Digital Technology Law Journal
Colm Brannigan* Mediate.ca
1. In order to comment on the success, or lack of it, of the Uniform Domain Name Resolution Policy (UDRP) we must use objective criteria to determine ‘success’. Obviously, a comparative study is impossible as there is no comparable, functioning online dispute resolution system. However, there are a number of theoretical models that articulate criteria to test the adequacy of the UDRP.
2. Julie Hörnle, one of the most perceptive and thoughtful writers about Online Dispute Resolution (ODR), has commented, “in essence, legal dispute resolution is a complex and highly sophisticated form of information management and processing. For this reason, it lends itself to the use of sophisticated information technology.” Surely, the Internet’s own dispute resolution system should be the prime example of the use of cutting edge system and technological design? This paper uses principles of alternative dispute resolution systems design, together with an analysis of the growing body of literature on the UDRP to comment on the success of the UDRP as a dispute resolution system.
3. In 1998, the US government decided to privatise the domain name system. The result was the nonprofit Internet Corporation for Assigned Names and Numbers (ICANN) that includes advisory bodies which develop and recommend policies, such as the Domain Name Supporting Organisation. The UDRP came about as an alternative to litigation for resolving disputes between trademark owners and domain name registrants. It was decided that a uniform dispute resolution policy should be adopted, to prevent disputants being subjected to differing process and policy issues depending on where the domain name was registered.
4. The World Intellectual Property Organisation (WIPO) created the framework for the UDRP. The UDRP derives its power from ICANN's control of Internet resources. To register a domain name it must be obtained from a registrar who has the right to enter names in the ICANN approved registry. Since ICANN determines the approved registries, it is able to compel every registrant to accept the UDRP.
5. The significance of the UDRP as a dispute resolution system can be determined by the fact that it has so far decided 7,671 cases involving 13,149 domain names. Although the UDRP coexists with national legal systems, its decisions have effectively resulted in the development of a body of privatised international trademark law.
Domain Name Disputes
6. Domain name disputes fall into four main types. The first is the conflict between trademark law and the methods which domain allocates names. The second is where there are two or more parties with legitimate claims to use a mark as their domain name. The third, and growing area, is called "reverse domain name hijacking." The fourth type of conflict is one of priority, or when two parties want a particular domain name but neither has any trademark rights in the name.
ICANN sets out that,
“under the policy, most types of trademark-based domain name
disputes must be resolved by agreement,
court action, or arbitration
registrar will cancel, suspend, or transfer a domain name. The
UDRP was adopted on 24 October 1999 to deal with allegations
8. In the administrative proceeding the complainant must prove that each of these elements are present. To trigger the UDRP, a trademark owner files a complaint in a court of proper jurisdiction, or in cases of abusive registration, submits a complaint to an approved dispute-resolution service provider. There are only four approved dispute resolution providers in operation at the present time.
9. Clearly, the UDRP has three basic
10. In light of these objectives, and the number of cases dealt with so far, the UDRP certainly seems to be “successful”. However, given the importance of the UDRP to e-commerce, perhaps it should be required to meet more than just a minimum standard?
Comments on the UDRP
11. The chair of the Internet Law & Policy Forum, Masanobu Katoh remarked: “Never, and I mean never, have I seen a dispute resolution mechanism work so well…These cases have been handled quickly, inexpensively and most important of all, fairly. Without question, the UDRP is an important model for dispute resolution in other e-commerce areas.”
12. Perhaps unfortunately, or not, this panegyric view is not shared by all commentators. There has been a rapid development of journal and report literature, particularly in North America, on the UDRP. Interestingly, several articles are authored by practicing domain name arbitrators. Two of the most significant and influential papers are the Rough Justice report from Syracuse University's Convergence Center and Professor Michael Geist's, “Fair.com?”.
