Tag Archives: Dispute Resolution Service

Nominet Sees 0.0074% of .UK Domains Disputed in 2016 as 3rd Level Registrations Drop, 2nd Level Rise

Nominet saw a small drop in complaints in 2016, with 25 fewer complaints for the 12-month period than in 2015. The 703 complaints related to 785 domain names, according to their 2016 annual summary of domain name disputes brought before its Dispute Resolution Service (DRS). The disputed .uk domain names in 2016 were 0.0074% of all domain names under management (DUM), or registrations.

In the same period total registrations dropped marginally by 44,882 from 10,637,764 at the end of 2015 to 10,592,882, or 0.4219%. Interestingly, and not unexpectedly, third level .uk registrations have been shrinking (from 10,140,436 to 9,972,226) while second level registrations have been growing (from 497,328 to 620,656) in the same 12-month period.

Of the complaints, over half resulted in a domain transfer, which was the same as the previous year (53%). 2016 also saw a 10% increase in the number of summary decisions made by DRS independent Experts, who support the DRS by giving their time and professional expertise to help resolve disputes when needed.

“While only a small proportion of domain names overall – 0.0074% of the .UK register – resulted in a dispute in 2016, the DRS continues to provide an efficient and cost effective way of resolving those that do arise,” said Russell Haworth, Nominet’s Chief Executive. “In fact, we should not underestimate the value of the service as £7million could have been saved on legal fees last year alone, thanks to the efficient process in place and the many volunteer Experts who generously offer their time and expertise.”

Brands such as Facebook Inc, O2 Worldwide, Jaguar Land Rover Limited, Virgin Enterprises Limited, JD Sports Fashion Plc and Anne Summers Ltd used the DRS in 2016.

Other users of the service included Brighton & Hove Albion Football Club, The National Council For Voluntary Organisations, the National Council For The Training Of Journalists, Wembley Primary School and PAGE, a campaign against gravel extraction in South Oxfordshire.

Nominet provided a number of statistics on the 2016 disputes:

  • In 2016 there were 5 appeals, with 4 original decisions being upheld. One appeal overturned a No Action decision to a Transfer decision.
  • The most common industries were automotive and Internet (14 each); retail (12); software and sports (7 and 6 respectively).
  • The year saw cases brought by complainants from 28 different countries, led by the UK (570) followed by the US (46), France (13) and Germany (10). Respondents were widely dispersed, coming from 35 different countries. Again, the UK leads with 570 respondents, with the US second (22) and St Kitts and Nevis third (16).
  • Mediated cases by Nominet took an average of 47 days to resolve in 2016, compared with 41 days in 2015, and 47 days in 2014. Cases being resolved by an Expert decision also took slightly longer to close than in 2015.
  • The majority of cases (91%) involved .co.uk domain names, with 4% of cases involving a .org.uk domain. The .uk domain names, launched in June 2014, made up 4% of cases in 2016, an increase on the 3.5% in 2015 and 1.6% from 2014.

“Almost 12,000 Complaints have been made to the DRS since 2001 with more than half of these resolved between the parties directly, through mediation, or an Expert. With millions of small businesses and individuals now in possession of a domain, it’s also important to bear in mind that the DRS recognises a wider class of rights than simply trademarks,” said Nick Wenban-Smith, General Counsel at Nominet. “So, if someone has the rights in a name which is the same as or similar to a .UK domain name they are concerned about and they can provide proof that the domain name has been registered or used in a manner that has or might cause unfair detriment, then the DRS is a good first port of call to address those concerns.”


Nominet Announces Changes To .UK Dispute Resolution Service Policy And Procedure

Nominet dotUK logoNominet Friday published a revised Dispute Resolution Service (DRS) Policy following the comment period earlier this year. The new Policy will apply to all complaints filed from 1st October 2016.

The DRS is Nominet’s mediation-based process for resolving disputes between parties over the registration or use of .UK domain names. The DRS aims to provide a clear, quick and cost-effective process outside of the formal court system which facilitates an amicable resolution between the parties where possible, and which is accessible and fair to both those complaining and domain name registrants.

The new DRS Policy along with some analysis and feedback on the comments that were made can be found here. A document showing the changes made to the proposed draft in response to comments has also been published.

Phishing, The Force & Fashion: 2015 In .UK Domain Name Disputes

[news release] Nominet, the company responsible for .UK, has today released an annual summary of domain name disputes brought before its Dispute Resolution Service (DRS) in 2015.

Nominet logoWhile the number of domains being disputed is low overall, Nominet’s award winning DRS allows .UK disputes to be settled efficiently and cost-effectively.  The service provides a low cost alternative to court action or paying for legal advice, avoiding costs of up to £15k per complaint in 2015 – a possible £7,740,000 overall against the number of complaints made.

A total of 728 complaints were made to Nominet in 2015, just two more than were made in 2014, while the number of domain registrations increased by more than 118,000. However, the most striking feature was the 26% increase in the number of cases successfully mediated by Nominet staff.

