WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition
("WIPO Jurisprudential Overview 3.0")
© 2017 World Intellectual Property Organization
All Rights Reserved
Resulting from WIPO's care for effective remedies under a sustainable UDRP, this WIPO Jurisprudential Overview reflects, and assists the predictability of, UDRP decisions by panels appointed in WIPO cases.
The World Wide Web in 2014 celebrated its 25th anniversary. Its ubiquity both as a commercial medium – facilitating trillions of dollars in trade annually – and as a means of disseminating information globally is self-evident. Sometimes heralded as one of mankind's greatest innovations, for all of its positive attributes, even looking back to its early days the Internet has also provided a platform for a range of bad-faith practices across territorial borders including Intellectual Property infringement.
To help maintain the overall integrity of the Internet's Domain Name System (DNS), at the request of the United States Government supported by all Member States, in 1999 following an extensive process of international consultations, the World Intellectual Property Organization (WIPO) created the Uniform Domain Name Dispute Resolution Policy (UDRP) to address cross-border trademark-abusive domain name registrations, a practice widely known as cybersquatting. Adopted by ICANN as a much needed standardized alternative to multi-jurisdictional court litigation, the UDRP provides an efficient remedy for brand owners and predictability for domainers, fosters consumer protection for end users, and acts as a safe harbor for DNS registration authorities. As a globally recognized best-practice, it is also the basis for a significant number of country code top-level domain (ccTLD) dispute resolution policies.
Since creating the blueprint for the UDRP, WIPO as of early 2017 has processed over 37,000 UDRP-based cases decided by nearly 500 experts covering some 65 nationalities and 21 languages, and involving parties from over 175 countries.
As the DNS expands, including as an engine for economic growth, and further to ICANN's approval of scores of new Top Level Domains, the potential for cybersquatting and resulting consumer harm persists – making WIPO's not-for-profit institutional investment in continued UDRP predictability, for all DNS stakeholders, all the more important.
In furtherance of transparency and accessibility, this WIPO investment includes a keyword-searchable Legal Index of WIPO UDRP Panel Decisions, a full-text search facility on all posted decisions, real-time WIPO case statistics, UDRP training Workshops, WIPO Panelists Meetings, and this WIPO Jurisprudential Overview. Beyond these resources, WIPO has successfully initiated paperless e-filing, case language, and settlement practices.
Understanding the relationship between UDRP operations and policy, WIPO notes that the fabric of UDRP jurisprudence, carefully woven over many years, can easily be torn apart. It is hoped that as ICANN embarks on a review of the UDRP, resources such as this WIPO Jurisprudential Overview 3.0 assist responsible decision-making that works for all DNS stakeholders.
Under the UDRP, decision-making authority rests exclusively with the appointed external panels, based on the facts and circumstances of each case. While the UDRP does not operate on a strict doctrine of binding precedent, it is important for the overall credibility of the UDRP system that filing parties can reasonably anticipate the result of their case. Often noting the existence of similar facts and circumstances or identifying distinguishing factors, WIPO panels strive for consistency with prior decisions. In so doing, WIPO panels seek to ensure that the UDRP operates in a fair and predictable manner for all stakeholders while also retaining sufficient flexibility to address evolving Internet and domain name practices.
With this collective aim, the WIPO Arbitration and Mediation Center has produced the present WIPO Jurisprudential Overview version 3.0, to summarize consensus panel views on a range of common and important substantive and procedural issues. Following a review of thousands of WIPO panel decisions issued since WIPO Overview 2.0, this edition has been updated to now include express references to almost 1,000 representative decisions (formerly 380) from over 265 (formerly 180) WIPO panelists. The number of cases managed by the WIPO Center has nearly doubled since its publication of WIPO Overview 2.0; as a result, the number of issues covered in this WIPO Jurisprudential Overview 3.0 has significantly increased to reflect a range of incremental DNS and UDRP case evolutions.
While the overall purpose of the WIPO Jurisprudential Overview is to assist in predictability, it is important to point out that – as with any legal system – differences of opinion may exist on some specific issues and in certain outlier cases; all the more so as the UDRP operates across fact patterns and jurisdictions. Furthermore, neither this WIPO Jurisprudential Overview nor prior UDRP decisions are strictly binding on panelists, who will consider the particular facts and circumstances of each individual proceeding in a manner they consider fair. At the same time, panel findings tend to fall within the views summarized in this WIPO Jurisprudential Overview 3.0. Finally, parties should note that the WIPO Jurisprudential Overview cannot serve as a substitution for each party's obligation to argue and establish their particular case under the UDRP, and it remains the responsibility of each party to make its own independent assessment of prior decisions relevant to its case.
