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Comment on Preliminary Issue Report on a GNSO Policy Development Process to Review All Rights Protection
- To: comments-rpm-prelim-issue-09oct15@xxxxxxxxx
- Subject: Comment on Preliminary Issue Report on a GNSO Policy Development Process to Review All Rights Protection
- From: "Christian Schalk" <christian_schalk@xxxxxx>
- Date: Mon, 30 Nov 2015 22:20:38 +0100
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<div>Dear Sirs,</div>
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<div>Please use the statement below instead of the one which I had sent to you
earlier this day.</div>
<div> </div>
<div>Best regards</div>
<div>Christian Schalk</div>
<div>
<div> </div>
<div>Dear Sirs,</div>
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<div>The UDRP should remain unchanged and if revisions are really necessary,
they should be carried out by IP professionals which have a good long year
standing and experience in the field of IP, especially on trademarks and domain
name matters related therewith. Also the expertise of WIPO and NAF which are
the UDRP’s backbone have to be involved as well. These organizations
should play an important role also in the future of the UDRP.</div>
<div> </div>
<div>All in all, I believe that the high number of domain name cases which have
been filed before institutions like WIPO or NAF shows, that the UDRP system is
working very effective and it is well accepted by its users.</div>
<div> </div>
<ol>
<li>Before the UDRP was established at the end of 1999, trademark
owners had only two possibilities to get back domain names which featured their
trademarks. The first possibility was that they paid a substantive amount of
money to those who had registered the domain names. This amount was often very
high, much in excess of the amount one has to pay to register a domain name. In
most cases, this was the only purpose to register a domain name. Given the
fact, that many domain registrants had provided wrong contact details, there
was even no certainty that the respective domain name would be transferred to
the trademark owner after he or she had paid the agreed amount of money to the
domain registrant.</li>
</ol>
<div style="margin-left: 35.4pt;">The second possibility was to go to court.
Even in the home country of the author of these lines, a normal procedure which
ends with a preliminary order amounts quickly to 10.000 – 15.000 Euro
given the court- and attorney fees. It is even more, if main court proceeding
starts. However, in many cases, the domain registrants pretended to have
residence in countries where court procedures are not only expensive but take a
lot of time, sometimes many years. Since time is key in the time of Internet,
such long lasting procedures are not acceptable. Furthermore, in many cases,
the domain registrant provided false contact details which made the
commencement of court procedures difficult and its enforcement nearly
impossible. When the author of these lines dealt with domain name cases in the
end of the 1990ies, he had just learned that the Madrid Protocol had entered
into force a few years ago and that it took more than 100 years to negotiate
it. Everyone said, that in times of the Internet, this is much too long which
is true. </div>
<div> </div>
<ol>
<li value="2">The author of these lines was therefore, very happy when
he attended a hearing organized by WIPO in autumn 1998 on trademark related
domain name issues and was even enthusiastic when he learned a little later on
the introduction of the UDRP at the end of 1999. He is convinced that the
introduction of the UDRP was and still is the best solution to deal with
these type of cases. It is a very time efficient procedure on domain names and
compared to normal court actions, it is also cost effective. Some people may
argue that this is not the case and fees for the UDRP are too high. It may well
be that some attorneys asks for a high amount of money when they prepare such a
case. However, how much work an attorney has to work on a case depends also on
the preparatory work of a party. It makes certainly a difference whether a
party provides all necessary material at once and answers all questions the
attorney has or whether he has to rely only on his own searches and has to come
back to the party again and again. As far as the fees are concerned which have
to be paid to organizations like WIPO or NAF, this amount is certainly not too
high compared to what has to be paid for a court procedure. The UDRP as it is,
guarantees a fast track procedure based on rules of fair trial. This is only
possible because each case is managed individually by a highly professional
infrastructure as they are provided by bodies like WIPO or NAF. This has
certainly its price but bodies like WIPO or NAF made also great efforts to make
the UDRP an efficient procedure through its professional management.
