Keeping track of domain name jurisprudence
By Justin Soong-Hoon Chay and Brian Beckham, WIPO Arbitration and Mediation Center
These days it is hard to imagine life without the Internet and domain names. They each serve as important online marketing tools for businesses of all sizes, with domain names increasingly seen as invaluable virtual real estate in an ever-expanding digital landscape. At the same time, brand owners face a constant threat from unscrupulous actors who misappropriate their trademarks by registering them as domain names. Their aim is often to hold brand owners to ransom, sell counterfeit goods, distribute malware, or engage in phishing campaigns. Such abusive practices can cause significant damage to brand owners and consumers.
The abuse of brand owners’ trademark rights in domain names, often referred to as “cybersquatting,” can be remedied by initiating proceedings under a mechanism known as the Uniform Domain Name Dispute Resolution Policy (UDRP).
WIPO’s Arbitration and Mediation Center is both the author of the UDRP, and the global leader in domain name dispute resolution services under the UDRP. In recent years, the UDRP caseload of the WIPO Center has continued to increase, with filing rates breaking new records. In 2016, the number of cases rose by 10 percent on the previous year, with trademark owners filing over 3,000 UDRP cases with WIPO. Since 1999 when the UDRP was first implemented, the WIPO Center has processed almost 40,000 UDRP-based cases, involving parties from nearly 180 countries and some 500 WIPO panelists of 65 nationalities.
In addition to handling UDRP-related disputes, the WIPO Center monitors decisions issued by the appointed external experts who weigh up the cases (referred to as “panelists”) to identify areas of consensus in UDRP jurisprudence. In the 18 years since the UDRP’s implementation, the WIPO Center has reported periodically on these consensus positions by panelists. Version 1.0 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions was released in 2005, and Version 2.0 in 2011.
Since then – and in line with the broader evolution of online behavior – UDRP jurisprudence has continued to evolve, with consensus positions emerging on a wide range of issues that are common to many UDRP cases. Version 3.0 of the WIPO Overview, released in May 2017, outlines consensus positions on nearly 100 topics, providing nearly 1,000 case citations on issues ranging from whether a brand owner has standing to file a claim to procedural questions.
Cited in nearly every UDRP-related pleading and decision, the WIPO Overview 3.0 offers invaluable guidance for parties to domain name disputes, and is a go-to reference tool for WIPO panelists.
Notable highlights of the WIPO Overview 3.0 include the companion issues of trademark rights and the test for “confusing similarity”, the timing of domain name registrations, consolidation of claims against multiple respondents, and free speech defenses.
Trademark rights. A brand owner filing a UDRP complaint must, as a first step, adequately demonstrate that they own rights in a trademark or service mark. This is most often done by providing copies of trademark registration certificates. Put simply, without trademark rights it is not possible to file a UDRP complaint.
In some cases, a brand owner may seek to argue it has “common law” trademark rights because it has used its business name (often for a minimum number of years) in a way that consumers have come to exclusively associate with the brand owners’ products.
To demonstrate such unregistered “common law” trademark rights a brand owner must provide substantial supporting evidence. This may include evidence of consumer, industry, or media recognition; sales volumes; advertising; or consumer surveys. Simply claiming that a trademark has been used for some time without any supporting evidence does not establish trademark rights. In other words, a brand owner claiming unregistered rights needs to demonstrate that the mark has “secondary meaning” in the minds of consumers. Failing to do so may result in a dismissal of their claim for lack of standing.
Confusing similarity. Another important consideration is the need to show that the disputed domain name misappropriates the brand name in a way that is “confusingly similar” to the corresponding trademark. This is often referred to as the UDRP’s “standing” test. If the trademark is recognizable in some form in the domain name – even if it is an intentional typo, or uses “international” accented characters – panelists will find the domain name confusingly similar to the relevant trademark and the case will move forward.
Timing of domain name registration. Under the UDRP, a brand owner has to show the domain name was both registered and used “in bad faith”. This has proven a somewhat controversial issue in a handful of cases in the past, but panelists now agree that a domain name cannot have been registered in bad faith if the registrant had no prior knowledge of the trademark. A brand owner must ordinarily show that their trademark rights existed before the domain name was acquired by the registrant. A notable exception is where the registrant has insider information or has unfairly anticipated the future existence of trademark rights. This was the situation in a well-known dispute that involved the registration of a Wayne Rooney-related domain name while he was still an up-and-coming star footballer, before he had acquired any registered trademark rights; in that instance, bad faith was clear.
Consolidation of claims against multiple respondents. The UDRP Rules allow panelists to consolidate multiple domain name disputes. Case jurisprudence has established that to do so a panelist should be satisfied that: (i) the brand owners have a specific common grievance against the registrant(s), or the registrant(s) has engaged in common conduct that has affected the brand owners in a similar fashion; and (ii) it would be equitable and procedurally efficient to permit the consolidation. Panelists also look at whether the domain names or corresponding websites are subject to common control.
Free speech defenses. Once standing to bring a case is established by showing trademark rights and confusing similarity, a brand owner must also show that the registrant lacks “rights or legitimate interests” in the domain name. Often this is proven by showing that the domain name has been registered merely to piggyback on the brand owner’s reputation in a way that is misleading to consumers. One way a registrant can demonstrate its rights or legitimate interests is by showing that the corresponding website features noncommercial free speech, such as fair criticism of the brand owner’s activities. Often, such cases take the form of <[trademark]sucks.com> domain names. It is worth noting, however, that free speech cases are statistically insignificant in terms of the overall number of UDRP cases.
While appointed UDRP panelists are staunch defenders of legitimate free speech, in many cases, a claim to free speech is merely an attempt to mask unfair commercial activity. UDRP panelists have no trouble seeing through such sham defenses. Likewise, UDRP panelists agree that except in limited circumstances, a domain name that exactly matches the brand owner’s name creates an unacceptable risk of confusion insofar as it may lead consumers to believe erroneously that such domain names are sponsored or endorsed by the trademark owner.
This is just a small sample of the many questions covered in WIPO Overview 3.0. Anyone considering filing a claim or needing to defend themselves against a claim of cybersquatting will find it an invaluable source of information and guidance.
In 1999, on WIPO’s recommendation, the California-based Internet Corporation for Assigned Names and Numbers (ICANN), which is responsible for overseeing generic Top-Level Domains (or gTLDs) like “.com”, and now “.blog”, “.cloud”, etc., implemented the UDRP to combat the bad-faith registration of trademarks as domain names, often referred to as “cybersquatting.” Under WIPO’s stewardship, the UDRP has since become widely recognized as a cost-effective and quick way to resolve domain name disputes.
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