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RE: [registrars] Vote on dispute resolution policy
Jason Hendeles wrote:
Please find enclosed the information received from the WIPO meeting on July
27, 1999, additional information about the proposed 'arbitration solution',
and my comments.
After further review of the materials and the opinions presented by the
other DNSO/CDNR registrars, I have serious concerns about the current policy
direction set by WIPO and the other registrars. While I applaud the effort
and intent of all parties, I think that this initiative will create more
harm than good for registrars down the road.
The following is a summary of the WIPO arbitration process:
1. A claimant may 'Request the Arbitration' of a 'domain name' by paying
$1,000 U.S. in advanced and completing the appropriate forms (many of which
are available online).
2. After this fee has been paid an additional 'administration fee'
calculated on the basis of an hourly rate of US$300 per hour is determined
based on the claim. Both parties must agree to pay up to US$2,250 each or
3. In addition to these fees, both parties must then also agree to pay
US$500 as an advance to cover expenses that may be incurred in relation to
the arbitration (defined as travel and accommodation expenses).
TOTAL SO FAR: $6,000 U.S.
4. In the case of a counterclaim, an administration fee shall also be
payable by the Respondent to the Center within 30 days after the date on
which the counterclaim is made. The Center shall notify the Respondent of
the amount of the administration fee as soon as possible after receipt of
notification of the counterclaim.
5. If a party fails, within 15 days after a second reminder in writing from
the Center, to pay the required deposit, it shall be deemed to have
withdrawn the relevant claim or counterclaim.
6. The only reference to a limit in fees was that "The maximum
administration fee payable is $35,000 U.S."
7. I am beginning the process, because I have a relevant legal dispute to
resolve (so far, I haven't been able to get the forms to work properly, but
I'll keep on trying and tell you how it goes):
8. Completing the forms properly will require me to get some legal counsel
Is this within the WIPO mandate?
The objectives of WIPO are:
(i)to promote the protection of intellectual property throughout the world
through cooperation among States and, where appropriate, in collaboration
with any other international organization,
(ii)to ensure administrative cooperation among the Unions.
Does this mean that they should be arbitrating disputes. I read this to
mean that they should be assisting to develop a process for existing
International judicial system(s) to resolve them. You can't force
arbitration unless both parties agree. Otherwise it becomes to open for
abuse. All you can do is define a process whereby a 'court of competent
jurisdiction' can make a decision.
In the event of a dispute, the claimant should file with the appropriate
court in the correct jurisdiction. WIPO should be the organization to
define the guidelines for filing a dispute across multi-national
jurisdictions and should be actively working to train the many lower courts
Internationally how to handle these types of disputes.
My recommendations would be as follows:
1. WIPO should only arbitrate if arbitration situations are mutually agreed
upon by both parties.
2. WIPO should focus their efforts to build precedent and procedure for
lower courts Internationally to domain name disputes (there can't be more
than 50 types of domain name disputes)
WIPO should not be a middle man, they should be building a process for
utilizing the local court system to resolving disputes, an objective within
WIPO cannot be in a position where it controls domain name disputes, it will
both empower the organization beyond it's mandate and create red tape for
all registrants that will result in minimal savings to the current process.
In addition, the registrars have less protection from liability than they
did before. Because WIPO can not be held liable in any way for it's
decisions, legal actions will fall right back into our laps.
Domain name related legal decisions must be resolved by courts or
organizations that can be held accountable. The traditional court system
was built this way for a reason...to learn from it's mistakes and develop
precedents for resolving these situations in the future. The problem is
that the industry is so new, that the precedents have not yet had an effect
on the system. Process and education could change that...I urge you to
consider this as the better option...
Think carefully about the direction we are moving in. Should WIPO gain
control over domain name disputes, I can assure you it won't end there.
Rules for Administrative Procedure Concerning
Abusive Domain Name Registrations
Policy on Dispute Resolution for Abusive Domain Name Registrations
1. This document establishes a uniform administrative procedure for dealing
with complaints concerning abusive domain name registrations.
