Tag Archives: UDRP

ICANN and Governance

ICA Tells ICANN to Pull the Plug on IGO/INGO Overreach by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoFor the third time in six months, ICA has told ICANN that the legally questionable and largely unnecessary attempts of International Governmental Agencies (IGOs) and International Nongovernmental Agencies (INGOs) to secure extraordinary protections for their organizational acronyms at second level domains should be met with a firm and resounding “no”.

(Letter available below and at forum.icann.org/lists/comments-igo-ingo-crp-prelim-10mar14/msg00006.html )

The latest occasion for weighing in was the release  of the “Preliminary Issue Report on Access by IGOs and INGOs to the Curative Rights Protections of the UDRP and URS”. ICA has no disagreement with IGOs and INGOs that have trademarked their acronyms  being allowed to utilize the UDRP and URS when they believe their rights have been infringed. But they – and particularly the IGOs – want a lot more than that. They want their acronyms to be permanently blocked  from registration at any new gTLD, and they want a whole new dispute resolution process created just for them in which the appeal from an arbitrator’s decision is to yet another arbitrator – and not to a court of jurisdiction where the domain registrant has a fairer shot at justice.

This new report does an excellent job of chronicling the long and convoluted history of this issue, the questionable legal basis for IGO claims, and the inappropriate nature of ICANN wading further into an area where it could be creating new rights rather than protecting existing rights. What doesn’t compute is the Report’s recommendation that ICANN continue to engage by starting a Policy Development Process (PDP) to modify the UDRP and URS solely for the benefit of the international organizations.

We oppose that, and instead urge ICANN to abide by the unanimously adopted resolution of the GNSO Council on this subject – and doing that, incidentally, would defend and reinforce the multistakeholder policy process that ICANN says it is busy trying to preserve. Besides, it is clear from the report that the issues involved are so complex that any PDP would consumer an inordinate and unjustifiable amount of time and resources for a very small problem that can be readily addressed through existing means.

We hope this will be the end of this subject, but that can’t be taken for granted. The IGOs have filed a new comment (at forum.icann.org/lists/comments-igo-ingo-crp-prelim-10mar14/msg00004.html) that urges the development of a separate process just for them — one that would not allow for appeal to a national court and that would protect rights beyond those in trademark law.

The reply period on this matter stays open until May 6th. So if you don’t believe that IGOs and INGOs should have preemptive rights in valuable noninfringing acronym domains, and if you oppose diluting the due process rights of domain registrants, we’d suggest you go to www.icann.org/en/news/public-comment/igo-ingo-crp-prelim-10mar14-en.htm and file your own comment in opposition to proceeding to the PDP stage.

Here’s our letter –

 

VIRTUALAW LLC

Philip S. Corwin, Founding Principal
1155 F Street, NW  Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
psc@vlaw-dc.com

 

                                                                                                April 14, 2014

By E-Mail

Internet Corporation for Assigned Names and Numbers

12025 Waterfront Drive, Suite 300

Los Angeles, CA 90094-2536

Re: Preliminary Issue Report on Access by IGOs and INGOs to the Curative Rights Protections of the UDRP and URS

Dear ICANN:

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.

This letter addresses the Preliminary Issue Report on Access by IGOs and INGOs to the Curative Rights Protections of the UDRP and URS published for public comment on March 10, 2014[i].

ICA commends the members of the ICANN staff who prepared this Preliminary Issue Report. Overall, it impresses us as a comprehensive discussion of a highly complex subject with a long and convoluted history.

That said, we take strong exception to the Staff Recommendation contained in the Report:

Staff recommends that the GNSO Council initiate a PDP to explore whether, as a first step, it is desirable to modify the UDRP and URS to enable access to and use of them by IGOs and INGOs whose names and acronyms are protected at the second level; and if so, to develop policy recommendations to guide the necessary amendments. In view of the prior work that was done on developing dispute resolution processes applicable to IGOs, Staff further recommends that in initiating the PDP and creating the PDP Working Group (WG), the GNSO Council direct the WG to take into account the various considerations and suggestions outlined in this Issue Report, in particular, the specific issues described in Sections VIII and the additional considerations listed in Section IX of this Issue Report, including the possibility that instead of amending the UDRP and URS, it may be more appropriate to create a separate, narrowly-tailored dispute resolution procedure at the second level modeled on the UDRP and URS to accommodate the particular needs and specific circumstances of protected IGOs and INGOs.

ICA believes that the Issue Report, when fully considered, argues strongly against the initiation of a PDP on this subject. We therefore urge that the Staff Recommendation be altered to delete this recommendation and that it be  replaced it with one that urges IGOs and INGOs to trademark their names and acronyms and to make use of the existing UDRP and URS arbitration procedures if they believe that their rights therein have been infringed.

Prior ICA Comments on this Matter

On October 11, 2013 we filed a comment on the draft “Final Report on Protection of IGO and INGO Identifiers in All gTLDs”[ii]. In that letter we noted that many acronym domains have substantial market value and are registered by individuals and business that have legitimate rights in them and use them in a non-infringing manner that in no way causes confusion with the activities of an IGO or INGO utilizing the same acronym. Therefore we believe that the continuing quest of some IGOs and INGOs to secure blanket protections for their acronyms and prohibit their use in the domain address system by other parties is without merit and should be dismissed by ICANN.

Our pragmatic suggestions for addressing any legitimate concerns consisted of an approach that would:

  • Prohibit registration of the exact full name of any IGO or INGO at the top or second level of any new gTLD.
  • Permit registration of those full names in the Trademark Clearinghouse so that the IGO & INGO organizations benefit from the associated benefits of sunset registrations and generation of a Trademark Notice against exact match registration attempts.
  • Address the highly unlikely possibility of an attempt to abusively register an IGO or INGO acronym at the top level through a new gTLD application via ICANN’s multiple objection processes.
  • Permit IGOs and INGO’s to use the UDRP or URS against any second level acronym domain registration where there is purported evidence of bad faith registration and use.
  • Other than permitting a UDRP filing, keep hands off all incumbent gTLDs.

Then, on December 18, 2013, we filed an additional comment letter[iii] addressing the “Protection of IGO and INGO Identifiers in All gTLDs (PDP) Recommendations for Board Consideration”. That letter expressed general support for the Resolution on this subject adopted unanimously  by the GNSO Council – with the exception of certain recommendations relating to the inclusion of exact matches and acronyms in the Trademark Clearinghouse database. It also expressed gratitude that the GNSO’s recommendations did not adopt a hostile position toward acronyms of the encompassed organizations that are registered at the second level of existing gTLDs.

