Earlier this morning, I published a poll asking readers about the results of UDRP proceedings to gauge if readers think outcomes have recently been shifting more in favor of domain investors when it comes to valuable (generic / acronym) domain names. So far, it looks like approximately 2/3 of readers who voted in the poll believe domain registrants are faring better now than they did in prior years.
I did some researching using DNDisputes.com, and I was able to find some facts about how UDRP results have changed over the years at the World Intellectual Property Organization (WIPO). WIPO is the largest UDRP provider, and DNDisputes.com primarily archives decisions from WIPO.
Using DNDisputes.com, I shared the percentage of complaints denied (meaning the domain registrant won) since 2008:
- 2018 to date: Complaints denied – 5.81%
- 2017: Complaints denied – 7.03%
- 2016: Complaints denied – 7.56%
- 2015: Complaints denied – 8.86%
- 2014: Complaints denied – 9.45%
- 2013: Complaints denied – 9.22%
- 2012: Complaints denied – 9.12%
- 2011: Complaints denied – 10.49%
- 2010: Complaints denied – 10.31%
- 2009: Complaints denied – 11.5%
- 2008: Complaints denied – 13.66%
As you can see, domain registrants have been winning a much lower percentage of UDRP disputes at WIPO since 2008. I think there may be a few things contributing to the perception that domain registrants have had better outcomes more recently.
Over the past few years, I think domain industry blogs have been giving more coverage to UDRP filings involving valuable generic (dictionary words and phrases) and acronym domain names. When I see a UDRP filing involving a domain name that is valuable due to its descriptive nature, I write about it. Others do the same. Most of us do not write about the vast majority of UDRP filings that involve pretty obvious trademark violations.
This skewed coverage means that domain industry participants, likely those who responded in the poll, are focused primarily on the UDRP cases that have the best shot of winning. The vast majority of UDRP filings should (and do) go in favor of the complainant.
Based solely on my own observations, I do think domain registrants have a better shot at retaining a generic or acronym domain name these days than they did in the past. I believe there are a couple of reasons for this.
The ICA’s successful efforts to change the “Retroactive Bad Faith” theory for UDRP proceedings was very helpful. A complainant can no longer successfully argue that a domain owner’s renewal of a domain name was in bad faith. Someone who bought or registered a domain name years before a trademark holder who wants it no longer needs to fear that a UDRP panelist will rule that a subsequent renewal of the domain name was in bad faith. If the name was acquired or registered in good faith, then subsequent renewals should be free and clear.
As mentioned above, the domain industry coverage of UDRP filings and results involving valuable domain names (blogs and forums primarily) has increased. Perhaps this awareness has given some panelists a bit of a pause before ruling against a legitimate domain registrant. The coverage has also made registrants who are not domain investors more aware of the UDRP process and highlighted some of the best attorneys who specialize in UDRP defense.
Although UDRP panels, at least at WIPO, are being decided more in favor or complainants now than 10 years ago, I do think registrants have a better chance of retaining a valuable domain name these days than in prior years.
More people, especially from the poor countries & with bad understanding of law, come into domaining and try things with trademarks, hence the increase of pro-complaintant results.
In my view the stats on UDRP outcomes are largely meaningless.
In an ideal world the UDRP win rate for complainants would be 100% because complaints would only be filed against domains that are clearly examples of cybersquatting.
Unfortunately the UDRP is increasingly being used as a tool for companies to seize valuable domains, not because their rights are being infringed, but because the domain is a desirable commercial asset.
Many of the domains being won are obscure typosquatted domains that likely wouldn’t have been renewed anyway, but the complainant bar can charge their clients high fees to keep their brand “safe”. The value of these domains is $10 or less.
Yet one bad decision on a valuable domain can have an outsized impact. ADO.com was ordered transferred because the panel thought the asking price was too high. ADO.com has a six-figure end-user value. The loss of ADO.com has an economic impact greater than the transfer of 10,000 marginal cybersquatted domains that each have an economic impact of $10 or less.
