Briefing to the ICANN Intellectual Property ConstituencyOctober 27, 2009 UDRP Update Briefing to the ICANN Intellectual Property Constituency October 27, 2009 WIPO Fast-Track UDRP Option Arbitration and Mediation Center World Intellectual Property Organization (WIPO)

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO UDRP Update - Roadmap 1. Some statistics and recent UDRP developments 2. WIPO eUDRP Initiative 3. WIPO Fast-Track UDRP Option

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, Update on WIPO Statistics and Trends At the recent WIPO Conference (10 Years UDRP – What's Next?), WIPO announced the issuing of a decision in its 16,000th UDRP case. Despite the recent global financial turmoil, WIPO filing trends in 2009 are close to the level in 2008, which was a record year.

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, Top 25 WIPO UDRP Complainant Country Filing

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, gTLDs in WIPO Cases

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO UDRP - Case Languages

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, Language Determinations in WIPO UDRP Cases Number of WIPO UDRP cases in which the Panel found case language to be different from the language of the domain name registration agreement (Panels have discretion to determine language of proceedings under UDRP Rule 11).

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO Overview of WIPO Panel Views on Selected UDRP Questions WIPO is currently engaged in comprehensive updating of its widely-used WIPO Overview of WIPO Panel precedent. ( Proposed revisions, expected to introduce at least 21 new categories to deal with evolving UDRP developments, are currently in consultation with selected WIPO Panelists. The WIPO Overview complements the WIPO Online Legal Index of Panel Decisions. ( Publication of the revised WIPO Overview is set to occur on December 1, 2009 on the UDRP’s 10th birthday.

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, (1) WIPO eUDRP Initiative (Rules 2.0) Proposed by WIPO in December 2008 to benefit all UDRP users and providers. ( Benign, targeted procedural proposal to allow filing and notification of paperless UDRP pleadings – with the safety valve of “Written Notice.” “Written Notice” preserves the requirement for a notice letter to be sent to respondents’ physical address – but without requiring pleadings to be physically sent.  (The latest versions of ICANN’s proposed pre- and post-delegation mechanisms also now appear to pick up the concept of written notice.)

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, (2) WIPO eUDRP Initiative (Rules 2.0) ICANN-held public consultation on the WIPO eUDRP Proposal concluded in mid-Aug 09. Comments on ICANN’s website. ( WIPO’s assessment: clear support, uncontroversial procedural reform. Minor revisions and explanatory memorandum for WIPO’s proposed Rules changes responding to the consultation were forwarded by WIPO to ICANN on September 17, ( WIPO’s strong hope is for ICANN approval at the ICANN Board meeting on October 30, 2009.

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, Recent UDRP developments: WIPO-Identified Current UDRP Issues Examples of current procedural and substantive issues discussed in WIPO Panel decisions, at the WIPO Conference, and also in recent publications include:  Bulk registrations  Respondent identity  Consolidation  Language of proceedings  Settlement  Convergence of registration roles  Registrant knowledge  Supplemental filings  Future directions for the UDRP

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO “10 Years UDRP – What’s Next?” Conference: Program

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO 10 Years UDRP – What’s Next Conference: Press Release “WIPO representatives raised the possibility of opportunities for complainants to express “an intent to file”, including to facilitate identification of respondents in cases involving privacy shields. They also discussed the possibility for respondents to express early consent to transfer, or to indicate an intent to participate in the UDRP proceedings through the filing of a response. Other WIPO concepts include form complaints in anticipated default cases, as well as panel decisions on a summary basis in obvious cases of this type, all subject to adequate safeguards for preserving party equality and respondent participation.”

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO Fast-Track UDRP: beginnings In early 2009, WIPO began in earnest to consider adjusting its UDRP practices to meet a widely recognized need for a faster and more cost-effective means of resolving obvious UDRP disputes, especially in the many cases of Respondent default. This received further development when we considered the UDRP’s relationship to the WIPO-proposed Model Expedited (Domain Name) Suspension Mechanism proposal in February This was also fueled by uncertainty as to if, when and in which form New gTLD rights protection mechanisms (RPMs) will be put in place.