Reaction to the Preliminary Issue Report

Our review of the Report convinces us that the information it imparts actually makes a compelling case against initiation of a PDP:

  • The PDP may be pointless. The Second WIPO Internet Domain Name Process (WIPO-2) concluded in fall 2001 acknowledged that creating a new and independent administrative procedure similar to the UDRP but solely available to IGOs would involve the creation of new international law through a resolution issued by a competent treaty organ, a memorandum of understanding accepted by national authorities, or a new multilateral treaty.  ICANN has no authority to create new law, only a duty to see that its policies and procedures are in accord with existing relevant law. Indeed, in 2002 an ICANN representative commenting on a WIPO report on this subject noted that “ICANN can only rely on existing international law and, in this respect, takes guidance from the international community, including WIPO. Earlier made observations are correct. ICANN cannot function as a de facto trademark office”.[iv] Further, Article 6ter of the Paris Convention does not require states to protect the names and acronyms of IGOs and INGOs if their use does not suggest to the public a connection or authorization by the concerned organization, or if the use is not of a nature to mislead the public in regard to such connection. And the government of the United States has previously adopted the position that the creation of a new dispute resolution process for IGOs is unnecessary and would create rights beyond those established by Article 6ter of the Paris Convention. Given this history, it is pointless to even consider initiation of a PDP on this subject unless and until it is determined with finality that such an initiative would not exceed ICANN’s powers and place it in the position of creating new legal rights rather than considering procedures to address existing rights.
  • A new arbitration procedure tailored to accommodate IGOs would inevitably prejudice the legal rights of domain name registrants. When WIPO’s Standing Committee on Trademarks, Industrial Designs and Geographical Indications (SCT) further considered this matter in 2002 it recommended that appeals be handled through de novo binding arbitration in recognition of the unwillingness of some IGOs to submit to national law. However, the ability to appeal to a court of competent jurisdiction has been an invaluable protection of the legal rights of domain name registrants seeking to appeal UDRP decisions, and depriving registrants of this ultimate protection is not an acceptable option.
  • A separate arbitration procedure has been opposed by key ICANN constituencies.  In 2007 the Registries Constituency opposed a suggestion from the Intellectual Property Constituency favoring creation of a new arbitration procedure for IGOs, stating that the recommendations “are tantamount to asking ICANN to become an “enforcer of treaties”, which is not its proper role. The treaties in question are not enforced in every signatory nation in the same way, and a globally uniform enforcement system will impinge on national law to some extent. This is “mission creep” and the establishment of a dangerous precedent.” Similarly, in the past the Commercial and Business Users Constituency (CBUC, of which ICA is a member)  “questioned the nature and extent of the problem faced by IGOs, given their registrability in the .int domain and the existence of the UDRP for those IGOs holding trademark rights; they also noted that there seemed to be relatively few documented instances of actual bad faith confusion and were concerned that the WIPO-2 recommendations were disproportionate to the problem.”
  • The PDP would involve so many complex and interacting issues as to be a substantial drain on GNSO Council and staff resources over an extended time period, to the detriment of more important matters having a higher priority. As the Report itself points out, a PDP would involve consideration of at least the following eight matters:
  1. Differences between the UDRP and URS
  2. Relevance of Existing Protections under the AGB for the New gTLD Program
  3. Interplay between this Issue and the Forthcoming Review of the UDRP
  4. The Distinction (If Any) Between IGOs and INGOs for Purposes of this Issue
  5. The Potential Need to Distinguish Between a “Legacy” gTLD and a “New” gTLD Launched Under the New gTLD Program
  6. The Potential Need to Clarify Whether the URS is Consensus Policy Binding on ICANN Contracted
  7. The Need to Address the Issue of the Cost to IGOs and INGOs of Using Curative Processes
  8. The Relevance of the Existence of Legal Protections under International Treaties and/or Multiple National Laws

In addition to those eight discrete issues, the staff further recommends “that in launching the PDP the GNSO Council direct the PDP WG to also work on the following additional topics, in addition to the specific issues outlined in Section VIII above:

(a) Review the deliberations of the 2003 President’s Joint Working Group on the WIPO-2 recommendations as a possible starting point for the PDP WG’s work and consider whether subsequent developments such as the introduction of the New gTLD Program and the URS may mean that prior ICANN community recommendations on IGO dispute resolution are no longer applicable;

(b) Examine whether or not similar justifications and amendments should apply to both the UDRP and URS, or if each procedure should be treated independently and/or differently;

(c) Reach out to existing ICANN dispute resolution service providers for the UDRP and URS as well as experienced UDRP panelists, to seek input as to how the UDRP and/or URS might be amended to accommodate considerations particular to IGOs and INGOs;

(d) Determine what (if any) are the specific different considerations (including without limitation qualifying requirements, authentication criteria and appeal processes) that should apply to IGOs and INGOs;

(e) Conduct research on applicable international law regarding special privileges and immunities for IGOs;

(f) Conduct research on the number and list of IGOs currently protected under Article 6ter of the Paris Convention on Intellectual Property;

(g) Consider whether or not there may be practicable alternatives, other than amending the UDRP and URS, that can nonetheless provide adequate curative rights protections for IGOs and INGOs, such as the development of a specific, narrowly-tailored DRP applicable only to IGOs and/or INGOs; and

(h) Bear in mind that any recommendations relating to the UDRP and URS that are developed by this PDP WG may be subject to further review should the GNSO Council decide to launch a PDP to review the UDRP and all the rights protection mechanisms that were developed for the New gTLD Program.”

We would submit that there are simply too many “moving parts” in the contemplated PDP for timely or comprehensible resolution. It would probably take years to fully consider all of them separately and in relation to one another. This PDP would require an inordinate expenditure of GNSO Council and staff time and resources to address an undocumented problem that may not even be amenable to solution through  ICANN efforts. And it also may coincide with a comprehensive review of the UDRP that could alter some aspects of that administrative arbitration procedure and thereby require a complete reset of the proposed IGO/INGO PDP.

Conclusion

Again, while we commend ICANN staff for a well-researched, objective, and comprehensive treatment of this long-standing and complex dispute, we strongly oppose the Staff Recommendation that a PDP should be initiated.

Instead, we urge ICANN to reaffirm its support for the bottom-up, private-sector led, multi-stakeholder  policy development process by embracing the unanimously adopted GNSO Council resolution on this matter. IGOs and INGOs that have concerns about potential infringement of their official names and the acronyms thereof can readily file for trademark protection and utilize existing rights protection mechanisms against any second level domain that  they believe is infringing their rights; and of course they can also utilize available judicial options. That approach accords them equal protection of their legitimate rights without depriving domain registrants of the full legal protections provided under existing arbitration procedures.

We appreciate your consideration of our views in this matter.

Sincerely,

Philip S. Corwin

Counsel, Internet Commerce Association

Domain Name Disputes, ICANN and Governance

ICANN Retreats on Opposition to Standard Contracts with UDRP Providers by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoWhile it took three months, ICANN recently responded to the Business Constituency’s fall 2013 letter raising questions about the UDRP Status Report issued the day after the conclusion of the July 2013 Durban ICANN meeting. In a key clarification, ICANN’s response concedes that the Report does not predetermine the outcome of UDRP reform efforts slated to begin in spring 2015 — stating, “As with all PDP recommendations, ICANN would follow the Bylaws in how those recommendations are considered and implemented…the Status Report was not intended to cause any confusion or supplant any future community discussion on the issue of ICANN’s relationships with UDRP providers.”

