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Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy

Submitted for Board meeting of October 24, 1999
Date posted: October 25, 1999

1. Summary

1.1. At its Santiago meeting, the Board adopted a uniform dispute-resolution policy for the .com, .net, and .org TLDs and directed the President to have implementation documents prepared. The Board indicated that documents prepared by a group of registrars should be used as a starting point, but gave guidance that various changes should be made. Working with the advice of a small drafting committee, ICANN's staff prepared two implementation documents: a draft statement of the policy and a draft set of rules of procedure, both based on the draft policy prepared by the registrars but revised to reflect the guidance contained in the Board's resolutions at the Santiago meeting.

1.2. On September 29, 1999, the implementation documents were posted on the ICANN web site for public comment, along with a staff report explaining how the Board's resolutions were implemented. The staff report also sought particular comment on unresolved implementation issues involving word limits and guidelines for various documents employed in the administrative dispute-resolution process and the procedure for selection of dispute-resolution service providers and panelists.

1.3. Approximately 90 comments were received on the web site. The comments addressed a broad array of issues, ranging from questions about fundamental policy issues (e.g., why should there be a uniform policy at all?), to the need to clarify some aspects of the documents, to technical procedural problems that may arise in some contexts. The staff benefitted greatly from the insights in these comments. In view of these helpful comments, the staff has made several refinements in the implementation documents, which as refined accompany this report. The comments and refinements are discussed in Section 4 below.

1.4. Based on the comments received and its own further analysis, ICANN staff has also developed recommendations on how the open implementation issues should be resolved. With regard to word limits and guidelines for complaints, responses, and opinions generated in administrative proceedings, staff recommends that those matters be left to supplemental rules established by each dispute-resolution provider, subject to ICANN review. The staff recommends that the complainant select the dispute-resolution service provider, but that the panelists be selected according to a procedure (described in more detail below and reflected in the accompanying implementation documents) that gives both parties a say in the panel's makeup.

1.5. The ICANN staff recommends that the Board approve the form of the implementation documents, as now refined, that accompany this report. Once that is accomplished, implementation of the dispute-resolution policy can proceed fairly quickly. As contemplated by the Board's Santiago resolutions, the staff will proceed to work with registrars and dispute-resolution service providers to have the policy and rules published, to have necessary literature and educational materials prepared, and otherwise to put the necessary implementing steps in place. The staff believes that it should be possible to begin processing disputes under the policy that involve customers of currently accredited registrars near the end of November 1999. Implementation for disputes involving customers of Network Solutions would follow, beginning in early January 2000.

1.6. As is apparent from the discussion of the comments in Section 4 below, the discussion and posting of the implementation documents has prompted several comments that are not directed to implementation issues, but that instead propose broader revisions to the policy itself. Although several of these proposals, based on an initial reading, appear to have some merit, in the staff's view it would not be sound practice for the Board at this time either to adopt these proposals without further DNSO study or to defer implementation of the policy the Board has already adopted. In adopting the policy in Santiago, the Board acted in response to recommendations of WIPO, the DNSO, and the registrar group, each of which had devoted considerable effort to studying the issues and developing an initial dispute-resolution policy. As noted in Santiago, the adopted policy, as now reflected in the implementation documents, is a balanced, workable, and fair policy, although no claim can be made that it is perfect or incapable of being refined. Refinements, however, could best be made with the benefit of experience with the real-world operation of the policy. Accordingly, the staff recommends that it be authorized by the Board to convey to the DNSO a list of issues for possible study, with a view toward formulating appropriate recommendations as to refinements to the policy, to be presented to the Board in 2000.

2. Background

2.1. At its meeting 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 Resolution 99.82.)

2.2. In its 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 interests. (Board Resolution 99.83, paragraphs 1 & 2.)

2.3. The Board's resolutions suggested several areas in which revisions should be made to the documents prepared by the registrars' group:

a. 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 costs.

b. There should be a general parity between the appeal rights of complainants and domain name holders.

c. The dispute policy should seek to define and minimize reverse domain name hijacking.

(Board Resolution 99.83, paragraphs 3-5.)

