The Internet Commerce Association has just filed supplementary comments with ICANN regarding the proposed test for automatic disqualification of applicants for new gTLDs.
ICA had previously advised ICANN on December 9, 2010 that the “three strikes” test for UDRP losses needed to be refined to take into account an applicant’s domain portfolio size as well as overall UDRP decision history. We also noted the unfairness of counting as a “strike” an adverse UDRP decision that was subsequently reversed on judicial appeal. Finally, in order to assure equitable treatment for the intentional bad acts of registrants and complainants, we urged that a similar disqualification standard be established for applicants who had initiated a series of UDRP filings that resulted in findings of attempted reverse domain name hijacking.
Our new comments follow through on those views by suggesting the following changes in the automatic disqualification criteria:
• Three or more adverse UDRP decisions should only result in automatic disqualification where they constitute the majority of UDRP decisions rendered in relation to an applicant.
• An adverse UDRP decision that is subsequently reversed upon judicial appeal, or that is settled with an acknowledgement by the complainant that the registrant was not engaged in cybersquatting, should not be counted as a “strike”.
• Applicants found to have attempted reverse domain name hijacking on three or more occasions should face a similar automatic bar to participation in the new gTLD program.
The full text of our comment letter, which includes proposed language changes to the Final Applicant Guidebook, is reproduced below —
BUTERA & ANDREWS
Attorneys at Law
1301 Pennsylvania Avenue, N.W.
Washington, D.C. 20004-1701
202-347-6875
Philip S. Corwin, Partner
pcorwin@butera-andrews.com
January 15, 2011
By E-Mail to 5gtld-guide@icann.org
Board of Directors
Internet Corporation for Assigned Names and Numbers (ICANN)
4676 Admiralty Way, Suite 330
Marina del Rey, CA 90292-6601
Re: Proposed Final New gTLD Applicant Guidebook
Dear Members of the ICANN Board:
This supplementary comment letter is submitted by the Internet Commerce Association (ICA) in regard to ICANN’s November 12th notice establishing a period for public comments on the Proposed Final New gTLD Applicant Guidebook (Final AG). This letter supplements all of our comments on prior versions of the proposed Guidebook, the most recent of which was filed on December 9, 2010 and can be found at http://forum.icann.org/lists/5gtld-guide/msg00052.html.
ICA had filed a request on December 6th (available at http://forum.icann.org/lists/5gtld-guide/msg00021.html) in which we had respectfully requested a two to three week extension of the comment period to allow participants in and observers of the Cartagena meeting to assimilate its discussions prior to submitting comments. While ICANN did not act affirmatively on that request at that time and adhered to the original submission deadline of December 10, ICANN subsequently reopened the comment period until today. We appreciate ICANN’s reconsideration of the deadline and we are taking advantage of that extension to supplement our submission of December 9th.
ICA is a not-for-profit trade association representing the domain name industry, including domain registrants, domain marketplaces, and direct search providers. Its membership is composed of domain name registrants who invest in domain names (DNs) and develop the associated websites, as well as the companies that serve them. Professional domain name registrants are a major source of the fees that support registrars, registries, and ICANN itself.
Supplemental Comments
In our December 9th letter we made the following points in regard to Section 1.2.1 of the proposed Final AG:
• The inflexible “three strikes” UDRP loss applicant disqualification criteria must be adjusted to take into account the size of an applicant’s domain portfolio as well as their overall history of UDRP arbitrations.
• A UDRP loss that has been reversed upon appeal to a court of proper jurisdiction should not be counted against an applicant.
• Applicants that have been found to have engaged in three or more instances of attempted reverse domain name hijacking should be barred from participation in the new gTLD program.
The Attachment to this letter contains proposed changes in the text of a portion of Section 1.2.1 (Eligibility) that would implement these changes. These changes consist of the following:
• A stipulation that three or more final, adverse UDRP or judicial decisions against an applicant for cybersquatting must be the majority of such decisions rendered against an applicant to constitute automatic disqualification. For example, if the owner of a large domain portfolio had lost three UDRP actions in the last decade, with one such decision rendered in the last four years, but had prevailed in a dozen other actions brought against it, it seems manifestly unfair to consider such applicant as being predominantly engaged in cybersquatting – particularly given the lack of consistency and predictability in UDRP decisions. It is important to note that this refinement of the test only goes to the criteria for automatic disqualification, and would not eliminate ICANN’s discretionary powers to bar a particular applicant from being associated with a new gTLD.
• A clarification that an adverse UDRP decision that is subsequently reversed under applicable national law, or that has been the subject of post-UDRP settlement in which the complainant acknowledges that the registrant had not engaged in cybersquatting, is not a final decision and should not count for purposes of the automatic disqualification test.
• A new item l specifying that an applicant found by UDRP panelists to have engaged in three or more attempted reverse domain name hijackings (RDNH), with at least one occurring in the last four years, should also be automatically barred. We do not believe it is appropriate to balance this bar with a majority of UDRP complaints initiated by the applicant test, such as we have proposed for losing registrants in UDRP actions. Findings of attempted reverse domain name hijacking are rarely rendered in UDRP decisions, and such findings are indicative of a flagrant abuse of process willingly initiated by the complainant/applicant in an attempt to essentially steal a domain with little or no supporting law or precedent to justify the UDRP filings that resulted in findings of attempted RDNH.
Conclusion
Thank you for your consideration of our further views on this matter. We hope to see responsive changes based upon them made before the Applicant Guidebook is finalized and the new gTLD program is launched.
Sincerely,
Philip S. Corwin
Counsel, Internet Commerce Association
Attachment – Proposed Amendment of Section 1.2.1
([Deleted language in brackets], new language underlined)
k. has been involved in [of] a pattern of final, adverse decisions indicating that the applicant or individual named in the application was engaged in cybersquatting as defined in the UDRP, ACPA, or other equivalent legislation. Three or more such decisions with one occurring in the last four years will generally be considered to constitute a pattern if such decisions constitute the majority of applicable arbitration or judicial decisions rendered against the applicant. An adverse UDRP decision that is subsequently reversed upon appeal under the ACPA or other equivalent legislation, or that is subsequently the subject of a post-UDRP decision settlement in which the complainant acknowledges that the registrant did not engage in cybersquatting (trademark infringement), is not a final decision and shall not be counted as a decision indicating a pattern.
l. has been found to have engaged in attempted reverse domain name hijacking in three or more UDRP decisions with one occurring in the last four years.
[l.] m. fails to provide a good faith effort to disclose all relevant information relating to items (a) – [(k)] (l).