20 September 2018Trademarks

Marques 2018: BMW counsel praises UDRP

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is an efficient and inexpensive way for brand owners to recover unauthorised and damaging domain names, according to Aimee Gessner, senior trademark counsel at BMW.

Gessner spoke about the value of the UDRP yesterday, September 19, at the 2018 Marques Annual Conference in Paris.

The World Intellectual Property Organization’s (WIPO) UDRP was introduced nearly 20 years ago to help brand owners tackle bad-faith cybersquatting.

Brian Beckham, head of the internet dispute resolution section at WIPO, said that since the UDRP’s introduction in 1999, the policy has resolved more than 41,000 cases covering over 76,500 domain names.

Brands such as Facebook, Instagram, Virgin, Lacoste, and Volkswagen have successfully used the policy to recover domain names.

Nick Wood, managing director of domain name management company Com Laude, said that Marques estimates brand owners have spent at least $500 million on UDRP filings, but respondents have paid a negligible amount—and do not have to foot the bill if they lose.

However, Gessner said that the UDRP is an important tool for brands.

It provides an option when time is critical, for example, when a certain domain name is needed to launch a new product or collection, she said. The policy offers a resolution in 60 to 90 days, which is speedier than the court process in most jurisdictions.

The UDRP also offers consistent and predictable results, based on previous cases, Gessner added.

“In-house counsel can assess within five to ten minutes whether we can get the domain name back,” she explained. “It’s a very consistent body of law.”

Beckham agreed: “You should have a good sense, going into the UDRP, of whether you’ll win, which should inform your filing choice in the first place.”

Gessner noted that brand owners have the option to choose whether to use the UDRP or file court proceedings for trademark infringement.

At BMW, this choice is based on a number of factors, such as jurisdiction, cost of legal action, chance of success, length of proceedings, and available remedies.

ICANN, which oversees the domain name system, is currently reviewing the UDRP system, which has not been updated since its inception nearly 20 years ago, and Wood urged the organisation to ensure the review is “data-driven”.

Beckham added: “The UDRP is working, and we should leave it to do its job.”

Willem Leppink, partner at Ploum, and Georges Nahitchevansky, partner at Kilpatrick Townsend, also spoke on the panel yesterday.

The 2018 Marques Annual Conference is taking place between Wednesday, September 19, and Friday, September 21, in Paris.

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