Keeping the U in the UDRP Jane Mutimear Bird & Bird

Why U is good uUniformity means Gpredictability/certainty Gsense of fairness Glower costs

Different types on non-uniformity uDifferences between providers of the UDRP Gin rules and policy Gin approach to cases - certainly between panelists uDifferences between decided cases Gapplication of different law Gdifferent decisions on similar facts uDifferences with country code dispute procedures

Differences between providers uWIPO, NAF, [eResolution], CPR, ADNDRC uPercentage win to complainant: GWIPO % GNAF % GeRes % GCPR % l statistics from Fair.com? Prof Geist

Why is there a difference? uDoes forum-shopping lead to biased results? GUnlikely. Panelists independent. Few rely on UDRP as source of income. uNon-uniform case load distribution? GPossible - top 6 NAF panelists decided 53% uDifferent interpretation of rules GPossible. Does burden of proof shift to respondent to prove positive case? uNumber of default cases - probable (Scott Donahey)

Differences between cases uMost obvious with difficult cases - which are on the borderline of what UDRP is meant to cover ueg personality cases Gcontrast JimiHendrix.com (respondent claimed ran fan site and domain name preceded tm - not accepted. Evidence of speculation). GWith BruceSpringsteen.com (respondent ran unofficial site, had 100s of other registrations. Held legitimate use - not blocking)

Differences between cases uSucks decisions (or decisions which suck?) uSeen as issue of free speech - not really. uFailure to overcome first hurdle of confusing similarity uMany decisions decided on basis that non-English speakers would not know derogatory meaning of sucks. uShould we apply this principle when judging confusing similarity with IDNs?

Sucks cases uDixonssucks.com GThe first and immediately striking element in the Domain Name is the Complainant's name. Adoption of it in the Domain Name is inherently likely to lead some people to believe that the Complainant is connected with it. Some will treat the additional "sucks" as a pejorative exclamation and therefore dissociate it after all from the Complainant; but equally others may be unable to give it any very definite meaning and will be confused about the potential association with the Complainant

Sucks cases - Wal-martsucks.com uNo reasonable speaker of modern English would find it likely that Wal-Mart would identify itself using the Wal-MartSucks.com name. Complainant had no evidence of any potential confusion uThe panel understands the phrase identical or confusingly similar to be greater than the sum of its parts. The policy was adopted to prevent cybersquatting. This describes respondents behavior. Thus the panel concludes that a domain name is identical or confusingly similar to trademark for purposes of the policy when the domain name includes the trademark or a confusingly similar approximation, regardless of the other terms in the domain name. uie failed first element but still won.

Walmartcanadasucks.com v wallmartcanadasucks.com uWalmartcanadasucks.com Gconfusingly similar, no legitimate interest and bad faith uwallmartcanadasucks.com Gnot confusingly similar as presence of sucks indicates not site of the trade mark owner.

Differences between cases uSection 15(1) Rules of Procedure: GA panel shall decide a complaint on the statements and documents submitted and in accordance with the Policy, these Rules and any rules or principles of law that it deems applicable uReliance on UDRP precedent can indirectly apply law which may not be applicable (paper to be published by Wotherspoon and Cameron at fasken.com)

Application of local law uAlthough may not strictly be needed under UDRP at present (if explanations under the rules expanded) may help with IDNs uLocal laws have had to deal with whether a translation or transliteration of a trade mark infringes the trade mark. Panelists will need to draw on this experience in determining confusing similarity. uPanelist will need to determine which is the appropriate law where eg Japanese trade mark and Chinese registrant using similar text.

Country code domains uSome adopted UDRP uSome implemented own, very different LDRPs uSome implemented UDRP variations uMany in the process of looking at possibility of LDRP uWIPO Best Practices [minimum practices] guidance good start uGood to have a basic international standard with ccTLD specific variations

Making the UDRP more U? uEnhance the examples given in the rules. Eg Sucks sites could be dealt with. uConsider whether with enhancement s15(1) could be abolished - probably not with need to deal with IDNs. uExplain when the burden of proof shifts to respondent

Making the UDRP more U uConsider introduction of appeal GNever get true case law development with flat structure GCosts - complainant pays if loses? uEnsure that IDN registrations (whether within the ICANN structure or outside) have a dispute resolution procedure which adhere to min standards