The consensus views laid out in this WIPO Jurisprudential Overview 3.0 have been welcomed by UDRP Panelists inter alia at WIPO's Panelists Meetings convened in Geneva through 2016. The contents reflect the Meetings' constructive dialogue, as well as substantial contribution and informal review from a number of the most experienced WIPO panelists. As WIPO UDRP jurisprudence matures, the WIPO Center, in consultation with its panelists, will on appropriate occasions consider undertaking further updates in whole or in part to this WIPO Jurisprudential Overview 3.0. (The original edition and WIPO Overview 2.0 will continue to be accessible on the WIPO Center's website for reference.)
QUESTIONS
1. First UDRP Element
2. Second UDRP Element
3. Third UDRP Element
4. Procedural Questions
1. First UDRP Element
1.1 What type of trademark rights are encompassed by the expression "trademark or service mark in which the complainant has rights" in UDRP paragraph 4(a)(i)?
1.2 Do registered trademarks automatically confer standing to file a UDRP case?
1.3 What does a complainant need to show to successfully assert unregistered or common law trademark rights?
1.4 Does a trademark owner's affiliate or licensee have standing to file a UDRP complaint?
1.5 Can a complainant show UDRP-relevant rights in a personal name?
1.6 Can a complainant's rights in a geographical term provide standing to file a UDRP complaint?
1.7 What is the test for identity or confusing similarity under the first element?
1.8 Is a domain name consisting of a trademark and a descriptive or geographical term confusingly similar to a complainant's trademark?
1.9 Is a domain name consisting of a misspelling of the complainant's trademark (i.e., typosquatting) confusingly similar to the complainant's mark?
1.10 How are trademark registrations with design elements or disclaimed text treated in assessing identity or confusing similarity?
1.11 Is the Top Level Domain relevant in determining identity or confusing similarity?
1.12 Is a domain name consisting of the complainant's mark plus a third-party trademark confusingly similar to the complainant's trademark?
1.13 Is a domain name consisting of a trademark and a negative term ("sucks cases") confusingly similar to a complainant's trademark?
1.14 Is a domain name that consists or is comprised of a translation or transliteration of a trademark identical or confusingly similar to a complainant's trademark?
1.15 Is the content of the website associated with a domain name relevant in determining identity or confusing similarity?
2. Second UDRP Element
2.1 How do panels assess whether a respondent lacks rights or legitimate interests in a domain name?
2.2 What qualifies as prior use, or demonstrable preparations to use the domain name, in connection with a bona fide offering of goods or services?
2.3 How would a respondent show that it is commonly known by the domain name or a name corresponding to the domain name?
2.4 How does the UDRP account for legitimate fair use of domain names?
2.5 What are some core factors UDRP panels look at in assessing fair use?
2.6 Does a criticism site support respondent rights or legitimate interests?
2.7 Does a fan site support respondent rights or legitimate interests in a domain name?
2.8 How do panels assess claims of nominative (fair) use by resellers or distributors?
2.9 Do "parked" pages comprising pay-per-click links support respondent rights or legitimate interests?
2.10 Does a respondent have rights or legitimate interests in a domain name comprised of a dictionary word/phrase or acronym?
2.11 At what point in time of respondent conduct do panels assess claimed rights or legitimate interests?
2.12 Does a respondent trademark corresponding to a domain name automatically generate rights or legitimate interests?
2.13 How do panels treat complainant claims of illegal (e.g., counterfeit) activity in relation to potential respondent rights or legitimate interests?
2.14 Is the TLD under which a domain name is registered relevant in assessing respondent rights or legitimate interests?
2.15 What is the relation between the 2nd and 3rd UDRP elements?
3. Third UDRP Element
3.1 How does a complainant prove a respondent's bad faith?
3.2 What circumstances further inform panel consideration of registration in bad faith?
3.3 Can the "passive holding" or non-use of a domain name support a finding of bad faith?
3.4 Can the use of a domain name for purposes other than hosting trademark-abusive content constitute bad faith?
3.5 Can third-party generated material "automatically" appearing on the website associated with a domain name form a basis for finding bad faith?
3.6 How does a registrant's use of a privacy or proxy service impact a panel's assessment of bad faith?
3.7 How does a disclaimer on the webpage to which a disputed domain name resolves impact a panel's assessment of bad faith?
3.8 Can bad faith be found where a domain name was registered before the complainant acquired trademark rights?
3.9 Can the respondent's renewal of its domain name registration support a finding of (registration in) bad faith?
3.10 Will panels consider statements made in settlement discussions?
3.11 Can the use of "robots.txt" or similar mechanisms to prevent website content being accessed in an online archive impact a panel's assessment of bad faith?
