[council] Comments re: GNSO Update on the Framework for the Policy Status Report on the UDRP
john.mcelwaine at nelsonmullins.com
Wed Sep 29 17:10:56 UTC 2021
I appreciate the additional time to provide comments on the Framework for the Policy Status Report on the UDRP, which is an issue that the Intellectual Property Constituency place high importance upon and has been discussing.
At a high-level, the focus of the framework for the UDRP Policy Status Report (PSR) appears out of synch with the finding of the October 3, 2011 Final Report, which was largely an endorsement of the UDRP and in line with a dedicated webinar on May 10, 2011 and a questionnaire sent to approved UDRP providers. In each of the UDRP goal areas (efficiency, fairness, addressing abuse, etc.) quotes and perspectives (including from providers, registrars, panelists, complainant and respondent counsel, etc.) support the position that “the Internet community has come to rely on the transparency, predictability, and consistency associated with the UDRP.” Various viewpoints to the contrary are also referenced, but they are correctly characterized as coming from “a minority of commentators”.
In contrast, the framework for the PSR appears to focus on only very specific fairness issues taken from that minority of commentators, namely “forum shopping”, “process for selection of panelists”, and “analysis of abuse filings”. The Status Report appears to presume problems and then suggest a study and correction.
The framework PSR also steps back from conclusions made in the Final Report. For example, the Final Report concludes that “[t]he UDRP is widely recognized as effective because it is much faster than traditional litigation” (citing public comments made by D. Taylor, J. Berryhill, and P. Corwin). In contrast, the framework PSR essentially pushes the reset button, merely flagging “Analysis of case duration [and fees] for the UDRP vs. traditional litigation”, as something the community will need to look at. The framework PSR also appears to be missing counterbalancing proposals from the community for improvements to the UDRP, as set out in the Final Report:
o “The UDRP is inefficient because complainants have no means of identifying all of the domain names owned by a single respondent, which leads to the need to file additional complaints and incur additional expenses.”
o “Difficulties of identifying the proper respondent often leads to unnecessary costs to both providers and complainants.”
o “UDRP proceedings cost brand owners millions of dollars a year and they cost the cybersquatter almost nothing.”
o “Conjunctive bad faith requirements allow gaming”.
o “Allowing the respondent to control the jurisdiction of any appeals increases costs to rights holders.”
Furthermore, our specific comments on framework PSR slides are as follows:
It is important to note that nowhere in the 2011 Final Issues report is there a statement that assessing the effectiveness of the UDRP requires an analysis of (1) Efficiency, (ii) Fairness, (iii) Addressing Abuse. This “Purpose” needs to be entirely re-drafted as it is inaccurate. In fact, the “fairness” analysis of the Final Issues Report is only anecdotal “perspectives” from individuals on whether the UDRP was fair with most individuals asserting that it was fair. To the extent that this is an exercise to be conducted, it would be a task for the Review itself and not the PSR.
Further, the original proposal for the PSR identifies the single purpose of this exercise as follows: “To ensure that the rechartering process focuses on specific issues and topics that could benefit from a comprehensive policy review, resulting in a clearly scoped and precise Charter”, and goes on to propose certain tasks that the PSR should undertake in order to do so, namely “(1) identify the major substantive and procedural issues that have been reported to ICANN org and the respective UDRP providers regarding use of the UDRP; (2) include recent, relevant and available data that can assist with an effective assessment of the UDRP; and (3) highlight any changes and trends that have been observed since the GNSO’s 2011 Issue Report on the State of the UDRP.” The framework PSR slides improperly conflate proposed tasks with the PSR’s purpose and seem to miss the point that the role of this exercise is identify new information since the 2011 Final Issue Report that should help inform the work of the PDP.
The first bullet point of Slide 8 states that it will look at “[an] overview of whether the UDRP is impartial or fair for trademark holders and domain name registrant”. While a worthy concept, this statement is so broad as to be meaningless to the community is evaluating the intended work of the PSR.
The second bullet point purports to analyze “forum shopping”, which is a term that appears once in Final Report as a minority comment. The IPC would like to know why this one issue been singled out for analysis in the framework PSR. Moreover, there is no evidence that “forum shopping” is a concern of the community. Instead, drawing on experience from Phase 1 of the RPM Review, the individual rules and policies of providers should be examined, but not through the lens of purported “forum shopping”.
Similarly, with respect to the fourth bullet point, there is no explanation of why the PSR would also need to look at “reverse domain name highjacking cases”.
The IPC agrees with the BC and a reference to abuse is likely to be conflated with ongoing community work on abuse that is unrelated to the UDRP (i.e., scams, child pornography, prescription drugs, etc.)