Brands such as Aldi, Amazon, the BBC, Cash Converters, Google, Microsoft, McDonald’s and Urban Outfitters used the DRS in 2015. Other users of the service included a former British Parliamentary Under-Secretary of State, one of Scotland’s oldest archery clubs and a former top ranked British tennis player.

Cases included:

  • bankofscoltland.co.uk and hallifaxbnk.co.uk

Both complaints were made by Bank of Scotland Plc, and whilst neither domain name resolved to an active website, they argued that these were classic examples of typo-squatting. The Complainant argued that it cannot be excluded that the Respondent uses the disputed domain names for fraudulent activity, e.g., by profiting off the likelihood of confusion from ‘phishing’ activities. Both domain names were awarded to Bank of Scotland in summary decisions.

  • starwars.co.uk

The Complainant is the film and television production company founded by the filmmaker George Lucas. The Respondent sells fancy dress costumes, including Star Wars branded costumes, via its Jokers’ Masquerade website. An appeal panel considered that it was clear that the Respondent chose the starwars.co.uk domain name because of the “pulling power” of the trade mark. It is generally accepted that where a domain name is an unadorned reproduction of a Complainant’s trade mark, this would be enough to establish that confusion could or has occurred, even if a visitor to the site realised when they got there that the site was not connected with the Complainant. The appeal panel upheld an original finding and seven domain names were transferred to Lucasfilm Ltd., LLC.

  • mango.co.uk and mango.uk

The Complainant, Consolidated Artists B.V., is a multinational business which designs, manufactures and markets clothing and accessories. They provided a number of trade marks for the term MANGO, which pre-dated the domain name registration. However, the Expert’s view was that the word ‘mango’ was generic and that the Complainant did not put forward sufficient or persuasive evidence to show that the Domain names were registered to target it or its Rights.  The Expert found that the complaint had been brought in frustration at the Respondent’s unwillingness to sell mango.co.uk for a price it was willing to pay, rather than because of the merits of its position in terms of the Policy’s requirements.

  • televisionlicensing.co.uk

This complaint was brought by the BBC, which is responsible for licence fee collection and enforcement. The domain name was registered under a WHOIS privacy service, and the end user was not known. The BBC argued that that there was a likelihood of confusion because the domain directed to a website offering television licences for £291, an amount exceeding the prescribed fee of £145.50. In some cases the fee was not passed on to the Complainant and the customers remained unlicensed after applying for and paying through the website. The Expert was satisfied that this made the domain name an Abusive registration.

There have been 92 full decisions made in cases filed in 2015 (an adjudication most commonly made where the respondent has defended the case). The most common industries were retail (18); automotive (15); internet, software and fashion (5).

The year saw cases brought by complainants from 40 different countries, led by the UK (542) followed by the US (55), Germany (28) and Italy (12). Respondents were even more widely dispersed, coming from 46 different countries. Again the UK leads with 553 respondents, with the US second (26) and China third with 23.

The average length of DRS cases is decreasing. Mediated cases took an average of 41 days to resolve in 2015, compared with 47 days in 2014 and 69 days in 2010. Expert decisions also took less time to complete in 2015. Experts are volunteers from the legal sector who support the DRS by giving their time and professional expertise to help resolve disputes when needed.

The majority of cases (94%) involved .co.uk domain names, with 4% of cases involving a .org.uk domain. The newer, shorter .uk domain names, which were launched in June 2014, appeared in 3.5% of cases in 2015, an increase on the 1.6% of cases from 2014.

Russell Haworth, Nominet’s Chief Executive says: “With thousands of .UK domain names registered each week, it’s inevitable that some might lead to a dispute. Our Dispute Resolution Service continues to be a valuable resource for many individuals and businesses, and while the number of disputes recorded is largely static, we are pleased to report that the time it takes to resolve these is on the decrease, demonstrating the speed and efficiency of the process. Much of the success can be attributed to our volunteer legal Experts who are a key part of the DRS and enable disputes to be settled in a cost effective way for many, who otherwise may not feel they are in a position to raise a complaint for fear of spiralling court and legal fees.”

Nick Wenban-Smith, Senior Legal Counsel at Nominet, comments: “To successfully make a complaint using our Dispute Resolution Service you must be able to prove the domain name, in the hands of the current registrant, is an abusive registration. It’s important that businesses and individuals are able to protect themselves, and consumers more widely, against any abuses, so resolving cases that could have led to customer trust or brand reputation issues is important to us. Whether you’re a family business, a great British institution or a global franchise phenomenon, Nominet’s DRS can help to protect your rights in the .UK namespace.”

This Nominet news release was sourced from:

ICANN: Public Interest Commitment Dispute Resolution Procedure Finalized

ICANN new generic Top Level Domains logoThe Public Interest Commitment Dispute Resolution Procedures (PICDRP) is finalized and now available.

