Free Speech, Domain Names, and Trademarks: Reinforcing The Narrow Objectives of the Uniform Dispute Resolution Policy

Given the prevalence of platforms online, one could be forgiven for thinking that the ownership of domain names, such as apple.com, have become obsolete. However, as a recent battle between the Brazilian and Peruvian governments and the US tech giant Amazon Inc. over the rights to use the .amazon top level domain makes clear, this is far from truth. To handle similar battles, the Internet Corporation for Assigned Names and Numbers (ICANN) developed a mandatory Uniform Domain Names Disputes Resolution Policy (‘UDRP’) in 1998 for resolving disputes between trademark owners and domain name registrants. Now that ICANN has 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, it is important that this commitment guides the the first comprehensive review of the UDRP set to start by the end of 2020. 

Under the UDRP, a complainant can secure a transfer of the domain from the registrant to themselves if they can show (cumulatively) that (i) the domain name registered by another person is ‘identical or confusingly similar’ to their trademark or service mark, (ii) the current registrant has ‘no rights or legitimate interests’ in that domain, and (iii) the domain name was registered in ‘bad faith’. At the time it was introduced, the UDRP was intended to only cover the most obvious cases of ‘cybersquatting’—an abusive registration of domain names using the names of well-known individuals or companies in the hope to get large sums of money paid. Famous early cybersquatting examples include www.madonna.com (transferred to pop star Madonna in 2000); www.peta.org (transferred to PETA—People for Ethical Treatment of Animals in 2001); and www.jenniferlopez.org (transferred to pop star Jennifer Lopez in 2009). 

However, as I discuss in my recent paper, panel decisions handed down since 1998 show that these original narrow objectives of the UDRP have shifted. Many UDRP panels have granted requests to transfer domains that, among other things, contain untrademarked names deemed ‘common law trademarks’ (such as www.juliaroberts.com and www.hillaryclinton.com, which were transferred to Julia Roberts and Hillary Clinton, respectively, on this basis), despite no explicit recognition of such trademarks in the UDRP, or contain pejoratives alongside trademarked terms because they regard such names as ‘confusingly similar’ (such as www.wal-martsucks.com and www.airfrance-suck.com, which were transferred to Walmart and Air France, respectively, on this basis). The ‘legitimate interest’ and ‘bad faith’ requirements have also been loosened, particularly for criticism websites, with many UDRP panels deciding there is no legitimate interest or there is bad faith simply because the ‘confusing similarity’ requirement has been fulfilled. Such an approach has a chilling effect on legitimate criticism and infringes the right to freedom of expression. 

I argue that such interpretive developments are possible because of the imprecise nature of the UDRP’s language. Close analysis of the decisions reveals that the dominant approach of UDRP panellists is to view the registration of a domain containing a trademark or service mark as inherently suspicious unless proven otherwise. This approach is incompatible with the internationally recognized right to freedom of expression. While it is not an unqualified right, the interferences with this right are only acceptable under international human rights law when (i) they are in accordance with a law pursuing a legitimate aim, (ii) it is necessary (ie, more than merely useful, reasonable or desirable), and (iii) proportionate (ie, the interference in question must be the least intrusive manner by which the legitimate aim is achieved). 

The approach taken by UDRP panellists prohibits genuine expressions of political or other views in a way that goes beyond the words and original intention of the UDRP and which cannot be described as necessary or proportionate. Since the UDRP was designed to deal only with the most obvious cases of cybersquatting, it should never be used to prevent uses of trademarks for criticism websites. 

In the paper, I propose several concrete ways to address the substantive aspects of the UDRP from an international human rights perspective in the upcoming reform which is set to start by the of 2020. I argue that the reformed policy should include: i) an explicit reaffirmation of the narrow scope and limited objectives of the UDRP; ii) a clear articulation of the relationship between the UDRP objectives and substantive policy elements; iii) a reaffirmation of the cumulative nature of the bad faith requirement; iv) a revision of affirmative defences available to the respondent; 4) an introduction of an additional defence of an unreasonable delay; v) an introduction of a choice-of-law provision; and vi) a development of ‘Uniform Consensus View’ at ICANN level to increase consistency and reduce the risk of rogue interpretations of the UDRP by panellists.

Ultimately, the UDRP must return to its original, narrower objectives of only tackling obvious cybersquatting cases, in order to limit infringements of freedom of expression, and for ICANN for fulfil its commitment to respect ‘internationally recognized human rights’ under its newly adopted Bylaws. 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.