• -Recommendation 1)
  • -fourteen eligible votes in support, one late vote in support, three partial dissents,
  • - one vote against;
• -Recommendation 2)
  • - all fifteen eligible votes in support, one late vote in support, four partial dissents and/or comments;
• -Recommendation 3)
  • - all fifteen eligible votes in support, one late vote in support, three partial dissents and/or comments;
• -Recommendation 4)
  • - all fifteen eligible votes in support, one late vote in support, five partial dissents and/or comments;
• -Recommendation 5)
  • - thirteen eligible votes in support, one late vote in support,
  • - two votes against
    
    

(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;

(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;

(c) The need to re-examine 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;

(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;

(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.

(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 trade-mark / 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.

* WG-A Co-Chairs 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.

Respectfully submitted:

Members of the pNC.

JCC/AA/VC

Supporting Documentation

In further accordance with Article VI-B, Section 2 (d) of ICANN's Bylaws, the following materials and information about the WG-A process are provided to assist the ICANN Board in its review of WG-A's recommendations:

Final Report of WG-A Page 7

Dissenting Opinions from the Vote of the pNC Page 13

Comments to the Preliminary Report RFC and Final Report Page 16

Report on the Formation of WG-A Page 17

Personal Comments from Jonathan C. Cohen, Co-Chair of WG-A Page 22

a) The desirability of establishing a "user's guide" to the arbitral process, possibly to be tested on focus groups prior to widespread implementation of the WIPO UDRP, in view of the fact we have no meaningful experience to date with international online arbitration from which to seek guidance on questions such as: how arbitrators are to make credibility determinations based on paper records, which are possibly generated by parties who may be presenting their case in a language other than their own; how to deal with situations where one party is represented and the other is not, a party fails to frame its case properly or does not have sufficient resources to do so.

WG-A considers that this point is well taken, however we suggest that we may rely to some degree on the experience of WIPO in multi-national, multi-lingual dispute resolution. Nonetheless, WG-A supports in principle the idea that the implementation process should include as a prerequisite, the request to WIPO that it consider the formulation of such an arbitral "user's guide".

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.

One suggested solution to this problem which WG-A agrees merits further consideration, is the requirement that a complainant enter into a contract with the registrant (or the arbitral institution in a jurisdiction that recognizes third party beneficiary agreements) as a condition of initiating ADR, that provides for consent to be sued in the jurisdiction where the registrant is ordinarily resident, and in the jurisdiction where the subject registrar is located (assuming both parties do not agree to voluntarily contract out of the right to subsequent litigation).

c) The need to re-examine and possibly refine the procedural timetable with respect to notice of commencement of proceedings and the prescribed period in which to submit a response.

The potential for unfairness, or abuse of WIPO's rules governing notice and time for response include the following:

• date of commencement of proceedings is the date on which the arbitration service provider receives the complaint, rather than the date of actual or constructive notice of the complaint by the registrant;
• ten day period within which a response to a notice of proceedings is to be filed and the possible difficulties such a short time period may cause a registrant in finding representation, collecting evidence and preparing the defence;
  
• absence of any requirement on the part of the complainant to contact the registrant prior to filing its complaint, or to allege such contact.

WG-A agrees that these are valid concerns, but does not at this time recommend changing the notice provisions, or extending the response time period. One of the greatest advantages of the Internet as a commercial and communications medium, and simultaneously one of the greatest challenges it poses to intellectual property rightholders, is the speed at which transactions and transmission of information takes place. The tremendous growth and success of the Internet has been due to the ability of its users to embrace and adapt to this pace and the fundamental rationale behind the WIPO UDRP is its ability to arbitrate disputes as efficiently, quickly and inexpensively as dictated by this unique medium.

However, WG-A agrees that WIPO should be asked to refine the notice provisions to take into account the foregoing concerns by possibly requiring the notice to: be in the language indicated as the registrant's preference in the registration agreement; clearly outline the steps the respondent should take in preparing its defence; recommend to the respondent that it should seek the advice of counsel or an experienced arbitrator; and allow the respondent to seek a brief extension of time, retroactively if necessary, if it can show reasonable grounds for requesting same.

At this stage, it is the belief of WG-A that it is better to work out criteria for the reasonable grounds upon which extensions of time may be requested by the registrant, and to allow arbitrators to exercise their discretion in considering these grounds to grant extensions where the request is made in good faith, than to extend the time limits in general. Such criteria could include: differences in the parties' respective economic resources, degree of industrialization of the parties' respective countries, the necessity for and difficulty in obtaining translations of documents, or familiarity of the parties with arbitral proceedings. This is not an exhaustive list.

d) The need to clarify the arbitrators' duty to ascertain the applicable law in a dispute and to apply it (paragraph 176 of the Final Report and paragraph 15 of Annex IV).

