Staff Report on Implementation Documents for the Uniform
Dispute Resolution Policy
Date posted: September 29, 1999
Corrected: October 1, 1999
Deadline for public comments: October 13, 1999
At its meeting held in Santiago, Chile, on August 26,
1999, the ICANN Board of Directors, on the recommendation of the ICANN Domain
Names Supporting Organization, adopted a uniform dispute resolution policy for
all accredited registrars in the .com, .net, and .org top-level domains. (Board
Resolution 99-81.) The Board directed the President, with the assistance
of ICANN staff and counsel, to prepare implementation documents for approval
by the Board after public notice and comment in time for the policy to be put
in place within 45 days. (Board
Under the direction of ICANN's President and Chief Executive
Officer, ICANN staff and counsel have prepared two documents to implement the
policy as adopted by the Board, which can be found at the following links: (1) a
written statement of the policy for use by
registrars and (2) procedural rules
under which administrative proceedings would be conducted in cases involving
abusive registrations. Until October 13, 1999, public comments are solicited
on whether these documents faithfully implement the policy adopted on August
26. Comments should be sent to email@example.com.
How the Implementation Documents Were Drafted.
In its August 26 resolutions, the Board indicated that implementation
documents for an interim voluntary policy prepared by a group of ICANN-accredited
registrars and Network Solutions, Inc. and presented at the ICANN meeting in
Santiago should be used as the starting point in drafting implementation documents
for the Board-adopted policy. The Board also indicated that the President or
his delegate should convene a small drafting group to advise staff and counsel
as they prepared the implementation language. The Board suggested that the drafting
group should consist of persons selected to express views and consider the interests
of registrar, non-commercial, individual, intellectual property, and business
Resolution 99-83, paragraphs 1 & 2.)
Earlier this month, a drafting group was formed including
Kathryn A. Kleiman (of the Association for Computing Machinery's Internet
Governance Committee, a member of the DNSO Non-Commercial Domain Name Holders'
Constituency, and co-founder of the Domain Name Rights Coalition), Steven J.
Metalitz (General Counsel of the International Intellectual Property Alliance,
a member of the DNSO Trademark, Intellectual Property, Anti-counterfeiting Interests
Constituency), Rita A. Rodin (of Skadden, Arps, Slate, Meagher & Flom, retained
by America Online, a member of the DNSO Registrars Constituency), A. Michael
Froomkin (of the University of Miami School of Law, a former member of the WIPO
Panel of Experts), and J. Scott Evans (of the Adams Law Firm P.A., a member
of the International Trademark Association's Internet Committee and chair of
its DNS subcommittee). These individuals were selected because of their legal
drafting abilities and because they collectively represent a diversity of viewpoints.
ICANN counsel prepared the implementation documents by starting
with the policy statement (entitled "Model
Domain Name Dispute Resolution Policy for Voluntary Adoption by Registrars")
and rules of procedure (entitled "Model
Rules for Uniform Domain Name Dispute Resolution Policy") prepared
by the group of ICANN-accredited registrars and Network Solutions. In its August 26 resolutions,
the ICANN Board pointed out several areas in which revisions should be made
to these documents:
- In determining whether a domain name has been registered
in bad faith, consideration should be given to the following factors in
addition to those stated in the WIPO, DNSO, and registrars policies: (1)
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; (2) whether 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 (3) whether, in seeking payment for transfer of the domain name,
the domain name holder has limited its request for payment to its out-of-pocket
- There should be a general parity between the appeal
rights of complainants and domain name holders.
- The dispute policy should seek to define and minimize
reverse domain name hijacking.
Resolution 99.83, paragraphs 3-5.)
Throughout this process, the committee members provided
valuable and insightful advice. It should be clearly understood, however, that
the responsibility for selecting the language in the posted documents was that
of ICANN staff and counsel, not the committee members. In some respects, the
implementation language differs from that which individual committee members
would have selected.
How the Board's Policy Guidance Was Implemented.
As noted above, Board
Resolution 99-83 listed various specific policy features that should be
included in the implementation documents. To assist the public in commenting
on whether the implementation documents presented here faithfully implement
the Board's resolutions, this section describes what measures were taken to
implement these features.
- Consideration of Additional Factors. The Board
resolution indicated that various additional factors should be considered
in determining whether a domain-name registration was made in bad faith,
and therefore is subject to a mandatory administrative proceeding possibly
leading to cancellation or transfer of the domain name. To implement these
additional factors, portions of paragraph 4(b) of the policy (entitled "Evidence
of Registration and Use in Bad Faith") were revised and a new paragraph
4(c) (entitled "How to Demonstrate Your Rights to and Legitimate Interests
in the Domain Name in Responding to a Complaint") was added to the
registrars policy statement. Specifically:
- Noncommercial and Fair Use. Resolution
99-83(3)(a) called for consideration of "[w]hether 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." This is implemented in the policy
statement at paragraph 4(c)(iii).
- Commonly Known by Name. Resolution
99-83(3)(b) called for consideration of "[w]hether 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." This is implemented in the
policy statement at paragraph 4(c)(ii).
- Payment Sought Not Indicative of Plan to Profit. Finally, Resolution
99-83(3)(c) called for consideration of "[w]hether, in seeking
payment for transfer of the domain name, the domain name has limited
its request for payment to its out-of-pocket costs." This is implemented
in the policy statement by revising the language of paragraph 4(b)(i) to focus it on situations where the domain name was ransomed for profit.