The PICDRP is a procedure created to address potential complaints that a Registry Operator may not be complying with its voluntary or mandatory commitments as identified in Specification 11 of their Registry Agreement.

A draft procedure was published for public comment in March 2013.  ICANN considered the inputs received from the draft procedures and published a revised PICDRP for comment in October 2013.  The approved PICDRP incorporates the feedback received from both public comment forums.

Learn more about the PICDRP and other Post-Delegation Dispute Resolution Procedures (PDDRPs) »

This ICANN announcement was sourced from:

ICANN: Call for Expressions of Interest (EOI) for Public Interest Commitment Dispute Resolution Procedure (PICDRP) Standing Panel Members

ICANN new generic Top Level Domains logoICANN is seeking expressions of interest to serve on the PICDRP Standing Panel.


  1. As part of the New gTLD Program, ICANN has put in place the Public Interest Commitment Dispute Resolution Procedure [PDF, 208 KB] (“PICDRP”) to address reports of a Registry Operator’s non-compliance with one or more of the public interest commitments included in Specification 11 of its Registry Agreement with ICANN.
  2. During the compliance review and investigation process for a report submitted to ICANN under the PICDRP, ICANN may call upon the Standing Panel to review one or more reports in order to evaluate whether the Registry Operator was or was not in compliance with Specification 11 of the Registry Agreement.

Composition of Standing Panel

  1. The Standing Panel shall consist of a minimum of three members, with more members to be added as deemed necessary. Not all members of the Standing Panel are necessary to the consideration of each report referred by ICANN.
  2. The Standing Panel members should have diversity in geographic and cultural representation. Diversity of experience will be considered in completing the composition of the Panel.

Proposed Qualifications of Standing Panel Members

  1. In consideration of the scope and areas of expertise required, that Standing Panel members, in the aggregate, should have expertise and significant knowledge in the following (or similar) aspects/areas.
    1. Online content
    2. Public policy
    3. Trademark protection
    4. International dispute resolution
    5. Cultural studies
    6. Judicial and/or legal experience
    7. DNS technical experience
    8. Regulatory background
    9. Sociological research experience
    10. Contract interpretation experience
    11. Licensing experience
    12. Cybersecurity
  2. Panel members should have demonstrated recognition of expertise and knowledge through high-level positions, peer group recognition, and/or history of publications/presentations on relevant topics.

Conflict of Interests

All Panel members must be independent from ICANN (i.e., not an ICANN employee; not a member of any ICANN Sponsoring Organization or Advisory Committee; not affiliated with any registrar or registry holding a contract with ICANN). Further, all Panel members must adhere to ICANN’s conflicts of interest policy and annually complete a Conflicts of Interest Disclosure Form.

Time Commitment

  1. To keep the costs and burdens of evaluation as low as possible, absent exceptional circumstances, the Standing Panel is expected to conduct its proceedings by email, by telephone and otherwise via the Internet.
  2. It is anticipated that the Standing Panel may start to have matters referred to it by ICANN within one month of the Panel formation. The members of the Standing Panel will be required to review reference and training materials prior to receiving matters such that the Panel members understand the Public Interest Commitments Dispute Resolution Process. For each matter referred, the Standing Panel will be expected to evaluate compliance by the Registry Operator and report its evaluation results to ICANN. The Standing Panel is expected to deliver its evaluation results to ICANN within 15 days of reference by ICANN.
  3. At present it is unclear how many matters will be referred to any given Standing Panel member; over time this may become more predictable based on the nature and number of the reports submitted.

Fees for Service on Standing Panel

Fees to be determined based on, among other things, proposals received.

Terms of Standing Panel Member

For the purpose of continuity and consistency, the terms of Standing Panel members will be staggered. For a start, the terms of two of the Standing Panel member shall be two (2) years and the term of the third member shall be one (1) year. Subsequent terms of new members and renewal of terms shall be two (2) years and members, with agreement from ICANN, are allowed to renew for a maximum of two (2) terms.


It is anticipated that the Standing Panel membership will be announced by end of January or early February 2014.

Expressions of Interest

Expressions of Interest, which will be maintained as confidential, should be sent to PICDRP-SP-EOI@icann.org no later than 20 January 2014. Respondents are urged to read the PICDRP [PDF, 208 KB] prior to submitting an Expression of Interest.

This ICANN announcement was sourced from:

ICANN: Locking of a Domain Name Subject to UDRP Proceedings Policy Development Process (PDP) Recommendations for Board Consideration

ICANN logoPurpose (Brief):

Obtain community input on the Locking of a Domain Name subject to UDRP Proceedings Policy Development Process recommendations adopted by the GNSO Council prior to ICANN Board consideration.

Current Status:

The Locking of a Domain Name subject to UDRP Proceedings PDP Working Group delivered its Final Report [PDF, 1.01 MB] to the GNSO Council on 5 July 2013. The report and its recommendations were adopted unanimously by the GNSO Council on 1 August. As required by the ICANN Bylaws, public notice is hereby provided of the policies that are considered for adoption as well as an opportunity to comment on the adoption of the proposed policies, prior to consideration by the ICANN Board of these recommendations.

