ICANN/DNSO

Preliminary Report of WG-A

July 7, 1999

The following report presents the preliminary conclusions of WG-A on Chapter 3 of the WIPO Final Report dealing with Uniform Dispute Resolution Procedures in the DNS. It is also intended to provide background information about the creation of the WG to provide a context for the preliminary conclusions, as well as to facilitate the participation of those who wish to contribute their views but are either unfamiliar with the background or new to the process. The issues raised in this report will be open for public comment until July 24, 1999. At that time, WG-A will proceed to prepare its final report for submission to the ICANN Board based on the comments and input received to date.

At the conclusion of its Berlin meeting on May 27, 1999, the ICANN Board adopted a number of resolutions, including a Resolution on the Report of the World Intellectual Property Organization (WIPO). This Resolution provides for the following, in part:

"WHEREAS, in the White Paper the U.S. Government called on the World Intellectual Property Organization (WIPO) to develop recommendations regarding trademark disputes concerning domain names;

WHEREAS, on April 30, 1999, WIPO submitted a report to the ICANN Board containing numerous recommendations that resulted from an extensive consultative process;

WHEREAS, the first ICANN-accredited registrars (testbed registrars), are preparing to introduce competition in the provision of domain registration services and accordingly are required soon to implement dispute resolution policies;

....

FURTHER RESOLVED, the ICANN Board refers the recommendations in Chapter 3 of the WIPO report (with associated annexes) to the ICANN Domain Name Supporting Organization (DNSO) for recommendations the DNSO [sic], to be submitted to the ICANN Board by July 31, 1999;

FURTHER RESOLVED, the ICANN Board requests that by July 31, 1999 the DNSO submit to the Board any other recommendations the DNSO may have concerning a uniform dispute resolution policy for registrars in the .com, .net, and .org TLDs; "

The Provisional Names Council (pNC) held its first informal meeting in Berlin on May 27, 1999 at which Jonathan Cohen was asked, as the Interim President of the Intellectual Property Constituency (IPC), to serve as "focal point" for an online discussion on Chapter 3 of the WIPO report, pending the formation of a formal Working Group (WG) to deal with the issue, by the pNC at its next, formal meeting.

On June 2, 1999 Mr. Cohen distributed a request for comments among members of the IPC and other pNC reps, (for re-distribution within their respective constituencies) asking that a dialog be opened and comments on Chapter 3 of the WIPO Report be circulated among the members of the DNSO constituencies. Respondents were specifically requested to not merely reiterate comments submitted to WIPO during its own RFC process, as those comments were reviewed and incorporated into the results of that process, but to make an effort to revisit and amend any prior submissions in view of recent developments.

On June 2, 1999, Mr. Cohen also sent a request to all members of all constituencies (through the respective pNC representatives) for the submission of names of all those interested in participating in the WG on Chapter 3 of the WIPO report. On June 4, 1999, Mr. Amadeu Abril i Abril was asked to participate on behalf of the Registrar constituency as co-chair of this WG.

On June 8, 1999, Mr. Cohen again addressed the other members of the pNC and circulated the list of individuals from the IPC who had volunteered to participate in this WG to date, and reiterated the request for volunteers from the other constituencies. To initiate and/or facilitate discussion, he further provided some commentary on the various schools of thought with respect to WIPO’s role in dispute resolution on the Internet, and formulated four questions for discussion to focus the WG’s inquiry relating to Chapter 3 of the WIPO Report.

The first formal pNC meeting was held by teleconference on June 11, 1999, by which date a list of volunteers for this WG from the various constituencies had been compiled. At the meeting, WG-A was formally recognized by the pNC to address the issue of Chapter 3 on Dispute Resolution of the WIPO Final Report. The questions proposed by Jonathan Cohen as the basis for WG-A’s inquiry were accepted. WG-A was initially composed of fifteen members, including co-chairs Jonathan Cohen and Amadeu Abril i Abril. Results of this NC meeting, including the initial list of members were posted at <www.dnso.org/DNSO/notes/19990612.NCtelecon.html> on June 12, 1999. It was further announced therein that: the WG was still open to members of constituencies that were not yet represented in the WG and to other experts invited by the co-chairs; that WG-A must present a report by July 7^th which would be posted on the DNSO website for public comment until July 24^th; and that after that date, with the report and the public comments, the provisional Names Council will prepare a report that it will send to the ICANN Board on July 31^st, the deadline set by ICANN.