The analysis of abuse in Slide 9 should also look at the costs to brand-owners.
It is unclear to the IPC what the relevance of education for domain name registrants is in this context, but to the extent that there is a relevance why is this seemingly limited to considering a single project?
Slide 11 set forth the datasets that are available. However, it does not explain whether this is the only data or types of data that ICANN Staff will be able to access.
Slide 14 sets forth an initial proposed timeline. Allowing a mere 2 weeks for data gathering and report updating seems unduly rushed and unlikely to allow for a comprehensive exercise. Furthermore, the proposal to share a draft report with Council the week before ICANN 72 and to expect any input from Council the week after that meeting is unlikely to allow sufficient time for Councilors and their constituents to provide substantive feedback. We would also question why there is no public comment process envisaged. Staff Reports and Issues Reports as part of the pre-PDP process all are subject to public comment periods, why is this not?
In summary, the IPC believes that the authors of the framework PSR should not start from scratch, and instead should build from a thorough review of the Public Comment Forum on the Preliminary Issues Report, the UDRP Webinar, the UDRP Provider Questionnaires, the 2015 RPM Staff Paper, and the Issue Report documents from 2015/16 which heralded this RPMs PDP. The authors should then sit down with representatives from the providers and a small team of interested GNSO councilors to develop an outline for the PSR that accurately, and in a balanced manner, provides a roadmap to update to the 2011 Final Report’s conclusions avoiding the pitfalls learned from Phase 1 of the RPM review.
From: council <council-bounces at gnso.icann.org> On Behalf Of Marie Pattullo - AIM via council
Sent: Thursday, September 23, 2021 1:43 PM
To: council at gnso.icann.org
Cc: gnso-secs at icann.org
Subject: [council] Comments re: GNSO Update on the Framework for the Policy Status Report on the UDRP
◄External Email► - From: council-bounces at gnso.icann.org<mailto:council-bounces at gnso.icann.org>
Thanks for all the work on this. On reading the slides, I have a number reactions so for efficiency, I set them out below prior to our meeting later.
“The Uniform Domain Name Dispute Resolution Policy (the "Policy") is an ICANN consensus policy that went into effect on 24 October 1999.”
* It was written by WIPO. That’s relevant not just for history, but for understanding WIPO’s granularity of expertise - knowledge about where it came from and how it works.
“The UDRP was created to provide a quick, efficient and more cost-effective way to facilitate trademark protection at the second level of the DNS.”
* Yes, but its end goal is to protect users and consumers from cybersquatting and related fraud. TM protection alone reads as “just protecting companies” – that is absolutely not the case.
“…assess effectiveness of the UDRP in terms of its overarching goals as identified in the 2011 Final Issue Report:
■ ii) Addressing abuse”
* It’s not abuse (wide) it’s abusive registrations (narrow). The original WIPO Report said “The scope of the procedure would be limited to cases of abusive registrations (or cybersquatting)”. We need to be careful here not to suggest it’s about broader DNS abuse.
“Share general data on case filings, decisions, etc.”.
* What does this mean? Data that there were x cases filed and y decisions? On what basis, what was the reason for bringing the case, were the parties first timers or multiple applicants/defendants, what was the justification for the decision, does language play a part… This formulation misses both nuance and the bigger picture: the UDRP is the tip of the iceberg (private acquisitions being a big way names are reclaimed) and there are various reasons why brand owners use other available tools that would never feature in such statistics (for example, compare the defensive portfolios of 100 random brands vs the number of UDRP case they have filed – the latter is not even in the same ballpark as the former).
“High level statistics of data collected for each UDRP goal”
* I’m not sure what this means? And how do you assess efficiency and fairness through stats?
“Review of UDRP cases filed per year. Continued growth in UDRP filings worldwide helps demonstrates that the UDRP remains a popular/effective tool to combat cybersquatting.”
* It also demonstrates that cybersquatting isn’t going away. (The Charter could consider whether we need some form of Notice & Suspension front-end bolt-on to the existing UDRP?)
“Community views concerning effectiveness”
* Effectiveness for whom? TM owners don’t want others squatting their names (and thus duping users/consumers, and/or leading to unfair trading practices necessitating expensive purchases and defensive registrations, which have no wider societal or public interest benefit and serve only to clog the DNS with parked names). Domainers want to buy/sell all names. CPs want to register all names. Non-commercials want everyone to have the chance to register any name. (Often there are free speech concerns cited, yet free speech features in a tiny percentage of UDRP cases and the UDRP itself already codifies free speech as a defence - numerous cases have found in favour of legitimate free speech). Brand owners’ views on the “effectiveness” of core aspects of (e.g.) Registrars’ business would not likely be given equal weight as that of the CPH. So effectiveness for whom?