Next Steps:

ICANN Staff will prepare a summary of the public comments received that will be submitted to the Board in conjunction with the Locking of a Domain Name subject to UDRP Proceedings recommendations adopted by the GNSO Council.


Detailed Information
Section I: Description, Explanation, and Purpose:

The Generic Names Supporting Organization (GNSO) unanimously approved at its meeting on 1 August 2013 the recommendations of the Locking of a Domain Name subject to UDRP Proceedings PDP Working Group. The 17 recommendations, which are pending for Board action, are intended to clarify and standardize the process for locking of a domain name subject to UDRP Proceedings, including:

  • Definition of ‘locking’
  • Requiring registrar to apply lock within 2 business days following request for verification
  • Removing obligation for complainant to notify the respondent at the time of filing, but add automatic extension of 4 days to response time upon request
  • Step by step clarification of requirements of different parties involved
  • Development of educational and informational materials to assist in informing affected parties of new requirements and recommended best practices

For the full details of these recommendations, you are strongly encouraged to review section 7 of the Final Report [PDF, 1.01 MB].

You are invited to submit your comments before final consideration of these recommendations by the ICANN Board.

Section II: Background:

Currently there is no requirement to lock names in period between filing complaint and commencement of proceedings and no definition of ‘status quo’, which has resulted in different interpretations and confusion of the policy. To address this issue, the GNSO Council decided to initiate a Policy Development Process on 15 December 2011. As part of its deliberations, the WG was required to consider the following questions:

1. Whether the creation of an outline of a proposed procedure, which a complainant must follow in order for a registrar to place a domain name on registrar lock, would be desirable.

2. Whether the creation of an outline of the steps of the process that a registrar can reasonably expect to take place during a UDRP dispute would be desirable.

3. Whether the time frame by which a registrar must lock a domain after a UDRP has been filed should be standardized.

4a. Whether what constitutes a “locked” domain name should be defined.

4b. Whether, once a domain name is ‘locked’ pursuant to a UDRP proceeding, the registrant information for that domain name may be changed or modified.

5. Whether additional safeguards should be created for the protection of registrants in cases where the domain name is locked subject to a UDRP proceeding.

The Working Group published its Initial Report for public comment on 15 March 2013 (see www.icann.org/en/news/public-comment/locking-domain-name-15mar13-en.htm), followed by its Final Report on 5 July 2013.

omment / Reply Periods (*)

Comment Open Date:
2 August 2013
Comment Close Date:
23 August 2013 – 23:59 UTC
Reply Open Date:
24 August 2013
Reply Close Date:
13 September 2013 – 23:59 UTC
Important Information Links

This ICANN announcement was sourced from:

ICANN: Post-Delegation Dispute Resolution Providers Identified

ICANN new generic Top Level Domains logoICANN has signed a Memorandum of Understanding with providers for both the Registration Restrictions Dispute Resolution Procedure (RRDRP) and the Trademark Post-Delegation Dispute Resolution Procedure (Trademark PDDRP). These Dispute Resolution Procedures have been developed to provide those who believe they have been harmed by a new gTLD Registry Operator’s conduct an alternative avenue to complain about that conduct.

The RRDRP is intended to address circumstances in which a community-based new gTLD Registry Operator deviates from the registration restrictions outlined in its Registry Agreement. The National Arbitration Forum (FORUM) has been appointed as a RRDRP service provider.

The Trademark PDDRP addresses situations for parties who believe a Registry Operator has acted in bad faith, with the intent to profit from the systematic registration of infringing second-level domain names or who has otherwise used the top-level domain for an improper purpose in violation of another’s trademark rights. The Asian Domain Name Dispute Resolution Centre (ADNDRC) and FORUM have all been selected as Trademark PDDRP providers.

ICANN would like to thank everyone who responded to the Request for Proposals (RFPs). Additional providers may be appointed to provide RRDRP and Trademark PDDRP services.

View the RFPs for each dispute resolution procedure:

Learn more about:

This ICANN announcement was sourced from:

ICANN Heads “Home” To LA For October 2014 Meeting

ICANN logoAt the ICANN Board meeting held on 18 May, the Board agreed the October 2014 meeting will be held in Los Angeles.

The meeting, the third for the year, will be held from 12 to 17 October and follows “a thorough review of all available meeting venues in North America and finds the one in Los Angeles, California to be the most suitable.”

The meetings in 2014 will therefore be held in Singapore (23-27 March), London (22-26 June) and LA.

Among other decisions in the board meeting, the Board also approved “the application of ACDR [Arab Center for Dispute Resolution] to become a UDRP provider, and advises the President and CEO, through the General Counsel’s Office, to enter into discussions with ACDR regarding the process for ACDR’s provision of UDRP services.”

