Re: [bc-gnso] ACDR conference call follow up

[Nat Cohen <ncohen@xxxxxxxxxxx>]

Dear Mr. Lattouf,

Thank you for the time and effort that you have taken to follow up on the
issues raised in the conference call last week.

While I appreciate your responses, my questions were raising different
issues than those addressed in your responses.

The issue related to conflict of interest is not a concern that a panelist
would have a direct conflict with any of the parties to the dispute, but
rather that there are inherent conflicts of interest that arise when active
trademark attorneys are accredited as panelists.

The issue related to supplemental filings is not regarding how extensions
are granted, but rather a due process concern that the respondent have an
adequate opportunity to respond to a supplemental complaint filing, and
that the respondent not be unduly burdened by being forced to respond to
supplemental filings that are not requested by the panel.

These issues are of concern to attorneys who are active in the UDRP dispute
process.  The way each UDRP forum addresses these issues affects whether
the forum will be a neutral arbiter between complainants and respondents,
or whether the forum will be biased towards complainants.

While the issue of forum shopping cannot be solved by ACDR or any one forum
acting alone, each forum has the ability and responsibility to ensure that
it does not operate in a biased manner.

Following is a more detailed discussion of each issue.

*Conflicts of Interest*

The inherent conflicts of interest that arise when an attorney who
represents complainants concurrently acts as a panelist are described in
the following quote from this article:
http://www.youngicca-blog.com/the-arbitrator-as-a-neutral-third-party-by-caroline-verbruggen/

But what if, on the other hand, the arbitrator is involved at the same time
as the arbitration as counsel for a client that is not related to the
parties, in an un-related arbitration or litigation, but which raise the
very same legal issues as those he must decide on as arbitrator ? This
circumstance is not taken into account in the IBA Guidelines.[80] The view
has been expressed that, where he or she is acting as counsel in one
arbitration or litigation where one legal issue is at stake, the arbitrator
does not have the required impartiality and independence to rule upon the
very same issue as arbitrator in another case. The arbitrator might indeed
have an interest in solving the legal issue in a sense favourable to his or
her client in the other arbitration. Or, saying it differently, the fact
that he or she is acting as counsel for a client defending one legal
position may prevent him or her from remaining un-biased towards that very
same legal position. For this very reason, the fact that arbitrators
generally also intervene as counsel in other arbitration has been
criticised in the context of investment arbitrations.

I wrote a blog post on this issue.  My post was prompted when a WIPO
panelist, who is also on your initial list of panelists, wrote a Cease and
Desist letter to the young man who was my personal trainer at the local
health club.  I wondered about the propriety of having a person who makes
her living enforcing trademark rights acting as a neutral arbiter in
disputes between a company seeking to enforce its trademark rights against
a domain owner.  I did not mean to single her out, as this concern applies
to all active IP attorneys who act both as advocates and as neutrals in the
same forum, but I focussed on her simply because she had written the cease
and desist letter.  My blog post is here-

http://www.domainarts.com/2011/10/21/my-personal-trainer-registers-sofitdc-com-receives-cd-from-sofitel-sent-by-a-wipo-panelist/

Attorney Paul Keating expanded on these concerns with additional concerns
of his own:

"All of this does nothing to lend credibility to the system. Rather, it
leads to a possible conclusion that there is at least an indirect benefit
of the doubt being granted to complainants who after all are the very
clients to whom most panelist/advocates market their services."

His full comment is at:
http://www.domainarts.com/2011/10/21/my-personal-trainer-registers-sofitdc-com-receives-cd-from-sofitel-sent-by-a-wipo-panelist/#comment-418

The mindset that results from panelist over-identification with the
Complainant's interests is demonstrated in decisions where panelists have
taken the law into their own hands by ignoring the clear language of the
UDRP, and, for example, declaring that the requirement that a transfer be
ordered only if bad faith registration AND bad faith use is found, can be
interpreted as the requirement being instead bad faith registration OR bad
faith use.  Others ignore the requirement that there must be evidence of
bad faith towards the specific Complainant and instead find speculative
domain registration to be inherently bad faith, even in the absence of any
evidence that the respondent was aware of the complainant:

"The majority opinion concludes that the Respondent did not have actual
knowledge of this specific Complainant at the time Respondent registered
the Disputed Domain Name and that any subsequent actions of Respondent are
irrelevant. No consideration has been given to the artful strategy
underlying Respondent’s activities.  Unfortunately, I cannot join my
distinguished colleagues in approving Respondent’s actions without an
analysis focusing on the underlying strategy."

Selecting panelists from among active IP attorneys also leads to the
appearance of a conflict of interest when the credential of being a UDRP
panelist is used to solicit Complainants, such as in the attached example
where under the heading "Domain Acquisition", a company boasts:

"There are a variety of options available to acquire domains [including]
reclaiming names through the Uniform Domain-Name Dispute-Resolution Policy
(UDRP) process, and if necessary using our team of lawyers who are
panelists on the WIPO Arbitration and Mediation Center's Domain Name Panel."

These concerns would be addressed, and the potential conflicts of interest
reduced, if panelists were not selected from active IP attorneys.

*Supplemental Filings*

The ACDR has the opportunity to take the lead in adopting clear and fair
standards regarding Supplemental Filings.