2.4. Under the direction of ICANN's President and Chief Executive Officer and with the advice of a small drafting committee, ICANN staff and counsel prepared two documents to implement the policy as adopted by the Board: (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. The drafting committee included 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), A. Michael Froomkin (of the University of Miami School of Law, a former member of the WIPO Panel of Experts), 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), and Rita A. Rodin (of Skadden, Arps, Slate, Meagher & Flom, retained by America Online, a member of the DNSO Registrars Constituency). These individuals were selected because of their legal drafting abilities and because they collectively represent a diversity of viewpoints.

2.5. The two implementation documents were posted, along with an explanatory staff report, on September 29, 1999, with two weeks allowed for public comments on whether the documents faithfully reflected the policies adopted by the Board in Santiago, and on open implementation issues regarding the manner of selection of providers and panelists for the mandatory dispute resolution procedure used in cases of abusive registrations and regarding page and word limits for documents used in that procedure.

3. List of Comments Received

3.1. Ninety-one written comments (some duplicates) were received in response to the posting of the staff's implementation documents. They are as follows:

Title of Comment Person Sending Date
1 remove the seizure policy From: Judith Oppenheimer <joppenheimer@icbtollfree.com> 9/30/99
2 No Subject From: Steve Hoss <Steve@hoss.com> 9/30/99
3 Request for modification in document language From: "Sandra Murray" <SMurray@800response.com> 9/30/99
4 Domain Name Changes From: Promopro@aol.com 9/30/99
5 domain name seizure policy From: "Steven A. Jackson" <saj@inter800.com> 9/30/99
6 Take away my domain name From: "Tony Klinkert" <tony@klinkert.net> 9/30/99
7 A Good Start From: Jeff Kuester <kuester@kuesterlaw.com> 9/30/99
8 Dispute Resolution Coordination with Numbering From: rcbartel <rcbartel@iname.com> 9/30/99
9 John Gilmore's comments on Proposed Uniform Dispute Resolution Policy From: John Gilmore <gnu@toad.com> 9/30/99
10 Kudos to the drafting team From: John Gilmore <gnu@toad.com> 9/30/99
11 staff rpt From: SLP@webtv.net (S. Wells) 10/1/99
12 rule application outside the U.S. From: Bronx Hebrona <bronx@journalist.com> 9/30/99
13 Rules From: iclark48@juno.com 10/1/99
14 dispute resolution From: Leavengood@aol.com 10/1/99
15 Comments for Uniform Domain Name Dispute Resolution Policy From: "Raul Carlos Drelichman" <raul@drelichman.com> 10/2/99
16 Domain name hoarding issue not addressed From: "Maximillian Ng" <ng@wongfaye.com> 10/4/99
17 Uniform Domain Name Dispute Resolution Policy From: Duncan Frissell <frissell@panix.com> 10/4/99
18 new policy re:dispute over registered net names From: biker <harleydavidson@cableregina.com> 10/4/99
19 Cybersquatting Vs Real Estate Development From: "Tony Mackay" <tmackay@btinternet.com> 10/4/99
20 Domain Name War From: Michael Walker <miketu@ix.netcom.com> 10/4/99
21 Response to Your ICANN Post - UDRP From: Mike Roberts <mmr@darwin.ptvy.ca.us> 10/5/99