2. The Policy is subject to review and modification from time to time.
The Policy in effect on the date of the commencement of a complaint shall
3. This Policy applies to domain name disputes arising in:
(i) such generic top-level domains (gTLDs) as may be designated from time
to time by the Internet Corporation for Assigned Names and Numbers (ICANN);
(ii) any country code top-level domain (ccTLD) where the competent
authority has declared the Policy to be applicable.
4. Registration authorities in top-level domains to which the Policy
applies shall abide by this Policy and shall require domain name applicants
in their registration agreements to:
(i) submit to the administrative procedure established by the Policy in
respect of any dispute concerning the domain name that falls within the
scope of the Policy;
(ii) agree to the implementation by relevant registration authorities of
determinations made in the administrative procedure; and
(iii) agree that registration authorities shall not be liable for acting in
accordance with their enforcement and implementation responsibilities under
RELATIONSHIP WITH COURT LITIGATION
5. The availability of the administrative procedure does not preclude a
complainant from filing a claim in a court instead of initiating the
6. Any dispute that has been submitted to the administrative procedure may
be brought by either party to a court at any time during or after the
procedure. If, during the administrative procedure, the dispute is brought
to a court and the administrative complaint is not withdrawn, the
administrative Panel shall have discretion to decide whether to suspend the
administrative procedure or to proceed to a determination.
7. It is recognized that the determinations flowing from the administrative
procedure do not, as such, have the weight of binding precedent under
national judicial systems.
8. It is recognized that a temporary or final order of a court which is
enforceable in the jurisdiction of the registration authority that is
contrary to a determination resulting from the administrative procedure
overrides the administrative determination.
9. Complaints brought under the administrative procedure shall be
determined by Panels consisting of three impartial and independent members.
10. The Panels shall be appointed and the procedure administered by
dispute-resolution service providers which shall be required to receive
accreditation to render such services.
11. Each dispute-resolution service provider shall maintain a list of
persons from which administrative Panels will be appointed, and are
encouraged to publish this list, together with details of the qualifications
and experience of the persons on the list, on a publicly accessible website.
ABUSIVE REGISTRATION OF A DOMAIN NAME
12. The scope of this Policy and the administrative procedure established by
it shall be restricted to complaints alleging the abusive registration of a
13. The registration of a domain name shall be considered to be abusive when
all of the following conditions are met:
(i) the domain name is identical or misleadingly similar to a trade or
service mark in which the complainant has rights; and
(ii) the holder of the domain name has no rights or legitimate interests in
respect of the domain name; and
(iii) the domain name has been registered and is used in bad faith.
14. For the purposes of paragraph 13(iii), the following, in particular,
shall be evidence of the registration and use of a domain name in bad faith;
(i) an offer to sell, rent or otherwise transfer the domain name to the
owner of the trade or service mark, or to a competitor of the owner of the
trade or service mark, for valuable consideration; or
(ii) an attempt to attract, for financial gain, Internet users to the
domain name holder's website or other on-line location, by creating
confusion with the trade or service mark of the complainant; or
(iii) the registration of the domain name in order to prevent the owner of
the trade or service mark from reflecting the mark in a corresponding domain
name, provided that a pattern of such conduct has been established on the
part of the domain name holder; or
(iv) the registration of the domain name in order to disrupt the business
of a competitor.
15. To the extent that the Panel makes reference to any applicable law to
reach a determination, it shall apply the law or rules of law that it
determines to be appropriate in light of all the relevant circumstances.
16. The remedies available under the administrative procedure shall be
(i) the cancellation of a domain name registration;
(ii) the transfer of a domain name registration to the claimant; and
(iii) the allocation of the responsibility for payment of the costs of the
proceedings (not including attorneys' fees).
17. If the Panel determines that a complaint does not fall within the scope
of the administrative procedure, the Panel shall so rule and the complaint
shall be rejected.
