udrp: criticisms and solutions - duke computer science · 2003. 10. 29. · udrp: criticisms and...

UDRP: Criticisms and Solutions

Matthew Hall�, Paul Heymann

�, Trey Williams

��mth6, pbh, rew6 � @duke.edu

Duke University, Durham, NC

December 10, 2002

�Computer Science 2005�Computer Science 2005�Computer Science 2005

1

1 BACKGROUND 1.1 Early History of Name Resolution

Abstract

We look at ICANN’s Uniform Dispute Resolution Processand various allegations against it, deciding which, if any,of the criticisms are valid, and if the process could be fixedto remove them. The criticisms we examine are forumshopping, panel sizes, and the combination of the lack ofa system of appeal and the presence of precedent. Weconclude that each of these criticisms is valid, and thatthe UDRP is in need of reform which will address each ofthese issues.

1 Background

Our goal is to analyze the workings of the Uniform Dis-pute Resolution Process, the UDRP. This process is amethod for dispute resolution created by ICANN, the In-ternet Corporation for Assigned Names and Numbers, pri-marily to deal with trademark infringement on the Internetand the “cybersquatters” of the early to mid 90s. We willfirst look at the background of the UDRP, both in terms ofconflicts over naming resolution and in terms of its originas an ICANN proposal. After looking at naming resolu-tion and ICANN, we will take a look at the difficulties increating a uniform dispute resolution process for domainnames, and how the UDRP as it stands both avoids andis caught by these pitfalls. Next we will look at the crit-icisms of the UDRP, and proposals by the critics, as wellas defenses against these criticisms. Finally, we will makeour own proposals to improve the balance of the UDRPbased on our research.

1.1 Early History of Name Resolution

1.1.1 Postel and IANA

In 1983, the Internet was a collection of computers usingTCP/IP addresses to locate other computers. At the time,there were a little over seventy sites connected, whichspurred the invention of RFC 882, the Domain Name Sys-tem, to make internet navigation easier. Whereas previ-ously someone would have needed to access the computerat 24.54.34.21, now one could simply use a shortened ad-

dress, like “USC-ISIF”.1 By 1987, RFC 1020 transferredcontrol of IP numbers from Jon Postel and ISI to the Net-work Information Center (NIC) at SRI International. Thiswas the first transfer of the domain system to a corporateentity. Ten years later, the control of the domain name sys-tem was again transferred to a corporate entity, this timeNSI (Network Solutions Incorporated), with a contract setto expire in September 30, 1998.

During the pre-NSI years, the Internet was primarilyused by academics and the military. Few disputes aroseover the naming system due to a lack of volume, and forthe most part the only policy which governed the registra-tion of domain names was a first come, first served policy.In fact, in RFC 1591, ISI even goes so far as to simplydisclaim responsibility for both trademark and country re-lated disputes. Regarding these two issues in a sectionnamed “Rights to Names”, RFC 1591 is brief and to thepoint:

1. Names and TrademarksIn case of a dispute between domain nameregistrants as to the rights to a particularname, the registration authority shall haveno role or responsibility other than to pro-vide the contact information to both par-ties.

The registration of a domain name doesnot have any Trademark status. It is up tothe requestor to be sure he is not violatinganyone else’s Trademark.

2. Country CodesThe IANA is not in the business of decid-ing what is and what is not a country.2

1.1.2 Internet Grows Due to Commerce

At the time when NSI gained exclusive rights to run thedomain name system, the Internet experienced explosivegrowth due to the fact that it was opened up to commercialtraffic. With this explosive growth and commercial trafficcame trademark disputes, however. The two major types

1Much of this historical information is culled from the Berkman Cen-ter’s excellent briefing book on ICANN available at [1].

2This RFC is quoted from [2], and this is the entirety of the “Rightsto Names” section.

UDRP Criticisms and Solutions: 1

1 BACKGROUND 1.3 Development of ICANN

of offenders in trademark disputes of the early Internetwere “cybersquatters” and “cyberpirates.”

cybersquatter An individual who registers domainnames of a trademark owner’s mark with the inten-tion of at some point selling the domain names backto the mark owner.

cyberpirate An individual who registers many confus-ingly similar domains to a trademark owner’s markwith the intention of moving the traffic away fromthe original mark owners site, and to the individual’ssite.

When a corporation would try to begin legal proceedingsagainst either of these groups of trademark offenders, theywould often be stopped by fraudulent registration infor-mation regarding the individual owning the domain or do-mains. This led to a number of legal actions against NSI,rather than the individuals perpetrating the trademark in-fringement. Though NSI routinely managed to avoid lia-bility in these lawsuits,3 it nonetheless caused NSI to re-vise their registration policy to impose a domain disputepolicy.

1.2 Name Disputes Under NSI

The name dispute policy under NSI went through a num-ber of revisions, but was neither acceptable to mark hold-ers or to domain holders. Over the years, it was almostuniversally criticized for being both too narrow and toostrongly in the favor of trademark holders. On one hand,the only trademarks which were accepted were state andfederal marks, ignoring many commonly accepted markssuch as:

1. design marks

2. common law marks

3. state registrations

4. foreign personal name rights

3One such lawsuit is the Lockheed Martin lawsuit regarding“SKUNKWORKS.COM” which was dismissed. This information wasobtained from [3].

Additionally, the domain had to directly match the markas there was no concept of “confusingly similar” whichis standard in trademark law. However, on the other hand,having a mark on a domain virtually guaranteed the trade-mark owner ownership of the domain. While NSI’s gen-eral counsel was quoted as saying “We want to emphasizethat Internet users don’t need to have a trademark to geta domain name,” it quickly became apparent that averageInternet users had few rights if there was a mark on thedomain name. Simson Garfinkel, writing for Wired wrotein late 1996:

Network Solutions’ policy shows a fundamen-tal misunderstanding of trademark law and of-fers a novel interpretation of it: the trademarkholder is always right; domain-name holdersmust prove their innocence. And the only placeto do that is in court.4

Clearly, the domain name dispute process under NSI wasneither fair nor efficient: primarily costly court cases re-solved domain disputes, and NSI’s interpretation of trade-mark law seemed to have removed the best aspects forboth trademark owners and those that wished to use fairuse rights. For the most part, the NSI dispute resolutionprocess seemed to serve only one purpose well: defendNSI from legal action.

1.3 Development of ICANN

Due to the various failures of NSI, both as a registrar andin solving name disputes, the US government decided notto renew their contract for domain names in Septemberof 1998. Instead, it was decided that a new organiza-tion would be needed to deal with the administration ofdomains, to increase competition among registrars (NSIhad previously been a monopoly) and clarify a number ofcomplex Internet policy issues.

On July 1, 1997, the Clinton Administration released adocument named Framework for Global Electronic Com-merce, a document which called for the Department ofCommerce to privatize the domain name system. One daylater, the Department of Commerce issued a Request forComments (RFC), looking for comments on domain ad-ministration. By June of 1998, the Department of Com-

4Quoted from [4].



merce had sifted through the over 1500 pages of com-ments it had received, and created a White Paper as astatement of their goals for privatization of the Internet.

1.3.1 Department of Commerce Goals

The Department of Commerce (DoC) had four broad prin-ciples in mind, as well as a number of more specific goals.The four broad principles were clarified in a Green (ini-tial thoughts before comments) and then later White (re-sponses to comments and proposals) Paper:

� stability

� competition

� private bottom-up coordination

� representation5

In attempting to fulfill these goals, the DoC decided thatthe creation of a new corporation and management of theDNS was necessary, and that this corporation would havea number of structural elements to handle Internet namesand numbers, registrars and registries, and Internet policy.

1.3.2 The White Paper and Trademark

In the DoC Green and White Papers, it was readily appar-ent that trademark law was an issue and would becomemore of an issue in coming years:

The Trademark Dilemma. When a trademarkis used as a domain name without the trade-mark owner’s consent, consumers may be mis-led about the source of the product or serviceoffered on the Internet, and trademark ownersmay not be able to protect their rights with-out very expensive litigation. For cyberspaceto function as an effective commercial mar-ket, businesses must have confidence that theirtrademarks can be protected. On the other hand,management of the Internet must respond to theneeds of the Internet community as a whole, andnot trademark owners exclusively. The GreenPaper proposed a number of steps to balance the

5These goals are quoted from the Department of Commerce GreenPaper, referenced in [5].

needs of domain name holders with the legiti-mate concerns of trademark owners in the inter-est of the Internet community as a whole. Theproposals were designed to provide trademarkholders with the same rights they have in thephysical world, to ensure transparency, and toguarantee a dispute resolution mechanism withresort to a court system.

