From: "Shapiro, Ted" 
To: "'[council]'" 
Subject: [council] domain name transfer issue for tomorrow's pNC teleconference
Date: Mon, 26 Jul 1999 18:56:58 +0200

Attached please find a brief report
tracing the development of  the domain name transfer issue and a proposed
amendment to the model protocol presented at the last pNC teleconference (12
July 1999).

If amended as suggested in the conclusion of the attached report, the model
protocol would read (note the last three paragraphs are the actual
provisions-the rest is introductory language):

MODEL PROTOCOL FOR REGISTRAR TO REGISTRAR HANDLING OF REQUESTS BY A DOMAIN
NAME HOLDER TO CHANGE REGISTRARS UPON NOTICE OF A POSSIBLE CLAIM

	Certain test bed registrars are already operational and more are
rapidly coming on line with each passing week.

	There is presently evidence of forum shopping for registrars with
different dispute policies by domain name holders for improper purposes,
including, but not limited to seeking to avoid the assertion of rights by a
third party to that same domain name or the compliance with a cease and
desist letter, or to avoid the initiation of a dispute policy by the
registrar from which the domain name holder is seeking transfer, or the
resolution of a properly invoked dispute proceeding under the policy of the
registrar from which the domain name holder is seeking transfer.

The existing dispute policies presently in place and policies being
discussed do not address any protocol for registrar to registrar handling of
requests by a domain name registrant to change registrars upon notice of a
possible claim.

	ICANN should be able to make decisions without having to wait for
quarterly meetings and a decision on this proposed model protocol is
necessary to discourage ongoing undesired forum shopping.

	ICANN already has made a decision that registrars must have a
dispute policy in place before they can become operational.  By resolution
in Berlin, ICANN has encouraged the test bed registrars to formulate a model
policy and is providing assistance to them in this regard. 

	The following proposed model protocol is for registrar to registrar
handling of transfers for second level domain name registration records.
This protocol would assist in protecting intellectual property rights
holders.  Importantly, the proposed protocol does not call for hindering the
use of the domain name by the registrant assuming the dispute policy of
their existing registrar so permits.  The proposed protocol also attempts to
address the time gap between the receipt of a cease and desist letter by the
domain name holder and the invocation of a registrar's dispute policy
(assuming that policy does not provide for the placing of a hold on the
name).  During this time gap, a domain name holder can seek to change
registrars in order to avoid the invocation of its initial register's
dispute policy.

Finally, if the domain name holder seeking the transfer has been improperly
blocked by a third party from transferring registrars, that domain name
holder will not be precluded from availing themselves of any and all
appropriate remedies and actions.

	Once a registrar's dispute policy has been properly invoked and the
dispute is pending and remains unresolved, the registration of second level
domain name registration record shall not transfer that domain name to
another registrar until the dispute is properly resolved.

	Each registrar will include a provision in its registration
agreement requiring the registrant to agree not to attempt to transfer its
domain name within 60 days of receiving (a) a cease and desist letter, (b)
notice of a dispute under the registrar's dispute resolution policy, or (c)
notice of the filing of legal proceedings regarding the domain name.

	Each registrar will include a provision in its registration
agreement requiring the registrant to represent that the domain name for
which it seeks registration is not being transferred from another registrar
within 60 days of receiving (a) a cease and desist letter, (b) notice of a
dispute under the first registrar's dispute resolution
policy, or (c) notice of the filing of legal proceedings regarding the
domain name.

The purpose of this report is to provide a description of the issue of registrar to registrar handling of requests by a domain name registrant to change registrars upon receiving notice of a possible claim from a third party. The report traces the development of the issue and the various comments and points of contention which were raised. It concludes by suggesting new compromise language for the final paragraph of the model protocol.

This initiative, which was brought forward by the Intellectual Property Constituency, was first posted on the DNSO website on 24 June 1999 in advance of the pNC meeting in San Jose under the heading: Submitted for discussion at the Names Council of 25/06/99: The registration or transfer of domain names subject to dispute resolution proceedings. The underlying urgency of this issue was made clear when it was first brought to the attention of the DNSO: "As you all know, the new test-bed registrars are now (or will soon be) able to register domain names in the .com, .net and .org generic Top Level Domain spaces. ICANN has also accredited additional 30 registrars that will soon be registering domain names in the .com, .net and .org gTLDs."

The initial idea was to improve upon and refine some of the existing procedures employed by NSI as more registrars came on-line. Moreover, by presenting this issue to pNC and the DNSO, there was actually an opportunity to bring some of the NSI’s practices out into the open. As a result, the initial resolution was subsequently modified slightly following discussions with NSI and within the IPC. This modification was preceded by the brief e-mail to the pNC on 24 June 1999 (posted on the DNSO website). This led to the proposal of a simpler revised resolution on this issue:

"Once a registrar’s dispute policy has been properly invoked, the second level domain name registration record shall be locked by the registrar involved and no transfer of the domain name shall be permitted by that registrar to another registrar until the dispute is properly resolved. "

This initial proposal (and the simpler revised proposal) were the subject of some discussion and criticism (see e-mail from Kathryn Kleinman, 24 June 1999, and Jeffrey Williams, 24 June 1999 forwarding remarks by Bill Lovell and Ellen Rony-available upon request). As a result, this resolution was further refined and presented at the pNC teleconference of 12 July 1999 in the form of a model protocol (subsequently posted on the DNSO website). These further refinements were the results of discussions within the IPC and some of the comments received in response to the earlier postings. The IPC once again stressed the urgency of the situation and acknowledged that the DNSO procedural rules are not entirely clear as to the best way to handle such a situation. However, it was felt that there was an exigent circumstance, which would enable the ICANN Board to consider this proposal under Article 6 (2)(g) of the ICANN by laws.

