ICANN/DNSO

WG-A Final Report to the Names Council - July 29, 1999 - REVISED DRAFT *  

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
http://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) The DNSO recommends the adoption and implementation of a uniform  Dispute
Resolution Policy.  Such  DRP should be uniform accross current gTLDs,
approved by ICANN and implemented on a gTLD-wide level in a uniform way.


Comment: This uDRP is to be viewed as an alternative to litigation, as a fast,
inexpensive and Internet-friendly alternative (at least in relative terms) to
wordlwide legal systems and jurisdictions.

The main goals of such a uDRP would be increasing legal certainty, providing a
solution in cases where multijurisdictional conflicts prevent actuall
court-based dispute resolution and prevent forum shopping.  In this regard is
it viewes as an altrnative, not a substitute for Court litigation, which
should remain open to the parties. 

Even if the DNSO remains open to consider gTLD-specific DRPs, or variations
thereof for future for certain new gTLDs in light of possible specific uses,
characteristics or charters, we recommned a uniform DRP accross the curent 
three gTLDs regrding both their undifferentiated use and the nature of the DRP
being recommended. Moreover, such a uDRP should be more than a series of
similar or even identical policies proposed by each registrar, a gTLD-wide
(or, in the current situation, a registry.wide) DRP approved by ICANN


3) Uniformity should affect both material or substantive rules as well as
procedural rules with an effect on substantive rights of the parties. Some
minor, administrative, differences could be implemented in procedures followed
by different uDRP Service Providers. In this regard we recommend that ICANN
establishes an accreditation process for DRP Service providers based on
objective criteria, and that all accredited DRP Service Providers should be
incorporated by the Registration Authorities in their Domain Name Registration
Agreeemnts with registrants. 
.

Comment: Neither registries nor registrars should be involved in actual administration
of such policy. In this regard we beleive that ICANN should accredit DRP
Service providers among specialized dispute-resolution insitutions, accrding
to a set of objective cirteria. Both material, substantive, rules and the
procedural ones that affect substantive rights of the parties (deadlines;
notifications; etc) should be uniform. But some room could be open for
differentiation in some procedural rules such as language; fees; and other
administrative aspects.


4) 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)      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”.  

        b)      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).  

        c)      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.  

        d)      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.

        e)      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.

5)      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
Amadeu Abril i Abril  
Co-Chairs, WG-A