What do these Uniform Domain-Name Dispute-Resolution Policy (UDRP) filings have in common? —
The Internet Commerce Association (ICA), a non-profit trade group representing the domain industry, applauds the World Intellectual Property Organization (WIPO) for removing misleading guidance from the newly released updated version 3.0 of its Overview of WIPO Panel Views on Selected UDRP Questions that in the previous version had granted undeserved legitimacy to a misconstruction of the UDRP commonly known as the Retroactive Bad Faith theory. Read more
Since its establishment in 1999, the Uniform Domain Name Dispute Resolution Policy has required complainants to prove inter alia, “bad faith registration”. In practice, this has meant that where a domain name was registered before a trademark came into existence, that “bad faith registration” would be considered chronologically impossible.
Edward Zeiden is a business strategist and entrepreneur specializing in brick and mortar companies, start-ups, and the domain industry. After co-founding the startup, NameLayer (subsequently acquired by Techstars), he pursued a career in management consulting and web design.
He currently coordinates daily operations and fosters strategic partnerships at NamePros as Managing Director. He’s an avid investor in domains and the stock market. In his spare time, he still likes to help startups and local business as well as write about business strategy. Some of his most recent articles geared towards startups can be found on Morgan Linton’s blog. Read more
ICA has just filed its comment letter supporting all five recommendations contained in the GNSO Initial Report on the IGO-INGO Access to Curative Rights Protection Mechanisms Policy Development Process. ICA Counsel Philip Corwin is Co-Chair of the Working Group (WG) that prepared this Report, issued after two years of extensive research into the underlying legal and policy issues.
From the viewpoint of domain registrants, the most important recommendation is that, in the rare instance where a domain registrant targeted by an IGO believes that an adverse UDRP or URS decision is in error, the registrant will retain the right to seek de novo judicial review by a court of mutual jurisdiction. The WG did not find a sound basis for accepting the recommendation of the “IGO Small Group” that the accepted scope of jurisdictional immunity for International Intergovernmental Organizations required any appeal be heard by another arbitrator rather than a court.
Addressing this issue in its letter, ICA stated:
Creating additional rights protection schemes that apply to only an extremely small subset of Internet users is impractical and would only be justified if the mutual jurisdiction appeals clause of current DRPs would always offend the degree of judicial immunity that is generally recognized for IGOs. However, based upon the input of its legal expert, the WG properly concluded that there is no such universal absolute immunity for IGOs in domain-related disputes, and that the proper forum for adjudicating an IGO’s immunity claim is a national court.
This cautious approach is consistent with the principle that, while ICANN policies should recognize and respect existing law, ICANN has no authority to grant legal rights that go beyond contemporary law. A California non-profit corporation’s attempt to deprive domain registrants of their statutory right to judicial process might well be spurned by many national courts, and would also run afoul of many national laws prohibiting involuntary dispute arbitration that deny access to court.
Further, given the demonstrated lack of quality control, consistency, and predictability in UDRP determinations it would be fundamentally unfair to attempt to bar the owner of a valuable domain who believes that a UDRP or URS has been wrongly decided from seeking truly independent de novo judicial review. The fact that the IGO’s preferred alternative, “appeal” to another non-judicial DRP provider, might well result in a rehearing by WIPO – an UN-affiliated IGO – would inevitably raise questions about whether it was an impartial and balanced forum or one disposed to favor its IGO brethren. Likewise, as both the UDRP and URS are supplements to and not substitutes for litigation, ICANN policy should never seek to deny the citizens of any jurisdiction access to courts in order to adjudicate their statutory rights unless such a result is required by other clear and universally recognized preemptive legal principles.
In regard to what should happen when an IGO successfully asserts its immunity from the jurisdiction of such court, ICA favored adoption of Option 1 put out for comment by the WG, that “the decision rendered against the registrant in the predecessor UDRP or URS shall be vitiated”.