WG-A agrees that this suggestion is important in the short term and recommends that WIPO be asked to revisit these sections of its Report. However, in the long term, WG-A recommends that WIPO be asked to consider developing an independent set of rules for its 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.

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.

-Community consensus does not exist for Recommendation 1, which recommends that the UDRP be put in place as soon as possible after the ICANN Board meeting in Santiago, Chile, and that *all* Registrars should be required to adopt the UDRP recommended by WIPO; I am not voting to forward the recommendations of item 1 to the ICANN Board as having community consensus support.

-Community consensus does not exist for the language in the three paragraphs in the CONCLUSION, which recommends that the overall time frame for implementation of the UDRP should not be delayed, and community consensus does not exist for the recommendation that WIPO be asked to extend its UDRP process on a voluntary basis to other disputes as early as possible in 2000, and community consensus does not exist for the recommendation that WIPO be requested to continue the work begun during the IAHC process. I am not voting that the items in the conclusion be forwarded to the ICANN board as having community consensus support.

1) Procedural Problems. There is no way to determine whether the recommendations presented here from WG-A represent a "community consensus recommendation" without at least significant input from the General Assembly. Although the gTLD constituency has voted affirmatively, and supports the proposal in general, this procedural lapse is significant.

2) Partial Dissension. The gTLD constituency agrees in general that the recommendations of Chapter 3 and Annex IV & V of the WIPO report of April 1999 should be implemented as soon as possible ( Recommendation #1.), in a generally uniform manner across the current global TLDs ( Recommendation #2). We agree that uniformity should involve the scope of the dispute, the timing and procedures involved, and the remedies provided (Recommendation #3). We further agree that the initial scope should be limited to "abusive recommendations" as defined by the WIPO report (Recommendation #4). Finally, WIPO should be encouraged to provide further expertise ( Recommendation #5). We dissent and therefore disagree that any administrative dispute resolution (ADR) process should be mandated directly from ICANN upon any or all registrars, but should flow from the contractual obligations between registry and registrar. No process should be mandated by any entity, ICANN or registry, until those registrars who contractually bind their registrants to the process are legally satisfied with the procedures involved, and have given adequate notice to their registrants. ICANN will not incur any liability if these procedures are unfair, improperly implemented or inadequately staffed (Recommendation #1). Further, such ADR procedures, while uniform in most aspects, should allow for variance in fees, payment, panel providers, and involvement of the registrars, to the extent such registrar is willing to accept the possibility of liability in the process. ICANN should not be called upon to establish any accreditation process for panel providers but should leave it to the private sector (Recommendations #2 and #3). As clearly enumerated in Recommendation #4, substantial procedural problems remain to be addressed by the industry of registrars who will operate with these procedures. To proceed too quickly is to risk the failure of the procedures, and to destabilize domain name registration. Registrars should be given the time to draft and implement a practical ADR process based on real world experience with registration.

At the conclusion of its Berlin meeting on May 27, 1999, the ICANN Board adopted a number of resolutions, including a Resolution on the Report of the World Intellectual Property Organization (WIPO). This Resolution provides for the following, in part:

"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;

....

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 recommendations the DNSO [sic], 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; "

Peter Dengate Thrush
Jon Englund
Jonathan Cohen

Question (b)

Should there be a standard dispute resolution process throughout all Registrars / Registries?

Amadeu Abril i Abril
Randy Bush
Hirofumi Hotta
Ken Stubbs
Marylee Jenkins
Keith Gymer

Question (c)

Should the dispute resolution process be voluntary or mandatory or a combination of both?

Mike Heltzer
David Maher
Ted Shapiro
Luis H. de Larramendi

Question (d)

Should there be some method for contracting out of the right to seek a court ruling if one undertakes to submit to the dispute resolution process?

Susan Anthony
Mark Partridge
Dr. Willie Black
Kathy Kleiman.

The guidelines circulated by Mr. Cohen to the sub-group leaders and members for carrying out their work were the following:

• Immediately contact others in the group and agree on the rules, tasks and timetables for completing research and providing an opinion on the question.
  
  
• If it is believed to be appropriate, subdivide or add a question to be answered.
  
  
• Real effort should be made to seek out opinions from groups, individuals, regions or organizations that have not been previously canvassed.
  
  
• Review and briefly comment on the opinions given in the WIPO RFC's and review the WIPO commentary and conclusions to determine if there is a problem with either in terms of consistency or otherwise, and if so, indicate clearly and concisely what the problem is and why.
  
