Generally, panelists decide cases based on “general principles of law widely accepted throughout the world,” Fundación Calvin Ayre Foundation v. Erik Deutsch, D2007-1947 (WIPO February 25, 2008). Indeed, consistency and predictability are enhanced when the principles are uniformly applied. However, there is an ongoing debate whether the general principles approach is appropriate for all issues and, on one issue in particular, there is a split of views concerning a registrant’s right to a retain a domain name in the form of <trademark.com> intended for non-commercial purposes under ¶4(c)(iii) of the Policy.
On the one side stand panelists who adhere to the principle that it is inappropriate to import national law into UDRP proceedings. McMullam Bros Limited, Maxol Limitd and Maxol Direct Limited Maxol Lubricants Limited, Maxol Oil Limited Maxol Direct (NI) Limited v. Web Names Ltd., D2004-0078 (WIPO April 16, 2004) (Both parties, Northern Ireland; Transferred):
To import a national rule simply because both parties come from the same jurisdiction may result in similar cases being decided in a different manner dependant upon geographical accident. This is a conclusion that this Panel finds inherently unattractive. At times resort to national law may be unavoidable (for example when determining the existence of a trademark recognised by the Policy), but the Panel sees no reason for doing so in this case.
On the other side stand panelists who believe that where “both the Complainants and Respondent are domiciled in the United States and United States courts have recent experience with similar disputes ... the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States,” KeyCorp and City of Seattle v. i-designsolutions.com, Inc., D2005-0104 (WIPO April 14, 2005).
Certainly, when the parties are residents of the same country it may be appropriate to apply local law. In fact, such a construction comports with Section 176 of the WIPO Final Report:
In applying the definition of abusive registration given above in the administrative procedure, the panel of decision‑makers appointed in the procedure shall, to the extent necessary, make reference to the law or rules of law that it determines to be applicable in view of the circumstances of the case. Thus, for example, if the parties to the procedure were resident in one country, the domain name was registered through a registrar in that country and the evidence of the bad faith registration and use of the domain name related to activity in the same country, it would be appropriate for the decision‑maker to refer to the law of the country concerned in applying the definition.
The Overview of WIPO Panel Views on Selected UDRP Questions at Sec. 2.4 reports the split views specifically with reference to domain names registered with the intention of creating non-commercial sites for criticism, although this should be read to include commentary and adulation sites [see Richard Starkey v. Mr. Bradley, FA0612000874575 (Nat. Arb. Forum February 12, 2007) (<ringostarr.mobi>, transferred) in which the dissent posited that “Fanatics are just the flip side of critics”]. The more difficult question is which view should be applied when the parties are resident of different countries?
The dissent in Richard Starkey proposed a solution to the split by applying conflict of laws principles to resolve claims by one party against another in a different jurisdiction, which he has repeated as the sole panelist in Sermo, Inc. v. CatalystMD, LLC., D2008-0647 (WIPO July 2, 2008) (<sermosucks.com>, complaint denied). Thus,
If both parties are resident in the same jurisdiction, then it seems wholly appropriate to consider the national laws of that jurisdiction since, presumably, those laws govern the parties’ conduct, legal rights, and potential liabilities. However, where there is some question about the laws that may apply [because the parties are resident in different countries], then a Panel should also consider the location of mutual jurisdiction, and the conflict of laws principles that would be applied by courts in that jurisdiction, since that is the jurisdiction in which the courts may be asked to consider the parties respective rights if a challenge is filed under Paragraph 4(k) of the rules.
Selecting a mutual jurisdiction is a procedural requirement imposed on the complainant as a quid pro quo for access to the benefits of the Policy (defined in the Policy at paragraph 1 of the Rules). In Richard Starkey, the parties are British subjects, but the complainant has a U.S. address and selected as the venue for mutual jurisdiction the location of the registrar in Scottsdale, Arizona. The dissent would have applied U.S. law, as he did in Sermo, to deny the complaint based on policy grounds enforced under U.S. law. The majority applied U.K. law to find in favor the complainant.
Well considered though the suggestion for a conflict of laws approach may be, it has not been taken up by other panelists. A number of decisions involving U.S. residents over domain names identical to trademarks have been resolved in favor of the respondents. One in particular is currently in litigation under the Anticybersquatting Consumer Protection Act, Bosley Medical Institute, Inc. and Bosley Medical Group v. Kremer, 403 F.3d 672 (9th Cir. 2005).