Non-Commercial Users Constituency Letter - To the Governmental Advisory Committee
September 28, 2011
Chairwoman of the Governmental Advisory Committee (GAC)
The Non-Commercial Users Constituency (NCUC) would like to take the opportunity to express its views in relation to the Uniform Domain Name Dispute Resolution Policy (UDRP). NCUC understands that the GAC has sent a letter to the Generic Names Supporting Organization (GNSO), raising some concerns as to whether a Policy Development Process (PDP) should be initiated in relation to a review of the UDRP.
NCUC would like to welcome the GAC’s initiative in approaching the GNSO and submit its statement with its views on the UDRP. NCUC thinks it is very encouraging that the GAC is willing to speak with the GNSO and exchange ideas on the UDRP, one of ICANN’s oldest and most important policies.
It has lately come to our attention, however, that the views of the GAC on the UDRP were drafted with the solicitation and advise submitted not by the entire groups represented at the GNSO Council. NCUC is very concerned with this process and would like to submit for your consideration the statement and the comments it has submitted during the public comment period for the UDRP. We hope that you take into consideration the indisputable evidence that exists and our serious concerns on the current operation and practice of the UDRP.
NCUC would like to thank you and the GAC for your attention to the NCUC's comments and requests the opportunity to discuss the issues related to the UDRP with members of the GAC at the meeting in Dakar. We look forward to cooperating with you on this very important matter.
Dr. Konstantinos Komaitis,
Chair of the Non-Commercial Users Constituency
Comments of the Noncommercial Users Constituency (NCUC) on the Preliminary GNSO Issue Report on the Current State of the Uniform Dispute Resolution Policy (UDRP)
UDRP review should be the presumptive outcome of this process.
NCUC supports a review and believes that the burden of proof is on those who oppose it. We believe so for the following reasons:
All other ICANN policies must be regularly reviewed and improvements continuously sought.
The UDRP has been in place for a long time, was put together very quickly in the earliest stages of ICANN’s existence, and has not been reviewed or modified since.
Many country code TLDs have instituted similar Dispute Resolution Procedures (DRPs). Although many are based in part on the ICANN model, they often introduce slight procedural or substantive modifications. ICANN needs to assess whether it can learn from those differing experiences.
A significant amount of academic research and critical literature has developed around the UDRP which can be assessed for problem areas and mined for proposals to improve it.
No stakeholder or independent commentator now claims that the UDRP is perfect. Virtually all of the panelists on the workshop held at the ICANN 41 meeting in Singapore and in the earlier webinar noted specific improvements or changes they would like to see, even if they did not prefer to invest time in a PDP.
NCUC believes that resistance to the policy’s review comes from two sources. One is a fear of various parties that a formal Policy Development Process (PDP) might make the policy “worse than it is now”. In response to that, we reply that a PDP does not presume that the UDRP will be changed; it simply allows all the Stakeholder Groups within ICANN to systematically explore and answer questions about whether it should be changed and if so, whether there is agreement on ways to change it. If there is no consensus among GNSO stakeholders about any specific change, nothing should change.
Another argument heard against a review is that the timing is bad. Some believe that the timing is bad because we are headed into the new TLD program, which relies on the UDRP and the Uniform Rapid Suspension (URS) policy, and that consideration of change will “destabilize” these efforts. Others believe that other policy-making activities should be prioritized. The first claim seems entirely illogical to us. The new TLD program will expand the usage of the UDRP and the URS will rely on certain elements of the UDRP. Moreover, the URS is designed upon the same substantive and procedural ethos of the UDRP; if the UDRP is not working, we need to ensure that we fix it so that its existing flaws are not transferred to and will not affect the operation of the URS. It seems that the time between now and the actual coming to market of new TLDs is the ideal time to review the UDRP and fix any flaws. Further, we simply cannot agree with anyone who sees the UDRP and trademark – domain name conflicts in general as a low-priority area for ICANN. The UDRP touches on issues that are central to ICANN’s mission and fundamental to the interests of nearly all of its stakeholder groups. If ensuring that the UDRP is functioning properly is not a priority, what is?
To conclude, regular review and updating of policies is often presented as an “ICANN value” or way of policymaking, and it would be terribly odd for that value to not apply to one of the only substantive policies that ICANN has created -one that impacts every domain name registrant. The presumption of any ICANN policy should be constant review and improvement and the UDRP is no exception to the presumption. After more than a decade of practice and evidence, this policy is beyond ripe for a review.
The Preliminary Issues Report
NCUC is not satisfied with the quality of the published GNSO Issue Report. We expect Issue Reports to involve the collection, compilation and analysis of relevant factual evidence, and a neutral and balanced assessment of relevant literature. The Report should be enhanced to take account of the factual evidence and analysis generated in the 12 years since the UDRP has been in effect, to provide the GNSO Council with informative background materials that can prepare it for policy discussions and debates.
Over the past twelve years, the UDRP has generated a significant amount of independent academic research and critical examination. There are also statistical sources available, both in the research literature and from the UDRP providers. If one uses focused search techniques and devotes two or three days to examining the most important materials, one finds about a dozen useful empirical studies and analytical law review pieces on the UDRP. These reports could have and should have been summarized and referenced in the Issues Report. While it does take time to sift through this material and glean its findings, the amount of time consumed would almost certainly be less than that consumed by organizing a “webinar” and a survey. Instead of webinars and surveys, that merely elicit opinions from the handful of people already involved in ICANN who happen to be available, a literature review considers the evidence amassed over time, and subject to peer and critical review. There is an important distinction between an internal opinion poll among insiders with an agenda and a fact-based Issues Report.
ICANN Issues Reports, and GNSO policy development processes generally, should not rely exclusively on casual internal soundings, but rather apply a higher intellectual standard and depth of understanding. If professionals, social scientists and researchers outside of ICANN have devoted resources and expertise to the analysis of ICANN and its policies, our processes can only benefit from drawing upon these materials. We note that the Security and Stability Advisory Committee (SSAC) reports routinely involve reviews of the relevant research literature and often do a good job of compiling and summarizing such literature. The GNSO needs to do the same. As the primary policy making arm for generic domains on the Internet, a higher level of analysis should be sought, as befitting its responsibility to good governance and the global public interest.
Summary of research literature
To aid the compilation of a more complete report, we list and provide brief summaries of the relevant research in the appendix to this comment. The sources are in chronological order. We ask that this information be incorporated into the revised Issues Report. The overview exposes a huge disparity between the Preliminary Issue Report conclusions and the conclusions of most of the research literature on UDRP. The preliminary report portrays the UDRP as completely consistent, fair and universally supported. Nearly all scientific reports, on the other hand, while noting the UDRP’s success at reducing the costs of resolving domain name disputes and rectifying gross forms of cybersquatting, tend to be critical of both substantive and procedural aspects of the UDRP. In other words, independent, neutral research does not support the preliminary report's assertions that UDRP is fair, consistent and in no need of review.
Helfer, Laurence R. and Dinwoodie, Graeme B., Designing Non-National Systems: The Case of the Uniform Domain Name Dispute Resolution Policy. William & Mary Law Review, Vol. 43, p. 141, 2001; Stanford/Yale Jr. Faculty Forum Paper No. 01-05. Available at SSRN: http://ssrn.com/abstract=275468
The article critically assesses the Uniform Domain Name Dispute Resolution Policy (UDRP) as a potential model for solving the legal challenges presented by transborder activity. It describes the conditions that led to the UDRP's formation and considers whether the UDRP can and should be replicated elsewhere. While authors believe that UDRP succeeded in bypassing cumbersome mechanisms of national and international law making and in fulfilling demand for effective dispute settlement, they do not believe that it should be uncritically extended to other contexts. This article contains no empirical or statistical analysis of UDRP results.
Mueller, M. (2001). Rough Justice: A Statistical Assessment of ICANN's Uniform Dispute Resolution Policy. The Information Society Volume 17, Issue 3, 2001, 151 - 163
A statistical analysis of UDRP case outcomes based on the concern that ICANN allows the complainant to select the dispute resolution service provider. The statistical tests indicate that complainant selection of dispute resolution service providers does lead to forum shopping that biases the results.