18. The Procedural Rules annexed to this Policy shall apply to the
19. The final determination on a complaint shall be made, whenever possible,
within not more than forty-five days after the commencement of the
ENFORCEMENT AND PUBLICATION
20. The dispute-resolution service provider shall notify the concerned
registration authority and ICANN of any determinations made pursuant to the
administrative procedure seven days after the determination has been
communicated to the dispute-resolution service provider by the Panel.
21. Upon receipt of notification of a determination made pursuant to the
administrative procedure, the concerned registration authority shall
implement the determination immediately, unless a court of competent
jurisdiction has ordered otherwise.
22. All determinations made under the administrative procedure shall be
notified by the relevant dispute-resolution service provider to the World
Intellectual Property Organization, which shall publish such determinations
on a publicly accessible website.
23. Dispute-resolution service providers shall determine the level of their
administration fee and the fees payable to the Panel.
24. The complainant shall be required to pay, at the commencement of the
administrative procedure, fees for the costs of the procedure. The Panel
shall have authority to decide, in the determination, on the allocation of
these costs of the procedure among the parties, in the light of all the
circumstances of the disputes and the result.
[Annex V follows]
I. GENERAL PROVISIONS
In these rules:
"Complainant" means the party initiating a complaint concerning a domain
"Panel" means the administrative panel appointed to rule upon a complaint
concerning a domain name registration.
"Party" means the Complainant or the Respondent.
"Policy" means the Policy on Dispute Resolution for Abusive Domain Name
Registrations adopted by the Internet Corporation for Assigned Names and
"Provider" means a dispute-resolution service provider that has received
accreditation to administer the procedure established by the Policy and that
is specified in the domain name registration agreement.
"Registrar" means the authorized registrar with which the Respondent has
registered the domain name that is the subject of the complaint.
"Respondent" means the holder of a domain name registration against which a
complaint is initiated.
Scope of Application of Rules
Where a Complaint is initiated concerning a domain name that has been
registered in top-level domains to which the Policy applies, it shall be
decided in accordance with the Policy and these Rules, as in effect on the
date of the commencement of the Complaint.
Notices, Periods of Time
(a) Any notice or other communication that may or is required to be given
under these Rules shall be delivered by expedited postal or courier service,
transmitted by telefax, or sent, where the Provider has the appropriate
technical facilities, by electronic transmission through the Internet.
(b) A Party's contact details, as provided in the domain name registration
agreement, or updated with the Registrar pursuant to that agreement, shall
be a valid address for the purpose of any notice or other communication in
the absence of any notification of a change by that Party.
(c) For the purpose of determining the date of commencement of a time-limit,
a notice or other communication shall be deemed to have been received on the
day it is delivered or, in the case of telecommunications or Internet
(d) For the purpose of determining compliance with a time-limit, a notice or
other communication shall be deemed to have been sent or transmitted if it
is dispatched prior to or on the day of the expiration of the time-limit.
(e) For the purpose of calculating a period of time under these Rules, such
period shall begin to run on the day following the day when a notice or
other communication is received. If the last day of such period is an
official holiday or a non-business day at the residence or place of business
of the addressee, the period is extended until the first business day that
follows. Official holidays or non-business days occurring during the
running of the period of time are included in calculating the period.
(f) The Provider may, at the request of a Party or on its own motion, extend
the period of time referred to in Article 8(a).
(a) Any Party may be represented or assisted by persons of its choice,
irrespective of, in particular, nationality or professional qualifications.
(b) Each Party shall communicate the names, postal and e-mail addresses and
telephone and telefax numbers of any representative to the Provider and to
the other Party.
Exclusion of Liability
Except in respect of deliberate wrongdoing, any member of a Panel
constituted under these Rules and the Provider shall not be liable to a
Party for any act or omission in connection with any proceedings under these
II. COMMENCEMENT OF COMPLAINT
(a) Any person may initiate a complaint under these Rules concerning a
domain name that has been registered in a top-level domain to which the
Policy applies by transmitting the Complaint to a Provider specified in the
domain name registration agreement.
