Zak Muscovitch, General Counsel of the ICA, was invited by the World Intellectual Property Organization (WIPO) to present at its symposium on the occasion of the 20th anniversary of the UDRP held in Geneva on October 21, 2019. This invitation was a rare opportunity to share the perspective of domain name investors to an audience of UDRP panelists. UDRP panelists are required to peer into the souls of domain name investors to determine whether the domain name investors’ actions are badly intentioned or not. UDRP panelists are usually quite familiar with, and sympathetic to, the views of trademark holders, as many indeed come from the trademark bar. Yet UDRP panelists too often have little familiarity with the domain name industry or with the perspective of the domain name investors whose actions they are judging from afar.
Presenting on two panels, Muscovitch explained that domain name investors are important stakeholders in the UDRP process and are not cybersquatters. Further, he made the point that the UDRP is not intended to only serve trademark interests, but also to protect the rights of registrants. This is a crucial and precarious balance and the UDRP must never fall prey to attempts to tilt it further in favour of trademark owners.
Since its establishment 20 years ago, the UDRP has proved to be a double-edged sword. On one hand, domain investors have, most of the time, been able to successfully use the UDRP to avoid court proceedings and to save their domain names from predatory attempts by trademark owners to seize valuable generic domain names. But on the other hand, over the years we have seen many very troubling and unfair decisions. Indeed, over the course of 20 years, we have even seen UDRP panelists change their mind about what is fair, transferring domain names in the past which they would not transfer now. Over the years, some panelists have often begrudgingly begun to accept that investing in inherently valuable and generic domain names is a bona fide business and is entitled to protection.
After many years of zealous advocacy by domain name lawyers and by the ICA, we are finally at a point where the UDRP has some degree of consistency, credibility, and stability, though we do continue to on occasion see very troubling outcomes and approaches by panelists. Moreover, there are numerous areas where procedural reform is required, as set out in our UDRP Reform Platform of 2018.
Yet despite that, there are those amongst the IP bar that are tempted to try to re-jig the UDRP to increase its breadth and scope, thereby directly harming domain name investors. One of the ways that has been floated is to change the “conjunctive” required bad faith registration AND bad faith use, to “bad faith registration OR bad faith use”. This could mean that a registration that was clearly registered in good faith, for example, prior to any trademark rights arising, could be taken away in the event of an unintended instance of a bad PPC link, or even perhaps, due to non-use.
Muscovitch made it clear to the assembled panelists, that in his view, this would be a severe and ill-advised change to the UDRP that would upset the 20 years of case law and balance that has been achieved to date. Moreover, attempts to introduce such radical substantive changes to the UDRP by trademark owners would surely be met with corresponding demands from registrants. In the ICA’s view, reform can be introduced to the UDRP via procedural changes and by clarification in the interpretation of the UDRP text rather than by changing its text. After hearing the ICA’s submissions, it appears that most of the assembled UDRP panelists have agreed – the UDRP should not see such radical changes.
The ICA would like to extend its gratitude to WIPO for inviting the ICA to participate in this important symposium on the UDRP and to thank the assembled panelists for the open and fair hearing that was received. The ICA believes that collaborative and constructive efforts to improve the UDRP remain possible without introducing any measures that would degrade investors’ ability to successfully defend their investments. The ICA looks forward to the work of the ICANN Working Group on the UDRP which will get underway shortly. The ICA hopes that trademark interests and investor interests alike will work together to ensure that balance exists in the UDRP as it was intended.
In the recent case concerning Chatroulette.org , the Panel demonstrated the responsible and prudent approach in evaluating evidence in the UDRP. The Panel stated as follows:
“The Panel takes the view that the Respondent’s denial of knowledge of the existence of the Complainant and his trade mark at that date is credible enough to require more from the Complainant to overcome. The Panel concludes that it would be unsafe on the evidence before it to reject the Respondent’s denial and conclude that the Respondent intentionally set out to acquire the Domain Name in bad faith to target the Complainant.” [emphasis added]
A Panel’s mandate and indeed its sole jurisdiction, is to only order domain names to be transferred in “clear cases”. It is crucial to recall what WIPO Panelist David Bernstein stated 18 years in his presentation to the WIPO, and what remains equally important today:
“Because of the truncated nature of the proceedings, electronic dispute resolution is not well suited to cases with hotly disputed factual assertions, requiring complex credibility determinations. Given the absence of a live hearing, cases that turn on disputed facts should instead be resolved in court, where discovery and cross-examination can permit a fact finder to navigate the shoals of conflicting testimony. [emphasis added]
A responsible and prudent UDRP panel that upholds the spirit and intent of the UDRP, will generally refrain from jumping to conclusions without an adequate evidentiary basis. This can sometimes be difficult to do, as UDPR panelists are often wise and experienced and may be tempted to resolve a dispute that otherwise should be left unresolved, since the UDRP is simply not equipped to handle disputes where there are competing rights or contested versions of material facts (See also for example, Quarterview v. Quarterview Co. Ltd., eResolution Case Numbers AF-0209a and AF-0209b) and Adaptive Molecular Technologies Inc. v. Priscilla Woodward (the existence of significant factual and legal issues makes this case inappropriate for resolution under the Policy).
