The Uniform Domain Name Dispute Resolution Policy (“UDRP”), now in operation for 16 years, has stood the test of time. It has proved to be a fast, reliable and cost-effective means of controlling cybersquatting and an effective alternative dispute resolution mechanism. However, there comes a time when even the most successful policies come up for review and that time has now arrived. While the Internet Corporation for Assigned Names and Numbers (“ICANN”) anticipated such a review in 2011, the review was postponed until the rights protection mechanisms for the new generic top-level domain (gTLD) programme being rolled out at that time were established. It is therefore crucial that all members of the trademark and domain name communities take an active interest in the current review process in order to ensure that the integrity of the UDRP is not undermined.
Scope of ICANN’s Review
The UDRP is to be reviewed in the overall context of a broader review of all rights protection mechanisms. The process, including the implementation (meeting or otherwise) of the working group’s report by ICANN, is likely to take several years. The agreed mandate is to review in the first instance the new generic top-level domain programme rights protection mechanisms and then review the UDRP. Notwithstanding the considerable debate about the correct approach, ultimately it was agreed that this staged approach was preferable provided that there was an appropriate link between the two parts so that the review of the UDRP would not be undertaken in a vacuum. The meeting of the working group was on 21 April 2016.
Form of ICANN’s Review
The working group currently involves more than 100 volunteers from the ICANN community. It is likely that there will be three co-chairs representing different stakeholders. Work on different topics will be undertaken in a series of sub-groups, with ongoing interim reports being made to the ICANN community at the three ICANN meetings held each year.
Issues to be Considered by the Working Group
This is to be a substantive review of the domain name rights protection mechanisms and all aspects are potentially under review. It is expected that another rights protection mechanism, the Uniform Rapid Suspension System - which has not, in practice, been a success - will be examined in detail. As far as the UDRP is concerned, there have been suggestions that everything from the requirement for trademark rights in the first limb of the test to the conjunctive element in the third limb and procedural matters (eg, the selection of panellists) is up for review. Although nothing has been decided, there is the potential for the working group’s review to be wide ranging. Consequently, there is a risk that the “bottom-up consensus” approach at ICANN could ultimately result in a far-reaching change of a policy that has to date served exceptionally well. It is therefore crucial that interested parties monitor progress and make their views known. In a reversal of the well-known adage, this is a case in which acting at leisure is very likely to result in repenting in haste.
A longer version of this article first appeared on WTR Daily, part of World Trademark Review, in May 2016.
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