WG-A members were assigned on June 14, 1999 to sub-groups, each of which was responsible for one of the four discussion questions. The initial four questions and sub-group members were the following:

Should the WIPO dispute resolution process be confined to cybersquatting / cyberpiracy, or should it be considerably expanded?

Peter Dengate Thrush

Jon Englund

Jonathan Cohen

Should there be a standard dispute resolution process throughout all Registrars / Registries?

Amadeu Abril i Abril

Randy Bush

Hirofumi Hotta

Ken Stubbs

Should the dispute resolution process be voluntary or mandatory or a combination of both?

Mike Heltzer

David Maher

Ted Shapiro

Luis H. de Larramendi

Should there be some method for contracting out of the right to seek a court ruling if one undertakes to submit to the dispute resolution process?

Susan Anthony

Mark Partridge

Dr. Willie Black

Kathy Kleiman.

The guidelines circulated by Mr. Cohen to the sub-group leaders and members for carrying out their work were the following:

1. Immediately contact others in the group and agree on the rules, tasks and timetables for completing research and providing an opinion on the question.
2. If it is believed to be appropriate, subdivide or add a question to be answered.
3. Real effort should be made to seek out opinions from groups, individuals, regions or organizations that have not been previously canvassed.
4. Review and briefly comment on the opinions given in the WIPO RFC’s and review the WIPO commentary and conclusions to determine if there is a problem with either in terms of consistency or otherwise, and if so, indicate clearly and concisely what the problem is and why.
5. Assess whether there is a WG sub-group consensus, and if so, give it. If it differs from the WIPO recommendations, indicate why, giving the basis of the difference, and if there is minority view, provide this also with the reasons for the view and/or why it differs from the majority view.
6. If possible, draft the recommendation to ICANN.
7. WGs are not limited to seeking opinions from DNSO members only. It is important to canvass as broad a cross-section of opinion as possible, particularly from participants outside of North America and in view of the large number of individuals and organizations that were already consulted during the WIPO process.
8. The ultimate goal is to define a WG consensus on these four questions that is based on a broad cross-section of an informed group of people who can do some novel and independent research on these issues.
9. Emphasis on new ideas in relation to the four questions.

The second pNC meeting was on June 25, 1999 in San Jose, California at INET ‘99. Among the items on the agenda (posted at http://www.dnso.org/DNSO/notes/19990625.NCsanjose-up.html) was a progress report on WG-A.

With respect to WG-A’s progress as of June 25, Mr. Cohen reported a limited response to his June 22, 1999 request for sub-group status updates, with the exception of sub-group (c). In the first ten days of the WG’s operation, certain administrative and procedural difficulties appeared to be causing delays in the sub-groups’ progress. Mr. Cohen indicated that the ICANN Board had been made aware on June 22, 1999 of the problems that may be caused by the accelerated schedule ICANN had imposed upon WG-A.

There was consensus at the pNC meeting that although WG-A had been asked to complete its mandate within an extremely short time frame and without a set of procedural guidelines or rules that would greatly facilitate all aspects of WG activity, the balance of opinion was in favour of WG-A proceeding with its work to the best of its ability in the time allowed, which it has done.

The report which follows reflects the preliminary conclusions of WG-A which are hereby posted for broad comment in the General Assembly (GA) and beyond. It is intended to be the starting point for extensive discussion by the DNSO GA on the questions considered by the members of WG-A. Of the four sub-questions, the greatest progress was achieved in sub-questions (b) and (c).

As dialog among WG-A members progressed, there was also the suggestion that a fifth question dealing with procedural issues not properly within the ambit of the initial four sub-questions ought also to be considered. While a "formal" sub-group was not established for the purposes of inquiring into such issues, this preliminary report also includes the views that were expressed in this regard, following the discussion of the four sub-questions. Members of the GA and all other interested parties are invited and encouraged to propose and actively debate these and other procedural issues.

Should the WIPO dispute resolution process be confined to cybersquatting and cyberpiracy or should it be considerably expanded?

There has been nothing reported to the sub-group that would suggest there is a preponderance of opinion other than that reported by WIPO, namely to implement its dispute resolution procedure on a mandatory basis, but only with respect to bad faith and abusive domain name registrations (cybersquatting / cyberpiracy).

