Saturday, 12 December 2009

The Czech Arbitration Court is suggesting what in essence is a UDRP amendment

Following the really bad precedent set by the World Intellectual Property Organization (WIPO) on the proposal for a fast-track UDRP process, the Czech Arbitration Court (CAC) has proposed changes that in essence amend the substantive and procedural rules of the UDRP. The Non-Commercial Users Constituency has submitted the following comments:

December 11, 2009

Dear ICANN Staff,

The undersigned members of the NCSG STI Drafting Team submit that the request from the Czech Arbitration Court (CAC) cannot be granted at this time for the strongest of procedural and substantive reasons.

  1. The ICANN public notice for comments has misled the ICANN community and the public. This is not a mere change to supplemental rules for a mere alternative page limit. This is the adoption of an “Expedited Decision” analogous to the URS system, recently created by the STI. In October, the ICANN Board sent the URS back to the GNSO because **expedited decision making processes involve substantive rights and must be subject to the procedures and policy-making processes of the GNSO and its Council.*** The same concepts, and requirements, apply here.

  1. There is nothing supplemental or merely procedural about these proposals. These proposals involve substantive change which will limit the rights of domain name registrants. As the just-completed STI URS recommendations show, expedited decision-making processes bring to bear serious and important issues of fairness and due process. The URS drafting team found that defining the elements of the UDRP claim precisely – and with the clear inclusion of safe harbors (the URS’ modelled on the Nominet example) constitute critically important factors in a rapid decision-making process.

Further, as the STI agreed, rapid reviews, especially in the case of defaults, should include additional procedures to protect and benefit the domain name registrants who may not even know the UDRP or URS proceedings are taking place. Such protections were placed into the STI’s just-completed URS -- but could not have been seen by the CAC which requested its recommendations (modeled on the IRT Report alone) prior to the results of the Board-requested STI work).

  1. The UDRP is meant to be a uniform system and CAC’s amendment will operate against that uniformity. CAC is suggesting changes to create new substantive language that is not in conformity with the original scope of the UDRP. The uniformity of the UDRP is based on all UDRP providers conducting the same type of substantive review. The CAC new process breaks this uniformity seeking to create a whole new mechanism.

Thus, the CAC proposal raises serious competition concerns. It is unfair that one UDRP service provider should move forward with an advantageous new process that may lure complainants away from other forums. The UDRP was meant to be a uniform system, and accordingly, rapid decision rules, as they apply to existing gTLDs, must take place through the GNSO and apply equally to all providers.

  1. The CAC proposal certainly will impact non-commercial and free speech domain names. As the CAC proposal does not include safe harbors for domain name registrants, its proposals do not include the balance of fair use and due process which constitute the basis of the newly-formulated and newly-recommended URS.

5. Further, the new CAC proposal is premised on inaccurate assumptions about default and domain names – to the substantive detriment of good faith domain name registrants. The CAC proposal presumes bad faith at default – despite the very short timeframe for notice and response that have characterized the UDRP since its outset (a timeframe far faster than court, and even than most administrative proceedings). The CAC proposals undercut the basic fairness of the UDRP, and the fairness and balance of the newly-introduced URS.

Overall, CAC is an accredited ICANN UDRP provider and should comply within a specific mandate. Despite CAC’s effort to present these changes as part of its supplemental rules, in reality they are substantive and will affect the future of the UDRP.

Such a submission, particularly by a UDRP provider so new to the UDRP process (in operation for only a year) and taking place while the URS was under serious consideration and substantive re-evaluation, will be viewed by all as unauthorized, unfair and seriously flawed.

Going Forward:
At a minimum, ICANN must reissue the comment period with a public notice that puts the public on notice that real rights – registrant rights – are being impacted under the UDRP pursuant to the change of policy being proposed by CAC.

The far better answer is for ICANN to strongly urge CAC to return to ICANN after a full review of the new URS. As the URS Drafting Committee, the STI, found and the UDRP Final Drafting Team before it, Registrants are entitled to the protections, fairness and due process. The STI 's URS came through a GNSO policy-making process. In addition, the URS proposal offers a heavily researched, carefully written and painstakingly edited rapid decision process from an expert and diverse group of trademark attorneys and technical experts representing Trademark Owners, Registrants, Registrars, Registries and individuals. It is a balance that adds to and rounds out the IRT recommendations, on which the CAC proposal was narrowly based.

The URS text, and its process of creation, should help inform and guide the CAC rapid decision process.

Overall, the procedural and substantive proposals suggested by the CAC must be legitimate revisions to the UDRP. These changes, and all major changes in the UDRP procedures, must be a part of ICANN’s bottom-up policy process undertaken through ICANN’s Policy Development Process (PDP).

Whatever happens next, this proceeding, as designated, must not continue. Suspending this proceeding for further work will benefit the entire ICANN community -- trademark owners, registrants, individual, registrars and registries, and CAC.

It also will serve the integrity of the ICANN process, and the UDRP, with a full and fair process.

Very sincerely yours,

Kathryn Kleiman, Esq.
NCUC Co-Founder, US Trademark Attorney, UDRP Drafter & URS Drafter

Dr. Konstantinos Komaitis,

URS Drafter and author of the book “The Current State of Domain Name Regulation” (University of Strathclyde)

Robin D. Gross, Esq.

Chair of NCUC, IP Justice Executive Director, and URS D

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