In explaining that preference, ICA’s letter states:
Our rationale in favor of this option is that the UDRP and URS are convenient, expedited, and lower cost supplements to available judicial process, not preemptive substitutes, and that ICANN has no authority to require a non-judicial appeal and thereby strip domain registrants of those legal rights they may possess under relevant national law. Further, our members’ overall experience with the UDRP is that panel decisions can be seriously flawed — and it is precisely in those instances where the registrant believes that panel error has occurred and the loss of a valuable or functionally important domain is imminent that availability of independent, de novo judicial review is most critically required. Given the cost of litigation, such registrant appeals will likely be rare and reserved only for the most egregious mistakes in judgment by UDRP or URS panelists.
Successful assertion of an immunity defense by an IGO in such an appeal would essentially deprive the registrant of the opportunity for independent judicial appeal. In that circumstance, the UDRP/URS would no longer be a supplement to relevant law but a preemptive substitute for it. Such a result would go far beyond ICANN’s authority, remit and mandate. Therefore, if the IGO succeeds in its immunity claim and thereby effectively strips the registrant of its only meaningful opportunity for appeal, the predecessor UDRP should be vitiated and the situation should return to the status quo ante.
While the WG did not adopt the “Small Group” proposal, its Initial Report nonetheless recommends necessary adjustments and enhancements of existing UDRP and URS practice that will enable IGOs and INGOs to more readily access these existing expedited and low-cost curative rights mechanisms to effectively respond to misuse of their names and acronyms in the domain name system (DNS). These include allowing an IGO to assert standing to file a case based upon either trademark rights or, in the alternative, demonstration that it has complied with the simple communication and notification to WIPO prerequisite for gaining the protections for its names and acronyms in national trademark law systems in accordance with Article 6ter of the Paris Convention. The Report also clarifies that an IGO may avoid any concession on the matter of jurisdictional immunity by electing to file a UDRP or URS through an assignee, agent or licensee.
The comment period on the Initial Report has been extended through March 30th at the request of ICANN’s Governmental Advisory Committee (GAC) so that its members may have the benefit of attending sessions on the WG Report as well as facilitated GNSO-GAC discussions on outstanding IGO issues during the upcoming ICANN 58 meeting in Copenhagen. The WG will evaluate all the comments and consider whether changes should be made to its recommendations prior to issuing a Final Report for consideration by the GNSO Council. Any recommendations endorsed by Council will be sent on to ICANN’s Board for approval and implementation; the GAC can render its own advice on the Final Report and the Board is bound to consider that advice if it is adopted by full GAC consensus.
The full text of ICA’s comment letter is available here: ICA-IGO-CRP-Comment-Final
On Wednesday, our fellow trade association, the Domain Name Association (DNA), announced the rollout of its “Healthy Domains Initiative” (HDI). The ICA joins the DNA in seeking solutions for stopping online abuse. However, the ICA is particularly concerned about its proposed remedy to combat online copyright infringement.
The HDI proposes to establish a “Copyright ADRP” with the power to order the transfer of domain names on the basis of claims of copyright infringement. This proposal would establish a new unregulated private legal dispute system for domain names involving claims of copyright infringement outside of any ICANN-mandated legal rights protection mechanisms (RPMs). It would also likely slam the door shut on the growing and legitimate practice of licensing and leasing domain names with no trademark issues. Nevertheless, the .Org registry operator, Public Interest Registry (PIR), has already announced its intent to soon launch its own such “Copyright ADRP” that would award domain names to prevailing copyright claimants.
This is a deeply troubling development as ICANN has up to now been the sole source of all domain name related RPMs that can result in domain transfer or suspension at gTLDs. The ICA is concerned that such a development outside of the ICANN multi-stakeholder, community-based consensus model, without public consultation, effectively circumvents ICANN’s established role and obligations, and may lead to private companies electing to force their own private legal regimes on Internet users and domain name registrants.
Unilateral actions, such as those proposed by the DNA and PIR, should not be undertaken on an ad hoc, commercial basis, outside of the ICANN framework. ICANN must not abrogate its primary responsibility to provide the policy framework for its contracted parties.
The ICA will be closely examining the HDI and PIR proposals, and will be actively engaged in opposing any unilateral actions which purport to impose private legal systems upon public resources outside of the ICANN community-based framework.