3.12 Can tarnishment form a basis for finding bad faith?
4. Procedural Questions
4.1 What deference is owed to past UDRP decisions dealing with similar factual matters or legal issues?
4.2 What is the applicable standard of proof in UDRP cases?
4.3 Does a respondent's default/failure to respond to the complainant's contentions automatically result in the complaint succeeding?
4.4 How is respondent identity assessed in a case involving a privacy or proxy registration service?
4.5 How is the (working) language of a UDRP proceeding determined?
4.6 In what circumstances would a panel accept a party's unsolicited supplemental filing?
4.7 Under what circumstances would a UDRP panel issue a Procedural Order?
4.8 May a panel perform independent research in assessing the case merits?
4.9 Can UDRP proceedings be suspended for purposes of settlement?
4.10 How do panels handle cases involving a respondent's informal or unilateral consent for the transfer of the domain name to the complainant outside the "standard settlement process" described above?
4.11 How do panels address consolidation scenarios?
4.12 Under what circumstances may additional domain names be added to a filed complaint/ongoing proceeding?
4.13 How do panels address domain names involving the mark of a third party trademark owner not joined in the complaint?
4.14 What is the relationship between the UDRP and court proceedings?
4.15 To what extent is national law relevant to panel assessment of the second and third UDRP elements (rights or legitimate interests, and bad faith)?
4.16 In what circumstances will panels issue a finding of Reverse Domain Name Hijacking (RDNH)?
4.17 Does "delay" in bringing a complaint bar a complainant from filing a case under the UDRP?
4.18 Under what circumstances would a refiled case be accepted?
4.19 Can a registry or registrar be liable under the UDRP?
4.20 How does the expiration or deletion of a domain name subject to a UDRP proceeding affect the proceeding?
4.21 What is the Center's role, if any, in decision implementation?
4.22 What is the relation of the UDRP to the URS?
1. First UDRP Element
1.1 What type of trademark rights are encompassed by the expression "trademark or service mark in which the complainant has rights" in UDRP paragraph 4(a)(i)?
1.1.1 The term "trademark or service mark" as used in UDRP paragraph 4(a)(i) encompasses both registered and unregistered (sometimes referred to as common law) marks.
1.1.2 Noting in particular the global nature of the Internet and Domain Name System, the jurisdiction(s) where the trademark is valid is not considered relevant to panel assessment under the first element.
Also, the goods and/or services for which the mark is registered or used in commerce, the filing/priority date, date of registration, and date of claimed first use, are not considered relevant to the first element test. These factors may however bear on a panel's further substantive determination under the second and third elements.
1.1.3 While the UDRP makes no specific reference to the date on which the holder of the trademark or service mark acquired its rights, such rights must be in existence at the time the complaint is filed.
The fact that a domain name may have been registered before a complainant has acquired trademark rights does not by itself preclude a complainant's standing to file a UDRP case, nor a panel's finding of identity or confusing similarity under the first element.
Where a domain name has been registered before a complainant has acquired trademark rights, only in exceptional cases would a complainant be able to prove a respondent's bad faith.
1.1.4 A pending trademark application would not by itself establish trademark rights within the meaning of UDRP paragraph 4(a)(i).
[See sections 3.1, 3.2.1, and 3.8 generally.]
Uniroyal Engineered Products, Inc. v. Nauga Network Services, WIPO Case No. D2000-0503, <nauga.net>et al., Transfer
Thaigem Global Marketing Limited v. Sanchai Aree, WIPO Case No. D2002-0358, <thaigem.net>, Transfer
Fine Tubes Limited v. Tobias Kirch, J. & J. Ethen, Ethen Rohre GmbH, WIPO Case No. D2012-2211, <fine-tubes.com>, Denied
