[gnso-lockpdp-wg] RE: UDRP Domain Name Lock F2F WG Meeting

["Roache-Turner, David" <david.roacheturner@xxxxxxxx>]

Dear Marika, Working Group colleagues,

Thanks again for organizing and for coming along to participate so 
constructively in the WG session in Prague – it was a pleasure to be part of 
such practical and outcome-focused deliberations.

Among the many issues usefully discussed in the session, there were two 
subjects - UDRP settlement, and privacy and proxy registration service 
scenarios - about which a number of participants were evidently seeking further 
information - and which, in so far as they touch on the locking or unlocking of 
a domain name during a UDRP dispute, the group may consider making 
recommendations for issuance of guidance by ICANN.

In the course of our deliberations, informational reference was made to the 
WIPO Overview 2.0 (a public WIPO document which distills UDRP panel 
jurisprudence across thousands of issued WIPO decisions, and addresses many of 
the more common procedural questions that tend to arise in WIPO UDRP 
proceedings - including in relation to cases of settlement, and cases involving 
privacy or proxy registration services).  Although not an ICANN document, but 
rather a WIPO-published resource for UDRP users and stakeholders, it (and many 
of the panel decisions cited therein) may nevertheless usefully inform further 
Working Group deliberations on these two subjects.  For those who may be 
interested in reading more, it is available on the WIPO Center website at: 
http://www.wipo.int/amc/en/domains/search/overview2.0/index.html

I have extracted below for the group’s information the relevant bits on 
suspension and settlement, and on privacy and proxy registration services.   
Each section also provides a useful flavor of what would typically happen, from 
a WIPO provider/panel perspective, in such cases.  As was also mentioned in the 
session, at WIPO we are observing settlements (prior to panel income) occurring 
in approximately 25% of UDRP cases filed, and are seeing privacy or proxy 
registration services in use in a comparable percentage of WIPO UDRP cases.

WIPO’s settlement practice is long-standing, and dates back to the earliest 
days of the UDRP (from which time, shortly after its introduction, it became 
apparent that many parties wished to settle and discontinue a UDRP proceeding 
on agreed terms prior to any panel appointment, and following discussion with 
ICANN, an appropriate procedural protocol based on party agreement has formed 
the basis of our below-described practice since).  The impact of privacy and 
proxy registration services in UDRP cases is a more recent phenomenon, 
complicated by the fact that (the now-wide-spread) use of such services 
post-dated introduction of the UDRP, which was principally designed to operate 
on the basis of the accuracy of Whois data at the time of filing.  As the UDRP 
does not specifically address the effect of such services directly, and no 
guidance (that we are aware of) has been issued by ICANN to date on the 
treatment of such services for UDRP purposes, it has generally fallen by 
default to UDRP parties, panels, providers, and affected registrars to develop 
appropriate protocols through UDRP cases, as these have occurred.  The way 
these generally work in a “typical” WIPO case involving such services, where an 
underlying registrant is disclosed by the registrar in response to a registrar 
verification request, is set out below.

We would also be happy to discuss further or provide further information if 
felt to be helpful to the group in the course of deliberations in subsequent WG 
sessions.

With best regards,
David


Extracted from WIPO Overview 2.0 
(http://www.wipo.int/amc/en/domains/search/overview2.0/index.html ):

4.12 Can UDRP proceedings be suspended for purposes of settlement?

See also the relevant 
section<http://www.wipo.int/amc/en/domains/search/legalindex.jsp?id=12840> in 
the WIPO Legal Index.