22 seizure policy - Give us a break, Mike! From: Judith Oppenheimer <joppenheimer@icbtollfree.com> 10/5/99
23 Domain Name Dispute - Squatters??? From: winners@powerworx.net (winners) 10/5/99
24 Comments on UDRP From: Mikki Barry <ooblick@netpolicy.com> 10/6/99
25 "ICANN has neither the authority nor the resources" - Mike Roberts From: Judith Oppenheimer <joppenheimer@icbtollfree.com> 10/7/99
26 trademark disputes From: Judith Oppenheimer <joppenheimer@icbtollfree.com> 10/7/99
27 INTA Response From: mheltzer <mheltzer@inta.org> 10/7/99
28 Uniform Domain Name Dispute Resolution Policy. From: "Mark@Duane.com" <mwd@addx.com> 10/7/99
29 technical charter, no broader authority From: Judith Oppenheimer <joppenheimer@icbtollfree.com> 10/8/99
30 the lingering stench of "Disagreeing to Agree" From: Judith Oppenheimer <joppenheimer@icbtollfree.com> 10/8/99
31 RE: [wg-b] technical charter, no broader authority From: "Cade,Marilyn S - LGA" <mcade@att.com> 10/8/99
32 Re: [wg-b] technical charter, no broader authority From: Judith Oppenheimer <joppenheimer@icbtollfree.com> 10/8/99
33 RE: [wg-b] technical charter, no broader authority From: "Cade,Marilyn S - LGA" <mcade@att.com> 10/8/99
34 Comments on draft Policy and Rules of Procedure: We've come a long way baby! ;-) From: "J. Scott Evans" <jse@adamspat.com> 10/8/99
35 Re: [wg-b] technical charter, no broader authority From: Judith Oppenheimer <joppenheimer@icbtollfree.com> 10/8/99
36 Reverse Domain Name Hijacking From: "Mark Babiarz" <shoeless@microd.com> 10/8/99
37 Draft still includes reverse domain name hijacking! (copy of #36) From: "Mark Babiarz" <shoeless@microd.com> 10/7/99
38 Dispute Policy and Reverse Domain Name Hijacking (copy of #36) From: "Mark Babiarz" <shoeless@microd.com> 10/8/99
39 Dispute Policy From: "Gary S. Morris" <gearpage@crosslink.net> 10/9/99
40 Parody and Satire must be protected... From: "OldFox" <whiskers@oldfox.com> 10/9/99
41 CPT/CAC Objections to UDRP and Rules From: Theresa Amato <amato@essential.org> 10/9/99
42 lying then, or now? From: Judith Oppenheimer <joppenheimer@icbtollfree.com> 10/10/99
43 866 From: "Tollfree America" <asingh00@hotmail.com> 10/10/99
44 Re: lying then, or now? From: Mike Roberts <mmr@darwin.ptvy.ca.us> 10/10/99
45 Comment From: David Post <Postd@erols.com> 10/10/99
46 Re: lying then, or now? From: Judith Oppenheimer <joppenheimer@icbtollfree.com> 10/10/99
47 Modifications a total Threat to the Internet. From: "Maren S. Leizaola" <maren@leizaola.com> 10/12/99
48 INEGroups response to UDRP and DNRC's protest From: Jeff Williams <jwkckid1@ix.netcom.com> 10/11/99
49 Proposed "Santiago" changes to domain name dispute resolution policy. From: "matt hooker" <matthooker@hotmail.com> 10/11/99
50 Comments to UDRP From: "Mark Leventhal" <mleventhal@Ablondifoster.com> 10/12/99
51 Comments on Dispute Policy concerning ICANN proposal From: "Douglas W. Kim" <dwk@techattorney.com> 10/12/99
52 Comments to the Proposed UDRP From: "Celeste Brunson" <celestebrunson@hotmail.com> 10/12/99
53 Refer UDRP to Secretary of Commerce From: d3nnis <d3nnis@mciworld.com> 10/12/99
54 Comments on UDRP From: "CHARLES Peterson" <cpeterson@chapinlaw.com> 10/12/99
55 comment on the Rules for UDNDRP From: torii@cm.head.hitachi.co.jp 10/13/99
56 Comments on Proposed UDRP From: "Tepper, Maury" <mmt68872@glaxowellcome.com> 10/13/99
