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Comments on draft Policy and Rules of Procedure: We've come a long way baby! ;-)

To: ICANN Board

Fm: J. Scott Evans, Adams Law Firm, P.A.


Uniform Dispute Resolution Policy

My name is J. Scott Evans and I am a trademark and copyright attorney located in Charlotte, North Carolina. In addition, I am a shareholder in Adams Law Firm, P.A. a four person law firm concentrating in patent, trademark and copyright law. The majority of my clients are small to medium-sized businesses. I also served as one of the five members on the Small Drafting Committee established under the Board's Santiago Resolution and I assisted in the drafting of the Registrar's Model Policy and Model Rules of Procedure submitted to the ICANN Board in Santiago. I would like to take this opportunity to thank the Board and ICANN's counsel for allowing me the opportunity to participate in this endeavor. While I believe that the proposed uniform dispute resolution policy and the rules of procedure still require some improvement, I would like to voice my support for a uniform mechanism designed to offer the Internet community a quick and cost effective procedure for dealing with abusive domain name registrations.

I have read many of the comments posted on the ICANN list serve and I would like to address the primary concern voiced in those comments (i.e., "reverse domain name hijacking"). As currently drafted the Policy is purposefully designed to avoid "reverse domain name hijacking." The phenomenon of "reverse domain name" hijacking came about due to NSI's dispute resolution policy which allowed the owner of a trademark registration with an effective date earlier than the creation date of the domain name record to have the domain name placed on hold. Domain name holder's were given no opportunity to demonstrate rights in the alphanumeric string making up the domain name (i.e., common law trademark rights, free speech rights, legal surnames, etc.). The proposed Policy posted by the ICANN staff allows domain name holders an opportunity to respond. This is a great improvement for domain name holders and small start up companies.

The Policy also empowers the Panel to make an award of the domain name. Under NSI's Policy, the domain name was simply placed on hold. This situation was a lose/lose situation. The trademark owner with a valid claim could not get the misappropriated domain name unless and until the domain name holder failed to pay a renewal fee. Likewise, the domain name holder with legitimate rights was a loser because, absent a trademark registration certificate predating his/her/its first notice of the dispute, the domain name holder lost use of the domain name until such time as an arbitrator, a court of competent jurisdiction or the parties provided NSI with direction for disposition of the domain name. While completely neutral as to the circumstances, NSI's policy worked substantial inequities on both trademark owners with legitimate claims and domain name holders with valid rights. Because the ICANN's proposed Policy allows for a review of the facts, the proposed Policy, while not perfect, goes a long way towards avoiding such inequities.

That being said, there are still several areas that need tightening up in order for the Policy to be an effective tool in the battle against cyberpiracy/cybersquatting/abusive registrations. First, subparagraph 4(a)(iii) needs to be revised by deleting the "and" appearing between the term "registered" and "is" and inserting the term "or." This change is needed to reflect the reality that under certain circumstances domain names are merely registered in bad faith. I might also note that without this change 4(a)(iii) does not jibe with certain provision in para. 4(b). Second, an FAQ must be designed to alert the public that a "pattern" can have different meanings under different factual scenarios. Third, 4(c) must be revised so that it lists a non-exclusive set of "factors" for the Panel to consider when determining if a domain name holder has demonstrated legitimate rights. By making factors conclusive, the Policy simply creates a road map for nefarious parties attempting to circumnavigate the Policy. In contrast, a non-exclusive list of factors in no way inhibits a domain name holder's ability to demonstrate his/her/its legitimate rights to the Panel. Fourth, the "nickname exception" needs to be removed or tightened up to prevent similar abuse. We must be very careful that, in crafting a Policy, we do not create a Policy which is ineffective and, consequently, not used by the Internet community.

Finally, I must point out that rule 2(a) of the Rules of Procedure places an unreasonable burden on the dispute resolution provider. By creating such a tremendous burden on the Providers, we may be creating a situation whereby Providers find the obligations imposed so cumbersome that it is just not financial feasible to offer services to the Internet community. Accordingly, I would purpose that a "sunset" provision be added. Under such a provision, the 2(a) notice requirements would only exist for the first year of the Policy and then the 2(b) provision would be acceptable for notice by the Provider.

I also want to take this opportunity to express my thanks to ICANN's counsel and the other members of the Small Drafting Committee. While I did not agree with all the points raised in our discussions, I was constantly amazed at the fine advocacy, and in some instances, shining diplomacy I heard demonstrated during the process.

Thank you.