-
particular jurisdictions. Rather, reliance would be placedtrator, Nominet,44
has implemented such an appeal
on definitions to be provided in the UDRP in relation tomechanism. The appeal mechanism that might be
those issues within its mandate, such as bad faith andadded to the UDRP could take many different forms.
confusion, which Panels are to consider under SectionFor example, it might be an absolute right of the parties,
4(a). These changes, along with an appeal mechanismit might require leave of the tribunal to appeal, or it
within the UDRP, would lead to the development of amight be an ``opt-in'' system where the parties would
body of ``UDRP law''. When faced with similar fact sce-have to agree at the outset of the case whether it could
narios or issues, Panels would be able to draw uponbe appealed. No matter what form the appeal mecha-
precedent-setting cases in reaching their conclusions.nism takes, we recommend that it be established with
very clear parameters, and in a manner consistent with The development of a body of UDRP jurisprudence
the goals of the UDRP, including that it be highly expe- independent of national laws is wholly consistent with
ditious and efficient. the objectives of the UDRP. In addition, a UDRP which
Unlike the recommendations above, this recom- requires the application of principles known to the par-
mendation is made knowing that it will add to the cost ties to a dispute in advance of making submissions
and time needed to resolve some disputes. Although would respect the principle of contractual certainty and
these consequences are contrary to the goal of resolving facilitate greater consistency and predictability in the dis-
cybersquatting disputes quickly and efficiently, in the pute resolution process. The UDRP would become more
view of the authors, this is a necessary compromise. It is ``borderless'' as references to national laws disappear. The
our expectation that the majority of awards will not be process would be more fair and more legitimate and
appealed; therefore, there will be no practical impact in confidence in the process would increase. With that, the
most disputes. To minimize the cost and delay of those UDRP will be more readily accepted as, not only an
appeals that are pursued, there should be similarly tight efficient means of resolving disputes, but also as one with
time restrictions as are currently found in the UDRP.45
great credibility.
Notes:
1
See ICANN's Web site at: http://www.icann.org/dndr/udrp/policy.htm. 5
WIPO Report, supra note 2 at para. 150.
2
The WIPO Report can be accessed online at http://wipo2.wipo.int/pro- 6
A fifth centre, eResolution, has filed for bankruptcy.
cess1/report/finalreport.html [hereinafter WIPO Report].
7
See arbiter.wipo.int/domains, www.arbforum.com/domains,3
Ibid. at para. 150.
www.adndrc.org and www.cpradr.orgfor a full schedule of fees.4
See ICANN's Web site at: http://www.icann.org/dndr/udrp/uniform-
rules.htm. For a complete review of the UDRP and its Rules of Procedure, 8
Some purely procedural matters such as the method of communicating a
see B.A. Solomon, ``Two New Tools to Combat Cyber Piracy -- A Com- complaint to a DRP are addressed by the ``Supplemental Rules'' specific to
parison'' (September/October 2000) 90 TMR 679. each DRP.
Reducing Inconsistency in UDRP Articles 79
9
Cancellation has almost never been sought as there is no way to effectively 23
WIPO Report, supra note 2 at para. 176.
cancel a domain name. Once cancelled, a domain name registration 24
WIPO Case No. D2000-0773.
immediately becomes available for registration by anyone, including the
unsuccessful respondent. 25
WIPO Case No. D2000-0019.
10
See, for example, Shirmax Retail Ltd./Détaillants Shirmax Ltée v. CES 26
WIPO Case No. D2000-0060. The identical reasoning was applied (by
Marketing Group Inc., eResolution Case No. AF-0104; SGS Société Gén- the same Panelist) in Capcom Co. Ltd. and Capcom United States. Inc. v.
éral de Surveillance S.A. v. Inspectorate, WIPO Case No. D2000-0025; Dan Walker trading as ``Namesale'', WIPO Case No. D2000-0200.
and Empresa Brasileira de Telecomunica¸c ¨oes S.A.­Embratel v. Kevin 27
WIPO Case No. D2000-0150.McCarthy, WIPO Case No. D2000-0164.
28
In fact, neither Thailand nor Canada is a signatory to, for example, the11
These decisions include: Reef Industries, Inc. v. Moose Lake Products
Trademark Law Treaty (October 17, 1994), online: http://www.wipo.org/Company, Inc., WIPO Case No. D2000-0041; Microsoft Corporation v.
treaties/ip/tlt/. And, Thailand has not signed the Paris ConventionAmit Mehrotra, WIPO Case No. D2000-0053; Marconi Data Systems, Inc.
(March 20, 1883, last amended September 28, 1979), online: http://v. IRG Coins and Ink Source, Inc., WIPO Case No. D2000-0090; Array
www.wipo.org/treaties/ip/paris/.Printers AB v. Lennart Nordell, WIPO Case No. D2000-0092; Avnet, Inc.
v. AV-Network, Inc., WIPO Case No. D2000-0097; Str °afors AB v. P D S 29
WIPO Case No. D2000-0163.
