Professor Ethan Katsh explaining the UDRP-DB to attendees of the colloquium.

“Domain Disputes and the People Who Solve Them.”

About the UDRP-DB  Test

This summer two members of the Institute for Information Law and Policy, Jeremy Hollander (2L) and Sal Piscopo (3L), helped further expand the Uniform Domain Name Dispute Resolution Policy Database (UDRP-DB) for the Center for Information Technology and Dispute Resolution at the University of Massachusetts at Amherst (http://www.ombuds.org/center/index.html). The Center’s mission is “to support and sustain the development of information technology applications, institutional resources, and theoretical and applied knowledge for better understanding and managing conflict.” UDRP-DB is a new software application designed to enhance public knowledge about the domain name dispute resolution process by cataloguing and indexing the reasoning behind it.  Jeremy and Sal’s summer research contributed to the UDRP and expanded the resources available to those interested in domain name and trademark disputes. Jeremy and Sal read and analyzed nearly 1000 cases, posting their analysis to the database during the course of summer 2003. Both Jeremy and Sal learned quite a bit from the project.

Funded by the Markle Foundation, the UDRP-DB was developed by Ethan Katsh, professor of legal studies at the University of Massachusetts at Amherst and Co-Director of the Center, in conjunction with the Cornell Law School Legal Information Institute. The database, like a traditional legal reporter makes it possible to organize and retrieve information about these dispute resolution proceedings and get a better sense of how the Uniform Dispute Resolution Policy (UDRP) has been applied in different cases.

Access the UDRP-DB at http://udrp.lii.info/udrp/index.php.  At the site internet users can conduct a search where they can determine the status of any domain name that is in the database.  Over 100 cases are decided each month and the ongoing update of the database makes it the most complete resource available on decisions under the UDRP.

"This is cutting edge material.  The concept of a domain name database is only a few years old so it is very exciting to be so involved in such a new project.  Working on this project has given me a better understanding of some complicated trademark terms that will hopefully give me a leg up next semester when I start taking these courses.  'Fair use', 'legitimate interests', 'typosquatting’ and 'bad faith registration' are all terms I have become very acquainted with over the past 3 months. The fact that this is a project that is benefiting the general public is also a nice. Through this project more people will be able to access the decisions of the forums and will better be able to understand how the decisions have been handed down."

– Jeremy

“It’s quite impressive to see just how much of an impact international intellectual property organizations have on the flow of internet expansion as well as international business as a whole.  I’ve already come across WIPO in both my International Law and International Trade Dispute classes. The immediate relevance of my research to my education is a pleasant surprise. The balance of regulation and freedom within the internet and IP world is more important than some might take it to be.  That is what makes ICANN and the UDRP so important, as they not only create an environment where trademark rights are protected, they also make easily available important precedent for anyone who may want to seek out such information.”

- Sal

About the UDRP

Adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) in 1999, the UDRP is a tool for helping to resolve both domestic and international disputes between trademark owners and domain name holders. "The Uniform Dispute Resolution Policy (UDRP) established a process as well as a policy, a set of procedures for resolving domain name disputes as well as a set of standards to be employed in making decisions."  It helps to resolve these disputes by establishing a standard set of procedures to be followed in any given dispute.  By applying the same standards and procedures to disputes that arise, and by having a neutral panelist decide the outcome, the UDRP is meant to assure parties that their points of view are heard and judged without bias in an efficient proceeding.

The disputes regarding intellectual property covered under the UDRP are those involving internet domain names. In short, a domain name is the location or address of an entity on the internet. For example, Sony Corporation resides on the World Wide Web at www.sony.com. Since the domain can literally be any phrase or word, and anyone is free to register such a domain address, individuals have frequently registered known trademarks. The desire of trademark holders to maintain exclusive control over their marks can conflict with the registration of a domain of the same name by a third party.. To date, there have been roughly 7,300 such cases brought before domain dispute forums.  An example of this type of conflict can be found in Sony Kabushiki Kaisha v. sony.net , (WIPO Case No. D2000-1074).  Here, the trademark holder (Sony Corp.) brought suit to prevent sony.net from utilizing the Sony mark in the disputed domain name. This is where arbitration forums become necessary. This database catalogs cases primarily decided by two neutral arbitration forums: The World Intellectual Property Organization (WIPO) and the National Arbitration Forum (NAF). The WIPO is an organization that was founded to protect the rights and interests of creators and owners of intellectual property worldwide through arbitration, mediation and dispute resolution. Similarly, the NAF is a forum dedicated to the protection of rights of the creators and owners of intellectual property.

The Legal Standard

The principal standard by which arbitral panels resolve these disputes under the UDRP is “bad faith.” The guidelines of the UDRP require the complainant (plaintiff) to establish three elements before bad faith can be established and the disputed domain be transferred to the complainant.  First, the complainant needs to show that the domain is either an exact copy of or substantially similar to the complainant’s established mark.  Second, the complainant needs to show that the respondent (defendant) has no legitimate interest in the domain name.  Third, the complainant needs to show that the domain was registered in and is being used in bad faith. A fairly detailed process was put in place for selecting panelists, obtaining and exchanging information and reaching a decision within a specified time period.  Depending upon the decision of the panelist, changing, canceling or preserving the registration is the final step in the arbitration of the dispute.”  The rules guiding proper procedure to be followed by panelists are stated in the ICANN Rules for Uniform Domain Name Dispute Resolution Policy located at http://www.icann.org/dndr/udrp/uniform-rules.htm

The Interview

Members of the Institute had a chance to sit down with Professor Katsh and obtain some of his interesting viewpoints regarding the UDRP, here are some selected Q&A’s from the interview:

Q: “Was the site created for the general public or for those doing research?”

A: “The general public, and all who might need the information, however, there is a clear reason for its necessity for people who might currently be engaged in disputes of a similar nature, so that they might have a reference point of information.  There was also no previous central location to find such information, so we all saw the need for it.

Q: “Why did UMass take the initiative to create the database as opposed to waiting for the WIPO or NAF to do it?”

A: “We did it because there was no site for all cases, and there really was a need for such a thing.  A central site never materialized, but there really was no point in not having a central site for access to cases from both forums.”

Q: “Do you think that the standards these cases are determined under are fair, or do they tend to unfairly favor one side of the dispute?”

A: “Well, we can certainly debate about standards of bad faith.  We can also debate about whether correct decisions are being made in consumer complaints against companies.  Studies have shown a very high percentage of rulings in favor of complainants, who generally bring and pay for the dispute settlement.  That percentage is perhaps higher than it should be.  Is this because a standard under the rules is unfair?  It may depend on who you ask and how he or she may view it.”

Q: “Is passive holding, whereby a registrant registers but does not use a domain name, considered bad faith on the part of the holder?”

A: “It’s actually unfortunate that we have that doctrine.  The standard states the elements of registration AND use are to be considered when determining bad faith.  However, there is no actual use of the domain when you have an instance of passive holding, so there often seems to be a conflict between the written standard and actual application of the standard to the facts of the given situation.”

The UDRP-DB project is important to the work of the Institute of Information Law & Policy in that it gives us access to information that shows us that law, like technology, is constantly evolving.  As technology evolves, so must the law to accommodate new situations that may arise throughout such development.  Protection of intellectual property, an element of information law, is essential to promotion of creativity and idea exchange. Such information sharing not only benefits us with exciting new technological developments, but strengthens the law through which we will make our future decisions.    

To read a student attendee's view of the colloquium click here