57 Comments by Reebok International Ltd. on Proposed Uniform Domain Name Dispute Resolution Policy From: curt.krechevsky@reebok.com 10/13/99
58 Comments of the Electronic Frontier Foundation From: Shari Steele <ssteele@eff.org> 10/13/99
59 ICANN's Dispute Resolution Procedure Policy From: Ryk Meiring <Ryk@hofmeyr.com> 10/13/99
60 UDRP Comments From: "John Jacobs" <jjesq@hotmail.com> 10/13/99
61 Comment on the UDRP implementation documents From: tsubo@global-commons.co.jp 10/14/99
62 comment for UDRP From: =?ISO-2022-JP?B?GyRCPi5AbiEhQDYbKEI=?= <DQH01676@nifty.ne.jp> 10/14/99
63 Comments on ICANN's Uniform Domain Name Dispute Resolution Policy From: "Davison, Philip" <Philip.Davison@gateway.com> 10/13/99
64 No Subject From: Fred Carl <Fred.Carl.B@bayer.com> 10/13/99
65 UDRP Response From: hkollar@NBA.COM 10/13/99
66 UDRP too weak on RDNH From: Milton Mueller <mueller@syr.edu> 10/13/99
67 Please Find Bell Atlantic's comments attached From: "DEUTSCH, SARAH B." <SARAH.B.DEUTSCH@bellatlantic.com> 10/13/99
68 Please Find Bell Atlantic's comments attached (copy of #67) From: "DEUTSCH, SARAH B." <SARAH.B.DEUTSCH@bellatlantic.com> 10/13/99
69 Comment to URDP From: "Bret A. Fausett" <baf@fausett.com> 10/13/99
70 Dispute Resolution Policy From: Dan Parisi <dparisi@garden.net> 10/13/99
71 NSI From: "Mark Leventhal" <mleventhal@Ablondifoster.com> 10/13/99
72 Comments on UDRP draft of 9/29/99 From: Ellen Rony <erony@marin.k12.ca.us> 10/13/99
73 Comments to Proposed UDRP From: "Lucey, Anne" <Anne.Lucey@viacom.com> 10/13/99
74 Comments on the Draft UDRP, Accompanying Rules, and Provider Selection From: "Schwartz, Scott B" <scott.b.schwartz@intel.com> 10/13/99
75 Comments of Viacom in Response to ICANN's UDRP (copy of #75) From: "Lucey, Anne" <Anne.Lucey@viacom.com> 10/13/99
76 domain dispute policy From: Dan <dparisi@garden.net> 10/13/99
77 Comments From: "Chicoine, Caroline" <chicoinc@PeperMartin.com> 10/13/99
78 Domain Name dispute policy full of problems From: "Dave" <Internic@coro.net> 10/13/99
79 A Catalog of Critical Process Failures; Progress on Substance; More Work Needed From: "A.Michael Froomkin" <froomkin@law.tm> 10/13/99
80 comments on UDRP From: Jonathan Weinberg <weinberg@mail.msen.com> 10/14/99
81 comments on UDRP -- corrected copy (of #80) From: Jonathan Weinberg <weinberg@mail.msen.com> 10/14/99
82 Comments of Noncommercial Constituency From: KathrynKL@aol.com 10/14/99
83 Comments regarding UDP From: Carl Oppedahl <carl@oppedahl.com> 10/13/99
84 Comment From: Masaya Suzuki <iad@email.jpo-miti.go.jp> 10/14/99
85 A Catalog of Critical Process Failures; Progress on Substance; MoreWork Needed [duplicate?] (copy of #79) From: "Michael Froomkin - U.Miami School of Law" <froomkin@law.miami.edu> 10/14/99
86 AIPLA comments on UDRP and Rules From: Lee Schroeder <Lschroeder@aipla.org> 10/14/99
87 No Subject From: Susan Anthony <Susan.Anthony@wcom.com> 10/14/99
88 RE:Comments and confirmation on UDRP (near copy of #84) From: Masakazu Kobayashi <iad@email.jpo-miti.go.jp> 10/15/99
89 AOL Comments From: "Rita Rodin" <RRODIN@skadden.com> 10/15/99
90 I concur with this AOL comment! From: "Mark Babiarz" <shoeless@microd.com> 10/15/99
91 Comments on the Implementation Documents by the Office of Advocacy, U.S. Small Business Administration (received by e-mail)