The Green Paper also noted that trademarkholders have expressed concern that domainname registrants in faraway places may beable to infringe their rights with no conve-nient jurisdiction available in which the trade-mark owner could enforce a judgment protect-ing those rights. The Green Paper solicitedcomments on an arrangement whereby, at thetime of registration, registrants would agree tosubmit a contested domain name to the juris-diction of the courts where the registry is domi-ciled, where the registry database is maintained,or where the ”A” root server is maintained.6

The issues were fairly clear, but also difficult: in seek-ing to make Internet names transparent with names in thereal world, the new administrators of the Internet wouldneed to reconcile the Internet with modern trademark law.However, without geographical and product boundaries,many were worried that either there would be a lack offair use, or a lack of trademark strength. The response wasto try to strike a balance between those that were worriedabout fair use of marks and those that were worried aboutdefense of their own marks:

In order to strike a balance between those com-menters who thought that registrars and reg-istries should not themselves be engaged indisputes between trademark owners and do-main name holders and those commenters whothought that trademark owners should have ac-cess to a reliable and up-to-date database, webelieve that a database should be maintainedthat permits trademark owners to obtain thecontact information necessary to protect theirtrademarks.

6Quoted from the White Paper, emphasis mine, [5].



Further, it should be clear that whatever disputeresolution mechanism is put in place by the newcorporation, that mechanism should be directedtoward disputes about cybersquatting and cy-berpiracy and not to settling the disputes be-tween two parties with legitimate competing in-terests in a particular mark. Where legitimatecompeting rights are concerned, disputes arerightly settled in an appropriate court.

... We believe that allowing trademark infringe-ment suits to be brought wherever registrars andregistries are located will help ensure that alltrademark holders - both U.S. and non-U.S. -have the opportunity to bring suits in a conve-nient jurisdiction and enforce the judgments ofthose courts.7

We can clearly see that the Department of Commerce wasinterested in solving both the many jurisdictional and ge-ographical problems as well as trademark law issues thatglobal domain names create. However, for the most part,the Department of Commerce decided to simply farm offthe real work to WIPO, the World Intellectual PropertyOrganization:

The U.S. Government will seek internationalsupport to call upon the World IntellectualProperty Organization (WIPO) to initiate abalanced and transparent process, which in-cludes the participation of trademark holdersand members of the Internet community whoare not trademark holders, to (1) develop rec-ommendations for a uniform approach to re-solving trademark/domain name disputes in-volving cyberpiracy (as opposed to conflicts be-tween trademark holders with legitimate com-peting rights), (2) recommend a process forprotecting famous trademarks in the generictop level domains, and (3) evaluate the ef-fects, based on studies conducted by indepen-dent organizations, such as the National Re-search Council of the National Academy of Sci-ences, of adding new gTLDs and related disputeresolution procedures on trademark and intel-

7Quoted from the White Paper, emphasis mine, [5].

lectual property holders.8

The new corporation which the US government woulduse to deal with these issues issues would later becomeICANN, the Internet Corporation for Assigned Namesand Numbers.

1.3.3 The Creation of ICANN

In November of 1998, the Department of Commerce en-tered into a Memorandum of Understanding (the MoU,or the acronym heavy ICANN-DoC MoU) with a privatecorporation which Jon Postel9 created for the purpose ofdomain and IP address administration. This private cor-poration was named ICANN, the Internet Corporation forAssigned Names and Numbers. The MoU gave ICANNresponsibility for domain names, number, and protocolsof the Internet, as well as control of the root10 (which iscritical to DNS administration) for two years, along withthe requirement that ICANN develop methods and proce-dures to ensure “stability, competition, bottom-up coordi-nation, and representation.” Additionally, with respect totrademarks, the DOC contract required that when creatingnew TLDs11, that ICANN would take into account...

Recommendations regarding trade-mark/domain name policies set forth inthe Statement of Policy; recommendationsmade by the World Intellectual PropertyOrganization (WIPO) concerning: (i) the de-velopment of a uniform approach to resolvingtrademark/domain name disputes involving cy-berpiracy; (ii) a process for protecting famoustrademarks in the generic top level domains;(iii) the effects of adding new gTLDs andrelated dispute resolution procedures on trade-mark and intellectual property holders; andrecommendations made by other independentorganizations concerning trademark/domain

8Quoted from the White Paper, [5].9Jon Postel is a recurring figure in almost all domain related issues

until his unfortunate death in October of 1998.10The root is where all DNS queries look for top level domains, the

first level of a domain.11A TLD or top level domain, is the last item in a domain name, like

.org, .net, and .com, and these were, and are, an artificial scarcity on theInternet which causes domain trademark disputes.


2 UDRP AS DOCUMENT AND IN PRACTICE

name issues.12

The Department of Commerce was obviously interestedin ICANN taking into account both their previous workand comment gathering as well as the work of WIPO indrafting international intellectual property rules. It lookedlike things were on a fairly good track towards both a suc-cessful international body to govern the Internet, led bysomeone who had been involved with Internet protocols,DNS, and DNS administration from the start. However, inOctober of 1998, Jon Postel died, and much of the dreamof a fair body for Internet governance died with him.13

1.3.4 Present Day ICANN

Unfortunately, despite the initial hope and fanfare ofICANN, today it is almost universally looked down on bygovernment, corporations, and anyone who has been per-sonally involved with it. Rather than the question being“How should we operate in conjunction with ICANN?”the question in most cases involving ICANN is “How canwe fix ICANN so that it will work properly?” Congress-man Edward J. Markey (D-Mass.) opined regarding oneof ICANN’s processes: “It was a very arbitrary processwith no appeals and ultimately it’s the antithesis of whatthe Internet is supposed to be, which is a democratizinginfluence on the world.” Additionally, the board has elim-inated At Large elections, by which members of the In-ternet were to be added to the board, which was to bea strong democratizing force within ICANN. Recently,ICANN has been both sued by its own director14 and had alarge Geneva based treaty organization named the Interna-tional Telecommunication Union attempt to take over itsresponsibilities.15 In short, present day ICANN is eitherin need of reform or disbandment, and even the ICANNboard seems to realize that continuing the present coursewill not be successful. However, our focus is not on therecent course of ICANN but rather on the Uniform Dis-pute Resolution Process which was created shortly afterPostel’s death.

12From the MoU.13Much of the useful history of ICANN is guided by [6].14The Electronic Frontier Foundation, the foundation which assisted

the Director with the suit has information available at [7].15See [8].

2 UDRP as Document and in Prac-tice

2.1 Development of the UDRP

2.1.1 WIPO Suggestions

The development of the UDRP began with a number ofproposals by WIPO, which eventually were presented tothe ICANN board in May of 1999. These proposals werelargely adopted and agreed to by many of the ICANN ac-credited registrars, but when they were put up for pub-lic comment it was generally believed that the processesthat they recommended were too strongly in favor of thecomplainants in trademark cases as opposed to the do-main holders.

2.1.2 ICANN Amendments

In order to prevent reverse domain hijacking16 and to re-store a general equality in the proceedings, ICANN am-mended the UDRP to include a provision requiring “badfaith use” on the part of the domain holder, as well asexplicitly stating that they wished to minimize incidentsof reverse domain hijacking and keep the process as fairas possible. The amendment would become one of themost important (or least important, depending on how onelooks at it) parts of a UDRP proceeding:

1. In determining whether a domain namehas been registered in bad faith, consid-eration should be given to the followingfactors in addition to those stated in theWIPO, DNSO, and registrars? policies:

(a) whether the domain name holder ismaking a legitimate noncommercialor (fair use of the mark, without in-tent to misleadingly divert consumersfor (commercial gain or to tarnish themark;

(b) whether the domain name holder (in-cluding individuals, businesses, andother organizations) is commonlyknown by the domain name, even if

16When one gets a domain to which they should not have greaterrights simply because the system is too far in favor of the complainant.


2 UDRP AS DOCUMENT AND IN PRACTICE 2.3 Case Law Under the UDRP

the holder has acquired no trademarkor service mark rights; and

(c) whether, in seeking payment fortransfer of the domain name, the do-main name holder has limited its re-quest for payment to its out-of-pocketcosts.

2. There should be a general parity betweenthe appeal rights of complainants and do-main name holders.

3. The dispute policy should seek to defineand minimize reverse domain name hi-jacking.17

These three items are the few defenses which a domainholder has in the case where a complainant has shown thatthey have rights to a mark which is similar to a domain.