Geist, Michael (2001), Fair.com? An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP
This study finds that influence over panel composition is likely the most important controlling factor in determining case outcomes. Providers steer a majority of the cases toward complainant-friendly panelists. Fifty-three percent of all NAF single panel cases were decided by only six people, and the complainant winning percentage in those cases was 94%. Provider influence over panelists diminishes in three-member panel cases, 4
since both complainant and respondent choose one of the panelists and exercise some influence over the choice of the third; predictably, complainant win rates go down in three-member panels. The study concludes by proposing changes to the UDRP to instill greater fairness and confidence in the process.
Froomkin, A. Michael (2002), Uniform Dispute Resolution Policy—Causes and (Partial) Cures. 67 Brooklyn Law Review 605.
This paper describes the main features of the UDRP and ICANN’s accompanying rules of procedure and compares them to the recommendations of the WIPO proceeding and Report called for in the 1998 White Paper. The article documents four "unfair aspects of the UDRP rules:" (1) the selection and composition of the arbitral panel; (2) the failure to provide a registrant with adequate time to reply to a complaint; (3) the limited opportunity for complainants who lose a UDRP action to get their cases into court; and (4) the absence of any meaningful check on the providers’ creation of supplemental rules that effectively tilt the playing field. Notes that in practice, UDRP’s requirement that names be registered and used in bad faith “appears to have been completely lost on numerous arbitrators, who have read 'and' as if it meant 'or.'” Notes how the noncommercial use defense imported a tarnishment concept and that this "undermines a substantial part of the free-speech value of the non-commercial and fair use defenses" and "could be used to deny protection to legitimate criticism sites.”
Mueller, M. (2002). Success by Default: A New Profile of Domain Name Trademark Disputes under ICANN’s UDRP. http://dcc.syr.edu/PDF/markle-report-final.pdf
Study supported by the Markle Foundation based on a comprehensive review and classification of the first 4,000 UDRP cases. The UDRP has been an effective remedy for cybersquatting primarily because it makes it economically inefficient for abusive registrants to defend their names. Known cybersquatters default 70–100% of the time. The study’s compilation of case statistics provides many insights into the UDRP’s results. E.g., eighteen percent (18%) of UDRP claims are based upon unregistered trademarks; the UDRP has protected personal names as strongly as registered marks; of the 20 cases UDRP panelists cite as precedents most often, all were won by Complainants and all but 4 were Respondent defaults. The study further provides proof that decisions regarding gripe and/or criticism sites are inconsistent, and calls for clarifying standards for a finding of “confusing similarity” to a trademark such that criticism, parody and commentary are not suppressed.
Selby, John (2004). Competitive Justice?: The Role of Dispute Resolution Providers under ICANN’s UDRP, 1 Macquarie Journal of Business Law 23
Having examined the quantitative and qualitative means by which Dispute Resolution Providers can compete for market share in UDRP disputes, the main thesis of the article is that the requirement that "competition" between dispute resolution providers be a design principle in the UDRP was (and continues to be) flawed. Competition between 5
such providers results in flawed incentives and likely injustices, most notably it can bias those providers towards making it easier for complainants to achieve victory over respondents (particularly through panelist selection processes and differences between provider supplemental rules). Competition between providers of justice in a situation where they are competing for selection by only party is antithetical to the principle of equal treatment of parties in a dispute.
T. Lee, D. Hunter and D. Orr, "Cohesion and Coherence in the UDRP," (2008)
A study that tests the hypothesis that UDRP panelists are more likely to side with complainants or respondents who are of the same nationality as they are. The study used automated techniques to process UDRP decision documents to sample 2944 disputed domains where the nationalities of the panelist and both litigants were known. Based on this data, the hypothesis of a nationality bias appears to fail. However, the overwhelming number of Americans in both the respondent and complainant sample may limit the results’ generality.
Komaitis, Konstantinos. The Current State of Domain Name Regulation: Domain Names as Second-Class Citizens. Routledge, 2010.
Book-length analysis that argues that domain names are a form of property, and the property rights held by domain name registrants need to be recognized in law – independently of, and carefully distinguished from, the limited rights associated with trademark protection. The book discusses the history, legal basis, procedural aspects and performance of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP). Analyzes the differences between arbitration and the UDRP, which is sometimes characterized as an arbitral process; most of the differences are shown to weaken the rights of registrants, binding them to a procedure and rules while allowing the complainant more choice and options. The book concludes with some procedural and substantive recommendations that, if applied, will help the UDRP to become a more fair and balanced system.
Substantive and/or Procedural Review of UDRP?
For NCUC, the key question is not whether to conduct a review of the UDRP, but rather, how to conduct a review of the UDRP. NCUC members agree that at the very least, a review of the noted procedural flaws of the UDRP should be thoroughly examined by the impacted community. A number of NCUC members further believe there should be an additional review of the underlying substantive policies contained within the UDRP, including their ability to protect freedom of expression guarantees and the fair use or other noncommercial rights of domain name registrants. Thus while the precise scope and framing of the UDRP review is open for discussion and input from all impacted stakeholders, NCUC contends that at the very least, a procedural review of the UDRP is necessary at this time.
Use standard ICANN processes, not a hand-picked group
Existing GNSO policy development processes are precisely what this type of examination was set up for and allows for balanced input from all impacted stakeholders. NCUC does not support having this process carried out by an arbitrarily selected group of “experts”. The GNSO was established for exactly this purpose and has put in place processes that provide room for multi-stakeholder participation and can reach results that reflect the views of all stakeholder groups within the ICANN structure. The community learned a valuable lesson with the failure of the single-constituency-driven Implementation Review Team (IRT), and created the subsequent Special Trademark Issues Team (STI), which reached unanimous consensus within the GNSO and drew much less criticism concerning issues of bias or misrepresentation, because it had incorporated members from across the community. We, therefore, suggest that ICANN make use of the existing GNSO processes that were established to evaluate policies and make recommendations as the community deems necessary.
Ever since the issue of a potential review of the Uniform Domain Name Dispute Resolution Policy (UDRP) was placed on the table, two camps were created: those advocating against a review – the Intellectual Property Constituency (IPC), some big brand owners and their lawyers and the UDRP accredited centers, who have been basing their arguments on issues of timing. Their main (and only) argument has been that a potential review of the UDRP would upset the current status in the adjudication of domain names and would create instability in the new gTLD environment. The other camp, the non-commercial users, have been advocating that the timing for a review is right, given the fact that the UDRP is one of the oldest ICANN policies and has been operating for more than ten years now. In the comments submitted during the public comment period, the Non Commercial Users Constituency (NCUC) outlined the academic research that has been conducted in relation to the UDRP, its process and its substance. For the past ten years, academic scholars, including myself, have indicated that the UDRP is in serious need for a review and that the system is flawed to the extent that it does not have any checks and balances, it is occasionally biased and it is procedurally flawed. These are not arbitrary accusations, but are based on extensive scholarly research and study.
The ICANN Staff Report that came out in the beginning of August suggested against reviewing the UDRP, but the decision ultimately sits with ICANN’s Generic Names Supporting Organization. One thing that we need to understand, which might assist in also understanding why there is such a great upheaval when it comes to the UDRP, is that there are many interests at stake. The accredited centres do not want to see the UDRP reviewed because for them the adjudication of domain names has become a business. WIPO and the National Arbitration Forum have managed to generate a great deal of business from domain name disputes and many of their panellists have become quite comfortable in earning their living out of the UDRP. For the trademark community, the UDRP has provided the means through which they are able to exert their power over the domain name registration culture and, to a certain extent, control the ownership of names and words used in our everyday vocabularies. At the same time, through the registration of domain names, they have managed to receive international protection for their marks, something that they could not have achieved by following the traditional trademark registration channels. So, I do understand (although I don’t agree nor do I accept it) why these bodies are pushing ICANN not to initiate a PDP on the UDRP.
But, there is something that I do not understand. Only yesterday, a letter sent by the GAC surfaced in the email list of the GNSO. According to the letter, the GAC is asking the GNSO not to proceed to a UDRP review at this stage. “The GAC is aware that the GNSO is considering initiating a Policy Development Process (PDP) for the purpose of reviewing the Uniform Domain Name Dispute Resolution Policy (UDRP). The GAC wishes to convey to the GNSO its view that a decision in favour of such a PDP at the time of launching the new gTLD program would have public policy implications of great concern to the GAC”. I have too many problems with this (initial) statement. First of all, I do not recall another time (and I might be mistaken) when the GAC has sent a letter to the GNSO asking for anything; doing it for the UDRP is quite alarming. But, more importantly, why the sudden interest? Considering that the whole issue of the UDRP started in May, why sent this letter now? The GAC did not participate in the UDRP webinar, did not participate in the Singapore UDRP panel session and did not submit any comments on the issue during the public comment period. Generally, I have never (and mean never) heard any of the GAC members talk or being concerned about the UDRP. So, why now? How did the UDRP become a priority of the GAC?