Domain registrants have longed voiced concerns about the lack of adequate uniformity and predictability in UDRP decisions, as well as significant qualitative differences between the many accredited arbitration bodies. ICA has therefore long advocated that ICANN establish standard and enforceable contracts with all UDRP providers to ameliorate these concerns. ICANN’s Business Constituency, of which ICA is an active member, has reached a similar conclusion that standard agreements would be desirable for both trademark owners and registrants — especially as ICANN accredits new and untested regionally based arbitration organizations. The BC therefore posed a series of questions to ICANN about the Status Report in a letter sent on September 18, 2013, with a particular focus on the timing of the Report’s release, the lack of solicitation of public comment prior to its finalization, and its potential impact on future UDRP reform efforts (see internetcommerce.org/BC_Questions_UDRP_Report for background on and text of the BC letter).

ICANN’s full response is provided below; we are not fully convinced by ICANN’s explanation of the timing of the Report’s release, why the Report claimed that the URS was not based on a policy, and why a preliminary version of the Report was not put out for public comment. However, all that is water under the bridge at this point.

What we do find interesting and somewhat encouraging is that, while maintaining its curious position that establishing contracts with UDRP providers would impede ICANN’s ability to take swift corrective action against UDRP providers – something that ICANN has never done in more than a decade of UDRP practice – the response does back away a bit from staunch opposition to creating a standard contract. ICANN concedes that “a contract could be developed that would allow for flexibility in corrective action or graduated penalties” and adds “If ICANN were to see a great expansion of UDRP providers in the future, or if there were increasing need to take corrective action against UDRP providers, the development of a formal contractual regime may indeed become more advantageous than the system that exists today.”

Given its May 2013 accreditation of the Arab Center for Dispute resolution (ACDR) as a UDRP provider, the strong likelihood that additional regional providers will apply for similar approval, and the clear need for an enforceable framework to prevent a race to the bottom in UDRP practice, we believe those conditions will clearly exist when the GNSO takes up UDRP reform next year. ICA will continue to voice registrant’s concerns about the flaws in the existing system and keep on pushing for development of a standard contract.

Here’s the full ICANN letter—

December 19, 2013

Ms. Elisa Cooper

Chair, ICANN Business Constituency

Dear Elisa,

I write in response to the Business Constituency’s 18 September 2013 note regarding the “UDRP Providers and Uniformity of Process – Status Report” (Status Report) document.

The Status Report was produced as part of the Board’s consideration of the Arab Center for Dispute Resolution’s application to serve as an approved dispute resolution provider under the UDRP, which was approved on 18 May 2013. See http://www.icann.org/en/groups/board/documents/resolutions-

18may13-en.htm#1.d. The decision on the ACDR’s application was taken only after further public comment was received and analyzed, including the inputs from the BC. In its rationale for the resolution, the Board noted “the Board also requested that staff report to the community on how ICANN’s earlier consideration of UDRP provider uniformity issues was concluded. As a result, a briefing paper has been prepared and will be publicly posted.” The Status Report is that briefing paper. In fact, a draft of the Status Report was presented to the Board in advance of its decision on the

ACDR application and included in the Board Briefing Materials posted with the minutes of 18 May 2013. See http://www.icann.org/en/groups/board/documents/briefing-materials-3-2-18may13-en.pdf, at page 65-68. The Status Report was never intended to be a document similar to a GNSO Issue Report, for which public comment is necessary, as was suggested in your letter.

In response to the questions raised in your letter:

Question 1 – Contracting with UDRP Providers: Entering into formal contracts with the UDRP providers carries with it the formality of following all contractual obligations, including potential notice and cure requirements, as opposed to ICANN’s ability today to take swifter corrective action. The UDRP system to date has operated quite well without having formal contractual tools, and with very few (if any) substantiated reports of provider misconduct that require corrective action. While a contract could be developed that would allow for flexibility in corrective action or graduated penalties, the actual experience with UDRP providers to date does not necessitate the formal contractual development for which the BC seems to be calling. If ICANN were to see a great expansion of UDRP providers in the future, or if there were increasing need to take corrective action against UDRP providers, the development of a formal contractual regime may indeed become more advantageous than the system that exists today.

Question 2 – URS as Implementation of Policy Recommendations: The UDRP was developed through a formal policy development process. The Uniform Rapid Suspension System (URS) was developed as part of the implementation of the GNSO’s 2007 Policy Recommendations regarding the introduction of new gTLDs. ICANN agrees with the BC on this point. However – unlike the UDRP – the rules and procedures of the URS were not developed through a PDP. The Status Report was referencing the status of the URS itself – and not the policy recommendations underpinning the development of the URS – when indicating that the URS is not policy based.

Questions 3 and 4 – Timing of Publication/Availability of Public Comment: Because of the stated purpose of the Status Report, which was to provide an update on ICANN’s review of its relationships with UDRP providers, the document was never contemplated for public comment. Further, because of the informational status of the Status Report, and the fact that no discussion of the Status Report was anticipated at the Durban meeting, the timing of the posting of the Status Report was not considered to be linked to the Durban meeting. As seen through efforts such as the BC’s letter, the ICANN community always has the ability to raise concerns on this issue.

Question 5 – Impact on Future Policy Development Work: As the BC points out in its letter, the GNSO’s future work is expected to include an issue report on the UDRP 18 months after the delegation of new gTLDs. Issues relating to the UDRP provider approval process have long been contemplated as a topic for the policy development process, and were in fact included in the 2011 Final Issue Report on the Current State of the UDRP. See gnso.icann.org/issues/udrp/udrp-final-issuereport-03oct11-en.pdf. Policy recommendations regarding ICANN’s relationship with UDRP

Providers could be an outcome of that PDP (or one in the future). As with all PDP recommendations, ICANN would follow the Bylaws in how those recommendations are considered and implemented.

The Status Report could be considered as an input into the future PDP Working Group discussions if the Working Group wished to do so.

As discussed above, the timing of the publication of the Status Report was not intended to cause any confusion or supplant any future community discussion on the issue of ICANN’s relationships with UDRP providers. Instead, the Status Report represented the completion of ongoing work within ICANN. Thank you for reaching out for clarification on this document.

Best Regards,

Akram Atallah

President, Global Domains Division

This article by Philip Corwin of the Internet Commerce Association was sourced with permission from:
internetcommerce.org/ICANN_Response2BC_UDRP_Status_Report

ICANN and Governance, New gTLDs

ICA on the Record at ICANN Buenos Aires by Philip Corwin, Internet Commerce Association

Internet Commerce Association logoThe following remarks were delivered to ICANN’s Board and senior staff by ICA Counsel Philip Corwin during the Public Forum (buenosaires48.icann.org/en/schedule/thu-public-forum) held on the afternoon of Thursday, November 21st at the 48th ICANN meeting in Buenos Aires, Argentina:

Good afternoon. Philip Corwin, speaking on behalf of the Internet Commerce Association, which I am proud to represent on the Business Constituency [BC].

