Tag Archives: National Arbitration Forum

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.

ICANN Appoints Additional URS Provider

ICANN new generic Top Level Domains logoAsian Domain Name Dispute Resolution Centre (ADNDRC) and ICANN have signed a Memorandum of Understanding establishing ADNDRC as a Uniform Rapid Suspension System (URS) provider. ADNDRC is well known to the Internet community as an established Uniform Domain Name Dipute Resolution Policy (UDRP) provider, with offices in Beijing, HongKong, Seoul and Kuala Lumpur. It has a proven track record of administering UDRP cases since its appointment as a UDRP provider in 2001.

As previously announced, ICANN appointed The National Arbitration Forum (FORUM) as a URS Provider and expects to appoint one or more additional providers in the near future. The appointment process is similar to that of appointing UDRP providers in which consideration is given to achieving competitive provisioning and geographical spread of providers.

About URS

The URS is a rights protection mechanism in ICANN’s New gTLDs Program that facilitates rapid suspension of domain names in clear-cut cases of trademark infringement. It is intended to complement the existing UDRP by offering a lower-cost, faster path to resolution.

Learn more about Uniform Rapid Suspension

This ICANN announcement was sourced from:

ICANN Announcement of NAF as First URS Provider Raises Multiple Questions by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoLast week ICANN announced that the National Arbitration Forum (NAF) of Minneapolis, MN had been appointed to administer the new Uniform Rapid Suspension (URS) rights protection mechanism for new gTLDs. (newgtlds.icann.org/en/announcements-and-media/announcement-2-20feb13-en) The announcement raises more questions than it answers.

Despite the press announcement’s claim that NAF “has a proven track record boasting resolution of over 19,000 claims in 12+ years of administering UDRP cases” ICA has a far more jaundiced view of what its track record proves. One year ago ICA asked ICANN to conduct an investigation of NAF’s UDRP practices after two particularly horrendous decisions were rendered by its examiners (internetcommerce.org/NAF_UDRP_FAIL) – and the response we received from ICANN staff was quite unsatisfactory.

A recent study of NAF’s pattern of examiner utilization was also quite disturbing – “Of the approximately 4,144 cases between March 5, 2010 and July 4, 2012, 7 mainly NAF-appointed panellists were appointed to 1,921 or 46% of all cases. There are currently approximately 136 panellists on NAF’s roster. This means that 5% of panellists decided 46 per cent of cases.” (dnattorney.com/NAFdomainnamedisputestudy2012.shtml)

So here are some questions for which we do not find answers in ICANN’s press release:

  • What will NAF charge to administer a URS case? We presume that it will fall within the $300-$500 range promised by ICANN for the URS, but the press release contains no information on this. It does note that NAF “has already developed, and is currently operating a TLD-specific rapid relief system” — but that system is administered for .XXX and NAF charges about the same fee for that as for a UDRP.
  • How will “default cases” be handled by NAF? Under pressure from the GAC, ICANN’s Board arbitrarily reduced the time in which a registrant could respond to a URS notice from 20 to 14 days. Two weeks is not a lot of time for a registrant to understand what a URS entails, prepare a response or hire competent counsel to do so, and file it – especially when one considers that the complainant has had unlimited time to prepare its filing and can time its submission to holidays and other periods when responding may be delayed. One of the most debated matters in URS administration was what whether any substantive evaluation of the complaint should be undertaken when the registrant has not filed a response within fourteen days – the “default case” situation. While NAF had previously stated that it did plan to engage in some type of substantive evaluation we have no idea of what it has actually committed to in its application and whether it affords adequate due process to a registrant.
  • Will other URS providers be appointed, and when? The press release implies that they will, with the headline stating that NAF is the “First URS Provider” and the release itself stating that NAF “will be one of multiple providers appointed to administer URS services. The process will be similar to that of appointing UDRP providers in which consideration is given to achieving competitive provisioning and geographical spread of providers.” Yet we have been told by at least one other well-qualified applicant that it had been told by ICANN that it intends to have only one URS provider for the indefinite future.
  • Will NAF – and any future additional URS providers – be placed under a standard and enforceable contract? ICANN likes to point to the work of the Special Trademark Issues Review Team (STI-RT) as a positive example of how implementation of policy should proceed. We also gave the STI-RT high marks for its output – but its work counts for naught if ICANN doesn’t implement it. Its final report was quite clear on this issue – a unanimous consensus 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)
  • Will ICANN take steps to assure that the same pattern of favoring a few examiners out of its entire roster will not be repeated in NAF’s URS administration? Again, the STI-RT was unanimously in favor of such steps: “Examiners within a service provider shall be rotated to avoid forum shopping. It is strongly encouraged that the URS service provider accept all credentialed and properly trained URS examiners…The URS Service Providers shall avoid “cherry picking” of examiners that are likely to rule in a certain way.”
  • Finally, and perhaps most importantly, why was NAF chosen and other applicants rejected, at least for now? ICANN has explained nothing about which entities responded to its solicitation of bids to provide URS arbitration services or what criteria it used in selecting NAF. The community deserves to know why NAF, an entity that withdrew from arbitration of all consumer credit disputes after being sued in 2009 by the Minnesota Attorney General for “consumer fraud, deceptive trade practices, and false advertising” www.ag.state.mn.us/PDF/PressReleases/SignedFiledComplaintArbitrationCompany.pdf, and which continues to “cherry pick” a small number of favored examiners to decide almost half of its UDRP cases, was deemed the most worthy applicant to initiate administration of the URS.