Disputes Lodged With National Arbitration Forum Fall Per Domain; New Cheaper, Faster URS Launched

National Arbitration Forum logoThe National Arbitration Forum (NAF) announced yesterday that domain name disputes lodged with it in 2012 passed 20,000 for the year, while the number of cases dropped to 2060 from the 2011 figure of 2082.

The NAF is one of the two main providers of dispute resolution services, the other being WIPO, approved by ICANN, under policies like the Uniform Domain Name Dispute Resolution Policy (UDRP).

Like the WIPO results for 2012, the NAF figures show a drop in the disputes lodged when compared to the total number of domain names registered globally. The total number of domains for which disputes are lodged seem hard to discover on the NAF website, however it appears they only edged up slightly as actual cases declined (each case can involve more than one domain name).

And with this slight change it should be noted that global domain name registrations increased by 11.8 percent in 2012, according to the Verisign Domain Name Industry Brief.

In 2012, The FORUM was approved as a UDRP Provider for disputes involving .pw, the recently relaunched ccTLD for Palau. Also in 2012, the FORUM bid on ICANN’s Uniform Rapid Suspension System (URS), an inexpensive and rapid means of suspending domain names registered in generic top level domains (gTLDs) launched after January 1, 2013.

“We were thrilled to be announced as the first URS Provider,” said Kristine Dorrain, National Arbitration Forum’s Director of Internet and IP Services. “We believe our years of experience handling tens of thousands of UDRP cases, along with our commitment to utilisation of technology and fair decision-making, contributed to our selection. We’ve been working hard to build and enhance the online filing and case management technologies to ensure a fast, hassle-free URS.”

The URS was billed as cheaper and faster than the UDRP, which typically sees decisions in around 45 days at a price of approximately $1,300. The FORUM plans to offer the URS, which can obtain a suspension in around 20 days, for $375. The FORUM will be posting the Supplemental Rules, FAQs, and demonstrations at domains.adrforum.com, as they become available.

UDRP and URS cases filed with the National Arbitration Forum are heard and decided by Dispute Resolution Panelists who specialise in domain name, trademark, copyright and/or e-commerce law. Panelists are located around the world and can conduct proceedings in several languages including Dutch, English, French, Japanese, Polish, Portuguese, Spanish, Russian, Chinese and Korean.

While the UDRP applies to domain names registered in new or existing gTLDs, the URS will only apply to domains registered in new gTLDs as well as select country-code TLDs that elect to adopt it.

ICA Comments on ACDR’s Revised Application to Provide UDRP Services by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoSeveral weeks ago, ICA intervened with ICANN’s Board to request that the revised application of the Arab Center for Dispute Resolution (ACDR) be withdrawn from its Consent Agenda and put out for public comment. (see internetcommerce.org/ACDR_UDRP). The Board complied, which we appreciate, in light of the fact that the application had lain dormant for two and a half years. (see internetcommerce.org/ACDR-UDRP_Board_Deferral)

Last Friday ICA filed its comment on the revised ACDR proposal. While the revised application has some modest improvements compared to the 2010 version, there are still many unanswered questions – particularly how ACDR will assure that proposed panelists with no UDRP experience will receive adequate training, what steps will be taken to assure that the full panelists roster will be utilized on an unbiased basis, and how ACDR will assure that its UDRP adjudications are consistent with prevailing practice and don’t develop in a manner that encourages forum shopping by complainants.

However, regardless of the merits of this particular application, ICA will continue to oppose the accreditation of the ACDR or any other potential UDRP provider until ICANN adopts an enforceable mechanism to assure uniform disposition of UDRP cases regardless of which arbitration provider is selected for their resolution. It is simply inexcusable that ICANN accredits UDRP providers — and thereby provides them with the power to extinguish or transfer domains — when there is no standard contract that sets enforceable standards. Given the value of many domains and the basic rights that any registrant is entitled to, we intend to keep pushing for ICANN to do the right and responsible thing.

While the initial ACDR comment period closed on March 22nd, the reply period is open until April 13th – anyone who wishes to file a comment can still do so by going to www.icann.org/en/news/public-comment/acdr-proposal-01mar13-en.htm.

The text of ICA’s comment letter follows–



Philip S. Corwin, Founding Principal
1155 F Street, NW  Suite 1050
Washington, DC 20004


                                                                                                March 22, 2013


By E-Mail

Internet Corporation for Assigned Names and Numbers

12025 Waterfront Drive, Suite 300

Los Angeles, CA 90094-2536

Re: Revised Proposal of the ACDR to Serve as a UDRP Dispute Resolution Service Provider


I am writing on behalf of the members of the Internet Commerce Association (ICA). ICA is a not-for-profit trade association representing the domain name industry, including domain registrants, domain marketplaces, and direct search providers. Its membership is composed of domain name registrants who invest in domain names (DNs) and develop the associated websites, as well as the companies that serve them. Professional domain name registrants are a major source of the fees that support registrars, registries, and ICANN itself. ICA members own and operate approximately ten percent of all existing Internet domains on behalf of their own domain portfolios as well as those of thousands of customers.

