“No middle ground when it comes to the UDRP”: searching for balance in domain name disputes

• IP expert calls for “healthy and even-handed debate” over key UDRP principles
• Discussion urged over what constitutes bad faith in domain disputes
• Urges brands not to use UDRP as alternative to court action in trademark conflicts

The latest edition of World Trademark Review magazine was published online for subscribers earlier today. One of the feature length analysis articles focuses on the Uniform Domain Name Dispute Resolution Policy (UDRP), focusing in on the debate over reverse domain name hijacking (RDNH). Reflecting on the chasm that often exists on the issue between the domain and brand owner communities, the author calls for “a healthy and even-handed debate” over the future of the UDRP.

In December 2017, in a piece titled ‘One firm, two RDNHs in the same day’, Domain Name Wire’s Andrew Allemann reported on two UDRP reverse domain name hijacking findings. In the cases Stobbs IP represented Informa Business Information for PinkSheet.com and Virgin Enterprises for VirginLiving.com, Allemann stating: “I can’t recall any law firm getting hit with reverse domain name hijacking with two different clients in the same day.” The piece was carried by a number of domain industry outlets, with Virgin also coming in for criticism from some commentators.

Writing in the latest edition of World Trademark Review, Julius Stobbs, principal of Stobbs IP, examines use of the UDRP, noting that – while accounting for only a tiny number of complaints – findings of RDNH are on the rise. He also expands on the case facts of the aforementioned disputes and reflects: “I believed that we would win both complaints and that neither complainant was acting in bad faith. However, both decisions received quite a lot of attention in the domain world, with many criticising the brand owners for overreaching their rights and firms such as mine for helping them.”

In his analysis, he observes that “there appears to be no middle ground when it comes to the UDRP”, adding: “For brand owners, the UDRP is an effective tool to recover domains, and anyone who registers a domain containing the brand is a bad actor. For the domain world, the UDRP is draconian and goes too far to support brand owners and there should be strict penalties relating to any RDNH finding.”

In terms of a rebalance, he cautions that brand owners need to use the system for what it was intended for: to deal with proper abuse of the system and bad faith (rather than as an alternative to court action in what are really trademark conflict or infringement cases). On the flipside, he argues, there should be understanding that it is not unreasonable for brand owners to seek to recover domains that include their brands in certain circumstances.

With the UDRP scheduled for review by the ICANN community, the issue will remain a live one and Stobbs’ view is that the mechanisms does not need a fundamental overhaul. However, he argues that there are two general issues that should be debated. The first relates to the principles that should apply to the registration of domains and the second to define what constitutes bad faith.

At a time of review, that brand owners wield the UDRP in a responsible manner is not a new refrain. For instance, at the 2017 INTA Leadership Meeting, Adobe System’s J Scott Evans stressed that the ICANN process is “weighted towards registration interests”, the fear being that a UDRP review results in unnecessary change and an “unwieldy revised mechanism that fails in practice”. He therefore urged:  “Now is not the time to be clever lawyers and use the UDRP in creative ways to prove how smart you are.” Instead, he stressed the need to use the UDRP only for the purposes it was created.

Debate over the UDRP will continue and Stobbs concludes his analysis with the observation that “a healthy and even-handed debate over these key issues is necessary to help the UDRP move forward into a second phase and to bridge the gap between the two camps in the domain world”. Whether, in the ICANN world, that divide can be narrowed remains to be seen.  

Stobbs’ full analysis is available here.