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ICA Implores ICANN to Halt this Proposed Perversion of UDRP Provider Supplemental Rules

  • To: "cac-prop-supp-rules@xxxxxxxxx" <cac-prop-supp-rules@xxxxxxxxx>
  • Subject: ICA Implores ICANN to Halt this Proposed Perversion of UDRP Provider Supplemental Rules
  • From: Phil Corwin <pcorwin@xxxxxxxxxxxxxxxxxx>
  • Date: Fri, 11 Dec 2009 16:39:46 -0500

The Internet Commerce Association (ICA) is strongly opposed to the proposed 
implementation of an Expedited Decision Case (EDC) variant of the Uniform 
Domain Name Dispute Resolution Policy (UDRP) by the Czech Arbitration Court 
(CAC) through amendment of its Supplemental Rules.

We believe that the proposal is a significant and major policy change that can 
only be effected through a formal Policy Development Process (PDP) convened 
under auspices of the Generic Names Supporting Organization (GNSO), and 
subsequent approval of any recommended policy changes by majority vote of the 
ICANN Board. Implementation of this proposal through CAC's Supplemental Rules 
would constitute a complete perversion of individual arbitration provider 
authority to amend secondary rules that are solely meant to address minor and 
incidental administrative matters.

The ICA first brought our concerns about this proposal, and a related pending 
proposal emanating from the World Intellectual Property Organization (WIPO), to 
ICANN's attention in a November 30th letter to Board Chairman Thrush and 
President & CEO Beckstrom. That letter can be found at 
 and is also reproduced below.

To reiterate, the position of the ICA is that:

 *   ICANN should notify the CAC, WIPO, and all other accredited UDRP providers 
that they lack any authority to implement expedited UDRP variants or other 
major UDRP policy initiatives through unilateral amendment of their 
Supplemental Rules.
 *   ICANN should also advise these UDRP providers that they risk revocation of 
their accreditation if they persist in proceeding in this manner.
 *   ICANN should advise all accredited registrars that they are not to be 
bound by or enforce any decision reached under any expedited UDRP variant that 
may be unilaterally implemented by a rogue UDRP provider, as any such decision 
would not be rendered under the uniform dispute policy that registrants 
contractually agree to be bound by when they enter into a business relationship 
with a registrar.
 *   The GNSO should give strong consideration to convening a PDP on UDRP 
reform as such a process could result in balanced changes in the UDRP that 
address the legitimate concerns of both complainants and registrants; with such 
reforms being implemented in a uniform manner, rather than through unilateral 
modifications by individual providers that will inevitably undermine 
uniformity, encourage forum shopping, and dilute registrant rights and 
 *   In addition to reforms of the UDRP itself, it should be a goal of such a 
PDP to establish a standard contractual relationship between ICANN and all 
accredited UDRP providers to better assure uniform application of the UDRP, 
delineate clear boundaries for the limits of provider authority including the 
ability to implement changes through Supplemental Rules, and provide ICANN with 
a range of enforcement tools in addition to the blunt instrument of 
accreditation withdrawal.

Thank you for your consideration of our views.

Philip S. Corwin
Counsel, Internet Commerce Association

Attorneys at Law
1301 Pennsylvania Avenue, N.W.
Washington, D.C. 20004-1701
Philip S. Corwin, Partner

                November 30, 2009

By E-Mail

Peter Dengate-Thrush, Chairman of the Board
Rod Beckstrom, President & CEO
Internet Corporation for Assigned Names and Numbers (ICANN)
4676 Admiralty Way, Suite 330
Marina del Rey, CA 90292-6601

Dear Chairman Thrush and President Beckstrom:

I am writing on behalf of the domain name investors and developers of the 
Internet Commerce Association in regard to the apparent intention of two 
ICANN-accredited UDRP providers to launch a parallel, expedited form of the 
UDRP in the first quarter of 2010 by mere amendment of their Supplemental 
Rules. For the reasons outlined below, we believe that ICANN should immediately 
advise these providers that such action is a significant change in a 
fundamental policy that can only be undertaken following GNSO review and a vote 
of approval by the ICANN Board.