13. The Rough Justice report posits that, although the policy itself is sound, the interpretation of the UDRP and forum-shopping by litigants result in a system bias toward large trademark holders. Professor Geist’s analysis of patterns in UDRP decision-making focuses on perceptions of service provider bias leading to systemic unfairness and agrees with the Rough Justice report. Giest concludes that the identity of the arbitrators is the most important factor in determining case outcomes, and "case allocation appears to be heavily biased toward ensuring that a majority of cases are steered toward 'complainant- friendly panelists', generated heated discussion and controversy.
14. Critics of the studies and supporters of the UDRP responded that these theories are methodologically flawed. A major criticism is that there is no identification of whether the actual decisions by the so-called 'complainant-friendly' arbitrators were correct in law. Another UDRP proponent commented that most decisions have been correct with faulty judgements representing a "tiny percentage of the total ... a smaller percentage than happens in courts of law”. A further study by Annette Kur of the Max Planck Institute in Germany, concluded that the UDRP has been operating satisfactorily, although there is a need for some fine-tuning. Other endorsements exist, where some commentators see the UDRP as a fundamentally positive process that been damaged by the acts of individual arbitrators.
15. Comments range from “one can see the superficial appeal of an ICANN-like process to resolve international Internet disputes” to “an impressive percentage of ICANN arbitration rulings handed down thus far reflect a faithful application of the ICANN Uniform Policy and Uniform Rules. One of the strongest defences of the UDRP concludes that: “The UDRP constitutes a tremendous achievement in a key aspect of Internet governance. Its shortcomings to date are, on balance, significantly outweighed by its achievements.”
16. Finally, in response to Geist’s specific criticisms, one author commented: “While the UDRP is fundamentally fair ... it could be improved. ... If ICANN truly wants to establish confidence in the system, it needs to establish the rule of law ... To the extent that the Study (Geist) seeks to brand the UDRP as unfair, I must firmly disagree.” 
17. In April, 2003, ICANN responded to its critics by setting up a Domain Name System (DNS) Task Force to examine the UDRP Rules and identified the following issues facing the UDRP:
Procedural Issues (UDRP Rules) (1) Should there be improved centralised, searchable access to administrative panel decisions? (2) Should complainant and respondent filings be publicly available? (3) Should complainants and respondents be allowed to amend and/or supplement their filings? (4) Should the provider and panel selection processes be modified to address concerns about potential conflicts of interest? (5) Should standards for accrediting providers and panelists be promulgated? (6) Should transfers of proceedings between providers be permitted? (7) Should refunds of providers' fees in the event of settlement be mandatory and standardised? (8) Should the notice requirements be amended? (9) Should the procedure for implementing orders to transfer registrations be amended? (10) Should administrative panel decisions be subject to internal appellate review? Substantive Issues (Policy) (1) Should the policy be changed to require registrars to wait until appeal deadlines expire before taking action in response to court orders? (2) Should the policy be amended with respect to protection for non-registered marks? (3) Should the policy be amended to provide guidance regarding the interpretation of "confusing similarity"? (4) Should multiple complaints be allowed concerning the same registration and registrant? (5) Should the policy address the question of whether "holding" constitutes "use"? (6) Should "settlement negotiation" communications be excluded as permissible evidence of bad faith? (7) Should complainants be required to post a bond and/or pay a penalty in order to deter "reverse domain-name hijacking"? (8) Should the policy expressly include affirmative defences? (9) Should administrative panel decisions have precedential effect? (10) Should "cancellation" (deletion of the registration – allowing subsequent re-registration by anybody) continue to be an available remedy?
18. The Staff Manager’s Issues Report on UDRP Review (Report) which considered the “pros” and “cons” of these issues did not recommend any significant changes. The Report stated, “while there are some areas where improvements may be possible, there does not appear to be an urgent need for revision.”
6 Further, the review notes “if and when the issues are addressed ... [the taskforce] recommends that priority be placed on the following questions:” (1) Should there be improved centralised, searchable access to administrative panel decisions? (2) Should complainant and respondent filings be publicly available? (3) Should complainants and respondents be allowed to amend and/or supplement their filings? (4) Should administrative panel decisions be subject to internal appellate review? (5) Should the procedure for implementing orders to transfer registrations be amended?
