Is coming. Here’s ICA’s position — UDRP reform

Here’s what domain investors would like to see happen during the review of the UDRP.

For the first time in the 18 years since it was introduced, the Uniform Dispute Resolution Policy (UDRP) regarding cybersquatting is being reviewed.

This is an issue for domain name investors to watch. Expect certain interests to push for fresh rules that make it easier to take away domain names even when it’s not warranted.

In the domain investor’s corner is Internet Commerce Association (ICA), a trade group representing domainer interests. Yesterday, the ICA issued its platform (pdf) for changes it believes ought to be made.

Notably, none of the changes have to do with the language of the policy itself. It is generally agreed that the requirements for forcing a domain owner to transfer a domain are fair. It’s how they are implemented that is the problem.

The platform includes five sections: accountability, transparency, uniformity, predictability and balance. Here are the major proposals from each section, along with some commentary.

Accountability

• Dispute Resolution Providers (DRP) ought to be under contract, not just accredited by ICANN. (Many people are surprised to learn that groups like National Arbitration Forum and World Intellectual Property Organization do not have contractual relationships with ICANN.)
• Compliance Framework for oversight, standards and monitoring of DRPs.
• Procedure to make complaints against DRPs.
• Regular review of UDRP. (Once every 18 years probably isn’t enough.)

Transparency

• Require all DRPs to disclose their ownership, affiliations and management.
• Establish standards and procedures for panelist accreditations and de-accreditations. (How panelists are accredited (or not) is a bit of a mystery.)
• Require DRPs to follow an established and fair procedure for appointing panelists to UDRP cases. (This is a big one for me. DRPs can assign whomever they want to be a panelist on a given case. They can assign the same person to be a panelist on all cases if they want. There are reasons that there’s not an even split between panelists and cases. For example, a panelist isn’t available or the language of the dispute. But DRPs ought to be required to follow a round-robin assignment queue. It only skips in the case of language, in which a round robin with panelists that speak the language is used. If DRPs are concerned that a panelist isn’t capable of handling a certain type of case then they ought to be deaccredited, not skipped.)
• Require transparent UDRP disclosure.  (The only way to make sure DRPs are doing their job is to be able to monitor them effectively. Right now they disclose data still they want.)

Uniformity

• Establish a uniform set of supplementary rules.
• Prohibit inconsistent supplementary rules. (This would obviously be solved by establishing a uniform set.)
• Revise rules to clarify that complainants and respondents can nominate panelists from any DRP roster. Apparently, right now it’s not clear if respondents can.

Predictability

• Require all DRPs and panelists to subscribe to a single consensus view to avoid rogue interpretations. Right now only WIPO publishes a consensus view and panelists don’t have to follow it.

Balance

• If a DRP allows staggered fees in which the complainant doesn’t have to make the final payment until a response is received, and if the complainant fails to make the final payment, then a finding of bad faith ought to be made against the complainant and it ought to be barred from filing another UDRP to any DRP. (I didn’t know this was an option at some DRPs. Apparently, complainants will file a UDRP and hope the domain owner doesn’t respond. If the owner does respond, they drop the case by failing to make the second payment. At that point, the domain owner by now went through the trouble of responding.)
• Additional unsolicited submissions ought to be prohibited. If a complainant wants to make an additional submission under exceptional circumstances then it ought to explain the circumstance to the panel and not submit the additional information until it gets approval from the panel. (This makes sense…even when a panel states an additional submission was not allowed, they have by now read it and it might prejudice them.)
• Require DRPs to accredit domain name lawyers in addition to trademark lawyers. (Honestly, I’d prefer a rule that states anyone who works at a law firm that represents parties in UDRPs ought to be prohibited from serving as a panelist.)

Additional thoughts

I have two other ideas that ought to be considered.

• Include a checkbox on the complainant’s form that states “I certify that I am claiming trademark rights that predate the domain registrant’s ownership of the domain name.” This could eliminate a lot of RDNH filings.
• Right now the panel can only deny the claim or accept it, which results in the transfer (or sometimes cancellation) of the domain. Perhaps there’s a middle road that could resolve cases, such as “Don’t show this type of ad on this domain anymore.”