ICANN Staff Report: Uniform Dispute Resolution Policy for gTLD Registrars
Posted August 24, 1999
[NOTE: This document is a staff report, not an ICANN policy. As such, it is not authoritative and should not be relied on by any party. Following public comment and discussion, the ICANN Board may take action on the recommendations in this report at its Santiago meeting, August 26.]
On August 3, 1999, the ICANN Provisional Names Council submitted to the ICANN Board a set of recommendations, as community consensus recommendations, concerning a Uniform Dispute Resolution Policy (UDRP) for gTLD Registrars. To assist the Board's preparation for possible action on these recommendations at the August 24-26 ICANN meeting in Santiago, this document provides a summary of the background of the proposed UDRP, analyzes the Names Council report and community comments on it, and suggests how the Board might act on the Names Council recommendation.
I. Background of the UDRP
The White Paper. In its Statement of Policy on Management of Internet Names and Addresses,1 commonly known as the "White Paper," the U.S. Government invited the Internet community to form a private, not-for-profit corporation (now ICANN) to coordinate various Internet functions, including the development of policies for the management of gTLDs.2 The White Paper also called upon "the World Intellectual Property Organization (WIPO) to initiate a balanced and transparent process, which includes the participation of trademark holders and members of the Internet community who are not trademark holders, to . . . develop recommendations for a uniform approach to resolving trademark/domain name disputes involving cyberpiracy (as opposed to conflicts between trademark holders with legitimate competing rights)."3 The White Paper concluded with a statement of the U.S. Government's planned activities during the transition period, including:
ask[ing] WIPO to convene an international process including individuals from the private sector and government to develop a set of recommendations for trademark/domain name dispute resolutions and other issues to be presented to the Interim Board for its consideration as soon as possible . . . .4
The WIPO Report. On the proposal of the U.S. Government, and with the approval of the 171 nations that comprise its members, WIPO began an extensive international process of consultations beginning in July 1998. The goal of this process was to develop and make recommendations to ICANN on questions arising out of the interface between domain names and intellectual property rights. These questions concerned not only dispute resolution, but also domain-name registration practices (which had already been addressed by the ICANN Board at its Singapore meeting), limitations on registration of famous and well-known names, and addition of new gTLDs.
The WIPO process used a combination of meetings, gathering of written comments, and analysis by a panel of experts. Beginning with its July 8, 1998, issuance of a request for comments,5 the WIPO process included a first round of regional meetings leading to issuance of an interim report 6 on December 23, 1998, and then proceeded to a second round of regional meetings culminating in the release of WIPO's final report 7 on April 30, 1999. Each round included at least one meeting in each of ICANN's five geographic regions; together the two rounds of meetings attracted 1264 attendees and included 232 presentations of views.
WIPO also made use of the Internet to seek input from the public. It hosted a web site, which contained information about the process in English, French, and Spanish. In addition, it established an announce list for which 1,358 persons from 74 countries registered. To round out its use of the Internet to gather opinions, WIPO maintained an e-mail discussion list, to which 420 persons subscribed.
WIPO also employed a panel of experts from around the world to advise it in the formulation of workable and acceptable recommendations based on the consultation meetings and comments.
WIPO presented its final report to ICANN at the end of April 1999, dealing with registration practices, dispute resolution, famous names, and gTLD expansion. Chapter 3 of the final report addressed issues concerning a uniform dispute resolution policy and presented 17 recommendations (many multi-part) supported by extensive textual discussion and 62 endnotes correlating the discussion to written comments received and other relevant materials. The WIPO report also included (in Annex IV) the suggested text of an ICANN dispute resolution policy and (in Annex V) suggested rules for an administrative procedure to resolve those disputes.
In general terms, chapter 3 of the WIPO final report recommends that ICANN establish an administrative procedure for the cancellation or transfer of domain names found to have been abusively registered (in essence, through cybersquatting/cyberpiracy) in violation of another's rights under a trade or service mark by an SLD holder with no rights or legitimate interests in the domain name. WIPO recommends that all SLD holders be required, in their registration agreements, to agree to this administrative procedure in cases of abusive registrations, but that both the SLD holder and the challenger retain the right to initiate court litigation (or, with the consent of both parties, arbitration) over the name.