WIPO panels have recognized that UDRP proceedings may be suspended by the WIPO 
Center at the request of the parties to enable settlement of their dispute 
prior to panel appointment. Where a signed suspension request for such purpose 
identifying the period of time sought (typically not more than 30 days) is 
submitted to the WIPO Center by the complainant (and not objected to by the 
copied respondent) or by both parties, a notification would normally be issued 
to the parties and registrar advising the period of the suspension, and that 
the domain name should be unlocked only for the purpose of any transfer of the 
domain name from the registrant to the complainant under the terms of any 
agreed settlement between the parties. In the latter scenario, in order to 
encourage settlement where appropriate, WIPO will fully refund the fee advanced 
for the not-yet-appointed panel. A request for suspension would not normally be 
granted where either party objects. Given the expedited nature of UDRP 
proceedings, the WIPO Center will normally grant a request to extend the 
initial suspension by one further period of up to 30 days. A request from the 
parties to suspend proceedings to explore possible settlement options only 
after panel appointment would be at the discretion of the panel. Whether or not 
the proceedings have been suspended, where a settlement is found to have 
occurred prior to the rendering of the panel's decision, the panel would 
normally order the proceedings terminated in accordance with paragraph 17 of 
the UDRP Rules.

Relevant decisions:

AT&T Corp. v. Ondonk Partners, WIPO Case No. 
D2000-1723<http://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-1723.html>,
 <attplaza.com>, Transfer
Mori Seiki Co. Ltd. v. Texas International Property Associates, WIPO Case No. 
D2007-1795<http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1795.html>,
 <mori-seiki.com> inter alia, Transfer
MasterCard International v. Bankrate, WIPO Case No. 
D2008-0704<http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0704.html>,
 <mastercreditcard.com>, Transfer
F. Hoffmann-La Roche AG v. Texas International Property Associates – NA NA, 
WIPO Case No. 
D2008-0752<http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0752.html>,
 <hoffman-laroche.com>, Transfer
ANOVO v. Moniker Privacy Services / Alexander Lerman, WIPO Case No. 
D2008-1049<http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1049.html>,
 <anovo.com>, Transfer
Grundfos A/S v. Luca Mueller, WIPO Case No. 
D2009-0091<http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0091.html>,
 <grundfosinsite.com>, Transfer
F. Hoffmann-La Roche AG v. P Martin, WIPO Case No. 
D2009-0323<http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0323.html>,
 <alli-xenical.com>, Transfer


4.9 Who is the proper respondent in a case involving a privacy or proxy 
registration service?

See also the relevant 
section<http://www.wipo.int/amc/en/domains/search/legalindex.jsp?id=12381> in 
the WIPO Legal Index.

In general, whoever a panel may ultimately determine to be the proper 
respondent in a domain name case involving a privacy or proxy registration 
service, there is wide recognition among panels that a complainant or provider 
who has correctly sent a UDRP case-communication to the WhoIs-listed registrant 
of record for a disputed domain name will (at least in the absence of better 
information) normally have discharged its communication responsibility under 
the UDRP Rules.

Although reference has been made by some panels to paragraph 3.7.7.3 of the 
ICANN Registrar Accreditation Agreement, the UDRP and UDRP Rules do not 
contemplate the use of privacy or proxy registration services per se, nor 
provide express guidance on the issue. The UDRP Rules define the respondent as 
the holder of a domain name registration against which a complaint is 
initiated. The UDRP Rules also give the panel power to conduct proceedings in 
such manner as it considers appropriate in accordance with such Rules and the 
UDRP.

Accordingly, in a WIPO UDRP case in which a privacy or proxy registration 
service is named as the respondent in a filed complaint (e.g., because the 
complainant was not aware of the identity of any underlying registrant) - and 
the concerned registrar (or the privacy or proxy service provider) in response 
to a request from the WIPO Center discloses an underlying registrant of the 
domain name that differs from the privacy or proxy registration service which 
appeared in the WhoIs at the time the complaint was filed, on which the 
complainant may act as described in (c) below - ultimately the panel has 
discretion to determine the identity of the proper respondent.