From what the letter states, it is because the GAC is concerned about the impact on 'public policy'. Yes, you have heard right - again the never-ending public policy argument. But, the idea that the UDRP should not be reviewed due to ‘public policy implications’ is as ridiculous as the idea of the UDRP being a fair system. First of all, this does not make any sense. What ‘public policy implications’ could a review of the UDRP create? Isn’t it a public policy issue the protection of free speech through clear provisions? Is it not an issue of public policy the need to provide to an international system of adjudication with clear checks and balances? These are quintessential issues that any democratic government should seek to protect. So, why doesn’t the GAC strive to secure these fundamental issues on the basis of public policy concerns? Well, the answer appears to be, because the letter did not come straight from the GAC. According to the meta info and the information retrieved from the properties of the word document, the letter was written by a trademark law firm – specifically the US based law firm of Covington & Burling. I am wondering whether the rest of the GAC is aware that their official position on a very important issue concerning the dispensation of rights between trademark owners and domain name holders is coming from a US law firm.
The rest of the letter follows more or less the same arguments we have so far heard from the trademark community: “The new gTLD program will see the introduction of several new rights protection mechanisms. The inevitable uncertainty associated with the introduction of these untested RPMs would be compounded if simultaneously the future of the primary, pre-existing and proven PRM – the UDRP – were also subject to uncertainty as a result of a long-running PDP”. I, personally, never understood this argument, no matter how much I have tried. But, let’s say that I am just dumb - in any event, the first step of a the PDP will not be to change the UDRP – it will be to ask the community to determine whether the UDRP needs to be reviewed. So, there is really no reason to panic or to make such extreme statements, seeking to spread unnecessary fear to the community.
Another interesting point in the letter is the following: “Further, the GAC notes that almost 50% of the country code top level domain (ccTLD) operators have either adopted the UDRP itself or a variant of it, such that any potential changes to the UDRP that could result from a PDP would potentially have broad implication beyond the remit of the GNSO”. Rubbish – even if we accept this figure, why make a review of the UDRP dependant on the stability of these processes? Needless to say that many of these ccTLD operators have taken the UDRP and have created much fairer and more balanced versions of it. Take, for example, NOMINET’s equivalent policy. It started as a copy of the UDRP, but it is currently a policy document that has managed to surpass the UDRP in many ways: it has incorporated clear safe harbour provisions and it has adopted an internal appeals process, providing this way a system with more checks and balances. (The STI actually suggested its safe harbour provisions based on NOMINET's wording). Why was NOMINET allowed to amend and create new provisions within its own body of rules and the UDRP is not allowed to do the same? Wouldn’t the GAC like to see a more balanced, better and fairer UDRP, especially since there is evidence that this can be achieved?
Therefore, this GAC letter to the GNSO only tells us one thing: the same way the trademark community used the GAC to channel its concerns on the STI recommendations, the same way it is using it now to prevent a potential review of the UDRP. But, whereas in the STI recommendations, the GAC had sort of made its own research and sort of knew what it was talking about, in this case the GAC appears clueless and it is embarassing. If the GAC knew the history, process and the various issues of the UDRP, it would realise that not reviewing it has public policy implications (to use their own language) that governments should be concerned with.
So, I would recommend the GAC to go back and read all the academic writing that exists and dates back to 2000. It is really an eye-opener and, in any case, it would help the GAC form its own conclusions and possibly write its own letter.
I would, first, like to take this opportunity and thank ICANN for issuing its preliminary Issues Report on the Current State of the UDRP and allowing a period for public comments. Having spent more than ten years observing the UDRP as a litigious machine, I believe that it is a system that has failed to evolve organically and to reflect the true value and potential of domain names. The UDRP is stuck to a microscopic view that sees domain names mainly as tools of trademark infringement, without making room for other uses, related to and recognized by trademark law itself.
Everyone will agree that the Uniform Domain Name Dispute Resolution Policy (UDRP) is a true phenomenon. It is a process that started more than ten years ago as part of the US Government’s White Paper mandate and has developed into a process that so far has adjudicated more than 30000 domain name disputes. This is both good and bad. It is good because it demonstrates the ability of the UDRP to operate in a fair, timely and cheap manner that eliminates jurisdictional issues. It is bad, however, because it has provided UDRP panels the ability to act as international arbitrators assigning rights of international recognition; it has allowed precedent to become an integral part of its processes and its rules have acquired a normative connotation, sufficient to provide the UDRP with an unprecedented authority.
All this is quite alarming considering that the UDRP was never meant to either transform trademark law or acquire the status it currently enjoys. Because of its current authority to adjudicate the rights of trademark owners and domain name registrants, it is vital we discuss and investigate the true efficiency of the UDRP and its ability to produce decisions that can be celebrated for their fairness, reasonableness, balance and legality. Currently, these values are highly disputed in the context and content of UDRP decisions.
First, it is important we clarify a big misconception: Contrary to what the Issues Report suggests, the UDRP was never a consensus document. This has been well documented by those who participated in the UDRP process ten years ago (See, A. Michael Froomkin, A Catalog of Critical Process Failures; Progress on Substance; More Work Needed, available at http://www.law.miami.edu/~amf/-icann-udp.htm (Oct. 13, 1999). Now, however, ICANN is presented with a unique opportunity to achieve the consensus that failed to achieve some ten years ago; ICANN is provided with the right set of circumstances to involve all its stakeholders and continue to support its multistakeholder, bottom-up policy formation. The precedent established by the Special Trademark Issus Team (STI) recommendation proves that policy, based on multistakeholder participation is feasible and it can produce valuable conclusions.
The Issues Report further calls the UDRP a fair system. This is not entirely true and a close look at the UDRP and its rules clearly demonstrates the fundamental unfairness of the mechanism. Take a look, for example, at the lack of clear fair use provisions and safe harbors; calculate the unreasonably disproportionate deadlines that exist for the complainant and the respondent; pay close attention to the bias that takes place even at the time of the center selection; and, notice how the UDRP has failed to account for registrants and users located in countries, where Internet connectivity is still at its infancy.
It has been asserted during the UDRP Webinar that the UDRP has been fluid and flexible to deal with issues, not foreseen back in 1999 (pay per click, pshising, mousetrapping). This is true. But, at the same time, the UDRP has failed dramatically to account for the major changes in user participation and behaviour through domain names. Innovators, bloggers, entrepreneurs, new businesses and their domain names are not included in the UDRP of 2011. Actors administering and using the UDRP have only focused on those acts that affect trademark owners; they have completely disregarded those acts that can be harmed by the strong protection of trademarks. You only have to imagine the scenario of some trademark owner, somewhere in the world, contesting <facebook.com> and you will understand the narrow view the UDRP takes in the protection of domain names.
The Issues Report suggests that “many [of the issues of the UDRP] relate to process issues associated with the implementation of the UDRP, rather than the language of the policy itself”. This is an extremely narrow interpretation. It is very difficult (and would be naive) to divorce substance from process not just for the UDRP but for any system of adjudication. Rules that are clear and coherent allow for a more efficient procedural environment; when the substantive layer is concise, the procedural level operates smoothly – and visa versa.
Another issue that is presented as contributing to the success of the UDRP is its consistency. I personally find this consistency troubling, mainly for two reasons: first, because it is confused with the fairness or success of the UDRP. Consistency proves nothing, apart from a system that is trapped in its own discretionary interpretations. And, second, it is the wrong kind of consistency. It is consistency of decisions rather than of rules. For example, the UDRP should aim for consistency in the way its rules are interpreted or the way the supplemental rules of its accredited centers are enforced.
It is important to stop considering the UDRP as a business-making machine. The UDRP was created to provide relief and not to create an extremely profitable industry in the adjudication of domain names. Given that the Policy assigns and determines rights on the Internet, it should be clothed with solid checks and balances and depart from its current modus operandi, which focuses primarily on creating incentives and using the UDRP rules to satisfy certain interests than delivering justice.