On November 11th ICANN publicly announced that the
Czech Arbitration Court (CAC) was proposing its own version of fast
track UDRP and that a 30 day comment period had started running, with
input due by December 11th 
(http://icann.org/en/announcements/announcement-2-11nov09-en.htm ). Details of 
the proposed alteration of CAC's Supplemental Rules are available at 
 . Since that announcement Mr. Zbynek Loebl, Counsel to the ADR.EU Center of 
the CAC and an author of the proposed Expedited Decision Case (EDC) variant of 
the UDRP, has posted a statement at the Domain Name Wire website 
 stating, "We have been discussing our proposal with ICANN lawyers for several 
weeks before the public comments started and we will implement the proposed 
procedure only after receiving an approval of ICANN. We believe that our 
proposal is in compliance with UDRP."(Emphasis added.) While we do not concur 
with all of the views expressed by Mr. Loebl in response to the related news 
article and other comments thereon, we do appreciate the public concession by 
the CAC that it will implement the EDC only after receiving approval to do so 
from ICANN.

Unfortunately, that recognition of ICANN's inherent authority has not been 
duplicated by the World Intellectual Property Organization (WIPO), which is 
threatening to initiate a similar expedited UDRP variant by unilateral fiat. 
WIPO's Arbitration and Mediation Center apparently intends to propose a 
"fast-track" UDRP process before the end of 2009 and, following a 30-day public 
comment period, to implement this new process in the first quarter of 2010. The 
"trial balloon" announcement of this intent came in the form of a November 2nd 
article published by Managing Intellectual Property 
 Despite Center Director Eric Wilbers' own characterization of this process as 
a momentous "watershed" and his prediction that the fast-track process will be 
requested in at least half, if not more, of all cases now proceeding through a 
full UDRP proceeding, WIPO is nonetheless asserting that it can implement this 
major substantive change in the domain dispute arbitration process as a mere 
supplement to its UDRP Supplemental Rules -- and absent any need to amend the 
UDRP or, apparently, to receive advance approval from ICANN. In a November 3rd 
e-mail sent to "WIPO Panelists" Mr. Wilbers stated, "Our hope is to introduce 
the WIPO UDRP Fast-Track option, after a period of internal WIPO development 
and informal consultation with WIPO panelists, and having provided appropriate 
notice to ICANN and WIPO UDRP stakeholders, in the first quarter of 2010." 
(Emphasis added.) Providing notice to ICANN is hardly equivalent to recognition 
of ICANN's authority and of the need to receive advance ICANN approval prior to 
any implementation of the contemplated "Fast-Track option".

Our professional registrant members are extremely concerned about the potential 
adverse impact of the momentous "watershed" changes contemplated by CAC and 
WIPO upon their procedural and substantive due process rights in UDRP cases. We 
believe that such changes are significant policy initiatives that can only be 
implemented following GNSO review and ICANN Board approval.

Therefore, we are hereby requesting that ICANN immediately advise both CAC and 
WIPO that they have no independent authority to unilaterally adopt any UDRP 
policy change that extends beyond the narrow definition of "Supplemental Rules" 
contained in the Rules for Uniform Domain Name Dispute Resolution Policy 
published at  http://www.icann.org/en/udrp/udrp-rules-24oct99.htm . We also 
believe that these providers should be advised that if they proceed with 
implementation of their contemplated expedited UDRP variants they will be 
stripped of their accreditation as a UDRP arbitration provider as they would no 
longer be adhering to ICANN's official UDRP policy.

The referenced definition of Supplemental Rules states:
Supplemental Rules means the rules adopted by the Provider administering a 
proceeding to supplement these Rules. Supplemental Rules shall not be 
inconsistent with the Policy or these Rules and shall cover such topics as 
fees, word and page limits and guidelines, the means for communicating with the 
Provider and the Panel, and the form of cover sheets.

The draft of CAC's proposed changes to its Supplemental Rules clearly goes 
beyond the narrow confines of this definition. For example, a complainant 
filing under the EDC would be foreclosed from choosing a three-member panel or 
filing a Class Complaint, and these are substantive details that extend beyond 
such administrative and procedural matters as fees, word and page limits, and 
means of communicating with CAC and its panelists. Likewise, the draft proposes 
to amend the Supplemental Rules with novel and untested substantive standards 
relating to evidence and equitable treatment ("too factually or legally 
complex"; "unfair or otherwise inappropriate") that are clearly outside the 
defined bounds of such Rules.

While it is impossible to fully evaluate the WIPO proposal in the same manner 
in advance of its publication, as described by Mr. Wilbers in the article and 
the e-mail referenced above it likewise appears to go beyond the narrow 
confines of the relevant definition. Sweeping procedural changes can affect 
substantive rights and, indeed, Mr. Wilbers describes the contemplated changes 
as constituting "an adjustment to WIPO case practice under the UDRP". An 
organization that has an inherent institutional bias in favor of trademark 
owners cannot be permitted to implement unilateral and non-reviewed policy 
changes to alter UDRP case practice in a manner that can fundamentally and 
adversely affect the rights of domain registrants.

