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Prospective Procedural Amendments to UDRP Rules

See Anthology of Commentaries — 2014

ICANN implemented the Uniform Domain Name Dispute Resolution Policy (UDRP) in October 1999 together with a set of rules (Rules) establishing procedural requirements such as when and how the administrative proceedings are to commence and the manner in which panelists are to conduct them. There has been some minor tinkering with the Rules but no substantive changes since implementation. On November 17, 2014 ICANN announced the implementation of amended rules for the UDRP, effective July 1, 2015. The amendments can be regarded as major in at least one regard but not startling given they are forecast in provisions incorporated in other procedures than the UDRP.

As the Rules presently read they dictate that complainant shall transmit a copy of the complaint to respondent before the provider actually reviews it for compliance. The Rules do not use the word “service” for commencing the administrative proceedings—the preferred expressions are “transmit” and “forward”—but it is currently the provider’s transmittal of the complaint that actually commences the twenty day time for respondent to respond to the complaint. Commencement is embodied in Rule 4(c): “The date of commencement of the administrative proceeding shall be the date on which the Provider completes its responsibilities under Paragraph 2(a) in connection with forwarding the Complaint to the Respondent.”

The hiatus between notification and “service” creates a problem (which Panels were quick to recognize although there are not a great number of cases in which it has actually occurred) is to give respondents an opportunity to thwart complainants by selling or transferring domain names to other holders, changing registrars or hiding their identify. Rule 3 presently reads:

(b) The complaint shall be submitted in hard copy and (except to the extent not available for annexes) in electronic form and shall:
(i) Request that the complaint be submitted for decision in accordance with the Policy and these Rules;
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(xii) State that a copy of the complaint, together with the cover sheet as prescribed by the Provider’s Supplemental Rules, has been sent or transmitted to the Respondent (domain-name holder), in accordance with Paragraph 2(b);

The amended rules provide that UDRP complainants no longer have to transmit a copy of the complaint to the respondent, which is more in keeping with service requirements that an action is commenced by plaintiff’s service of the complaint on the defendant. This in combination with the most important of the amendments, locking the domain name upon receipt of a complaint solves the cyberflight problem.

Amended Rule 4(b) requires “registrars to lock the disputed domain name(s) within two (2) business days of receiving a UDRP complaint from a UDRP provider.” A similar provision is already in place in Rule 4 of the Uniform Rapid Suspension System (URS). The procedure reads at 4.1: “Within 24 hours of receipt of the Notice of Complaint from the URS Provider, the Registry Operator shall ‘lock’ the domain, meaning the registry shall restrict all changes to the registration data, including transfer and deletion of the domain names, but the name will continue to resolve. The Registry Operator will notify the URS Provider immediately upon locking the domain name (”Notice of Lock”).”

An illustration of the problem is noted in The Jennifer Lopez Foundation v. Jeremiah Tieman, Jennifer Lopez Net, Jennifer Lopez, Vaca Systems LLC., D2009-0057 (WIPO March 24, 2009) (<jenniferlopez.net> and jenniferlopez.org) where the Panel found foul intent when respondent resorted to a privacy service after Complainant filed its complaint. These manipulations are “strongly evocative of cyberflight, and appear to have been calculated to obstruct or delay this proceeding under the Policy.” A precursor of the lock was in place before the UDRP. See for example Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 269 (4th Cir. 2001) (commenced prior to implementation of the UDRP. At that time disputes could be brought to the sole registrar of domain names which was Network Solutions, Inc. VW invoked the procedures under the Network Solutions process and Network Solutions locked the domain name <vw.net>. To unfreeze the domain name Virtual Works moved for declaratory judgment under the ACPA that its registration was legal. Judgment entered in favor of VW.)

The other procedural amendments to the Rules are not in the same league as service on the respondent and locking the domain name. They are

Rule 4(e) provides that when a UDRP provider informs the registrar that the UDRP proceeding has been withdrawn or dismissed, the registrar must remove the lock within one (1) business day of receiving notice;
Rule 5(b) provides that respondents may request an additional four (4) calendar days to respond to a complaint and UDRP providers will automatically grant the extension, if requested;
Rule 16(a) provides that registrars must notify the parties, the provider and ICANN of the date for implementation of the decision within three (3) business days of receiving the decision from the provider; and
Rule 17 outlines a new procedure to be used in cases that are settled between parties outside the UDRP case.

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