Lessons From a Workshop on Domain Name Dispute Resolution

On Dec. 4 and 5, 2014, trademark practitioners, brand owners and registrars from around the world gathered for the World Intellectual Property Organization Arbitration and Mediation Center's annual WIPO Advanced Workshop on Domain Name Dispute Resolution: Update on Precedent and Practice, at WIPO's headquarters in Geneva. The workshop was at capacity with nearly 100 attendees, all interested in better understanding the latest substantive and procedural issues in domain name decisions. This article highlights some key takeaways for in-house counsel seeking to protect their companies' brands in the changing domain-name space.

Background

WIPO's Arbitration and Mediation Center administers domain name disputes pursuant to the Uniform Domain Name Dispute Resolution Policy, or UDRP, which was adopted by the Internet Corporation for Assigned Names and Numbers, or ICANN, in 1999, as a time- and cost-efficient mechanism for addressing cybersquatting claims worldwide. Cybersquatters register domain names that incorporate third-party trademarks to exploit the trademarks' value. The UDRP has been used to resolve tens of thousands of domain name disputes since it was first launched. The principal remedy available to a successful complainant under the UDRP is the transfer of the disputed domain name from the respondent (the domain name registrant) to the complainant.

The WIPO center offers a number of resources to the public to provide guidance and promote transparency in the UDRP process, including the “WIPO Overview of WIPO Panel Views on Selected UDRP Questions” (now in its second edition) and the “Legal Index of WIPO UDRP Panel Decisions.” Also among these resources is WIPO's annual domain name workshop, which is led by WIPO center senior legal staff and highly experienced UDRP panelists.