Undeniably, a review of the UDRP will not be an easy task – with more than 30,000 domain name disputes, a huge volume of documented decisions, and a lot of academic writing, the body of the UDRP is colossal. However, this should not prevent the UDRP from being reviewed; on the contrary, it is should be the catalyst for its review. The UDRP will only get bigger and its case law will become more complex. ICANN is presented with a great opportunity to start discussions, deliberations and put in place mechanisms that will allow the UDRP to be properly analyzed. A good starting point would be the existing academic writings, which have produced valuable and objective considerations.
By suggesting that the UDRP should not be reviewed, the ICANN Staff is making a big mistake. We made this mistake back in 2003, when discussions for a potential review of the UDRP were cut abruptly short. We should not repeat the same mistake. We should not let the fear of what the review might do to the UDRP, take precedent over the real need to review a policy document that is very old, in many cases is out of touch with the way domain names are used nowadays and is not inclusive of emerging Internet economies.
It would be a shame, if we were to let this opportunity for a proper UDRP review pass us by. ICANN has a responsibility to make sure that the UDRP, like any of its policies, is fair and represents the needs of all the parties that participate and use it.
Dr. Konstantinos Komaitis
One of the current themes that is of great interest is whether the UDRP should be reviewed or not. In an earlier post, I have said how I disagree with the ICANN Staff recommendation that the UDRP should not be reviewed at this time. To be fair, the ICANN staff reached this recommendation on two things: first, the realization that the volume of documents (including decisions) relating to the UDRP is vast; and, second, on the overwhelming non-support of a UDRP review by those participating at ICANN's Webinar last month - actually, I think that I was the only participant in that Webinar that advocated for a review of the UDRP.
The truth is, however, that neither of these arguments should be indicative whether the UDRP needs a review. The first one is just the reality and the price we pay (and we will continue to pay) the longer we prolong a review of the UDRP. With ten years under its belt, it is not a surprise that the volume of writing and decisions is massive. And, it will only get bigger.
The second argument is even less convincing. Given the participants at the Webinar, it is really no surprise that the conclusion was against a UDRP review. The Centers have a vested interest in not changing the current structure and procedures of the UDRP, as they make huge bucks out of it; panelists also have the same vested interest, as UDRP adjudication brings them 'easy' money. No wonder why they opted for not a UDRP review.
Having spend myself quite some time researching and trying to understand the UDRP, I still strongly believe that it is vital we start thinking of the methodology for its review. But, unfortunately, after the UDRP Webinar, I need support. For this, I have created an online poll, asking the simple question: Does the UDRP need a review? I hope to be able and produce the results of this poll to ICANN in order to establish that there is support for a UDRP review. So, I would invite academics, students, researchers, participants in the domain name industry and anyone who believes that the UDRP should be reviewed to cast their vote.
The Poll can be accessed through this link: http://www.misterpoll.com/polls/526882
Thank you - 'Good day and good luck'
Over the past few months, there has been some buzz over the possibility of reviewing the Uniform Domain Name Dispute Resolution Policy (UDRP) – the oldest ICANN policy. On February 3, 2010, ICANN’s Generic Name Supporting Organization (GNSO) passed a resolution, requesting the ICANN staff to draft an Issues Report on the current state of the UDRP. According to the motion, this effort would focus on two issues:
· “How the UDRP has addressed the problem of cybersquatting to date, and any insufficiencies/inequalities associated with the process; and,
· Whether the definition of cybersquatting inherent within the existing UDRP language needs to be reviewed or updated. The Issue Report should include suggestions of how a possible PDP on this issue might be managed”.
This GNSO initiative back in February provided the excuse to all of us concerned with and researching the UDRP to start discussing possible ways for its review. And, its timing was perfect: the UDRP was celebrating just over ten years in the adjudication field of domain name disputes, discussions concerning the conflicting rights between trademark owners and domain name holders were fresh from the new gTLD process and ICANN had already made some movements towards a more efficient (electronic filling) and a more uniform (uniformity of supplemental rules across the providers) UDRP system.
The ICANN staff was directed to conduct a preliminary research on the status of the UDRP and submit its final recommendations to the GNSO. As it always happens with ICANN’s policies, the timeframe for this task was very short and, it looks like this short timeframe might have cost the UDRP a proper review. But, there were also other problems with this process: there was no clear methodology as to what this review should entail (aside from the two issues raised by the GNSO,) there was no clear direction what the aims of the review should be and, generally, there was a clear lack of understanding by the GNSO of what reviewing the UDRP entails, considering the massive body of case law that has been generated over the past ten years. So, it should really not come as a surprise that the ICANN staff found it impossible to deal in such a short time with the UDRP’s volume of cases, its substantial volume of documents (many of which go as far back as 1999) and, the great deal of academic (and not only) writing about the UDRP, its procedures and its substance. According to the ICANN staff: “Due to the tremendous volume of cases and materials available regarding the UDRP (including, over 300,000 hits on Google alone), it became clear that there was no effective way to evaluate these materials”.
Facing these difficulties, the ICANN staff – alongside the GNSO – opted for a ‘UDRP Webinar’ and a questionnaire that was sent to the various dispute resolution service providers. “The Webinar speakers were selected by the UDRP Drafting team based in part on recommendations from the UDRP providers. They reflected a broad cross-section of perspectives from various stakeholders with expertise in the UDRP and its administration, such as registrars, UDRP service providers, UDRP complainants and respondents, ICANN’s Contractual Compliance Department, and academics.”
As one of the academics invited to speak to this Webinar, I thought it was both successful and a great way to reach wide audiences. The Webinar attracted more than 100 participants and the chat application in the Adobe Connect room was flooded with ideas, questions and comments. The participants represented various interests and came from all sides of the spectrum: trademark owners, their lawyers, academics, civil society, domain name entrepreneurs, domain name businesses, etc. Each speaker was given 5-10 minutes to present their opinion, a very short but understandable timeframe, given the amount of speakers participating.
The Webinar gave all interested parties the opportunity to address their views on whether the UDRP should be reviewed. There was an overwhelming (and alarming my I add) majority of opinions against a review of the UDRP; some claimed that the timing was not right, others feared that a review would ‘break’ the UDRP whilst others felt that the mechanism, despite some flaws, is, generally, working well (for a more detailed account of these views see the ICANN Staff Preliminary GNSO Issue Report on the current state of the UDRP). On the downside, two hours proved not enough to even scratch the main problems with the UDRP; many questions by the participants were left unanswered and, to this end, ICANN could have sought ways to continue the discussions on the state of the UDRP and its potential review.
For reasons unknown, discussions on the state of the UDRP terminated after the Webinar and, on May 27, 2011, the ICANN Staff released its Preliminary Issues Report for consideration by the GNSO. The ICANN Staff report makes predominantly two mistakes: the first is that it considers the consistency and predictability of the UDRP as a good thing. To be sure, consistency and predictability can be considered positive elements in any system of adjudication as long as these are characteristics attributed to the procedural or institutional aspects of a system. But, in the case of the UDRP, predictability and consistency are connected with the winning rate of trademark owners. We all come to passively accept (how scary is that) that, depending on the provider, trademark owners will prevail in most of the cases. The second mistake is that we call the UDRP fair – I still don’t understand how we can reach such a conclusion without reviewing the UDRP and its case law to see how fair or unfair the system has been operating for the past ten years.
Unsurprisingly and disappointingly, the Preliminary Report recommends that “although properly within the scope of the GNSO’s mandate, a PDP on the UDRP not be initiated at this time”. The Report states that “after carefully evaluating the issues and concerns expressed by the ICANN community regarding the UDRP, Staff has concluded that many relate to process issues associated with the implementation of the UDRP, rather than the language of the policy itself”. This is partly true – indeed the majority of the issues identified have to do with the procedural aspects of the mechanism, but that doesn’t mean that these cannot be used as a justification for a review. At the same time though, the language issues of the UDRP – even the few ones if you wish – are very important and extremely necessary for the healthy existence and continuance of the UDRP (e.g. the lack of clear fair use provision is a language issue that needs to be addressed. Actually, the UDRP is one of the few such policies that has not made room for such language). Similarly, the argument that not many UDRP decisions have reached courts should not be used as a justification against its review. Let’s not forget that traditional trademark litigation is associated with huge costs. Nowadays, registering a domain name costs as little as $10 – how many registrants who own non-commercial domain names are willing to engage in lengthy and very expensive trademark litigation? Needless to say that in the majority of the court cases, the UDRP is not acknowledged as a system able to produce conclusions worthy of court consideration (see, for example, Parisi v. Netlearning, Inc., the Barcelona.com court cases, and Sallen v. Corinthians Licenciamentos Ltd.)