2.2 The fairness of the UDRP

2.2.1 Is it fair as a document?

Before going too far into the specifics of bad faith use,it seems like a good time to focus for a moment on theUDRP as a document. For the most part, it is a simpledocument, and the framers had relatively simple purposein mind: creating a cheap, simple way to retrieve a domainfrom cybersquatters or to defend a domain from someoneattempting to reverse hijack it. In these two things, theUDRP as a document attempts to be balanced and lim-ited, applying only to cybersquatters and limiting its ju-risdiction to situations where the activity is clearly ille-gitimate. In short, the UDRP was not meant to replacelegal processes, but rather to provide a cheap alternativefor individuals without the means to fight traditional legalbattles, and especially for residents of countries outsideof the US who would need to hire expensive counsel withknowledge of our legal system. However, the problem isthat it has become all of these things, but without all ofthe traditional safeguards against abuse.

2.2.2 Is it fair in practice?

In practice, the UDRP has grown much beyond the orig-inal intentions of its framers. For one, it has developed

17From ICANN minutes, [9].

the quality of common law style precedents. While thisis usually a good feature for any legal system, the UDRPhas no system of appeals and no particular requirementsfor information given by panelists for their decisions. Of-ten, one has little information to tell whether the pan-elist decided a case due to specifics of the case, jurisdic-tion where they were presiding, or any other information.What’s more, some panelists make use of modern trade-mark law, whereas others either choose not to or are sim-ply not informed on the subject (since the UDRP makesno demands regarding trademark law, it is intended as anexpedient in some cases, not as a substitute for legal pro-ceedings), which makes for an odd system of precedent.Precedent managed to sneak into the system nonethelessin the eresolution.com case:

”Although entitled to consider principles of lawdeemed applicable, the Panel finds it unneces-sary to do so in any depth. The jurisprudencewhich is being rapidly developed by a wide va-riety of Panelists worldwide under the ICANNPolicy provides a fruitful source of precedent.”3636275 Canada, dba eResolution v. eResolu-tion.com (eresolution.com), D2000-0110.

... and the UDRP as a process has been stuck with it eversince. Despite the fact that the framers had good inten-tions for the UDRP as a limited service to domain hold-ers and trademark holders, it has likely grown beyond itsoriginal capacity for this: however, how far and if it is stilla capable system is what we are going to analyze in thispaper.

2.3 Case Law Under the UDRP

In regards to case law under the UDRP, it is first of allnecessary to note that it is entirely unclear in many caseswhy decisions were made, and for what purpose. This isan unfortunate aspect of the UDRP as a system. One of-ten has little idea why choices were made (as mentionedabove) due to questions about which law, and of what lo-cality, is being applied. However, a few rough precedentsare included below.


3 DIFFICULTIES OF CREATING A UDRP 3.1 Trademark Law Underlying the UDRP

2.3.1 Bad Faith Use

Bad Faith Use has continually grown until the point wherethe defendant appears to be at a severe disadvantage, atleast in the case when they do not appear for a proceed-ing. Whereas the UDRP’s bad faith are more generousto the domain holder, in Telstra Corporation Limited v.Nuclear Marshmallows (telstra.org), D2000-0003 it wasdecided that no use at all was bad faith use, in light of thefact that the panelist couldn’t come up with a fair use.18

Other cases have similarly grown bad faith use such thatwe will likely need to look at the growth of bad faith useand use of precedents regarding bad faith use as a possi-ble cause for bias in the favor of the complainant in UDRPproceedings.

2.3.2 Legitimate Parties

The UDRP has been used to deal with two parties havinglegitimate interests in the same name, for instance ShelleyHarrison v. Coopers Consulting, Inc. (launchpad.com),FA-0121; Fiber-Shield Industries, Inc. v. Fiber ShieldLTD (fibershield.net), FA0092054.19 This is clearly notwhat the UDRP was intended for, but this use of theUDRP is likely to stay as the UDRP is a much cheaperand more reapid alternative than the court system, as wellas the above precedents.

2.3.3 Trademarks

The UDRP currently allows a number of different typesof marks to be used, a number of marks which hasgrown since its inception. It allows both geographicalmarks (which WIPO did not previously want) and per-sonal names, since these were deemed to be common lawmarks.

3 Difficulties of Creating a UDRP

By looking at the amount of criticism that the UDRP hasreceived thus far and the way in which it has been applied,one might be tempted to think that the UDRP has failed

18Nuclear Marshmallows is due to the fact that this was the registra-tion information and the party (marshmallow or not) did not choose toappear at the proceedings.

19References courtesy of [6].

miserably as a document. However, many of the issuesthat have been described are not a result of the UDRP’sfailings: instead, many of these are indicative of the na-ture of the problem that the UDRP seeks to solve. TheUDRP is rooted firmly in trademark law. Though trade-mark law is old and well studied, there still exist someareas that it does not cope very well with, particularly is-sues of location and jurisdiction. When trademark law isapplied to the Internet, as it is under the UDRP, these twoproblems grow exponentially because of the massive scaleof the Internet, and new problems are introduced that donot exist in traditional trademark law. Additionally, by at-tempting to make the domain dispute process as painlessand inexpensive as possible, the UDRP is forced to sac-rifice many of the legal proceedings that make trademarklaw so unique and complicated, lessening the law’s abilityto do what it is supposed to do. So, for all of its shortcom-ings, many of the problems associated with the UDRP aremore a result of the massive scope of the UDRP’s noblegoal and less a symptom of failed implementation.

3.1 Trademark Law Underlying the UDRP

3.1.1 What Is A Trademark?

In order to understand the difficulties that trademark lawitself poses to the creation of a UDRP, it first helps to un-derstand what exactly trademarks are and how they work.A trademark is an item which helps consumers to distin-guish one company’s products from another’s. This item,can be almost anything, including a word, phrase, logo,sound, design, or anything else that helps consumers todistinguish goods in the marketplace as coming from aunique source 20. Although the status quo might lead oneto believe that trademarks were created in order to givebusinesses more power, they were actually created in or-der to protect consumers by allowing them to associatesuperior (or even inferior) goods with familiar “brand”names. This distinction between brands lays at the heartof trademarks and is very closely related to the way inwhich trademarks are granted and the law is applied.

20Quoted from the trademark FAQ on Pliam Law Group’s trademarkresources website [11].


3 DIFFICULTIES OF CREATING A UDRP 3.1 Trademark Law Underlying the UDRP

3.1.2 How Do Trademarks Work?

In order to receive a trademark on something, the mostimportant factor is the distinctiveness of the trademark.The actual definition of ”distinct” is convoluted andburied in legal terms, but the court system has imple-mented two standards that must be met in order to provedistinctiveness: ”confusingly similar” and ”likelihood ofconfusion” with another trademark. These standards aremet ”if the relevant consuming public will likely be con-fused or mistaken about the source of a product or servicesold using the mark in question.” 21 The important part ofthis statement is that the ”relevant consuming public,” orthe consumers who are actually attempting to distinguishbetween two goods, must be the ones who would likelybe confused. This is an area in which trademark law runsinto problems, because the fact that any random personmight confuse two goods does not make the trademarkson these goods ”confusingly similar.”

3.1.3 The Problem of Location

The problem that arises here is one of location, both ofbusinesses and their ”relevant consuming public.” Thoughtwo local restaurants, one in New Jersey and one in Cal-ifornia, might have the same name, if one of the restau-rants owns a trademark on the name, they would not beable to sue the other for trademark infringement. Sincethe restaurants exist in very disparate physical locations,there is no overlap between each their consumer bases.Thus, their names would not be ”confusingly similar” tothe ”relevant consuming public” of each business, leavingno grounds for legal action. However, this case would be-come much more complex if the geographic regions of thecustomers happened to overlap, because then consumerscould potentially be confused between the two restau-rants.

Indeed, Victoria’s Secret became embroiled in a trade-mark dispute over this very issue in November of 2002.22 The retail chain sued Victor Moseley, the proprietorof ”Victor’s Little Secret” in Elizabethtown, Kentucky fortrademark infringement. During the trial, the defendantargued that there was no ”objective evidence the publicwill confuse the disputed mark with [that of Victoria’s

21Quoted from the glossary of the Pliam Law Group’s website [12].22Quoted from CNN [13].

Secret],” because of the local nature of Moseley’s busi-ness. 23 However, siding with the plaintiff, the court heldthat ”consumers who hear the name ’Victor’s Little Se-cret’ are likely automatically to think of the more famousstore and link it to the Moseley’s adult-toy, gag gift, andlingerie shop.” 24 Though Moseley lost, he appealed tothe Supreme Court, who accepted the case on the basisthat trademark law does not deal very well with issues ofphysical location.25 With this in mind, it is easy to seethe difficulty in creating the UDRP, given that the trade-mark law upon which it is based is a highly contentiousissue still being argued in the highest court of the UnitedStates.