19. It is interesting that ICANN did not consider whether contested matters should be decided by three person panels; a major issue for UDRP’s critics. The document gives a sense that ICANN is quite satisfied with the UDRP. The issue was not on the agenda at the ICANN Annual Meeting in Tunisia in October 2003 and is unlikely to be a major topic at the next meeting in March 2004 in Italy. This may be unwise, as many of the suggestions made for “reform” could lead to a much more comprehensive dispute resolution policy.
The UDRP as an Alternative Dispute Resolution System
20. The UDRP is quite novel as a dispute resolution system. Despite the number of cases decided, as with ADR in general, its legitimacy is still at issue. The availability of parallel litigation and judicial review is a critical element of the UDRP and may be needed as the UDRP is not merely the application of “technical” standards to domain name disputes. Further, decisions made in applying the UDRP guidelines have the potential to impact the substantive legal rights of millions of registrants.
21. Because the UDRP represents an alternative dispute resolution system, it is appropriate to examine it in those terms. There are some common theories and models of ADR systems design. The most commonly used are the models of Ury, Brett and Goldberg, Costantino and Merchant, and Slaikeu and Hasson.
22. In Ury, Brett and Goldberg’s pioneering work, the three common methods of resolving disputes were identified. These are power-based remedies, rights based remedies, and interests based remedies. Their preference, in common with most in the alternative dispute resolution movement is to focus on interests based solutions. Since most conflict is not of a single issue distributive nature, an interest based focus provides more opportunities for comprehensive solutions. However, in the case of the UDRP, disputes are “win-lose” in nature, and so a rights or power based analysis is more appropriate. This does not mean that other aspects of dispute resolution system design cannot be used for analysis of the UDRP.
23. An effective conflict resolution
system model was developed by evaluating the following
24. These criteria can be applied, some more than others, to the UDRP. Costantino and Merchant modified the Ury, Brett and Goldberg model and noted the importance of satisfaction in promoting an organisation's goals. Their belief in the spiral non-linear nature of conflict and stakeholder participation in the design process led to their formulation of a somewhat different list of principles. Of importance to the UDRP are at least two of these. Firstly, creating systems that are simple to use and easy to access; and, more contentiously, allow disputants to retain maximum control when selecting of neutrals wherever possible.
25. A further refinement of systems design was made by Slaikeu and Hasson. They added avoidance as a fourth method of conflict resolution. This addition to the theoretical overview fits with the reality of conflict. Avoidance is a legitimate response to conflict and may be the appropriate response in many situations. This is especially so where there is lack of empowerment, whether actual or perceived, on the part of a disputant to resolve the conflict in a way which fits the culture of the organisation where the dispute occurs. Does the UDRP’s record of “default” decisions show a flaw in the system where avoidance has become the choice of a significant number of disputants?
26. These various models work from the assumption that conflict management process should move from low to high cost. Cost is defined in such a way as to include both financial and emotional components. In the UDRP we have a transition from “low cost” arbitration by a UDRP provider policy to “high cost” adjudication by national courts.
27. How does the UDRP hold up when compared to these models? In fact, quite well. While the UDRP is mandatory in one the sense, it is also voluntary in that the rules do not preclude the filing of a lawsuit either during the proceeding or after its conclusion, albeit with strict time limits. There is general consensus about the requirements for a fair and effective system of dispute resolution that would include independence, low cost, transparency, adversarial procedure, representation, legality, and liberty as essential elements. The UDRP has some of these elements.
28. The UDRP allocates most of the cost of a proceeding to the complaining trademark holder. It resolves disputes quickly. It also has a degree of transparency in that the substantive and procedural provisions of the UDRP are posted on the ICANN web site. All arbitral decisions are in writing, and are usually published. In fact, without this transparency, many of the difficulties with the UDRP would still exist but would be impossible to evaluate, especially in the way that Professor Geist analysed cases.
