Re: [nc-udrp] Some proposals for the task force on UDRP reform

["John Berryhill Ph.D. J.D." <john@johnberryhill.com>]

I wondered if this list was alive.

Did anyone have any comments on the WIPO and NAF approaches to Supplemental
Filings, and whether the UDRP should prescribe a uniform "have the case
manager hold them unless requested by the panel" approach?  The issue of
supplemental filings, and the current unpredictability thereof, was a common
refrain the questionnaire responses.  Does anyone think the UDRP should or
should not address the issue?   Does anyone care?  Or were my comments so
compelling that I should assume we are all in agreement with them?  (with the
exception of task force members who find debate to be unseemly)

One other common UDRP problem is the requirement to serve the respondent
before the registrar has been notified to lock the domain name.  I have seen
several situations where this has caused avoidable problems in that some
respondents will change domain registration data on receipt of a complaint,
but before the provider verifies the data in the complaint with the
registrar.  By that time, the data is changed, and the provider boots the
complaint for "correction".  I believe it is for this reason that in most of
the UDRP and STOP cases I have defended recently, the complainant simply does
not serve the respondent as required under the rules.  Ari Goldberger
(www.esqwire.com) reports a similar trend.  There is no penalty for failure
to serve the respondent, so it is effectively not really a rule.  In one
instance, the complainant steadfastly refused to provide a copy of the
complaint, despite the repeated demands of the respondent and the WIPO case
manager
(http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0189.html).  Such
a trend, along with the twenty day response period, makes it very hard for a
domain name registrant to find competent counsel, have that counsel do
appropriate research, and formulate a response in time to actually respond to
the complaint.

To balance the concerns of administrative efficiency, and providing the
respondent an adequate opportunity to prepare a response, I wonder whether
there could be an "intention to respond" mechanism, by which the respondent
is given a deadline to indicate an intention to respond, which would extend
the deadline to something more reasonable.  Failure to follow through on the
intention would result in automatic grant of the relief requested by the
respondent.  Defaults in the absence of such an expressed intention would
continue to be handled in the same panelist-dependent manner as today.

Once again, the 20 day response deadline is very short for an international
procedure which often involves parties who speak different languages; which
relates to a procedure unknown to most attorneys; which involves considerably
more effort than answering a civil complaint with one word "denied" or
"admitted" responses; and in which there is no requirement of proof of actual
service.  Since 9/11 international mail has been moving slowly, and it is
often the case that technical interruptions are the root cause of "non use"
of a domain name, which also interferes with email service to that domain.
While there is no reason to sit around for a protracted period to wait for,
say, John Zuccarini to respond to a complaint involving generelmotors.com, it
would be fair to provide some sort of procedural flexibility on the response
deadline.

Further, while the rules allow extension of the response deadline by consent,
unlike civil litigation where there will be situations in which the shoe is
on the other foot, and thus an incentive to cooperate on timing early on,
there is zero such incentive in the UDRP.  I have seen many an otherwise
respectable attorney from reputable firms, who would ordinarily do so in
civil litigation, flatly refuse to consent to an extension in the UDRP,
because they know very well there is no interest of their client served by so
doing.  Some case managers and panelists take a very strict view of what
constitutes an extenuating circumstance for an extension, and I have seen one
unilateral extension request refused where the respondent was on vacation for
a full 14 days of the response period.

>  Adding to Milton, a study now appears on www.udrplaw.net which
> profiles the first 166 Start-up Trademark Opposition Policy (STOP) cases
> which are a variation of the UDRP proceedings for the .BIZ top level
domain.

A thumbnail summary of mine is also circulating various places:

---
.biz STOP Results As Of June 27, 2002

Excluding terminations, the .biz STOP results so far are:

NAF - 118 STOP Decisions
37 for Respondent
81 for Complainant
Complainant win rate 68.6%

WIPO - 40 STOP Decisions
24 for Respondent
16 for Complainant
Complainant win rate 40%

COMBINED - Complainant win rate 61%

The NAF is moving STOP cases faster, and its panelists seem more likely to
find exclusive trademark rights in such words as "paint", "auto mall",
"Canadian", "premiere", "acts" [1], and several geographic terms. NAF panels
have ordered transfer of "bart.biz" from a registrant named Bart, and
"evli.biz" from a registrant having the surname Evli.

Two of the interesting decisions are those for paint.biz and automall.biz,
for both of which the USPTO has refused registration of the complainant's
application to register the corresponding mark. In automall.biz, the panelist
assigned the respondent the burden of showing the reason for the refusal,
even though the information is uniquely in the hands of the complainant, and
file histories are not retained by the USPTO for refused TM applications.

A factor more frequently relied on by NAF panels is "non use" of the domain
name, even though domain names with IP claims were placed on immediate
registry lock upon registration, which prevented modification of DNS data
from registrar default values, and even though most STOP complaints have been
filed less than four weeks after registration of the domain names.   It is
not clear whether the NAF training for STOP panelists included any sort of
familiarity with how the .biz domain name registration process was carried
out, since none of the UDRP providers publish their panelist selection or
training criteria, and some NAF panelists clearly do not understand how the
IP claim process, along with registrars who provided default nameservers or
were slow to provide adequate management tools, rendered many .biz domains to
be effectively unusable for quite some time after registration.

Aside from the disparity between WIPO and NAF, which may be due in part to
low numbers from WIPO thus far, the complainant win rate for STOP at both
providers is well below the roughly 80% overall win rate for UDRP. The
difference is more dramatic considering that STOP does not allow three-member
panels, which reduce the overall UDRP win rate. Assuming the complainant win
rate would be lower if three-member panels were permitted, then it is clear
that _a priori_ trademark claims associated with new TLD creation have a
dramatically high probability of being bogus.

STOP, which was built on the principle that multiple parties may have equally
legitimate rights to a given domain name, has been more effective and less
controversial at weeding out bogus TM claims than was the .info sunrise
which, by at least one estimate, has left 14,000 invalid sunrise
registrations alive even after the Afilias purge.  The .biz TLD application
expressly recognized the general principle that whether a domain name
registrant is a cybersquatter is a function of why the domain name registrant
registered what otherwise might be a common everyday word, which can only be
determined _a posteriori_.

[1] There may soon be no books of the New Testament left. First Corinthians,
then Acts, and now the communists are taking God out of  the Pledge of
Allegiance... :-)
------------