As the new gTLD program launches there will be a focus on the operation of the new rights protection mechanisms – the RPMs.

We know that trademark owners will be watching. But so will registrants. And their perception of whether domains at new gTLDs have secure legal status, whether they are protected from abusive hijacking and can provide a sound foundation for business and speech, will impact the long-term success of the program.

ICA remains concerned that the Trademark Claims Notice is still flawed. We filed comments on this but no changes were made.

We will be watching to see how receipt of that flawed Claims Notice bears on the question of whether a domain registration was made in bad faith, which will arise in both URS and UDRP actions filed against domains at new gTLDs. That will be up to the arbitration providers, who may well reach different conclusions. This again points out the need for a better agreement between ICANN and URS providers than the current two-page MOU.

There also should be a standard enforceable agreement between ICANN and UDRP providers, a position endorsed by the BC. In September the BC sent a letter to ICANN that raised questions about the UDRP Status Report issued the day after the Durban meeting ended. Two months later the BC is still waiting for a response.

So, absolutely, trademark rights must be protected. But registrant rights must be protected as well, through fair, consistent, and balanced application of the new RPMs and the UDRP.

Thank you.

[Note: As the official transcript of the Public Forum is not yet available, this statement has been transcribed from the speaker’s outline for his remarks.]

This posting was sourced with permission from the Internet Commerce Association website at:
internetcommerce.org/On-the_record_Buenos_Aires

ICANN and Governance

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:
www.icann.org/en/news/public-comment/locking-domain-name-recommendations-02aug13-en.htm

Domain Name Registrants, Domain Name Registrars, Domain Name Registry

.PW First TLD To Adopt Uniform Rapid Suspension Rights Protection Mechanism

Professional Web logo[news release] The .pw Registry is pleased to announce its adoption of ICANN’s latest rights protection mechanism, the Uniform Rapid Suspension (URS). By doing so, the .pw Registry becomes the first TLD to adopt the newest rights protection mechanism from ICANN. Sandeep Ramchandani, Business Head – .pw Registry said, “Proactive abuse mitigation is one of our primary tenets. URS offers brand owners a highly effective, quick and inexpensive mechanism to eliminate names that violate their trademarks. We are glad to be leading from the front by becoming the first extension globally to adopt it.”

The URS seeks to provide trademark holders with faster protection against infringement than the existing Uniform Domain Name Dispute Resolution Policy (UDRP). While the UDRP, a more expensive and long process, awards ownership of a domain to the winner of a dispute, the URS ensures faster protection by immediately suspending the infringing domain and then proceeding to a trial. The URS also discourages infringement and wrongful cases by charging trial fees from the unsuccessful applicant.

Kristine Dorrain, Director of Internet and IP Services, National Arbitration Forum (NAF) commented, “The National Arbitration Forum is pleased that .pw Registry has selected the URS as one of its dispute resolution options. Currently, .pw Registry is the first and only voluntary adopter of URS, in advance of the new gTLD program. The adoption of URS, in addition to UDRP, demonstrates .pw Registry’s commitment to protecting the .pw domain name space from cybersquatting activity.”

Mr. Ramchandani added, “The URS is a compulsory feature for all new gTLDs and our advance implementation will give NAF, brand owners, registries, registrars and ICANN an opportunity to test its effectiveness in a live environment. One of our goals in the adoption of URS is also to help the community by ensuring a more refined and predictable experience when the URS roll-out takes place across more than a thousand new gTLDs. To that end, we will be sharing our implementation lessons and best practices with the community in addition to opening a communication channel to relay policy related feedback to ICANN and NAF.”

For information on the URS and how to file a URS complaint, please click here

About .pw – the Professional Web:
.pw – the Professional Web, is a TLD that has been opened globally to create a dedicated namespace for professionals and businesses to set up an online presence, with a first choice domain name at an affordable price point. The .PW is offered by 100+ accredited Registrars across the globe. For more information, please visit registry.pw

This .pw news release was sourced from:
registry.pw/pw-becomes-the-first-tld-to-adopt-the-uniform-rapid-suspension-rights-protection-mechanism/

Domain Name Disputes, ICANN and Governance

ICANN’s Approval of ACDR as UDRP Provider Leaves Standard Contracts Issue Unresolved by Philip Corwin

Internet Commerce Association logoThe Arab Center for Dispute Resolution (ACDR) has been approved as a UDRP provider by ICANN’s Board of Directors. However, the language of the Board resolution of approval leaves unresolved the critically important issue of whether all UDRP providers will be placed under a standard and enforceable contractual agreement.

The Board action took place during its meeting of May 18th, with the full text available at www.icann.org/en/groups/board/documents/resolutions-18may13-en.htm#1.d.

The portion relevant to the issue of provider contracts and uniformity of UDRP implementation states:

Other commenters suggested that ICANN develop contracts with each of its UDRP providers as a means to require uniformity among providers. Contracts have never been required of UDRP providers. On the issue of uniformity among providers, however, the ACDR’s proposal does two things: first, highlighted areas where risk of non-uniform conduct was perceived (such as issues with commencement dates and definitions of writings) have been modified; second, the proposal now includes an affirmative recognition that if ICANN imposes further requirements on providers, the ACDR will follow those requirements; third, the ACDR has revised a specific portion of its Supplemental Rules that was highlighted by commenters as a potential risk to uniformity. This is a positive advancement and helps address concerns of ICANN’s ability to, in the future, identify areas where uniformity of action is of its obligation to abide by ICANN modifications that could enhance uniformity among providers. (Emphasis added)

ICA has continuously been the leading voice in calling for all UDRP providers to be placed under a standard contract (see internetcommerce.org/ACDR-UDRP_Comment_Letter). With all respect, the fact that “contracts have never been required of UDRP providers” is exactly the problem we seek to fix, as it is the lack of standard requirements and flexible yet effective enforcement mechanisms that leads to divergence in UDRP administrative practice and the encouragement of forum shopping.

But we hope that the Resolution favorable citation of ACDR’s willingness to abide by further ICANN-imposed requirements on UDRP providers as an important step toward assuring uniformity is a signal that the contracts issue may soon be addressed. Certainly, the contracts for arbitration providers precedent has now been set by ICANN’s recent confirmation that providers of Uniform Rapid Suspension (URS) will be placed under contract – and so far, both of the announced URS providers are existing UDRP providers (see internetcommerce.org/URS_Contracts_Coming).

