No Subject

[Jonathan Cohen <jcohen@shapirocohen.com>]

To all pNC:

We are sending for your review in advance of tomorrow's
teleconference, the first draft of the WG-A Final Report to the Names
Council, respecting sub-questions (a), (c) and (d).  

(This document is intended for internal review and not for posting at
this time).  

Jonathan Cohen



WG-A Final Report to the Names Council - July 26, 1999 -  DRAFT
*

* Please note: This is a first draft of WG-A’s report and extends
only to sub-questions (a), (c) and (d).  Amadeu Abril i Abril’s
report re: sub-question (b) is to be added.  

Introduction

The preliminary report of WG-A was posted on July 8, 1999 for public
comment after approximately three weeks of consultation.  At the
time the preliminary report was released, the point was made that this
time frame was very short in relation to the breadth and complexity of
the subject matter.  It was also noted that the scope of
consultation and ability of people to participate was affected by the
time given to WG-A in which to prepare its report.  

The RFC period for the WG-A preliminary report was approximately two and
a half weeks, with submissions invited to be posted on the General
Assembly (GA) list, the WG-A list or the list for WIPO comments, all of
which were accessible from
<www.dnso.org>.  
WG-A notes that the number of comments received was very limited, and
this could be due to the short time period available for the RFC process
mandated by the deadline for submission of the Names Council’s report to
ICANN by July 31, 1999.  Of the few comments received, it is
noteworthy that the submissions by Professor Michael Froomkin represented
a detailed and thoughtful analysis, and have been of considerable
assistance to WG-A in formulating these recommendations to the Names
Council.  

While some commentators have suggested areas where the WIPO process may
be refined, nothing has been said that differs significantly from the
conclusions drawn in the preliminary report, namely that the WIPO Uniform
Dispute Resolution Process (UDRP) should be implemented on a mandatory
basis in respect of disputes involving “cybersquatting” or “abusive /
bad-faith” registrations.

Further, although there is concern about expanding the UDRP to other
types of disputes on a voluntary basis until such refinements to the
process have been made, there was no cogent argument presented that would
militate against such expansion, provided that the disputants’ recourse
to the courts was not precluded.


WG-A’s Recommendations to the Names Council:

1)      Generally, the recommendations of Chapter 3 of the WIPO Report relating to Uniform Dispute Resolution Procedures (UDRP) should be put into place as soon as possible after the ICANN Board meeting in Santiago, Chile, subject to recommendation 2) below, and all Registrars should be required to adopt a UDRP, namely, that recommended by WIPO, until such time as ICANN decides that it should be replaced.

2)      For at least the balance of 1999, this UDRP should apply only to bad-faith / abusive domain name registrations (cybersquatting) on a mandatory basis, but without precluding the parties’ ability to litigate the dispute.  Further, once proof of litigation is submitted to the WIPO panel, it should immediately cease its decision-making process pending the outcome of the litigation. 

However, in light of the procedural and substantive concerns enumerated below that have been expressed by Respondents to the WG-A RFC process, it is recommended these concerns should be referred back to WIPO for its reconsideration for a short, thirty day period.  WIPO should be asked to call for an expert group of arbitrators and IP practitioners to work with it on an urgent basis to clarify the procedural implications of these concerns.  WIPO’s recommendations and conclusions in relation to these issues should then be put back before ICANN for evaluation by way of this, or another WG established for this purpose, for a two week period, before being implemented.  However, this should not delay implementation of the WIPO UDRP. 

The concerns which have been identified as lacking in substantive specificity or adequate procedural safeguards, and which should therefore be revisited by WIPO include the following: 

        a)      Registrars should be given a clear set of guidelines and an initial threshold standard that will allow them to quickly and easily decide that a dispute may involve bad-faith and should be referred to a WIPO panel for determination of this initial issue.

        

WG-A agrees with this suggestion, and recommends that WIPO be asked to develop such guidelines and threshold standard.  It is not recommended however, that implementation of the UDRP be delayed because of this. 

Although some commenters suggested a need to more clearly define “cybersquatting” and “abusive” or “bad-faith” domain name registrations, it is the belief of WG-A that the definition of “abusive” in paragraphs 170-172 of the WIPO Final Report is adequately stated, and that the foregoing recommendation in respect of the development of specific guidelines for Registrars is the only clarification required. 

        b)      The desirability of establishing a “user’s guide” to the arbitral process, possibly to be tested on focus groups prior to widespread implementation of the WIPO UDRP, in view of the fact we have no meaningful experience to date with international online arbitration from which to seek guidance on questions such as:  how arbitrators are to make credibility determinations based on paper records, which are possibly generated by parties who may be presenting their case in a language other than their own;  how to deal with situations where one party is represented and the other is not, a party fails to frame its case properly or does not have sufficient resources to do so.

