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[council] First draft of WG-A Final Report
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