Reconsideration Request 01-6 Recommendation of the Committee Date: 7 January 2002

Recommendation

In reconsideration request 01-6, Russell Smith requests review of ICANN's actions with respect to the "the stipulation in the ICANN staff report #2 concerning the Uniform Domain-Name Dispute Resolution Policy (UDRP)". The "stipulation" referred to is a statement in the October 1999 Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy that "that 'tarnishment' in paragraph 4(c)(iii) [of the UDRP] is limited to acts done with intent to commercially gain." Mr. Smith's request includes a statement posted by a UDRP panelist that Mr. Smith asserts demonstrates a lack of familiarity with the tarnishment "stipulation" in the Second Staff Report.

Mr. Smith requests that ICANN "(1) immediately notify all persons acting as UDRP arbitrators of this issue and (2) reprocess all domain disputes where First Amendment and/or tarnishment issues were raised during the proceeding."

Analysis of Request

The Reconsideration Policy permits parties to obtain reconsideration of ICANN actions that affect them. Mr. Smith's request asserts that he is an affected party because he operates domain names "which could be subject to a similar dispute. Dispute decisions are being used as precedents for later disputes. therefore, such decisions may affect domains which I own." At least in the absence of a specific dispute involving a domain name registered by Mr. Smith, any effect on him of one panelist's views about tarnishment is entirely hypothetical, and he is therefore not an "affected party" having a right to invoke the Reconsideration Policy. Nonetheless, because the question raised by Mr. Smith is a substantial one, some comment is appropriate. (See Recommendations 99-4 and 01-1.)

In the Second Staff Report, ICANN staff indicated it intended to publicize the limitation of the "tarnishment" under the policy to acts done for commercial gain. Mr. Smith's request suggests that additional publicity steps by ICANN would be helpful.

The UDRP is an ICANN policy providing a low-cost, expedited, and non-binding means to resolve disputes in which trademarks owners assert that domain names have been registered and are being used in bad faith and without rights or legitimate interests. The administration of proceedings under the UDRP is the responsibility of approved dispute-resolution service providers, not ICANN. In its statement of procedures for approving would-be providers, ICANN clearly has stated that those providers are responsible for training of panelists: "Applicants are expected thoroughly to train the listed neutrals concerning the policy, the uniform rules, the technology of domain names, and the basic legal principles applicable to domain-name disputes."

To publicize the "tarnishment" principle, the Second Staff Report was posted on ICANN's web site the day after it was presented to the Board. In addition, the Second Staff Report has been prominently featured in lists of panelist-training materials that ICANN provided to providers soon after their approval. For example, the Second Staff Report was the very first item listed in a collection of panelist-training materials ICANN provided in January 2000 (copy reproduced below) to the National Arbitration Forum, one of two of the approved providers that list Mr. Fashler as a neutral. A similar message was sent to the World Intellectual Property Organization (WIPO), the other approved provider that lists Mr. Fashler as a neutral.

(The above is not to suggest that Mr. Fashler's posting shows a lack of familiarity with the tarnishment statement of the Second Staff Report. The posting indicates familiarity with the concept of tarnishment, and raises issues of legitimate scholarly discussion concerning its relationship with the U.S. Constitution's First Amendment.)

We note that a growing body of legal literature has emerged regarding the legal principles that should govern resolution of domain-name disputes, including through the UDRP, and that the approved providers have made a practice to make these accessible to the neutrals on their lists. One good example is the "Domain Name Bibliography" posted by WIPO at <http://arbiter.wipo.int/center/bibliography/udrp.html>.

Conclusion

The responsibility for ensuring that UDRP panelists are properly trained rests with the approved providers, not ICANN itself. To make clear this allocation of responsibility, the Reconsideration Committee requests that a copy of this recommendation be forwarded to each approved provider. This is consistent with ICANN's past provision of basic background materials, including the Second Staff Report, to the providers to help them ensure proper panelist training. In view of this past practice, the Reconsideration Committee does not recommend that any additional action be taken in response to Mr. Smith's request.

Attachment to Recommendation

-----Original Message-----
From: Louis Touton [SMTP:touton@icann.org]
Sent: Monday, January 24, 2000 8:09 PM
To: Curtis Brown
Subject: Training of NAF Neutrals re Domain-Name Policy

Curtis,

I see that new proceedings are coming in to NAF at a brisk pace. To ensure a smooth start-up of the policy, it occurs to me that you should point out to your neutrals (if you have not already done so) the following materials that may help them understand the policy and help promote reasonably uniform results. I've listed (in reverse chronological order) five items of "legislative history" and the one decision under the policy.

1. The "Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy" (October 24, 1999) <http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm>. This was the basis on which the ICANN Board approved the language of the Uniform Policy and rules, and is one of the key pieces of "legislative history" behind the policy and rules.

2. The "Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy" <http://www.icann.org/udrp/staff-report-29sept99.htm>. This
is the staff document by which the draft implementation documents were presented to the Internet community for comment.

3. The "ICANN Staff Report: Uniform Dispute Resolution Policy for gTLD Registrars" (August 24, 1999) <http://www.icann.org/santiago/udrp-staff-report.htm>. This report was presented to the Internet community and the ICANN Board before the public forum held on the dispute-resolution policy on August 25, and the Board's adoption of the policy (in principle-- implementation language to be settled) on August 26, 1999.

4. Materials concerning the recommendation of the ICANN Domain Names Supporting Organization's Names Council, accessible through <http://www.icann.org/santiago/udrp.htm>. The Names Council was the body from the relevant ICANN supporting organization that recommended adoption of a uniform dispute policy.

5. The Final Report of the World Intellectual Property Organization (WIPO) on its Internet Domain Name Process (April 30, 1999) <http://ecommerce.wipo.int/domains/process/eng/processhome.html>. This was the culmination of an extensive consultative study conducted by WIPO at the request of the United States Government (a member of WIPO). It was presented by WIPO as a recommendation to the ICANN Board.

6. The decision in the worldwrestlingfederation.com case (January 14, 2000) <http://arbiter.wipo.int/domains/decisions/pdf/d99-0001.pdf>. This is the first decision in a case under the policy.

I'm sure there are other background materials concerning the policy that may be of some assistance to neutrals, but the above are the most pertinent.

Louis Touton
ICANN Vice President and General Counsel