UDRP and URS for NGOs and IGOs
September 2014
Presented By
National Arbitration Forum
Questions Presented
NAF’s experience with the URS
NAF’s experience (if any) with IGO and INGO filings
Thoughts on whether amending the UDRP and/or
URS will solve:
any jurisdictional problem for IGOs
the need to own a TM for both IGOs and INGOs
NAF’S EXPERIENCE WITH THE
URS
URS Statistics
130 cases
153 domain names
111 cases went to Determination so far
101 Suspensions
16 Denials
1 split
Total doesn’t add up because some cases have more
than one Determination.
Approximately half of the cases had a response
(UDRP is about 30%, generously).
URS Observations
URS replicates much of the UDRP substantively
Adds additional “codification” around complainant’s rights
Adds additional “codification” around respondent’s defenses and
other considerations
Examiners are generally experienced UDRP panelists,
with a few additions to accommodate language needs.
Examiners are relying on UDRP knowledge and
experience and turning to UDRP when there are
questions.
Examiners are serious about clear and convincing
evidence standard.
URS Observations
No findings of abuse or material falsehood to date.
Most Examiner Determinations appear to fall within
the metes and bounds of the policy, are supported
by the case documents, and are tolerably reasoned
(URS permits a “summary determination”).
No overt “Examiner got it wrong” cases yet; a few
grey areas; clearly Examiners are split on
Yoyo.email’s legitimacy/permissibility.
URS Noteworthy Outcomes
In most cases, the cybersquatting was
clear—the brand was well known, and
there was (in UDRP parlance) “no
conceivable good faith use.”
Losses tended to occur because:
• The domain was such that the Examiner
required actual bad faith use, not just “no
conceivable good faith use.” That is to say, the
brand owner brought the dispute too soon.
• Complainant didn’t establish that *it* owned
the mark
NAF’S EXPERIENCE WITH
NGO/IGO FILINGS
Reliance on something other than a TM
(under UDRP)
Parties that have relied on protections other than a TM:
Red Cross (15 cases, 31 domain names—one loss)
• “RedCrossMafia” was not confusingly similar
International Olympic Committee (18 cases, 31 domain names—100%
success rate)
National Rifle Association (2 cases, 4 domain names—100% success
rate)
*American Veterans (AMVETS) (2 cases, 4 domain names—100%
success rate)
*United States Postal Service (14 cases, 49 domains—two losses early
on—100% success since 2001)
*Civic Non-Partisan Association a/k/a the Vancouver Civic Non-Partisan
Association (1 case, 1 domain name, granted)
*Not IGOs nor on the ECOSOC list of INGOs.
NAF’s Observations w/r/t NGO filings
(UDRP)
Complainant’s rights
Most Panels treat UDRP 4(a)(i) as a standing issue,
but don’t require federal registrations.
• Treaties and statutes are accepted
• Common law rights accepted
• Rarely, ITU applications accepted
• Rarely, articles of incorporation or d/b/a’s accepted
Issues of competing rights, innocent registration,
predating, etc are almost always discussed under
Policy para 4(a)(ii) and/or 4(a)(iii).
THOUGHTS ON THE
PROBLEMS TO BE SOLVED
Jurisdictional Problems for IGOs
All gTLD registration agreements specify a
jurisdiction; UDRP/URS mutual jurisdiction just
echoes that.
Providers do a check for mutual jurisdiction election.
Amending Policies to say IGOs/NGOs do not need
to comply would mean that every time a party
wanted the jurisdiction waiver, the case would need
to be reviewed by legal counsel.
Does not increase efficiency or case processing
accuracy.
URS automates the check.
Necessity of NGO’s to own a TM
As shown, there are many bases by which a party
can obtain rights, including statutory or by treaty.
URS codifies the UDRP practice
Questions that come to my mind:
Are NGOs concerned about absolute control over all
acronyms (acronym cases are frequently denied)
Are all NGOs created equal (such that Panelists can
be trained/provided with lists, etc)
Final Thoughts on a New Policy v.
Amending the UDRP
Amendments will cause significant hassle
Most parties aren’t sophisticated enough to figure out
when exceptions apply to them.
Panelist training on a broad scale for “incidental”
occurences is prohibitive
Providers manage many UDRP-like Policies and
one more is no big deal.
Parties and Panelists are already in an “alternate
flow” identified for potential issues.