Response to the sub-group has indicated a general view that the current lack of harmonization of trade-mark laws throughout the world militates in favour of limiting ADR to alleged cases of bad faith, fraud and cybersquatting at the beginning. The point was made that it is extremely unclear as to whether or not panelists will have expertise in the various national trade-mark laws or international treaties, and the passage of time will tend to indicate whether it is advisable to support adding to the role of ADR panels. Until we have some experience with ADR panels it is impossible to predict whether the resulting decisions from an overly-broad ADR system will actually do great harm to the ongoing efforts in various circles to foster this harmonization.

There is a minority view that it would not meaningfully change the preponderance of opinion held by the majority if WIPO were authorized to hear trade-name/trade-mark Internet disputes on a strictly voluntary basis - e.g. where both parties agree and where both parties have the right at any time to discontinue or to take action in the court of their choice, as and when they see fit. A corollary to this is that the parties may of course, as in any dispute resolution, voluntarily contract out of the right to pursue their interests in a court or elsewhere at the outset of the proceedings.

There is also a minority view that there should be no mandatory dispute resolution even in relation to bad faith registrations, however the majority feels strongly that the process would be fruitless if it is not mandatory for bad faith registrations.

The preliminary report of this sub-group will be posted separately by July 8, 1999.

Should the dispute resolution process be voluntary or mandatory or a combination of both?

The following points of view were compiled by the members of sub-group (c):

1. The benefits of a mandatory dispute resolution process are unquestionable:
• more uniform criteria;
• speed in obtaining a decision (45 days) and in enforcement (7 days) - something that would be difficult through the Courts of a great number of jurisdictions, despite TRIPs;
• clarity, transparency and dissemination of the decisions (assuming they are published);
• economy of efforts (it will be easier to prepare a complaint under a dispute resolution system than under a discovery process or to prepare a Court action where such a process does not exist) as well as economy of costs;
• dissuasive vis-a-vis those applying for domain names in bad faith who, after a time, will find that the system always rejects their requests for registration of domain names constituting abuses or bad faith, and who will slowly stop requesting such names;
• the drawbacks of a voluntary system are avoided, namely:
• voluntary process is avoidable for those who act in bad faith;
• delaying tactics are not difficult in a voluntary process;
• there is no uniformity in a voluntary process.
2. There is agreement that mandatory ADR, particularly in cases of bad faith -cybersquatting - is the preferred approach to dispute resolution, subject to the proviso that an ADR decision would not preclude a party from seeking relief in court, and that the ADR decision would not be binding on a court having jurisdiction. The new "universe" of the Internet, with global, trans-national dimensions, makes it nearly impossible to expect national courts to deal with certain disputes that are bound to arise. In pre-Internet days, trademark disputes were more localized and were capable of resolution by traditional national courts, but this is not necessarily the case now. In the discussions leading up to the IAHC Final Report (2/97) and the gTLD-MoU (5/97), this was considered at some length and it was concluded that ADR was essential for an orderly and efficient DNS. WIPO was heavily involved in these discussions, and a new form of WIPO ADR was proposed for trademark-domain name disputes. The present WIPO recommendations are very similar to what was proposed in early 1997. Because of WIPO's concern that its powers, based on treaties, are limited, it was also concluded that parties involved in trademark-domain name controversies would retain the option to seek relief in the courts, assuming that a court having jurisdiction over all parties could be found. Thus, the decision of a WIPO ADR panel would not prevent a party from litigating the issue de novo. In developing the structure of the Council of Registrars (CORE), it was also concluded that all disputes between or among registries (the databases), registrars, and domain name registrants, should be subject to mandatory ADR under the UNCITRAL Arbitration Rules. It was recognized, of course, that third parties, not bound by contract with registrars or registries, could seek relief in the courts. The above discussion muddies the waters on the question of "mandatory" v."optional", but it is suggested that there cannot be a hard and fast choice for all of the different types of disputes that may arise. The optimism felt by those who believe that cyber-squatting is no longer a real problem is not shared by all, and it is suggested that the "semi-mandatory" availability of ADR (as described above) will go a long way to solving continuing problems of cyber-squatting.
3. In the context of mandatory vs. voluntary arbitration, the issue of registry jurisdiction was also raised. Registry jurisdiction would attach at the registry level. It would allow a court in the Eastern District of Virginia to have jurisdiction over all domain name disputes because the .com, .net and .org registry is located at NSI's office in Herndon, Virgina, USA. This would mean that if an Australian registrar registered a .com domain name for a Zimbabwean registrant that violated a US trademark holders' rights, the dispute could be adjudicated in Virginia since that is where the registry is located. If a mandatory system for registrants that will bind registrars is not possible, then registry jurisdiction might be useful. It would seem that the area most deserving of focus is bad registration information. Make the process faster, allow for provisional remedies and this could solve a huge number of problems.
4. There are many supporters of the creation of an ADR procedure that applies to all gTLDs and ccTLDs and requires the applicant to agree in its registration agreement to submit to ADR. During the initial stages of the system, ADR should be limited to cases of bad faith, fraud and cybersquatting. However, any dispute resolution system alternative to litigation that may be adopted for domain name disputes should not deny the parties to the dispute access to court litigation. Simply put, trial is expensive and, depending on what the other side throws your way, discovery can also be expensive, frustrating and time consuming. Not to mention that litigation is risky. The system must be quick, cheap and effective to discourage the bad-faith registrants - the Court system is generally neither quick enough in Internet terms nor cheap enough.
5. The copyright community was of the view that the dispute resolution process should be mandatory in the sense used in the WIPO report (i.e. that applicants must agree to the jurisdiction of the process for disputes falling within its scope), but that the process must not preclude resort to the courts or other resolution mechanisms (as WIPO also recommended).
6. There has been the view expressed by many people outside the United States that having jurisdiction reside in the U.S. regardless of where the disputants are, as in item 3 above, is unacceptable, since this would at all times almost guarantee that any U.S. national would access to its courts, whereas the same would not be true for non-U.S. citizens.