For more information visit https://www.internetcommerce.org/dna-unveils-hdi-with-copyright-udrp/
On February 1st the ICA filed its comment letter with ICANN opposing the inclusion of the URS in the .Mobi renewal registry agreement. Once again we were joined in this position by ICANN’s Business Constituency (BC), and opposed by the Intellectual Property Constituency and the International Trademark Association.
We have seen this movie before. We took the same position on these Global Domain Division (GDD) shenanigans for the 2015 renewals of the legacy .Cat, .Pro, and .Travel domains. When ICANN staff ignored our arguments and went ahead with making policy decisions through closed door contract negotiations we even filed a formal Request for Reconsideration with the Board, as did the BC and the Non-Commercial Users Constituency. We lost on that too.
Those 2015 negotiations took place before the GNSO Council chartered the working group to review all Rights Protection Mechanisms (RPMs) in all gTLDs. As we pointed out in the .Mobi letter:
The 2016 launch of the PDP Review of All Rights Protection Mechanisms in All gTLDs, which is tasked with recommending whether new gTLD RPMs should become Consensus Policy for legacy gTLDs under its GNSO Council-approved Charter, makes it particularly inappropriate for GDD staff to continue seeking that de facto policy result in non-transparent, bilateral RA negotiations that contravene the policymaking process set forth in the Bylaws.
The .Mobi RA, like the recent revision of the .XXX RA, also provides the registry with a substantial reduction in its registry fees, resulting in the unseemly appearance that the registry was bribed to adopt the URS. But as ICANN is seemingly incapable of embarrassment, the ICANN Board just approved that .XXX RA on February 3rd, giving its standard boilerplate rationalization that “inclusion of the Uniform Rapid Suspension was agreed to through bilateral negotiations between the applicable Registry Operator and ICANN”. Nobody was in that negotiating room representing domain registrants when ICM Registry obtained nearly $300,000 per year in financial benefits in exchange for its “voluntary” adoption of the URS at .XXX.
So why does ICA keep beating its head against the ICANN wall in decrying this seamy GDD practice? Because it’s the right thing to do on behalf of our members, and because ICANN needs to be called out every time GDD staff improperly use their superior leverage to push policy decisions through contract negotiations and usurp the role of the community.
And also because the .Net RA is up for renewal in a few months, and whether or not the URS should be available at the number two gTLD is a matter of central import for its 15.2 million domain registrants and should not be decided in a back room. As we gear up to review that proposed .Net RA, we’ll continue to engage in dialogue with other members of the ICANN community who share our concerns, and keep exploring whether there are alternative, more effective means to return policy decisions to that community. We will keep fighting the good fight so long as ICANN staff keeps overstepping their proper bounds.
Howard Neu is well known within the domain industry as the co-founder of the T.R.A.F.F.I.C. conference and a lifelong public servant who has also dabbled in motion pictures and media.
Howard has been an long-term political and legal force, working on many presidential and congressional campaigns. He also produced and hosted a Miami television talk show, “South Florida Speaks” for ten years, a Radio Talk show for three years and was an actor in numerous movies and stage musicals.
He has been a potent civil litigator, one who jumped into the online arena at the outset, defending notable and sometimes notorious clients. Read more
On Monday, January 23, 2017, at noon, the ICA will be holding a special session at NamesCon, to debate and select the most shocking UDRP decision of 2016. The three cases up for debate are Sihi.com, NutrihealthSystems.com and GreenTrust.com. Summaries of the cases are set out below. After the cases are presented and debated, the audience at the session will select the case that deserves the title of “Most Shocking”.
Back in 2007, Mark’s longtime childhood friend from Maryland, John Ferber, convinced him to trade in the four seasons and his suit for eternal summertime and sandals to help launch a new company. Mark, a former shopping center leasing agent, didn’t hesitate at the opportunity to relocate to Delray Beach, Florida. It was there that he learned about digital advertising for a service technology company called USO Networks, spearheaded by Ferber, along with Jason Boshoff and Erik Simons. After a short and successful time in the space, they realized their clients had multiple needs including domain asset divestment and acquisitions. The rest is history. Read more