The ICA acknowledges and appreciates the efforts and wisdom of the distinguished Panel in the Chatroulette.org case, which consisted of Tony Willoughby (Presiding Panelist), Alexandre Nappey, and Fernando Triana. They upheld the fairness of the UDRP procedure and employed the appropriate circumspect approach.
The Internet Commerce Association (“ICA”) is taking a leadership role in examining and reforming the UDRP. Over the following months and years during which the UDRP will be reviewed by the ICANN Rights Protection Mechanisms Working Group (the “Working Group”), the ICA will be developing policy reform proposals based upon extensive study and its consultations with ICA members who have first-hand experience with the UDRP. By publishing the 2018 UDRP Reform Policy Platform, the ICA intends to start a vigorous and constructive discussion. The ICA intends to seek broad support for these constructive reforms and to advocate for them both inside and outside the Working Group.
The UDRP although flawed in many significant respects, has been largely successful in being used to resolve thousands of domain name disputes since its inception in 1999. The language of the Policy provides for a generally fair and balanced approach to resolving these disputes, and accordingly the ICA’s policy proposals at this time encompass no substantive changes to the wording of the Policy itself. Rather, the ICA’s policy proposals encompass administrative and procedural reforms which will increase Accountability, Uniformity, Predictability, and Balance to the UDRP.
This is Version 1.1 of the ICA UDRP Reform Policy Platform. The ICA will continue to study the issues covered in this version and will additionally be publishing a Version 2.0 after consultation on Version 1.1 with UDRP stakeholders. Version 2.0 may therefore revise the policy proposals in Version 1.1, and will additionally propose further and more extensive policy proposals that the ICA is currently examining.
Proposal for ICANN Rights Protection Mechanisms Working Group
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.
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”.
Domain registrants have long voiced their desire for a comprehensive review and subsequent reforms of the Uniform Dispute Resolution Policy (UDRP). That goal is now in sight, and is set to proceed in the manner recommended to ICANN by ICA.
On January 11, 2016 ICANN policy staff submitted to the GNSO Council the “Final Issue Report on a Policy Development Process to Review All Rights Protection Mechanisms in All Generic Top-Level Domains”. That Final Report is culmination of a public comment process that started last October, in which ICA actively participated, considering how a review of the rights protection mechanisms (RPMs) for the new gTLD program should be related to an unprecedented review of the UDRP, the only ICANN Consensus Policy that has never been subjected to scrutiny since its creation. Domain registrants desiring a balanced approach to their rights versus those of trademark owners have a big stake in both reviews. RPMs should recognize and protect the rights of both domains and trademarks.
In its December 1st comment letter, ICA stated its preference for a sequential review process:
ICA prefers a separate and sequential approach for the reviews and subsequent reports and recommendations, with the RPM review preceding and thereby informing the UDRP review.
ICA further explained its practical and policy reasons for that preferred two-part approach:
Both domain registrants and trademark owner complainants deserve, after nearly two decades of unexamined use, a UDRP review and reform process that is accorded adequate time for comprehensive review and development of subsequent recommendations. This review of necessity must be preceded by the RPM review, as it was the intent of the GNSO Council in 2011 that the UDRP review be informed by that of the RPMs and by any changes made to them….We fully expect that there will be substantial interest in completing the RPM review prior to the opening of any second round of new gTLDs, and that consideration provides another reason for structural separation. If the RPM and UDRP reviews were addressed together, substantial pressure could arise to truncate the UDRP portion lest it delay the timing and adoption of final RPM recommendations. As a result this first-ever UDRP review could get short shrift and inadequate attention.