Should there be some method for contracting out of the right to seek a court ruling if one undertakes to submit to the dispute resolution process?

The preponderance of opinion received to date indicates the following: the copyright community on balance is in favour of the view that the dispute resolution process should have no preclusive effect, although parties certainly should be free to voluntarily forego resort to the courts, by contract or otherwise. A significant segment of the trade-mark community is of the view that nothing in the dispute policy should preclude a party from utilizing the national court systems as appropriate.

Professor Michael Froomkin, of the University of Miami, School of Law made the following comments:

• it is unfair to make the procedure for notice to a domain name holder who has submitted accurate contact information so much more onerous than for one who has submitted false details. Ten days notice is arguably too short in the best circumstances to put on a full defense (recall that "no letter before action" is required in the WIPO process, hence no prior notice...) When you make it ten days from the day the e-mail is sent, you have a real potential for unfairness.

The following comments were submitted on behalf of the copyright community (by the International Intellectual Property Alliance):

• the main concern of the copyright community about the WIPO recommendations has to do with the proposed timetable for acting on complaints and implementing the conclusions of the dispute resolution decisionmaker. From the viewpoint of commercial arbitrators, this timetable is quite expeditious, but as viewed in the context of "Internet time" it is unacceptably leisurely. Considerable damage can be inflicted by an abusively registered Domain name in a very short period of time. If the trade-mark holder can demonstrate a strong case of bad faith, as defined by WIPO, it should be able to get immediate temporary relief, on an ex parte basis, and a final decision (assuming that the cybersquatter cannot overcome this showing of bad faith) within a few days, not 45 days as WIPO recommends. Most, if not all, of these disputes should be resolvable online, so there is no need to allocate many days for the delivery of hard copy responses and rejoinders. By narrowing the scope of cases within the purview of the dispute settlement procedure to those "abusive registrations" cases that will often involve few factual or legal disputes, WIPO’s recommendations become even more conducive to the use of an expedited procedure for almost immediate suspension of the domain name.

Comments of the GA and any interested parties with respect to all of the above issue would be welcomed and are strongly encouraged by the members of WG-A.

In view of the very limited time before the July 31, 1999 deadline, we urgently request people to discuss, comment and debate and alert other people to this as soon as possible so that as much commentary and discussion can be received by the WG-A prior to their making their final recommendations to the ICANN Board. This comment period will be open until July 24, 1999. At that time, WG-A will formulate its final report to the ICANN Board, due July 31, 1999 based on the submissions received to that date from any interested party to this list.

Respectfully submitted:

by Jonathan Cohen, on behalf of Jonathan Cohen and Amadeu Abril i Abril

Co-Chairs, WG-A