3.3 Task Force for Dispute Resolution Policy (DRP-TF) Has been Launced: - ICANN's Uniform Dispute Resolution Policy and its Attempt to Localization for Japan -

(JP Domain Name Working Group)

ICANN and Uniform Dispute Resolution Policy

In accordance with a White Paper issued by the United States Department of Commerce in June 1998, the ICANN (Internet Corporation for Assigned Names and Numbers) was approved in autumn, 1998.

Also, the White Paper requested the WIPO (World Intellectual Property Organization) to prepare a series of recommendations on the issue of resolving disputes over trademarks and domain names. At this request, the WIPO commenced the Internet Domain Name Process in July 1998.

After receiving comments for our three requests and as a result of public hearing held around the world, WIPO submitted a Final Report to ICANN in April 1999.

The ICANN Board of Trustees basically accepted the WIPO Final Report at the Berlin meeting held on May 27, and requested the DNSO (Domain Name Support Organization) to study and make recommendations with regard to "Chapter 3: Resolving Conflicts In a Multi-jurisdictional World With a Global Medium".

Additionally, the Board of Trustees endorsed principles that gTLD registrars who register .com, .net, .org top-level domains should support single uniform dispute resolution policy and requested the testbed registrars to make a Model Dispute Resolution Policy.

At the ICANN Board meeting held on August 26 in Santiago, the recommendation regarding an adoption the Uniform Dispute Resolution Policy submitted from DNSO were accepted. In addition, based on the Model Dispute Resolution Policy submitted by the testbed registrars, resolution was made to prepare "Implementation of the policy" documents within 45 days.

And then the ICANN president was given the authority to provisionally certify a multiple number of "administrative dispute resolution policy providers".

The implementation documents were drafted by a sub-committee appointed by the ICANN President and was submitted to the ICANN Board of Trustees after a process of accepting public comments.

The Board of Trustees approved the draft at a meeting on October 24, prior to the Los Angeles meeting scheduled to be held at the beginning of November, and requested the ICANN President to implement it.

As a result, the schedule was publicized and in the schedule, those registrars who had registered by November 4 would adopt the uniform dispute resolution policy as of December 1, and NSI would adopt the policy as of January 3 2000.

It was reported that six organizations are announcing themselves as administrative-dispute-resolution service providers at the Los Angeles meeting. (Two of the six are the WIPO Arbitration Center and DISPUTE.ORG).

Some of them are expected to begin its operation as of December 1 with provisional certification.

Policy and Rules for Dispute Resolution

The implementation documents approved by the ICANN Board of Trustees generally consist of two documents.

One is the "Uniform Domain Name Dispute Resolution Policy", and the other is the "Rules for Uniform Domain Name Dispute Resolution Policy".

The first one (Policy) should be incorporated into the registration rules of "ICANN-accredited registrars". The second one (Rules) is to be applied for the dispute resolution procedures followed by administrative-dispute-resolution providers. (In addition to these two documents, every provider has an document "Supplemental Rules of the Provider").

There is a dispute resolution policy used by NSI for gTLD. This policy is characterized by fomal decision based on "prior existence of trademark registration". It is said that the policy completely ignores the infringment of pre-existing trademark right.

Also, another dispute resolution policy, discussed during the "gTLD- MoU" movement several years ago, took an approach to determine whether or not a contested domain name infringes the trademark rights of a third party. Establishing the criteria for its judgement took a great amount of time.

The dispute resolution policy adopted by ICANN differs from either mentioned above approaches.

The main feature of the dispute resolution policy adopted by ICANN is that those dispute resulting from "abusive registration & use of domain names" shall be resolved in accordance with a "Mandatory Administrative Dispute Resolution Procedure" stipulated in the policy. Other domain name disputes (e.g. when both parties have legitimate rights) shall be resolved through conventional ways such as trials and arbitration.

It is difficult to determine whether some registration and use of domain names have been made in bad faith. The policy stipulates the following as evidences of malicious registration and use of a domain name:

1. a situation when the registration was made intending to sell, rent, transfer the domain name to the owner competitor of the trademark / service mark, for a value exceeding the actual amount required for the registration
2. a situation when the registration was made in order to prevent the owner from obtaining the trademark
3. a situation when the registration was made to interfere the business of a competitor
4. a situation when the registration was made to attract internet users to the domain name holders website for commercial gain, by creating confusion with the trademark / service mark.

