[AfrICANN-discuss] How Do I Become a UDRP Arbitration Panelist?

[Anne-Rachel Inné]

http://domainnamewire.com/2008/08/14/guest-article-how-do-i-become-a-udrp-arbitration-panelist/

How Do I Become a UDRP Arbitration Panelist?
Thursday, August 14th, 2008

A look at the qualifications of UDRP arbitration panelists.

[Editor's note: a few weeks ago a couple readers, who were distraught
by a recent domain dispute that seemed to be decided unfairly, asked
what it takes to be a UDRP panelist who decides domain disputes. I
asked Enrico Schaefer, an attorney with Traverse Legal, PLC, to write
an article about the UDRP arbitration qualification process.]

Domain name disputes are important matters for both trademark holders
and domainers. Trademark holders want to protect their marks in the
on-line world. Domainers are sometimes forced to respond to
allegations of cybersquatting, even when they register high-value
generic or descriptive domain names. The Uniform Dispute Resolution
Policy (UDRP) was designed to resolve disputes between trademark
holders and domain registrants. UDRP disputes are submitted to
arbitration before the National Arbitration Forum (NAF) or World
Intellectual Property Organization (WIPO) who assign one or more
expert panelists to decide whether the domain will be transferred from
the domain registrant to the complaining trademark holder.

Clients often ask us, "How do I know that I will get a fair decision
in a NAF or WIPO arbitration proceeding?" Since the decision of a NAF
or WIPO panel can often be the final determination of one's rights in
a domain name, this question is an important one. UDRP proceedings,
like all other arbitration proceedings, are creatures of contract law.
Arbitration proceedings allow parties to specify, via private
contractual relationships, that they wish to have their disputes
decided outside of the judicial system. ICANN requires all registrars
of generic top-level domains (gTLDs) to adopt the UDRP, and some
country code TLDs have adopted the UDRP as well (e.g. .tv, .ws, and
.nu). Every person who registers a gTLD domain agrees to be bound to
the UDRP as part of the registration agreement and submit to
arbitration. Other domain extensions have similar arbitration
requirements and proceedings designed to resolve these matters without
having to go to court. Therefore, all registrants are subject to the
private UDRP contract through their registration agreements with their
registrar. Since arbitration agreements are private contracts, in
theory, the UDRP could call for domain name disputes to be decided by
a panel of three monkeys. The UDRP sets out the qualifications for
arbitration providers, which in turn set out the qualifications for
the arbitrators themselves.

ICANN examines potential arbitration providers, such as WIPO and NAF,
to determine whether they can handle domain dispute arbitration
proceedings in a fair, efficient, and orderly manner. ICANN approved
arbitration providers are required to maintain a list of at least 20
neutrals, all of which must be trained in the UDRP policy, domain name
dispute law, and the technology applicable to domain names. ICANN
favors providers that provide neutrals from a wide range of countries,
and the provider's supplemental rules and internal procedures must
demonstrate that the provider understands the UDRP and its rules.

Both WIPO and NAF have similar requirements for arbitrator
qualifications. WIPO requires arbitrators to have both a legal
background and considerable experience in the field of intellectual
property. WIPO arbitrators are required to give their academic
qualifications and a history of their legal experience, as well as a
list of their spoken languages. Most high-level positions with WIPO
require a minimum of 12 years of experience. NAF arbitrators are
required to be attorneys and must have substantial experience
litigating trademark disputes. NAF also likely requires several years
of experience, but their internal hiring requirements are not
disclosed to the public. There are some people who complain that
arbitrators tend to be trademark attorneys who primarily enforce
trademarks for large companies. They complain that this creates a bias
in favor of trademark holders. While it is certainly true that many of
the arbitrators on the panel lists at both WIPO and NAF who represent
large companies in trademark matters, it is also true that these
attorneys defend as much trademark litigation as they prosecute.
Corporations sue each other in court far more often then they bring
UDRP arbitrations against domainers. These panelists are trained to
prosecute and defend trademark litigation. If a bias exists in favor
of trademark holders, it is under the language of the UDRP and
trademark statutes.

Like in any court of law, there is variability in the bias and
experience of WIPO and NAF panelists. ICANN and the arbitration
providers have reasonable measures in place to make sure that
arbitrators are well qualified.

Enrico Shaefer is an attorney with Traverse Legal, a law firm that
specializes in internet law and domain name disputes.