I have always advocated, and will continue to advocate, for a review of the UDRP. It is not only reasonable but necessary. The UDRP is more than ten years old. It started as a system that was meant to address the issue of cybersquatting and abusive domain name registrations and has expanded to the extent of addressing almost every contentious issue of trademark law in the online environment. That makes the UDRP some sort of an international trademark law statute, which has not been legitimised through the channels of public international law. And, this is not necessarily a bad thing, as long as we make sure that UDRP is a balanced system, respects equally both conflicting rights and their owners and is adjusted to take into consideration the changing use and purpose of domain names. At the very minimum, the UDRP should recognise domain names as articles of innovation, creativity, entrepreneurship and new business models; it also should recognise the limitations of trademark law, its boundaries and doctrines as well as its fundamental principles concerning the nexus between commercial and non-commercial speech. These are not just decorative adjustments that we can live without; these constitute essential components contributing to the legitimacy and health of the UDRP.
In my book, ‘The Current State of Domain Name Regulation: domain names as second-class citizens in a mark-dominated world’, I have identified some issues within the UDRP that contribute to its procedural unfairness. Here is a very quick breakdown:
· The UDRP fails to account for a process that consists of checks and balances and is not consistent with due process;
· The UDRP does not provide incentives, equal for both parties;
· The UDRP promotes forum shopping;
· The panellists associated with the UDRP have mainly a trademark law background;
· The number of default cases is worryingly high;
· The democratic fractions of the UDRP are weak and incapable to resist trademark penetration;
· The UDRP makes arbitrary use of precedent.
Similarly, the UDRP also promotes an inconsistent system, despite the fact that is meant to be uniform.
· The UDRP is based upon the illogical conclusion that all domain name registrations are potentially abusive and harmful and, occasionally, without any distinction or assessment between actual harm and the likelihood of such harm, it has normatively evolved into an inconsistent paradigm;
· The substantive provisions of the UDRP (paragraph 4a) are at best etymologically obscure;
· The bad faith element is open to wide and discretionary interpretations;
· There is no authority responsible for the decisions (good or bad) that come out of UDRP panels.
Given the fact that there is such speculation (more of a certainty for some, like myself) concerning the substantive and procedural deficiencies of the UDRP, many of these issues could have been addressed via a review process. At the same time, new additions in the UDRP could make this mechanism more efficient, more pragmatic and healthier; here are some recommending ideas:
· The UDRP could introduce a statute of limitations for domain name disputes, disallowing trademark owners from initiating complaints against gTLDs that have been registered more than one year previously;
· The UDRP could introduce a ‘Random Centre Generation’ system, so as to eliminate issues of forum shopping;
· The UDRP should re-evaluate the scope of the bad faith element;
· The UDRP should discourage panels from making use of precedent (at least under the current function of the UDRP);
· The UDRP should clarify and elucidate on the benchmarks domain name registrants would have to meet in order to convincingly demonstrate their rights and legitimate interests in a domain name;
· The UDRP should incorporate clear safe harbours, following other similar dispute resolution policies, such as NOMINETs’s or the URS;
· The UDRP should make room for an internal appeals process, which would cure much of the UDRP’s inconsistency, and correct bad decisions;
· The UDRP should insert a three-member blanket rule across all disputes;
· The UDRP should insert strict and specific penalties against trademark owners engaging in Reverse Domain Name Hijacking and trademark bullying.
· The UDRP should provide registrants with the possibility of initiating a UDRP dispute.
These are just some of the features that, if incorporated or – at the very minimum addressed – will assist in creating a system that is procedurally and substantively more fair and balanced. Let’s not forget that, contrary to what we now accept, back in 1999, the UDRP was not a consensus document. It was a policy, created by the trademark community, which, at the time, was given the right to design a mechanism for addressing cybersquatting; I don’t like placing bets personally, but I would bet that, in its current form and design and with the knowledge we now have, the UDRP would face strong opposition from the community, SMEs, entrepreneurs and innovators. And, let’s not kid ourselves: the UDRP was and is subject to trademark politics – a system that is initiated by the trademark community, is run by the trademark community and its future depends on the trademark community can only be based on trademark politics.
Before I close this blog post, I have to make one thing clear – I, and all the critics of the UDRP, are not against the concept of having the UDRP or against the protection and securitisation of trademarks both online and offline. Trademarks have to be protected against such issues as cybersquatting and the UDRP constitutes a vehicle towards achieving this goal. However, any protection of trademarks should not prohibit us from contemplating those provisions that are built around and within trademark law and ensure its adherence to concepts of legality and legitimacy. I am referring to issues of fair use, consumer protection and choice (the one based on allowing consumers the choice to determine whether they are confused and not the one directed by what the trademark community considers as confusion), freedom of speech and competition. The UDRP is not any system. Having spent the past ten years evolving and learning from its own processes and the cases that have appeared before its panels, the UDRP is a mechanism that can truly be inclusive. And, I don’t mean here to devalue courts and their procedures. But, the fact of the matter is that the UDRP is cheap, which makes it affordable for everyone, and it is fast, which ensures that in a fast-paced economic environment, like the Internet, is able to provide quick answers.
So, for better or worse, we are stuck with the UDRP. And, because we have to live with it, we also need to make sure that it is structured in such a way as to provide balance, fairness and due process. I am not sure we fully appreciate the power and strength of the UDRP and the implications this power has upon the commercial and non-commercial Internet. I am not sure we understand the limitations of the UDRP, the fact that this dispute resolution mechanism was never meant to replace the traditional strands of trademark law or to create new legal rules that will apply in the online environment. Here we are then, stuck with an amorphous system of rules that produces inconsistent decisions, a system of rules that institutionally does not adhere to any of the legitimate archetypes, be it arbitration or a ministerial system and one that has not followed any of the existing international law processes, despite the fact that its behaviour and status demonstrate signs similar to international law making.
Both at the UDRP Webinar and the ICANN staff report, it appears that one of the main fears against initiating a UDRP review seems to concern the fragility of the UDRP and the possibility of the UDRP collapsing if we proceed to its review. This is an artificial fear. We should really consider the possibility of how the UDRP might collapse as a system if it is not reviewed.
The letter the World Intellectual Organization (WIPO) sent to ICANN prior to the UDRP Webinar in the beginning of May makes a very good (funny) reading. It is one of these cases when you read something and you can’t help but wonder: are we on the same planet? The major issue with WIPO’s letter is that it is based on the false premise that the UDRP is a fair system. This is inaccurate – and, in any case, we cannot possibly make such a certain assertion unless and until we actually review the UDRP.
The UDRP is 10 years old. It was created back in 1999 and, since then, it has never been amended. This is problematic because any system of adjudication, especially one that is flexible and vulnerable like the UDRP, cannot possibly evolve without making mistakes in the process. For this reason, most evolving systems include checks and balances and provide a solid mechanism that allows the evolution of the system to continue undisrupted. The UDRP does not have these checks and balances. This was the concession we made a decade ago, because, back then, cybersquatting was novel, unfamiliar and dangerous. Cybersquatting now is not something new, it certainly does not sound unfamiliar and the UDRP has managed to address it. But, during this process, the UDRP became a much larger system than anticipated: it became the vehicle for the incremental expansion of trademark law.
So, for a change, let’s start from the premise that the UDRP cannot be a purely fair system and that it requires a careful review; better yet, let’s try to see the WIPO arguments from this point of view.
“The UDRP has been offering an effective solution for trademark owners, domain name registrants, and registration authorities”.
This is only partly true: the UDRP provides an effective solution for trademark owners, it does not provide an effective solution for domain name registrants and, in the larger picture, registration authorities do not really care that much as long as the domain name stays alive and they collect the registration fees.
