Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy
Date posted: September 29, 1999
At its meeting held in Santiago, Chile, on August 26, 1999, the ICANN Board of Directors, on the recommendation of the ICANN Domain Names Supporting Organization, adopted a uniform dispute resolution policy for all accredited registrars in the .com, .net, and .org top-level domains. (Board Resolution 99-81.) The Board directed the President, with the assistance of ICANN staff and counsel, to prepare implementation documents for approval by the Board after public notice and comment in time for the policy to be put in place within 45 days. (Board Resolution 99-82.)
Under the direction of ICANNís President and Chief Executive Officer, ICANN staff and counsel have prepared two documents to implement the policy as adopted by the Board, which can be found at the following links: (1) a written statement of the policy for use by registrars and (2) procedural rules under which administrative proceedings would be conducted in cases involving abusive registrations. Until October 13, 1999, public comments are solicited on whether these documents faithfully implement the policy adopted on August 26. Comments should be sent to firstname.lastname@example.org.
How the Implementation Documents Were Drafted.
In its August 26 resolutions, the Board indicated that implementation documents for an interim voluntary policy prepared by a group of ICANN-accredited registrars and Network Solutions, Inc. and presented at the ICANN meeting in Santiago should be used as the starting point in drafting implementation documents for the Board-adopted policy. The Board also indicated that the President or his delegate should convene a small drafting group to advise staff and counsel as they prepared the implementation language. The Board suggested that the drafting group should consist of persons selected to express views and consider the interests of registrar, non-commercial, individual, intellectual property, and business interests. (Board Resolution 99-83, paragraphs 1 & 2.)
Earlier this month, a drafting group was formed including Kathryn A. Kleiman (of the Association for Computing Machinery's Internet Governance Committee, a member of the DNSO Non-Commercial Domain Name Holders' Constituency, and co-founder of the Domain Name Rights Coalition), Steven J. Metalitz (General Counsel of the International Intellectual Property Alliance, a member of the DNSO Trademark, Intellectual Property, Anti-counterfeiting Interests Constituency), Rita A. Rodin (of Skadden, Arps, Slate, Meagher & Flom, retained by America Online, a member of the DNSO Registrars Constituency), A. Michael Froomkin (of the University of Miami School of Law, a former member of the WIPO Panel of Experts), and J. Scott Evans (of the Adams Law Firm P.A., a member of the International Trademark Association's Internet Committee and chair of its DNS subcommittee). These individuals were selected because of their legal drafting abilities and because they collectively represent a diversity of viewpoints.
ICANN counsel prepared the implementation documents by starting with the policy statement (entitled "Model Domain Name Dispute Resolution Policy for Voluntary Adoption by Registrars") and rules of procedure (entitled "Model Rules for Uniform Domain Name Dispute Resolution Policy") prepared by the group of ICANN-accredited registrars and Network Solutions. In its August 26 resolutions, the ICANN Board pointed out several areas in which revisions should be made to these documents:
a. In determining whether a domain name has been registered in bad faith, consideration should be given to the following factors in addition to those stated in the WIPO, DNSO, and registrarsí policies: (1) whether the domain name holder is making a legitimate noncommercial or fair use of the mark, without intent to misleadingly divert consumers for commercial gain or to tarnish the mark; (2) whether the domain name holder (including individuals, businesses, and other organizations) is commonly known by the domain name, even if the holder has acquired no trademark or service mark rights; and (3) whether, in seeking payment for transfer of the domain name, the domain name holder has limited its request for payment to its out-of-pocket costs.
b. There should be a general parity between the appeal rights of complainants and domain name holders.
c. The dispute policy should seek to define and minimize reverse domain name hijacking.
(Board Resolution 99.83, paragraphs 3-5.)
Throughout this process, the committee members provided valuable and insightful advice. It should be clearly understood, however, that the responsibility for selecting the language in the posted documents was that of ICANN staff and counsel, not the committee members. In some respects, the implementation language differs from that which individual committee members would have selected.
How the Boardís Policy Guidance Was Implemented.
As noted above, Board Resolution 99-83 listed various specific policy features that should be included in the implementation documents. To assist the public in commenting on whether the implementation documents presented here faithfully implement the Boardís resolutions, this section describes what measures were taken to implement these features.
1. Consideration of Additional Factors. The Board resolution indicated that various additional factors should be considered in determining whether a domain-name registration was made in bad faith, and therefore is subject to a mandatory administrative proceeding possibly leading to cancellation or transfer of the domain name. To implement these additional factors, portions of paragraph 4(b) of the policy (entitled "Evidence of Registration and Use in Bad Faith") were revised and a new paragraph 4(c) (entitled "How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint") was added to the registrarsí policy statement. Specifically:
a. Noncommercial and Fair Use. Resolution 99-83(3)(a) called for consideration of "[w]hether the domain name holder is making a legitimate noncommercial or fair use of the mark, without intent to misleadingly divert consumers for commercial gain or to tarnish the mark." This is implemented in the policy statement at paragraph 4(c)(iii).
b. Commonly Known by Name. Resolution 99-83(3)(b) called for consideration of "[w]hether the domain name holder (including individuals, businesses, and other organizations) is commonly known by the domain name, even if the holder has acquired no trademark or service mark rights." This is implemented in the policy statement at paragraph 4(c)(ii).
c. Payment Sought Not Indicative of Plan to Profit. Finally, Resolution 99-83(3)(c) called for consideration of "[w]hether, in seeking payment for transfer of the domain name, the domain name has limited its request for payment to its out-of-pocket costs." This is implemented in the policy statement by revising the language of paragraph 4(b)(i) to focus it on situations where the domain name was ransomed for profit.