3.1.4 The Problem of Jurisdiction

Another problem that physical location poses for the ap-plication of trademark law is that of jurisdiction. In ex-amining the Victoria’s Secret case this is not apparentbecause the plaintiff and the defendant are both subjectto the same federal trademark laws. However, this be-comes an issue when the involved parties reside in differ-ent countries, with vastly different trademark laws. Fortu-nately, a portion of this problem has already been solved.In 1883, many countries realized that with the explosivegrowth of international commerce, something needed tobe done to at least attempt to make the trademark lawof various countries somewhat similar. The result of thiswas the Paris Convention, an international treaty whosepurpose was ”the creation of a union which, without en-croaching on the municipal law of the contracting coun-tries, would lay down a number of general principles se-curing the interests of industrial property in the interior ofa country as well as abroad.”26

Though this was a start, the treaty provides only ”gen-eral principles,” not strict guidelines, and was only signedby eleven countries. Things have improved, with 145nations27 now being party to the Paris Convention, aswell as other international trademark treaties enforced by

23[13]24[13]25Though the Supreme Court accepted Moseley’s writ of certiorari,

the case will not be heard until the 2002-2003 session.26Quoted from the trademark information section of Ladas & Perry,

an international intellectual property lawfirm [14].27Though the United States did not originally sign the Paris Conven-

tion, it is now a member state.


3 DIFFICULTIES OF CREATING A UDRP 3.2 Applying Trademark Law on the Internet

the World Intellectual Property Organization, but thesetreaties generally only provide ”minimum protections” intrademark law, so there are still great disparities betweennations’ laws.28 This serves as an obvious problem forthe UDRP, which by its very nature is global. Indeed,instead of attempting to address the issue, the UDRP ac-tually make things more convoluted and less uniform byfailing to specify which local laws should be applied to agiven dispute.

3.2 Applying Trademark Law on the Inter-net

By now, it should be clear that trademark law, by itself,is plagued by a few intrinsic problems. With the UDRP,this defective body of law is being taken and applied uni-versally to the Internet. This not only exacerbates the ex-isting issues, but also introduces additional elements intothe problem domain. Consequently, these issues serve assevere stumbling blocks on the road to the creation of auseful UDRP, as they are not merely the symptoms of itsflawed application, but instead, are inherent to the natureof the problem of applying trademark law to the Internetitself.

3.2.1 Trademark’s Location Problem Revisited

As has been previously mentioned, physical location is avery important point of consideration in trademark law.Multiple companies may stake claim to the same exacttrademark so long as their consumer markets are physi-cally disparate enough to negate the possibility of confu-sion between the companies’ marks. However, the burst-ing of the Dot-Com Bubble aside, the late 1990’s provedthat the Internet is indeed the world’s largest market. Withthis in mind, a flaw in the UDRP’s attempt to apply trade-mark law to the Internet becomes glaringly apparent: un-like the physical world, the Internet cannot be segmentedinto geographically distinct markets. The UDRP makesno distinction between top-level domains, so a trademarkowner can lay claim to its trademark in any top-level do-main . Thus, the application of trademark law to the In-

28Quoted from techlawonline.com, a website whose aim is to ”pro-vide every possible resource relating to intellectual property law, in-cluding information related to copyrights, trademarks, patents, entertain-ment, and international law.” [15]

ternet removes its ability to provide overlap in the distri-bution of trademarks, with regard to territory.

3.2.2 Trademark’s Jurisdictional Problem Revisited

Despite the attempts of the Paris Convention, WIPO,and other treaties to standardize international intellectualproperty law, this remains as one of the most problematicareas in the application of trademark law. Before the ad-vent of the UDRP, a defendant in a domain name disputewould have to spend a large amount of money on a lawyerwho was well versed in the intricacies of trademark lawin the legal jurisdiction in which a plaintiff filed a petitionfor a hearing. To its credit, the UDRP has actually done agreat job of solving this part of the problem by removing avast portion of the legal fees associated with internationaltrademark disputes. However, it has simultaneously ex-panded the problem as well.

The UDRP does not determine which local laws shouldbe applied in domain disputes. Additionally, the panelistswho resolve UDRP disputes hail from all over the globe.As a result, the panelists, who presumably have somebackground in trademark law to begin with, are likely toapply trademark law, as they know it and are used to it,to the disputes that they must settle. This unintention-ally introduces a ”jurisdictional bias” into the panels’ de-cision making processes. Although this problem is some-what unavoidable29, it is made much worse by the factthat complaintants can select their panel, and in turn, the”bias” that the selected panel is likely to assert.

3.2.3 Trademark Distinction on the Internet

Another problem caused by the application of trademarklaw on the Internet deals with the aforementioned ”dis-tinctiveness” of trademarks. As has been mentioned,trademarks can be granted for most anything, not onlytext. The problem, however, is that a domain name ismerely a string of text without any other differentiatingcharacteristics. In the real world, mark owners with twosimilar sounding names can prevent their mark from be-ing construed as ”confusingly similar” to a competitiors

29Anyone who is chosen will, to some extent, whether intentional ornot, display their own personal bias in rulings. It is very difficult todisplay absolute objectivity in a case such as this where a panelist mightnot know anything at all about the trademark law in a jurisdiction otherthan his or her own.


3 DIFFICULTIES OF CREATING A UDRP 3.2 Applying Trademark Law on the Internet

by making their mark distinct through the use of phrases,graphics, sound, logo, and other things. With domainnames, this ability is totally lost. Additionally, one promi-nent domain name ”consultant” urges his would-be clientsto choose the most generic domain names they can find,because:

Web users are getting increasingly domainname savvy. Instead of attempting to locate aweb site for their topic of interest using searchengines, they are guessing at web site namesby typing a generic name straight into theirbrowser. This makes generic domain namesvery valuable.30

This is sure to cause a huge increase in the number of do-main disputes, because traditional trademark law frownsupon genericity in favor of distinctiveness. Indeed, thereis somewhat of a legal continuum of protection for trade-marks. The most heavily protected trademarks are thosethat are inherently distinctive (even in this category thereare discrete levels as well, with ”fanciful” marks receiv-ing the most protection, ”arbitrary” marks receiving someprotection, and ”suggestive” marks receiving the low-est protection), next comes marks which are not distinctby nature, but which have gained distinctiveness throughadvertisting and other means, and lastly, come genericmarks, for which there is very little legal protection31.Thus, much like the location problem, the UDRP re-moves trademark law’s ability to grant a multitude of sim-ilar trademarks because of the inability to differentiatemarks in domain names, and instead, grants one trade-mark holder exclusive monopoly over a mark.

3.2.4 Finding Prior Trademark Usage and Trade-mark Infringement

Another interesting problem that the Internet poses totrademark law is that of finding prior uses of the trade-mark. In the past, one trademark law firm recommendedthat ” you should conduct a reasonable search of existingmarks in the region in which you intend to promote your

30Quoted from the corporate website of Lee Hodgson, a commerical”domain name consultant.” [17]

31Quoted from the ”Acquiring and Registering Trademarks” sectionof Pliam Law Group’s Trademark Law website. [16]

goods or services”32 However, as has been mentioned,with the Internet, the ”region in which you intend to pro-mote your goods or services” becomes the entire world,whether you like it or not. Though a mark holder couldconceivably attempt to restrict access to their site to a spe-cific geographic region, the recent ruling in Yahoo’s Nazimemorabilia case has shown that it is nearly impossibleto do so33. Additionally, even if one was able to restrictaccess to the site to a specific region, that does not changethe fact that the mark holder is still using the mark onthe Internet, a worldwide market, potentially introducinga ”likelihood of confusion” to consumers that the firm didnot even wish to engage in business transactions with.

Thus, with domain names, a trademark holder mustsearch the entire world for the preexistence of a trademarkon the domain name the holder wishes to use. Though ex-pansive search engines, such as Google, are starting tomake this process much more viable, the problem is thatin many domain disputes, the domain name in question isnot actually hosting a website, but instead is just actingas a ”placeholder,” making a Google search fruitless. Onthe other hand, owners of a trademark must be diligent infinding infringing uses of their trademark. If mark ownersdo not do so, their trademark can become ”generic” andtheir inaction acts as an ”admission that you did not con-sider the mark your proprietary property,” thus forfeitingtheir right to the trademark34. As a result, the UDRP’sapplication of trademark law to the Internet makes it ex-ponentially difficult for Internet users to find prior usageor infringing uses of trademarked names.