The benefits for registrants WIPO suggests, are that “the UDRP has provided an accessible framework for established legal norms. Their application benefits from non-exhaustive registrant safe harbors at a substantive level (rights and legitimate interests) […]”. Two issues with this statement. The first one has to do with the ‘established legal norms’, which was never part of the deal. Due to the administrative nature of the UDRP and its lack of checks and balances, the UDRP rules cannot be (and should not be) considered to produce normative authority. The second one is the idea that the UDRP has safe harbors; this is a big mistake, since the UDRP’s paragraph 4c is really a very narrow outline of basic rights a registrant has. Fundamental protections for free speech, fair use and criticism are missing from the UDRP.
“By accommodating evolving norms and practices, the UDRP has proven to be a flexible and fair dispute resolution system”.
Again this is not entirely accurate. The UDRP is flexible – but not fair. I have many issues with this part of the WIPO letter. It again talks about ‘evolving legal norms’, which I consider to be extremely problematic. If we are officially using this terminology, then the need for the review of the UDRP becomes even greater and more relevant. Rules are part of a process where they get challenged and debated before they acquire their normative legal status. This never occurred in the context of the UDRP. And, the letter doesn’t stop there. It asserts that “the UDRP has incrementally developed as a public system of jurisprudence”, yet the UDRP has not undergone nearly the required process. The UDRP is an administrative system that does not even match arbitration archetypes, so how can we consider it as a ‘public system of jurisprudence’?
“With exponential DNS growth around the corner and untested new RPMs in development, this is in any event the wrong time to revise the UDRP”
I think we need to ask ourselves another question: will there ever be a good time to revise the UDRP? The truth is that this is the perfect time to review the UDRP and we should not by any chance make this review contingent upon the new gTLD process. As we proceed to create new mechanisms that procedurally and substantively are based upon the UDRP, we need to make sure that we don’t repeat the same mistakes we did 10 years ago.
The WIPO letter asserts that “the URS is as yet unsettled and presents serious issues in terms of its workability; its procedural and jurisprudential interaction with the UDRP remains largely unaddressed. Even if such issues were satisfactorily resolved, this new RPM will need to settle in practice in a DNS expanded by hundreds of TLDs”. This is not a valid argument. Ten years ago, we went through the same degree of uncertainty and instability with the UDRP. And also, let’s not forget that ICANN is not here to create systems of adjudication, but to ensure that all rights are appropriately addressed. Whether this means having the UDRP or a similar system, it doesn’t matter. There shouldn’t be a long discussion about the nexus between the two systems: the UDRP will be for the URS just another mechanism. This should be simple and WIPO exacerbates an issue that doesn’t exist.
“Institutionally stacked, an ICANN revision process would likely end up overburdening and diluting the UDRP”.
Here are also some interesting inaccuracies.
“If interests under the ICANN umbrella do not share the wide recognition of the UDRP as an overall success and rather believe it warrants revision, it would seem incumbent upon those interests to advance a transparent rationale for their views and articulate a coherent alternative model”. This actually has been done and there happens to be extensive literature on this by Froomkin, Mueller, Geist and myself, amongst others.
And, of course, if you think that the trademark community will not be pushing for more, here is what they would like to see get in the UDRP. – “Of course, from an IP rights holders’ perspective, there are numerous ways in which the UDRP might be amended. It could operate on condensed timelines and default decisions. Its scope could extend beyond trademark rights, and more recent bad-faith scenarios recorded. Calls have been made for damages options and ‘loser pays’ models. The UDRP could also be expanded to address certain forms of intermediary behavior. Other interests are on record with wish-lists that apparently include the UDRP definition of cybersquatting itself.” Expansion, expansion, expansion.
And, here is my favourite: “The anticipated ICANN process does not inspire confidence that it would meet these standards. Even when it comes to trademark policies, IP institutionally appears to occupy only a minor ICANN role. Indeed, the more vocal advocacy observed thus far does not suggest a desire to enhance the UDRP’s effectiveness as a rights protection vehicle. The present state of the URS illustrates the risks of subjecting an RPM to recycled committee processes, open-microphone lobbying and line-item horse-trading.” Here is the funny part of the letter, I mentioned in the beginning: first, trademark issues in the context of ICANN do not occupy a minor role; really? how is it then that we are discussing trademark protection since the creation of ICANN and trademark owners even have the ability to block an entire process? And, more importantly, is WIPO really serious when it suggests that open-microphone lobbying (I personally find an unsuccessful choice of words) is more dangerous or less transparent than the lobbying that is occurring behind closed doors between trademark owners and governments? Really?
“Fundamental questions about the business and DNS beneficiaries of cybersquatting must be addressed before targeting the very mechanism intended to address this practice”.
Because I don't want to repeat myself, I will add one issue in WIPO's to-do list to ICANN:
"[…]ICANN should first fairly address the following issues:
· the relationship between cybersquatting and the activities, revenues and budgets of DNS actors;
· the incidence of UDRP cybersquatting findings in relation to wider trademark abuse in the DNS overall, with filed UDRP cases merely representing the tip of the iceberg; and
· the degree of proportionality between trademark rights enforcement and domain name registration opportunities in the DNS."
... and let's not forget:
· The degree of trademark bullying and the procedural and substantive deficiencies of the UDRP.
There is really one word that can characterize the WIPO letter: F.U.D – fear, uncertainty, denial.
A recent report on the contestable issue of trademark ‘bullying’ has been released by the US Department of Commerce but, unfortunately, its substance and conclusion fail to identify the exact extent of the problem. The report acknowledges that in some cases trademark owners seek to enforce their rights through channels of intimidation and bullying, but it declares that “after careful review of the available information regarding trademark litigation tactics and comments received from concerned intellectual property stakeholders, it is unclear whether small businesses are disproportionately harmed by enforcement tactics that are based on an unreasonable interpretation of the scope of an owner’s rights”. So, is the report worthless?
Sort of. The fact that the US Department of Commerce instigated such a report, in the first place, is certainly a positive step towards accepting that there might be a problem to begin with. But, the fact that the report considers ‘trademark bullying’ as an issue that does not even warrant the willingness of the US DoC to continue to identify ways to combat it, negates the whole idea behind this initiative. But for a moment, let’s go along with the conclusions of the report and let’s say that trademark bullying only occurs periodically and in a small scale. Does this make it better or justifies it better? The problem exists and it is the responsibility of the organs that shape trademark law to terminate it. It would have been much better if the report where to at least suggest an effort to this end.
However, more importantly the report suffers from two major flaws – one procedural and one substantive.
The report was instigated by the US Department of Commerce, which has a vested interest in reaching the results that it did. The US DoC is the umbrella for trademarks and the place big trademark firms turn to when they want additional forms of protection. It has the ears of the trademark community and one should not really look as back as 6 months ago, when the same trademark community that presumably this report is referring to, went to the US DoC demanding that the ICANN trademark policies for new gTLDs are amended and expanded to protect their interests. The DoC complied. So a case can be easily made here relating to the true willingness of the US DoC to produce a report that accurately reflects the extent of the problem.
On the substantive side, the report makes a very interesting reading. It often repeats that idea that a trademark constitutes a property right and affirms the right of trademark owners to police their trademarks. Although many could question the association of trademarks with dominium characteristics, currently trademarks are regarded as limited property rights, making the right to police more subjective than it generally is. In any event, the right to police a trademark is, as Eric Goldman says, “massively overstated”. But, for me, the main substantive flaw in the report is the lack of considering trademark bullying also in the context of domain name disputes. I think that it is specifically in the context of domain names that trademark intimidation exceeds the permissible boundaries of sending a simple ‘cease and desist’ letter and becomes bullying. And, it is most certainly in this same context that trademark owners often overstate their rights and seek to expand them much beyond what trademark law allows them to. It is, finally, in this context that the party subjected to the trademark bullying most often does not have the means, the resources or often the understanding of the processes. It is really unfortunate that the report does not suggest ways to address the way trademark owners view their rights on domain names and the great lengths they are willing to go into securing what they perceive as their right. In this context, the report should have sought to include, in addition to Small and Medium Enterprises (SMEs) legitimate registrants, entrepreneurs and innovators and should have considered the data in the ChillingEffects Clearinghouse as nothing less than evidence of an ongoing problem.