The Resolution also contains another passage worthy of comment:

ICANN’s consideration of the ACDR’s proposal also highlights the import of accountability to the community. After the community requested the opportunity to see the proposal again prior to approval, the Board agreed and asked staff to proceed with a further comment period. In addition, the Board also requested that staff report to the community on how ICANN’s earlier consideration of UDRP provider uniformity issues was concluded. As a result, a briefing paper has been prepared and will be publicly posted. (Emphasis added)

Again, ICA took the lead in requesting that the revised ACDR application be subjected to a new round of public comment (see http://internetcommerce.org/ACDR_UDRP and http://internetcommerce.org/ACDR-UDRP_Board_Deferral) and we appreciate that the Board did so. We also look forward to reviewing the staff paper on UDRP uniformity issues as soon as it is made available. But we remain committed to the position that, especially in the case of a non-profit entity like ICANN that can only exercise authority via contracts, the development of a standard UDRP provider contract is essential and even more important today as UDRP providers proliferate and more than one thousand new gTLDs are about to enter the DNS.

This article by Philip Corwin from the Internet Commerce Association was sourced with permission from internetcommerce.org/ACDR-UDRP_Approval

Opinion

On the Duality of Internet Domain Names: Propertization and its Discontents by Frederick M. Abbott

Abstract: Domain names may have substantial economic or social value. They are often the object of dispute, whether based on allegations of abuse, or in contests over ownership. There is a recent judicial trend, particularly in the Court of Appeals for the Ninth Circuit, toward characterizing domain names as “property” (and more specifically, “intangible property”) subject to rules of sale and transfer typical of personal property. This judicial characterization identifies “alienability” as a fundamental characteristic of domain names. This sets up a real or potential conflict with jurisdictions or forums where domain names have been judicially or administratively characterized as “contract rights” based on the legal relationship between the domain name registrant and the registrar.

Pursuant to the contract rights characterization, sales and transfers of domain names are subject to rules flowing from ICANN that govern the relationship among registries, registrars and registrants, and prescribe certain representations and warranties in connection with sales and transfers. This includes subjecting domain name registrants to alternative dispute settlement under the Uniform Domain Name Dispute Resolution Policy (UDRP).

Several recent decisions among Ninth Circuit courts applying the federal Anticybersquatting Consumer Protection Act (ACPA), on one side, and administrative panels applying the UDRP, on the other, call attention to the possibility for different dispute settlement outcomes depending on whether domain names are treated as freely alienable property or contract rights incorporating various obligations on transferors and transferees.

In this article, the author, an experienced administrative panelist for the WIPO Arbitration and Mediation Center, analyzes the legal bases used to characterize Internet domain names, and suggests that it may not be necessary to draw a line between “intangible property” and “contract rights”. Domain names may be treated as both. There is nothing unique about attaching conditions to the transfer of intangible property. For example, US law that authorizes assignment and transfer of trademarks conditions the transfer on associating the goodwill of the business. Similarly, domain names in transfer may be treated as intangible property conditioned with contract representations and warranties made pursuant to ICANN rules.

The UDRP provides for flexible assessment of the rights and legitimate interests of domain name registrants. These rules have allowed UDRP panels to consider the circumstances prevailing when a domain name transfer takes place, whether between related or unrelated parties, and this type of flexibility should appropriately take account of rights of transferors and transferees. Given the different contexts in which the UDRP and ACPA were adopted, and in which they are implemented, it should be expected that jurisprudential conflicts will from time to time arise and require attention. This article calls attention to one such conflict and proposes to resolve it through recognition that the legal character of the domain name need not be limited to a single class of subject matter.

To download this paper, to be published in a forthcoming edition of the N.Y.U. Journal of Intellectual Property and Entertainment Law, go to:
ssrn.com/abstract=2257562

ICANN and Governance

ICA Opposes ICANN Proposal to Slash UDRP Response Time by Philip Corwin

Internet Commerce Association logoThe Internet Commerce Association (ICA) just told ICANN that we strongly oppose an Initial Report that proposes to effectively reduce the time that a registrant has to respond to a UDRP by up to one-third.

The current UDRP requires a complainant to provide the registrant of the allegedly infringing domain with a copy of the complaint at the same time it is submitted to the UDRP arbitration provider. The Report proposes that this be eliminated to reduce “cyberflight” when a registrant switches the domain to a new registrar to avoid the UDRP. But it fails to provide any verified data on the incidence of cyberflight. So all registrants would face termination of a basic procedural protection because of what may be a statistical anthill of bad acts.

The Report proposes that the registrant should henceforth receive notice of the proceeding from the UDRP provider once the action has been commenced. But there’s generally a one to two week delay between the initial filing and the formal commencement – so adoption of the proposal would effectively amount to up to a one-third reduction in the time that the registrant has to secure competent counsel and prepare a defense. This seems grossly unfair – especially as the complainant has all the time in the world to draft the complaint, chooses which arbitration forum to file in, and controls its time of filing (say on Christmas Eve or the beginning of summer holidays).

If the Working Group that prepared the report can produce verifiable data showing that cyberflight is a problem of substantial proportions, ICA has proposed two alternative approaches that would address that abuse without reducing a registrant’s response time.

The reply period on this matter remains open until May 17th – and domain registrants who share our concern should visit the issue webpage at www.icann.org/en/news/public-comment/locking-domain-name-15mar13-en.htm and then submit comments to mailto:comments-locking-domain-name-15mar13@icann.org .

On the overall subject of defining a domain “lock” for UDRP purposes and standardizing how registrars impose locks, ICA generally supported the Report’s recommendations so long as a registrant retains control of the domain’s DNS, the domain considers to resolve, and registration renewals are not adversely affected. Our response also reiterated the need for ICANN to initiate consideration of overall UDRP reform – this Report stems from a December 2011decision by ICANN’s Generic Names Supporting Organization (GNSO) to initiate work on the UDRP domain lock issue while deferring the initiation of any general review of the UDRP until 18 months after the first new gTLD is added to the root. With the first new gTLD unlikely to open until the second half of this year, that means that UDRP reform won’t commence until at least 2015, despite being the only ICANN consensus policy that has never undergone review.

Our full letter follows—

VIRTUALAW LLC

Philip S. Corwin, Founding Principal
1155 F Street, NW  Suite 1050
Washington, DC 20004
202-559-8597/Direct
202-559-8750/Fax
202-255-6172/Cell
psc@vlaw-dc.com

 

                                                                                                April 26, 2013

 

By E-Mail

Internet Corporation for Assigned Names and Numbers

12025 Waterfront Drive, Suite 300

Los Angeles, CA 90094-2536

Re: Locking of a Domain Name Subject to UDRP Proceedings – Initial Report

Dear ICANN:

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 “Locking of a Domain Name Subject to UDRP Proceedings – Initial Report” that was posted for public comment on March 15, 2013 at www.icann.org/en/news/public-comment/locking-domain-name-15mar13-en.htm.

