In this post, the Internet Commerce Association provides an update on a plan to give IGOs special privileges related to domain names.
Should domain name registrants’ fundamental right, the right to go to court to overrule a UDRP decision transferring their domain name, be taken away? That was one of the primary questions that an ICANN Working Group was mandated to answer. The confusingly named ICANN IGO-INGO Access to Curative Rights Protection Mechanisms (the “Working Group”) has been examining and reviewing this issue since 2013 and just issued its Final Report.
ICANN had been considering creating a new dispute resolution system, just for Intergovernmental Organizations (IGO’s) such as the World Trade Organization (WTO), the International Telecommunications Union (ITU), and the World Customs Organization, and also for International Non-governmental Organizations (INGO’s), such as Good Neighbours International (GNI), CARE, and World Wide Fund for Nature (WWFN). These organizations and many others who use acronyms and common words in their names, would be interested in any new system that would allow them to take away corresponding domain names from registrants. Some IGOs believed that they should have first right to domains that matched their acronym, even in .com, such as to the domain WHO.com.
The Working Group was presented with, as one option, a new dispute resolution system that would be “final”, without recourse by a registrant to go to court to overturn an unfair decision. Although such a proposal has been previously raised and rejected, the Government Advisory Committee (GAC), pushed hard for it to be reconsidered. IGOs in particular argued that they currently enjoy immunity from going to court for most kinds of disputes, and wanted that immunity extended to domain name disputes. Their rationale was that as intergovernmental organizations, their immunity from being subjected to courts of any particular nation was imperative, and the UDRP as currently enacted requires all complainants to submit to a court’s jurisdiction for any dispute challenging a UDRP transfer order. Accordingly, IGOs claimed that they could not effectively use the UDRP as it would require them to waive their immunity.
It was pointed out to them, however, that they can and should be able to bring a UDRP via an agent or licensee, rather than directly themselves, in order to avoid having to submit to a court’s jurisdiction, and as such, the UDRP was perfectly equipped to handle a dispute involving an IGO.
The prospect of a new UDRP specifically for IGOs, which would enable them to target acronym domains and/or single word domains, without the right of appeal to the courts, was very concerning to domain registrants. The ICA engaged in the Working Group reviewing the IGO UDRP proposal since 2013, first represented by former ICA General Counsel, Phil Corwin, who also served as a neutral co-Chair, and then recently by Zak Muscovitch, current General Counsel. Also participating and providing long-term support to the Working Group, were ICA Board members, Nat Cohen and Jay Chapman.
Due in large part to the ICA efforts, and due also to fierce advocacy from George Kirikos, a non-ICA member of the Working Group, the Consensus recommendation of the Working Group was not to create any new system for IGOs and INGOs which would take away a registrant’s right to go to court. The ICA is pleased that the Working Group reached Consensus on this issue, amongst several other important issues, including inter alia:
a) that no substantive changes to the UDRP or URS are to be made, and no new dispute resolution procedures are to be created, for INGOs;
b) that IGOs can avail themselves of the UDRP and URS by way of filing a Complaint through an agent or licensee so as to not have to submit to jurisdiction of courts;
c) that no subsidies are to be provided to IGOs or INGOs; and
d) when a domain owner challenges a UDRP or URS decision in court and an IGO responds by successfully asserting to the court that it is immune from any court proceedings and thereby avoids having the UDRP or URS decision challenged under national law, that the original UDRP or URS will be set aside, so that registrant’s right to judicial review is not taken away.
While the final decision is up to the GNSO council, it is hoped and expected that GNSO will adopt the Consensus recommendations of its Working Group who has carefully studied the issues for years.
It is just this kind of sustained, multi-year effort to engage in ICANN’s policy making process that is required to protect registrants and the domain industry from damaging policies that are continually proposed at ICANN. The ICA is the only association that engaged in this process to protect the interests of registrants and the domain name investment industry. The ICA wishes to acknowledge and thank the Working Group’s Chair, Petter Rindforth, and the Working Group’s former Chair, Phil Corwin (formerly ICA General Counsel), for their longstanding dedication to Working Group and its efforts to review and develop policy on this important subject matter. The ICA wishes to also thank ICANN staff, Mary Wong and Steve Chan, for their longstanding support of the Working Group, as well as Susan Kawaguchi who has served as GNSO liaison to the Working Group. The ICA wishes to extend its particular gratitude to its General Counsel, Zak Muscovitch, as well as ICA Board Members Nat Cohen and Jay Chapman, who each have admirably and extensively participated in and contributed to the WG’s achievements.
The ICA will continue to vigorously represent domain name registrants and protect their rights, including the right to go to court to overturn an errant URS or UDRP decision. When the UDRP was originally established in 1999, there was a “grand bargain” wherein trademark owners would be able to avail themselves of a streamlined and low-cost dispute resolution system for clear cut cases of abusive domain name registrations, but domain name owners would not have to give up their right to go to a national court in order to overturn a wrongly decided UDRP case. Over the years, we have seen the UDRP successfully adjudicate thousands of clear cut cases. But we have also, with unfortunate regularity, seen the UDRP abused by trademark owners and errant panelists, to take away lawfully and fairly registered domain names. Concerningly, instances of Reverse Domain Name Hijacking against registrants is on the rise. These valid concerns exist irrespective of whether the registrant’s ownership of its domain is challenged by a trademark owner or an IGO. Under such circumstances, the registrant’s fundamental right to go to court must be protected.
Zak Muscovitch is General Counsel to the Internet Commerce Association, a group that advocates on behalf of domain name investors.