An Empirical Analysis of Fair Use Decisions under the Uniform Domain-Name Dispute-Resolution Policy

66 Pages Posted: 19 Jul 2011 Last revised: 11 Apr 2015

See all articles by David A. Simon

David A. Simon

Hanken School of Economics; University of Kansas Law School; University of Cambridge, Faculty of Law ; Harvard Law School

Date Written: July 17, 2011

Abstract

For over ten years, the World Intellectual Property Organization (WIPO) has resolved nearly 20,000 domain-name disputes under the Uniform Domain-Name Dispute-Resolution Policy (UDRP) - a mandatory arbitration policy implemented by the Internet Corporation for Assigned Names and Numbers (ICANN). The UDRP allows the holder of a legally protectable trademark to initiate proceedings to cancel the domain name or have it transferred to the trademark owner. Domain-name holders, though, have a number of defenses, including using their domain names in a noncommercial, fair manner. Although several empirical studies have analyzed various aspects of the UDRP, none has specifically examined this fair use defense.

This study does what others have not. It analyzes the fair use defense in decisions before WIPO. Using WIPO’s online decision database, this study made two important findings. First, respondents from the United States are more likely than those from other countries to succeed on a fair use defense. Second, arbitrators from the United States are more likely than those from other countries to find that a respondent’s use of a domain name was fair. This means that, under the UDRP, respondents from the United States enjoy greater speech protections than those from other countries, and that arbitrators from the United States are more sympathetic to speech interests than arbitrators from other countries. To improve the UDRP, I propose two revisions. First, ICANN should adopt a choice of law provision stating that the law of the respondent’s home country governs fair use disputes. Second, ICANN should implement a panel assignment provision in fair use cases that requires arbitrators to share the nationalities of the litigants.

Suggested Citation

Simon, David A., An Empirical Analysis of Fair Use Decisions under the Uniform Domain-Name Dispute-Resolution Policy (July 17, 2011). Boston College Law Review, Vol. 53, No. 1, 2012. Available at SSRN: https://ssrn.com/abstract=1887888

David A. Simon (Contact Author)

Hanken School of Economics ( email )

PB 287
Helsinki, Vaasa 65101
Finland

University of Kansas Law School ( email )

1535 W 15th Street
Room 504
Lawrence, KS 66045
United States

University of Cambridge, Faculty of Law ( email )

10 West Road
Cambridge, CB3 9DZ
United Kingdom

Harvard Law School ( email )

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