University of Ottawa Professor Michael Geist has reported that
since its inception by ICANN in 1999, trade mark holders have won
81% of domain name dispute cases brought under the Uniform Domain
Name Dispute Resolution Process (UDRP).
Those raising an action have the choice of four forums for dispute
resolution under the ICANN rules. However, the study claims that
90% of complainants chose the two forums most likely to award cases
in favour of those who filed them.
The Arbitration Centre of the Geneva based World Intellectual
Property Centre (WIPO) and the US based National Arbitration Forum
(NAF) rule in favour of trademark holders in 82.2% and 82.9% of
cases respectively. The two less popular forums, EResoution and the
CPR Institute for Dispute Resolution, rule in favour of trademark
holders in 63.4% and 59.1% of cases respectively.
The person bringing a claim can also choose whether to have one
or three panellists.
If a party raises a dispute resolution action for one domain
name, instructing one panellist with WIPO will cost the party
bringing the action the sum of $1,500; instructing three panellists
costs $3,000. NAF is cheaper, at $950 for one panellist, $2,500 for
three panellists. EResolution's corresponding figures are $1,250
and £2,900; and under the CPR Institute, $2,000 and $4,500. The
defending party has the right to increase a one-member panel to a
three-member panel, but rarely does so, because the defending party
must bear costs of doing so.
When three member panels are used, currently in only 10% of
cases, domain name transfers are awarded to the complainant 60% of
the time, compared to 83% in one member panels. Accordingly,
Professor Geist recommends that ICANN should require that all cases
should be heard by a three member panel. He suggests that one judge
should be chosen by each party involved.
ICANN will review the dispute resolution process this autumn,
with a view to issuing formal recommendations in November.