The ICANN Board's Action in Berlin. ICANN posted the WIPO final report on its web site and scheduled the report for consideration at the quarterly meeting held in Berlin on May 25-27, 1999. Numerous written comments were received at the web site.8 Many of these comments requested that the WIPO report be referred to the DNSO for its consideration. In addition, a portion of the May 26 public forum was devoted to discussion with the Internet community of the various aspects of the WIPO report. At that public forum, the ICANN staff gave its analysis that the WIPO recommendations could be usefully grouped into three "chunks" -- (i) registration practices, (ii) dispute resolution, and (iii) famous names/gTLD expansion -- that differed in terms of their urgency and apparent level of consensus or controversy. As to the dispute-resolution issues, the staff recommended that they be referred to the DNSO with a request for recommendations in time for Board consideration at the Santiago meeting. No significant dissent to this procedure for prompt further consideration of the dispute-resolution issue was presented at the public forum or the Internet.
At its May 27 meeting, the ICANN Board adopted the following resolutions pertinent to the dispute-resolution aspects of the WIPO recommendations:
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;
RESOLVED, the ICANN Board commends the WIPO on its report, which the ICANN Board finds represents a substantial and positive contribution to the analysis and discussion of issues concerning the relationship between the domain-name system and intellectual property rights;
* * *
FURTHER RESOLVED, the ICANN Board endorses the principle that a uniform dispute resolution policy should be adopted for Registrars in the .com, .net, and .org Top-Level Domains (TLDs);
FURTHER RESOLVED, the ICANN Board encourages the testbed registrars to work together to formulate a model dispute resolution policy for voluntary adoption and directs the President to provide information and similar assistance to the testbed registrars in this regard;
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 the recommendations of the DNSO, 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; [and]
FURTHER RESOLVED, the ICANN Board requests all persons desiring to make written comments concerning a uniform dispute resolution policy for registrars in the .com, .net, and .org TLDs to submit those comments by August 20, 1999, in advance of the Board's meeting scheduled for August 24-26, 1999 in Santiago, at which time Board action on such a policy is hereby scheduled . . . ..9
Thus, after endorsing the principle that dispute resolution policies should not vary from registrar to registrar in the .com, .net, and .org gTLDs, the Board's Berlin resolutions established two tracks for the formulation of such a uniform policy. To deal with the immediate need for a uniform dispute-resolution policy among the registrars in the newly competitive registrar business, the Board called on the testbed registrars to formulate a model policy for voluntary adoption. Such a voluntary policy would permit short-term uniformity until recommendations for a uniform policy could be formulated by the DNSO, adopted by the Board, reflected in implementing documents, and put in place.
DNSO Proceedings. The DNSO responded promptly to the Board's May 27 referral of the dispute-resolution issues for study and recommendations. At an informal Names Council meeting that same day, Jonathan Cohen (of the Intellectual Property Constituency) was requested to serve as a focal point for early DNSO discussion on these issues, pending formation of a formal working group at the Names Council's first formal meeting. Mr. Cohen sent a call for volunteer participants on the working group on June 2, and by June 11, when the first formal Names Council meeting was held, a list of volunteers had been compiled. At the June 11 Names Council meeting, the working group was formally chartered as Working Group A (WG-A), and Amadeu Abril i Abril (of the Registrars Constituency) was appointed co-chair with Mr. Cohen.
Working Group A was divided into four sub-groups working on different aspects of dispute resolution policy. Working mainly through on-line discussions hosted at the dnso.org web site, the groups proceeded promptly to formulate analyses of the sub-issues which they were assigned. On July 8, the WG-A recommendations were posted for public comment on the dnso.org web site. A final report of WG-A was sent to the Names Council on July 29, containing five recommendations. A vote was taken by e-mail, with 15 of the 18 members of the Names Council voting by the deadline of 9:00 am Eastern U.S. time on August 3. (A sixteenth member was traveling at the time and submitted his vote a few hours late.) The Names Council members voted, first, on whether the report should be forwarded to the Board as a community consensus recommendation; 13 of the Names Council members supported this.
The ballot also included separate votes on each of the five WG-A recommendations. The WG-A recommendations, and the Names Council vote on each, are shown below:
|Working Group-A Recommendation
|Names Council Vote
|1. Generally, the recommendations of Chapter 3 of the WIPO Report relating to Uniform Dispute Resolution Procedures (UDRP) should be put into place as soon as possible after the ICANN Board meeting in Santiago, Chile, subject to recommendation 2 [sic, 4]) below, and all Registrars should be required to adopt a UDRP, namely, that recommended by WIPO, until such time as ICANN decides that it should be replaced.
|Unqualified yes: 11
Yes with dissent: 3 (gTLD reps.)
