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
Date Written: July 17, 2011
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.
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