3.2.5 The WHOIS Database

Though searching the web may not always be a viableavenue for finding prior trademark usage, the WHOISdatabase exists as another resource. The WHOIS databasecontains contact information about the owner or regis-trant of a domain name. Although it would seem thatthis database would be a great searching tool for peoplewishing to find existing trademarks, that has not actuallybeen the case. In May of 1999 the United States Depart-

32Quoted from the ”Acquiring and Registering Trademarks” sectionof Pliam Law Group’s Trademark Law website. [16]

33Quoted from Wired’s ”France Gags Yahoo on Nazi Bids” [18]34Quoted from the ”Using and Maintaining Trademarks” section of

Pliam Law Group’s Trademark Law website [19]


3 DIFFICULTIES OF CREATING A UDRP 3.3 Creating a Cheap and Efficient Process

ment of Justice began investigating NSI for allegations ofabuse of the database. It was claimed that NSI had ”al-tered the location and availability of the database and itsinformation” by:

[R]emoving the creation date from domainsin the Whois database, removing the entiredatabase for a short period of time, and ’makingnoises about needing to restrict access to thatdatabase under the guise of needing to protectagainst domain-name harvesting.’35

Though NSI’s excuse of protecting the information ofits registrants may have been somewhat valid, they werereprimanded and fixed the issue. However, even thoughthe WHOIS database is now easily accessible, the accu-racy of the information contained therein is sometimes ofquestionable veracity. In September of 2002, ICANN fi-nally decided to resolve the issue and threatened to re-move VeriSign’s (formerly NSI) ability to function as adomain registrar unless they improved the accuracy of theWHOIS information36. ICANN went so far as adopting aformal policy that all registrars must abide by in order toprovide accurate contact information37. Though this hashelped trademark owners somewhat in gaining the contactinformation of domain holders, inaccuracies still exist inthe data, and recently, companies have begun offering ser-vices to register domain names through a proxy so as toprotect the anonymity of registrants38. As a result, theapplication of trademark law to the Internet poses graveproblems to search and contact of trademark holders andinfringers.

3.3 Creating a Cheap and Efficient Process

The goal of the UDRP was to create a relatively quickand cheap procedure through which trademark owners,the world over, could protect the usage of their marks indomain names. Traditional trademark law, on the otherhand, is a very slow, complicated, and expensive process.

35Quoted from Wired’s ”Who Owns WHOIS Database?” [20]36Quoted from News.com’s ”VeriSign May Lose Dibs on Domain

Sales [21]37In response to the allegations of WHOIS abuse, ICANN released a

formal policy to deal with information inaccuracy [22]38URDPlaw.net hosts a link to an article detailing this phenomenon

on its UDRP news section [23]

Thus, although the UDRP’s goal is a noble one, its attemptto streamline the dispute process and make it inexpensivecreates problems by tarnishing some of the important as-pects of traditional trademark law.

3.3.1 Speeding Up The Process

One of the most complicated and time consuming aspectsof trademark law is the presentation of and argument overevidence. Whereas trademark litigation is generally ”a de-liberative process requiring rigorous standards of proof,”the UDRP’s standards of proof are much less demand-ing 39. Though this has aided in the UDRP’s quest toquicken the process of domain name disputes, it has tar-nished many of the fundamental underpinnings of trade-mark law. Furthermore, in normal trademark law, as inmost other traditional fields of law, there is extensive re-view and authentication of the evidence that is presentedat trial. Though this helps to ensure that the evidence pre-sented is of immaculate veracity, it adds a lot of time tothe trial process. Thus, the UDRP removes this process ofevidentiary review, and instead allows facts and evidencein case to be ”alleged.”40 Evidence can consist merely ofphotocopies of documents attached to exhibits. Print-outsof websites can even be used as evidence, something thatwould never be allowed in a traditional court of law. TheUDRP is so adamant about keeping the process quick thatthe UDRP resolution providers each implement limits onthe length of briefs that are filed. Though an initial com-plaint or response may consist of hundreds of pages ina normal court of law, the UDRP panels limit them tobetween one and a half to ten pages41. Consequently,though traditional courts have very strict guidelines re-garding the accuracy, admissibility, and relevance of ev-idence, the UDRP has forfeited these legal safeguards inorder to ensure that the domain dispute process is as quickas possible.

3.3.2 Lowering The Cost Of Domain Name Disputes

Though initially the UDRP accomplishes its goal of re-moving the enormous legal costs involved with arguing a

39Quoted from Diane Cabell’s overview of the UDRP [6]40Quoted from Diane Cabell’s overview of the UDRP [6]41Quoted from the section entitled ”UDRP Process - Choosing a

Provider” of [6]


4 CRITICISMS 3.5 Creating a Fair Process

domain name dispute in a court room, it does not do thisin the long run. In order for a single-person panel to heara single domain dispute, the fees of the various UDRPproviders range from only $750 to $2000. Similarly, for athree-person panel, these fees range from $2200-$450042.With the average law firm billing at a rate of $228 an hourin 2002, these costs are very low indeed43. Additionally,if a domain name dispute is litigated in a normal courtroom, fines can be levied if damages can be proven. TheUDRP, removes this potential cost to litigants by prevent-ing panelists from levying fines in any case. However,the UDRP provides no means of appeal. Thus, if a com-plaintant or a respondent wants to appeal the decision of aUDRP panel, this must be done in a normal court of law,with the appealing party incurring the full costs of trade-mark litigation that the UDRP seeks to negate. Keeping inmind the haphazard way in which the UDRP has been ap-plied thus far, this is clearly a problem because there havebeen quite a large number of appeals made on decisions.

3.4 Enforcement of Rulings Under theUDRP

In traditional trademark law, enforcement of rulings is asimple task: the body of government deciding cases hasthe means necessary to do this. However, the UDRP wasnot created and is not decided by a governmental body.Though one might think that this would cause problemsfor the enforcement of UDRP proceedings, this is not thecase, at least for now. This is because right now, the DNSsystem is not truly distributed. ICANN holds exclusivecontrol over the root servers of the system, and thus hassignificant power over controlling the actions of domainholders.

However, there is a great possibility that this couldchange in the future. On October 21, 2002 a massivedistributed denial of service attack was launched againstthe root domain servers. This attack completed disabledseven of the thirteen root servers, and severely restrictedthe capabilities of two others 44. Thankfully, the attacksabated quickly so the physical relocation of two of the

42Quoted from the section entitled ”UDRP Process - Choosing aProvider” of [6]

43Quoted from the 2002 Survey of Law Firm Economics [24]44Quoted from The Register’s ”Verisign Moves DNS Root Servers in

Defensive Ploy” [25]

servers was the only action necessary to fix the problem.Though this may be the case, the attacks illustrated a fun-damental flaw in the DNS system: the root servers are asingle point of failure, making the system very susceptibleto attacks. In the future the DNS system may undergo fun-damental changes in order to make it truly distributed andprovide it with the ability to ward off similar attacks. As aresult, for now, the enforceability of UDRP rulings is notin question, but in the future, if this changes, the enforce-ment of panelist rulings could become a huge problem.

3.5 Creating a Fair Process

In examining the problems posed by the creation of theUDRP, one important final question is, once a system hasbeen designed to deal with trademark disputes of an in-ternational and implicitly non-geographic nature, how dowe decide whether the system is fair? At the heart of thisissue lies the question of whether the success, or failure,of the UDRP should be dependant upon the equality ofcomplainant and respondent success rates, or any otherlitmus tests which might be applied to a system such asthe UDRP. Though some might argue otherwise, for allintents and purposes, the legal system of the United Statesis pretty fair: the rights of both parties, especially those ofthe defendant, are well defined and protected. However,if one were to look at the statistics of civil suits in theUnited States court system, the success rates would mostcertainly not be split evenly between the plaintiff and thedefendant. A much better analysis of the ”fairness” of thesystem would be an examination of specific cases and aninquiry of how the rights of the defendant and plaintiff areestablished in law. We have decided that although an indepth statistical analysis of the UDRP and similar com-peting systems would provide valuable information, themost reasonable way to study the UDRP is in this samemanner: through case studies as opposed to general statis-tics.

4 Criticisms

Our task in this paper is to look at the UDRP and the crit-icisms of it and then come to a conclusion as to which ofthe criticisms are valid, if any, and if the process could


4 CRITICISMS 4.1 Forum Shopping

be fixed to remove them. The criticisms we will examineare:

forum shopping The ability of a complainant to gainan advantage in the proceedings by choosing wherethey will take place and who will be arbitrating them.

panel sizes The effect of panel sizes on the outcome.Often statistically smaller panels lead to better out-comes for the complainant.

appeals and precedent As a dispute resolution processand not a court of law, the UDRP has no system ofappeals or oversight, yet panelists have increasinglystarted turning to possibly faulty previous precedent(without appeal or oversight) in deciding new cases.