Most panels in cases involving privacy or proxy services in which such 
disclosure of an underlying registrant has occurred, appear to have found it 
appropriate to record in their issued decision both the name of the privacy or 
proxy registration service appearing in the WhoIs at the time the complaint was 
filed, and of any disclosed underlying registrant. Some panels, usually in 
cases where there has been a clear and timely disclosure, have elected to 
disregard the privacy or proxy service entirely and focus solely on the 
registrar-confirmed registrant.

WIPO panels have recognized on the issue more generally, pending any uniform 
instructions from ICANN on the issue, that where a disclosure of an "underlying 
registrant" occurs, the following is appropriate:

(a) the WIPO Center makes the (typically registrar-disclosed) "underlying 
registrant" information available to the complainant, and provides the 
complainant with an opportunity to amend the complaint to reflect that 
information should the complainant so choose;

(b) should a complainant choose not to amend its complaint in such 
circumstances, this would not normally amount to a complaint deficiency for the 
purpose of the WIPO Center completing its administrative responsibilities under 
the UDRP Rules;
(Complainants do tend to amend to reflect any disclosed registrant information, 
partly to avoid possible enforcement questions in the event of any subsequent 
transfer or cancellation order.)

(c) in practical terms, a complainant may choose to either add a disclosed 
underlying registrant as a co-respondent to the complaint, or replace the 
originally named privacy or proxy service with the disclosed "underlying 
registrant", or (as rarely happens) retain the privacy or proxy service as the 
sole named respondent; also, in any case, the complainant may choose to amend 
or supplement its substantive pleadings in light of any such disclosure;

(d) in light of the definition of mutual jurisdiction in the UDRP Rules, a 
complainant may rely for such purposes on the location of the registered domain 
name holder as it appeared in the WhoIs when the complaint was filed with the 
WIPO Center (even if that may be the location of the initially-listed proxy or 
privacy service);

(e) once the WIPO Center has notified the complaint to the WhoIs-listed contact 
information (especially where confirmed by the registrar) for the domain name 
registrant, this would normally satisfy the requirement in paragraph 2(a) of 
the UDRP Rules to employ reasonably available means calculated to achieve 
actual notice. (Panels have also noted that: (i) there are limits to what can 
reasonably be done by parties and providers to identify an "underlying 
registrant" in the context of the UDRP, and if WhoIs information is not readily 
usable for communication purposes in such case the registrant must expect to 
bear any consequences; and (ii) in cases of ambiguity as to the identity of the 
proper respondent, what matters in terms of notification obligations under the 
UDRP Rules is not so much the name that may "formally" appear on the complaint, 
but that the latter has been duly notified to the reasonably available contact 
information of the "registrant", whatever its identity);

(f) preserving panel discretion to determine the identity of the proper 
respondent in any case in which there may be ambiguity, for abundance of 
caution, in its current practice (subject to further evolution of privacy 
issues), the WIPO Center would normally notify the case and forward a copy of 
the complaint on notification to any disclosed underlying registrant, as well 
as to the originally-named privacy or proxy service.

Relevant decisions:

Xtraplus Corporation v. Flawless Computers, WIPO Case No. 
D2007-0070<http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0070.html>,
 <zipzoomflysucks.com>, Denial
Advance Magazine Publishers Inc. d/b/a Condé Nast Publications v. MSA, Inc. and 
Moniker Privacy Services, WIPO Case No. 
D2007-1743<http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1743.html>,
 <wwwwired.com>, Transfer
F. Hoffmann-La Roche AG v. PrivacyProtect.org, Domain Admin and Mark 
Sergijenko, WIPO Case No. 
D2007-1854<http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1854.html>,
 <xenicalbuy.com>, Transfer
Mrs. Eva Padberg v. Eurobox Ltd., WIPO Case No. 
D2007-1886<http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1886.html>,
 <eva-padberg.com>, Transfer
Elvstrom Sails A/S v. Moniker Privacy Services, WIPO Case No. 
D2008-0393<http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0393.html>,
 <elvstromsails.com>, Denial
Viacom International Inc. v. Pablo, Palermao / Moniker Privacy Services, WIPO 
Case No. 
D2008-1179<http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1179.html>,
 <teenick.com>, Transfer
The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer 
Lopez, Vaca Systems LLC, WIPO Case No. 
D2009-0057<http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0057.html>,
 <jenniferlopez.net> inter alia, Transfer
Association Robert Mazars v. Private Whois Service, c/o mazarsrevenge.com, WIPO 
Case No. 
D2009-0183<http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0183.html>,
 <mazarsrevenge.com>, Transfer
Research In Motion Limited v. Privacy Locked LLC/Nat Collicot, WIPO Case No. 
D2009-0320<http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0320.html>,
 <backberry.com>,Transfer
Research In Motion Limited v. PrivacyProtect.org / Pluto Domain Services 
Private Limited, WIPO Case No. 
D2009-0324<http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0324.html>,
 <blackberru.com> inter alia, Transfer
Hertz System, Inc. v. Domainproxyagent.com / Compsys Domain Solutions Private 
Limited, WIPO Case No. 
D2009-0615<http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0615.html>,
 <www2hertz.com>, Transfer
RapidShare AG, Christian Schmid v. PrivacyAnywhere Software, LLC, Mikhail 
Berdnikov (Protected Domain Services Customer ID: DSR-2262893, Protected Domain 
Services Customer ID: DSR-2092987) and RapidShare AG, Christian Schmid v. 
Winsoul, Inc., Aleksey Atushev; (Protected Domain Services Customer ID: 
DSR-2239262), WIPO Case No. 
D2010-0894<http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2010-0894>, 
<rapidsharefilesdownload.com> inter alia, Transfer

However: Panels have also found, especially where a "disclosed" registrant in 
turn appears to be yet another privacy or proxy service, or in similar "Russian 
doll" scenarios, that the coming to light of such registrant may in certain 
conditions support a finding of breach of paragraph 8(a) of the UDRP, which 
cyberflight scenario may have implications for determination of respondent 
identity as well as for substantive findings.

Relevant decisions:

TDS Telecommunications Corporation v. Registrant [20758] Nevis Domains and 
Registrant [117460] Moniker Privacy Services, WIPO Case No. 
D2006-1620<http://www.wipo.int/amc/en/domains/decisions/html/2006/d2006-1620.html>,
 <tdstelecom.net>, Transfer
HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case 
No. 
D2007-0062<http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-0062.html>,
 <creditkeeper.com>, Transfer
CanWest Mediaworks Publications Inc. v. Laksh Internet Solutions Private 
Limited / SA c/o FP, WIPO Case No. 
D2008-0687<http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0687.html>,
 <theedmontonjournal.com>, Transfer
Jay Leno v. St. Kitts Registry, Domain Names Administration, WIPO Case No. 
D2009-0571<http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-0571.html>,
 <jaylenoshow.com>, Transfer


________________________________
From: owner-gnso-lockpdp-wg@xxxxxxxxx [mailto:owner-gnso-lockpdp-wg@xxxxxxxxx] 
On Behalf Of Marika Konings
Sent: jeudi, 5. juillet 2012 08:22
To: Gnso-lockpdp-wg@xxxxxxxxx
Subject: [gnso-lockpdp-wg] UDRP Domain Name Lock F2F WG Meeting

Dear All,

Thank you very much for participating in the UDRP Domain Name Lock Face-to-Face 
WG meeting in Prague. For those of you that were not able to participate, I 
would strongly recommend that you review the slides (see attached), recording 
(http://icann.adobeconnect.com/p7lox8ew0ff/) and/or transcript of the meeting 
(http://prague44.icann.org/node/31807) as the discussions as well as the case 
study presentation provided by David Roache-Turner provided some valuable 
insights and food for thought. As we did not have time during the meeting for 
the registrar case study by Luc Seufer, we hope to cover that at the next 
meeting of the WG on 12 July.

With best regards,

Marika

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