Just as we were completing our analysis and preparing a response to
WIPO’s announcement that it intends to propose a fast track version of
the UDRP before year’s end and implement that expedited procedure in
the first quarter of 2010, comes an announcement from ICANN that the
Czech Arbitration Court (CAC) has proposed its own version of fast
track UDRP and that a 30 day comment period has started running, with
input due by December 11th (see http://icann.org/en/announcements/announcement-2-11nov09-en.htm ).
It’s probably sheer coincidence that the two European-based UDRP
providers have nearly simultaneously announced their intentions to
provide trademark owning complainants with a faster and cheaper path to
UDRP decisions, that the announcements came just after the close of
ICANN’s Seoul meeting and that they intend to put these fast track
procedures in place before ICANN’s March 2010 meeting in Nairobi, and
that a possible (indeed, probable) effect of these moves will be to
influence and impede the progress being made by the Specific Trademark
Issues Recommendation Team (STI-RT) to achieve a balanced version of
Uniform Rapid Suspension (URS) for new gTLDs that includes tight
standards, registrant protections, and effective sanctions for
complainant abuse. After all, if we were to speculate that these
announcements were coordinated and made in consultation with major
trademark interests, and designed to take advantage of the gap period
between ICANN meetings and to outflank the work of the STI-RT, then
some might accuse us of being paranoid conspiracy theorists, heaven
forbid.
Putting such speculation aside, let’s take an objective look at the substance of the CAC proposal (available at http://www.icann.org/en/dndr/udrp/cac-proposed-supplemental-rules-11nov09-en.pdf ):
• The complainant would have discretion to elect for its filing to be an Expedited Decision Case (EDC).
• An EDC must involve a single-member panel, cannot be a class
action complaint, and must meet certain form and word limit
requirements.
• A complainant who has filed a standard UDRP could elect to
convert it to an EDC within three days after the date a response was
due if the domain registrant failed to file a response, the complainant
had initially elected to have its dispute decided by a single-member
panel, and the complaint was not a class action.
• A proceeding initially filed as an EDC would cease to be so if
an administratively compliant response was filed by the domain
registrant, or if the panelist determined that the proceeding was not
properly an EDC.
• The panelist is required to determine that a proceeding is not
an EDC if, in his opinion, the complaint was not in compliance with the
administrative requirements for such a filing; or if “the proceeding
was too factually or legally complex for a decision to be given” in a
new short form format; or if for any other reason it would be “unfair
or otherwise inappropriate” to issue a short form decision.
• The elements to be established by the complainant to prevail in
an EDC, and the standard of proof, remain identical to those for a
standard UDRP case.
• The word limit for an EDC is 2,000 words, versus 5,000 for a standard UDRP.
• The fees for an EDC would be substantially less than for a
standard UDRP. For example, the fees for a single panelist UDRP case
involving 1-5 domain names are $900 for the panelist plus a $400-700
CAC administrative fee, for a total of $1300-$1600, while those for a
comparable EDC are proposed to be $250 plus $250 for a total of $500.
At the top end of the scale, the fees for a UDRP involving 41 to 50
domain names are $1900 plus $900-$1700, for a total of $2800-$3600,
while a comparable EDC would be $1000 plus $500 for a total of $1500.
So, looking at the substance of the CAC proposal, while it’s not
exactly clear how much faster a decision would be rendered in
comparison to a standard UDRP, what is clear is that complainant filing
fees would be much less – which would likely attract both more UDRP
filings overall as well as more filings involving multiple domain
names. Given that WIPO has estimated that its “fast track UDRP”, the
details of which remain to be unveiled, will be used in at least half
of all UDRP proceedings, we’d guess that the same would be true for CAC
if this EDC is implemented. While we are troubled that the standards of
“too factually or legally complex” and “unfair or otherwise
inappropriate” seem somewhat vague, it is true that any domain
registrant could have an EDC automatically converted to a standard UDRP
simply by filing a response.
So what’s the problem? And the answer is that the problem with the way
CAC and WIPO are proceeding becomes clear when you step back from the
“trees’ of the specifics of CAC’s proposed amendments to its
supplemental rules and look at the big picture “forest” of what’s
occurring here:
• Complainants and respondents both have valid concerns about the
current administration and rules for UDRPs, but arbitration forums like
WIPO and CAC only have an incentive to address the complainant side of
the equation as they are the ones who decide where to file their cases
and pay their fees. Allowing significant alterations of UDRP practice
to be effectuated through Supplemental Rules amendments results in
one-sided UDRP reform, where trademark interests get taken care of
while registrants are ignored. Taken to extremes, there’s real danger
of a race to the bottom in which arbitrators seek to outbid one another
to attract filings while registrant rights get shorter shrift. Put
another way, how long before NAF puts its own similar proposal on the
table lest it lose a significant number of UDRP filings to WIPO and
CAC?
• To the extent that dispute providers make UDRP changes unilaterally the “uniform” part of UDRP is substantially diminished.
• ICANN’s announcement makes no mention of whether the proposal
might constitute a policy change that requires GNSO review and ICANN
Board approval. That’s curious, because ICANN’s Board recently decided
that the URS proposal required exactly that – and the purpose of URS
and EDC is identical, to provide a faster and less expensive means of
resolving domain disputes that involve cases of blatant infringement
where no credible defense can be raised (and where no response is
likely to be made).
• The EDC proposal contains none of the registrant safeguards
that are on the table in the STI-RT discussions of the URS. These
include a higher evidentiary standard, random selection of panelists,
sanctions for complainant abuse, and mandatory periodic review to
evaluate its operation in practice. ICA has been involved in the STI-RT
discussions and they are making real progress toward consensus – but
what incentive will the trademark interests have to sign off on a
balanced approach for new gTLDs when they see the existing UDRP
providers implementing an expedited dispute process that is heavily
weighed in their favor?
ICA will be canvassing our members to get their feedback on the CAC
proposal prior to the December 11 comment deadline. But we have been
advocating for some time that ICANN initiate a UDRP reform policy
development process that could result in balanced changes that address
the concerns of all parties, and this announcement vividly demonstrates
that need. If the adoption of paperless eUDRP filings required ICANN
Board approval (which was given in Seoul) then surely the far more
substantive matter of a second, expedited UDRP track should require no
less – and should not be permitted to be implemented unilaterally by
CAC, WIPO, or any other accredited arbitration forum.