Capítulo III. Marco teórico
7. El proceso de la innovación organizacional
The text of the UDRP is acceptable. It is reasonable. Moreover, it has also proven effective in reducing the abusive registration of domain names on the Internet.
Unfortunately, as mentioned, disputes brought for resolution under the UDRP are wide and varied. The policy cannot be applied to every dispute, yet the people who use the UDRP, especially the panellists, attempt to extend it to apply to every type of dispute.
This misapplication makes decisions under the UDRP inconsistent.
One may argue that a decision is made according to each dispute’s surrounding background and an opinion of a panel.78 This argument has merit, but if there is a strong framework for users of the UDRP to follow then decisions may be more consistent in the future.
a. Many terms applied to the UDRP
The UDRP is an open-ended policy because it provides much room for interpretation whilst also stating its limitations. For example, its texts specifically mandate that the
76 Froomkin, 'ICANN’S “Uniform Dispute Resolution Policy”— Causes and (partial) Cures' at 609
77 National Research Council of the National Academies, Signposts in Cyberspace: the Domain Name System and Internet Navigation (The National Academies Press, Washington D.C. 2006) at 12
78 David Tatham Domain Name Dispute Resolution 2006 4
UDRP is only for use with trade marks or service marks in which a complainant has rights; however, some panels still apply it to all types of terms, including geographical indications, personal names, trade names, nicknames, country names and royal names.
Such applications by panels are wrong as they cause people to mistakenly believe that disputes over all sorts of terms can be resolved under the UDRP. As Professor Mueller has strongly commented, the UDRP protects unregistered trade marks and personal names as strongly as registered trade marks; and this misuse, attempting to extend the scope of the UDRP, in fact obstructed its efficiency and fairness.79 Therefore, there should be a standard and pattern for panelists to follow regarding this issue.
b. The UDRP has no explanation for “identical or confusingly similar” and the current interpretation by some panellists is wrong and inconsistent
In paragraph 4(a)(i), the UDRP establishes a standard applicable to the complaint, namely that before initiating any dispute resolution, a complainant has to demonstrate that the domain name in question is identical or confusingly similar to a trade mark or service mark in which the complainant has rights. However, there is no definition or circumstances provided for either the terms “identical” or “confusingly similar” –in neither the policies nor in the Rules. There is also no explanation as to what extent a panel should refer to a “right” in its decision. As a consequence, some panels use their discretion to recognise new circumstances constituting an identical or confusingly similar domain name in which a complainant has rights. UDRP decisions are quoted and applied to the case simply to make their reasoning believable.
To rely on the pure discretion of one or three persons, as applied to different situations, is inconsistent and unreliable. From past decisions, many panels interpreted the term,
“especially confusingly similar” in different and odd ways. They over-extended the term just to accept a complaint.80 As a result, those decisions are bizarre and some of them are still controversial among scholars.81 In conclusion, at least, the term identical or
79 Mueller, 'Success by Default: A New Profile of Domain Name Trademark Disputes under ICANN’s UDRP ' iii
80 This is because a procedure under the UDRP will be continued only if a disputed domain name is identical or confusingly similar to a mark in which the complainant has rights.
81 See Peter Chan, 'the Uniform Domain Name Dispute Resolution Policy as an Alternative to Litigation'9 (2) Murdoch University Electronic Journal of Law ; and Mueller, 'Rough Justice: An Analysis of
ICANN’s Uniform Dispute Resolution Policy'.
confusingly similar should be defined or given limitats, either in the Rules or the Policies.
c. The language “In particular but without limitation” in paragraph 4(b) and (c) of the UDRP is unnecessarily broad
Professor Mueller has commented that the UDRP’s criteria for solving domain name disputes are robust and fair only if they are applied properly.82 This seems accurate, especially when some panels were found to over-expand the context of paragraphs 4(b) and (c) of the UDRP, regarding the policies surrounding circumstances of bad faith and the legitimate interests of a respondent. These paragraphs have been criticised as loopholes for a panel to extend the definitions of both bad faith registration and legitimate interests, making them broader than they should be. These policies give a panel an opportunity to use its discretion to recognise new circumstances constituting bad faith and legitimate interests, specifically under the term in particular, but without limitation.
Unfortunately, a panel’s power to determine what facts indicate bad faith or legitimate interests is unrestrained. For example, the phrase “in particular, but without limitation”
was wrongly applied by some panels. In legal-and-general.com, there was an attempt to apply a bad faith policy in the situation where a respondent reflects a complainant’s main trading name, which was very generic.83 Finally, these broad policies will ultimately foster inconsistent decisions.
d. Precedent decision is acceptable?
The UDRP follows no precedent, not national laws or international agreements.
Although it follows the general pattern of normal arbitration, it differs specifically in that the UDRP is binding only on a registrar and it does not foreclose the possibility of
82 Mueller, 'Rough Justice: An Analysis of ICANN’s Uniform Dispute Resolution Policy' 26
83 It was a dispute for legal-and-general.com. The complainant was a financial service company which had registered a number of “legal and general” domain names such as legalandgeneral.com and legal-general.com. The respondent was a private person who simply thought up a domain name and registered it. I think that it would be wrong if the UDRP restricted the creativity of domain name registrants in order to register some generic words or that it should endorse the monopolisation in words of a trade mark owner. Nevertheless, in one instance, where there was no indication of bad faith as enumerated in section 4(b), the panel concluded that the domain name itself was misleading and could not be made to believe that the website was a genuine complaint site. These reasons were already strange in themselves. See Legal & General Group Plc v. Image Plus' (2002) WIPO Arbitration and Mediation Center
<http://www.wipo.int/amc/en/domains/decisions/html/2002/d2002-1019.html> (20/9/2006)
submitting the dispute to a national court. As a consequence, the UDRP has its own method of making a decision.
If the UDRP is not a national law, neither common nor civil, why do almost all UDRP decisions refer to former decisions like a court decision from a common law country?
An arbitrator may come from a common law system but that is not a good reason.
Decisions are always quoted as precedent, and the most recited are WIPO panel decisions D2000-0210 and D2000-0235, regarding personal names.84 In addition, citing former decisions as precedent is not normal in arbitration decisions either. This peculiar way of writing decisions may be a hybrid between the common law system and online dispute resolution. Nonetheless, this precedent issue needs answering, specifically, whether UDRP decisions should continue citing precedent decisions or not.