WG-A considers that this point is well taken, however we suggest that we may rely to some degree on the experience of WIPO in multi-national, multi-lingual dispute resolution.  Nonetheless, WG-A supports in principle the idea that the implementation process should include as a prerequisite, the request to WIPO that it consider the formulation of such an arbitral “user’s guide”. 

        c)      The need to address the situation wherein a domain name registrant who has been unsuccessful in the ADR process is effectively prevented from “appealing” the result in a court due to the absence of a cause of action in contract, tort, regulation, statute or constitutional right.  It was noted that there is an imbalance in the WIPO process in that an unsuccessful complainant will always be able to judicially challenge an ADR result by virtue of the jurisdiction of the registry being imposed over the dispute by the WIPO Report.

One suggested solution to this problem which WG-A agrees merits further consideration, is the requirement that a complainant enter into a contract with the registrant (or the arbitral institution in a jurisdiction that recognizes third party beneficiary agreements) as a condition of initiating ADR, that provides for consent to be sued in the jurisdiction where the registrant is ordinarily resident, and in the jurisdiction where the subject registrar is located (assuming both parties do not agree to voluntarily contract out of the right to subsequent litigation). 

        d)      The need to re-examine and possibly refine the procedural timetable with respect to notice of commencement of proceedings and the prescribed period in which to submit a response. 

The potential for unfairness, or abuse of WIPO’s rules governing notice and time for response include the following:

                        date of commencement of proceedings is the date on which the arbitration service provider receives the complaint, rather than the date of actual or constructive notice of the complaint by the registrant;

                        ten day period within which a response to a notice of proceedings is to be filed and the possible difficulties such a short time period may cause a registrant in finding representation, collecting evidence and preparing the defence;

                        absence of any requirement on the part of the complainant to contact the registrant prior to filing its complaint, or to allege such contact. 

WG-A agrees that these are valid concerns, but does not at this time recommend changing the notice provisions, or extending the response time period.  One of the greatest advantages of the Internet as a commercial and communications medium, and simultaneously one of the greatest challenges it poses to intellectual property rightholders, is the speed at which transactions and transmission of information takes place.  The tremendous growth and success of the Internet has been due to the ability of its users to embrace and adapt to this pace and the fundamental rationale behind the WIPO UDRP is its ability to arbitrate disputes as efficiently, quickly and inexpensively as dictated by this unique medium. 

However, WG-A agrees that WIPO should be asked to refine the notice provisions to take into account the foregoing concerns by possibly requiring the notice to: be in the language indicated as the registrant’s preference in the registration agreement;  clearly outline the steps the respondent should take in preparing its defence; recommend to the respondent that it should seek the advice of counsel or an experienced arbitrator; and allow the respondent to seek a brief extension of time, retroactively if necessary,  if it can show reasonable grounds for requesting same. 

At this stage, it is the belief of WG-A that it is better to work out criteria for the reasonable grounds upon which extensions of time may be requested by the registrant, and to allow arbitrators to exercise their discretion in considering these grounds to grant extensions where the request is made in good faith, than to extend the time limits in general.  Such criteria could include:   differences in the parties’ respective economic resources, degree of industrialization of the parties’ respective countries, the necessity for and difficulty in obtaining translations of documents, or familiarity of the parties with arbitral proceedings.  This is not an exhaustive list. 

        e)      The need to clarify the arbitrators’ duty to ascertain the applicable law in a dispute and to apply it (paragraph 176 of the Final Report and paragraph 15 of Annex IV).

WG-A agrees that this suggestion is important in the short term and recommends that WIPO be asked to revisit these sections of its Report.  However, in the long term, WG-A recommends that WIPO be asked to consider developing an independent set of rules for its UDRP that is not based on civil or common law, and that does not rely on any existing statute or body of national case law.

        f)      The need to more clearly articulate the standard of proof in paragraph 171 of the Final Report, and associated sections of Annexes IV and V.

3)      It is recommended that early in 2000, WIPO should be asked to provide a timetable in which it can make available its UDRP with an adequate number of arbitrators from a number of different countries who speak a cross-section of languages, trained in online arbitration, making it possible to offer these dispute resolution services on a voluntary basis to disputants having trade-mark / domain name disputes.  It is recommended that such voluntary dispute resolution shall not preclude access to courts unless both parties to the dispute contract out of such access, in which case the results of the online dispute resolution process will be final and binding.

Conclusion

In summary, nothing has come out of WG-A’s work or the RFC that suggests further delay is necessary in the implementation of WIPO’s UDRP.  Clearly some clarification is required with respect to the items mentioned hereinabove, and WG-A recommends that WIPO should be asked to work with a panel of international intellectual property and arbitration experts in reconsidering these issues, and to submit its suggestions for addressing them on an urgent basis.  The overall time frame for implementation of the UDRP should not however, be delayed.  

We also recommend that WIPO be asked to be ready to extend its UDRP process on a voluntary basis to other disputes as early as possible in 2000.

Finally, we recommend that WIPO be requested to continue the work begun during the IAHC process in relation to the development of a multijurisdictional, online dispute resolution process which could in time, build on the experience gained through use of the UDRP as it currently stands, and become the quick, efficient, and reliable alternative dispute resolution method of choice for all types of intellectual property disputes on the Internet.  

Prepared by:

Jonathan C. Cohen,  
Co-Chair, WG-A