ICA Endorses Paperless UDRP

On August 12 the ICA filed a comment letter with ICANN endorsing a proposal from the World Intellectual Property Organization (WIPO) to move to an almost entirely paperless UDRP, also known as eUDRP. The majority of UDRP complainants and respondents already use electronic means for all of their filings.

ICA’s endorsement of the proposal was contingent upon retention of the requirement that a registrant receive initial notice of the complaint by fax and mail, along with heightened confirmation requirements.

ICA differentiated this purely procedural change, which does not alter the substantive rights of registrants, from the Uniform Rapid Suspension (URS) proposed for new gTLDs by the Implementation Recommendation Team (IRT), which is clearly a new policy that would substantially diminish registrants’ substantive rights. This is why proceeding to eUDRP does nor require a formal Policy Development Process (PDP) while the URS should. ICA repeated its request that ICANN implement an expedited PDP for UDRP reform to address policy changes applicable to new and incumbent gTLDs.

Finally, while endorsing eUDRP, ICA requested that ICANN strongly admonish WIPO and other UDRP providers that they may not implement procedural changes to the UDRP unless and until ICANN amends its own implementation rules.

The text of the ICA comment letter follows—

By E-Mail to eudrp@icann.org
August 12, 2009    

Board of Directors
Internet Corporation for Assigned Names and Numbers (ICANN)
4676 Admiralty Way, Suite 330
Marina del Rey, CA 90292-6601

Re: WIPO Proposal for Modification of UDRP Rules to Allow “Paperless” UDRP Proceedings

Dear Members of the ICANN Board:

This comment letter is submitted by the Internet Commerce Association (ICA) in regard to ICANN’s July 13th notice establishing a 30 day period for public comments regarding proposed changes to the implementation rules for the Uniform Domain Name Dispute Resolution Policy (UDRP) to implement the proposal of the World Intellectual Property Organization (WIPO) to establish a paperless UDRP proceeding, or “eUDRP”.

ICA is a not-for-profit trade association representing the direct search industry. Its membership is composed of domain name registrants that invest in domain names (DNs) and develop the associated websites, as well as the companies that serve them. Professional domain name registrants are a major source of the fees that support registrars, registries, and ICANN itself. The ICA is an International Member of ICANN’s Commercial and Business Constituency and presently has more than 120 members located in the United States and thirteen other nations.

Executive Summary

•    Both professional and general public domain registrants should be able to readily adapt to an eUDRP.

•    ICANN should communicate to accredited UDRP providers that they do not have the authority to make unilateral alterations of key procedural rules. Likewise, language in the proposed Rules amendment that creates such an implication should be stricken.

•    We generally endorse the proposal so long as it includes a strengthened requirement for fax and postal notice to alert registrants of the complaint’s filing.

•    As the proposal does not make changes to the UDRP Rules that alter substantive rights but involves mere procedure such a change does not require consideration through a formal Policy Development Process.

•    We continue to strongly urge ICANN to establish an expedited PDP for UDRP reform at both incumbent and new gTLDs, and to consider entering into formal contractual relationships with UDRP providers.

Discussion

Benefits of eUDRP and Registrant Capabilities/Need for Uniform Procedures

As the ICA is made up of professional domain name investors and developers they are “net savvy”, generally conduct the vast majority of their business activities online, and would not face any difficulty participating in an eUDRP. Further, as regards domain registrants among the general public, we believe that the fact that they have registered at least one domain name, and that e-mail is the most basic and long-standing means of Internet communication, indicates that they will be readily able to fully participate in an almost entirely paperless eUDRP process. As we are in agreement that an eUDRP would have environmental, efficiency, and timeliness benefits, and given that the majority of UDRP complainants and respondents already utilize electronic means for the entirety of their procedural filings, we have no objection to ICANN’s amendment of the UDRP rules to facilitate or require that all materials related to a UDRP – other than an initial notice to a registrant that a complaint has been brought against a particular domain name – be transmitted in electronic form.

In the event that ICANN should determine that it does not wish to authorize or require an eUDRP we would strenuously object to unilateral action taken by WIPO or any other accredited dispute provider to implement such changes on its own. The prime benefit of having a UDRP is uniformity, and that uniformity should apply to both its substantive and procedural components. Registrants faced with a complaint that could result in transfer of a valuable domain should be able to count on uniform procedures no matter which ICANN-accredited arbitration provider is selected by the complainant. As procedural rules can have substantial effect upon a domain registrant’s ability to successfully defend against a UDRP complaint, it is vital that procedural uniformity be required and enforced to prevent accredited arbitrators from competing for the filing of UDRP complaints through unilateral actions that encourage complainant forum shopping.  

We are concerned that the WIPO letter that precipitated this request for public comment was transmitted on December 30, 2008, and that ICANN delayed issuing such a request until more than six months had passed. In particular, we note that on page 5 of that letter WIPO asserts a right to implement such procedural changes unilaterally, stating:

…should appropriate amendments to the UDRP Rules appear unlikely, WIPO currently envisages proceeding with a form of targeted “stand alone” amendments to its own Supplemental Rules to give effect primarily to the objectives outlined in this letter in the first half of 2009. (Emphasis added.)

