Friday, November 1, 2013

Report From Geneva on WIPO UDRP Conference

By Zak Muscovitch.

I just returned from a remarkable two days in Geneva, where I attended WIPO's advanced workshop on UDRP disputes. In attendance were numerous WIPO mediators and trademark attorneys. Paul Keating, Nat Cohen, John Berryhill, and Mari Jo Keukelaar, were also in attendance. The WIPO's UDRP program is run by Erik Wilbers, who is a real gentleman, and tremendous asset to WIPO.

Leading the workshop were two distinguished and very experienced domain name dispute arbitrators and trademark lawyers, David Bernstein and Tony Willoughby. Both Mr. Bernstein and Mr. Willoughby did a fabulous job in leading the workshop and no doubt use their deep experience as complainants' lawyers to assist them in their duties as panelists. I had the pleasure (and thrill, after so many years of handling UDRP's) of meeting both, as well as Alan Limbury from Australia, Richard Lyon from Montana, USA, and Bill Towns from Houston, US, Luca Barbero from Turin, Italy, and Andrew Lothian from Scotland, who were all extremely bright, extremely knowledgeable, and a pleasure to meet.

The big issue that I saw, was an apparent substantial divergence of views amongst WIPO panelists on two issues. The first issue is whether Paragraph 2 of the UDRP applies to UDRP disputes, and whether it acts so as to essentially obliterate the requirement of both bad faith registration AND bad faith use. The consensus seemed to be that this approach should not be applied.

Nevertheless, it was the second issue that appeared to be just as, or even more problematic. Some panelists seem to think that a renewal of a domain name amounts to a registration, and as such, can find bad faith registration even when the domain name was registered in good faith to begin with. This approach would let panelists get around the first aforementioned issue in most cases, since most disputed domain names have been renewed at some point.

The other take away from this workshop, is that for those domain name registrants that think opening up the UDRP for improvement is a good idea, they should seriously reconsider. If the UDRP was opened up, it would likely be subjected to major changes that would not be in their favour. For example, the UDRP would likely be amended to require either bad faith use OR bad faith registration, and not both.


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