Proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP) can be heard by either a one- or three-member panel. Here are eight important facts that every complainant (trademark owner) and respondent (domain name registrant) should consider when deciding whether to select one or three members.
1. Either party — complainant or respondent — has an opportunity to select a three-member panel. Specifically, Rule 5(c)(iv) says: "If Complainant has elected a single-member panel in the complaint..., [the Response shall] state whether Respondent elects instead to have the dispute decided by a three-member panel."
2. A three-member panel is more expensive than a single-member panel. At the World Intellectual Property Organization (WIPO), the largest UDRP service provider, the filing fee for a UDRP complaint containing up to five domain names is $1,500 for one member or $4,000 for three members. At the Forum, the second largest UDRP service provider, the filing fee for a UDRP complaint containing up to two domain names is $1,300 for one member or $2,600 for three members.
3. Each parties' share of the UDRP filing fee depends upon whether the complainant or the respondent elects a three-member panel. If the complainant chooses a three-member panel when it files the UDRP complaint, then the complainant must pay the entire fee. But, Rule 5(d) says: "If Complainant has elected to have the dispute decided by a single-member Panel and Respondent elects a three-member Panel, Respondent shall be required to pay one-half of the applicable fee for a three-member Panel..."
4. In a three-member panel UDRP proceeding (unlike in a single-member panel proceeding), the parties can express a preference for the panelists. The Rules allow the complainant and the respondent an opportunity to identify "three candidates to serve as one of the Panelists." The UDRP service providers typically, but do not always, select one of each party's candidates to serve as a panelist. The third panelist "shall be appointed by the Provider from a list of five candidates submitted by the Provider to the Parties."
5. A party's candidates in a three-member UDRP case do not necessarily have to be panelists with the UDRP service provider where the complaint was filed. Presumably, this rule — which says that "candidates may be drawn from any ICANN-approved Provider's list of panelists" — aims to thwart any perception of forum shopping. As a result, it is possible (though rare) for a WIPO proceeding, for example, to include a panelist who is only on the Forum's roster.
6. In a three-member panel case, the Rules state the obvious about the panel's decision: that it "shall be made by a majority." While many decisions are unanimous, dissenting and concurring opinions are not uncommon.
7. Relatively few UDRP proceedings — about 5.5% at WIPO — are conducted by three-member panels. This is likely attributable to the increased cost of three-member panels as well as many complainants' hesitation to pursue a UDRP complaint if they believe the issues are so close that a three-member panel is even worthy of consideration.
8. Three-member panel decisions are significantly more likely to favor domain name registrants (respondents) than single-member panel decisions. Although WIPO (the only UDRP service provider that provides detailed statistics) does not publish data on case outcome based on the number of panelists, it is obvious that three-member panel decisions often deny a request to transfer or cancel a domain name — unlike single-member panel decisions, which rarely deny a trademark owner's requested remedy. However, the discrepancy is not necessarily always a result of having three panelists decide the case but instead may indicate something about the types of cases in which a party is likely to elect a three-member panel.
Written by Doug Isenberg, Attorney & Founder of The GigaLaw Firm