Supplemental Filings are subject to abuse, particularly by Complainants.

According to the UDRP procedures, Supplemental filings are supposed to be
made only upon request by the panel.  Complainants, however, routinely make
supplemental filings which are then often reviewed and considered by the
panel.  The Respondent is often not informed whether the panel will be
considering a Complainant's Supplemental Filing (CSF).  The Respondent then
faces the burden of preparing and filing their own Supplemental filing,
which may never be considered by the panel.

A particularly egregious example of abuse of a supplemental filing is
discussed by Attorney Paul Keating in this blog post:

http://www.thedomains.com/2012/02/22/guest-post-by-paul-keating-on-abusive-supplemental-filings-the-udrp-case-of-autoownersinsurance-com/

In this case, the Complainant filed a three-paragraph complaint, to which
Mr. Keating responded.  The Complainant then filed a 13 page supplemental
filing, raising entirely new issues and introducing new evidence.  The
panel took into consideration this supplemental filing and then handed down
a decision four working days after the filing before Mr. Keating had a
chance to respond.

In response to my request for guidance in this matter, Attorneys Paul
Keating and Zak Muscovitch have collaborated in preparing a draft example
of Supplemental Rules for Supplemental Filings that should limit the
opportunity for abuse of supplemental filings.  It is attached for your
review should you find it of use.

I appreciate the attention that you have already shown to these issues and
look forward to your thoughts.

Best Regards,

Nat Cohen
Riptide LLC


On Wed, Apr 3, 2013 at 7:53 AM, Mahmoud Lattouf <mlattouf@xxxxxxxx> wrote:

> Dear All,****
>
> ** **
>
> This is to follow up on our conference call last week regarding the ACDR
> application to become a UDRP provider. Here is our answers to questions, 5,
> 6, and 7 mentioned during the conference call:****
>
> ** **
>
> ** **
>
> 5.  How do you ensure that pro-Complainant bias is not present when you
> accredit panelists who also serve as active TM attorneys?****
>
> ** **
>
> ACDR policy is clear here, panelists are required to sign declarations,
> moreover, before the appointment of a panelist, the elected panel will be
> requested to sign and return to the Center a Declaration of *Independence
> and Impartiality* using the specially designed form specifically designed
> for that purpose which will be available on the Center’s website. In
> addition, a party to the administrative proceedings may challenge the
> appointment of a panelist via filing a written request or by submitting an
> electronic request through the website stating the circumstances and
> reasons for the challenge within five calendar days from the date of notice
> of the selection. The Center will determine whether adequate circumstances
> exist for disqualification. (Please see Supplemental Rules in Annex 3 of
> this Proposal) *I think we are the only center who covered this point
> clearly before operation; other service providers fixed such precedents
> after operation. This is why we believe that we are benefiting from their
> experience.*****
>
> ** **
>
> ** **
>
> 6.  Are you making a concerted effort to recruit panelists from academia
> and from retired judges, who would not be as likely to have as strong a
> pro-complainant bias as active TM attorneys?****
>
> ** **
>
> ACDR vision is to select panelists from different nationalities and with
> different approaches to IP and other related fields.  We already provided
> full details regarding the experience and selection, please refer to point
> (2\a) of the proposal and annex 2 (screening requirements). We will be
> appointing more panelists from academia and retired judges as well.****
>
> ** **
>
> ** **
>
> 7.  How do you handle unsolicited supplemental filings from Complainants?
>  How do you ensure that Respondents are not put to an undue burden of
> responding to Supplemental Filings from Complainants if those Supplemental
> Filings are not considered by the Panelists?  And conversely, if
> Supplemental Filings are considered by panelists how do you ensure that
> Respondents are provided adequate time to prepare and file a Supplemental
> Response so that the Supplemental Response will also be considered by the
> Panel before they issue their decision.****
>
> ** **
>
> Extensions are allowed according to ACDR, please refer to point No. 9 of
> the SR:****
>
> ** **
>
> *Extensions :*
>
> * *
>
> **(a)   **The Center and, after its appointment, the panel, shall in its
> sole discretion decide on any request from a party or on its own motion,
> prior to the expiration of the concerned period(s), to extend, in the
> presence of exceptional circumstances, the period(s) of time provided for
> under these supplemental rules.****
>
> **(b)   **A request to the Center for an extension by a party must state
> the circumstances warranting the request, accompanied by an extension fee
> of $100.****
>
> **(c)   **If an extension is granted, it shall be for a period not
> exceeding ten (10) additional calendar days.****
>
> ** **
>
> I hope this answer your concerns. Should you require further information,
> please let me know.****
>
> ** **
>
> Thank you,****
>
> ** **
>
> Best Regards,
> Mahmoud A. Lattouf
> Executive Director – AGIP Offices ****
>
> Abu-Ghazaleh Intellectual Property
> Member of Talal Abu-Ghazaleh Organization
> Tel.: +962 6 5100 900 ext. 1623
> Fax: +962 6 5100 901
> Email: mlattouf@xxxxxxxx
> URL: www.agip.com ****
>
> TAGORG.com The Global organization for professional, business,
> intellectual property, education, culture and capacity building services.*
> ***
>
> *We work hard to stay first*****
>
> ** **
>

Attachment: Draft Proposed Supplemental Rules for Supplemental Filings.doc
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