No: 1 (ccTLD rep.)
Not voting: 2 (ccTLD reps.)
One late vote: Yes
|2. The DNSO recommends the adoption and implementation of a uniform Dispute Resolution Policy. Such DRP should be uniform across current gTLDs, approved by ICANN and implemented on a gTLD wide level in a uniform way.
|Unqualified yes: 11
Yes with dissent/comment: 4 (3-gTLD reps., 1-ccTLD rep.)
Not voting: 2 (ccTLD reps.)
One late vote: Yes
|3. Uniformity should affect both material or substantive rules as well as procedural rules with an effect on substantive rights of the parties. Some minor, administrative, differences could be implemented in procedures followed by different UDRP Service Providers. In this regard we recommend that ICANN establishes an accreditation process for DRP Service providers based on objective criteria, and that all accredited DRP Service Providers should be incorporated by the Registration Authorities in their Domain Name Registration Agreements with registrants.
|Unqualified yes: 12
Yes with dissent: 3 (gTLD reps.)
Not voting: 2 (ccTLD reps.)
One late vote: Yes
|4. For at least the balance of 1999, this UDRP should apply only to bad faith / abusive domain name registrations (cybersquatting) on a mandatory basis, but without precluding the parties' ability to litigate the dispute. Further, once proof of litigation is submitted to the WIPO panel, it should immediately cease its decisionmaking process pending the outcome of the litigation.
|Unqualified yes: 10
Yes with dissent/comment: 5 (3-gTLD reps.; 1-ccTLD; 1- IPC)
Not voting: 2 (ccTLD reps.)
One late vote: Yes
|However, in light of the procedural and substantive concerns enumerated below that have been expressed by Respondents to the WGA RFC process, it is recommended these concerns should be referred back to WIPO for its reconsideration for a short, thirty day period. WIPO should be asked to call for an expert group of arbitrators and IP practitioners to work with it on an urgent basis to clarify the procedural implications of these concerns. WIPO's recommendations and conclusions in relation to these issues should then be put back before ICANN for evaluation by way of this, or another WG established for this purpose, for a two week period, before being implemented. However, this should not delay implementation of the WIPO UDRP.
|[These concerns may be summarized:
a. Need for a "user's guide" describing the process
b. Need to accord SLD holder with a reciprocal right to appeal, using a legally adequate mechanism
c. Need for future refinement of process timetable, including mechanism extensions
d. Consideration of future development of substantive rules of decision independent of law of any particular nation
e. Need for a more clearly articulated standard of proof to be used in deciding whether a registration was abusive.]
|5. It is recommended that early in 2000, WIPO should be asked to provide a timetable in which it can make available its UDRP with an adequate number of arbitrators from a number of different countries who speak a cross section of languages, trainfored in online arbitration, making it possible to offer these dispute resolution services on a voluntary basis to disputants having trademark / domain name disputes. It is recommended that such voluntary dispute resolution shall not preclude access to courts unless both parties to the dispute contract out of such access, in which case the results of the online dispute resolution process will be final and binding.
|Unqualified yes: 13
Yes with dissent: 0
Not voting: 2 (ccTLD reps.)
One late vote: Yes
It should be noted that the votes of the three gTLD representatives, as shown above, all contained a partial dissent noting: (a) that the DNSO general assembly did not have significant input; (b) that registrars should be required to adhere to uniform dispute policies by contract with the gTLD registry administrator, rather than by establishment of the policy by ICANN; (c) registrars should be satisfied with the process before it is put into place; (d) variance should be allowed in fees, payment, dispute-resolution providers, and involvement of registrars; (e) ICANN should not approve or accredit dispute-resolution providers; and (f) registrars should work out remaining procedural problems before the policy is put into place.
The dissenting ccTLD representative objected to recommending adoption of a policy without further study and to any continuing involvement by WIPO in the refinement or enhancement of procedures. The dissenting IPC representative stated that there is no consensus on expansion of the scope of the policy beyond abusive registrations, requested that issue to be referred back to WIPO for further work, and stated that there is also no community consensus regarding the proposed timetable for implementation of voluntary arbitration.