These comments reflect our views on the  “Revised Proposal of the ACDR to Serve as a UDRP Dispute Resolution Service Provider” that was posted for public comment on March 1. 2013 at www.icann.org/en/news/public-comment/acdr-proposal-01mar13-en.htm.


Executive Summary

The major points made in this comment letter are:

  •          ICA continues to oppose the accreditation of the ACDR or any other potential UDRP provider until ICANN adopts an enforceable mechanism to assure uniform disposition of UDRP cases regardless of which arbitration provider is selected for their resolution.
  •          In the absence of such a mechanism the potential for forum shopping at the expense of registrant rights remains a major concern for ICA members.
  •          ACDR’s application continues to raise questions about the qualifications and preparatory training of many of its proposed panelists, as well as its overall commitment to administering UDRP cases in a fashion that is consistent with established practices.



Prior Background

The ICA previously commented on ACDR’s request to become an accredited Uniform Dispute Resolution Policy (UDRP) provider when it was first put out for public comment in September 2010. Our full statement can be found at  forum.icann.org/lists/acdr-proposal/msg00005.html; we ask that it be incorporated in conjunction with this comments because most of the points raised at that time remain highly relevant.

The Executive Summary of that comment letter made the following points:

  •           ICA strongly opposes the accreditation of the ACDR or any other new UDRP arbitration provider until ICANN establishes a standard contract or other uniform and enforceable agreement with all providers of UDRP services.
  •          Such a standard agreement is the only means of assuring all business entities that have made substantial investments in acquiring and developing domains of procedural and substantive due process when a UDRP action is initiated by or against them.
  •          A standard agreement is also the only means by which to prevent forum shopping, by which newly accredited providers seek to influence complainants’ arbitrator choice by further tilting the system against registrants.  We have already witnessed the CAC attempt this through their proposal to offer an unacceptably condensed version of the UDRP through amendment of their Supplement Rules. ACDR’s request that they be allowed to process up to 5,000 cases during their initial start-up period – an astronomical projection that is higher than the total combined number of annual case arbitrations administered by the two leading UDRP providers – can only raise questions about how they intend to attract many thousands of filings.
  •          Regardless of whether ICANN establishes and enters into such standard UDRP provider agreement, the ACDR’s Proposal contains numerous material deficiencies that require its rejection by ICANN.

Two and one half years later, ICANN has taken no actions to address the concerns raised in the first two bullet points. There continues to be no “standard contract or other uniform and enforceable agreement with all providers of UDRP services” or even the initiation of a process leading to one – notwithstanding the fact that the approaching advent of more than a thousand new gTLDs, including International Domain Names IDNs) in Non-Latin scripts, as well as ICANN’s own ongoing outreach to the developing world and diversification of its own operational locations, would indicate that there will inevitably be applications from new entities seeking to be UDRP providers based in regions other than Europe and the United States, where the two dominant providers (WIPO and NAF) are now located. It astounds us that ICANN, after devoting so much time and effort to protection of trademark rights at new gTLDs, has failed to undertake similar steps relating to its own UDRP notwithstanding divergent approaches to enforcement of IP and domain rights in various national jurisdictions and geographic regions.

More disturbingly, in addition to taking no steps to better ensure uniformity of UDRP administration, ICANN recently announced that NAF would be the sole provider of Uniform Rapid Suspension (URS) complaints for the foreseeable future, notwithstanding NAF’s shoddy record of allocating nearly half its UDRP caseload to less than five percent of its listed panelists (dnattorney.com/NAFdomainnamedisputestudy2012.shtml); as well as ICANN’s receipt of applications to provide URS arbitration from new providers with estimable credentials and innovative approaches.

Further, despite the unanimous recommendation of the STI-RT that “ICANN should discourage forum shopping among URS service providers through its URS implementation and contracts”.   (emphasis added – gnso.icann.org/issues/sti/sti-wt-recommendations-11dec09-en.pdf), for now it appears that NAF and ICANN are bound solely by a 2-page Memorandum of Understanding (MOU) that fails to explicitly address any of the questions raised by NAF’s appointment, and which has no enforcement mechanism. (www.icann.org/en/about/agreements/partnership-mous/naf-mou-20feb13-en.pdf). ICANN apparently intends to extend the unjustified practice of accrediting UDRP providers absent contractual compliance mechanisms to the new field of the URS, in contradiction of the community’s unanimous policy recommendation.

In short, while domain registrants remain the primary source of ICANN funding, they are getting continued short shrift from ICANN when it refuses to recognize and address the need for an enforceable means to ensure uniform and effective UDRP (and now URS) administration.

