The World Intellectual Property Organization Arbitration and Mediation Center (WIPO Center) along with the Internet Commerce Association (ICA) have convened a project team to conduct a review of the UDRP – the Uniform Domain Name Dispute Resolution Policy.
This project has so far consisted of a robust international process spanning nearly a dozen consultations with industry leaders and experts to identify best practices, consensus, and potential areas for improvement of the UDRP. A draft report is presently being prepared and is expected to be shared for broader public input in early 2025. A final report will be shared with ICANN for consideration in any UDRP review undertaken by its GNSO.
By assisting the ICANN community in identifying areas of stakeholder agreement and disagreement, it is expected that ICANN’s review process will benefit from greater focus and efficiency.
Concerning a review of the UDRP, the ICANN GAC (Governmental Advisory Committee) Hague Communique (ICANN 74) noted that: “[t]he GAC received an update on the status of a planned review of the UDRP, and in particular notes reference to section 13.1 of the ICANN Bylaws which calls on and indeed encourages, the Board and constituent bodies to seek advice from relevant public bodies with existing expertise that resides outside of ICANN (notably the World Intellectual Property Organization—WIPO, as author and steward of the UDRP) to inform the policy process, and looks forward to further exploring this provision prior to any review of the UDRP.”
Such approach has also been called for in a letter to ICANN from MARQUES, the European association representing brand owners: “ICANN could request the World Intellectual Property Organization as the global leader, which was commissioned in 1998 to develop a solution which became the UDRP, to select and chair this independent expert group.”
The core aim of this project is to maintain the UDRP as an efficient and predictable out-of-court dispute resolution mechanism for clear trademark-based disputes.
Over nearly 25 years and tens of thousands of cases, the UDRP has proven to be an effective process to quickly, consistently, efficiently, and predictably resolve clear cases of cybersquatting. Any recommendations should be borne out by a demonstrated compelling need for a change, and must be considered against this background, as any perceived case-specific or anecdotal faults of the UDRP do not warrant a wholesale revision of this industry best practice.
Coordinated by Brian Beckham, WIPO, and Zak Muscovitch, ICA, the project team, comprising experts and UDRP stakeholders from around the world, includes: lead faculty for the WIPO Advanced Workshop on Domain Name Dispute Resolution: David Bernstein and Andrew Lothian; ICANN Board member and liaison: Sarah Deutsch; party counsel: Paul Keating, Jane Seager, Jason Schaeffer, and Marc Trachtenberg; UDRP panelists: Shwetasree Majumder, Francine Tan, Adam Taylor, Kiyoshi Tsuru, Nicholas Smith, Jeremy Speres, and Deanna Wong Mai Man; domain name registrant representative: Nat Cohen; and, brand owner representative: Mette Andersen.
The project team has held a series of calls with a range of UDRP stakeholders, including ccTLDs (for Nominet: Nick Wenban-Smith, Tony Willoughby, and Nick Gardner), counsel and UDRP review proponents (Georges Nahitchevansky and Steve Levy), Respondent counsel (Gerald Levine and John Berryhill), Registrars (Reg Levy and Rich Brown from Tucows, Owen Smigelski from Namecheap, and Chris Patterson from GoDaddy), UDRP Providers (Renee Fossen from Forum, Lenka Nahlovksa from CAC, and Ina Ergasheva from CIIDRC), civil society and academia (Konstantinos Komaitis, Christine Farley, and Rebecca Tushnet), domain investors (Nat Cohen and Jay Chapman), filing counsel (Nathalie Dreyfus and Cecilia Borgenstam), brand owners (Patrick Flaherty from Verizon and Margie Milam and Natalie Leroy from Meta), and enforcement firms (Caroline Valle from SafeNames, Tim Brown from Com Laude, and Vincent D’angelo, Joe Viviani, and Özge Şentürk from CSC).
The project is designed to produce a timely and focused, consensus-based report; this effort is independent from ICANN and is not an open-call for a working group. This review is limited to the UDRP’s existing trademark-based framework and is informed by the practical experience of panelists, counsel, parties, and providers.
In 1998, WIPO Member States requested recommendations for a uniform approach to resolving trademark-based domain name disputes. WIPO produced a Report to address cases of trademark “cybersquatting” by domain name registrants across jurisdictions which became the blueprint for the Uniform Domain Name Dispute Resolution Policy. The recommendations contained in the Final Report were endorsed by the WIPO Member States and were also made available to the then-new organization, the Internet Corporation for Assigned Names and Numbers (ICANN), which was formed to manage the policy and technical aspects of the Internet Domain Name System. Since the adoption of the UDRP by ICANN in 1999, and with the benefit of WIPO’s leadership and institutional investment, the UDRP is widely recognized as a unique global success and dispute resolution best practice.
Drawing on WIPO’s expertise and experience in providing the blueprint for the UDRP, and also drawing upon ICA’s expertise and experience with the UDRP, and in anticipation of the UDRP review planned by the ICANN GNSO Council, WIPO and the ICA believe a similar approach should be undertaken to produce a report identifying high consensus areas that lend themselves to policy or practice updates, but equally to identify areas that appear unlikely to result in consensus policy recommendations or which may merit further exploration (in an ICANN working group or otherwise).
Since then, WIPO has remained the global leader in the provision of UDRP and related services, having managed over 70,000 cases covering over 125,000 domain names to date.
Owing to WIPO’s stewardship, the UDRP is seen as a unique global success:
As was stated in an ICANN Issue Report on The Current State of the UDRP (2011):
“In the last decade, the Internet community has come to rely on the consistency, predictability, efficiency, and fairness generally associated with the […] UDRP.”
The conclusion of that same Report was that:
“While periodic assessment of policies can be beneficial […] commencing a [policy process] on the UDRP may ultimately undermine it, and potentially may adversely affect the many Internet stakeholders who benefit from its current implementation.”
Examples of ICANN’s prior use of expert groups
In March 2009, the ICANN Board endorsed the use of a group of experts in the form of an Implementation Recommendation Team (IRT), “to develop and propose solutions to the overarching issue of trademark protection in connection with the introduction of new gTLDs.”
In November 2012, the ICANN Board directed the CEO to produce recommendations on the need to redefine the purpose of collecting, maintaining, and providing access to gTLD registration data; to give effect to the Board’s resolution, ICANN created an Expert Working Group on gTLD Directory Services.