In terms of registration procedures, the policy has several characteristics including:

- Non-involvement of the registrar (non-participation in the procedures, immunity from any responsibilities for the result)
- Mandatory (party who has registered the domain name via a registrar who adopts the policy must submit to the dispute resolution procedure executed by a dispute resolution service provider if a third party has made a claim)
- Unbinding (complaint can be submitted to a court during or after the completion of procedures by a dispute resolution service provider)
- Speedy (In principle, all dispute resolution processes will be performed online; the time from the commencement of the procedures until the result is reflected on DNS listings will take approx. 55 days)
- Low cost (approx. US $1,000 if one panelist is involved)

An administrative-dispute-resolution provider establishes an "Administrative Panel" consisting of one to three panelists responsible for dispute resolution and conducts the dispute resolution procedures. The flow is indicated as below.

(Hereafter, an notion "within _ days" indicates the number of days after the previous step was completed).

1. The party who makes a claim chooses a provider from ICANN-accredited providers list, sends a statement of objection (stating that the domain name in guestion is registered and used maliciously), and pays a fee.
2. The provider sends the statement to the domain name registrant within 3 days.
3. The domain name registrant sends a defense as a reply to the provider (stating the domain name registration and its use is legitimate).
4. The provider selects panelists within 5 days. (Basically a single panelist. It is possible to have three panelists if either party makes a request. In such case, both party select three candidates and the provider selects one from each side. The provider appoints 5 candidates and selects the final panelist from them by hearing opinions of both parties.
5. The panel concludes their examination within 14 days and informs the provider of their decision.
6. The provider informs both parties, the domain name registrant of the domain, and ICANN about the result within 3 days.
7. The registrar waits 10 business days before making any DNS changes due to the result.

(However, if the result is "deletion or transfer of the domain name", and the domain name registrant apeals to a court, the registrar will not make changes in the DNS unless both parties agree or court issues an appropriate decision)

In principle,the administrative-dispute-resolution provider charges the party who makes a claim, but if the domain registrant requests three panelists, both party pay half of the expenses.

Also, in principle, the language to be used in the proceeding is the language used in the registration contract between the registrar and the domain name registrant.

Localization of ICANN's Dispute Resolution Policy to Japan and DRP-TF

Meanwhile looking at the situation in Japan, some cases where a domain name infringes the trademark have been found, but there is less movement to bring cases to a court for resolution. From JPNIC's point of view, the problem does not seems to be elicted.

There may be few disputes in Japan because of basic JPNIC rules that restricts each organization to regist just one domain name, and prohibits to transfer the registered domain names to other organizations. However, in the rapid expansion of the use of the Internet in Japanese society, more and more people demand that such restriction should be abolished, and that domain name registration should be more flexible.

JPNIC has been studying deregulation of domain name transfer and introduction of the general SLD (2nd level domain), which will make it possible for an organization to register more than one domain. To implement these new domain registration scheme, we believe that it is necessary to prevent disputes between domain names and intellectual property rights (especially trademark rights), and to formulate a resolution procedure in case of dispute occurence.

Additionally, if we consider the characteristics of the Internet, a medium that extends beyond national borders, it is difficult to work within the local framework of Japan merely because our purview is the JP domain. We should adequately coordinate with the dispute resolution policy being progressed by ICANN.

With this in mind, JPNIC's Domain Name Working Group (DOM-WG) has decided to form a "Domain Name Dispute Resolution Task Force (DRP-TF)" consisting mainly of legal experts in intellectual property rights and unfair competition and existing mediating and arbitrating bodies/ personnel.

This Task Force will perform its tasks with the main aim of localizing the "Uniform Domain Name Dispute Resolution Policy" and "Rules for Uniform Domain Name Dispute Resolution Policy" formulated by ICANN while carefully considering the Japanese legal arbitration systems and arbitration systems.

A result produced by the Task Force will be submitted to the JPNIC Steering Committee as a recommendation, then publicized in order to receive comments from the public.

Conclusion: Issues after DRP-TF

Discussions at ICANN have now moved to the issue of how to deal with "exception of well-known trademarks from domain name registrations" from domain name registrations.

The main points of the discussions are as follows.
(1)Is it necessary to exclude well-known trademarks?
(2)What is the definition of a as well trademark?
(3)Should a domain name including part of a well-known trademark (in the form of sub-string) be excluded?

Prereguisit for the of new gTLDs, coming after .com, .net, .org, is a settlement of well-known trademark issues.

Situation in Japan is similar, in other words, it is necessary to solve the issues first to introduce new general SLDs.