(b) The Complaint shall contain:
(i) a request that the Complaint be referred to a Panel under these Rules;
(ii) the names and postal and e-mail addresses and the telephone and
telefax numbers of the Complainant and the Respondent and of any
representative of the Complainant;
(iii) an indication of the domain name that is the subject of the
(iv) an indication of the Registrar that registered the domain name;
(v) an allegation that the registration of the domain name is abusive, as
defined in the Policy;
(vi) a description of the grounds on which the Complaint is made;
(vii) any documentary evidence upon which the Complainant relies, together
with a schedule of such documents; and
(viii) a statement of the determination sought.
(c) The Complaint may relate to more than one domain name registered in the
same or different top-level domains to which the Policy applies, provided
that the domain names are registered by the same person.
Notifications by the Provider Upon Submission of Complaint
(a) The date of commencement of the proceedings shall be the date on which
the Complaint is received by the Provider.
(b) The Provider shall transmit the Complaint to the Respondent and inform
both the Complainant and the Respondent of the date of commencement of the
(a) Within 10 days of the date of commencement of the proceedings the
Respondent shall submit to the Provider a Response which shall contain a
statement of defense including comments on any of the elements in the
Complaint, as well as any documentary evidence upon which the Respondent
relies, together with a schedule of such documents.
(b) The Provider shall transmit the Response to the Complainant.
III. COMPOSITION AND ESTABLISHMENT OF THE PANEL
Appointment of the Panel
(a) The Provider shall appoint a Panel of three members, one of whom it
shall designate to be the presiding member, to conduct the proceedings and
to reach a determination on the Complaint. Unless the Parties have the same
nationality, the presiding member of the Panel shall, in the absence of
special circumstances, be a national of a country other than the countries
of the Parties.
(b) The Parties shall be notified by the Provider of the appointment of the
members of the Panel and of the presiding member.
Impartiality and Independence
(a) Each member of the Panel shall be impartial and independent.
(b) Each prospective member of the Panel shall, before accepting
appointment, disclose to the Provider, the Parties and other members of the
Panel any circumstances that might give rise to justifiable doubt as to that
person's impartiality or independence, or confirm in writing that no such
(c) If, at any stage during the proceedings, new circumstances arise that
might give rise to justifiable doubt as to the impartiality or independence
of any member of the Panel, that member shall promptly disclose such
circumstances to the Provider, the Parties and the other members of the
Availability, Acceptance and Notification
(a) Each member of the Panel shall, by accepting appointment, be deemed to
have undertaken to make available sufficient time to enable the proceedings
to be conducted and completed expeditiously.
(b) Each prospective member of the Panel shall communicate acceptance of
appointment to the Provider.
Objection to a Member of the Panel
A Complainant or Respondent may present an objection to any member of the
Panel if circumstances exist that give rise to justifiable doubt as to the
member's impartiality or independence in relation to the Complaint.
A Complainant or Respondent presenting an objection to a member of the
Panel shall submit a notice to the Provider, the Panel and the other Party,
stating the reasons for the objection, within 7 days after being notified of
that member's appointment or after becoming aware of the circumstances that
it considers give rise to justifiable doubt as to that member's impartiality
When an objection to a member of the Panel has been presented by a Party,
the other Party shall have the right to respond to the objection and shall,
if it exercises this right, submit, within 5 days after receipt of the
notice referred to in Article 13, its response to the Provider, the Party
presenting the objection and the Panel.
The Panel may, in its discretion, suspend or continue the proceedings
concerning the Complaint in relation to which the objection has been
presented during the pendency of the objection.
The other Party or the member may agree to the objection. In either case,
the member shall be replaced without any implication that the grounds for
the objection are valid.
If the other Party or the member does not agree to the objection, the
decision on the objection shall be made by the Provider in accordance with
its internal procedures. Such a decision is of an administrative nature and
shall be final. The Provider shall not be required to state reasons for its
Release from Appointment
At the request of a member of the Panel, the member may be released from
appointment either with the consent of the Parties or by the Provider.
Replacement of a Member of the Panel
(a) Whenever necessary, a substitute member of the Panel shall be appointed
by the Provider.