From: Eric E. Menge

<eric.menge@sba.gov>

10/13/99

4. Discussion

4.1. In considering approval of the implementation documents, three fundamental observations should be kept in mind:

a. The Current Question Is the Form of the Implementation Documents, not the Nature of the Policy Itself. In Santiago, the Board adopted a Uniform Dispute Resolution Policy based on the final report of WIPO, the consensus recommendation of the DNSO, the recommendation of the group of approximately twenty registrars that had prepared implementation documents for a voluntary policy, and a significant number of written and oral comments. The Board's resolutions adopting the policy laid out the principles of the policy, but left implementation details to be resolved in the drafting process, so that practical implementation issues could be evaluated and a workable implementation scheme devised.

In preparing the implementation documents, the staff sought to faithfully reflect the policy decisions embodied in the Board's Santiago resolutions. Some suggestions received from the public during the drafting process essentially would have required contravening the policy decisions set forth in the Board's resolutions, and those suggestions were declined on that basis. Nonetheless, the staff sought to remain alert to any aspects of the Board's adopted policies that presented problems that would make policy revisions a necessary precondition of going forward with implementation. The staff does not, however, see any need for such revisions prior to initial implementation.

Many of the comments submitted did not question the faithfulness of the implementation documents to the adopted policy, but instead recommended changes in the policy itself. For example, several trademark owners recommended expansion of the scope of the definition of abusive registration, so that a larger number of disputes would be subject to the mandatory administrative procedure. Similarly, suggestions narrowing that scope were received from non-commercial and individual interests.

As described in point b immediately below, the staff believes these policy-change recommendations should not be acted upon at this time, but should be referred to the DNSO for further study. In further study at the DNSO, of course, it will be appropriate to keep in mind that some features of this policy that some may see as less than ideal in fact represent compromises struck in the formulation of the policy.

b. Implementation of the Policy Should Not Be Further Delayed Until Suggestions for Further Refinements Are Studied. As recognized in the DNSO recommendation and discussed at the Santiago meeting, with the onset of registration by multiple registrars in the gTLDs, it is important that a uniform policy be established promptly. The policy adopted in Santiago is a good policy, but there should be no pretense that it cannot be refined. Areas of possible future refinement were identified in the DNSO's recommendation to the Board and many suggestions for refinements have been made in subsequent public comments. Evaluation of these comments and formulation of recommendations, however, is the primary responsibility of the DNSO. As the DNSO stated in its recommendations, many of these areas should be investigated further with a view toward possibly making future refinements, but that investigation should not delay the implementation of the policy as it now stands. This approach also has the advantage of allowing the evaluation of possible refinements to be informed by experience under the current policy.

c. The Recommended Policy Is Minimalist in its Resort to Mandatory Resolution. In contrast to the policy currently followed by NSI, the policy adopted by the Board in Santiago, as set forth in the final WIPO report and recommended by the DNSO and registrar group, calls for administrative resolution for only a small, special class of disputes. Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations." Thus, the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw. The policy relegates all "legitimate" disputes--such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name--to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure.

4.2. These basic principles provide a sound basis to address the major points raised in the comments, as follows:

4.3. The Board's Santiago resolutions suggested that the following modifications be made to the implementation documents prepared by the registrars' group:

  • In addition to the factors mentioned in paragraph 171(2) of the WIPO report, the following should be considered in determining whether a domain name was registered 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) 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

(c) 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 costs.

  • 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.

4.4. The first bulleted item above reflects various points of clarification of the scope of disputes to which the administrative dispute-resolution mechanism applies. To implement those points, 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:

a. Noncommercial and Fair Use. 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" is implemented in the policy statement at paragraph 4(c)(iii).

b. Commonly Known by Name. 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" is implemented in the policy statement at paragraph 4(c)(ii).

c. Payment Sought Not Indicative of Plan to Profit. 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" 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.

4.5. Several comments (submitted by INTA and various trademark owners) advocated various expansions to the scope of the definition of abusive registration. For example:

a. These comments suggested that the definition should be expanded to include cases of either registration or use in bad faith, rather than both registration and use in bad faith. These comments point out that cybersquatters often register names in bulk, but do not use them, yet without use the streamlined dispute-resolution procedure is not available. While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. The WIPO report, the DNSO recommendation, and the registrars-group recommendation all required both registration and use in bad faith before the streamlined procedure would be invoked. Staff recommends that this requirement not be changed without study and recommendation by the DNSO.

b. These comments also suggested that paragraphs 4(b)(i), (ii),(1) and (iii) of the policy, which describe some types of evidence that can be used to demonstrate bad-faith registration and use, are too restrictive. Staff notes that the delineation of evidence of bad-faith is not intended to be exhaustive, and other types of evidence may be presented to the panel in the administrative dispute-resolution procedure. The factors listed in paragraph 4(b) are, in staff's view, fully consistent with (and for the most part mandated by) the policy adopted by the Board. Many of the suggestions for expansion could fruitfully be studied by the DNSO in evaluating whether future changes should be made.

c. These comments also suggested narrowing revisions to paragraph 4(c) of the policy, which describes circumstances that, if found by the panel to be present in a particular case, will demonstrate that the domain-name holder has a legitimate right to the domain name. It should be emphasized that a finding of legitimate right under paragraph 4(c) means only that the streamlined dispute-resolution procedure is not available and that the dispute is a "legitimate" one that should be decided by the courts. Even though the dispute is legitimate, the domain-name holder's right may not ultimately prevail over a trademark in court. In any event, staff believes that these comments, while in many respects deserving of further study by the DNSO, call for changes in the policy adopted by the Board and do not indicate that the implementation documents fail to faithfully implement the adopted policy.