 

Executive Summary

The major points made in this comment letter are:

  • We have no objections to establishing a standard definition of “lock” in relation to a domain subject to a UDRP proceeding (so long as the definition clarifies that a lock shall not impair a domain’s resolution or the ready ability to renew it) as well as uniform procedures to be followed by registrars for domain locking as a consequence of a UDRP filing. Such standards will provide certainty to all affected parties in regard to what is already a widespread industry practice that is implicitly called for by current UDRP Rules.
  • However, we strongly object to the proposed deletion of the current UDRP requirement that the complainant shall provide the respondent domain registrant with a copy of the complaint at the same time it is submitted to the UDRP provider, on the ostensible grounds that such deletion is required in order to prevent “cyberflight”. As a practical matter this will substantially reduce the time, by up to one-third, that registrants/respondents have to prepare an effective defense against complainant allegations – as well as deprive less sophisticated registrants of critical time necessary to gain an understanding of the UDRP process and their rights within it, and to locate and secure competent counsel capable of assisting in a defense. The Report lacks any validated documentation that cyberflight is sufficiently widespread to justify this fundamental degradation of registrant rights.
  • Only if verifiable documentation exists demonstrating that cyberflight is a widespread abuse of sufficient negative impact to justify remedial response, we would alternatively propose that, in order to address cyberflight concerns while minimizing any negative impact on registrant  due process rights and their ability to mount an effective defense, the domain registrar be required to notify the registrant of the UDRP filing at the same time that it confirms to the UDRP provider that the domain has been locked – and that the registrant be provided at that time with a full copy of the filed complaint, to be provided by the UDRP provider to the registrar at the time it transmits the verification request – in conjunction with an increase in UDRP response time to 24 days from the current 20 days, to restore the effective response time reduction that would result from this approach. This will assure that the registrant knows of the UDRP filing as well as its specific allegations no later than two business days after the registrar has received the verification request from the provider. If that approach is deemed impractical for any reason then, as an alternative, we would propose that the time in which a registrant has to respond to formal notification of a UDRP filing by the Provider be increased by 10 days, to 30 days from the current 20.
  • In regard to settlement of a UDRP we prefer adoption of proposed Option B.
  • In regard to additional protections for registrants, we favor adoption of a specific prohibition against unilateral registrar movement of a domain name to a new account that deprives the registrant of control over his domain name registration until such time as the UDRP provider renders final judgment (assuming absence of subsequent appeal to a court of competent jurisdiction) or the case is settled or withdrawn.
  • ICA continues to believe that UDRP reform of at least a procedural nature should be initiated in the near term with a primary focus on establishing a standard enforceable contract between ICANN and all accredited UDRP providers.

Discussion

Standardization of Industry Practice and Adoption of a Uniform “Lock” Definition

As noted in the Initial Report (IR), while “Neither the UDRP nor the RAA require a “lock” of any sort during a UDRP at least as far as changes within a registrar are concerned…there is the assumption, or implicit consequence, of a “lock” requirement which has developed over time in connection with UDRP Paragraph 7 and 8…In short, the “locking” associated with UDRP proceedings is not something that is literally required by the UDRP as written, but is a practice that has developed around it, but as a result, there is no uniform approach, which has resulted in confusion and misunderstandings.” (pp.11-12) Further, the vast majority (95%) of registrars impose a lock during UDRP proceedings – “Registrars either lock a domain name pursuant to UDRP proceedings upon receipt of a complaint from the complainant (46%) or upon the provider’s request for verification from the UDRP dispute resolution provider (49%).” (p.15) – but their approaches vary in terms of the type of lock imposed (EPP alone, or EPP + registrar lock) as well as when the lock is initiated and the types of actions prohibited following imposition of a lock.

Given the domain locking requirement that is implicit in the current UDRP policy, as well as the lack of uniformity among the large majority of registrars who impose a lock on those domains implicated in a UDRP filing, we agree that it would be generally beneficial to rectify this situation through adoption of a standard policy and procedure.

Further, we have no objection to adoption of the proposed definition of “lock” so long as it contains the additional proposed bracketed language clarifying that a lock shall not impair resolution of a domain, so as to read:  “[T]he term “lock” means preventing any changes of registrar and registrant without impairing the resolution of the domain name.” (p. 28).

The filing of a UDRP is a mere allegation that a domain is infringing the complainant’s trademark rights, and until there is a substantive determination by the UDRP examiner affirming the allegation there is no valid reason for impairing the domain’s resolution – in fact, such non-resolution would constitute exactly the same type of Internet censorship absent adequate due process that was at the heart of protests against the proposed U.S. SOPA and PIPA legislation in 2012. ICANN should be squarely in record as opposing even the implicit grant of such authority to accredited registrars on their own accord; this matter is discussed in greater detail later in this comment letter.

Repeal of the Requirement that the Complainant Inform the Registrant of the UDRP

Proposed Recommendation #2 proposes to:

Modify the provision from the UDRP rules that specifies that upon submission of the complaint to the UDRP provider the complainant should also ‘state that a copy of the complaint […] has been sent or transmitted to the respondent’ (section 3, b – xii) and recommend that, as a best practice, complainants need not inform respondents that a complaint has been filed to avoid cyberflight. The UDRP Provider will be responsible for informing the respondent once the proceedings have officially commenced. (Emphasis added)

We strongly object to this recommendation as one that will substantially diminish the ability of a domain registrant to mount an effective defense — and as being premised on the risk of “cyberflight” absent any validated documentation in the IR of the incidence of such registrant abuse.

While we decry registrant cyberflight as an unwarranted abuse by those who seek to avoid UDRP adjudication of their alleged infringement, the transgressions of a few cannot justify depriving the vast majority of honest domain registrants of basic procedural protections. The receipt of timely notice that an adjudication procedure has been initiated against a party is fundamental to the preparation of an effective defense. Modern legal systems require the complainant to serve the respondent with the complaint upon its submission to the judicial forum, notwithstanding the fact that such notice may provide additional time to exit the jurisdiction, shelter assets, or otherwise seek to avoid the consequences of litigation. This precedent of favoring balanced due process over potential misdeeds  should be followed as well in UDRP arbitration practice.

The UDRP is already substantially biased in favor of complainants in numerous ways. The complainant has an unlimited amount of time to prepare a UDRP complaint while the registrant has only twenty days to file a response upon official notification from the UDRP provider. The complainant determines which UDRP provider shall adjudicate the matter and can engage in forum shopping to exploit differences in provider administration that develop in the absence of a standard and enforceable contract between ICANN and all accredited providers. And the complainant determines the timing of the filing and can choose to initiate a case in conjunction with major holidays or vacation periods when the registrant is less likely to be checking email on a regular basis and will face more difficulty in identifying and securing competent counsel to assist in a defense.

Particularly among less sophisticated registrants, the receipt of notice that a UDRP has been initiated that can result in the cancelation or transfer of a domain that may be a long-standing foundation of an online business or forum for free speech can be a highly traumatic event as well as a cause of significant confusion regarding proper reaction. The vast majority of registrants are not familiar with the UDRP process or the means by which they can defend their rights. Once they have gained an understanding of the situation, they are likely to find that, even if they have a family or business lawyer, such individual lacks any familiarity with UDRP procedures or practice – and that they must then seek out expert counsel with such requisite experience and knowledge.