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO Fast-Track UDRP: the departing point Starting line for WIPO thoughts:  WIPO UDRP case settlement rate (roughly 25% of all WIPO cases),  Default rate (roughly 75% of all decided cases). Challenge: how could WIPO UDRP practice be improved to enable both default cases, and also the roughly 25% of settled cases, to be more efficiently resolved within the existing UDRP framework on a more cost effective basis, while also ensuring appropriate protections and safety-valves for parties?

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO Fast-Track UDRP: taking the discussion further Externally, WIPO began discussing this challenge with a few persons at the ICANN Sydney Meeting. More recently at the “WIPO 10 Years UDRP – What’s Next Conference” in Geneva, WIPO publicly shared a number of the concrete options developed. WIPO also anticipated its plans in a number of recent articles, including in Managing Intellectual Property.

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, “What’s Next as the UDRP turns 10” Managing Intellectual Property “The WIPO Center sees scope for consideration of a type of two-step approach under which WIPO UDRP panels could, within a responsible evidentiary framework, resolve on a summary basis complaints which prima facie meet the three-part UDRP test.”

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO Fast-Track UDRP: design elements Practice-informed. Flexible dual-track pleading and decision process. Differentiated filing fees and word count / annex limits and panel composition (Fast-Track: single-member only; election by either party for a three-member triggers a “standard UDRP”). Built in “safety-valves” for parties including: 20-day (UDRP) response period fully preserved. Respondent can request “standard” (UDRP) proceedings throughout the process as appropriate. Panel discretion (including as to procedure) fully preserved. Even defaulting Respondents continue to have court recourse as facilitated by paragraph 4(k) of the Policy.

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO Fast-Track UDRP: decision elements WIPO Fast-Track Decision: in short-form, 2-3 pages overall expected time to render in obvious cases: 2-3 days. Essential decision content: party names, disputed domain name(s), concerned registrar (including for implementation), panel reasoning in brief, panel ordered remedy (e.g. transfer, denial). UDRP Rule 15 (d) “…in writing, provide the reasons” WIPO Fast-Track Model Decision saves time: Brief procedural history and summarized facts Panel discretion to utilize appropriately standardized language on each of the required three elements under Policy para 4(a), including whether established/not established on X grounds, or to include short-form reasons directly. WIPO decision may also include short-form panel determination on respondent identity (e.g. in privacy/proxy cases), case language (where requested), and consolidation (where appropriate).

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO Fast-Track UDRP: practice-informed (1) Builds on WIPO’s and WIPO Panels’ experience distilled from over 16,000 UDRP cases. Specifically reflects the WIPO experience in facilitating settlement, in administering ‘bulk’ complaints involving multiple domain names, and in dealing with privacy and proxy registration services and disclosure. Takes advantage of recent WIPO-panel developed criteria dealing with consolidation. The Fulham Football Case (where “common grievance […] equitable and procedurally efficient.”) (

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO Fast-Track UDRP: practice-informed (2) Existing UDRP Rules provide a flexible and fair framework to accommodate new WIPO practice. Comparable to WIPO practice development of:  Case language process  Supplemental filings (at no cost)  Settlement and suspension mechanism

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO Fast-Track: using the existing UDRP and Rules Implementation of this new WIPO practice involves practical party guidance based on adjustment of WIPO’s existing Supplemental Rules, Model pleadings, and Filing Guidelines. The existing WIPO Supplemental UDRP Rules already address issues like: filing fees, word limits, etc. The existing UDRP Policy and Rules provide an adequate framework.

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO Fast-Track UDRP: the goal What do we expect from WIPO Fast-Track in the aggregate?  Reducing non-profit WIPO UDRP fees by potentially up to 50%.  Lowering the cost of parties preparing pleadings (roughly 75% of cases default).  Condensing timelines, in part by having summary decisions in obvious cases, and promoting early settlement.  While continuing to offer a meaningful remedy (transfer), faster, and at reduced cost in appropriate cases.  In sum: WIPO adapting its UDRP practice to the shifting reality of the DNS.

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, WIPO Fast-Track and the URS WIPO sees the URS as a potentially valuable addition to the discussion on New gTLDs. WIPO-proposed Expedited Suspension Mechanism (rights protection mechanism cf. URS).  Panel-free mechanism for obvious cases (with appropriate safeguards).  Meaningful remedy (no “revolving door”).

Briefing to the ICANN Intellectual Property ConstituencyOctober 27, Updates on WIPO Fast-Track Further WIPO information available online, including at: