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Staff Manager's Issues Report on UDRP Review
1 August 2003

Staff Manager's Issues Report on UDRP Review
(1 August 2003)

Contents

Summary

Preliminary Catalog of Issues

Procedural Issues (Issues Concerning the UDRP Rules)

Substantive Issues (Issues Concerning the Policy)

Stakeholder Groups and Their Apparent Positions

Scope of the ICANN Policy Development Process

Recommended Process for Proceeding

At its 17 April 2003 meeting, the GNSO Council decided (in Decision 5) to request that the staff produce an issues report on review of ICANN's Uniform Domain-Name Dispute Resolution Policy (UDRP). This Issues Report will briefly summarize the work of the DNSO UDRP Review Task Force, provide a preliminary catalog of issues, characterize the interests of various stakeholder groups, and set forth recommendations for moving forward.

Summary

This Issues Report has been prepared according to Item 2 of the GNSO Policy-Development Process (PDP), adjusted as appropriate to accommodate the ongoing transition to the New Bylaws’ procedures. Item 2 of the PDP lists the following elements for an Issue Report:

a. The proposed issue raised for consideration;

b. The identity of the party submitting the issue;

c. How that party is affected by the issue;

d. Support for the issue to initiate the PDP; and

e. A recommendation from the Staff Manager as to whether the Council should initiate the PDP for this issue (the "Staff Recommendation"). Each Staff Recommendation shall include the opinion of the ICANN General Counsel regarding whether the issue proposed to initiate the PDP is properly within the scope of the ICANN policy process and within the scope of the GNSO.

(Note: ICANN does not currently have a general counsel; however, included below is an analysis of the scope of the ICANN Policy Development Process.)

In requesting the staff to prepare an Issues Report, the GNSO Council suggested that existing material and analysis from the DNSO's UDRP Task Force be used in producing the report.

Summary of the Work of the DNSO UDRP Review Task Force

The archive of the DNSO's UDRP Review Task Force mailing list is available at <http://www.dnso.org/clubpublic/nc-udrp/Arc00/maillist.html>.

The DNSO task force mailing list was opened on 3 September 2001. The task force was comprised of approximately 20 experts from a broad array of viewpoints and experiences. In addition to a representative from each of the DNSO's constituencies and the DNSO GA, the task force also included representatives from each ICANN-approved dispute resolution service provider, a panelist from each provider, a representative complainant and respondent, and independent experts from the ADR and academic communities.

The DNSO task force operated under Terms of Reference adopted by the DNSO Names Council: <http://www.dnso.org/dnso/notes/2001.NC-tor-UDRP-Review-Evaluation.html>. The Terms of Reference instructed the task force to "create a questionnaire to solicit public comment through a bottom up, consensus-building DNSO process regarding various aspects of the existing UDRP."

The Task Force drafted the questionnaire and had it posted (in English, French and Spanish) to the DNSO and ICANN websites for response: <http://www.dnso.org/dnso/notes/20011107.UDRP-Review-Questionnaire.html>. The Task Force received a total of 377* responses to the questionnaire.

Other UDRP Studies and Reports

The Task Force also surveyed (and summarized) outside studies and reports concerning the UDRP:

Preliminary Catalog of Issues

Based on the DNSO Task Force's work, the following is a preliminary catalog of issues thought by at least some to be worthy of review in any subsequent policy-development work:

Procedural Issues (Issues Concerning the UDRP Rules):

Issue
Pro
Con
  • Should there be improved centralized, searchable access to administrative panel decisions?

Parties, lawyers, panelists and others would benefit from enhanced access to (currently over 5400) written administrative panel decisions (see, for example, the UDRP-DB.)
All decisions under the UDRP are already published on the Internet. Third-parties (including ICANN) already provide tools to search the text of decisions. ICANN's operation or endorsement of an "official" centralized repository for decisions may be beyond ICANN's mission and could stifle innovation in publication services.
  • Should complainant and respondent filings be publicly available?
The prevailing and losing parties' contentions are not always clear from the summaries included in case decisions. Parties, lawyers, panelists and others would benefit from having access to the full record of each proceeding.
Publishing voluminous filings and related exhibits would be costly and cumbersome, which would undercut the UDRP as a streamlined, low-cost way of resolving disputes. Expected benefits would not justify the expense.
  • Should complainants and respondents be allowed to amend and/or supplement their filings?
Amended and supplemental filings allow parties to bring additional relevant facts to the panelists' attention.
Excessive supplemental filings are burdensome to the opposing party that is forced to respond, and add little value to assist the panel in reaching its determination.
  • Should the provider and panel selection processes be modified to address concerns about potential conflicts of interest?
Allowing complainants to select the dispute resolution service provider induces providers to favor complainants. Allowing providers to select which panelist will hear each case increases the chances for bias to enter the system.
Allowing dispute resolution service providers to compete for market share encourages responsive services and low prices. Providers do not decide cases, but only handle the administration of them. Providers do select panelists in single-panelist cases, but the current provision allowing the respondent to elect a three-member panel, with selection done in a way that gives the parties equal say in selecting the panelists, is a sufficient safeguard against any concern over possible joint provider/panelist bias. Provider selection of panelists in single-panelist cases simplifies proceedings and allows for the appointment of experts in particular languages, cultures, and legal systems.
  • Should standards for accrediting providers and panelists be promulgated?
Promulgating standards for accrediting providers and panelists would increase transparency and confidence in the dispute resolution system.
Rigid accreditation standards would reduce flexibility and create disagreements over interpretation and qualifications. ICANN accreditation of panelists (or establishment of standards for their accreditation) would be an expansion of ICANN's role, might influence outcomes of cases, and may be beyond ICANN's mission.
  • Should transfers of proceedings between providers be permitted?
Allowing respondents to "remove" a case to a different provider would balance the opportunity to seek a responsive forum equally between complainants and respondents.
Allowing transfers of proceedings would be unnecessarily confusing, complicated and expensive. It would also undercut the benefits of competition to provide more economical and convenient services provided by the availability of multiple providers.
  • Should refunds of providers' fees in the event of settlement be mandatory and standardized?
Mandating standardized refunds for withdrawn cases would be fair to the parties, and would encourage settlement.
Providers compete with each other in terms of price and service, and should be able to determine their own reasonable fee system.
  • Should the notice requirements be amended?
Notice requirements are short, and may not allow parties sufficient time to prepare responsive filings.
Administrative proceedings are intended to proceed as quickly and efficiently. Administrative proceedings are only intended to apply to clear-cut cases of abusive registration, so parties do not need a lot of time to investigate or prepare complicated filings. The ability to institute court proceedings, which take precedence over UDRP results, ensures that the UDRP does not result in cases being lost because of inadequate notice.
  • Should the procedure for implementing orders to transfer registrations be amended?
Providers and parties have reported difficulty obtaining registrars' cooperation with implementing decisions ordering transfer of registrations. Registrars report that prevailing parties fail to provide necessary information and follow transfer procedures.
Mandating a new transfer procedure would be complicated and potentially burdensome to parties and/or registrars. Some improvements to the implementation procedure are already included in the currently pending deletion recommendations.
  • Should administrative panel decisions be subject to internal appellate review?
An internal appeals system would promote consistent and predictable interpretation and application of the policy.
An appeals system would be complicated and expensive. An appeals system designed to harmonize the world's trademark laws would be beyond ICANN's scope.

Substantive Issues (Issues Concerning the Policy):

Issue
Pro
Con
  • Should the policy be changed to require registrars to wait until appeal deadlines expire before taking action in response to court orders?

Requiring registrars to wait to implement court orders until deadlines for appeal expire would align dispute outcomes with parties' expectations and provide deference to the judicial process.

The law applicable to judgments in various jurisdictions determines whether orders are effective while an appeal is still possible, and it would be inappropriate for ICANN to attempt to second-guess that law. The current rules offer certainty to both registrars and parties, but still allow parties to request stays or other orders from courts when appropriate.
  • Should the policy be amended with respect to protection for non-registered marks?

Reducing or eliminating recognition of unregistered marks would increase registrants' certainty and the predictability of decisions.
National (and local) trademark laws vary with respect to the deference afforded un-registered marks, so harmonization would not be feasible or within ICANN's scope.
  • Should the policy be amended to provide guidance regarding the interpretation of "confusing similarity"?
Clarifying the definition of "confusing similarity" would increase registrants' certainty and the predictability of decisions.
National (and local) trademark laws vary with respect to the definition of "confusing similarity", so harmonization would not be feasible or within ICANN's scope.
  • Should multiple complaints be allowed concerning the same registration and registrant?
Subjecting registrants to multiple complaints concerning the same registration is potentially burdensome and unfair.

Claim preclusion rules can be complicated and lead to gaming and unfairness. For example, a complainant may learn facts initially suppressed by the respondent, making re-filing appropriate. The obligation of the complainant to disclose prior proceedings, and the ability of the respondent to disclose them, protects against abuses caused by repetitive complaints that are not warranted.

  • Should the policy address the question of whether "holding" constitutes "use"?
Specifying whether "passive holding" constitutes "use" of a domain registration would increase registrants' certainty and the predictability of decisions.
National (and local) trademark laws vary with respect to the definition of "use" of a trademark, so harmonization would not be feasible or within ICANN's scope.
  • Should "settlement negotiation" communications be excluded as permissible evidence of bad faith?
Allowing complainants to introduce offers (especially solicited offers) to compromise as evidence of bad faith is unfair and discourages settlement.
In some cases evidence of an offer to sell the rights to a domain registration for an exorbitant sum can be probative evidence demonstrating bad faith. It is appropriate that the use of such evidence be regulated by national (and local) law, not by ICANN "lawmaking".
  • Should complainants be required to post a bond and/or pay a penalty in order to deter "reverse domain-name hijacking"?

Requiring the posting of a forfeitable bond would be a powerful deterrent to "reverse domain-name hijacking" attempts.

 Existing filing fees and the ability of panels to make a finding of "reverse domain-name hijacking" are adequate safeguards against potential abuse by complainants. Findings of "reverse domain-name hijacking" are rare, and requiring posting of a bond in every case would unnecessarily dilute the low-cost nature of UDRP proceedings.
  • Should the policy expressly include affirmative defenses?
Including affirmative defenses and specifying their effect on the burden of proof would provide security to registrants with legitimate interests in their domain registrations.
The policy already sets forth how a registrant can demonstrate legitimate interests, and requires complainants to assert that the registrant has no rights in respect of the domain name.
  • Should administrative panel decisions have precedential effect?
Requiring panelists to follow the holdings of prior decisions would increase the quality and predictability of decisions.
Requiring panelists to follow the holdings of prior cases that may be applying different trademark laws would be an improper effort at harmonization of differing national laws and would be outside ICANN's scope.
  • Should "cancellation" (deletion of the registration – allowing subsequent re-registration by anybody) continue to be an available remedy?
Some complainants have appeared to mistakenly assume that an order "canceling" a domain registration will prevent any future registration of a name by anybody. Eliminating "cancellation" as an available remedy would eliminate this possible source of confusion.

Efforts to educate complainants about what happens when a domain registration gets "cancelled" have led to cancellation being ordered only in rare circumstances (14 times out of 5472 cases).

 

(The above list is not intended to be exhaustive. These are only issues that are apparent from the work of the DNSO Task Force.)

Stakeholder Groups and Their Apparent Positions

Different segments of the Internet community can be expected to have divergent views on all or nearly all of the potential issues for review listed above. In early 2002, the DNSO UDRP Review Task Force posted a questionnaire addressing many of these issues. Although not based on a scientific sampling technique, that questionnaire provides some insights into attitudes toward the UDRP. In addition, as indicated above, the DNSO Task Force itself included a wide range of representatives from different perspectives. Based on the DNSO Task Force's work and discussions, the following very preliminary characterizations of constituency views seem appropriate:

Non-Commercial Users – Place great emphasis on procedural safeguards and substantive protections for registrants making legitimate noncommercial or fair use of domain registrations.

Commercial Users – Want a economical, streamlined, and reliable remedy against domain registrations made in bad faith to misleadingly divert customers.

Intellectual Property Interests – Stress the importance of protections against cybersquatting and bad-faith registrations intended to tarnish trademarks.

ISPs – Not directly interested, except in their general status as commercial enterprises.

Registrars – Appreciate a standardized dispute-resolution policy that is fair to their customers and that keeps registrars out of the role of party or arbiter in domain disputes.

gTLD Registries – Registry operators are rarely (but increasingly) drawn directly into disputes over domain registrations, and thus share registrars' interests in a standard and fair policy.

Other segments of the Internet community, such as individual Internet users and free-speech advocates, also have legitimate interests in domain-name dispute resolution policy development.

Scope of the ICANN Policy Development Process

Article I of ICANN's Bylaws define ICANN's mission to include the coordination of policy development that is reasonably and appropriately related to the allocation and assignment domain names. ICANN's UDRP prescribes the procedures for handling disputes between registrants and parties other than registrars over the registration and use of domain names. The UDRP is an ICANN "Consensus Policy" as that term is defined in gTLD registry and registrar agreements. As such, all ICANN-Accredited Registrars are obligated to incorporate its terms into their registration agreements with customers. (It should also be noted that many ccTLDs have either voluntarily adopted the UDRP or have used the UDRP as a model for creating their own localized dispute resolution policies.)

In light of ICANN's defined mission, it is within ICANN's scope to implement (and review) policies establishing procedures for the handling of disputes over the allocation of domain registrations. (Note also that the adoption of a uniform dispute resolution policy was expressly recommended in the "White Paper" <http://www.icann.org/general/white-paper-05jun98.htm> that preceded the establishment of ICANN.)

Care must be taken, however, to avoid placing ICANN in the role of legislating normative rules for deciding disputes between third parties regarding entitlement to the use of names, particularly where those rules are already addressed by national or local law. Such legislation is the appropriate province of governments. (See "General Counsel's Briefing Concerning Policy-Development Process on WIPO-2 Recommendations" <http://www.icann.org/minutes/report-wipo-01jun03.htm>.) As noted in the charts above, for this reason most of the substantive issues, and some of the procedural issues, would extend beyond ICANN's mission.

Where the issue involves only revision of the current UDRP's procedures for resolution of disputes using normative rules based on national (or local) laws, it is appropriate for ICANN to review and revise these procedures. (Note: under item 2(e)(5) of the GNSO Policy-Development Process, the revision of existing ICANN policies falls within the Policy Development Process.) Most of the "procedural issues" mentioned in the chart above fall within this category.

Because the UDRP is by its terms applicable only to gTLDs, the GNSO, which is charged with the responsibility "for developing and recommending to the ICANN Board substantive policies relating to generic top-level domains," is the appropriate body within ICANN to address the issues listed in the charts above that are within ICANN's mission.

Recommended Process for Proceeding

Based on the above, the following points seem evident:

A. There are only some issues that are within ICANN's mission.

B. Revision of the UDRP is likely to be contentious; there are not many (if any) areas that are obviously amenable to achieving consensus. (Note: the UDRP is a consensus policy, and should be revised only by consensus.)

C. While there are some areas where improvements may be possible, there does not appear to be an urgent need for revision – evidence of this is the failure of the previous task force to come to closure on any issue.

D. The GNSO Council has other issues (Whois, WIPO-2, etc.) that may warrant a higher priority. Given the limited bandwidth of the PDP, some decisions about prioritization should be made.

If and when the Council decides that a PDP on these issues should be commenced, there appear to be a significant, but manageable, set of issues that should be addressed through a policy development process within the GNSO. Taking into account ICANN's scope, the relative importance of the potential areas of review, and the likelihood of achieving consensus on any proposed modifications to the policy, staff recommends that priority be placed on the following questions:

      1. Should there be improved centralized, searchable access to administrative panel decisions?
      2. Should complainant and respondent filings be publicly available?
      3. Should complainants and respondents be allowed to amend and/or supplement their filings?
      4. Should administrative panel decisions be subject to internal appellate review?
      5. Should the procedure for implementing orders to transfer registrations be amended?*

      (*Staff notes that this particular issue, although not the subject of much discussion in the previous task force, is a subject of recurring complaints to ICANN. Dispute providers and prevailing complainants in UDRP proceedings often complain about difficulty in obtaining cooperation and communication from registrars.)

The GNSO Council could proceed by forming a new general GNSO UDRP Review Task Force. The new task force would work under the procedures and deadlines set forth in the new GNSO Policy Development Process, and would be charged with weighing all the issues outlined above (and any others it deems worthwhile). In the alternative, the council could opt for a targeted approach, commissioning a task force to tackle discrete assigned individual questions such as whether UDRP decisions should be subject to an internal appeals process.

Respectfully submitted,

Dan Halloran
Acting Staff Manager, UDRP Review

Note:

* see <http://www.dnso.org/clubpublic/nc-udrp/Arc00/msg00298.html>

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