17 July, 2017
The World Intellectual Property Organization (WIPO) has recently updated its WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the previous edition of which (WIPO Overview 2.0) was published in 2011.
The WIPO Overview is a collection of Uniform Domain Name Dispute Resolution Policy (UDRP) jurisprudence summarising consensus panel views on a range of common and important substantive and procedural issues. To this end, the overview is broken down into an accessible question and answer format, making it easier for domain name and trade mark lawyers and other professionals to find what they are looking for.
Since its inception, the WIPO Overview has provided important insights that allow filing parties to reasonably anticipate the result of their cases.
In order to reflect a range of developments, notably the arrival of new generic Top Level Domains (gTLDs) and the development of internationalised domain names (IDNs), the WIPO Overview 3.0 now includes express references to almost 1,000 representative decisions (formerly 380) made by over 265 (formerly 180) WIPO panellists and classified under 64 different issues (formerly 46). With such a significant update, WIPO has been able to shed more light on each of three UDRP elements, particularly the second one regarding rights or legitimate interests in a domain name, and address, for the first time, some new procedural issues, such as the ICANN-created Uniform Rapid Suspension System (URS) for new gTLDs. In terms of wording, the new edition appears to be more succinct and less academic to the extent that WIPO no longer makes a clear distinction
between different panel views as it did in the previous version.
One of the major updates in the WIPO Overview 3.0 focuses on the relevance of a TLD in the assessment of the three UDRP elements. While the practice of disregarding the TLD in determining identity or confusing similarity (first UDRP element) is applied irrespective of the particular TLD (including with regard to new gTLDs), the meaning of certain new TLDs (e.g. .CLOTHING, .COFFEE and .VODKA) may now be relevant to the assessment of the second (rights and legitimate interests in a domain name) and third (registration and use in bad faith) elements. For example, the selection of the TLD .EDUCATION for the registration of the domain name <cordonbleu.education> led to a finding that the respondent obtained the domain name to take advantage of the complainant’s CORDON BLEU mark as education was known to be the complainant’s core business. The respondent was therefore considered to be acting in bad faith.
Similarly, the development of IDNs is also reflected in this edition to the extent that, when illustrating certain issues, WIPO does not hesitate to refer to IDN examples. For instance, when illustrating “sucks cases” (a domain name consisting of a trademark and a negative or pejorative term), WIPO also considers the variant of “sucks” in different languages, such as <[trademark]구려.com> (Korean) and <[trademark]吸.com> (Chinese).
Another welcome update in the new edition is WIPO’s new guidelines on the second UDRP element. In the previous version, the issues centering on the second element were quite limited, which could lead to practical difficulties for filing parties, notably with regard to the burden of proof under UDRP paragraph 4(c). In fact, paragraph 4(c) enumerates three key scenarios in which a respondent may demonstrate its rights or legitimate interests in a domain name, i.e. prior use or demonstrable preparations to use the domain name in connection with a bona fide offering of goods and services, being commonly known by such domain name and legitimate fair use of the domain name. However, no insight was provided in the previous overview as to what kind of evidence may support a panel’s finding on the above. WIPO has finally filled this vacuum in the Overview 3.0 by providing detailed guidelines in this regard.
For instance, the non-exhaustive examples of prior use or demonstrable preparations to use a domain name may include evidence of due diligence related to a business formation, legal advice/correspondence and evidence of credible investment in website development or promotional materials, such as advertising, letterhead, or business cards. The evidence showing that a respondent is commonly known by the domain name may include a government-issued ID, websites or blogs as well as bills/invoices.
Regarding fair use, WIPO underlines that a respondent’s use of a domain name will not be considered “fair” if it falsely suggests affiliation with a trade mark owner. Such implied affiliation may be established when the domain name is identical to a complainant’s trade mark or consists of a trade mark plus an additional term. Apart from the practical guidelines described above, it is worth noting that WIPO, in the latest version, acknowledges that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP.
Turning to the procedural aspects of the UDRP, WIPO’s role in decision implementation has been addressed for the first time. According to the Overview 3.0, WIPO’s role concerns the administration of the procedure and normally ends upon notification of a panel decision to the parties and registrar. However, in the event that a complainant may be experiencing difficulty in the implementation of a panel decision (e.g. the registrar fails to transfer the domain name), such implementation may be raised with WIPO.
WIPO further clarifies the relationship of the UDRP to the URS in the new edition, specifying that there is no explicit prohibition against the filing of a UDRP during or after a URS case involving the same domain name. This approach is understandable on the grounds that the URS, as opposed to the UDRP which operates on an “on-balance” standard, requires “clear and convincing evidence” and provides for temporary domain name suspension (instead of transfer, as under the UDRP) as the remedy. As a result, URS determinations rarely provide insight into the particular legal reasoning applied and should not have binding force upon the UDRP panel.
The WIPO Jurisprudential Overview 3.0 is available here.