But, this report can be of great use. Its doubtful conclusions can and will be used as justification within ICANN not to address the problem. The UDRP is currently undergoing its first ever review in ten years. The process has been set in motion and it moving towards its various procedural steps. When we eventually reach the stage of talking about the experience of trademark owners, domain name registrants and the whole constitution of the UDRP, we cannot do that without mentioning the problem of trademark bullying. I fear that the conclusions of this report will prevent us from even putting it on the table.
In May 5 & 6, 2011, I will be traveling to Washington, DC to attend a two-day conference organised by the Global Internet Governance Academic Network (GigaNet) in association with the American University’s School of International Service. The title of the Conference is – ‘Global Internet Governance: Research and Public Policy Challenges for the Next Decade’. The first day, the conference is more policy-oriented, discussing current themes relating to Internet Governance and public policy and the Secretary for Commerce, Larry Strickling will be delivering the keynote speech. In the second day, the conference will take a more academic tone and will discuss various issues of Internet governance under a more scholarly approach.
I am presenting my paper on the UDRP and the way it has transformed trademark law the second day and I cannot possibly contain my excitement. I have attended various conferences where I spoke about the UDRP in a very intellectual and engaging environment. But this time, two of the ‘originals’ will be there. Back in 2000, when ICANN introduced to the world the UDRP, the writings of three academics made a significant impact on the way the scholarly community – myself included – came to understand what the UDRP was, its flaws and the political and legal struggles that led to its creation. Two of these academics will be attending the conference and I have the honour in being in the same panel with one of them. The first one is Professor Michael Froomkin, whose article ‘ICANN’s UDRP: Its Causes and (Partial) Cures’ provided us with a deep understanding concerning the institutional problems with ICANN and WIPO – the masterminds behind the UDRP’s inception – and the procedural problems with the Policy itself. The second one is Professor Milton Mueller. His account of the UDRP in his article – ‘Rough Justice: A statistical assessment of ICANN’s Uniform Dispute Resolution Policy’ shed light to some very specific procedural problems with the UDRP, e.g. forum shopping, wide interpretation of the bad faith element, bias, etc.
Fast forward ten years later and a lot (and nothing) has happened. For starters, I got my PhD and published my book on the regulation of domain names, which, amongst others, also re-iterated and expanded on those procedural flaws identified by Professors Froomkin and Mueller. Second, ICANN debated and produced what it hopes to be the penultimate version of its Guidebook in relation to new gTLDs, which incorporates new protection mechanisms for trademarks, building upon the model of the UDRP. Trademark owners appeared again in full force, pushing for stronger forms of protection; only this time, they also had as their allies the governments of the world, which ‘bought’ their unsubstantiated arguments that, under the new new gTLDs, trademarks are not secured on the Internet, thus the strongest possible protection is vital. Moreover, ICANN’s Generic Names Supporting Organisation (GNSO) opened the UDRP brief for review, however, it still very premature to determine its success. And, last but not least, the UDRP has evolved in such a way that it is now a model that has adjudicated more than 45,000 domain name disputes, making the mechanism a legal regime in its own right.
These are some of the issues that I will be raising and discussing in my presentation in Washington in the company of two of my mentors. I hope that my research on domain names and my demonstration of the way the UDRP has altered our understanding of trademark law will constitute a logical extension of the arguments submitted by Mueller and Froomkin almost ten years ago. These are the ‘originals’ as I call them and being part of this group is certainly very thrilling.
For adjudicators and decision makers default constitutes perhaps one of the major procedural hurdles during the adjudication process. A defaulting party is the one that fails to appear before a court of law or a tribunal within a timely manner, thus failing to exercise her right of defence. Unquestionably, this kind of procedural awkwardness imposes a shadow of doubt in the delivery of justice. The problems with default are many: defendants don’t get to respond to the plaintiff’s assertions; judges find it extremely hard to produce solid decisions; justice struggles. If we were to prioritize, we could easily argue that the greatest challenge of default focuses on how the adjudicator will be able to reach decisions in a fair and equitable manner without, however, capitulating its own obligation for independence and impartiality; the judge cannot possibly be asked to read the defaulting party’s mind, thus inevitably decisions need to be taken absent the defendant.
But somehow, even in the absence of the defendant, justice is still ensured. The existing checks and balances of traditional adjudication processes alongside axiomatic principles relating to the rights of the parties provide a sound basis for the delivery of justice. As part of their mandate to deliver justice, courts have to make sure that the defendant is served and, if that fails, at the very minimum the court must exhaust all the possibilities for service of process. At the same time, courts also have to abide by the idea of the presumption of innocence and the right of defence. Article 48 of the EU Charter of Fundamental Rights states: “1. Everyone who has been charged shall be presumed innocent until proven guilty according to law. And, 2. Respect for the rights of the defence of anyone who has been charged shall be guaranteed”.
With this in mind, nothing in ICANN’s dispute resolution mechanisms remotely resembles this thinking. The truth is that ICANN’s processes have historically suffered from the issue of default. When the Uniform Domain Name Dispute Resolution (UDRP) was created back in 1999, default was not identified as part of its procedural rules. It was an issue that the drafters of the UDRP had either not considered or they intentionally omitted. But, default was inevitable, especially in a mechanism designed for online disputes like the UDRP, which concerns parties located anywhere in the world and everything is done electronically, from the submission of the necessary forms until the delivery of justice. So, when default started creeping into the UDRP system, the panels opted for the easiest, fastest and most unfair option – they associated it with bad faith, generating this way a vicious circle of decisions that made all defaults indiscriminately tied to bad faith. And to make matters much worse, no one within the adjudication process (ICANN or WIPO or any other accredited dispute resolution provider) stopped to question or even investigate some of the possibilities of default. Because bad faith aside, default may occur for various reasons: the domain name holder (respondent) did not receive the complaint because the email went into her spam folder; the respondent did not have time to respond to the complaint (the UDRP gives the respondent 14 days to respond); the respondent resides in a developing country or a somewhere with limited Internet access; the respondent does not speak English (and most of the complaints are submitted in English); the respondent does not understand what the UDRP is or how it works; the respondent does not have the time or money to hire an attorney to assist with the response – and the list of reasons goes on.
Fast forward now to ICANN’s new gTLD program and the idea of a Uniform Rapid Suspension System (URS). After years of debate, multiple versions of the same policy and controversial meetings, the issue of default still appears not to be settled correctly and to constitute one of the worst attributes of ICANN’s dispute resolution mechanisms. The Governmental Advisory Committee’s (GAC) recommendation, which in relation to default has been accepted by the ICANN Board, basically disseminates one simple message: default means bad faith. The GAC scorecard says: “If, as is expected in the majority of cases, there is no response from the registrant, the default should be in favour of the complainant and the website locked”. All this sentence is wrong: ‘as expected’ means that default constitutes some sort of a bizarre normative account in domain name disputes; ‘in the majority of cases’ means that without having implemented the URS, we should expect more than half of the URS cases to be in default; ‘the default should be in favour of the complainant’ means default equates to some form of malicious conduct.
On top of all this, the Examiner is stripped of any right to attempt to identify good faith, even in the case of default. Using what I consider a very bad choice of words to refer to the party defaulting as ‘non-cooperative’ both ICANN and the GAC agree, “In addition, the examination of possible defences in default cases according to para 8.4(2) means an unjustified privilege of the non-cooperating defendant.” Here is the paradox with this approach. On the one hand, the UDRP (and the current language of the URS) give wide discretionary powers to the panels to find bad faith and interpret it any way they see fit. On the other hand, however, it doesn’t allow the panels to find good faith and apply it. The argument goes that adjudicators cannot be expected to be ‘mind readers’. Sure and I am sure that none of us wants them or expects them to be although some UDRP panels have already done so to prove the impossible (for example, in Educational Testing Services v. TOEFL, the panel seeking to establish bad faith said exercised its discretion by stating the following: “[…] because Respondent is contributing no value-added to the Internet – it is merely attempting to exploit a general rule of registration – the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use for it.”). But, some domain names are, on their face, registered for fair use. Take, for instance, <ihatebrand.com> - wouldn’t you consider use of such a domain name to fall under fair use?
So, we find ourselves in a very bad conundrum – if the new gTLD program is meant to build bridges and invite applicants from across the world – developing countries included – then this approach will make it impossible. We need to understand and appreciate that not all registrants are bad actors who wish to take advantage of trademarks and we need to find ways to differentiate between those in good faith and those in bad faith. A good way would be to allow the Examiner, should she wishes to, to make determinations of good faith.