The above three criticisms strike at the heart of the processof the UDRP and the ways in which it has grown over thepast several years. Their validity or invalidity will help usdetermine if the UDRP is a strong process for dispute res-olution for domains or if it is merely another intermediatestep like NSI’s flawed dispute resolution process.

4.1 Forum Shopping

After a complainant files a complaint, and the respon-dent responds, the next step in the UDRP process is forthe complainant to select an arbitration forum, as per theUDRP:

d. Selection of Provider. The complainant shallselect the Provider from among those approvedby ICANN by submitting the complaint to thatProvider. The selected Provider will administerthe proceeding, except in cases of consolidationas described in Paragraph 4(f).45

Unlike traditional arbitration outside of the legal systemwhere both parties would negotiate a forum, the com-plainant bears the sole responsibility for financing the pro-ceedings and choosing the forum (unless the respondentwants to expand the number of panelists to three, whichthe respondent then has to pay for, this ends up beingto the respondent’s advantage, see Panel Sizes, below).This gives the complainant a unique advantage: they

45See ICANN UDRP.

can choose arbitration forums in order to maximize theirchances of winning. Whether this is possible is not reallydebated, it obviously is. Rather, the question is whetherthis activity actually happens or whether this merely cre-ates a more streamlined, efficient process which the com-plainant funds.

4.1.1 Opportunities for Forum Shopping

Michael Geist of the University of Ottawa is one of themain commentators on “Forum Shopping” in UDRP pro-ceedings. He argues that the bulk of the UDRP caseloadhas quickly moved to the providers with the highest com-plainant win rates. After tabulating complainant win ratesand the market share of each provider as of July 7, 2001,Geist found that the overwhelming market share lay withthe providers who gave the highest chance of winning ina UDRP case. These statistics (at least viewed alone)suggest that the win rate of complainants at a particularprovider is at least a major factor in the market share ofthe provider. Geist suggests that because of their roughlyequal winning percentages, WIPO and NAF have cap-tured the market from eResolution.46

4.1.2 Ruling Out Other Factors

Naturally, before we simply jump to the conclusion thatthere is forum shopping taking place, we should take alook at other possible ways in which the providers mightdifferentiate themselves. The main obvious ways in whicharbitration providers might differentiate themselves are:

� filing fees (price)

� panelist experience

� marketing

� special rules

Geist points out, and we can see from provider infor-mation, that filing fees for a UDRP case are negligiblein comparison to the cost of the actual process and thevalue of winning. Each provider costs between about$1000 and $4000 to act as an arbitrator in a UDRP case.47

46Geist’s major paper on the subject of forum shopping is [10].47These figures are available conveniently at http://www.

udrpinfo.com/prov.php for every current provider.


4 CRITICISMS 4.1 Forum Shopping

Provider Complainant Win Rate Market ShareWIPO 82.2% 58%NAF 82.9% 34%

eResolution 63.4% 7%CPS 59.1% 1%

Table 1: Complainant Win Rates and Market Share by Provider According to Michael Geist, July 7, 2001.

In terms of panelist experience, many panelists work formore than one UDRP provider, so that whereas once oneprovider might have had more trademark or internationallawyers and another might have had more law professors,today the differences are far less pronounced.48 Market-ing plays a part, though it seems likely that this marketingis focused solely on the complainant, as the complainantchooses the arbitration forum. Lastly, special rules play apart in the decision, but most special rules do not modifythe process particularly heavily, and in general they are infavor slightly of the complainant.

In short, it seems that the main aspects of being a suc-cessful UDRP forum provider (in terms of market share atleast) are having a high complainant winning percentageand marketing it well to complainants to bring in morebusiness. Even ICANN’s general counsel has admittedthat forum shopping was considered as an issue at theUDRP’s inception,49 and it seems likely that it continuesto be at least somewhat of an issue today.

4.1.3 Explanations Against Forum Shopping

There have been several defenses of the UDRP against thefindings of Geist and others with respect to Forum Shop-ping. INTA50 has come out with a report entitled “TheUDRP by All Accounts Works Effectively: Rebuttal toAnalysis and Conclusions of Professor Michael Geist.”This report argues predominantly that Geist solely usesbare statistics in his findings (as opposed to analyzingcases), that he ignores default cases (since whether the re-spondent merely defaults obviously would affect the win-ning percentage) and the fact that he doesn’t really look

48See also, [10].49http://www.wired.com/news/print/0,1294,

39992,00.html50The International Trademark Association

at the forums from a historical perspective.51 The INTAreport argues that initially without being able to look atwinning percentages, complainants would simply look forthe more well established providers: in this case, WIPOand NAF, which had been around since 1984 and 1994.Over time, WIPO and NAF would obviously gain evenmore ground in terms of reputation as UDRP providers.What’s more, the report argues that since WIPO and NAFhave roughly equal winning percentages, it is likely thateResolution (before its bankruptcy) was out of step withWIPO and NAF, as opposed to WIPO and NAF being outof step with eResolution.

4.1.4 Our Research

Michael Geist, in his two papers Fair.com and the Up-date to Fair.com, does a reasonably good job of bringingthe case against the UDRP. The response from INTA is agood one in that it responds to all of his statistical points,but it doesn’t do a good job of showing that the factorswhich would cause a UDRP provider to be biased are notpresent. In short, we agree with the INTA paper in thata case by case analysis of at least some random portionof the cases is necessary in order to get a real grasp ofwhether forum shopping is an issue with the UDRP. Ifsignificantly weaker cases were winning with one regis-trar and not another, then it would at least give some qual-itative evidence that the process was not fair. However,with eResolution in bankruptcy and WIPO and NAF con-trolling the lion’s share of the UDRP case load, it seemsimpossible to conduct such an analysis at present. Werean analysis to be conducted, it would likely simply be ananalysis of the few cases eResolution was able to hear be-fore going bankrupt, and an analysis of its practices in

51Report available at http://www.inta.org/downloads/tap_udrp_2paper2002.pdf on December 5, 2002.


4 CRITICISMS 4.2 Panel Sizes

choosing panelists and monitoring them (which no otherprovider does) as opposed to the other providers.

4.2 Panel Sizes

After a forum is chosen, the next step is for that providerto assign a panelist to the case. By default, the panelsize is set to be a single, ”randomly assigned” (whichproves to not always be the case) person ruling on thecase. Then, either the complainant or respondent can de-cide to increase the panel size to three at an additional costto themselves. This is the one area that the respondent caninfluence the process of the ruling. When there is a threeperson panel, One person is selected by the complainant,one person is selected by the respondent, and one personthat is selected from a list that both parties provide of ac-ceptable resolutions.

4.2.1 Bias in Smaller Panels

With out a doubt, the biggest factor in the decision of thecase is the panel size. On single person panels, the rulingstend to be 20% (WIPO) to 33% (NAF)52 more in favor ofthe respondent. Factors for this discrepancy include:

� More control over who is ruling on the case by theprovider

� Monetary incentive for ruling in favor of Com-plainant

� The UDRP is more loosely interpreted since a lonepanelist does not need to convince others of the va-lidity of their ruling

The first two items on this list go hand in hand. Theprovider is given an incentive to rule in favor of the com-plainant more often since the more likely a complainantis to win at a particular provider, the more likely theyare to choose that forum for their dispute. Therefore, theprovider wants to put the panelists who have the high-est rate of favoring the complainant on cases. This, inturn, makes the panelists want to rule in favor of the com-plainant to get more cases and make more money. Themost extreme example of this is with the NAF. They have

52See [10].

6 panelists ruling on 53 % of their cases, with a rate ofruling with the complainant 93% of the time.53.

With single person panels, the likelihood that a misin-terpretation of the UDRP will go unnoticed is high. Thelone panelist has no one who they need to justify theirdecisions to, and no one to argue with them about theirdecision.

4.2.2 Cost of Larger Panels

It has been shown that the respondent gains about a 25%advantage if they opt to go with the larger three personpanel, yet not every respondent requests the use of a threeperson panel. And even odder, the complainant is the onewho more often will request a three person panel.54 Pos-sible explanations for this are the added cost and time ittakes to have a three person panel rule on a particular case,lack of faith in single person panels, or a lack of interestby the respondent.

The price to have a case heard by a three person panelas opposed to a single person is somewhat costly, ataround $2500 more for the case. While this might beworth it for a large company to request a three personpanel if they believe that their case is strong and to en-sure against the incompetence of a lone panelist.55 It isa lot of money for a consumer to pay if he has no plansof making any revenue from the site. In other words, itis probably not worth it to Joe Cybersquatter, who mostlikely has no plans to develop the site any time in the nearfuture.