4.6. On the other hand, several individual and non-commercial interests suggested changes in language that would narrow the scope of the definition of abusive registrations. They sought to restrict the scope of the examples of bad-faith practices(2) in paragraph 4(b) and sought to expand the scope of the "legitimate use" safe harbors in paragraph 4(c). Staff has reviewed these comments and concluded that the implementation documents faithfully embody the policy adopted by the Board in Santiago. While many of the suggested changes appear initially to hold promise (see comment # 82, for example) and may prove appropriate after detailed study, they involve policy changes that should be evaluated in the first instance by the DNSO. Also, it should be emphasized that the three circumstances described in paragraph 4(c) are not intended to constitute an exhaustive list of legitimate registration and usage of domain names. Even if none of the three listed circumstances is present, the administrative procedure would still not apply to a dispute where the domain-name holder can show that its activities are otherwise legitimate.

4.7. As noted above, the Santiago resolutions also indicated that the implementation documents should provide for parity of appeal between challengers 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.

4.8. With the advice 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, 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. The comments received on this solution to the parity-of-appeal issue in the posted implementation documents were positive.

4.9. There was disagreement, however, on the location of the jurisdiction in which submission should be required. The posted implementation documents provided for submission to jurisdiction (a) in the registrar's location when the domain-name holder has contractually submitted to jurisdiction in that location (i.e. in the case of ICANN-accredited registrars) and (b) in the location shown for the domain-name holder in the registrar's Whois data in other cases (i.e. some legacy registrants). Non-commercial interests commented that the jurisdiction should always be the location of the domain-name holder, but trademark interests noted this approach may invite bad-faith registrants to list remote or otherwise inconvenient locations to discourage invocation of the administrative procedure. Based on comments received, the staff has concluded that the basic two-part approach of the posted documents is fair to all parties (in the case of accredited registrars, domain-name holders have themselves submitted to jurisdiction in the location of the registrar), but that an additional option should be added so that in all cases the submission to jurisdiction can, at complainant's option, be at the location of the domain-name holder as shown in the registrar's Whois data.

4.10. The final point of substantive guidance in the Board's Santiago resolutions is that the policy should define and minimize reverse domain-name hijacking. The definition of "reverse domain name hijacking" is included in paragraph 1 of the rules. The implementation documents contain several measures to minimize that practice. First, paragraph 15(e) of the rules 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 the enhanced notice requirement for the initial complaint in paragraph 2(a) of the rules. 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 decision (paragraph 4(k) of the policy statement) should also minimize reverse domain-name hijacking. Some commentators representing non-commercial interests stated that more punitive measures should be provided to discourage reverse domain-name hijacking. Staff believes such punishment is outside ICANN's scope. One comment (from a registrar, see comment #89) indicated that the term "reverse domain name hijacking" was unnecessarily pejorative. Whatever the merits of that comment, the staff believes that the Board's Santiago resolutions require use of the term.

4.11. Several trademark owners commented that the required procedures to provide the domain-name holder initial notice that a challenge had been filed (paragraph 2(a) of the rules) is too extensive and costly. Staff acknowledges that the procedures are quite extensive,(3) but feels that at least initially it is important to have a notification procedure that is very likely to alert domain-name holders when they must act to defend their domain names. This should promote early confidence in the procedure, and discourage any reverse domain-name hijacking attempts. Staff's investigation indicates that the cost is not prohibitive. Accordingly, staff believes that the notice procedure of paragraph 2(a) is consistent with the Board's Santiago resolutions, but that after the policy has been in place for some time there should be an evaluation of whether the notice requirements should be made less extensive.

4.12. Some comments expressed concern that the notice provisions should take account of the possibility of bounced e-mail notices. In response, paragraph 2(j) has been added to the rules providing that a party receiving a non-delivery notice (for e-mail or otherwise) must promptly advise the panel hearing the matter.

4.13. As noted above, a few implementation points were left open in the posted implementation documents, with public comment invited. After reviewing the comments, staff recommends that these open points be resolved as follows.

4.14. The posted rules of procedure provided for limits on the length of complaints and responses filed in the administrative dispute-resolution procedure. They also provided for length guidelines for decisions and dissenting opinions. However, the limits were left blank and comments invited. A few comments were received, but there was divergence in the lengths proposed by the commentators. Staff recommends that the limits and guidelines be established by each dispute-resolution provider's supplemental rules. These rules may appropriately account for differences in length due to such factors as language differences.