We are quite disturbed by WIPO's overall conduct in this matter. For example, 
WIPO chose to delay full public revelation of its intentions until just after 
the conclusion of the ICANN meeting in Seoul, thereby depriving participants 
and the ICANN Board of any opportunity to raise questions about the proposal 
with attending members of the WIPO staff, as well as preventing the Board from 
receiving community feedback on both the proposed WIPO implementation process 
and the substance of this fast-track proposal. Yet WIPO staff did see fit to 
provide a detailed briefing, complete with PowerPoint presentation, to the 
Intellectual Property Constituency's (IPC) October 27th meeting in Seoul. It 
seems quite disingenuous for WIPO staff to participate in public discussions of 
trademark protections for new gTLDs - including its most controversial element, 
the Uniform Rapid Suspension (URS) proposal -- while failing to note WIPO's 
intention to introduce a very similar fast-track process for existing gTLDs. 
WIPO appears to have decided that this plan merited detailed explanation to a 
sympathetic constituency but no mention to the full ICANN community, where it 
would almost surely have raised significant questions and concerns given its 
close relationship to the ongoing attempt to find consensus on trademark 
protections for new gTLDs.

Beyond such inexplicable conduct, WIPO's apparent belief that such a fast-track 
process can be adopted as an amendment to its Supplemental Rules absent formal 
amendment of the UDRP or approval by ICANN's Board lacks credibility when 
measured against other contemporaneous developments.

For example, ICANN's Board commendably recognized that the proposed URS process 
for new gTLDs was a significant policy issue that required further opportunity 
for Generic Names Supporting Organization (GNSO) consideration, and the GNSO in 
turn has constituted a Specific Trademark Issues Review Team (STI-RT) to 
expeditiously prepare recommendations for GNSO consideration so that it might 
meet the Board's timetable for rapid feedback by mid-December. The URS and 
CAC's contemplated EDC, as well as WIPO's fast-track initiative, are all 
strikingly similar in their potential benefits for complainants in the form of 
lower fees and faster decisions. Their end result may even be identical, as the 
STI-RT is now considering allowance for a successful URS complainant to have a 
suspended domain transferred to its control at its option following some time 
interval after evaluation on the merits.

But they are strikingly dissimilar in terms of establishing a balance in 
recognition of registrant rights, as CAC's and WIPO's contemplated unilateral 
alterations of the UDRP contain none of the registrant safeguards
that are currently on the table in the STI-RT discussions of the URS. These
include a higher evidentiary evaluation standard and/or clearly articulated 
standards for a valid complaint, random selection of panelists,
effective sanctions for complainant abuse, an accessible internal process for 
de novo appeal, and mandatory periodic review to
evaluate its operation in practice. Such balancing protections should be part 
of any expedited variant of the UDRP and can only be accomplished through 
alterations that go beyond mere amendment of Supplemental Rules and that fully 
involve ICANN's policy process.

If the URS is a policy supplement to, and separate and apart from, the existing 
UDRP then how can the CAC and WIPO proposals possibly be viewed as mere UDRP 
procedural rule changes that require no GNSO consideration or ICANN Board 

Recent action by ICANN's Board also makes clear that the proposed CAC and WIPO 
initiatives require Board approval. At its Seoul meeting the ICANN Board 
approved WIPO's proposal for paperless UDRP filings.

If a mere change in the mechanical procedures by which UDRP cases are filed 
requires ICANN Board approval then how can a vast substantive change that is 
predicted by WIPO itself to displace at least half of all standard UDRP filings 
possibly be implemented absent ICANN Board approval?

In addition to the speed of the fast-track process, CAC's proposed fee schedule 
for the EDC would reduce complainant costs by one-half or more, and Mr. Wilbers 
has been quoted stating that the WIPO fast-track fee will be "substantially 
reduced". Such a significant reduction in costs can be anticipated to result in 
increased UDRP filings overall, heightening the need for appropriate registrant 
protections. Further, permitting some UDRP arbitration providers to 
unilaterally adopt new UDRP policies when complainants have complete freedom to 
choose their arbitration forum will likely cause the other ICANN-accredited 
providers to defensively offer their own fast-track variants, as well as 
additional lures to attract forum shopping complainants. The resulting race to 
the bottom among accredited arbitrators may not only diminish remaining 
uniformity of application of the UDRP but could well leave registrant due 
process rights in tatters.

