By Doug Isenberg
I’m frequently asked how to decide where a UDRP complaint should be filed. With four providers to choose from, the decision is not always clear.
However, for various reasons, about 97% of all UDRP complaints through the years have been filed at the World Intellectual Property Organization (53%) or the National Arbitration Forum (44%), so the question I am most often asked is, “What’s the difference between WIPO and the NAF?”
Here’s my list of 10 differences between the top two UDRP service providers. (Given that I serve as a panelist for each — as well as for the Czech Arbitration Court, which also is a UDRP service provider — I’ve refrained from commenting on the importance, if any, of these differences. But, I’ll be happy to supplement this list if anyone contacts me with other notable differences.)
- Length. UDRP complaints and responses are limited to 15 pages at NAF and 5,000 words at WIPO.
- Fees. For a simple UDRP complaint (1-5 domain names, single panelist), NAF’s filing fee of $1,300 is slightly lower than WIPO’s filing fee of $1,500. However, NAF charges a fee of $400 for an “additional submission,” whereas WIPO does not charge for such supplemental filings.
- Refunds. WIPO’s fee schedule (which is incorporated by reference as a part of the WIPO supplemental rules) provides for a refund of a portion of the filing fee (typically $1,000 of the $1,500 filing fee) if a proceeding is terminated (such as by settlement) before the panel has been appointed. NAF’s supplemental rules do not provide for refunds in the event of termination.
- Supplemental Filings. NAF’s supplemental rules expressly provide for submission of “additional written statements and documents” (for a fee, see above). Although WIPO’s supplemental rules do not address this issue, the WIPO Overview 2.0 says that supplemental filings “would typically be put before the panel upon the panel’s appointment — at no additional charge — for determination as to admissibility, and assessment of need for further procedural steps (if any).”
- Extensions. NAF’s supplemental rules require payment of a $100 fee when requesting an extension of time. WIPO does not require a fee.
- Holidays. NAF’s supplemental rules exclude U.S. holidays and weekends when accounting for deadlines. WIPO’s supplemental rules do not address holidays or weekends.
- Timing. According to my own random but very unscientific review of 10 recent UDRP decisions, WIPO published decisions on average 11.2 days after the decision date, while NAF published decisions on average 3.3 days after the decision date.
- Panelists. Although I have not undertaken a comprehensive review of the WIPO list of panelists and the NAF list of panelists, my perception is that WIPO’s list is comprised largely of trademark and domain name attorneys in private practice while NAF’s list includes many retired judges. (Of course, there are numerous exceptions to this generality.) In addition, it is my understanding that WIPO’s list is larger and includes panelists from many more countries.
- Location and Staff. NAF’s offices are located in Minneapolis (UTC/GMT -6 hours; UTC/GMT -5 hours during Daylight Saving Time), while WIPO is based in Geneva (UTC/GMT +1 hour; UTC/GMT +2 hours during Central European Summer Time). My perception is that WIPO’s staff is larger and can speak more languages.
- Precedent. Although the doctrine of stare decisis, or precedent, is not imposed in the UDRP setting, panelists typically strive to reach decisions that are consistent with previous decisions, to ensure that, as WIPO has said, “the UDRP system operates in a fair, effective and predictable manner for all parties, while responding to the continuing evolution of the domain name system.” To assist with this process, WIPO has published an Overview that describes consensus on a number of UDRP issues. Although the Overview only cites WIPO decisions, and NAF has not published a similar document, the WIPO Overview is often cited by parties and panelists in both WIPO and NAF proceedings.