29. One of the most difficult problems for any ADR system is the enforcement of decisions. The UDRP solves the problem through ICANN, although it is not a solution that could easily be replicated in a different context. The process is therefore successful in providing the participants with a final and enforceable result. However, the ICANN process falls far short of due process ideals in other ways. Most of were identified in ICANN's internal report and by its critics.
30. The UDRP also demonstrates that procedural choices designed primarily to expedite can frustrate some due process values of traditional litigation. Usually the justification for an arbitral model, which eliminates procedural and substantive rights, is that the parties have consented to those reduced rights. This is not true in the case of the UDRP. The lack of fully voluntary participation is somewhat troubling, although mandatory participation in court annexed mediation, which flies in the face of mediation as the quintessential “voluntary” process, seems to be much more accepted today.
31. There are also procedural flaws in cases where one party needs information from the other. Even systems without a "discovery" process have alternate mechanisms to compel disclosure. The UDRP "hearing" process is a poor model for any dispute that involves contested facts, especially contested facts not embodied in pre-existing documents. Any dispute resolution system that applies law to fact, including an online system, requires ways to deal fairly with factual disputes.
32. While there are many benefits to face-to-face communication, other modes of communication fit more appropriately with the needs of the disputants in this process. The use of an online process in the UDRP is an effective use of technology, as long as advances in technology are recognised by changes in their use. Currently, this does not appear to be happening. The UDRP does not make maximum use of existing technology. Essentially, it ignores and virtually prohibits the use of video conferences, telephone conferences, or web conferences so that the arbitrator’s decision is based on written submissions and accompanying documents. Again, against an ideal model, video technologies could be used synchronously or asynchronously. While it could not completely replace in person, face-to-face encounters, it could provide an improvement over the present system.
33. The UDRP also ignores many existing ADR methods, looking only to stripped- down arbitration that neglects numerous richer options. For example, ADR mediators are actively involved in developing the standards and skills needed to adapt to the online environment where a mediated resolution may provide a more satisfying solution to all parties. Other techniques, such as early neutral evaluation or mediated settlement conferences may also be useful in the online setting despite that these techniques would take the UDRP away from its summary nature. This may add further complexity to the process, especially where the option of litigation, however impractical or expensive, exists as an alternative.
34. The UDRP is a dispute resolution process based on established ADR principles and represents a broader shift away from traditional adjudication. Comparatively, ODR is a relatively new process, but it offers quick and cost- effective commercial solutions for disputes. The jurisprudence arising from the UDRP experiences can teach us more about the promise and challenges of privatised law making, law and the Internet and online processes.
35. By virtue of its simplicity and cost effectiveness to disputing parties, the UDRP process seems closer to the medieval law merchant than to modern arbitration and represents economic efficiency on a global scale. However, viewed from the perspective of ADR system design, some of the features of the UDRP cannot be applied to existing dispute resolution schemes and reflect its uniqueness. The UDRP meets the minimum criteria set out in the various ADR models discussed and is a significant success in itself. Hornle comments that: “The ambit of the UDRP is to create a speedy and cost efficient procedure to counter the narrow ambit of cybersquatting cases. Therefore it is inevitable that the proceedings are to a certain degree a form of "rough justice". Within this scope the procedure has been successful indeed.”
36. In fact, the unique nature of the UDRP contributes to its success. This comprises: WIPO’s participation despite the ambiguity of its role; the overall transparency of the process, the self-executing speedy nature and due to its online process. In applying critical models and calling for what may amount to an overly ornate level of procedural perfection, we must remember that the UDRP was designed, unlike traditional civil litigation, for resolution of a small class of disputes. In this context, it represents a successful method of dispute resolution which is “a positive first step in establishing a global set of rules for the resolution of certain kinds of Internet-related trademark disputes”.
37. Before applying reforms which would
make the UDRP another model of procedural hide-bound international
arbitration, as happened
with law merchant,
it should be demonstrated
that the finished product would be worth the increase
expense and procedural
complexity. This may be