Analysis of duration/fees
* OK but – what’s the goal? Who will tell you the fees for litigation – so how can you analyse that? It’s case-by-case/jurisdiction relevant, surely? Do we include the $$$$ paid by brands to develop and pursue a UDRP with the 0.0001$ paid by a squatter? What is this supposed to show, how would you get those figures and from whom?
“Overview of whether the UDRP is impartial/fair for trademark holders and domain name registrants”
* This is the only part of the slide that refers to fairness for TM holders – the rest seems weighted to assumptions that they are somehow the ones being “unfair”.
* What about fairness for users and consumers? Should we not protect them from being - deliberately - duped/defrauded?
* What is the cost on both sides? How much does it cost (monitoring the entire DNS = money + resources; + duped consumers + reputational damage; x repeat offenders x false registrant details + unknown (redacted…) details; vs registering one DN & running away?
“Forum Shopping - Analysis of complaint win percentage for each UDRP provider”
* This is rather loaded – again, an assumption that TM owners – alone – must be in the wrong. Analyses of this conducted by WIPO also show that the stats on success rates across main providers were remarkably similar.
“Reverse Domain Name Hijacking (RDNH)”
* This is about 0.5% of all cases. Of course it should be addressed, but let’s not make it bigger in theory than it is in reality.
“UDRP Goal: Addressing Abuse”
* Again – the goal is addressing cybersquatting, i.e. abusive registrations. Not all abuse. This is an important distinction.
“Analysis of yearly panel decisions published by each provider on their website (e.g., transfer/cancellation rates, complaints rejected, split decisions)”
* So stats only with no reasons why the cases went that way?
“Summary of UDRP-related data from ICANN org departments”
* This will be a very incomplete picture as most cases do not need to be escalated to ICANN.
* If we include this, should we not also look at assistance (filing tips, fees etc.) to micro, small and medium-sized companies who face cybersquatting but simply cannot afford the $$$$ to take a UDRP forward? Again, why are we looking at only one side of the coin?
All of this strikes me as a waste of staff’s scarce resources when we have a massive dataset already - the WIPO Jurisprudential Overview and its (online) stats page: would it not make more sense to start there and ask the other providers to add their data?
With this timeline, I really don’t see how staff can (although I know they will do their best to do so!) produce something comprehensive and thus useful in practice.
I return to what I said in July: we all know we need a better Charter and if we want it to be built on reality and experience, I can’t see why we’re not utilising this Bylaws provision:
Section 13.1. EXTERNAL EXPERT ADVICE
(a) Purpose. The purpose of seeking external expert advice is to allow the policy-development process within ICANN to take advantage of existing expertise that resides in the public or private sector but outside of ICANN. In those cases where there are relevant public bodies with expertise, or where access to private expertise could be helpful, the Board and constituent bodies should be encouraged to seek advice from such expert bodies or individuals.
We have WIPO (who wrote it in the first place and do it every single day). They’re global, independent, and expert. We have the other providers. Should we not be asking the experts for what actually happens and asking them to produce this PSR, or at the very least have a working group of them and staff?
Looking forward to discussing this later,
From: council <council-bounces at gnso.icann.org<mailto:council-bounces at gnso.icann.org>> On Behalf Of Julie Hedlund via council
Sent: Tuesday, 14 September 2021 02:50
To: council at gnso.icann.org<mailto:council at gnso.icann.org>
Subject: [council] Resend Re: FOR COUNCIL DISCUSSION: Agenda Item 5 -- GNSO Update on the Framework for the Policy Status Report on the UDRP
Please see the corrected attached version of the slides per below.
From: council <council-bounces at gnso.icann.org<mailto:council-bounces at gnso.icann.org>> on behalf of Julie Hedlund via council <council at gnso.icann.org<mailto:council at gnso.icann.org>>
Reply-To: Julie Hedlund <julie.hedlund at icann.org<mailto:julie.hedlund at icann.org>>
Date: Monday, September 13, 2021 at 6:39 PM
To: "council at gnso.icann.org<mailto:council at gnso.icann.org>" <council at gnso.icann.org<mailto:council at gnso.icann.org>>
Subject: [council] FOR COUNCIL DISCUSSION: Agenda Item 5 -- GNSO Update on the Framework for the Policy Status Report on the UDRP
Dear GNSO Councilors,
Per the following item from the agenda below, please see the attached slides for your consideration.
Item 5: COUNCIL DISCUSSION - GDS Update on the Framework for the Policy Status Report Framework on the UDRP (30 minutes)
Julie Hedlund, Policy Director
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