Testbed Registrar Activities. The testbed registrars also acted promptly in response to the Board's call for development of a model policy for voluntary adoption. Under the leadership of America Online and register.com, the testbed registrars expanded their consultations to include the accredited post-testbed registrars. Network Solutions also expressed an interest in joining the discussions and made important contributions based on its extensive experience with domain- name disputes from a registrar's perspective. (It should be noted that Mr. Sparboro, Network Solutions' intellectual property counsel, also served on WIPO's panel of experts.) Ultimately, representatives of approximately twenty registrars participated in the discussions. ICANN counsel also assisted by providing guidance as to various issues, mainly concerning how a uniform policy might be implemented under ICANN's registrar accreditation policy.
The general approach followed by the registrars in formulating their model policy was (1) adhere closely to the WIPO dispute-resolution recommendations for disputes arising from abusive registrations and (2) to adopt the policy, in all other disputes, of doing nothing until they are informed of a resolution of the dispute by court, arbitration, or settlement. In connection with the portion of the policy applied to abusive-registration disputes, the registrars consulted closely with WIPO's staff, which provided useful explanations of views WIPO had elicited in its extensive consultation process and explained some aspects of WIPO's recommendations.
Last week, the registrar group agreed on a written dispute-resolution policy. That policy was posted on the ICANN web site on August 20 with 14 registrars appearing as signatories and WIPO listed as concurring in the policy. It is anticipated that additional registrars will have subscribed to the policy by the time of the ICANN Board's consideration of the issues on August 25-26.
II. Analysis of Written Comments Received at the ICANN Web Site
The Names Council report, as forwarded to the Board, was posted on the dnso.org web and icann.org web sites. The registrars' model policy was obtained by the ICANN staff on August 20 and posted that same day.
Summary of the comments. Eleven written comments were received by August 22. They are archived in http://www.icann.org/comments-mail/comment-udrp/current.They may be summarized as follows:
1. "Non-Commercial Constituency Petitions for Review of WIPO Ch.3," received on August 16, 1999, from Kathryn Kleiman on behalf of the Non-Commercial Domain Name Holders' Constituency" (available as msg00000.html). This comment stated "that not a single elected representative of the Non-Commercial Constituency voted on the report or participated in the discussion" in WG-A; that the deliberations of the working group "needed the voice and views of the noncommercial community to achieve a fair and balanced result"; that non-commercial domain name holders will be hurt by the proposal; that "[o]ur voice would have been the voice of balance and it was this voice that was missing from the WG-A discussions and the Names Council report to you"; that consideration should be given to a bill recently passed by the U.S. Senate bill that, according to the comment, has a more balanced definition of cybersquatting; and that the Board should "return the full WIPO Cybersquatting definition and mandatory arbitration procedures to the DNSO for review and participation by all of its now-organized constituencies.
2. "ACM-IGC Petition for Reconsideration on Cybersquatting," received on August 16, 1999, from Barbara Simons on behalf of the Association for Computing Machinery's Internet Governance Committee (ACM-IGC) (available as msg00001.html). This comment stated that the proposal should be returned to the DNSO (a) drafting of a fairer definition of cybersquatting, as reflected in the U.S. Senate bill, (b) drafting of a more balanced procedure, and (c) adherence to a more balanced process in the DNSO. It also stated that there is no urgency to acting until new gTLDs are opened, and that registrars should not be liable for registering domain names in the interim. It concludes: "ACM-IGC asks ICANN to return the cybersquatting definition and alternative dispute resolution procedures to the DNSO Names Council for additional work on substance and procedure. A well-developed cybersquatting proposal, with full NCDNHC support, will strengthen the DNSO, ICANN and the Internet as a whole."
3. "Comments Archives Unavailable," received on August 17, 1999, from Kathryn Kleiman on behalf of the Noncommercial Domain Name Holders Constituency and the ACM-IGC (available as msg00002.html). This message complained that the archived message display on the icann.org web site was not working. In fact, the archive was working but had not yet gone through its daily update cycle.
4. "Hold on," received August 17, 1999, from Mark Perkins, Librarian (acting), Secretariat of the Pacific Community Library, New Caledonia (available as msg00003.html). This comment urged postponement of any decision on any "legal" issues "until all constituencies are properly represented within ICANN." It also argued that publicity of the current proposal had been "weak." It stated that the proposal's cybersquatting definition inappropriately favors trademark owners and notes that the U.S. Senate bill, in the commentator's view, adopted a more balanced view. The comment also states: "There seems to be have been an unnecessary rush to reach conclusions on these issues. This is clearly not required, the internet & its users have been here for a number of years," and urges that more time be taken for a considered judgment.