4.2.3 Responses to Panel Size Bias

One possibility for the discrepancy in the way that thecases are ruled for three person panels as compared to sin-gle person panels is the legitimacy of the cases. One mea-sure for the legitimacy of a cases that go through a partic-ular provider is the percentage of these cases that default.If the respondent doesn’t feel the need to go through theprocess of the UDRP, they are admitting to the fact thatthey have no legitimate use for the domain name, and thedispute over it is not worth their time. Those who do de-cide to respond of those who have less than credible cases

53Fair.com? Geist54Statistics can be found at http://www.udrpinfo.com55See [10].


4 CRITICISMS 4.4 Our Research

will most likely opt for the less expensive, single panelistdispute resolution.

As we can see in Table 2, if we factor out default deci-sions, the complainant win rate drops by about 15 percent-age points for both types of panels. This shows that themore a respondent cares about the case (i.e. responds tocomplaint), the more likely they are to win. It may be pos-sible to account for rest of discrepancy between the twotypes of panels by the pure legitimacy of the respondentscase and if he is truly complying with the requirementsset down in the UDRP to demonstrate legitimate rights tothe name.

4.3 Precedent and Lack of Appeals

In other court systems, part of what gives a particular rul-ing validity is its precedent, and the appeals process whichthat precedent has gone through. The US, and most com-mon law court systems have an appeals system in whicha ruling can be scrutinized. This keeps the basis of prece-dence strong since if a ruling is deemed to be unaccept-able, it can be struck down in a higher court.

The UDRP does not have such a system in which a reli-able precedent can be set. Though there is an appeals sys-tem set up, there is no higher court to which one can sub-mit appeals: the case can only be heard under the UDRPagain in the same fashion as before, negating any benefitsof appealing.

4.3.1 Questionable Precedents

The UDRP, like other court systems, tries to use prece-dence in its rulings to give them more backing or to helpwith a ruling. The cases for which they are deriving prece-dent, do not necessarily deserve the amount of faith thatare put into them. Take the example of Telstra Corpora-tion Limited v. Nuclear Marshmallows (Case No. D2000-0003)56:

In the ”Nuclear Marshmallows” case, the respondent,only known as ”Nuclear Marshmallows”, had registered”www.telstra.org”. When WIPO, the forum of arbitration,tried to contact the Nuclear Marshmallows, they were un-able to find them from their WHOIS information or in any

56This case can be found at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0003.html.NOTE: This is only the 4th case ever that had been ruled on by WIPO.

other way. The respondent was therefore unable to defendthemselves against the complaints. The problem was thatthe forum was unable to prove that domain name was reg-istered in bad faith since nothing had been put up on theweb site, so the panelist stated that if the respondant couldnot prove it was registered in good faith, the domain namemust have been registered in bad faith.

Since then, the ”Nuclear Marshmallows” case has beencited in 626 cases, almost ten percent of all cases ruled onby the UDRP. This is a bit ridiculous for a case that hap-pened so early in the life of the UDRP, and whose judge-ment has never been formally questioned in court.

4.3.2 No Appeals to a Higher Court

Sometimes, as in the case of divorce, two parties with adispute will choose to go to a neutral arbiter in lieu of go-ing through a lengthy trial. Both parties agree to be con-tractually bound by the decision before the rulings start.This system leaves no room for appeals what so ever, andcreates no precedent in the real courts.

The UDRP does allow for appeals, but since all of theforums of the UDRP are on the same level, the legitimacyof the precedent that an appeal sets is no greater than thatof a regular case ruling. We therefore wind up in a Catch-22, the rulings of the appeals aren’t legitimate because theprecedence is questionable, and the precedence is consid-ered questionable since there is no way to appeal them toa higher court.

4.4 Our Research

The authors did a case study of all of America OnlineInc.’s disputes in the UDRP. America Online has submit-ted a total of seventy-five disputes (By far the most regis-tered in the UDRP) to the UDRP, winning an impressiveseventy-two of these cases. All except one of these caseswas heard by WIPO, with the exception being NAF. Everyone of their cases was heard by a single person, thereforeit is a good judge of basis on the merit of single personpanels. America Online is a good company to do a casestudy of due to a combination of two factors. First, itis a very large company so there will be a lot of peoplejust trying to use their fame for more traffic. Second, twoof the trademarks it owns are only three letters (ICQ &AOL).


5 PROPOSALS THUS FAR

Type of Panel % of Defaults Win Rate Overall Non-Default Win RateSingle Panelist 57% 82.68% 67.66%

Three Member Panel 25% 58.27% 46.03%

Table 2: Percentage of Defaults by Panel Type and Their Affects on Complainant Win Rate

To America Online’s credit, a lot of these cases werejust cybersquatters trying to profit from AOL’s name. Onforty-nine of these cases, the sites were simply squatting,meaning that they had no web site up, or the web site thatthey put up was just an attempt to divert business fromthe AOL name.57 Of the remaining twenty-six, fifteenhad what could have been considered a legitimate busi-ness plan.

4.4.1 Case Study: Single Panelist blanket ruling

In four of the fifteen of the America Online Inc cases thatare considered to be legitimate, a certain Ian Barker waspresiding over the cases. In total, Mr. Barker has ruledon seven of America Online’s cases.58 In each of thesecases, as with most of America Online’s cases, the domainname in question either contains the letters ”aol” or ”icq”.In every single one of his cases, he has ruled in favor ofAmerica Online, and in every case he has used a singlecase as precedent.

Mr. Barker always refers back to a case that he ruled onhimself, AT&T Corp v Tala Alamuddin (WIPO Case No.D2000-0249). In this ruling, the precedent was set that theaddition of another word, phrase, or number to a alreadytrademarked name does nothing to change the fact that itcontains the trademarked name within the domain name.Mr. Barker seems to use this as a blanket ruling on all ofthe America Online cases that he ruled on, where everyruling looked strikingly similar to each other, no matterwhat the case, from ”freeicqpornjokes.com” which is, ad-mittedly probably not legitimate, to ”neticq.com”, wherethe respondent lays out a business plan and a legitimate

57All domain names in dispute were looked up in ”The Wayback Ma-chine” (http://www.archive.org). A website was not countedas being credible if there was nothing on the website before the disputewas filed. A website, however, was counted as being credible if the re-spondent did respond to the claims and was able to provide a businessplan for how they were planning to use the domain name in a way com-pliant with the UDRP.

58All of Mr. Barker’s cases can be found athttp://udrp.law.cornell.edu/udrp/

use for his domain name. In all of his rulings, the firstthing that he mentions, after stating what the panel is in-structed to do by the UDRP and what the panel is requiredto do to prove, is the AT&T case. Also, in all of thesecases, Mr. Barker puts the burdon of proof on the defen-dant by stating that:

Likewise, the Panel decides that the Respondenthas no rights or legitimate interests in the do-main names at issue. The Respondent has neversuggested to the contrary. The Panel so decides.The Respondent has offered no evidence that itis known by any of the names.59

The problem here is both a problem of precedent andpanel size. Mr. Barker is basing all of his rulings on asingle case that he had ruled in the past, while in all ofthe AOL cases, and only one other person in all of AOL’scases has quoted that case, and in that instance it was onlyin passing along with list of other cases to refer to. In allof the rulings heard in the UDRP, it has only been ref-erenced twenty-two times total. Since Mr. Barker has noone to contend with about his rulings (virtually no appealsand all single panel rulings), he has been allowed to justblanket all cases similar to the America Online ones withthe same judgement, not even considering other factors inthe cases. In an improved system, with better checks andbalances, blindly following precedence like this wouldavoided.

5 Proposals Thus Far

There have been a number of proposals for reform of theUDRP, however, we will cover those that are relevant inour consideration of the three issues we have studied: fo-rum shopping, panel sizes, and the lack of an appellateprocess.

59This quote is contained in all of Mr. Barker’s cases in which therespondent has not made use of the domain name yet.


6 CONCLUSION AND PROPOSAL 5.3 ICANN

5.1 Professor Mueller

In Rough Justice, an early work on the UDRP, Profes-sor Mueller of Syracuse University came to the conclu-sion that due to forum shopping and a number of other is-sues in the UDRP, several reforms were needed. Amongthese, he suggested an appellate process and random se-lection of panelists, such that a provider could not easilybias results. Random selection did not seem to be real-istic because it removed the competitiveness of differentproviders of panelists, but Mueller provided a novel solu-tion: allow domain registrars to simply choose a providerand then have the selection be random.

