The study focused on the following Top Level Domains: all legacy generic Top Level Domains (gTLDs) as well as new gTLDs (all subject to the Uniform Domain Name Dispute Resolution Policy), and also the following country code Top Level Domains (ccTLDs): .AU (Australia), .DK (Denmark), .EU (European Union), .IT (Italy), .UK (United Kingdom), .CN (China), .JP (Japan), .NL (The Netherlands), and .US (United States). In all, ten different systems were examined. For example, regarding the .UK dispute resolution system run by Nominet, the study noted that mediated and summary decision cases take around 60 days, whereas full decision cases can take up to 100 days. If there was no response, a complainant could ask the Expert to make a summary decision. In 2017, Nominet received 712 complaints of which 247 resulted in transfer, 39 were denied, 182 were settled and 244 never reached a decision (for example because they were withdrawn or the fees were not paid).
Also by way of example, the study analysed the Chinese dispute resolution system. The China International Economic and Trade Arbitration Commission (CIETAC) and the Hong Kong International Arbitration Centre (HKIAC) are the official providers accepting complaints, and the procedure takes around 50-60 days. In 2017, 75 cases were received by HKIAC and 66 of them were decided in favour of the complainant. The same year, 58 cases were received by CIETAC and 52 were decided in favour of the complainant.
In addition, the study presented the likely outcome of eleven specific scenarios under each of the ten selected DRPs, such as domain names pointing to fan sites, tribute and criticism sites, domain names reflecting generic words, personal names or geographical indications, and disputes involving resellers or former business partners.
The study concluded that, with the exception of the .DK DRP (Denmark), which is more closely aligned with national law, the DRPs assessed were substantially similar to the UDRP. In fact, some of the DRPs analysed were almost identical to the UDRP, although some had modifications, such as the inclusion of an initial mandatory mediation phase, or amendments to align the process to the country’s underlying legal code (for example the DRP for .JP in Japan covers more than just trade mark rights to accommodate the narrow definition of trade marks defined under the Japanese Trademark Act).
As a result, with the exception of the Danish Domain Complaints Board (.DK), the likely outcomes for the eleven theoretical case scenarios were substantially similar across the different DRPs assessed. Despite this, there were a number of key points of divergence between the DRPs which were brought out on a more practical level in the case studies analysing the various potential scenarios. It can be seen that these divergences may in some cases lead to different case outcomes (for example in relation to the three cumulative requirements under the UDRP, which are often not reflected in other DRPs which have alternative requirements instead).
EUIPO hopes that the results of this study will provide more clarity for IP rights holders, domain name stakeholders and policy makers. It may be examined here.
Authored by Jane Seager and Katia Beider