Turning back to the original 2010 ACDR application, the majority of comments received on the ACDR application either opposed it or requested substantial revisions and clarifications. ICA’s comment letter opposed any new accreditations of UDRP providers and also cited material deficiencies in the ACDR application (forum.icann.org/lists/acdr-proposal/msg00005.html). The Summary of the statement filed by the Business Constituency stated “The Business Constituency (BC) cannot support approval of this or any other UDRP accreditation application at this time on the grounds that no new UDRP providers should be accredited until ICANN implements a standard mechanism for establishing uniform rules and procedures and flexible means of delineating and enforcing arbitration provider responsibilities.” (forum.icann.org/lists/acdr-proposal/msg00004.html). And the comment of the IP Constituency (IPC) noted that “any enthusiasm for the ACDR’s proposal must be tempered by the desire to ensure a predictable and equitable system of domain name dispute resolution – as opposed to any profit-driven “race to the bottom” between UDRP providers”, and listed numerous revisions and suggestions that it wished to see made to the ACDR proposal. (forum.icann.org/lists/acdr-proposal/msg00006.html)

The ICANN staff Summary and Analysis of the comments received stated:

The commenters were of varied opinions on the ACDR’s proposal: Three commenters (George Kirikos, the BC and the ICA) were expressly against the ACDR proposal. The IPC noted its conditional approval subject to incorporation of suggested changes, and only one commenter (Alramahi) submitted unqualified support for the ACDR proposal.

It also noted:

Some areas identified by the IPC and ICA include:

(i) Provision of more detail on track record in handling alternative dispute resolution proceedings;

(ii) A more precise statement regarding the case load administrative capacity that the ACDR anticipates handling;

(iii) Better documentation regarding the creation of training materials;

(iv) Revision of specific terms in the supplemental rules to better align with the UDRP process;

(v) Revision to the ACDR’s fee structure; and

(vi) Release of confidential internal operating procedures.

ICANN is providing the ACDR with a copy of this summary and analysis so that the ACDR may determine how to respond and whether it wishes to revise any portion of its proposal. When a revised proposal is received, the proposal will be reviewed to determine if further public comment is advisable prior to presentation to the Board for consideration. Further comment may not be necessary, for example, if the ACDR elects to not alter its fee schedule, as the UDRP allows providers to set their own fees.

Separate from the ACDR proposal, ICANN has been undertaking a process to review its relationships with UDRP providers, and that review is ongoing. (Emphasis added)

We note that while the 2010 staff Summary and Analysis refers to an ongoing review process to review ICANN’s relationships with UDRP providers, we know of no information being provided to the community in regard to the status or results of such a review. If such a review has indeed been undertaken the community should be informed of its status and all relevant information pertaining to it. If such a review process has been halted or remains incomplete then we suggest it be accorded a high priority for near-term completion.

As described above, nearly two and a half years have passed since the ACDR proposal was put out for public comment. The majority of comments opposed approval or requested substantial revision and additional information. We were therefore very surprised when the revised ACDR proposal suddenly appeared on the Board’s Consent Agenda for its Special Meeting of February 28, 2013  with no information presented to the ICANN community as to whether any modifications have been made to the original ACDR proposal, and whether any additional clarifying information has been submitted.

In response to that listing, ICA dispatched a letter to CEO Chehade and Board Chairman Crocker on February 26, 2013 in which we requested that the Board:

  •          Defer action on this matter until at least its next scheduled meeting.
  •          Publish the pending ACDR proposal for community review and comment.

We are aware that similar requests were received from both the BC and IPC. We appreciate the fact that the Board responded to those communications by deferring action on the ACDR application and by having staff put it out for the public comment we are now engaging in.

The Revised Application

Given the fact that ICANN has failed to even initiate a process for developing a standard enforceable mechanism for ensuring uniform UDRP administration among disparate providers, ICA must continue to oppose approval of the ACDR application – or that of any other entity seeking UDRP accreditation.

The principal concern of ICA members, due to the fact that it is complainants who determine both the timing of UDRP filings and the provider with which they file, is that the lack of such a mechanism will inevitably encourage forum shopping as proliferating ranks of UDRP providers seek to gain market share. The means by which such forum shopping can be encouraged – price reductions and concomitant dilution of high quality legal analysis, supplemental rules that unduly favor complainants, and development of a reputation as a complainant-biased forum – would all come at the expense of registrants’ procedural and substantive rights. While the UDRP does permit appeal to courts of relevant jurisdiction that is an expensive fallback as well as one that varies in effectiveness depending on the presence and substance of statute law in different national jurisdictions.

Beyond that basic cause for opposition, the revised ACDR application also contains statements and deficiencies that argue for its rejection.


The ACDR’s revised application of March 1, 2013,  in the application section “Our Vision”, states:

While we put impartiality and professionalism first, we also take into account the necessity for gradual invergance [sic] of the rules applied by UDRP providers. Hence, we acknowledge the importance of constant interaction among the existing providers in order to stay aware of the conflicting policies and to interactively discuss them.(Emphasis added)

While we commend the ACDR for recognizing the necessity of uniformity of the rules applied by UDRP providers and its commitment to “constant interaction” in pursuit of that goal, no UDRP provider has any authority to require another to apply the rules in a consistent manner; rather, it is ICANN that accredits all UDRP providers and therefore ICANN’s responsibility to establish the enforceable mechanism that can best achieve that goal.