That ICA suggestion was essentially adopted by ICANN staff. In this regard, the Final Report suggests the following procedure:
Following review of community feedback received regarding the three options for a RPM review that were presented in the Preliminary Issue Report for public comment, ICANN staff recommends that the GNSO Council launch a PDP in accordance with what was presented as the third option in the Preliminary Issue Report: namely, to conduct a policy review of all the RPMs in two phases. The initial phase would focus on a review only of the RPMs developed for the New gTLD Program, and the second phase would focus on a review of the UDRP. The second phase may also include any issues identified during the first phase of the PDP that are more appropriately considered during the second phase. Cumulatively, the results of both phases of the PDP would be a full review of all RPMs developed to date for all gTLDs….Staff recommends that the work in the initial phase of the RPM PDP be performed by a standalone PDP Working Group that liaises with the recently launched PDP Working Group on New gTLD Subsequent Procedures as there may be overlapping issues arising during the work of both groups that would warrant careful coordination. Staff does not recommend folding in a review of the RPMs that were developed for the New gTLD Program into the scope of work for the New gTLD Subsequent Procedures PDP due to the likely complexity and size of that PDP….Staff also recommends that, upon completion of Phase One, the PDP Working Group submits a First Initial Report to the GNSO Council that is also published for public comment….The second, subsequent phase of work in the RPM PDP would be a review of the UDRP, ideally carried out by the same PDP Working Group….Staff believes that a benefit of this two-phased approach is a better alignment of the timing of the work on reviewing the New gTLD Program RPMs with the operational reviews of the New gTLD Program17 (including the CCT Review) and the PDP on New gTLD Subsequent Procedures. (Emphasis added)
The GNSO Council has already proceeded in harmony with that suggested approach. During its meeting of January 21st, Council adopted a Charter for The New gTLD Subsequent Procedures PDP Working Group that specifically prohibits it from addressing the RPMs, stating:
Second-Level Rights Protection Mechanisms: Proposing recommendations directly related to RPMs is beyond the remit of this PDP. There is an anticipated PDP on the “current state of all rights protection mechanisms (RPMs) implemented for both existing and new gTLDs, including but not limited to the UDRP and the URS…”. Duplication or conflicting work between the New gTLD Subsequent Procedures PDP and the PDP on RPMs must be avoided. If topics related to RPMs are uncovered and discussed in the deliberations of this PDP, those topics should be relayed to the PDP on RPMs for resolution. To assure effective coordination between the two groups, a community liaison, who is a member of both Groups, is to be appointed jointly by both Groups and confirmed by the GNSO Council. (Emphasis added)
That means that review of all the new gTLD RPMs—the Trademark Clearinghouse (TMCH) and related Sunrise and Trademark Claims service periods; Uniform Rapid Suspension System (URS); and Post-Delegation Dispute Resolution Procedures (PDDRPs) — should be the sole preserve of a new Working Group (WG) on all RPMs in all gTLDs. Following that review, it will proceed to review the UDRP and consider whether it should be reformed.
The GNSO Council will likely take up a Motion to establish that RPM WG, as well as adopt its Charter, at its next meeting scheduled to take place on February 18th.
Once Council takes that next step, ICA intends to fully engage in the review of the new gTLD RPMs and, of course, the UDRP review. ICA will advocate an approach that, while fully respecting the legitimate rights of trademark owners, brings greater balance to the exercise of all the RPMs and that helps to make the application of the UDRP a more consistent and predictable process in the future. We will of course keep our members comprehensively informed as the reviews proceed, and will solicit their feedback and guidance as critical questions emerge.
Washington, DC; December 11, 2015 —
The Internet Commerce Association today released the following initial statement in regard to the November 30 decision of the WIPO Administrative Panel in the case of Camilla Australia Pty Ltd v. Domain Admin, Mrs Jello, LLC (Case No. D2015-1593; http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-1593):
The egregious three-member panel decision in this Uniform Domain-Name Dispute-Resolution Policy (UDRP) dispute departs substantially from prevailing UDRP practice and relies on criteria inconsistent with those set forth in the UDRP as adopted by ICANN. This decision demonstrates once again that review and reform of the UDRP by ICANN is an urgent priority.
“The panelists on the Camilla.com dispute disregarded 15 years of UDRP practice, rewrote and distorted the Policy, and set an impossible standard for domain registrants to meet to avoid the loss of their valuable generic domains” said ICA Board member Nat Cohen, President of Telepathy Inc. “If this decision stands and guides panelists in other future cases, it would undermine the rights of millions of domain owners, undercut much of the domain industry, and would encourage further abuse of the UDRP system”, added Cohen.