(b) Pending the replacement, the proceedings shall be suspended, unless
otherwise agreed by the Parties.
IV. CONDUCT OF THE PROCEEDINGS
Transmission of the File to the Panel
The Provider shall transmit the file to each member of the Panel as soon as
the member is appointed.
General Powers of the Panel
(a) Subject to these Rules, the Panel may conduct the proceedings in such
manner as it considers appropriate.
(b) In all cases, the Panel shall ensure that the Parties are treated with
equality and that each Party is given a fair opportunity to present its
(c) The Panel shall ensure that the proceedings take place with due
expedition. It may, at the request of a Party or on its own motion, extend
in exceptional cases a period of time fixed by these Rules, by itself or as
agreed to by the Parties. In urgent cases, such an extension may be granted
by the presiding member alone.
Language of Proceedings
(a) Unless otherwise agreed by the Parties, the language of the proceedings
shall be the language of the domain name registration agreement, subject to
the power of the Panel to determine otherwise, having regard to any
observations of the Parties and the circumstances of the proceedings.
(b) The Panel may order that any documents submitted in languages other than
the language of the proceedings be accompanied by a translation in whole or
in part into the language of the proceedings.
The Panel may, in its discretion, allow or require further statements from
Communication Between Parties and the Panel
Except as otherwise provided in these Rules or permitted by the Panel, no
Party or anyone acting on its behalf may have any ex parte communication
with any member of the Panel with respect to any matter of substance
relating to the Complaint.
(a) The Panel shall determine the admissibility, relevance, materiality and
weight of evidence.
(b) At any time during the proceedings, the Panel may, at the request of a
Party or on its own motion, order a Party to transmit such documents or
other evidence as it considers necessary or appropriate.
Evidentiary Presumption in Certain Cases
Where the Complainant is the beneficiary of an exclusion granted under
ICANN's Policy for Domain Name Exclusions and the Complainant shows that the
domain name that is the subject of the Complaint is identical or
misleadingly similar to the mark that is the subject of the exclusion and
that the use of the domain name is likely to damage the interests of the
Complainant in that mark, the Respondent shall have the burden of justifying
the legitimacy of its registration of the domain name.
(a) Normally, the determinations on Complaints under these Rules are to be
made with reference to the file alone. However, as an exceptional matter a
Panel may, at the request of a Party or on its own motion, determine in
relation to a particular Complaint that a hearing shall be held with the
participation of the Parties.
(b) For the purposes of this Article, "hearing" shall include a physical
meeting, a telephone or video conference and the simultaneous exchange of
electronic communications in a manner that allows the Panel and the Parties
to receive any communication sent by one of them and to send communications
to the others.
(c) In the event of a hearing, the Panel shall give the Parties adequate
notice of the date, time and modality thereof, determine whether the hearing
is to be private, and determine whether and, if so, in what form a record
shall be made.
(a) If the Respondent, without showing good cause, fails to submit its
Response in accordance with Article 8(a), the Panel shall, unless there are
exceptional circumstances that the Panel considers, in its discretion, call
for other action, nevertheless proceed with the Complaint and make its
(b) The Panel may also proceed with the Complaint and make its determination
if a Party, without showing good cause, fails to avail itself of the
opportunity to present its case within the period of time determined by the
(c) If a Party, without showing good cause, fails to comply with any
provision of, or requirement under, these Rules or any direction given by
the Panel, the Panel may draw the inferences therefrom that it considers
Closure of Proceedings
The Panel shall declare the proceedings closed when it is satisfied that
the Parties have had adequate opportunity to present submissions and
A Party which knows that any provision of, or requirement under, these
Rules, or any direction given by the Panel, has not been complied with, and
yet proceeds without promptly recording an objection to such non-compliance,
shall be deemed to have waived its right to object.
V. DETERMINATIONS AND OTHER DECISIONS
Abusive Registration of a Domain Name
The Panel shall determine the Complaint in accordance with the Policy.