- Parity of Appeal. Paragraph 4 of Resolution
99-83 states the principle that "[t]here should be a general parity
of appeal rights of complainants and domain name holders." Two aspects
of non-parity were discussed by the drafting committee. First, it was noted
that in some cases the domain-name holder would have no clear mechanism
under the registrars documents for seeking judicial review of a decision
of an administrative panel canceling or transferring the domain name. Second,
it was noted that, under the policy statement prepared by the registrars,
the domain-name holder had a unique advantage in that, even if an administrative
panel decided that the domain name should be canceled or transferred, during
court proceedings to review the decision it could obtain an automatic stay
simply by presenting evidence that it had filed a complaint in any court
against the complainant. As a practical matter, this could require complainants
to litigate in courts with which they have no connection, while there is
no similar requirement for domain-name holders.
With the assistance of the drafting committee, an integrated
solution to these two aspects of non-parity was devised. First, in paragraph
3(b)(xiii) of the rules of procedure,
the complainant is required to include in its complaint a statement submitting
to jurisdiction for purposes of court review of administrative panel decisions
in its favor. Correspondingly, paragraph 4(k)
of the policy statement was revised to provide a staying effect only when
the domain-name holder files suit in that jurisdiction.
After considering various options with respect to the
court for which the submission to jurisdiction must be made, the ICANN staff
and counsel drafted language providing for submission to jurisdiction (a)
in the registrars location when the domain-name holder has contractually
submitted to jurisdiction in that location and (b) in the location
shown for the domain-name holder in the registrars Whois data in other
cases. ICANN staff and counsel feels that this formulation fairly places
subsequent court actions in a reasonable location for the domain-name holder,
while limiting the possibility of abuses through such tactics as submission
of incorrect Whois data.
- Reverse Domain Name Hijacking. Paragraph 5
Resolution 99-83 states that "[t]he dispute policy should seek
to define and minimize reverse domain name hijacking." The definition
of "reverse domain name hijacking" is included in paragraph 1 of the rules of procedure. There are several
measures incorporated in the implementation documents designed to minimize
its use. First, paragraph 15(e)
of the rules of procedure provides that an administrative panel finding
that a complaint was brought in bad faith shall note that fact in its decision.
A second measure to minimize reverse domain name hijacking is included in
paragraph 2(a) of the rules of
procedure, providing enhanced notice requirements for the initial complaint.
The clarification that the complainant bears the burden of proof (paragraph
4(a) of the policy statement)
and the lengthening of the time for a domain-name holder to seek court review
of an adverse decisions (paragraph 4(k)
of the policy statement) should also minimize reverse domain name hijacking.
There was some sentiment on the drafting committee that
a footnote should be included after the term "reverse domain name hijacking"
to refer to guidelines that would either be incorporated into or otherwise
accompany the rules of procedure to identify how a Panel may decide that
reverse domain name hijacking has occurred. ICANN staff and counsel feel
that this elaboration is more prudently deferred until experience with proceedings
under the policy and rules accumulates.
Remaining Open Implementation Issues as to Which Comment
Comment is invited on a limited number of implementation
issues left open in the draft documents:
- What word limit should apply to complaints under
paragraph 3(b)(ix) of the rules
- What word limit should apply to responses under paragraph 5(b)(i) of the rules of procedure?
- What procedures should be used for selection of Providers
and Panelists? In the process of drafting implementation documents, several
alternatives were explored. Each alternative has advantages and disadvantages.
In brief, the main alternatives include:
- Allow the complainant to select the Provider
by filing the complaint with that Provider. Allow the Provider to select
the Panelists. This approach has the advantage of fostering competition
among Providers on price, timeliness, responsiveness, and service, but
gives the complainant influence over the Panels composition, while
eliminating any balancing influence by the domain-name holder.
- Allow the domain-name holder to select the
Provider and allow the Provider to select the Panelists. This alternative
not only suffers from an imbalance like alternative (a), but also would
frustrate effective competition among Providers on price, because the
party paying (the complainant) would not have a voice in selecting the
- Allow the registrar to select the Provider
and allow the Provider to select the Panelists. One feature of this
option is that the complainant and domain-name holder each have equal
influence (i.e. none) over selection of the Panelists. Its disadvantages
include (i) it thwarts effective price competition among Providers by
depriving the complainant, which pays the Providers fee, of any influence
over choosing the Provider; (ii) it creates administrative burdens for
registrars and involves them in domain-name disputes, contrary to the
overall design of the policy; and (iii) it creates a (perhaps irresistible)
potential for registrars to seek to differentiate themselves in the
marketplace by the outcomes under Providers they select, thereby undercutting
uniformity among registrars. This last feature would, in the view of
ICANN staff and counsel, severely impair the principle that the dispute
resolution policy should be uniform among registrars, and is therefore
contrary to Board Resolutions 99.43 and 99.83.
- Allow the complainant to select the Provider
by filing the complaint with that Provider. Allow the parties jointly
to select the Panelists (if three Panelists are elected) by giving each
party the ability to select one Panelist from the universe of Panelists
presented by all providers and having the third Panelist selected by
agreement of the first two Panelists or, failing agreement, by the Provider.
This approach avoids many of the pitfalls of the above approaches. Because
the complainant selects the Provider, effective price competition will
be fostered. It gives both parties influence over the composition of
the Panel. It ensures that outcomes are not affected by the identity
of the registrar and promotes the goal of minimizing registrar involvement
in domain-name disputes. It would, however, require Providers to use
Panelists presented by other Providers.
- What word guideline should apply to decisions and dissents
under paragraph 15(e) of the rules