The decision states that “the Panel accepts that the Respondent did not and could not reasonably have known of the Complainant’s trademark when it registered the disputed domain name in May 2009”. Based on prevailing and proper UDRP practice, that should have ended the analysis; the Respondent clearly could not have had bad faith intent when it registered the domain. Indeed, in ICA’s view, at that point the Panel would have had clear grounds to cite the Complainant for attempted reverse domain name hijacking. Complainant received its Australian trademark more than two years after the U.S.-based Respondent registered the domain, and only has a pending “intent to use” application for a U.S. trademark.
Instead, the panelists created new and unprecedented duties for registrants, proclaiming that a “registrant of domain names that adopts a PPC revenue model must ensure that after registration the disputed domain name is not used in a deceptive or confusing manner with new or developing trademarks” and a “registrant of domain names from the moment of acquisition must be prepared to take necessary steps to ensure that the PPC links generated by algorithm do not infringe existing trademarks, or any trademarks that may emerge in future”. (Emphasis added.) The panel’s decision would place a burden on domain registrants of generic words to monitor ongoing trademark registrations in every nation in the world. It would also require them to influence the proprietary ad placement algorithms of Yahoo!, Google, and other major online ad providers. Both of these new responsibilities are nowhere to be found in the UDRP rules and are impossible to meet.
The Camilla decision overthrows an important balance between trademark and domain registrant rights and provides a blueprint for any future trademark registrant to steal valuable generic domains without paying market value by simply initiating a UDRP action.
“While ICA respects trademark rights, the UDRP cannot be allowed to become a vehicle for legitimizing domain theft,” said Cohen.
The decision of whether to appeal this UDRP decision lies with the registrant. ICA believes that this decision should be overturned under the U.S. Anticybersquatting Consumer Protection Act (ACPA). If an appeal is filed, ICA will give full consideration to providing support to help persuade the court that the panel’s finding of bad faith registration and use is contrary to U.S. law.
ICA and its Counsel and legal advisory group are continuing to review the decision and may issue a further statement once that review is completed.
On November 30th ICA filed its comment letter regarding the “Preliminary Issue Report on a GNSO Policy Development Process to Review All Rights Protection Mechanisms in All gTLDs” that was published for public comment on October 9, 2015. ICA’s complete comment can be viewed at http://forum.icann.org/lists/comments-rpm-prelim-issue-09oct15/msg00021.html, and all 24 filed comments are available at http://forum.icann.org/lists/comments-rpm-prelim-issue-09oct15/index.html.
The principal question raised by the Report was whether the review and possible adjustment of new gTLD RPMs and the review and potential reform of the UDRP should be combined or separated. On that key decision, our comment letter said that the RPMs should be addressed prior to the UDRP review for these reasons:
We believe that the RPM review and the UDRP review each constitutes a highly complex array of interrelated questions and judgments, and that trying to combine the two into a single mega-review will tax any Working Group (WG) inordinately.
In particular, the UDRP review will constitute the first comprehensive inquiry into ICANN’s oldest Consensus Policy. It may address structural issues; such as whether ICANN should enter into uniform contractual agreements with all UDRP providers, whether there should be clear boundaries to prevent individual dispute providers’ Supplementary Rules from influencing decisional outcomes, and whether an internal appeals procedure should provide an avenue for a ‘UDRP Supreme Court’ to address and reconcile disparate decisions by different providers on nearly identical fact patterns.
…Both domain registrants and trademark owner complainants deserve, after nearly two decades of unexamined use, a UDRP review and reform process that is accorded adequate time for comprehensive review and development of subsequent recommendations. This review of necessity must be preceded by the RPM review, as it was the intent of the GNSO Council in 2011 that the UDRP review be informed by that of the RPMs and by any changes made to them. Further, as staff notes at page 8 of the Report, one result of “this approach is the fact that community consideration of the more general overarching issue concerning the comprehensiveness of all the RPMs as a set of aggregate protections for trademark holders in all gTLDs, as well as the issue of whether any of the new RPMs should be considered Consensus Policies like the UDRP, will necessarily be postponed to the second phase of work”. Unlike staff, we do not view that consideration as a drawback but as a far more responsible approach than considering integration of any of the new gTLD RPMs in legacy gTLD without knowing whether or in what manner they may be altered.
