Zak Muscovitch, General Counsel of the ICA, was invited by the World Intellectual Property Organization (WIPO) to present at its symposium on the occasion of the 20th anniversary of the UDRP held in Geneva on October 21, 2019. This invitation was a rare opportunity to share the perspective of domain name investors to an audience of UDRP panelists. UDRP panelists are required to peer into the souls of domain name investors to determine whether the domain name investors’ actions are badly intentioned or not. UDRP panelists are usually quite familiar with, and sympathetic to, the views of trademark holders, as many indeed come from the trademark bar. Yet UDRP panelists too often have little familiarity with the domain name industry or with the perspective of the domain name investors whose actions they are judging from afar.
Presenting on two panels, Muscovitch explained that domain name investors are important stakeholders in the UDRP process and are not cybersquatters. Further, he made the point that the UDRP is not intended to only serve trademark interests, but also to protect the rights of registrants. This is a crucial and precarious balance and the UDRP must never fall prey to attempts to tilt it further in favour of trademark owners.
Since its establishment 20 years ago, the UDRP has proved to be a double-edged sword. On one hand, domain investors have, most of the time, been able to successfully use the UDRP to avoid court proceedings and to save their domain names from predatory attempts by trademark owners to seize valuable generic domain names. But on the other hand, over the years we have seen many very troubling and unfair decisions. Indeed, over the course of 20 years, we have even seen UDRP panelists change their mind about what is fair, transferring domain names in the past which they would not transfer now. Over the years, some panelists have often begrudgingly begun to accept that investing in inherently valuable and generic domain names is a bona fide business and is entitled to protection.
After many years of zealous advocacy by domain name lawyers and by the ICA, we are finally at a point where the UDRP has some degree of consistency, credibility, and stability, though we do continue to on occasion see very troubling outcomes and approaches by panelists. Moreover, there are numerous areas where procedural reform is required, as set out in our UDRP Reform Platform of 2018.
Yet despite that, there are those amongst the IP bar that are tempted to try to re-jig the UDRP to increase its breadth and scope, thereby directly harming domain name investors. One of the ways that has been floated is to change the “conjunctive” required bad faith registration AND bad faith use, to “bad faith registration OR bad faith use”. This could mean that a registration that was clearly registered in good faith, for example, prior to any trademark rights arising, could be taken away in the event of an unintended instance of a bad PPC link, or even perhaps, due to non-use.
Muscovitch made it clear to the assembled panelists, that in his view, this would be a severe and ill-advised change to the UDRP that would upset the 20 years of case law and balance that has been achieved to date. Moreover, attempts to introduce such radical substantive changes to the UDRP by trademark owners would surely be met with corresponding demands from registrants. In the ICA’s view, reform can be introduced to the UDRP via procedural changes and by clarification in the interpretation of the UDRP text rather than by changing its text. After hearing the ICA’s submissions, it appears that most of the assembled UDRP panelists have agreed – the UDRP should not see such radical changes.
The ICA would like to extend its gratitude to WIPO for inviting the ICA to participate in this important symposium on the UDRP and to thank the assembled panelists for the open and fair hearing that was received. The ICA believes that collaborative and constructive efforts to improve the UDRP remain possible without introducing any measures that would degrade investors’ ability to successfully defend their investments. The ICA looks forward to the work of the ICANN Working Group on the UDRP which will get underway shortly. The ICA hopes that trademark interests and investor interests alike will work together to ensure that balance exists in the UDRP as it was intended.
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