5. "Petition for Reconsideration before ICANN ," received August 17, 1999, from Joop Teernstra (available as msg00004.html). This comment agreed with number 1 above.
6. "ALA request further consideration of DRP," received August 18, 1999, from Rick Weingarten on behalf of the Office for Information Technology Policy, American Library Association (available as msg00005.html). This comment urged that it would be "premature and inappropriate to adopt these policies without additional serious public comment and debate, including deliberation of new developments such as the more balanced cybersquatting law being considered by the U.S. Congress." It argued that "ICANN should focus principally on creating itself as a solid permanent organization for overseeing the domain name registration process and not rush to judgement on complex and contentious policy questions that may be brought before it." It urged that the "proposal be remanded back for further comment and consideration, specifically directing that public interest concerns be addressed in that process."
7. "Petition for Reconsideration," received August 18, 1999, from Raul Echeberria (available as msg00006.html). This comment asked the ICANN Board to "return th[e] recommendations to the DNSO to be reconsidered with the participation of representatives of all
8. "The ICANN and WIPO script," received August 18, 1999, from Jim Fleming (available as msg00007.html). This comment criticized the holding of a "behind the scenes" meeting by the registrars to work on their voluntary model policy.
9. "Support for NCDNHC statement," received August 20, 1999, from Jeff Graber (available as msg00008.html). This message supported comment 1 above.
10. "WIPO, UDRP," received August 20, 1999, from S. Wells (available as msg00009.html). This comment urged careful drafting of the implementing language to make the dispute resolution procedure useful.
11. "Defer proposed UDRP recommendations," received August 21, 1999, from Ellen Roney (available as msg00010.html). Noting the lack of non-commercial representation on the Names Council, this comment urged that "NO substantive policy directives should be promulgated by an unelected, unaccountable, interim board."
Staff analysis of the comments. Two major points are made in the comments, one procedural and one substantive.
1. Procedurally, several commentators objected to a lack of participation by the Non- Commercial Domain Name Holders Constituency in the formulation of the DNSO recommendation. In her comment on behalf of the proposed NCDNHC, Kathryn Kleiman stated that "not a single elected representative of the Non-Commercial Constituency voted on the report or participated in the discussion" in WG-A. Several of the other comments are from non- commercial interests and echo this comment.
The staff finds this procedural argument unpersuasive. Although the Board's efforts in its Berlin resolutions to ensure prompt formal recognition of the Non-Commercial Domain Name Holders Constituency have been frustrated, 10 this lack of formal recognition has not prevented active participation by constituency members in both the WIPO process and in the deliberations of WG-A. In particular, ACM and the Internet Society (two major organizers of the constituency) submitted comments in the WIPO process and three of the individuals leading the establishment of the constituency (Randy Bush, Kathryn Kleiman, and David Maher), were active members of WG-A. Thus, the statement that "no elected representative" of the constituency participated, while technically true, should not be taken to mean that the recommendation was developed without full participation by members (and, indeed, the leaders) of the Non-Commercial Domain Name Holders Constituency. Instead, it seems clear that the views of a number of the constituency's members were fully voiced and heard in the process.
Moreover, it should also be noted that establishment of a uniform dispute resolution policy is not an immutable act. All concerned anticipate that, from time to time, the dispute-resolution policy should be reviewed and adjusted to reflect accumulated experience. Thus, in the future the Non-Commercial Domain Name Holders Constituency will have the continued ability to make its views known on the tenor of the policy.
2. The substantive concern expressed in the written comments involves a bill passed by the U.S. Senate on August 5, 1999. That bill, known as the "Antcybersquatting Consumer Protection Act,"11 has not been acted upon by the U.S. House of Representatives nor, of course, sent to the U.S. President for signature.
The comments argue that the bill tightens up the WIPO Report's definition of cybersquatting, makes it more balanced, and reduces the chances of unintended consequences on domain name holders. ICANN staff/counsel have reviewed the bill and compared it to the WIPO recommendations as approved by the DNSO. The language of the bill in its present form appears to present some significant problems in clarity,12 so that the argument that it is "tighter" or more "balanced" is subject to question. The ICANN staff believes that, while the Senate bill does expressly eliminate some scenarios that could be characterized as "unintended consequences," these scenarios are also dealt with in the WIPO recommendations, although less explicitly. Although the staff notes that these were in fact addressed in the WIPO Report (for example, in paragraph 172), for purposes of ensuring clarity the documents implementing a dispute-resolution policy can and should expressly eliminate the possibility of these consequences arising, as discussed in more detail below.
