Sunday, June 2, 2013

ICANN Lets Trademark Owners Choose Their UDRP Rules

By Zak Muscovitch.

As a trademark owner you have a great opportunity to take advantage of ICANN's lackadaisical domain name dispute resolution system. Trademark owners are currently free to select one of four ICANN-accredited UDRP domain name dispute resolution providers and each of these arbitration services has their own brand of justice. Selecting your brand of justice can give you the edge that you need to win a UDRP proceeding.

UDRP dispute resolution providers such as the NAF and WIPO have adopted their own "supplementary rules" and these  supplementary rule sets can really affect how cases are run in some important ways. The authority for UDRP dispute resolution providers to enact their own supplementary rules can be found in ICANN's own principal rule set:

"Supplemental Rules means the rules adopted by the Provider administering a proceeding to supplement these Rules. Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, file size and format modalities, the means for communicating with the Provider and the Panel, and the form of cover sheets."

Although the above-cited ICANN provision apparently restricts the scope of any supplementary rules, since ICANN hasn't enacted any standards for UDRP dispute resolution providers, each has been largely free to create their own rule sets. Accordingly, knowing which UDRP provider offers trademark owners an edge in terms of their respective supplementary rules, can be an important consideration when attempting to use the UDRP to recover a domain name from a cybersquatter, or at least someone who has a domain name that you want for yourself.

Below are some of the supplementary rule provisions that trademark owners can take advantage of in order to get a leg up in legal proceedings:

1. NAF Often Gives Respondents Up to 10% More Time to Respond

Normally a UDRP Response must be filed within 20 days of the commencement of the proceeding. But under NAF's Supplementary Rules, if the due date falls on a Saturday, Sunday, or US federal holiday, then the Respondent will get an automatic extension of time to until the next regular day. This means that by selecting the NAF, you may be unwittingly providing a domain name owner Respondent with an extra 2 days or more, which is a 10% bonus for the Respondent. With such a tight timeline for a Response in the first place, an extra 10% time bonus is a lot, and therefore selecting WIPO over NAF is a good idea if you want to deprive the Respondent of this additional time to respond.

On the other hand, there is nothing quite as surprising to a US-based respondent, as when he tries to file his Response with WIPO on the due date, only to find out that since WIPO is in Geneva, Switzerland, the due date has already passed due to Geneva being 6 - 9 hours ahead. Accordingly, don't write off WIPO just because NAF gives Respondent's a couple extra days on occasion, since the time difference in Geneva can sometimes catch a domain name owner flat-footed.

2. WIPO Rules Don't Let You File an Additional Submission

When it comes to ensuring that the Panel gets to read every last argument and document that you would like to submit, NAF has WIPO beat. The NAF has a supplementary rule that allows a trademark owner to submit not just one filing, but two. Even though the UDRP is supposed to consist of only a Complaint and a Response unless the Panel makes an Order that a party provide further material, NAF has come up with an excellent rule for Complainants since they openly invite "Additional Submissions" for the low cost of $400. This allows you to read the Response and then file a rebuttal that includes everything that you may have forgotten to include in your initial Complaint, and also allows you to respond to all the arguments and documents submitted by the Respondent. 

Don't be surprised however if you get a Panel that doesn't agree to consider your Additional Submission, as some Panelists feel that even though the NAF has enacted these supplemental rules, that the Panel doesn't have to, and should not, consider any such additional submissions except in exceptional circumstances. In fact, NAF provides a short warning regarding this, as it tells you on its website that it is really up to the Panel to decide whether to consider your additional submission, even if you have already paid the $400.00. Accordingly, a clever trademark owner will bring its complaint to the NAF so that it at least has a shot of getting in a second submission. $400 is a small price to pay to get this amazing second submission opportunity, especially since nobody knows when ICANN will close this loophole.

On the other hand, some WIPO Panels will let you file an additional submission for little or no reason at all, even without special rules like NAF. Accordingly, by taking a chance and submitting an additional submission to WIPO, you can get lucky and have it admitted since ICANN has not come out against these unwritten practices.

3. NAF Makes it Easier for Respondents to Put Up a Fight

When shopping for the best domain name dispute resolution forum to use, it pays to shop around. Although NAF offers a better deal than WIPO  at $1,300 compared to WIPO's $1,500, for filing a UDRP Complaint, if the Respondent decides to fight back with demanding a three-person panel, WIPO gives Complainants the financial edge. WIPO charges $2,000 to a Respondent for the privilege of demanding a three-person Panel, which is $700 more than NAF charges. Accordingly, by selecting WIPO for your Complaint, you can put the financial pressure on a Respondent since he or she will have to cough up an additional $700.

Sure, it will cost you $2,000 as well if you are a Complainant and the Respondent has demanded the three-person Panel, but as a trademark owner who has decided when to bring such a legal proceeding at a time of your own choosing, you will have greater resources and planning behind you, whereas the domain name owner will be usually have a much tougher time coming up with the money on short notice.

On the other hand, as a Complainant, NAF's fee structure is at least static at $1,300, since at WIPO you get charged an additional $500 (to your original $1500) in the event that a Respondent decides to require a three-member Panel.


2 comments:

Nat Cohen said...

Zak,

Thanks for a clear - and entertaining explanation of how supplemental rules that are intended simply to implement the UDRP can influence the outcome of a UDRP dispute and are themselves sources of bias.

Nice work on highlighting this issue.

Nat

Zak Muscovitch said...

Thanks so much for reading and for your comments, Nat! It is your fault that I became interested in these issues! ;)