  
• Assess whether there is a WG sub-group consensus, and if so, give it. If it differs from the WIPO recommendations, indicate why, giving the basis of the difference, and if there is minority view, provide this also with the reasons for the view and/or why it differs from the majority view.
  
  
• If possible, draft the recommendation to ICANN.
  
  
• WGs are not limited to seeking opinions from DNSO members only. It is important to canvass as broad a cross-section of opinion as possible, particularly from participants outside of North America and in view of the large number of individuals and organizations that were already consulted during the WIPO process.
  
  
• The ultimate goal is to define a WG consensus on these four questions that is based on a broad cross-section of an informed group of people who can do some novel and independent research on these issues.
  
  
• Emphasis on new ideas in relation to the four questions.
  
  

The second pNC meeting was on June 25, 1999 in San Jose, California at INET '99. Among the items on the agenda (posted at http://www.dnso.org/dnso/notes/19990625.NCsanjose-up.html) was a progress report on WG-A.

With respect to WG-A's progress as of June 25, Mr. Cohen reported a limited response to his June 22, 1999 request for sub-group status updates, with the exception of sub-group (c). In the first ten days of the WG's operation, certain administrative and procedural difficulties appeared to be causing delays in the sub-groups' progress. Mr. Cohen indicated that the ICANN Board had been made aware on June 22, 1999 of the problems that may be caused by the accelerated schedule ICANN had imposed upon WG-A.

There was consensus at the pNC meeting that although WG-A had been asked to complete its mandate within an extremely short time frame and without a set of procedural guidelines or rules that would greatly facilitate all aspects of WG activity, the balance of opinion was in favour of WG-A proceeding with its work to the best of its ability in the time allowed, which it has done.



E) Personal Comments from the Co-Chair of WG-A- Jonathan C. Cohen

I think it is appropriate as the co-chair of WG-A to offer some personal comments on this process, having worked with the other members of the WG and the pNC in formulating these recommendations.

There is a reality to the WG-A consultation process which should be taken into account by those who would criticize the results of its study, and which was repeatedly pointed out to the WG-A participants as well as the members of the GA who were called upon to make submissions on the Preliminary Report. This process was not bottom-up; it was a top-down process starting from ICANN. It was not suggested by a constituency of necessity. The timetable was set by ICANN at a time when only a partial complement of the pNC was in place, and some of the constituencies of the DNSO, as well as its GA were amorphous at best. These factors inevitably influenced the extent of the work that could be done by WG-A, as well as the support it received both internally from the DNSO and outside participants.

I had made clear at the time of WG-A's inception that attracting significant participation, or even attention to this study, would be difficult, and therefore the amount of work done was not extensive. On the other side of the coin, the work done by WIPO in its international consultation and RFC process was extensive and lengthy. A broad cross-section of international stakeholders, both organizations and individuals, participated during the ten-month process and submitted comprehensive comments. WG-A's work should be evaluated in this context, and the possibility considered that many people who had participated in WIPO's process simply felt they had nothing further to add to the WG-A study.

While I recognize that the pNC and the DNSO organizational process is still not complete, and some people, both within the DNSO and other observers, feel that broader participation in the evaluation of Chapter 3 of the WIPO report is required, I submit that such further evaluation is unnecessary at this time. Based on my experience of the past two years with respect to the various international meetings and hearings on the development and implementation of a dispute resolution procedure for domain name disputes, I believe that further extending the review of Chapter 3 of the WIPO Report would not result in any meaningful increase in participation and input, given the extensive responses submitted to date.

Certainly the recommendations we are submitting to ICANN do not reflect unanimity, but there does seem to be a general consensus based on both WIPO's and WG-A's RFCs, with some notable dissents. Both the recommendations and dissents indicate that the UDRP proposed by WIPO is generally acceptable and should be implemented, but clearly subject to further refinement and discussion. Most of the objections relate to the fact that the pNC is not complete, or the GA did not, or could not participate. This may be relevant to the weight of WG-A's "consensus", but may be irrelevant with respect to WG-A's conclusions. This must be left to ICANN. Many believe the time has come to put the UDRP into practice and allow these further refinements to be based on actual feedback from real-time experience with the process, rather than on theoretical argument. The UDRP will either be successful or it will not; it will either be attractive and used by disputants, or it will not. Further discussion will not determine which eventuality will occur.

The foregoing are my personal conclusions based on a review of the RFCs of WIPO and WG-A, and the WIPO report. They are not intended to be taken as the views of the IPC, or the other members of the pNC.

Thank you for your time and consideration of these comments.

Respectfully,

Jonathan C. Cohen
Co-Chair, WG-A
Interim President - IPC
pNC Representative - IPC

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