III. Staff Recommendations
Bylaw requirements. Article VI-B, Section 2(d) of the ICANN bylaws provides:
(d) If two-thirds (2/3) of the members of the NC determine that the DNSO process has produced a community consensus, that consensus position shall be forwarded to the Board as a consensus recommendation, along with all materials or other information that could reasonably be relevant to the Board's review of that determination, including (but not limited to) the dissenting statement(s) of any member(s) of the NC. If more than one-half () but less than two-thirds (2/3) of the members of the NC determine that the DNSO process has produced a community consensus, that position may be forwarded to the Board as a NC recommendation, along with statements of majority and minority views, and any separate or dissenting statement(s) of any member(s) of the NC. Any proposed recommendation that is not supported by an affirmative vote of one-half () of the members of the NC may be returned to the body from which it originated, or may be assigned to a new body, for further work. In such a case, the NC may report to the board the lack of a consensus and the steps, if any, it plans to take from this point forward with respect to this particular recommendation. The NC is responsible for ensuring that the Board is informed of any significant implementation or operational concerns expressed by any responsible party.
Article VI, Sections 2(e) and (g) provide:
(e) Subject to the provisions of Article III, Section 3 [concerning notice and comment], the Board shall accept the recommendations of a Supporting Organization if the Board finds that the recommended policy (1) furthers the purposes of, and is in the best interest of, the Corporation; (2) is consistent with the Articles and Bylaws; (3) was arrived at through fair and open processes (including participation by representatives of other Supporting Organizations if requested); and (4) is not reasonably opposed by any other Supporting Organization. No recommendation of a Supporting Organization shall be adopted unless the votes in favor of adoption would be sufficient for adoption by the Board without taking account of either the Directors selected by the Supporting Organization or their votes.
(g) Nothing in this Section 2 is intended to limit the powers of the Board or the Corporation to act on matters not within the scope of primary responsibility of a Supporting Organization or to take actions that the Board finds are necessary or appropriate to further the purposes of the Corporation.
Based on the vote in the Provisional Names Council with 13 votes concurring, it appears that the WG-A report has been properly forwarded to the Board as a community consensus recommendation. In this regard, however, it should be noted that in forwarding the WG-A report to the Board the Provisional Names Council noted the "overall caveat that the shortness of time available to WG-A to solicit input from the DNSO constituencies, as well as the lack of input from the General Assembly (GA) [no significant input was received despite the opportunity to submit it] leaves a question as to what the consensus of the DNSO really is." Despite this caveat, however, the Names Council noted:
Nonetheless, WIPO's RFC process, which took place over a ten-month period, involved more extensive international consultation than was possible in the few weeks allotted to WG-A, and the WIPO Final Report may be considered to represent a consensus of most interested stakeholders. WG-A was aware of this fact and took it into account in its own consultation process and in the preparation of its Preliminary and Final Reports. ICANN is therefore encouraged to consider the dissents to WG-A's recommendations in light of both the WG-A process and the more extensive WIPO consultation process, and to decide whether these dissents are relevant in this context to the course of action ICANN determines it should take.
In addition, it should be noted that the recommendation was made by a provisional Names Council in a DNSO not yet completely organized.
In view of these circumstances, it would appear appropriate for the ICANN Board to scrutinize the substance of the recommendation more closely than otherwise envisioned by Article VI, Section 2(e).
Staff suggestions on the individual DNSO recommendations. The staff suggests the following ICANN Board action on the individual recommendations made by the DNSO:
DNSO Recommendation 1: Generally, the recommendations of Chapter 3 of the WIPO Report relating to Uniform Dispute Resolution Procedures (UDRP) should be put into place as soon as possible after the ICANN Board meeting in Santiago, Chile, subject to recommendation (4) below, and all Registrars should be required to adopt a UDRP, namely, that recommended by WIPO, until such time as ICANN decides that it should be replaced.
Staff Suggestion on DNSO Recommendation 1: As recommended by the DNSO, the staff suggests that the Board adopt a uniform dispute-resolution policy for accredited registrars in the .com, .net, and .org TLDs. The Board should instruct the ICANN President, with the assistance of the ICANN staff and counsel, to prepare implementation documents so that the policy can be put into place within 30 days, or on such other prompt schedule he determines after consultation with the DNSO Registrar constituency as to practical needs and considerations of the registrars.