ICA plans to raise these questions directly with ICANN on behalf of its members as well as all registrants in new gTLDs who may face a URS procedure in the future. If potential new gTLD registrants believe that they face potential loss of use of their domains because they may be subject to an unprofessional and biased URS arbitration process it will dampen enthusiasm for domain registrations at new gTLDs generally.

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

ICANN Appoints First URS Provider

ICANN new generic Top Level Domains logoThe National Arbitration Forum (FORUM) has secured the first appointment by ICANN to administer the Uniform Rapid Suspension System (URS). FORUM submitted an outstanding proposal demonstrating how it would meet all requirements presented in the RFI [PDF, 112 KB] and detailing its implementation approach. The company has a proven track record boasting resolution of over 19,000 claims in 12+ years of administering UDRP cases. Additionally, FORUM has already developed, and is currently operating a TLD-specific rapid relief system.

ICANN would like to thank everyone who responded to the RFI. FORUM will be one of multiple providers appointed to administer URS services. The process will be similar to that of appointing UDRP providers in which consideration is given to achieving competitive provisioning and geographical spread of providers.

URS is a rights protection mechanism for new gTLDs that facilitates rapid suspension of domain names in clear-cut cases of trademark infringement. It is intended to complement the existing Uniform Domain-Name Dispute Resolution Policy (UDRP) by offering a lower-cost, faster path to resolution.

Learn more about Uniform Rapid Suspension

This ICANN announcement was sourced from:

US Govt Wants New Trademark Protections at .Com and a Default Judgment URS by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoOn the eve of ICANN’s 45th public meeting in Toronto — the last such meeting for the next half year until the April 2013 Beijing event — the United States government has urged ICANN to consider adding new trademark protections at .com and other incumbent gTLDs, and to adopt a Uniform Rapid Suspension (URS) model that includes a default judgment procedure. These proposals could dramatically alter the balance between complainants and registrants in both UDRP and URS cases involving domains at new and existing gTLDs, and ICA intends to fully engage in the ensuing debate.

These suggestions are contained in an October 4th letter sent by Assistant Secretary for Communications and Information Lawrence Strickling to ICANN Board Chairman Steve Crocker (letter available at www.icann.org/en/news/correspondence/strickling-to-crocker-04oct12-en).

In regard to considering new trademark protections beyond those being implemented for the new gTLD program, the letter urges ICANN to “explore additional trademark protections across all TLDs, existing and new, through community dialogues and appropriate policy development processes in the coming year”. (Emphasis added) This call for initiation of a policy development process (PDP) for altering trademark protections at incumbent gTLDs is at direct odds with a mid-December 2011 resolution passed by ICANN’s GNSO Council, made under substantial pressure from the Governmental Advisory Committee (GAC) and major brand interests, to defer initiation of any PDP until 18 months after the first new gTLD is delegated to the root. GNSO Resolution 20111215-1 (available at gnso.icann.org/en/resolutions) states:

RESOLVED further, the GNSO Council requests a new Issue Report on the current state of all rights protection mechanisms implemented for both existing and new gTLDs, including but not limited to, the UDRP and URS, should be delivered to the GNSO Council by no later than eighteen (18) months following the delegation of the first new gTLD.

At the time, ICA and many other groups were urging the GNSO Council to initiate a PDP on procedural UDRP reform based on a decade of UDRP experience, and rejected the notion that ICANN and the community lacked the capacity to simultaneously implement the new gTLD program and consider procedural improvements. When the GNSO passed on that option, it was expected that the first new gTLD would be delegated in early 2013 and that the PDP would therefore kick off in mid-2014 – but intervening events have now pushed the schedule back by at least a year.