4.15. Comment was also invited on the method for selecting dispute-resolution providers and panelists. Four different options were suggested in the posted staff report, each with different advantages and disadvantages. Based on the comments received, staff recommends adoption of a variant of the fourth option. Under staff's recommendation:

a. The provider (which administers the proceeding) for each dispute would be determined by the complainant, which would submit its complaint to the selected provider.

b. Panels would consist of either one or three panelists. Either party could elect three panelists.

c. If both parties elect to have one panelist, the provider would select the panelist and the complainant would pay all fees.

d. If the complainant elects to have three panelists, then the complainant pays all fees. If the complainant elects to have one panelist but the domain-name holder elects three, then the cost of the resulting three-member panel would be split equally between the parties.

e. In the case of a three-member panel, each party would submit a list of three candidates for panelists (which may be drawn from any provider's list of trained panelists) to the selected provider. The provider would arrange for one candidate from each list to be appointed to the panel. The third panelist would be selected from a list of five candidates submitted by the provider to each parties, in a manner that balances the preferences each party states with respect to the five candidates on the list.

4.16. One comment (see comment #91) proposed two other alternatives for selection of providers and panelists and recommended that further public comment be solicited on these alternatives. Although the proposed alternatives hold promise and deserve study in the DNSO, staff believes that implementation should not be deferred until that study is complete.

4.17. Several comments objected to the provisions of registrars' contracts with their customers that provide that domain name registrations may be canceled by the registrars at their sole discretion. (Comments ##1-6 and follow-up comments ##21, 22, 25, 26, 29-33, 35, 42-44.) These contracts are not mandated by the Uniform Dispute Resolution Policy, nor by any ICANN-adopted policy at all. (ICANN's registrar accreditation policy requires only that registrars retain the right to cancel registrations in cases of mistake by the registrar or registry administrator or under a dispute-resolution policy.) Instead, it is the registrars that have decided that those are the terms on which they choose to deal with their customers. If consumer demand supports narrower cancellation policies, market opportunities should induce at least some registrars to offer them. The question of whether these marketplace decisions should be limited in the future is not germane to the current question of whether the implementation documents should be approved.

4.18. Some commentators (e.g., the U.S. Small Business Administration, comment #91) suggested that the language of the implementation documents be revised to make clear that changes cannot be made without ICANN's approval. This suggestion has been adopted.

4.19. Some commentators expressed concern that decisions in administrative dispute-resolution proceedings should be available to the public. This generally is the effect of paragraph 4(j) of the policy, which reads:

j. Notification and Publication. The Provider shall notify us [the registrar] of any decision made by an Administrative Panel with respect to a domain name you have registered with us. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.

An example of a type of exceptional case that may arise is when a domain-name holder wishes to present confidential information, such as web-site development cost data or the fact of merger discussions, to defend itself. There undoubtedly will be other unusual circumstances that can not be predicted. As part of the implementation process, ICANN staff intends to require providers to notify ICANN of these cases and to provide a copy of the redacted portions, so that staff can ensure the provision is not being used improperly.

End Notes:

1. Some commentators (both trademark owners and non-commercial interests) indicated that it would be helpful to have a more detailed explanation of the circumstances in which a bad-faith "pattern" of registering domain-names to block their registration by trademark owners can be found to exist under section 4(b)(ii). Staff believes that the issue of whether a pattern is present will depend on the fact pattern presented in each case and that, until experience is accumulated with the policy, prescribing a more detailed definition is not warranted.

2. In view of the comments, one detail of the policy's language should be emphasized. Several commentators indicated that the concept of "tarnishment" in paragraph 4(c)(iii) might be misunderstood by those not familiar with United States law or might otherwise be applied inappropriately to noncommercial uses of parody names and the like. Staff is not convinced this is the case, but in any event wishes to point out that "tarnishment" in paragraph 4(c)(iii) is limited to acts done with intent to commercially gain. Staff intends to take steps to publicize this point.

3. In response to public comments, staff slightly modified the notice requirements of paragraph 2(a) of the rules, adding one additional means of notice (postmaster@<contested domain name>) (see comment # 9) and making clear that notice need not be given to registrars and ISPs merely because they maintain generic "parking" web pages for the disputed domain names (see comment # 89).

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