Stats would be useful if all the domains had equivalent value. But when one domain that is wrongly transferred is worth more than 10,000 domains that are correctly transferred, then stats are meaningless.
You wrote about the awful decision in IMI.com that was lost within the past year – https://domaininvesting.com/imi-com-udrp-decision-stunning/
The ICA posted a statement on the flawed ADO.com decision – http://www.circleid.com/posts/20180301_ica_statement_on_adocom_udrp_decision_overreaching_panelists/
The two decisions alone demonstrate the huge harm that overreaching panelists can cause. Both domain owners were forced to turn to the court system for the just outcome that they were denied in the UDRP.
A more interesting stat, in my view, is if it were possible to determine the economic impact of the cybersquatted domains rightly transferred, the valuable generics wrongly targeted yet successfully defended, as in vmi.com, and the valuable generics wrongly ordered transferred such as ado.com and imi.com.
Great points – thank you for sharing.
Thanks Elliot! We’ve certainly noticed a change as well. Whether it’s brushing back the Retro Bad Faith line of reasoning or the recent uptick in “Plan B” cases, Respondents’ counsel are continually confronting these issues.
Every Response is a direct line of communication to the Panelists. As Nat noted, historically there have been many bad decisions that impact valuable assets. This is precisely why every case should be viewed as an opportunity to not only protect the asset at risk, but also refute arguments like retroactive bad faith and protect against future “bad” cases.
Year over year Complainants push a “new” agenda to see how panelists will react. Sometimes, it’s grounded in a “pro” Complainant decision that opens the door to a rush of cases seeking relief under the new theory. While that might be “good for business” (bringing in more cases), that’s what we all need to avoid.
It’s all part of a larger process. Many decisions are well reasoned and handled properly, however, there’s always the outlier or bad decision that could have lasting impact if not checked.
I disagree that the concept of “cybersquatting” is valid, that a company with a mark should have legal right to domains incorporating the mark.
The basis of trademark law is to prohibit intentional or negligent impersonation, so that: 1) consumers are not deceived as to the source of goods or services; and 2) the reputation of a company isn’t damaged by such impersonation.
If I register Microsoft.whatever, that action doesn’t produce 1 or 2, yet under the draconian ACPA I could be sued for $100,000 and under the UDRP I would be subject to loss of the domain, even though I might be intending to put up a website which would clearly and conspicuously state that I have no affiliation with Microsoft.
If my intention is to hopefully sell the domain to Microsoft, that also does not produce 1 or 2.
If I use the domain in a way which does produce 1 or 2, then there are longstanding trademark laws by which Microsoft can take action to put an end to the infringement and seek monetary compensation for damages suffered, just as they can take action if infringement occurs in a context which does not involve domains.
So there is no valid reason that is consistent with the basis of trademark law why Microsoft should have a legal right to Microsoft.whatever, and no valid reason why ICANN should have gone out of its way to make it easy for trademark holders to enforce such a right.
Am I missing something?
I can understand Nat’s frustration. 90% or more of cases are indefensible and respondents rarely appear. Unfortunately in the IMI.COM dispute Respondent failed to appear. Absent an explanation silence supports a negative inference that there is no explanation to give. While I agree with Nat that the ADO.COM decision was in error, and is being challenged in U.S. district court (I see that an amended complaint was filed in April). Assuming defendant appears and if the complaint of reverse domain name hijacking is ultimately sustained (which I think it will be) there will be damages and attorney’s fees. If defendant does not appear there will a default judgment in favor of domain name owner (at great expense to him). Great expense is a bugbear because only those with the wherewithal can afford litigation. This is also part of the frustration for those who cannot afford litigation. Understandably, it creates uncertainty and anxiety of loss. We need some deep pockets to establish a fund (to be held and used by a group like the ICA) to pay for counsel to take erroneous UDRP decisions to court and be refurbished with funds from damages and attorney’s fees (probably a fantasy). My own take on the situation is that UDRP jurisprudence is effective in protecting good faith registrants.