We see several major issues raised by Secretary’s Strickling’s suggestion:

  • As it seems impossible to envisage changing trademark protections at .com et al without opening up the substance of the UDRP, acquiescing to the suggestion less than a year after its decision to defer UDRP reform would make the GNSO Council appear to be akin to a yo-yo directed by Washington, and would also kick off the discussion without it being informed by the requested Issue Report.
  • Implementing new rights protection measures (RPMs) at new gTLDs, which don’t yet exist and where registrants will obtain domains with clear notice of the new rules, is quite a different exercise than changing the substantive rules for existing gTLDs that are comprised of more than 100 million domains, many of which are highly valued in the secondary market. This debate is likely to feature far more controversy than even the heated discussion that accompanied development of the new gTLD RPMs, and initiating it while those RPMs are still being implemented could result in yet further delay in the launch of new gTLDs.
  • While ICA continues to favor the initiation of a PDP on procedural UDRP reform, we believe that any discussion of substantive UDRP reform should await experience with the performance of the Trademark Clearinghouse (TMC) and URS at new gTLDs. It would be irresponsible to consider imposing these untested RPMs on 100 million-plus incumbent gTLD domains before we have analyzed their real-world performance, especially in regard to their effect on the legitimate rights of domain registrants.

Again, there is plenty to evaluate and decide in any procedural UDRP PDP without debating substantive changes to rights protections. ICA has advocated that the heart of such reform be the development of a standard contract for all UDRP providers that delineates and limits their powers and provides ICANN with effective and flexible enforcement tools, with clear goals such as assuring uniformity and integrity in decision-making and the prevention of forum shopping. The need for such a contractual framework was illustrated again by the recent updating of attorney Zak Muscovitch’s survey of National Arbitration Forum (NAF) panelist selection procedures. The updated August 2012 study (available at dnattorney.com/NAFdomainnamedisputestudy2012.shtml) found that, while NAF claims to have 136 panelists on its trademark experts roster, 70 of whom (about half) were from the United States, in actual practice only seven of these panelists, all from the U.S.,  decided almost half (45.9 percent) of UDRP complaints filed with NAF.

So, clearly, one provision of a standard UDRP provider contract could be that when a provider is accredited by ICANN on the basis of claiming a large number of panelists from a variety of jurisdictions it should be required to actually use those panelists on a random basis — and not direct nearly half of all cases to a favored five percent of those panelists. The Muscovitch study certainly raises further questions about the quality of decisions provided by the number two UDRP provider. Earlier this year ICA requested that ICANN investigate NAF’s UDRP practices (see internetcommerce.org/NAF_UDRP_FAIL) and the response we received to our letter was unsatisfactory and indicated that ICANN takes UDRP provider oversight less seriously than it should. Frankly, we have always found it outrageous that ICANN accredits UDRP arbitration providers to extinguish or transfer valuable domain assets without any written or enforceable standards – trademark owners would never stand for a private entity being given such powers over their assets absent written and credible controls.

We do note that in Secretary Strickling’s letter the NTIA does not take a position for or against any potential trademark protection proposal, and does advocate that “ICANN should continue an open and transparent dialogue between all actors in order to find solutions to these issues”. (Emphasis added) ICA definitely intends to be a clear and consistent voice in that dialogue for the proposition that registrant rights must receive balanced treatment vis-à-vis trademark rights.

As for the letter’s advocacy for a clear linkage between the TMC and URS and to “provide efficient default judgment procedures” in the URS, we have two big concerns —

  • First, while we are open to a linkage between the two new RPMs, a final decision must await a determination of what data will actually be contained in the TMC – exact matches of trademarks, or all sorts of additions and variations as some brand owners are urging?
  • Second, we remain strongly opposed to a default judgment procedure that would automatically suspend a domain when the registrant fails to file a response in the now-truncated time period of 14 days. During this past week’s URS webinar there was substantial pushback from many quarters against adopting this proposal.

URS default judgments would be too much like the IP-based, due process-lacking “domain censorship” that would have been authorized by the SOPA legislation that incited a netizens revolt earlier this year. It is also just too prone to potential abuse, as no human expert would be checking to see if the rights holder complainant actually possessed the rights it claimed, or reviewing the domain name to see if it actually constituted a black-and-white, slam dunk instance of cybersquatting. We have nothing against a URS that is as cost-efficient as possible – but not at the cost of cheapening domain registrants’ rights.

We already expected the upcoming Toronto meeting to feature quite a bit of heated discussion of the final shape of RPMs for new gTLDs. By throwing .com and other incumbent gTLDs into the mix, and pushing the default judgment proposal, the Strickling letter should raise the temperature to an even higher level.

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

Differences In Lodging UDRP Complaints With WIPO And NAF

Ever wondered what the difference is in lodging a UDRP complaint with WIPO or NAF? Doug Isenberg says he’s often asked this question and so has set out ten differences when lodging complaints with the two organisations, who handle 97% percent of all complaints.

Isenberg notes the World Intellectual Property Organisation handles 53 percent of the complaints while the National Arbitration Forum handles 44 percent. And he also serves as a panellist for each, as well as for the Czech Arbitration Court, which also is a UDRP service provider.