2. Parity of Appeal. Paragraph 4 of Resolution 99-83 states the principle that "[t]here should be a general parity of appeal rights of complainants and domain name holders." Two aspects of non-parity were discussed by the drafting committee. First, it was noted that in some cases the domain-name holder would have no clear mechanism under the registrarsí documents for seeking judicial review of a decision of an administrative panel canceling or transferring the domain name. Second, it was noted that, under the policy statement prepared by the registrars, the domain-name holder had a unique advantage in that, even if an administrative panel decided that the domain name should be canceled or transferred, during court proceedings to review the decision it could obtain an automatic stay simply by presenting evidence that it had filed a complaint in any court against the complainant. As a practical matter, this could require complainants to litigate in courts with which they have no connection, while there is no similar requirement for domain-name holders.
With the assistance of the drafting committee, an integrated solution to these two aspects of non-parity was devised. First, in paragraph 3(b)(xiii) of the rules of procedure, the complainant is required to include in its complaint a statement submitting to jurisdiction for purposes of court review of administrative panel decisions in its favor. Correspondingly, paragraph 4(k) of the policy statement was revised to provide a staying effect only when the domain-name holder files suit in that jurisdiction.
After considering various options with respect to the court for which the submission to jurisdiction must be made, the ICANN staff and counsel drafted language providing for submission to jurisdiction (a) in the registrarís location when the domain-name holder has contractually submitted to jurisdiction in that location and (b) in the location shown for the domain-name holder in the registrarís Whois data in other cases. ICANN staff and counsel feels that this formulation fairly places subsequent court actions in a reasonable location for the domain-name holder, while limiting the possibility of abuses through such tactics as submission of incorrect Whois data.
3. Reverse Domain Name Hijacking. Paragraph 5 of Board Resolution 99-83 states that "[t]he dispute policy should seek to define and minimize reverse domain name hijacking." The definition of "reverse domain name hijacking" is included in paragraph 1 of the rules of procedure. There are several measures incorporated in the implementation documents designed to minimize its use. First, paragraph 15(e) of the rules of procedure provides that an administrative panel finding that a complaint was brought in bad faith shall note that fact in its decision. A second measure to minimize reverse domain name hijacking is included in paragraph 2(a) of the rules of procedure, providing enhanced notice requirements for the initial complaint. The clarification that the complainant bears the burden of proof (paragraph 4(a) of the policy statement) and the lengthening of the time for a domain-name holder to seek court review of an adverse decisions (paragraph 4(k) of the policy statement) should also minimize reverse domain name hijacking.
There was some sentiment on the drafting committee that a footnote should be included after the term "reverse domain name hijacking" to refer to guidelines that would either be incorporated into or otherwise accompany the rules of procedure to identify how a Panel may decide that reverse domain name hijacking has occurred. ICANN staff and counsel feel that this elaboration is more prudently deferred until experience with proceedings under the policy and rules accumulates.
Remaining Open Implementation Issues as to Which Comment Is Sought.
Comment is invited on a limited number of implementation issues left open in the draft documents:
1. What word limit should apply to complaints under paragraph 3(b)(ix) of the rules of procedure?
2. What word limit should apply to responses under paragraph 5(b)(i) of the rules of procedure?
3. What procedures should be used for selection of Providers and Panelists? In the process of drafting implementation documents, several alternatives were explored. Each alternative has advantages and disadvantages. In brief, the main alternatives include:
a. Allow the complainant to select the Provider by filing the complaint with that Provider. Allow the Provider to select the Panelists. This approach has the advantage of fostering competition among Providers on price, timeliness, responsiveness, and service, but gives the complainant influence over the Panelís composition, while eliminating any balancing influence by the domain-name holder.
b. Allow the domain-name holder to select the Provider and allow the Provider to select the Panelists. This alternative not only suffers from an imbalance like alternative (a), but also would frustrate effective competition among Providers on price, because the party paying (the complainant) would not have a voice in selecting the Provider.
c. Allow the registrar to select the Provider and allow the Provider to select the Panelists. One feature of this option is that the complainant and domain-name holder each have equal influence (i.e. none) over selection of the Panelists. Its disadvantages include (i) it thwarts effective price competition among Providers by depriving the complainant, which pays the Providerís fee, of any influence over choosing the Provider; (ii) it creates administrative burdens for registrars and involves them in domain-name disputes, contrary to the overall design of the policy; and (iii) it creates a (perhaps irresistible) potential for registrars to seek to differentiate themselves in the marketplace by the outcomes under Providers they select, thereby undercutting uniformity among registrars. This last feature would, in the view of ICANN staff and counsel, severely impair the principle that the dispute resolution policy should be uniform among registrars, and is therefore contrary to Board Resolutions 99.43 and 99.83.
d. Allow the complainant to select the Provider by filing the complaint with that Provider. Allow the parties jointly to select the Panelists (if three Panelists are elected) by giving each party the ability to select one Panelist from the universe of Panelists presented by all providers and having the third Panelist selected by agreement of the first two Panelists or, failing agreement, by the Provider. This approach avoids many of the pitfalls of the above approaches. Because the complainant selects the Provider, effective price competition will be fostered. It gives both parties influence over the composition of the Panel. It ensures that outcomes are not affected by the identity of the registrar and promotes the goal of minimizing registrar involvement in domain-name disputes. It would, however, require Providers to use Panelists presented by other Providers.
4. What word guideline should apply to decisions and dissents under paragraph 15(e) of the rules of procedure?