Internet Domain Dispute Resolution Working, Needs Updates, WIPO Told

One of the features of the multi-faceted United Nations World Intellectual Property Organization is its arbitration and mediation of disputes over internet domain names. At a conference at WIPO today, supporters and lawyers who use the system said it is working but suggested some further improvements and a fear of more new domains being introduced.

At issue is the Uniform Domain Name Dispute Resolution Policy (UDRP), which WIPO administers along with the Internet Corporation for Assigned Names and Numbers (ICANN).

There are now 180 million domain names on the internet and growing, according to Erik Wilbers, director of the WIPO Arbitration and Mediation Centre. WIPO’s centre has administered 16,000 cybersquatting proceedings in its 10 years of existence. Handling domain name disputes, said one speaker, is “not a cottage industry any longer.”

Of the cases WIPO administers, some 84 percent are decided in favour of the complainant, the person or company bringing the challenge. But David Bernstein, partner at Debevoise and Plimpton in New York, told the meeting that of contested cases, the outcome is closer to 50-50.

But some 75 percent of cases in which an owner of a possibly conflicting web address are not being defended. And participants asked whether it should still be necessary to have to file a full case under the UDRP in order to challenge the use of the domain name. A good attempt would still need to be made to contact the respondent, Wilbers said.

Another concern that has arisen is privacy measures such as locks on the Whois information that gives the contact details of the owners of websites. At least one practitioner said he treats the privacy lock providers and the underlying owner as one and the same. Another speaker said ICANN has said some 15-25 percent of domains now use privacy or proxy services.

Free speech issues are particularly knotty, participants said, with no clear consensus on the balance between whether the right to criticise another person or entity extends to domain names or whether it is forbidden. There are cases where legitimate fans of a well-known person or company have been allowed to keep a website for fair use purposes.

Another concern is occasional differences with national-level courts. In addition, WIPO is looking at reducing paper related to disputes and rallied support for its “eUDRP” initiative.

Users such as Caroline Perriard, brand IP counsel for Nestlé, said it is too expensive to challenge the 1000’s of domains the company does not like, and cited a need for faster action against offending sites. She suggested changes such as to: view no responses as showing no interest in keeping the domain, put a mediation step between the cease-and-desist letters and filing a complaint, and address bad faith in registrations.

Wilbers concurred: “Today, trademark owners cannot shoot at everything that moves.”

As an example of the kinds of disputes WIPO is dealing with, on the same day of the conference the following cases were reported by WIPO, all six decided in favour of the complainant: argane.fr (transfer), xenicalweightloss.info (transfer), pandoraeshop.com (transfer), buy-tamiflu-online-without-prescription.info and buytamifluwithoutprescription.info (transfer), chateau-castel.com (transfer), giorgioarmanidesigns.com (transfer).

IP Rightsholder Concerns over New Domains

On the new general top-level domains (TLDs), trademark owners were wary of what might happen to their IP protection once the new names appear on the market.

“We don’t need or want more gTLDs,” said Elizabeth Escobar, vice president and senior counsel of intellectual property at Marriot International. We “view them as an unwanted expense primarily for the benefit of registrars. For us,” she said, the gTLDs are “just an opportunity to spend more dollars on brand enforcement. Then we wind up at the end of the day with a boatload of domains we don’t want but have to pay for to keep them off the market” and out of the hands of cybersquatters.

Frederick Felman of Mark Monitor, a brand protection agency, said there had been an 18 percent increase in cybersquatting between 2007 and 2008, and that his company sent out more cease and desist letters in a day than the UDRP gets in an entire year. He said that if TLDs are expended abuse will have to be searched for in international as well as latin character sets.

But Amadeu Abril, from the CORE Internet Council of Registrars said that the many reasonable TLD propositions were being held hostage by IP rights debates “for no good reason.”

“We can prevent car accidents by having no more cars or licences,” Abril said, but that “may be a bit radical.” A new TLD system can be designed for less conflict, including through good policies and credible enforcement. “Don’t hold hostage all these good proposals because once you had a problem with a cybersquatter,” he concluded.

There was some debate as to whether enough attention was being paid to domain owner perspectives. “We are very focussed here” on the brand-owners side said an audience member so “there’s a reason in the domain community [that] WIPO is seen as biased.” But Escobar countered “domain name registration is so heavily weighted against any trademark protection that this is just a small measure to help us catch up.”

Also discussed was when registries should become responsible for the presence of large-scale cybersquatting.

Green Disputing

Institutional reforms of the dispute settlement system are also being explored, including the elimination of paper.

Technology can help condense timelines, said David Roache-Turner, a lawyer at WIPO’s Arbitration and Mediation Center. Email is a useful technology as it is levelling: “anyone can go and get a public email address” with an inbox large enough to handle documents. In 2009, he said, 62 percent of complaints were filed in complete electronic form, in addition to the hard copies that are currently required.

Social Dispute Settlement?

With the expansion of technology and access to the internet, however, come new challenges that might require new dispute settlement. Social networking sites – such as Facebook or MySpace or Twitter – are subject to fake profiles that can be problematic for those they imitate, said Ursula Widmer of Dr. Widmer & Partners law firm. ICANN’s UDRP is not applicable to user names, she added.

And virtual worlds such as Second Life often see avatars engaging both trademark infringement and copyright infringement, said Antonis Patrikios, a lawyer at Field Fisher Waterhouse, which was one of the first law firms to establish a presence in Second Life. Because of Second Life’s connection to the real world – avatars can order physical items in the digital world and have purchases delivered to their human counterparts in physical space – these can translate to actual trade in counterfeit goods, he said.

There is a “screaming need” for more dispute resolution online, said Colin Rule, director of online dispute resolution for online auction site eBay. This kind of dispute resolution is ultimately “about justice” for users, and has to be affordable enough that regular people can participate. Online community courts are being proposed by eBay to settle arguments between users.

[Update: separately, one draft proposal for a web-based dispute mechanism is
being distributed by technology strategists ArgyStarcom here].