In this real world context, the time period between receipt of the complaint from the complainant and receipt of official notice from the UDRP provider – a period that generally encompasses one to two weeks (7-14 days)– provides the registrant with critically necessary time to understand their situation and to confer with competent counsel. The IR proposes to eliminate this time cushion absent any documentation of the actual incidence of cyberflight.

Just as registrar domain locking has become an implicit requirement and widespread industry practice in the absence of an explicit demand in the UDRP Rules, the transmission of the complaint to the respondent by the complainant – which is explicitly required by current UDRP Rules – has become an expected part of the time period in which registrants/respondents have to prepare a defense. As a practical matter the recommendation will reduce the respondent’s defense period by one to two weeks, a substantial diminution given that the official response period is a scant twenty days.

While we condemn any registrant’s attempt to avoid a legitimate UDRP action through transfer of a domain to a new registrar we cannot support elimination of the complainant’s obligation to serve the registrant absent more far compelling and verified documentation that cyberflight is a problem of such significance as to justify any reduction in the notice time provided to a domain registrant, much less the drastic reduction proposed in the IR.

The effective reduction of the response time will also have other deleterious effects. It will increase the possibility that a domain registrant may seek to sell and transfer the domain absent any awareness that a UDRP has been initiated and a lock has been imposed. It will also reduce the time period in which a settlement might be reached that would reduce the need for formal UDRP adjudication.

Alternative Response if Cyberflight can be Documented to Constitute a Substantial Problem

As noted above, the IR fails to contain any verified documentation that cyberflight is a substantial problem affecting a significant portion of UDRP cases. In the absence of such data we must oppose any alteration of the existing requirement that the complainant provide the respondent with a copy of the complaint upon its submission to the UDRP provider.

If such verified documentation of substantial incidence of cyberflight incidence exists,  is publicly disclosed for review, and is found convincing in regard to a large-scale problem, we would propose two alternative means of addressing it that substantially  mitigate the negative effect upon registrant response time that would result from adoption of Preliminary Recommendation #2.

Preliminary Recommendation #3 presently states:

Following receipt of the complaint, the UDRP Provider will, after performing a preliminary deficiency check, send a verification request to the Registrar, including the request to prevent any changes of registrar & registrant for the domain name registration. The registrar is not allowed to notify the registrant of the pending proceeding until such moment that any changes of registrar and registrant have been prevented, but may do so once any changes of registrar and registrant have been prevented. (Emphasis added)

We would propose, solely in the context of the disclosure of compelling cyberflight justification data, that the word “may do so” be changed to “shall do so immediately”, and that this additional language be added to the end of the underlined portion of the recommendation: “and shall also transmit the full text of the UDRP complaint to the registrant, such complaint to be provided to the registrar by the UDRP Provider at the time it sends the verification request”. This modification would address any documented cyberflight problem of a substantial nature while minimizing the reduction in the registrant’s effective time period in which to secure competent counsel and prepare a response.

Adoption of  this alternative would still reduce the registrant’s time for defense preparation by at least the two business day period in which the registrar is required to lock the domain, plus the period that transpires between the time that the UDRP Provider receives the complaint and the time it completes its deficiency check and then transmits the verification request to the registrar. We therefore propose that adoption of this approach be accompanied by an increase of the standard UDRP response time by 4 days, from 20 to 24, to offset the reduction and render a neutral result.

If that proposal is deemed impractical for any reason then we would further propose, as a second alternative,  that the standard time period for a registrant to submit his response to the UDRO provider be increased by ten days, from 20 to 30 days, in order to restore the time lost due to non-notification from the complainant.  

This second alternative should have little if any impact upon the timing of final UDRP decisions, as they are generally not rendered for at least several weeks after all materials have been submitted by the two parties to the arbitration.

UDRP Settlements

In regard to settlements of a UDRP, the IR states (at pp.33-34):

In relation to the settlement of a UDRP Proceeding, the Working Group has discussed the following two options to further clarify the steps involved. However, the Working Group has not come to a conclusion yet which of these two options, or a possible alternative, to recommend. As a result, the Working Group is requesting community input on these options…

We prefer Option B as both providing more specific guidance on the procedures relating to a settlement and more specifically addressing the subject of the IR – a domain lock.

Option B reads:

Option B – (1) parties ask for suspension (suspension request includes automatic dismissal when the suspension period is up), (2) provider issues order allowing registrar to unlock for the sole purpose of (whatever the settlement is), (2) parties settle, (3) parties request the registrar to unlock (not to manage anything further, like terms, just unlock to allow transfer), and (4) provider dismisses case automatically with no further action needed (if settlement discussions break down, either party can request that the case be reinstated before automatic dismissal).

Additional Registrant Protections – Name Server Control,  Domain Resolution, and Renewals

The IR raises two subjects that relate to fundamental rights of domain registrants.

The first is control of the name server. The IR states (pp.26-27):

The Working Group discussed that one of the areas where additional safeguards might be appropriate is in relation to the registrant’s control of the name server. It was noted that there are cases known in which the registrar moves the domain name subject to UDRP Proceedings to a different account, which means the registrant does not have any control anymore over its domain name registration. It was pointed out that changes to the DNS are not considered ‘transfers’ as defined in the UDRP and any changes to the DNS would therefore not need to be prevented. The Working Group suggested that clarifying that changes to the DNS are allowed, may ensure sufficient safeguards as per the charter question. (Emphasis added)

We do not believe there is any justification for the registrar to deprive the registrant of control of its domain name registration/name server based upon receipt of notice that a UDRP action has been commenced against the domain. Once the domain has been locked there is clear assurance that it will be subject to UDRP adjudication. Registrar deprivation of a registrant’s control over its domain registration should be prohibited in such circumstances as an action that is neither countenanced nor justified by a domain lock imposed due to a UDRP.

In addition, Preliminary Recommendation #1now reads:

Preliminary Recommendation #1: In this context, the term “lock” means preventing any changes of registrar and registrant [without impairing the resolution of the domain name]20.

Footnote 20 relating to this recommendation states:

20 The WG is considering adding the bracketed language and would welcome community input on the proposed addition. 

We believe that the final adopted version of Recommendation #1 must contain the bracketed language to make absolutely clear that a registrar’s obligation to lock a domain subject to a UDRP does not provide it with the authority to impair the domain’s resolution. The filing of a UDRP constitutes a mere allegation that the domain is infringing upon the complainant’s trademark rights, and the registrant must be considered to be innocent until the matter is fully adjudicated (including potential judicial appeal of an adverse UDRP decision).

Permitting a registrar to impair a domain’s resolution would shut down all legitimate activities taking place at the domain – including commerce and speech. This is exactly the type of “domain censorship” absent adequate due process that elicited a global outcry against the proposed U.S. SOPA and PIPA legislation in early 2012. ICANN should take all necessary steps to make clear that such action is not justified by the filing of a UDRP.