Tesar Industrial Contractors, Inc. v. Boris Santana, WIPO Case No. D2014-0960, <tesarindustrial.com>, Transfer
Generate4 Schools, LLC v. Privacyguardian.org / MiCamp Merchant Services, WIPO Case No. D2014-1009, <generate4u.org>, Transfer
Money Tree Software, Ltd. v. Javier Martinez, Money Tree Software, LLC, WIPO Case No. D2014-1078, <moneytreesoftware.com>, Transfer
Lindeva Living Trust, Kim W. Lu Trustee v. Domain Privacy Service FBO Registrant / 510 Pacific Ave, Pacific Venice, WIPO Case No. D2015-1105, <510pacificave.com>, Denied
Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629, <xenicalla.com>, Transfer
Drugstore.com, Inc. v. Nurhul Chee / Robert Murry, WIPO Case No. D2008-0230, <drugstoretm.com>, Denied with Dissenting Opinion
Office Holdings Limited v. Hocu To d.o.o. and Office Shoes d.o.o., WIPO Case No. D2009-1277, <officeshoesonline.com>, Denied
RapidShare AG and Christian Schmid v. majeed randi, WIPO Case No. D2010-1089, <rapidpiracy.com>, Transfer
Reckon Limited v. Multitech s.r.l., WIPO Case No. D2013-1017, <reckon.com>, Denied
CeltonManx Limited v. Pham Dinh Nhut, WIPO Case No. D2014-0109, <sbobet.net>, Transfer
Etechaces Marketing and Consulting Private Limited v. Bhargav Chokshi / IR Financial Services Pvt. Ltd., WIPO Case No. D2015-0563, <onlinepolicybazaar.com>, Transfer
Tozzini, Freire, Teixeira e Silva Advogados v. Ernesto Siempro, WIPO Case No. D2015-1002, <tozzini-freire.com>, Transfer
Guinness World Records Limited v. Solution Studio, WIPO Case No. D2016-0186, <guinnessworldrecords.xyz>, Transfer
Assurances Premium SARL v. Whois Privacy Shield Services / Daisuke Yamaguchi, WIPO Case No. D2016-1425, <mascotte-assurances.com>, Transfer
Digital Vision, Ltd. v. Advanced Chemill Systems, WIPO Case No. D2001-0827, <digitalvision.com>, Denied
Madrid 2012, S.A. v. Scott Martin-MadridMan Websites, WIPO Case No. D2003-0598, <2m12.com>et al., Transfer
Stoneygate 48 Limited and Wayne Mark Rooney v. Huw Marshall, WIPO Case No. D2006-0916, <waynerooney.com>, Transfer
Esquire Innovations, Inc. v. Iscrub.com c/o Whois Identity Shield; and Vertical Axis, Inc, Domain Adminstrator, WIPO Case No. D2007-0856, <iscrub.com>, Transfer
The State of Tennessee, USA v. (DOMAIN NAME 4 SALE) DOMAIN-NAME-4-SALE eMAIL baricci@attglobal.net, WIPO Case No. D2008-0640, <coverkids.com>, Denied
Reckitt Benckiser Plc v. Eunsook Wi, WIPO Case No. D2009-0239, <rb.net>, Denied
QIQ Communications Pty Ltd v. Netico, Inc., WIPO Case No. D2014-1024, <qiq.com>, Denied
Naviswiss AG v. inLink GmbH, WIPO Case No. D2016-2339, <naviswiss.com>, Denied
Bayer AG v. Whois Agent, Whois Privacy Protection Service, Inc. / Syed Hussain, IBN7 Media Group, WIPO Case No. D2016-2354, <bayermonsanto.com>, Transfer
MAS S.A.S. v. Joseph Kattampally, WIPO Case No. D2016-2408, <maaji.com>, Denied
Greenvelope, LLC v. Virtual Services Corporation, WIPO Case No. D2017-0006, <greenenvelope.com>, Denied
Lion Country Supply, Inc. v. J. Katz, WIPO Case No. D2003-0106, <lioncountrysupply.com>, Transfer
PC Mall, Inc. v. Pygmy Computer Systems, Inc., WIPO Case No. D2004-0437,
<mobile-mall.com>et al., Denied
Displays Depot, Inc. v. GNO, Inc., WIPO Case No. D2006-0445, <displaydepot.com>, Denied
Advance News Service Inc. v. Vertical Axis, Inc. / Religionnewsservice.com, WIPO Case No. D2008-1475, <religionnewsservice.com>, Denied
Mario Rodriguez BBS Technologies, lnc. v. Guangzhou Tianji Technology Co. Ltd Pengfei Zhang, WIPO Case No. D2009-0477, <shadygrovefertilitycenter.com>et al., Denied
537397 Ontario Inc. operating as Tech Sales Co. v. EXAIR Corporation,WIPO Case No. D2009-0567, <nexflow.com>et al., Transfer
No Zebra Network Ltda v.Baixaki.com, Inc., WIPO Case No. D2009-1071, <baixaki.com>, Transfer
Prom Night Events v. YourFormal Pty Ltd / Your Formal Australia Pty Ltd, Samir Kapoor, WIPO Case No. D2011-1707, <adelaidepromnight.com> et al., Denied
Kemosabe Entertainment, LLC v. Mike Nazzaro, WIPO Case No. D2012-1893, <kemosaberecords.com>, Denied
Mark C. Spicher v. Frogi Design, s.r.o. / The Artwork Factory, s.r.o., WIPO Case No. D2015-0606, <the-artwork-factory.com>, Denied
Intellect Design Arena Limited v. Moniker Privacy Services / David Wieland, iEstates.com, LLC, WIPO Case No. D2016-1349
, <unmail.com>, Denied