Erik noted that the domain name system has its roots at CERN, on the outskirts of Geneva, where the scientist Tim Berners-Lee developed the World Wide Web in 1989. Nearly three decades on, there are now some 3 billion internet users and 330 million domain name registrations (including some 28 million in the 1200 new gTLDs that have been launched in the past three years).
From the outset, said Erik, the domain name system presented trade mark owners with “unprecedented legal challenges” including questions about jurisdiction, value, identifying defendants and enforceability. These were addressed in the WIPO-designed UDRP, adopted by ICANN in 1999.
Since then, the WIPO Arbitration and Mediation Center has handled more than 36,000 UDRP cases covering some 68,000 domain names. Last year, 305 WIPO panellists (from 47 countries) dealt with a record number of 3,036 complaints. Kay Uwe Jonas, after whom this lecture was named, himself filed nine UDRP cases – and prevailed in all of them.
To make the UDRP work, the WIPO “ecosystem” includes elements such as a keyword-based decision index, model complaints and responses, training workshops, panellist meetings, real-time statistics and a jurisprudential overview – the third edition of which WIPO will publish in May this year.
Evolution of the domain name system
Since the launch of the UDRP, said Erik, the domain name system and industry has “materially evolved – in a quantitative sense, but also in numerous qualitative aspects”. For example, early squatters tended be amateurs and registered domains for ransom on an incidental basis; today they include professionals using automated systems to monetise registrations with commercial content.
Moreover, trade mark owners now have to contend with millions more domain names, hundreds more gTLDs and a variety of languages and scripts, as well as the emergence of privacy providers and new intermediaries.
The impact of these changes has been felt in numerous UDRP cases, and the system has evolved to address issues such as resellers, wilful blindness, jurisdiction, common law trade mark rights and standards for bad faith intent. These are all discussed in WIPO’s jurisprudential overview.
Even if it is seen as a global success, Erik warned that the UDRP system “should not be taken for granted; there are real risks to its continuing functioning and relevance”. He summarised five challenges: (1) the growth of the domain name system, including the offering of free registrations; (2) the possible shift of enforcement priorities from domain names to infringing content; (3) new gTLDs’ sale of premium names at a high fee; (4) the growing sophistication of technical tools for online impersonation; and (5) ICANN’s pending review of the UDRP and other rights protection mechanisms.
On the last point, he urged associations such as MARQUES to continue to play a part at ICANN monitoring and commenting on proposed reforms – as WIPO itself does.
Whatever happens, Erik suggested there are at least four lessons to be learned from the UDRP: (1) the collective wisdom of trade mark experts involved in UDRP cases represents significant jurisprudential impact; (2) online conduct has been readily embraced by all participants; (3) UDRP-type disputes are well served by a non-court mechanism; and (4) the UDRP’s design elements may work in other contexts, for example to curb web content that infringes trade marks, copyright or other IP rights. “In all of these endeavours, the hardest thing remains to keep it simple,” concluded Erik.
The lecture was followed by a number of questions from the audience, which addressed topics including the possible UDRP reform and the relationship between UDRP and court proceedings.
Issue 075