Further, elements of this statement are deeply concerning. The UDRP is supposed to be “Uniform” in application regardless of which arbitration forum a complaint is filed in. Yet the statement’s reference to the “necessity for gradual invergance [sic] of the rules applied by UDRP providers” appears to presume that such divergence now exists, is evidenced by  “conflicting policies”, and is acceptable — with uniformity just a distant goal to be reached in gradual steps. We absolutely reject that viewpoint.

Listed Neutrals

The application’s Initial List of Neutrals also raises concerns:

In line with the vision of ACDR, panelists will be invited from different nationalities and with different approaches to IP and other related fields. The selection of the panelists will be according to their experience and knowledge. (emphasis added)

The reference to “different approaches to IP” seems at sharp odds with the overarching need for uniform approaches in UDRP jurisprudence. Also, while many of the initial panelists listed in Annex 1 have impressive credentials, fifteen of the thirty-three listed neutrals have no prior experience in UDRP administration. This raises the issue of how such panelists will be made familiar with existing UDRP practice prior to initiating their own participation in the process, and the application provides no indication of what steps or requirements will be undertaken, or training materials and instruction provided, to assure that these novice panelists receive extensive education in contemporary UDRP practice to assure consistency with prior case law.

There is also no indication of what methods will be utilized to assure that the entire list of panelists is assigned cases on a random and dispersed basis. Indeed, citing the NAF precedent, there is nothing to prevent ACDR from assigning the bulk of its cases to just a few panelists, all of them being those who lack any prior UDRP experience.

Self-Referential Perspective

Several statements in the application give rise to concerns that the ACDR will be focused primarily on its own UDRP practice absent sufficient reference to more authoritative sources such as the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (“WIPO Overview 2.0”) (http://www.wipo.int/amc/en/domains/search/overview2.0/index.html). Again, this raises the prospect of divergent practices that encourage forum shopping.

For example, in the application’s section on Online Discussion, it states:

The ACDR will establish an online discussion medium, accessible by panelists only, enabling them to communicate with each other and exchange perspectives and experience on all matters relating to the Center’s UDRP process and legal practice of domain dispute resolution.

Any significant legal perspectives or points of critical practice importance which would have the effect of further development in the field will be published on the Center’s website in the form of panelists’ views on UDRP practice.(Emphasis added)

And then, in the section titled Publishing the Decision of the Panelists in the Proceedings, it further states:

ACDR will have its own system/search tool for researching the Center’s decisions resolved under UDRP. The tool will assist complainants, respondents, their counsel, panelists, providers and members of the public who are concerned with the DNS, the UDRP practice, as well as IP protection in general, in researching decisions on domain names. (Emphasis added)

These statements raise concern that, due to the focus on the “Center’s UDRP process and legal practice”, and through development of a search tool focused only on the “Center’s decisions”,  there may arise an ACDR arbitration practice that over time begins to differ in significant ways from that of other UDRP providers.

Instead, ICANN needs to foster the development of tools that provide comprehensive information about UDRP practice among all accredited providers, and that fosters a uniform approach to its application and consistent outcomes in every region of the world.

Caseload projections

The ACDR’s original proposal in 2010 requested that it be allowed to process up to 5,000 cases annually during its initial startup period – a staggering number for an untested provider, about equal to the number of combined annual cases heard by both WIPO and NAF.

The revised proposal has considerable downsized its ambitions, stating: “During the start-up period, the ACDR will be ready to start with a limitation not exceeding 50 per month.” That would still total 600 decisions per year, or more than one-tenth of total UDRP cases at present levels. And, following the start-up period, the ACDR might even decide a greater annual percentage of cases, especially if it adopts an approach to cases and procedural and pricing differences that encourage complainants to favor it.

In sum, the ACDR will, if accredited, likely start out as a significant provider of UDRP dispute resolution and will have the capability to rapidly grow its caseload. These facts again speak to the pressing need for a mechanism to ensure a uniform approach to case administration.


Notwithstanding our comments, the ICA is not fundamentally opposed to the accreditation of additional UDRP providers, and we recognize that ICANN will probably receive additional applications in coming years. This makes it all the more incumbent for ICANN to initiate an approach to establish a standard enforceable mechanism to assure uniform application of the UDRP no matter which arbitration forum is involved. While elements of the ACDR application that cause us concern might well be addressed through explanation or modification, only ICANN has the power to address ICA’s fundamental concern. It is very unfortunate that, more than two and a half years after submission of its original application, we must still oppose ACDR’s revised application due to ICANN’s fundamental neglect of this matter.

We hope that ICANN finds our views useful Thank you for considering them in this important matter affecting the basic rights of domain registrants.


Philip S. Corwin

Counsel, Internet Commerce Association

This article by Philip S. Corwin from the Internet Commerce Association was sourced with permission from: