Tuesday, July 28, 2009

Sutherland Institute v. Continuative: Is it time to take the U out of UDRP?

OUT-LAW has a good report of the WIPO panel decision in Sutherland Institute v. Continuative LLC - a decision which by focusing on the location of the parties makes me wonder whether it's misleading to describe the UDRP as a "Uniform" Dispute Resolution Policy.

On the face of it this was a relatively straightforward case. The complainant was a right wing Utah think thank hosted at SutherlandInstitute.org while the respondent set up a parody site at SutherlandInstitute.com. A screengrab of a portion of both pages shows the difference:

Despite the fact that the respondent did not defend the proceedings, the panelist found in their favour, holding that it had not been established that they had registered and used the domain "in bad faith" as required by the UDRP. This isn't of itself a surprising outcome, but it's the reasoning underpinning this conclusion which I find interesting. The key passage is this:
Because this proceeding involves political speech that is strongly protected under the U.S. Constitution, the Panel will not in these proceedings involving two U.S. parties attempt to identify bad faith elements that are not specifically enumerated in the Policy. If the right of political speech is to be interfered with based upon Complainant’s service mark incorporated in Respondent’s disputed domain name, it is preferable that a federal or state court make that application of the concept of “bad faith”.
This passage relies on the fact that the parties are both US based to apply US law. As such it takes advantage of rule 15(a) of the UDRP which gives a panel a remarkably wide discretion to decide claims based on "any rules and principles of law that it deems applicable". This has often been used by panelists to apply domestic rules of law where the parties are both from the same jurisdiction - to the extent that the Berkman Center's excellent Analysis of UDRP Issues assumes this to be the norm. Indeed, this practice is supported by paragraph 176 of the WIPO Final Report which led up to the adoption of the UDRP, which states:
In applying the definition of abusive registration given above in the administrative procedure, the panel of decision-makers appointed in the procedure shall, to the extent necessary, make reference to the law or rules of law that it determines to be applicable in view of the circumstances of the case. Thus, for example, if the parties to the procedure were resident in one country, the domain name was registered through a registrar in that country and the evidence of the bad faith registration and use of the domain name related to activity in the same country, it would be appropriate for the decision-maker to refer to the law of the country concerned in applying the definition.
Against this, however, is a strong body of opinion which argues that national law should not be imported into the UDRP - that to do so will lead to a lack of uniformity and to inconsistent outcomes. For example, in McMullan Bros & Maxol v. Web Names, the panelist ruled that:
5.10 Paragraph 15(a) of the Rules requires a Panel to make its decision "in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable." This might justify applying the without prejudice doctrine in this case, but the Panel is unconvinced. The Policy provides an international procedure for international application by a panel comprising panelists who may come from a jurisdiction unconnected with either party. To import a national rule simply because both parties come from the same jurisdiction may result in similar cases being decided in a different manner dependant upon geographical accident. This is a conclusion that this Panel finds inherently unattractive. At times resort to national law may be unavoidable (for example when determining the existence of a trademark recognised by the Policy), but the Panel sees no reason for doing so in this case.
Similarly Wotherspoon & Cameron argue that:
The UDRP was developed by reference to the status of national laws and international treaties. In our view, it already reflects a somewhat harmonized version of these laws. The practice of referring to territorial laws undermines a central purpose of the UDRP — to provide a uniform mechanism for resolution of domain name disputes in the face of the borderless nature of the Internet. By continuing to refer to national laws, Panels will reinforce jurisdiction specific intellectual property rights and undermine the goal of a global uniformity in resolving domain name disputes.
This clash of views highlights an unresolved tension within the UDRP as to how to deal with choice of law issues. There is an obvious attraction in the use of national law where a matter is very closely connected with one jurisdiction. But doing so - even if permitted by the UDRP - does run the risk of eroding its "uniform" nature. Also, this growing practice adds an extra layer of complexity to UDRP proceedings - forcing parties to address choice of law issues as well as the substance of any claim - and may also result in registrants and trademark holders gaming the system by choosing to establish themselves in the jurisdictions which they see as most friendly to their side.

Gerald Levine has more, including an interesting discussion of an alternative choice of law approach under the UDRP.

1 comment:

  1. On the flipside of this, in an Irish domain name challenge around 10 years ago involving a Dublin law firm, the plaintiff firm reportedly pleaded that, as they had trademarked their name, they would suceed in an NSI rules challenge (the rules preceded the UDRP). It was a fair argument but it was said that this strengthened their position before the court. (Quinn, “Bertie Ahern.com and LK Shields: the Beginning of Cyber Squatting Jurisprudence in Ireland?” (2000) 1(1) Technology and Entertainment Law Journal 17.)

    One wonders how deeply an Irish court might look into such an argument or whether WIPO decisions would be put forward anymore. In light of the diversity highlighted in your post, one would hope that an Irish court would not unquestioningly rely on UDRP decisions in this day and age.