Again, the UDRP is solely designed to provide a non-judicial arbitration alternative for cases of alleged trademark infringement (cybersquatting), and is not meant to be an alternative to the courts for more serious domain-based abuses such as phishing, pharming, spamming, distribution of malware, and cyberattacks. Non-resolution of a domain may be an appropriate response to such illicit actions but should only take place subject to applicable law under the auspices of a court of competent jurisdiction, along with attendant due process protections.

Finally, some ICA members have reported that a registrar “lock’, whether imposed in response to a UDRP or for other purposes, has impaired ready renewal of a domain approaching expiration. We therefore urge that the Final Report also contain responsive language making clear that domain renewal should not be impaired by a registrar lock.

ICANN Educational Materials

Preliminary recommendation #11 states:

ICANN, in collaboration with UDRP Providers, Registrars and other interested parties, will develop educational and informational materials that will assist in informing affected parties of these new requirements and recommended best practices following the adoption by the ICANN Board of these recommendations.

ICA agrees that such materials would be beneficial and believes that, in addition to input from all interested parties, that such materials should be subject to public comment prior to final adoption.

The Need for Comprehensive UDRP Reform

As noted in the IR (p.3):

The GNSO Council considered the Final Issue Report on the Current State of the UDRP and decided at its meeting on 15 December 2011 to initiate ‘a PDP and the establishment of a Working Group on recommendation #7 of the Inter-Registrar Transfer Policy Part B Working Group concerning the requirement to lock a domain name subject to UDRP proceedings’. The charter for the PDP Working Group was adopted by the GNSO Council on 14 March 2012 and the Working Group convened on 16 April 2012.

While we have no serious objection to adoption of a standard definition of a domain “lock” and the standardization of registrar procedures in the context of a UDRP filing, we remain chagrinned that the GNSO Council, at that same December 2011 meeting, resolved that the initiation of UDRP reform should not even be considered until eighteen months after the introduction of the first new gTLD.

With such introduction now deferred to at least the second half of 2013, that means that the earliest that UDRP reform could start to be considered would be sometime in the first half of 2015. Given the complexity and potential controversy of that subject, we would not expect even an Initial Report to be issued for at least 12-18 months following initiation – with the bottom line being that any resulting UDRP reform would not be initiated until at least 2017, and more likely 2018.

This is simply unacceptable, especially as the UDRP is the only ICANN consensus policy  that has never been reviewed since initial adoption. At a minimum, procedural UDRP reform focused upon development of a standard and enforceable contract between ICANN and all UDRP providers is required to prevent complainant forum shopping and assure that the administration of the UDRP remains uniform as ICANN accredits additional providers in response to new gTLDs, including International Domain Names (IDNs). ICA recently restated its opposition to the accreditation of any new providers, such as the Arab Center for Dispute Resolution (ACDR), until such a standard contract is developed and adopted.

The IR makes clear that its proposed changes fall into the policy area, rather than that of implementation of existing policy:

The Working Group also discussed the current requirement under the UDRP rules for the complainant to inform the respondent upon filing of the complaint (the complaint has to ‘state that a copy of the complaint, including any annexes, together with the cover sheet as prescribed by the Provider’s Supplemental Rules, has been sent or transmitted to the Respondent’ – UDRP Rules15 section 3, art b (xii)). The WG observed that informing the respondent prior to the locking of a domain name could result in cyberflight as the domain name registration may not have been locked by the registrar. It was also noted that under the Uniform Rapid Suspension System (URS) the respondent is only notified after the domain name registration has been locked by the registry (‘Within 24 hours after receiving Notice of Lock from the registry operator, the URS Provider shall notify the Registrant of the Complaint’16). As a result, the WG is recommending a targeted change to the UDRP rules to modify this requirement and instead make it optional for the complainant to inform the respondent at the time of filing the complaint with the UDRP Provider. (Emphasis added)

ICA continues to believe that additional targeted changes to UDRP rules are required to assuage registrant concerns regarding the certainty and impartiality of UDRP adjudication, as well as to prevent forum shopping as the ranks of UDRP providers increase. While we realize that the general topic of UDRP reform is beyond the scope of the IR and the Working group’s mandate, we nonetheless feel it is necessary to restate our position when addressing this UDRP-related matter.

Conclusion

ICA has no objection to the adoption of a standard definition of domain “lock” in the UDRP context so long as it makes clear that a registrar is not authorized to block a domain’s resolution in conjunction with a UDRP-initiated domain locking action, and does not negatively impact domain resolution or renewal.

However, we strongly oppose elimination of the current requirement that the complainant serve the registrant with a copy of the UDRP complaint at the same time it files it with the UDRP provider, as this would deprive the registrant of critical time to prepare an adequate UDRP defense. The incidence of alleged “cyberflight” lacks any adequate documentation in the IR to justify such a detrimental action against a fundamental registrant procedural right. If such verifiable data exists it should be shared with the community and, if cyberflight is widespread enough to justify some remedial response, it should take a form that eliminates any potential negative impact upon a registrant’s ability to mount an effective defense.

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

Sincerely,

Philip S. Corwin

Counsel, Internet Commerce Association

This article by the Internet Commerce Association’s Philip Corwin was sourced with permission from:
internetcommerce.org/UDRP_Lock

ICANN and Governance, New gTLDs

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:
newgtlds.icann.org/en/announcements-and-media/announcement-2-19apr13-en

ICANN and Governance, New gTLDs

ICANN: Uniform Rapid Suspension Procedure and Rules

ICANN new generic Top Level Domains logoAn updated version of the Uniform Rapid Suspension System (URS) Procedure [PDF, 168 KB] and the URS Rules are now available for download.

The URS is one of several new Rights Protection Mechanisms available in the New gTLD Program. It complements the existing UDRP by offering a lower-cost, faster path to relief for rights holders experiencing the most clear-cut cases of infringement.

The URS Procedure defines the URS claims process. The Rules will help service providers implement URS in a consistent manner.

Since the last URS Procedure was posted on 4 June 2012, minor revisions have been made in the present rather than future tense. Other revisions clarify and simplify some provisions as well as make minor typographical corrections. Also, a set of Rules [PDF, 82 KB] has been developed and added, similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) rules, to provide guidance on all aspects of the URS proceedings.

In addition to the Rules posted by ICANN, each URS service provider is expected to produce supplemental rules to help standardize conduct for that provider’s interactions with complainants and respondents, but that are not inconsistent with the Procedure or the Rules.

The URS was developed by the community, for the community and is another testament to the multistakeholder model.

Download the URS Procedure [PDF, 168 KB] and Rules [PDF, 82 KB].

Learn more about Uniform Rapid Suspension.

This ICANN announcement was sourced from:
www.icann.org/en/news/announcements/announcement-05mar13-en.htm
newgtlds.icann.org/en/announcements-and-media/announcement-05mar13-en