A Quick Recap:
In the last few years, ICANN has made huge strides in Protecting Trademarks within new generic Top-Level Domains (gTLDs). Now much more is being asked. Is it right? Is it appropriate? Will these changes make the new gTLDs unusable for the very communities we most hope will want them: developing countries, developing communities, new businesses, growing organizations and all the people born in the future?
Since the beginning of the new gTLD discussion, protection of trademarks has been a priority, a goal, and an accomplishment. Prior to the new gTLD process, as trademark protection we had:
• Uniform Dispute Resolution Policy (UDRP).
Now, with the most recent Applicant Guidebook, we have multiple, new trademark protection mechanisms — far more than have ever existed before in any other context:
• Uniform Dispute Resolution Policy (UDRP);
• Trademark Clearinghouse — an enormous efficiency mechanism for trademark owners, allowing them to register their trademarks in one location, rather than reaching out to all new gTLD registries individually. The Registries must now work with this single source of trademarks, and ALL must have Sunrise Periods in the New gTLD;
• Uniform Rapid Suspension system. The UDRP is much faster and cheaper than courts. But trademark owners wanted a system even faster and cheaper than the URDP. The Internet Community agreed to the URS, which is primarily designed to be faster and cheaper than the UDRP. But in its bottom-up, grassroots policy-making process, the ICANN Community required clear protections for registrants, including a fair time to respond (before a registrant loses its new business, product launch or human rights website).
On demand from trademark owners, ICANN has already slashed response time to 14 days (making responses very difficult for non-English speakers and those without access to legal assistance). Now the current proposals for a "loser pays" model will break the system. Why would registrants even think to register in the new gTLD system when a $400 fee (approximately) could be a life-deteriorating result? This result will drive registrants away from new gTLDs, and the new opportunities they are designed to provide.
• Post-delegation Dispute Process — This is the first time, we get to see a dispute resolution policy that will provide trademark owner with the ability to challenge the registry itself for abuse of the TLD.
We, the ICANN Community, negotiated in good faith and at great length to balance the rights of trademark owners with the rights of all in commercial and noncommercial sectors, with the rights of all, now and in the future, to use normal, basic words and common last names, and new combinations thereof.
Here are the problems associated with the existing proposals concerning trademark protection under the new gTLDs.
I. Uniform Rapid Suspension (URS) procedure:
This mechanism is designed to give trademark holders a cost effective, expedited process in instances of clear cut instances of trademark abuse. It was created by a group of trademark attorneys in the ICANN arena organized into a group called the "IRT Team." It was edited by a group representing all of the constituencies of ICANN, and the At-Large Community (ALAC) called the STI Team (Special Trademarks Issues). The STI accepted the URS concept, but added to it fairer notice and process.
A. What did the STI Team add?
• The STI increased the time of an answer from the registrant to 20 days (from 14). The concern is was that people need time to respond. Emails get lost in spam filters, non-English speakers need time to translate, registrants may need to seek out Counsel or assistance in responding to legal issues. Also, the ability of trademark owners to file their complaint at any time meant that many filings may take place at busy times of the year (Christmas, summer vacation). We hated to see a new businesses, much-publicized product launch, or timely human rights intervention taken down because the registrant did not have adequate time to respond.
• This timing received 'unanimous consensus' within the STI and from ICANN's GNSO Counsel.
• Unfortunately, ICANN staff has since cut the response time to 14 days, which will mean many registrants will "default" and not respond — likely losing their domain name.
Now the current recommendations in the USG 'scorecard' propose a Loser Pays Model. This recommendation is problematic for various reasons. First and foremost, the URS is a rapid review process. It is not a full and robust review of the underlying facts. Conclusions are rapid, thus mistakes will inevitably be made. Losing the domain name is bad, but the financial consequences of a URS action on the registrant can be disastrous.
The STI anticipates that a URS action will run about $500 — far cheaper than court, and about a third the price of a UDRP action. While this is considered a small amount of money for a large trademark owner, it is an enormous amount of money for a small businesses, an NGO, and an individual in any part of the world. A loss, even for a good faith registration, could be financial disastrous.
The 'Loser Pays' is inherently pro-complainant, and would especially favor big brand complainants who can outspend any individual legitimate registrant.
Why transfer of the domain name should not be part of the URS.
The original justification of the URS as introduced by the IRT was that the distinct feature of the URS was its remedies. According to the IRT report: "The URS is intended to supplement and not replace the UDRP. They are separate proceedings with distinct remedies. The URS is designed to provide a faster means to stop the operation of an abusive site. The UDRP is designed to result in the transfer of the abusive domain name."
Seeking to allow the transfer of the domain name under the URS becomes problematic at various levels. First of all, the whole foundation of the URS's justification (and the way it was 'sold' to the Internet community) collapses. Secondly, by allowing transfer under the URS a variety of issues emerge: what will be the compatibility between the URS and the UDRP? What will the differences be between the two mechanisms?
If the URS is not meant to be a process that invites substantive evaluation but rather seeks to examine superficially the alleged infringement, then allowing a remedy that seeks transfer of the domain name is against due process and basic principles of justice.
Finally, transfer of the domain name under the URS was never part of the original IRT recommendation. The STI contemplated on this issue, but decided against it.
III. Trademark Clearinghouse
One thing that deserves attention in relation to the Trademark Clearinghouse was that it was never meant to be characterized as a protection mechanism, at least in the same way the URS is meant to provide relief to trademark owners. The Trademark Clearinghouse was originally conceived as a means to provide efficiency in the domain name registration culture for both trademark owners, Registrars and Registries.
One of the main features of the Trademark Clearinghouse is that it is not meant to allocate trademark rights where none exist in the offline world. Moreover, the Clearinghouse is expected to 'understand' and 'accept' the differences of trademark law across jurisdictions and respect them to the extent that it will not create more chaos than already exists.
What Trademark + Keyword means: In the STI, we heard about many variations of domain names, and the addition of letters and stings to existing trademarks. The concern expressed was when the addition or removal of a letter changes the entire string — e.g., ENOM (a registrar), add "v" for VENOM (clearly unrelated). Similarly with GOOGLE and GOGGLE, two entirely different and distinct words. We stayed with, what I think was the IRT recommendation, of an exact match.
IV. The Post Delegation Dispute Resolution System (PDDRP)
The PDDRP is a novel and additional tool for trademark owners to protect their marks. The model is designed to allow trademark owners to turn against Registries, which appear to be encouraging or contributing cybersquatting activities.
This new mechanism is extraordinary. It is the first time that we get to experience a mechanism that can potentially terminate an entire business, taking with it both legitimate and non-legitimate users. The PDDRP provides potentially the greatest weapon to the trademark community and, if not implemented and operated carefully, it can upset and work to the detriment of the whole registration culture.
More importantly, though, the PDDRP manifests beyond any reasonable doubt that trademark protection in the Internet is more than secure.
Why the recommendations of the Special Trademark Issues Team (STI) are good.
Originally, the URS was conceived by the Implementation Recommendation Team (IRT) and when the STI was formed, the URS continued to constitute part of the Rights Protection Mechanisms. The STI was a multi-stakeholder group, which also included intellectual property owners and ICANN's Intellectual Property Constituency (IPC). The recommendations of the STI, therefore, sought to reflect all the various commercial and non-commercial interests and the recommendations it produced constitute a reflection of all the various positions.
ICANN and the ICANN Community listened, and spent more time on this issue than issue than any other one in the new gTLD process. Balances were carefully crafted; interests were carefully weighed. The STI had outstanding lawyers and non-lawyers: from the Intellectual Property and Business Communities, from the Non-commercial and At-Large (individual) Communities, from the Registries and Registrars. We reached a fair and balanced compromise — one dramatically expanding the rights protection of trademark owners, yet balancing their rights with the rights of others. It is the way trademark law has always protecting existing TM owners, without infringing the rights of all who will follow. It is a good and a fair compromise. A way forward that will allow new gTLDs to succeed, not ensure their failure.
It is the job of trademark owners to be vigilant, but it also is the responsibility of governments, ICANN and the entire Internet community to create a friendly environment for new entrants, to respect the fundamental principles of free speech, to provide choices and competition, and open new TLD options and possibilities to developing countries and communities, small businesses and entrepreneurs, and all the new services and products to follow.
Views are my own and my own only!