While WIPO did not take such unilateral action during the first six months of this year, ICANN’s delay in raising this issue for public comment could have resulted in a major UDRP provider adopting procedural changes that could have attracted additional complaint filings. Other ICANN-accredited arbitrators might well have followed suit to compete for complainants’ preference, and all this would have taken place without any formal alteration of ICANN’s own implementation rules. In fact, the National Arbitration Forum (NAF) indicated in a January 20, 2009 letter supporting the WIPO proposal that it was considering amending its own Supplemental Rules if ICANN did not act. Such a scenario should not be permitted to occur, as it is contrary to the maintenance of UDRP uniformity and could result in procedural changes prejudicial to registrants. Further, if individual UDRP providers can make such far reaching changes it would make a nullity of Section 21 (Amendments) of ICANN’s own UDRP Rules, which states, “These rules may not be amended without the express written approval of ICANN.” WIPO made clear that it did not see the need for such written approval even though the action it contemplated would not have merely supplemented the ICANN Rules but would have constituted a wholesale revision of a key procedural requirement.

In this regard we find ourselves in agreement with the views of ICANN’s Intellectual Property Constituency, which stated in its comment on this matter:

The IPC is of the view that the preferable route forward for paperless UDRPs is via a change in the UDRP Rules rather than having each provider amend its Supplemental Rules differently to meet the “hard copy” requirement of the current UDRP Rules. Were the UDRP Rules not to be changed, we could then find ourselves with a landscape where each Provider establishes its own Supplemental Rules for e-filing, leading to an inconsistency in approach.

Given the above considerations, we strongly urge ICANN to take immediate steps to communicate to UDRP providers that such unilateral alteration of important procedural rules could result in a loss of accreditation.

The Proposed Amendments to ICANN’s UDRP Implementation Rules

Our review of the proposed amendments to ICANN’s Rules for the UDRP indicates that they are truly procedural in nature and do not have an impact on the substantive rights of registrants that would constitute a new policy. Therefore, we do not believe that the contemplated changes require the initiation of a Policy Development Process (PDP) – unlike the proposal for Uniform Rapid Suspension (URS) proposed by the Implementation Recommendation Team (IRT) for all new gTLDs, which would clearly displace the UDRP in the vast majority of domain disputes covered by the URS and severely diminish the substantive rights of registrants.

While we generally endorse the proposed Rule changes, we do note that they would require e-filings in UDRP cases; that is, they are mandatory, not permissive, and therefore ICANN’s characterization in its July 13th notice that these changes would “allow for” an eUDRP is not entirely accurate.

Our endorsement is contingent upon retention of the requirement in Section 2(a) that registrants receive notice of the complaint to all postal and fax addresses shown in the WHOIS database as well as those supplied by the relevant registrar, as well as to all of the e-mail addresses described in that subsection.

We would further suggest, given that under the proposal registrants would only receive notice of a complaint rather than all documents relating thereto, that the ICANN Rules be further amended to require that the fax notice be accompanied by confirmation of transmission and that the postal notice to the registrant’s primary physical address have a return receipt requested. These amendments would help ensure that registrants receive timely notice and adequate opportunity to review and respond to a complaint.

We object to all additions to the Rules of the words “to the extent permitted by the Provider”, as well as all new proposed references to “the Provider’s Supplemental Rules”, as these would sanction the adoption of unilateral rules changes by different UDRP arbitrators and lead to the very lack of procedural uniformity that we fear. We therefore urge ICANN to strike all such references from any Rules changes it adopts.

Notwithstanding our position on this matter, we continue to believe that, as we rapidly approach the 10th anniversary of the UDRP, ICANN should undertake an expedited PDP on UDRP reform to address abuses committed by both complainants and registrants in a balanced manner. Such a process could give afford relief to trademark interests in disputes involving incumbent gTLDs as well as new gTLDs – which the proposed URS policy proposal does not – without prejudicing registrant rights as the URS would do. In this regard, we note than the NAF letter referenced above indicates that more than 90% of all UDRP complaints filed with that provider have at least one deficiency that requires correction, an error rate that is remarkable given that complainants have no time limit on the preparation of their filing. A PDP for UDRP reform could consider what steps might reduce the deficiency rates among complainants, just as it could also deal with the substantial rise in attempted reverse domain hijackings and the growing lack of UDRP decision uniformity and predictability being experienced by ICA members.

We would also urge that such a PDP consider the considerable benefits that could flow if ICANN were to enter into formal contractual arrangements with UDRP providers as it presently does with registries and registrars; including better assurance of uniformity, enhanced and flexible enforcement, and clear standards for retention of accreditation. Should ICANN undertake such an effort it should be open to all concerned and affected constituencies under GNSO auspices and procedures, rather than the undefined “global committee” suggested in the NAF letter.

Conclusion

We hope that ICANN will find our comments useful as considers amendments to the UDRP rules authorizing eUDRP proceedings.

Thank you for your consideration of our views in this matter.

Sincerely,
Philip S. Corwin
Counsel, Internet Commerce Association