Thanks to their efforts the fees on which ICANN and other entities had agreed
upon in 1999 remain stable since then. There was no rising of fees in the past
16 years ! There is no company in the world which has not somehow raised its
prices in order to create more income and there is no governmental body in the
world which fees remained stable throughout the past sixteen years !</li>
</ol>
<div style="margin-left: 35.4pt;">This applies also to those experienced IP
specialists who decide on the cases. They have been carefully selected by
bodies like WIPO and NAF. One may argue that there should be only little
amounts to be paid to them for so-called “easy” cases such as cases
where the domain registrant or respondent did not reply to the contentions of
the complainant. But not all such cases are as easy as they seem to at the
beginning. One could imagine situations where the Complainant obviously has no
strong case despite the respondent’s silence. Furthermore, what would be
the criteria to decide which case is difficult or not ? Who should decide that
? For the sake of fair trial, each case deserves a thorough review and a
decision where major arguments are outlined. And there are complex cases, where
it takes a much longer time to come to a decision given laborious searches and
review of case law. The quality of the decision is also one major reason
why trademark owners rely on the UDRP. If they would have the impression that
domain name cases would not be treated in a professional way anymore also
because it is difficult to attract experienced IP experts as Panelists, they
would seek for alternatives. In this case, that would mean to go back to the
situation we had before the UDRP was introduced, which means to go to court.
This cannot be in the interest of anyone except the domain squatters.</div>
<div> </div>
<ol>
<li value="3">The UDRP as it is, is also a predictable procedure for
many situations. All decisions under the UDRP are accessible online. Bodies
like WIPO have built up functions to search for these decisions such as the
legal index or WIPO Overview 2.0. Especially the WIPO Overview 2.0 gives a good
overview on how panelists deal with certain situations. This
enormous collection of cases or precedents provides many good examples of
development of law in the field of trademarks and domain name. If there will be
any review of the UDRP, it should take advantage of this rich resource and base
any adjustments on this.</li>
</ol>
<div> </div>
<ol>
<li value="4">The collection of UDRP-cases of the past 16 years gives
also a lot of good example on how Panelists interpreted the UDRP provisions and
how they sometimes adapted them carefully to developments of the internet which
one did not have in mind in 1999 when the Internet was still a “new
territory” for most people and companies in the world. It is one and very
important sign of a democratic and free society (and the Internet should
reflect that as well) that judges (or here Panelists) develops the law further
at least to some extend when they apply it to specific questions which one did
not have in mind when certain rules were set. It is one of the daily challenges
every judge in free and democratic society has when he or she is faced with new
developments and has to decide what would be the best decision in the spirit of
the law which has been established sometimes a long time
ago. </li>
</ol>
<div style="margin-left: 35.4pt;">This should also answer the questions whether
a revision could improve the UDRP. There is no prefect legal system in the
world. The best and most efficient legal systems are those which are based on
fair trial principles, follow a transparent procedure, are to some extend
predictable but allow a certain flexibility when it comes to applying its rules
on the individual case. There is no legal system which is perfect and which
makes everyone happy. Compromises have to be made. Even if we would amend the
UDRP, some people may be satisfied with certain aspects but not with others.
One could also draft detailed rules on certain topics. But what if a situation
differs just a little bit from the situation which the detailed rules have in
mind ?</div>
<div> </div>
<ol>
<li value="5">I have sometimes heard the argument that there is no
legal protection against the decision of an UDRP panelist. This is certainly
not true. The domain name cases under the UDRP deal with very specific cases.
Also, every decision can be challenged by a national court. Furthermore, every
party can initiate court procedures instead of the UDRP or in parallel.</li>
</ol>
<div> </div>
<ol>
<li value="6">The UDRP needs a professional body who manages the cases,
makes sure that fair trial rules are applied, that the parties are treated
equally, that deadlines are respected and so on. I believe that organizations
such as NAF and WIPO have done an outstanding job during the past 16 years.
Whether the UDRP will undergo revisions or not, they should remain in charge of
this task.</li>
</ol>
<div> </div>
<div> </div>
<div>Christian Schalk</div>
<div>Attorney at Law (Rechtsanwalt)</div>
<div>Leverkusen</div>
<div>Germany</div>
<div>E-Mail: christian_schalk@xxxxxx</div>
<div> </div>
<div>P.S.</div>
<div>Although the ccTLD-address area “.de” is the biggest ccTLD as
far as number of domain names are concerned, there is not yet a UDRP although
this author himself has called for that already at the bi-annual meeting of the
German Markenverband in October 2000 and although many of his colleagues did
the same in the following years at various occasions. One has to go to court in
Germany and many small and mid-sized company can only dream of an UDRP.
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