To be clear, ICA is not opposed to consideration and adoption of a faster and 
less expensive process for those UDRP cases in which respondents default or 
there are no disputable material facts. Indeed, throughout the consideration of 
trademark protections for new gTLDs as well as the URS we have urged ICANN to 
implement a UDRP reform policy development process (PDP) that would assess the 
first decade of experience with the UDRP and then adjust it to implement 
procedural reforms, as well as address abuses perpetrated by both registrants 
and complainants. As we stated in our August 12th comment on the "paperless 
UDRP" proposal, "We continue to strongly urge ICANN to establish an expedited 
PDP for UDRP reform at both incumbent and new gTLDs, and to consider entering 
into formal contractual relationships with UDRP providers."

A formal UDRP PDP would respect the policymaking role of the GNSO and be 
consistent with the bottom-up consensus model on which ICANN is based, and 
would likely result in balanced reform with benefits for all. The CAC and WIPO 
proposals, to the contrary, usurp the role of the GNSO, give grave affront to 
the ICANN operating model by substituting top-down decision-making by UDRP 
providers, and will result in unbalanced alterations of the UDRP process to the 
substantial due process detriment of registrants. Allowing these proposals to 
proceed unchecked could undermine ICANN's legitimacy throughout its constituent 
community at the very time when its operation under the new Affirmation of 
Commitments (AOC) is being most keenly observed.

These proposals also threaten to undo the remarkable collegiality and civility 
that characterized the Seoul meeting, and to derail the work product of the 
STI-RT. The ongoing work of that group since it first convened in Seoul 
portends an ability to take the URS proposal of the Implementation 
Recommendation Team (IRT), as well as the ICANN staff assimilation thereof, and 
utilize them as the basis for a balanced policy recommendation for GNSO 
consideration and approval. But now the CAC and WIPO proposals, which seem 
nothing less than a version of URS for existing gTLDs, threaten to become the 
destabilizing "elephant in the room" that the STI-RT must somehow factor into 
its deliberations. We question what incentive members of the IPC and other 
trademark interests will have to accept a
balanced URS approach for new gTLDs when they see the real possibility that 
existing UDRP providers can implement an expedited dispute process that is 
weighted in their favor?

Finally, while it is a longer-range consideration than the need for immediate 
injunctive action by ICANN vis-à-vis CAC and WIPO, these troubling initiatives 
reinforce the need for UDRP reform to result in formal contractual 
relationships between ICANN and its accredited arbitrators.  As I stated at the 
Public Forum in Seoul:

The second thing, we think it's a mistake not to have a contractual
relationship with the URS provider.

Accreditation is about capacity, but contracts are about performance, about 
having clear standards for judging performance, and for having measures of 
enforcement short of the death sentence of deaccreditation to discipline the 
provider if they're not adhering to what they're supposed to do.

We found with the RAA that ICANN needed intermediate steps.  We think the same 
thing should be available against URS providers.

Thank you very much.

>>PETER DENGATE THRUSH:   Thank you.  Very thoughtful comments.

I had no idea when I delivered those remarks that the need for strong 
contractual relationships with existing UDRP providers would be illustrated so 
swiftly, but the CAC and WIPO announcements clearly drive the point home.

In conclusion, on behalf of our members and other registrants subject to the 
UDRP, and to preserve fair balance in the UDRP as well as to defend the 
integrity of ICANN's policymaking process, we urge ICANN's Board and staff to 
take decisive and immediate steps to intervene and assert its decision-making 
prerogative over the CAC and WIPO initiatives to unilaterally implement 
unbalanced and unauthorized UDRP variants.

Thank you in advance for your expeditious consideration of our request.

Philip S. Corwin
Counsel, Internet Commerce Association

Cc:       Doug Brent; Kurt Pritz

Philip S. Corwin
Butera & Andrews
1301 Pennsylvania Ave., NW
Suite 500
Washington, DC 20004

202-347-6875 (office)

202-347-6876 (fax)

202-255-6172 (cell)

"Luck is the residue of design." -- Branch Rickey

Attachment: ICA-ICANN-CAC_EDC-comment-FINAL-121109.doc
Description: ICA-ICANN-CAC_EDC-comment-FINAL-121109.doc

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