The Uniform Dispute Resolution Policy (UDRP) is the agreement that all domain name holders must agree to when they register a name. The UDRP is administered by the WIPO Arbitration and Mediation Center and offers an expedited process for trademark owners to recapture domain names that incorporate their marks. The policy lists the three factors that must be shown by a complainant: 1) the registered domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, 2) respondent has no rights or legitimate interests in the domain name, and 3) the domain name has been registered and is being used in bad faith.
Although not binding "law," UDRP panel opinions discuss prior decisions as if they were. In other words, the decisions read like cases and rely on past ones as authority. There are a few guides that summarize the results of panel decisions on certain issues, see here and here. Over the last year or so the WIPO website has added a ton of information, including a database of panel decisions, statistics, and model complaints and responses. The top 25 UDRP decisions cited by complainants and respondents are also listed. In December 2009, WIPO launched a paperless complaint filing system.
Since its inception, the average number of domain names per case has been between 1.00 and 2.27 per year. In what appears to be the most domain names ever involved in a UDRP proceeding, a recent complaint by the Inter-Continental Hotels Corporation and Six Continents Hotels, Inc., two related companies, sought transfer of 1,542 domain names registered by the respondent that include the names of a handful of their hotel brands. For example, domain names incorporating the Candlewood Hotels brand were registered in typical bulk-registration fashion by the respondent for candlewood-brentwood.com, candlewood-burlington.com, and on down a list of cities. Other trademarks involved include Holiday Inn and Crowne Plaza. The Appendix of the panelist's opinion lists all of the disputed domain names.The panel noted that the UDRP clearly provides for a complaint involving multiple domain names if they are registered by the same "defendant" entity. Although not expressly mentioned in the UDRP, the panelist in this case cited previous UDRP proceedings to support his conclusion that multiple entities under the same corporate parent may bring their complaints against a single party in one proceeding to recover domain names related to multiple registered marks.
The panelist grouped the disputed domain names into four categories: trademark plus geographic term, trademark plus descriptive term, part of a trademark plus geographic or generic term, and disputed domains not containing any of complainant's marks. The last category contained, for example, domains including "Holiday" without "Inn." For the vast majority of the domain names, the complainant satisfied the factors and 1,519 of the disputed domain names were transferred. A handful of domain names were withdrawn and others didn't satisfy the three factors. The number of domain names and the speedy decision (less than two months from filing) in this case highlight the importance of the UDRP for trademark holders and the idiocy of cybersquatters.
Dan Hunter, IILP Director and UDRP panelist (not on this case), noted that although the decision is typical in terms of its substantive discussion, he's never seen a proceeding of this scale. A quick scroll through this list and other available resources on the WIPO site reveals no other decision that comes close to the number of domain names involved here. More important, the development of UDRP "law" and its critical function is an important area for students and attorneys to keep an eye on. You can subscribe to emails from WIPO about the UDRP dispute resolution process here.
-Joe Merante
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