Public Comments wrt CAC Application to become a UDRP Dispute Provider

["Michael D. Palage" <Michael@xxxxxxxxxx>]

Listed below are my personal comments in connection with the Czech
Arbitration Court (CAC) application to become a UDRP Dispute Provider.

As one of the original advocates of a multiple dispute provider UDRP
model during the initial drafting of the UDRP back in the summer of
1999, I welcome the submission by the Czech Arbitration Court (CAC) to
become a dispute provider. However, it is important to note that a
number of the proposed innovations cited in the CAC application actually
constitute substantive changes that should raise significant concern by
the ICANN Board, staff and stakeholder community.  Therefore, for the
reasons set forth below, the ICANN Board should approve the CAC
application, but on the same terms and conditions as other UDRP dispute
providers.
 
Listed below are responses to the specific proposed "new features"
contained in the CAC application:
 
I       The Option to Have an Electronic-Only UDRP Procedure
 
While the use of an electronic-only UDRP procedure is an attractive
innovation, such proposed innovation appears to be in direct
contradiction of the UDRP Rules. Specifically, Rule 3(b) that states in
relevant part "complaint shall be submitted in hard copy" and shall
include the "signature of the Complainant or its authorized
representative." 
 
The specific requirement for a signature on the hard copy back in the
1999 discussions was the lack of a uniform body of law regarding digital
signatures. While there now may exist a more uniform international body
of law regarding digital signatures, any such changes to the UDRP must
take place through a public policy forum, and not through proposed
innovations contained in proposed UDRP dispute provider's application.
 
II      Class Complaint
 
The CAC application proposes a Class Complaint innovation whereby "a
single person representing multiple rights holders to file a single
complaint . against a single domain name holder in regard to multiple
disputed domain names, for a reasonable price." This proposal on its
face sounds attractive, but identifies a potential conflict between the
UDRP Rules and Policy. Specifically, the Paragraph 3 of Rules of the
UDRP states that's "[a[ny person or entity may initiate an
administrative proceeding by submitting a complaint in accordance with
the Policy and these Rules to any Provider." Whereas, Paragraph 4(a)(i)
of the UDRP Policy document requires the complaint to assert "a
trademark or service mark in which the complainant has rights."
 
These provisions have been disputed in a number of UDRP proceedings in
which a licensee of a mark has filed a compliant. Although the majority
viewpoint has been that a licensee has sufficient rights to file a UDRP
compliant, a minority viewpoint that has developed is that a
non-exclusive trademark licensee lacks standing to file a UDRP
complaint. See NBA Properties, Inc. v. Adirondack Software Corporation,
WIPO Case No. D2000-1211; Toyota Motor Sales U.S.A. Inc. v . J. Alexis
Productions, WIPO Case No. D2003-0624; Grupo Televisa, S.A., Televisa,
S.A. de C.V., Estrategia Televisa, S.A. de C.V., Videoserpel, Ltd. v.
Party Night Inc., a/k/a Peter Carrington, WIPO Case No. D2003-0796;
DigiPoll Ltd. v. Raj Kumar, WIPO Case No. D2004-0939; Intermedia Film
Equities USA Inc. and AGV Productions, Inc. v. Varietydomains.com, WIPO
Case No. D2004-0065).   
 
Therefore, prior to allowing for the introduction of the proposed Class
Compliant, that could potential raise new legal issues, there appears to
be a genuine need to clarify the potential ambiguity of the language
cited in the UDRP Rules and Policy through a public consultative
process.
 
III     Preventative Measures for Reverse Domain Name Hijacking
 
The CAC proposal not to accept complaints from parties found guilty
three times of reverse domain name hijacking, appears to be on its face
inconsistent with the UDRP Rules and Policy that provide a Complaint the
right to choose its dispute provider. Denying an aggrieved trademark
owner access to the CAC's dispute provider services is problematic on
multiple levels. While I find the actions of aggressive trademark owners
that seek to misuse the UDRP to secure a domain name inappropriate, I do
not believe there exists any basis to deny a Complaint access to a UDRP
dispute. The number three appears to be rather arbitrary number, and may
be unrealistic to some global brand holders that may have extensive
trademark portfolios. There is also potential ambiguity on whether an
adverse decision by a subsidiary or sister company could be held against
a parent or subsidiary, as touched upon in the previous paragraph.
 
IV      Quasi Appeal Function
 
The concept of an appeal function was extensively discussed during the
original drafting of the UDRP, and one that was formally rejected.
Therefore, allowing a "quasi appeal function" by a specific provider
would appear on its face to be inconsistent with the UDRP Rules and
Policy and the history associated with these documents. The concept of
an appeal mechanism was further rejected in the ICANN staff review
prepared in 2003 regarding the review of the UDRP, see
http://www.icann.org/gnso/issue-reports/udrp-review-report-01aug03.htm.

 
However, on a personal note I believe the viability of an appeal
function could be revisited as the UDRP approaches eight years of
operation in an appropriate public forum, not within the context of an
individual dispute provider's proposal.  
 
If the broader Internet stakeholder community where to engage in a
discussion regarding the viability of an appeal mechanism, such as the
one currently contemplated in connection with the IGO dispute resolution
proposal, the appeal mechanism should be designed to provide greater
uniformity of decisions across dispute providers. Although an original
advocate of a multiple dispute provider environment, I expressed my
concern back in 1999 about the potential for a divergence of decisions
that could lead to forum shopping among Complaints. While I continue to
support innovation and choice in all aspects of the domain name
marketplace, I believe that there needs to be uniformity and consistency
in connection with the administrative decisions rendered by dispute
providers.

Respectfully submitted,

Michael D. Palage