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MarkMonitor - UDRP Preliminary Report Comments

  • To: "prelim-report-udrp@xxxxxxxxx" <prelim-report-udrp@xxxxxxxxx>
  • Subject: MarkMonitor - UDRP Preliminary Report Comments
  • From: Frederick Felman <Frederick.Felman@xxxxxxxxxxxxxxx>
  • Date: Fri, 15 Jul 2011 22:59:10 +0000

Text Follows, PDF Attached:


Mr. Rod Beckstrom
President and CEO, ICANN
4676 Admiralty Way, Suite 330
Marina del Ray, CA 90292

Mr. Stephen Crocker
Chairman of the Board of Directors, ICANN
4676 Admiralty Way, Suite 330
Marina del Ray, CA 90292

To: Mr. Beckstrom, Mr. Crocker, the ICANN Board and Staff and GNSO Council:

MarkMonitor Inc. (“MarkMonitor”) appreciates the opportunity to submit these 
comments in connection with the Preliminary GNSO issues report on The Current 
State of the Uniform Dispute Resolution (“UDRP Issues Report”).  MarkMonitor 
also wishes to thank the ICANN staff for the time and effort expended on the 
UDRP, associated discussions and preparation of the UDRP Issues Report.


The Registration Abuse Policies Working Group (“RAP-WG”) was formed pursuant to 
the original GNSO Council Resolution dated December 18, 2008.

Pursuant to the Charter, the RAP-WG was asked to identify “which aspects of the 
subject of registration abuse are within ICANN's mission to address and which 
are within the set of topics on which ICANN may establish policies that are 
binding on gTLD registry operators and ICANN-accredited registrars” which was 
to “include an illustrative categorization of known abuses.”

On November 15, 2010, the RAP Implementation Working Group (“RAP-IWG”) 
(convened to determine the best approach for the GNSO to handle the numerous 
recommendations in the RAP Final Report) submitted its formal letter to ICANN.

MarkMonitor was an active participant on both the RAP-WG and the RAP-IWG.

On May 27, 2011, ICANN staff submitted its UDRP Issues Report.


A review of the UDRP should be delayed (at a minimum) until further information 
is   gleaned from the RPMs associated with the new gTLDs

Undertaking a wholesale review of the UDRP will entail a massive effort given 
the intricate and complicated nature of this mechanism. The RAP-IWG recognized 
this problem and concluded that such an endeavor would be large in complexity, 
scope and size.  The group recommended that a drafting team be convened to 
develop “ a roadmap for addressing these issues, possibly through multiple PDPs 
grouping together related issues in a similar way as was done for the review of 
the IRTP”.

This tracks the recommendation of the ICANN Staff that, if a PDP is to be 
initiated, a first step is to convene a small group of experts “to produce 
recommendations to improve the process or implementation of the UDRP Policy”.  
Clearly, both groups recognized the potential massive undertaking that a 
full-scale review of the UDRP would entail.

MarkMonitor encourages that even before such a team of experts is formed, 
unbiased quantitative research should be conducted to establish and verify the 
real issues that affect fair adjudication of UDRP cases.  With the aid of over 
thirty thousand, well-documented cases, statistical analysis should identify 
where real issues exist.

In addition, the ICANN Staff has raised almost 50 different areas that would 
need to be looked at in any review of the UDRP.  Each one of these issues could 
conceivably bring up additional tangential issues that would need review as 
well. This, in effect, would create a never-ending “domino effect” that would 
require a contribution of large amounts of resources to bring any one PDP to 
completion.   Recognizing the enormity of the task, the RAP-IWG recommended the 
initiation of multiple PDPs; not just one. This was a similar tack taken by the 
IRTP working group to handle the multiple of issues that arose in that working 

In addition, if the Internet community were to engage in such a massive 
endeavor it would seem plausible that it would want all relevant information as 
its disposal. If a PDP is initiated now, a missing element in the evaluation of 
a future revamped UDRP is the success or failure of the RPMs (and particularly 
the Uniform Rapid Suspension System (URS)) in the new gTLD program.   Further, 
it would not be prudent to enlist hundreds of volunteer hours to undertake this 
massive overhaul only to find out that there may be other changes necessary or 
a more efficient way of managing the process that was not fully considered.  
Thus, MarkMonitor recommends that a review of the UDRP is delayed until 
adequate information is gleaned from the performance of the URS.

MarkMonitor agrees with ICANN Staff that the GNSO should not proceed with a PDP 
to review the UDRP at this time

The UDRP is not perfect, but it is the only protection mechanism currently 
available to trademark holders. There are undoubtedly a number of areas that 
could be fixed, as outlined in the UDRP Issues Report itself. However, there 
was also substantial dispute on the RAP-WG as to what needed to be changed and 
how, if at all, to change the UDRP.

Given that the UDRP had not been substantially reviewed in almost 10 years it 
was clear that the RAP-WG members needed, as a first step, additional 
information to determine the current state of the UDRP.  This lack of clarity 
(with respect to how well the UDRP was working) was further exacerbated on the 
RAP-WG by the fact that there were no experts (such as WIPO or respondent’s 
counsel) that could inform the group as to how well the UDRP was performing.   
In addition, the RAP-WG was further informed that the only mechanism for any 
change or investigation (irrespective of the nature and substance) would be 
through a UDRP Issues Report.  Thus, MarkMonitor would posit that members of 
the RAP-WG may actually have been voting for the UDRP Issues Report not 
necessarily the PDP.

It is now clear, after a review of the UDRP Issues Report, that a PDP of the 
UDRP is premature at best.  ICANN Staff met with numerous experts “on both 
sides of the aisle” that have specifically recommended against initiating a PDP 
at this time.  ICANN Staff specifically sought out the input, advice and the 
collaboration of organizations such as UDRP providers who have also endorsed 
this sentiment. ICANN Staff has found that the majority of problem areas 
needing “fixing” relate mostly to “process issues that are associated with 
implementation of the UDRP, rather than the language of the Policy itself. It 
is now apparent from the UDRP Issues Report that a PDP is not necessary to 
evaluate and make these types of changes.

This was exactly the information needed and sought (and the very reason that an 
Issues Report was voted for) by certain members. The UDRP Issues Report now 
provides the answer to the nagging question of whether substantive changes 
should be made to the UDRP.  MarkMonitor agrees with the overwhelming sentiment 
of the group of experts, organizations and individuals that were contacted by 
ICANN, that a PDP should not be initiated at this time given that such an 
action “may ultimately undermine [the UDRP], and potentially may adversely 
affect the many Internet stakeholders who benefit from its current 


Given the above, MarkMonitor recommends that:

1) A review of the UDRP should be delayed until further information is gleaned 
from the RPMs associated with the new gTLDs; and,

2) To the extent a PDP is initiated, then any proposed changes should be based 
upon and suggested after an unbiased, statistical and independent analysis of 
the existing thirty thousand cases and recommendations is conducted and 
analyzed by the expert group as recommended by ICANN Staff

Sincerely yours,

Frederick Felman

Attachment: MarkMonitor - UDRPCommentsFinal.pdf
Description: MarkMonitor - UDRPCommentsFinal.pdf

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