In preparing the implementation documents, the President should use the Registrars' Model Dispute Resolution Policy as a starting point, and in finalizing the implementation documents he should endeavor to harmonize differences between that policy and the WIPO report.
The staff suggests that it would be most appropriate to start with the Registrar's Model Dispute Resolution Policy for Voluntary Adoption for the following reasons:
a. The Registrars' Policy is more nearly complete, providing solutions for several practical implementation issues that were not addressed by the WIPO report. (A few issues remain outstanding in the Registrars' Policy, including notably the procedures for the dispute-resolution process. The staff believes that these issues can be resolved quickly.)
b. The Registrars' Policy has benefitted in its drafting from the participation of Network Solutions, which provided several valuable practical insights based on past experience with its dispute resolution policy.
c. Network Solutions has agreed to adopt the Registrars' Policy. Currently, Network Solutions is not an ICANN-accredited registrar and is not contractually obligated to adhere to other dispute resolution policies ICANN might adopt. Thus, use of the Registrars' policy (or a slight variant) as a baseline will most effectively achieve the overall goal of DNSO Recommendation 1 that all registrars in the .com, .net, and .org TLDs follow a uniform dispute-resolution policy.
DNSO Recommendation 2: The DNSO recommends the adoption and implementation of a uniform Dispute Resolution Policy. Such DRP should be uniform across current gTLDs, approved by ICANN and implemented on a gTLD-wide level in a uniform way.
Staff Suggestion on DNSO Recommendation 2: As recommended by the DNSO, a dispute-resolution policy should be adopted for use by all ICANN-accredited registrars in the .com, .net, and .org TLDs. These registrars are required to abide by such a policy in their registrar accreditation agreements. As noted above, Network Solutions has agreed, even prior to its accreditation, to abide by the Registrars' Policy.
DNSO Recommendation 3: Uniformity should affect both material or substantive rules as well as procedural rules with an effect on substantive rights of the parties. Some minor, administrative, differences could be implemented in procedures followed by different UDRP Service Providers. In this regard we recommend that ICANN establish an accreditation process for DRP Service providers based on objective criteria, and that all accredited DRP Service Providers should be incorporated by the Registration Authorities in their Domain Name Registration Agreements with registrants.
Staff Suggestion on DNSO Recommendation 3: The staff suggests that the above DNSO Recommendation 3 be adopted. ICANN-accredited registrars should employ a standard list of dispute-resolution providers approved by ICANN. Adoption of a formal procedure for approving dispute-resolution providers should be calendared for consideration by ICANN in 2000; until then the staff should be authorized to provisionally approve providers, with the understanding that WIPO will be one such provider. In addition, ICANN has received notice that an Internet Dispute Resolution Organization has been organized under the leadership of Professors Ethan Katsch and Karim Benyekhlef. This effort features a tested online dispute resolution interface and commitments of an experienced group of arbitrators. In any event, efforts should be made to encourage effective competition by approving other qualified providers. For the present, Network Solutions will have the opportunity to select its own list of providers; the staff will consult with Network Solutions to attempt to keep the two lists of providers similar.
DNSO Recommendation 4: For at least the balance of 1999, this UDRP should apply only to bad faith/abusive domain name registrations (cybersquatting) on a mandatory basis, but without precluding the parties' ability to litigate the dispute. Further, once proof of litigation is submitted to the WIPO panel, it should immediately cease its decisionmaking process pending the outcome of the litigation. However, in response to a number of procedural and substantive concerns raised during WG-A's consultation process, it is recommended that WIPO be requested to clarify the following issues listed below, and that its recommendations and conclusions in relation to these issues should then be put back before ICANN for evaluation by way of this, or another WG established for this purpose, for a two week period, before being implemented. However, this should not delay implementation of the WIPO UDRP:
Staff Suggestion on DNSO Recommendation 4: The staff suggests the Board adopt DNSO Recommendation 4, subject to two qualifications. First, as noted above, the staff agrees that dispute resolution proceedings should continue to decision even when litigation is initiated during its pendency. Second, the staff does not agree that a new, separate WIPO prceeding should be initiated; instead, further input sought from WIPO should be obtained in the context of the President's implementation process. This appears to be the best basis on which to harmonize the two policies to achieve a uniform policy promptly.
DNSO Recommendation 4(a): Establishing a "user's guide" to the arbitral process, possibly to be tested on focus groups prior to widespread implementation of the WIPO UDRP;
Staff Suggestion on DNSO Recommendation 4(a): The staff suggests that each approved dispute-resolution provider be requested to prepare an appropriate user's guide.
