A joint report by the World Intellectual Property Organization (WIPO) and the Internet Commerce Association (ICA) reviewing the UDRP procedure was published on 17th April 2025, and is framed as a preliminary point for ICANN’s forthcoming Phase 2 Review of the UDRP.
The purpose of this report is to serve as a preliminary tool to identify areas where there is consensus on the necessity, or not, to adopt measures and/or modifications to the UDRP procedure, so that ICANN can focus its efforts and prioritise those areas where there is a general consensus among the main stakeholders over other areas where there is no such consensus and a more individualised approach or parallel debate would be required.
Regarding the 23 areas of discussion, the team of experts has divided them into those on which there was consensus, and those where, despite the lack of unanimity, consensus is considered to be potentially achievable.
Among the team of experts in charge of the report, there was unanimity regarding the setting of deadlines for paying additional fees in cases with 3 Panellists; reviewing and strengthening ICANN’s role in safeguarding Registrars’ compliance with the UDRP, providing FAQs and educational material and carrying out information and promotion activities for the UDRP; regulating the unilateral withdrawal of complaints; identifying dissenting Panellists in decisions; clarifying Registrars’ verification procedures; considering the possibility of ICANN contributing financially to the UDRP; as well as the refusal to adopt a system where the loser pays costs and damages (given the practical difficulties for its proper implementation); the establishment of a mandatory mediation mechanism for the parties; or the expansion of the scope of the UDRP beyond cybersquatting trademark cases.
In terms of the areas where there is no unanimity but consensus is potentially achievable, it shall be highlighted the need to adopt a parallel ad hoc debate on the possibility of incorporating an appeal system in the UDRP; on the possible modification of the cumulative requirement of ‘registration and use’ of the domain name in bad faith to the alternative nature of these requirements; or the possibility of a full and true cancellation of a domain name. Other issues on which there has been no consensus are the possibility of supplemental pleadings, the creation of expedited or summary proceedings, the codification of existing case law, the establishment of rules for the appointment of UDRP Panellists, or the treatment of freedom of expression in the UDRP.
It now remains to be seen what future steps ICANN will take to review the UDRP system, which has undoubtedly been particularly successful for right holders over the last 25 years in protecting themselves against trademark infringements in the digital environment. Satisfaction with this system is evidenced by the fact that the proposed revisions do not entail a substantial modification of the procedure and the high degree of consensus among experts regarding the good performance of the UDRP.
Jorge Díaz
Lawyer
