As Uniform Domain-Name Dispute-Resolution Policy (“UDRP” or the “Policy”) has matured in its almost 25 years of life, jurisdiction objections are rarely raised by respondents.
Nevertheless, a recent UDRP case at WIPO reminded of jurisdiction defence raised by respondents mainly in early 2000s, during the childhood era of UDRP: in a dispute concerning the domain name <aquapark.io>, the respondent claimed that the proceeding falls outside the competence of the panel as the proceeding has “at its core a dispute about copyrights to the Complainant’s computer program and the computer program of the Respondent [..]”.
I will briefly discuss in this post first how consent is formed in administrative domain name disputes and second the jurisdiction ratione materiae in such cases.
Consent to administrative proceedings in domain name disputes
Where does the consent come from?
As with arbitration, consent is the cornerstone of administrative proceedings for domain name disputes (which are a quasi-arbitration), and it resides in a contract.
The difference from arbitration is that in case of domain name disputes it is not a contract between the parties to the dispute. Rather, in the case of UDRP, there is a set of contractual relations that binds together the participants in the domain name system.
A first contract is the contract between ICANN – which accredits registrars to accept registrations of domain names – and the registrars. The terms of such contractual accreditation require the registrars to respect the decisions of panels under the UDRP and to require persons who apply to them for domain name registrations to also comply with the UDRP.
A second contract is between registrars and applicants for domain name registrations. The UDRP is incorporated by reference into the registration agreement entered between each domain name holder and the registrar.
By means of such registration agreement, any domain name holder (for all gTLDs and some ccTLDs), must defer to a mandatory administrative proceeding dealing with claims of cybersquatting. Therefore, from the outset, the registrant accepts that in case a third party, whose trademark right was breached by the registration of the domain name, initiates a UDRP proceeding, the registrant will accept to be a party in the proceedings and will be bound to the decision, without access to courts being denied.
Objections to jurisdiction in the first years of UDRP
The objections to jurisdiction were raised on various grounds mainly in the first years of application of the Policy.
As such, in some cases, respondents challenged the jurisdiction of UDRP panels on constitutional grounds, such as that (i) the Policy was enacted in October 1999 and domain names registered prior to that date would not fall under jurisdiction of UDRP panels but for retroactive application of the Policy, contrary to the US Constitution (the UDRP case concerning the domain name <baileysirishcream.com>), or that (ii) the ICANN Policy and the UDRP violate unidentified provisions of the US Constitution or of other states (the UDRP case concerning various domain names including <wallstreetjounral.com>).
In other cases, respondents objected to jurisdiction because of the “illegal nature of the Policy and the ‘contract’ giving rise to the alleged authority of the Policy” (the UDRP case concerning the domain name <internetcontent.com>), or because they were not informed of the existence of such procedure (the UDRP case concerning the domain name <dknyjeans.com>).
In all the above cases, panels have correctly dismissed the objections, as appropriate avenues are in place for review of constitutionality or other claims against the Policy or the registration contract. The jurisdiction of UDRP panels is limited to assessing cybersquatting claims and recourse to courts is not excluded.
Also, on awareness of these proceedings, panels took into account the fact that the registrar confirmed that the Policy is applicable to the relevant domain name and that the respondent must have signed an agreement with the registrar and “such agreements systematically make reference to this administrative procedure”.
In other situations, the objection to jurisdiction was grounded on prior contracts concerning the domain name in dispute, such as distribution agreements, where parties have agreed to subject disputes deriving from those contracts to the other forum that has exclusive jurisdiction (e.g. the UDRP case concerning the domain name <privateusa.com>. The panels have dismissed the objection, as the registration agreement incorporates the Policy.
Respondents have also argued that the dispute resolution clause is not mandatory and that the registration agreement is an adhesion contract and therefore not binding (the UDRP case concerning the domain name <compresseurquebec.com>). The panel held it has jurisdiction to hear the case as the “fact that this is in a standard form or adhesion contract does not in and of itself render such agreement invalid. […] Moreover, these provisions do not exclude the jurisdiction of the domestic Courts or in this case of the Courts of the Respondent’s place of business.”
Objections to jurisdiction in recent years of UDRP
In more recent years the objection to jurisdiction of UDRP panels does not seem to be invoked that often. Even when invoked, it mainly consists of informal emails where respondents invoke the objection but do not seem to substantiate it as in the first years of the UDRP (e.g., UDRP cases concerning the domain name <legomobil.com>, the domain name <ascomindia.com>, or the domain name <enel.website>).
The Panels correctly held in such cases that “the registrar has confirmed that the UDRP applies to this disputed domain name. As such, and as an ICANN accredited provider, the Center has jurisdiction to administer this case.”
Subject matter jurisdiction (ratione materiae)
Given also its mandatory nature, UDRP is limited in scope to cybersquatting cases, namely those cases dealing with cross-border trademark-abusive domain name registration. It is beyond its purview to solve complex litigation between the parties.
UDRP panels do not have jurisdiction to examine competing claims to trademark rights of the respondent. For example, in one UDRP case, concerning the domain name <edumnds.com>, the respondent submitted that the panel lacks jurisdiction to rule on the merits of the complaint because there was no abusive domain name registration, since it had trademark rights. Indeed, while the panel lacks jurisdiction to examine validity of trademarks, they can nevertheless examine “circumstances surrounding the registration and use of the Disputed Domain Name” to determine if such registration confers rights or legitimate interests on the respondent for the purposes of the Policy. A similar decision in the UDRP case concerning the domain name <belovedplayamujeresresort.com> et all.
Similarly, complex factual disputes fall outside the scope of the Policy, such as those deriving from prior business dealings between the parties.
Recent examples include a UDRP case concerning the domain name <bugatti-monaco.com>, where prior agreements between the parties required a substantive factual assessment outside the evidentiary restrictions of UDRP, and also a determination by local courts of law on the effects of such prior agreements, or the UDRP case concerning the domain name <parisonstudio.com>.
A wider trademark dispute between the parties, such as issues concerning registration, infringement, dilution and passing off is also outside the scope of the Policy and are best suited for courts of law. Recent examples include the UDRP case concerning the domain name <svendus.com>, where the respondent was offering some services that were overlapping with the complainant’s services, but under its similar trademark to that of the complainant.
Also, in the UDRP case concerning the domain name <annastaqueriaboston.com> et all, the panel has held that “Complainant’s arguments concerning a lack of legitimate interests and bad faith registration and use of the Domain Names involve determinations of implied contractual terms and trademark infringement issues requiring more evidence than has been presented by the Parties, and which are instead appropriate for the courts where there may be the opportunity to conduct discovery, take oral testimony, and cross-examine witnesses, none of which are available under the Policy”.
Similar situations where complex business and intensively factual disputes are considered to fall outside the scope of the Policy determined the panels to deny the relevant complaints (UDRP disputes concerning e.g. the domain names <olefy.tech>, <olefytech.com>, <greenwealthglobal.com>, <hedo-resort.com>, <sanosil-mena.com>, <benettisaildivision-ss.com>, <boku.money>, <thermomixthailand.com>).
Even if a complaint is denied on the ground that the dispute exceeds the “cybersquatting” scope of the UDRP, the parties still have access to courts of law to properly determine their disputes (WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, Section 4.14.6).
