Review finds agreement on key issues, recommends further review on others — Independent UDRP

Group finds consensus on tweaks to UDRP.

The World Intellectual Property Organization and the Internet Commerce Association have published an initial note regarding potential changes to the Uniform Domain Name Dispute Resolution Policy (UDRP).

The organizations convened a group of 16 UDRP experts with experience as counsel, as panelists, and as parties to discuss possible changes as part of a review of the UDRP.

The goal is to move along ICANN’s review of UDRP and provide it with a starting point for Phase 2 of its review.

The parties agreed on many points and suggested others for further analysis or consideration.

Unanimous Agreement

The group agreed regarding these items:

• “Loser pays” model: Despite interest, logistical and fairness concerns led to rejection.
• Fee payment deadlines: Add a fixed timeframe for complainants to pay fees in three-member panel cases.
• ICANN compliance role: Reinforce and clarify ICANN’s role in ensuring registrar compliance with UDRP obligations.
• Registrar information and training:
  • Create UDRP FAQ for registrars.
  • Provide optional “UDRP Bootcamp” webinar training.
• Complaint withdrawal procedures: Standardize rules across providers when a complainant seeks to withdraw.
• Clarify registrar verification: Require registrant data to be provided to both parties and the panel when applicable.
• Identify dissenting panelists: Amend rules to mandate naming dissenting panelists in decisions.
• ICANN financial contribution: Consider a modest fee from domain registrations to support UDRP (e.g., education, fee subsidies).
• Educational materials: Develop standardized, plain-language materials for complainants and respondents.
• Mediation: Allow optional voluntary mediation, but don’t require mediation.
• Laches/statute of limitations: Do not impose a statute of limitations, but perhaps codify that a delay in filing can be considered by the panel.
• UDRP scope: Maintain limitation to trademark-based disputes; no expansion to copyrights, et al.
• Name redaction: Panels by now have discretion; share and publish best practices rather than change rules.
• Registrar notice to respondents: Make registrar notifications mandatory alongside provider notices.

Further Consideration Needed

The group was unable to reach consensus and believed that further study was needed for a number of issues.

• Appeals: While there is some support for an appeals process, details (such as scope, costs, and provider coordination) require further development.
• Changing “and” to “or” (bad faith requirement): Consider allowing action for good-faith registration followed by bad-faith use, but only in limited scenarios (e.g., ex-employees or licensees).
• Supplemental filings: Explore codifying limits and standards to prevent abuse or unnecessary delay.
• Expedited/summary procedures: Explore options like default suspension in certain circumstances.
• True cancellation: Consider a permanent cancellation option (not just deletion) with safeguards for good-faith third parties.
• Panelist appointment and quality: Discuss rotation, performance oversight, education, and conflict rules.
• Codification of case law: Consider pan-provider codification similar to the WIPO Overview.
• Free speech: No language change recommended, but further discussion suggested to ensure consistent panel application.

There are a lot more details to each of these, which can be found in the full note.