DNSO Recommendation 4(b): The need to address the situation wherein a domain name registrant who has been unsuccessful in the ADR process is effectively prevented from "appealing" the result in a court due to the absence of a cause of action in contract, tort, regulation, statute or constitutional right. It was noted that there is an imbalance in the WIPO process in that an unsuccessful complainant will always be able to judicially challenge an ADR result by virtue of the jurisdiction of the registry being imposed over the dispute by the WIPO Report;
Staff Suggestion on DNSO Recommendation 4(b): The staff agrees that both registrants and challengers should have equal opportunities to "appeal" an outcome of the administrative dispute-resolution procedure. Some commentators have suggested that the DNSO-recommended proposal would afford challengers significantly superior "appeal" rights. The staff notes that this result would be a clearly unintended consequence of the DNSO proposal. The staff believes that this concern can and should be fully addressed in the implementation of the dispute-resolution policy, which should explicitly negate this possibility.
DNSO Recommendation 4(c): The need to reexamine and possibly refine the procedural timetable with respect to notice of commencement of proceedings and the prescribed period in which to submit a response. While the notice provisions should not be substantially changed or the response time extended at this time, it is recommended that WIPO be asked to develop criteria for reasonable grounds upon which an extension of time for response may be requested by the registrant;
Staff Suggestion on DNSO Recommendation 4(c): The staff agrees and suggests that WIPO be requested to study this issue.
DNSO Recommendation 4(d): In response to the need to clarify the arbitrators' duty to ascertain the applicable law in a dispute and to apply it, WIPO should be asked to consider the development of an independent set of rules for the UDRP that is not based on civil or common law, and that does not rely on any existing statute or body of national case law;
Staff Suggestion on DNSO Recommendation 4(d): The staff agrees and suggests that WIPO be requested to study this issue.
DNSO Recommendation 4(e): The need to more clearly articulate the standard of proof in paragraph 171 of the Final Report, and associated sections of Annexes IV and V.
Staff Suggestion on DNSO Recommendation 4(e): The staff agrees and believes the standard of proof can be articulated clearly in the implementation documents. Furthermore, the staff believes that the following additional factors, drawn from public comments in the WIPO proceedings and the definitions in the U.S. Senate bill, should also be subject to consideration in determining whether a domain name was registered and used in bad faith:
a.. 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;
b. The fact that 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
c. The fact that, in seeking payment for transfer of the domain name, the domain name holder has limited its request for payment to its out-of-pocket registration costs.
With the addition of these factors, the staff believes that the standard of proof can be clarified so as to resolve any ambiguities about the scope of abusive, bad-faith registration.
DNSO Recommendation 5: It is recommended that early in 2000 *, WIPO should be asked to provide a timetable in which it can make available its UDRP with an adequate number of arbitrators from a number of different countries who speak a cross-section of languages, trained in online arbitration, making it possible to offer these dispute resolution services on a voluntary basis to disputants having trademark / domain name disputes. It is recommended that such voluntary dispute resolution shall not preclude access to courts unless both parties to the dispute contract out of such access, in which case the results of the online dispute resolution process will be final and binding.
* Note: The insertion of the 2000 time frame was one point where there was a lack of unanimity among the members of the pNC. Even though the specific date was approved by the requisite majority, it is felt that the recommendation may be amended in accordance with the expressed concerns to replace the 2000 time frame with--as soon as ICANN considers it reasonable and practicable--without materially altering the underlying substance of this recommendation. The original intent was to allow for a period of time after implementation of the UDRP during which its operation could be evaluated and any shortcomings addressed. Based on this experience and any required modifications, the UDRP could be expanded to non-cybersquatting type disputes on a voluntary basis.
Staff Suggestion on DNSO Recommendation 5: The staff suggests that the Board adopt DNSO Recommendation 5, and request that the DNSO report back on this matter on a schedule consistent with its activities and resources that permits consideration by the Board in 2000.
10. At its Berlin meeting, the ICANN Board adopted a resolution (Resolution 99.39) urging "that the organizers of this Constituency should submit a consensus application for provisional recognition as soon as possible, so that the issue of recognition can be reconsidered by the Board no later than an anticipated meeting during the week of June 21 so that representatives of this Constituency can join the provisional Names Council." However, a consensus application was not presented until August 16, 1999.