We agree with staff that “One benefit of this two-pronged approach is better alignment of the timing of the work on reviewing the new RPMs with the operational reviews of the New gTLD Program (including the CCT Review) and, conceivably, a new PDP on New gTLD Subsequent Procedures”. We fully expect that there will be substantial interest in completing the RPM review prior to the opening of any second round of new gTLDs, and that consideration provides another reason for structural separation. If the RPM and UDRP reviews were addressed together, substantial pressure could arise to truncate the UDRP portion lest it delay the timing and adoption of final RPM recommendations. As a result this first-ever UDRP review could get short shrift and inadequate attention.
Many of the other groups and individuals who filed comments also took the view that the RPM and UDRP reviews should be separate, with the RPMs teed up first.
What did surprise us was the reluctance of the trademark community to even contemplate a review of the UDRP, much less consider any changes based on nearly twenty years of experience with it.
The International Trademark Association (INTA) asserted that it is “is strongly opposed to opening the Uniform Dispute Resolution Policy (UDRP) to review as the UDRP has been functioning efficiently and well for over fifteen years. It is important to maintain this effective mechanism which combats the most blatant instances of cybersquatting within the domain name system. Any review or subsequent modifications could jeopardize the benefits that the UDRP is intended to provide to trademark owners.” Having attended INTA conferences along with thousands of others, and seen the money invested in global branding as well as the sector’s political influence, it strains credulity to believe that trademark owners could be “rolled’ in the course of a UDRP review.
ICANN’s Intellectual Property Constituency (IPC) warned “that the complexity of any review would be immense and the drain on resources considerable, with a risk of creating new problems via an overly complicated review process… the IPC has a serious concern that if a review were to be carried out, there is a risk of a polarization of views into two camps – each with a fear that the other camp would either dilute or overly strengthen the UDRP. Improvements sought by one side would be seen as potentially abusive to registrants, improvements sought by the other as potentially diluting the effectiveness of a mechanism for resolving disputes efficiently… if a review of the UDRP as a policy is to be considered, an “Expert Group” should be assembled to carry out this review.” For ICA’s part, we think that, just like war is too important to just be left to the generals, UDRP review and reform is too important to just be left to “experts” and must include participation by those with broader views of the UDRP’s impact on domain registrants and free expression, among other key considerations.
And UN agency and accredited UDRP provider the World Intellectual Property Organization (WIPO) opined that “the UDRP continues to function as intended. In its harmonized criteria and universal application, this anti-cybersquatting mechanism has come to be recognized as an international policy success… Destabilization of the predictable UDRP framework may have a range of unintended consequences. It would disrupt the body of precedent carefully developed by hundreds of panelists from across jurisdictions in tens of thousands of cases… Each day, the UDRP demonstrates the flexibility to meet the demands of an evolving DNS; it does not need system-wide updates that would imprudently limit this flexibility”. To the contrary, domain investors would respond that this “flexibility” is code for a lack of any binding precedent that makes the UDRP more of a casino game in a world of proliferating UDRP providers.
We are pleased that ICANN’s Business Constituency, of which ICA is a member, took a more balanced approach, stating, “While the BC believes that the UDRP is working well overall, it now seems timely to engage in a review of its performance with an eye toward considering possible improvements, so long as that UDRP review commences after completion of the RPM review.”
In response to the trademark community’s message of opposition and excessive caution, ICA added this final point to our comment’s Executive Summary, to wit:
Finally, we have strong disagreement with the view expressed by a minority of commenters that the UDRP review anticipated by the GNSO Council’s Resolution of December 15, 2011 should not proceed at all, and that any such undertaking would be unduly arduous and dangerous. The UDRP is the only ICANN Consensus Policy that has never been reviewed. Like any human undertaking, it is not perfect and was drafted by individuals who could not have known how it would be implemented in practice. Any UDRP review should of course be fully informed by the actual record of UDRP practice and experience of participants, and should proceed carefully. But we are confident that a good faith UDRP review that considers the legitimate rights and interests of both registrants and complainants, as well as related public policy issues, can produce a more balanced and consistent system that preserves the fundamental virtues of the UDRP while yielding modifications that benefit all affected parties.
ICA looks forward to participating in both the RPM and UDRP reviews. ICANN staff is scheduled to deliver a Report summarizing comments and suggesting next steps by December 10th. Following receipt of that report, the GNSO Council will decide on a way forward and, if ICA’s and other commenters’ proposed procedure is followed, will consider a draft Charter for an RPM review working group in the initial months of 2016.
Throughout the coming review processes, ICA will be an active participant seeking to protect the legitimate rights and interests of domain investors and developers and to bring greater balance between trademark and domain rights.
Here’s the rest of our comment letter’s Executive Summary: