UDRP milestone points to fresh challenges

A revision of the global scheme for settling domain name disputes must account for the growth and mounting complexity of the domain name system (DNS) and friction with other IP Rights, Dr Francis Gurry has warned. Speaking this week to mark the 10th anniversary of the Uniform Domain Name Dispute Resolution Policy (UDRP), the director of the World Intellectual Property Organisation (WIPO) said that addressing these challenges is vital for the scheme's future success.

'The UDRP is not a static instrument,' he argued. 'It has to be a dynamic instrument.' Even so, he said, a planned expansion of the DNS is posing 'a great many challenges' to the scheme's integrity. These challenges were compounded by 'other sorts of IP Rights – other real-world identifiers – that come into conflict with internet domain names'.

Major international events, said Gurry, provided regular examples of this – such as the difficulties that Jamaica encountered following its success in the 2008 Olympics. 'When the Jamaican authorities went to the DNS to reserve some appropriate names, they found that many uses of Jamaica associated with athletics had been taken by, quote, “unauthorised parties”.' The Jamaican government, he added, 'has presented [to WIPO] a proposal to secure some form of legal protection for country names, which is a subject that we have visited in the past. So the clash between other identifiers and domain names remains very much on the agenda.'

In Gurry's view, the UDRP's revision poses major questions all by itself. 'As I said, it is a dynamic instrument. So what is the process for revising it? Do we go through the ICANN machinery? Should we be looking to an international organisation like WIPO – which is responsible for the formulation of IP policy internationally – to provide the intellectual input and the policy input for the revision of the UDRP? And if so, how do the results of any WIPO process get fed into the ICANN machinery? This is a major challenge for us in the future.'

Gurry stressed that changes to ICANN's domain categories were making for an 'increasingly complex' DNS. 'The UDRP was a simple answer to a reasonably simple problem,' he said. 'In the process of revising the UDRP, I think it will be very, very important to ensure that we maintain its integrity as a simple answer that is comprehensible to the ordinary person in the street. It should not become a very complex and overly legalistic answer to what is, in essence, a relatively straightforward problem.'

The challenges facing the UDRP – and what effect they will have on end-users seeking resolution – have raised questions among IP experts. Dominic Speller, domains manager at leading IP and legal services outsourcing company CPA Global, told IP Review Online: 'Any update to the UDRP should, indeed, include provision for the protection of unregistered rights. However, to preordain how this multitude of rights would be proved, validated and held in comparison would be a daunting task. The simplicity of the UDRP has enabled complainants' costs to remain low. So any changes to include processes around rights other than registered trademarks would have to be implemented in a way that will ensure the cost of filing a complaint is not prohibitive for small businesses or non-profit organisations.'

Despite these factors, Gurry is upbeat about the UDRP's first decade and the legal framework it has created. 'It has been a very successful experiment,' he said. 'We [have completed] well over 10,000 UDRP conventional disputes at WIPO. Why has it been successful? It was a good solution to a real, pressing problem that has led to a predictable system of law. Our domain panelists have really made a contribution to international public service.'