Due Process in Adjudication of Domain Names and Trademarks: Why the UDRP Procedure Has to Change

Domain names are easy-to-remember alphanumeric codes, such as www.amnesty.org. Domain names can lead to disputes, especially when they are perceived as insulting or, allegedly, infringing trademarks (think applesucks.com or phillipmorriscigaretteskill.com). To handle such disputes between domain name registrants and trademark owners, the Internet Corporation for Assigned Names and Numbers (ICANN) developed the Uniform Domain Names Disputes Resolution Policy (UDRP) in 1998. All registrants must submit to this policy upon registration of a domain name. The first comprehensive review of the UDRP is to start in April 2020, and it is important to understand what is at stake, so that we have a sense of direction how the UDRP should be reformed.

Procedurally, the UDRP provides a streamlined administrative method that is intended to be much faster and cheaper than traditional litigation. However, certain human rights, such as due process, are ingrained in the procedure itself. In my recent paper I chart the international human rights implications of the procedural aspects of the UDRP, and point to numerous due process concerns regarding the deprivation of property rights, which are recognized in international and regional human rights instruments, such as the UDHR, ICCPR or ECHR. While ICANN, as a private actor, is not directly bound by these treaties, it has recently committed itself to a ‘Core Value’ of respecting ‘internationally recognized human rights’ in its newly updated Bylaws as part of transitioning from US control to an independent body. 

The first procedural issue from the human rights perspective is lack of choice-of-law rules for the adjudication process in the UDRP which gives panelists discretion to apply ‘any rules and principles of law that [they] deem applicable’. This could lead to a choice of laws that favour to trademark holders who are paying the panelists’ fee, and resulted in the application of different legal standards based on the nationality of the respondents and/or members of the panels—arguably, straining principles of equality and non-discrimination under human rights law. It has also resulted in situations where two opposing decisions are ‘correct’ at the same time. For example, Julia Roberts was granted rights to the website juliaroberts.com and Hillary Clinton has rights to hillaryclinton.com, while Bruce Springsteen was denied rights to the brucespringsteen.com. This undermines the fairness, consistency, and predictability of the UDRP.

Moreover, rules on accreditation and appointment of the UDRP panellists lack transparency, and lead to ‘revolving door’ of UDRP panellists: trademark lawyers often serve as lawyers for their clients one day and as UDRP panellists the next day. Lack of due process safeguards in the UDRP procedure is a further strain—eg notice about UDRP proceedings is considered effective from the time the complaint was sent to the respondent by e-mail, rather than the date the respondent actually received notice (that is, opened the e-mail). Respondents then have twenty days to respond from the date the service provider sends the notice, which results in a large amounts of ‘default’ decisions made when the respondent fails to reply. Most importantly, the UDRP suffers from lack of an opportunity to appeal panels’ decisions. All these issues suggest that the UDRP may fall well short in respecting ‘internationally recognized human rights’ to property, due process, equality before the law, and non-discrimination, as well as a right to an effective remedy. 

Clearly, then, there is significant room for improvement of the UDRP policy when it comes to respect for human rights. I propose several concrete ways to address the problematic procedural aspects of the UDRP from an international human rights perspective in the upcoming reform of the UDRP which starts in 2020. I argue that the reformed policy should: (1) introduce a clear choice-of law clause in the UDRP; (2) develop uniform ‘Supplemental Rules’ at ICANN level to increase uniformity and consistency of the UDRP system; (3) introduce a requirement to disclose and publish all UDRP decisions and statistics; (4) develop uniform standards for accreditation and selection of panelists; (5) require disclosure of conflicts of interest by panelists and Dispute Resolution Providers; (6) introduce regular comprehensive UDRP reviews; (7) reform the rules around communication, and the effectiveness of notice in particular; (8) establish an appeal procedure; and (9) explicitly acknowledge access to courts.

These procedural reforms alone must also be accompanied by substantive policy reform  (which I address separately in another paper) for ICANN to fulfil its new aspirations to respect ‘internationally recognized human rights’. By setting up the UDRP, ICANN itself has set the parameters for the balancing exercises affecting fundamental human rights. It is thus crucial that it is itself bound by the self-imposed commitments to respect ‘internationally recognized human rights’, and the UDRP reform presents an unmissable opportunity for ICANN to prove that its declares commitments are not a mere lipstick service, but aim to ensure that human rights are respected in the digital age.

Monika Zalnieriute is Research Fellow and Lead of the Technologies and Rule of Law Research Stream at the Allens Hub for Technology, Law & Innovation, Faculty of Law, UNSW Sydney, Australia.