(a) Any determination, order or other decision of the Panel shall be made by
a majority. In the absence of a majority, the presiding member of the Panel
shall make the determination, order or other decision as if acting as sole
(b) The Panel shall transmit to the Provider a copy of each order or other
decision that it makes.
Form and Notification of Determinations
(a) The determination shall state the date on which it was made.
(b) The determination shall state the reasons on which it is based.
(c) The determination shall be signed digitally or in writing by the members
of the Panel. Signature of the determination by a majority of the members
of the Panel, or, in the case of Article 32(a), second sentence, by the
presiding member, shall be sufficient. Where a member fails so to sign, the
determination shall briefly state the reason for the absence of the
(d) The Panel may consult the Provider with regard to matters of form
concerning the determination.
(e) The determination shall be communicated by the Panel to the Provider,
which shall communicate the determination to each Party.
(f) Seven days after the communication of the determination to the parties,
the Provider shall communicate the determination to the Registrar, which
shall take any action necessary to implement the determination, and to the
World Intellectual Property Organization, which shall publish the
determination on a publicly accessible website.
(g) At the request of a Party, the Provider shall provide the Party with a
copy of the determination certified by it.
Time Period for Delivery of Determinations
The proceedings should, wherever reasonably possible, be declared closed
within not more than 10 days after either the delivery of the Response or
the establishment of the Panel, whichever event occurs later. The final
determination should, wherever reasonably possible, be made within 10 days
after the closure of the proceedings.
Effect of Determination
(a) The Parties and the Registrar undertake to carry out the determination
(b) The determination shall be effective and binding on the Parties as from
the date it is communicated to the Registrar pursuant to Article 33(f).
Settlement or Other Grounds for Termination
(a) If, before the determination is made, the Parties agree on a settlement,
the Panel shall terminate the proceedings and, if requested jointly by the
Parties, record the settlement in the form of a consent determination. The
Panel shall not be obliged to give reasons for such a determination.
(b) If, before the determination is made, the continuation of the
proceedings becomes unnecessary or impossible for any reason not mentioned
in paragraph (a), the Panel shall inform the Parties of its intention to
terminate the proceedings. The Panel shall have the power to issue such an
order terminating the proceedings, unless a Party raises justifiable grounds
for objection within a period of time to be determined by the Panel.
(c) The consent determination or the order for termination of the
proceedings shall be signed by the members of the Panel in accordance with
Article 33(c) and shall be transmitted by the Panel to the Provider which
shall communicate it in accordance with Article 33(f).
VI. FEES AND COSTS
(a) The Complaint shall be subject to the payment to the Provider of an
administration fee. The amount of the corresponding administration fee
shall be as fixed by the Provider and publicly notified.
(b) The administration fee shall not be refundable.
(c) No action shall be taken by the Provider on a Complaint until the
administration fee has been paid.
(d) If Complainant fails, within 7 days after a second reminder transmitted
by the Provider, to pay the corresponding administration fee, it shall be
deemed to have withdrawn its Complaint.
Fees of the Panel
The amount of the fees of the members of the Panel shall be fixed by the
Provider and publicly notified.
(a) Upon receipt of notification from the Provider of the establishment of
the Panel, the Complainant shall deposit an amount as an advance for the
costs of the proceedings referred to in Article 40. The amount of the
deposit shall be determined by the Provider.
(b) If a Party fails, within 7 days after a second reminder transmitted by
the Provider, to pay the required deposit, it shall be deemed to have
withdrawn the Complaint.
Award of Costs of Proceedings
(a) In its determination, the Panel shall fix the costs of the proceedings,
which shall consist of:
(i) the Panel's fees;
(ii) any properly incurred outgoings of the members of the Panel, and
(iii) such other expenses as are necessary for the conduct of the
proceedings, such as the cost of hearing facilities.
(b) The aforementioned costs shall, as far as possible, be debited from the
deposit required under Article 39.
(c) The Panel shall, subject to any agreement of the Parties, apportion
between the Parties the costs of the proceedings and the administration fee
in the light of all the circumstances and the outcome of the proceedings.
[Annex VI follows]