We agree that there is a need for an appellate process,not because of the way that the UDRP was designed, butrather because of the way in which the UDRP has grownto have a system of precedent. However, we are less surethat random selection will be successful: for instance, inFair.com, NAF is shown to have had over 50% of its casesdecided by six individuals.60 Without a large base of reli-able panelists with some reason to act in accordance withthe present body of law, we see no reason to have a systemof random selection for panelists.

5.2 Michael Geist

In Fair.com, Michael Geist suggests a number of addi-tional solutions based on review of Mueller’s findings andhis own statistical analysis. His suggestions are manda-tory three person panels (paid for by the complainant),quality controls, and greater transparency. He sees littlereason for the complainant not to pay for a larger panel(the UDRP is still far cheaper than everyday legal action),and notes that few of the providers to annual reviews oftheir own panelists.61

We agree with Geist’s suggestions, though it seemsthat larger panels and transparency would be more im-mediately helpful than quality controls. With large panelsand transparency, it is likely that publicly interested par-ties would simply weed out the poorly performing pan-elists, or at least point them out and possibly embarassthe provider who must compete against other providersmostly on reputation. Thus, we see large panels and some

60See [10].61eResolution once did this before going bankrupt. See [10].

level of transparency as also critical to the success of anyreform of the UDRP.

5.3 ICANN

With all of the talk of reform, it seems fitting to also lookat ICANN’s own proposals for UDRP reform. Unfortu-nately, at this time ICANN simply has a task force whichis looking into the issue. The task force has raised manyof the questions which we raise regarding appellate re-view and precedent, panel sizes, and deciding who shouldreally choose a provider for a UDRP decision, however,in the past ICANN has been notorious for acting withoutregard for the reports of its task forces. Nonetheless, themost recent (December, 4, 2002) notes from discussion inthe task force looks promising, asking questions about:

1. Revisit who should select provider...

2. Impose quality control measures with respect toprovider and panelists...

3. Mixed view on precedential value of decisions...

4. Mixed view on ability to appeal (if so, some rec-ommendations included same provider, but differentpanelists; different provider; appealing party paysfor appeal, but costs for appellant if successful; levelof deference with respect to findings of fact ”abuse ofdiscretion and with respect to law” or ”de novo”)...62

While we agree with many of ICANN’s UDRP taskforce’s initial thoughts, we are doubtful that they will beimplemented soon if at all.

6 Conclusion and Proposal

As a result of our research into forum shopping, panelsizes, and the problems of lack of appellate review com-bined with precedent in the UDRP, we have come to sev-eral conclusions. We believe that each of these is a realand substantive issue, supported both by looking at caselaw and by looking at statistical information. In other

62These are out of order and only a few of the ideas being ex-amined by the task force. The message this is taken from isavailable at http://www.dnso.org/clubpublic/nc-udrp/Arc00/msg00461.html, available on Dec 10, 2002.


REFERENCES REFERENCES

words, our analysis has led us to believe that each of theallegations we researched against the UDRP is valid.

However, we also believe that the UDRP holds somepromise. The work of the UDRP task force at least seemsto show that ICANN has taken note of the many allega-tions against the UDRP as a process. Despite our mis-givings of the likelihood of reform in ICANN, we stillbelieve that many of the task forces ideas are valid, andin fact support them in their work. With respect to forumshopping and panel sizes, it seems likely that a combina-tion of mandatory quality control by the providers and arequired minimum of three or more panelists would go along way to helping. The questions of precedent and ap-pellate review are more complicated. While it seems thatprecedent was never intended to be a part of the UDRP(raising the bar for panelists as well as creating a com-plicated body of case law), we believe that it could be avaluable addition. What’s more, it seems that there is noturning back: panelists both naturally believe that prece-dent should exist and it has existed for several years now.Thus, we believe that in order to temper precedent in theUDRP, at least some form of appellate review, probablyby ICANN, is needed. Without appellate review, a singlecase (like the Nuclear Marshmallows case) can becomethe basis for the decision of hundreds if not thousands ofcases without the original case having any merit. With thecombination of these three additions, greater panel sizes,transparency, and lastly appellate review, we believe thatthe UDRP can be a much more successful and fair processfor all involved: we simply hope that the ICANN of todayis up to the task.

References

[1] Berkman Center Pressing Issues, 2000 Avail-able at http://cyber.law.harvard.edu/icann/pressingissues2000/briefingbook/dnshistory.html, onDecember 4, 2002.

[2] RFC 1591 Quoted from http://www.isi.edu/in-notes/rfc1591.txt, available onDecember 3, 2002.

[3] Lockheed Martin Corp. v. Network Solutions, Inc.No. CV 96-7438 DDP (Anx), 1997 WL 381967(C.D. Cal. Mar. 19, 1997). Available at http://cyber.law.harvard.edu/metaschool/fisher/domain/dncases/lockheed.htmon December 3, 2002.

[4] Wired. Wired Issue 4.10 - Oct 1996 Avail-able at http://www.wired.com/wired/4.10/updata.html on December 3, 2002.

[5] Department of Commerce White Paper The De-partment of Commerce Internet White Paper avail-able at: http://www.icann.org/general/white-paper-05jun98.htm.

[6] Diane Cabell. Overview of Domain Name PolicyDevelopment – Conflicts between Trademark Lawand Domain Names. Berkman Center for Internetand Society. Available at http://eon.law.harvard.edu/udrp/overview.html onDecember 3, 2002.

[7] Electronic Frontier Foundation. Director Sues Or-ganization that Oversees Internet Information avail-able at http://www.eff.org/Infra/DNS_control/ICANN_IANA_IAHC/Auerbach_v_ICANN/20020318_eff_icann_pr.htmlon December 3, 2002.

[8] Kevin J. Delaney. ITU Attempts to Do What ICANNCouldn’t The Wall Street Journal, October 21, 2002.

[9] ICANN. ICANN Minutes, August 26, 1999 Avail-able at http://www.icann.org/minutes/minutes-26august99.htm on December 3,2002.


REFERENCES REFERENCES

[10] Michael Geist. Fair.com Available athttp://aix1.uottawa.ca/\%7Egeist/geistudrp.pdf on December 4, 2002.

[11] Pliam Law Group. Trademark FAQ - Trade-mark Law Basics Available at http://www.marklaw.com/trademark-FAQ/faqbasic.htm on December 7, 2002.

[12] Pliam Law Group Trademark Glossary Avail-able at http://www.marklaw.com/trademark-glossary/confuse.htmlon December 7, 2002.

[13] William Mears - CNN.COM Victoria’s Se-cret, Small Store Argue Trademark CaseBefore High Court Available at http://europe.cnn.com/2002/LAW/11/12/scotus.victorias.secret/ on December7, 2002.

[14] Ladas & Parry - International Intellectual PropertyLawyers. Trademark Law Section Available athttp://www.ladas.com/Trademarks/MadridAgreement/Madrid04.html\#fn20 on December 7, 2002.

[15] techlawonline.com. International Law SectionAvailable at http://www.techlawonline.com/international.htm on December 7,2002.

[16] Pliam Law Group. Trademark FAQ - Ac-quiring and Registering Trademarks Avail-able at http://www.marklaw.com/trademark-FAQ/faqacq.htm on Decem-ber 7, 2002.

[17] Lee Hodgson How To Create Profitable Do-main Names Available at http://www.domainguru.com/article/42/50 onDecember 7, 2002.

[18] Reuters. France Gags Yahoo on Nazi Bids Avail-able at http://www.wired.com/news/politics/0,1283,36504,00.html onDecember 7, 2002.

[19] Pliam Law Group. Trademark FAQ - Us-ing and Maintaining Trademarks Avail-able at http://www.marklaw.com/trademark-FAQ/faquse.htm on Decem-ber 7, 2002.

[20] Chris Oakes. Who Owns WHOIS Database Avail-able at http://www.wired.com/news/politics/0,1283,19539-2,00.html onDecember 7, 2002.

[21] Wylie Wong. VeriSign May Lose Dibs on Do-main Sales Available at http://news.com.com/2100-1023-956433.html on December7, 2002.

[22] ICANN. Steps to Improve WhoisData Accuracy Available at http://www.icann.org/announcements/announcement-03sep02.htm on December7, 2002.

[23] Patrick L. Jones. Go Daddy Reseller Of-fering Anonymous Registrations Avail-able at http://www.udrplaw.net/ExclusiveNews14.htm on December 7,2002.

[24] Altman Weil Pensa Publication. 2002 Survey of LawFirm Economics

[25] John Leyden. Verisign Moves DNS RootServers In Defensive Ploy Available athttp://www.theregister.co.uk/content/55/28013.html on December,7 2002.


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