AB, WIPO Case No. D2000-0112; Siba AB v. Torbj ¨orn Hellerstad, WIPO
30
Supra, note 12.Case No. D2000-0146; Arla, ekonomisk f ¨orening v. P D S and Tony
Lennartsson, WIPO Case No. D2000-0151; TV Globo Ltda. v. Green 31
Supra, note 18.
Card Transportes e Eventos Ltda., WIPO Case No. D2000-0351; SEUR
32
WIPO Case Nos. D2000-0014 and 0015.ESPANA, S.A. v. Antonio Llanos Alonso, WIPO Case No. D2000-0691
and Unión Eléctrica Fenosa v. Javier Hidalgo Romero, WIPO Case No. 33
WIPO Case No. D2000-0045. See also Packing World Inc. v. Zynpak
D2000-0892. Packaging Products Inc., supra, note 20. Similarly, in J. Garcia Carrión, S.A.
12
Supra, note 10. v. Ma José Catalán Frías, WIPO Case No. D2000-0239, the Panel stated
that Spanish laws were applicable due to the residence of both parties in13
Ibid.
Spain; however, no Spanish law was cited to support the decision. Rather,14
Ibid. United States law was imported by reference to the decision in Christian
Dior Couture SA v. Liage International Inc., WIPO Case No.15
Nonetheless, as will be discussed in further detail below, the Panelist
D2000-0098.remarked that both U.S. law and international law confirmed his find-
ings. 34
WIPO Case No. D2000-0970.
16
WIPO Case No. D2000-0540. 35
Supra, note 29.17
WIPO Case No. D2000-0489. 36
WIPO Report, supra note 2 at para. 150.18
WIPO Case No. D2000-0110.
37
http://www.cira.ca/en/cat_dpr_policy.html.19
WIPO Case No.D2000-0861.
38
CIRA Policy, section 3.2.20
In addition to the cases noted in the text, there are several other instances
that can be cited, including: Packing World Inc. v. Zynpak Packaging 39
CIRA Policy, section 3.4.
Products Inc., e-RESOLUTION Case No. AF-0233; Lyle Fuller v. Doug 40
As found, for example, in section 43(c)(1) of the Lanham Act, 15 U.S.C.Barber, e-RESOLUTION Case Nos. AF-0294a and AF-0294b; World
§1125(c)(1).Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case
No. D99-0001; Robert Ellenbogen v. Mike Pearson, WIPO Case No. 41
Rules, Rule 4(k).
D00-0001; Mary-Lynn Mondich and American Vintage Wine Biscuits, 42
In Weber-Stephen Products Co. v. Armitage Hardware and BuildingInc. v. Shane Brown, doing business as Big Daddy's Antiques, WIPO Case
Supply Inc., 54 U.S.P.Q. 1766; 2000 US Dist. Lexis 6335 (N.D. Ill. 3 May,No. D00-0004; Alcoholics Anonymous World Services, Inc. v. Lauren
2000), the court stated that it was not bound by a Panel decision. How-Raymond, WIPO Case No. D2000-0007; Home Interiors & Gifts, Inc. v.
ever, the court did not state the standard by which it would review theHome Interiors, WIPO Case No. D2000-0010; Banco Espanol de Crédito,
decision or how much deference would be given to the Panel decision.S.A. v. Miguel Duarte Perry Vidal Taveira, WIPO Case No. D2000-0018;
Ingersoll-Rand Co. v. Frank Gully, d/b/a Advcomren, WIPO Case No. 43
The Rules restrict court proceedings to courts of Mutual Jurisdiction as
D2000-0021; Bellevue Square Managers, Inc. v. Redmond Web and defined therein.
Branden F. Moulton, WIPO Case No. D2000-0056; The Rockport Com- 44
See s. 9 of DRS Policy, online: http://www.nic.uk/ref/drs-policy.html.pany. LLC v. Gerard A. Powell, WIPO Case No. D2000-0064; RAIMAT,
S.A. v. Antonio Casals, WIPO Case No. D2000-0143; Nike, Inc. v. Farrukh 45
See Rules, Rules 5(a) and 6.
Zia, WIPO Case No. D2000-0167; Jeanette Winterson v. Mark Hogarth, 46
See e.g., M. Geist, ``Fair.com?: An Examination of the Allegations of Sys-WIPO Case No. D2000-0235; and America Online, Inc. v. Connect at 50
temic Unfairness in the ICANN UDRP'', online: http://aix1.uottawa.ca/Plus, WIPO Case No. D2000-0978.
~geist/geistudrp.pdf; M. Geist, ``Fundamentally Fair.com?: An Update on21
WIPO Case No. D2000-0847. Bias Allegations and the ICANN UDRP'', online: http://aix1.uottawa.ca/
22
Supra, note 10. Similar statements were made in: Sporting Goods Manu- ~geist/fairupdate.pdf; INTA Internet Committee, The UDRP by All
facturers Association v. InterAD Group Inc., WIPO Case No. D2000-0202 Accounts Works Effectively: Rebuttal to Analysis and Conclusions of
and Alcoholics Anonymous World Services Inc. v. Lauren Raymond, Professor Michael Geist in ``Fair.com?'' and ``Fundamentally Fair.com?'',
supra, note 20. online: http://www.inta.org/downloads/tap_udrp_2paper2002.pdf.