The ten differences between lodging a complaint with WIPO and NAF deal with allowed length of complaints and responses, fees, handling refunds, supplemental filings, extensions of time, public/bank holidays, time taken to publish decisions, location, staff – languages spoken and number and dealing with precedent.

To read Isenberg’s take on the differences in full, go to:

National Arbitration Forum Loses in Disputes Cases To WIPO

The National Arbitration Forum announced they handled a total of 2,082 domain name dispute cases that were filed in their dispute resolution program in 2011, up 18 percent from 2009 (1,759 cases) and down four percent from 2010 (2,177 cases).This compares to the WIPO that handled 2764 cases in 2011, up 31 percent from 2009 when they handled 2107 cases, and up 2.5 per cent from 2010 when it handled 2696 cases.In their announcement, the Forum noted since their first case in 1999, they have resolved nearly 18,000 cases as of the end of 2011. But during 2011 more than 2000 cases were filed with 96.2 percent involving generic top level domain names. There were also around 70 cases involving a .US ccTLD that was resolved under the United States Dispute Resolution Policy (usDRP) while three cases were administered under the United States Nexus Dispute Policy (usNDP).There were also ten cases were administered under the FORUM’s new Rapid Evaluation Service (RES) for .XXX domain names.”Our experience tells us parties, particularly domain name registrants, prefer the National Arbitration Forum because documents are easily accessible in our online portal,” said Kristine Dorrain, Director of Internet and IP Services, who manages the FORUM’s dispute resolution programs at National Arbitration Forum. “Complaint or Response filing is accomplished in just a couple of minutes.”

Virgin Lodges Dispute Over RichardBranson.xxx

The Virgin group of companies is attempting to gain control of the domain name richardbranson.xxx, BBC News is reporting.The registrant of the domain name is unconnected with Virgin boss Richard Branson or Virgin, so now Virgin has lodged a dispute with the National Arbitration Forum.”We have a complaint against the owner of richardbranson.xxx,” a Virgin spokesman said.The full BBC News report is available at:

National Arbitration Forum Launches Dispute Program for .XXX Domain Names

[news release] The National Arbitration Forum (FORUM), an international provider of dispute resolution services, today announced that it has launched the Rapid Evaluation Service (“RES“) on behalf of ICM Registry, operator of the new .XXX sponsored top level domain (sTLD). Like the Uniform Domain Name Dispute Resolution Policy (“UDRP“), the RES is designed to protect trademarks from online infringement. The RES provided by the FORUM allows performers and entertainers an avenue of relief when real or stage names are misappropriated.

ICM Registry has strict eligibility requirements for owning a .XXX domain name and was established for businesses and persons participating in the adult entertainment industry. ICM Registry began accepting applications for domain names during sunrise periods in early September and will be available for general registration on December 6, 2011.

“When ICM Registry approached us and asked us to provide this service, we knew our technological capabilities and experience in domain name dispute resolution would be a good fit,” said Kristine Dorrain, National Arbitration Forum’s Director of Internet and IP Services. ”The result is a streamlined process for the RES, both structurally and technologically. Users are going to like the intuitive features.”

The FORUM has been a UDRP provider for twelve years and has handled more than 17,000 domain name disputes. The FORUM consistently develops technological enhancements that make online filing more efficient, including secure portals for panelists and evaluators to access cases and for parties to access case documents, upload documents, and pay fees.

The FORUM’s paperless case management system permits complainants and respondents to file submissions, upload evidence, request stays, withdrawals, and extensions, and receive decisions in real time. The RES allows respondents who may have missed its quick deadlines to file a late response, even if the final determination has been made.

The FORUM also is handling Charter Eligibility Dispute Resolution Policy (“CEDRP”) cases for ICM Registry for web users who want to challenge the eligibility of a .XXX domain name owner.

ICM’s RES and CEDRP disputes are heard and decided by Evaluators who are lawyers with significant trademark experience. Proceedings take place in English and are entirely document-based. The RES is designed to result in a take down of an infringing domain name in as little as two business days, in appropriate circumstances.

To file a claim see domains.adrforum.com.

The FORUM is available for consultation and can provide customized dispute resolution policies, like the RES or CEDRP, for startup gTLD registries. Please contact Director of Internet and IP Services, Kristine Dorrain, for more information.

About the National Arbitration Forum (FORUM)

Based in Minneapolis, Minnesota, United States, the National Arbitration Forum is an approved provider of the Uniform Dispute Resolution Policy (UDRP) by the Internet Corporation of Assigned Names and Numbers (ICANN). Since 1999, more than 17,000 domain name disputes worldwide have been filed through the National Arbitration Forum’s state-of-the-art case management system. For more information, visit domains.adrforum.com.

This ICM Registry news release was sourced from:

Europe Registry logoTo register your .XXX domain name, check out Europe Registry here.