The IPC included in its model protocol some introductory statements. Firstly, it was noted that certain test bed registrars are already operational and more are rapidly coming on line with each passing week. At the same time, it was brought to the attention of the pNC that there was "presently evidence of forum shopping for registrars with different dispute policies by domain name holders for improper purposes". As noted earlier, the current Working Groups are not addressing this issue.

Again as a reflection of the exigency of the situation, it was argued that "ICANN should be able to make decisions without having to wait for quarterly meetings and a decision on this proposed model protocol is necessary to discourage ongoing undesired forum shopping." This was further strengthened by citing a previous ICANN decision "that registrars must have a dispute policy in place before they can become operational. By resolution in Berlin, ICANN has encouraged the test bed registrars to formulate a model policy and is providing assistance to them in this regard."

The goal of this model protocol for registrar to registrar handling of transfers for second level domain name registration records was "to assist in protecting intellectual property rights holders." At the same time, the protocol sought to avoid "hindering the use of the domain name by the registrant assuming the dispute policy of their existing registrar so permits." The protocol was also designed to try to "address the time gap between the receipt of a cease and desist letter by the domain name holder and the invocation of a registrar’s dispute policy (assuming that policy does not provide for the placing of a hold on the name). During this time gap, a domain name holder can seek to change registrars in order to avoid the invocation of its initial register’s dispute policy."

Finally, the protocol sought to protect the domain holder from the improper use of this procedure by third parties: "if the domain name holder seeking the transfer has been improperly blocked by a third party from transferring registrars, that domain name holder will not be precluded from availing themselves of any and all appropriate remedies and actions."

Following the 12 July teleconference, a brief report of the pNC discussion was sent to the pNC and posted on the DNSO website. This brief report noted in particular that this issue already had significant consensus behind it and general agreement in pNC on the principles to be achieved. However, the pNC had some technical concerns and decided that the model protocol should be further refined before re-tabling the issue for the July 27 teleconference. The main points raised during the 27 July teleconference and the responses to the points are posted on the DNSO website. The pNC also decided that a working group (Ken Stubbs, Ted Shapiro and David Johnson) should prepare this issue for the next teleconference.

Following the 12 July pNC teleconference, there was limited discussion of this issue on the GA list. The discussion focussed mostly on the issue of "perjury stipulation" and the feeling that the perspectives of individual domain name holders had not been represented. In an effort to the present such views, it was suggested any "penalties for statements made relative to a trademark dispute" should be accompanied by "an equal requirement on the trademark holder". (See msg00069, see also msg00070). Others also noted the difficulty with sworn statements in some legal systems (msg00070, msg00073.) As noted above, this issue was also raised during the 12 July pNC teleconference. With respect to the point about individual domain name holders, one comment noted that "there were enough members of the pNC who required more protection for the small domain name holders" (msg00075).

The main point of concern arising from the model protocol would appear to center around the perjury/sworn statement and the rights of individual domain name holders. Caroline Chicoine (IPC representative on the pNC) has suggested the following compromise:

"As a means of compromise, would it be easier to have each Registrar include a provision in their application for domain names requiring an applicant to agree that it will not attempt to transfer its domain name within sixty (pick a reasonable time period) days of receiving a cease and desist letter or notice of dispute concerning the domain name sought to be transferred. This way, you eliminate the need for sworn affidavits, and you provide a complainant with sufficient time to properly invoke the relevant dispute policy or sue, if necessary, whereby the "first" provision kicks in. In this regard, I wonder whether we should add a sentence to the first provision which would also prevent a registrant from transferring a domain name if it is the subject of litigation. The sixty (or whatever people feel is reasonable) day time period also puts a time limit on how long such transfers can be restricted."

On the basis of this suggested compromise, the final paragraphs of the model protocol presented on 12 July could read as follows (with the rest of the proposal unchanged):

Each registrar will include a provision in its registration agreement requiring the registrant to agree not to attempt to transfer its domain name within 60 days of receiving (a) a cease and desist letter, (b) notice of a dispute under the registrar's dispute resolution policy, or (c) notice of the filing of legal proceedings regarding the domain name.

Each registrar will include a provision in its registration agreement requiring the registrant to represent that the domain name for which it seeks registration is not being transferred from another registrar within 60 days of receiving (a) a cease and desist letter, (b) notice of a dispute under the first registrar's dispute resolution policy, or (c) notice of the filing of legal proceedings regarding the domain name.