ICANN Email Archives: [prelim-report-udrp]

[Cruquenaire Alexandre <a.cruquenaire@xxxxxxxxx>]

Briefly, some of my comments on the Preliminary GNSO Issue report on the 
current state of UDRP.
UDRP has significantly enhanced trademark protection on the internet.
However, some issues remain problematic :
-       Scope of the UDRP : Although 1999 WIPO final report highlighted that 
scope of administrative procedure should be restricted to trademark 
infringements ( "registrations that violate trade names, geographical 
indications or personality rights would not be considered to fall within the 
definition of abusive registration for the purposes of the administrative 
procedure. Those in favor of this form of limitation pointed out that the 
violation of trademarks (and service marks) was the most common form of abuse 
and that the law with respect to trade names, geographical indications and 
personality rights is less evenly harmonized throughout the world, although 
international norms do exist requiring the protection of trade names 
132<http://www.wipo.int/amc/en/processes/process1/report/finalreport.html> and 
geographical indications 
133<http://www.wipo.int/amc/en/processes/process1/report/finalreport.html>" ; 
1999 WIPO Final report, nr.167), most of panelists use the (unregistered) 
"common law trademark" concept to extend the scope of UDRP to other signs. A 
clarification of the Policy is needed to validate this (contra legem) extensive 
case law, since it seems now difficult to come back to a more restrictive 
approach of UDRP Policy scope. Perhaps official ICANN guidelines for 
interpretation would be sufficient thereto, since major actors of UDRP refuse 
to open a discussion on its review.
-       The creation of an internal appeal process should be discussed in order 
to ensure a better implementation of fair trial requirements within UDRP 
procedure. Some "national" DNS authorities implemented that kind of mechanism 
(three experts panel ; additional costs to avoid dilatory appeal).  See, for 
instance, dns.be policy.
-       From fair trial requirements point of view, another sensitive issue was 
the one of the choice of the expert for a single panel decision. Providers rule 
the issue in their internal "Rules" for UDRP. However, a study from Michael 
Geist (University of Ottawa - http://aix1.uottawa.ca/~geist/fairupdate.pdf ) 
pointed out a lack of transparency which could legitimately lead to question 
the effective balance of UDRP process. At least best practices or guidelines to 
providers should be issued by ICANN to ensure a more uniform and transparent 
process of panelist choice.


Alexandre CRUQUENAIRE
Lawyer
Professor University of Namur, Belgium (CRIDS)