The Hon Neil Brown QC
This is a study of 358 cases that have been arbitrated under the Uniform Domain Name Dispute Resolution Policy (the UDRP). The study is designed with several objectives in view.
1. To draw attention to the deficiencies process under the UDRP. This process requires the provider of the arbitration services in any individual case to :
(i) identify procedural or administrative deficiencies in the drawing up of Complaints;
(ii) bring them to the notice of the Complainant (or their lawyers);
(iii) require them to be rectified;
(iv) ensure the deficiencies have been rectified before the case is allowed to proceed.
2. To concentrate of the Rules under the UDRP and other administrative requirements which are often overlooked in place of the admittedly substantive and more interesting issues that arise on the merits of these proceedings.
3. To help parties and their legal advisers to comply with the Rules and avoid the inevitable delays and embarrassment that comes from non-compliance with the Rules.
HOW THE DEFICENCIES PROCESS WORKS
The UDRP and the Rules made under it, include a unique procedure under which the Complainant or its attorney files the Complaint with the provider of the dispute resolution it has chosen to manage the proceeding. The Complainant has a choice of which provider it will use. It is not obliged to use any provider in particular, but may use any one of the 5 providers that have been accredited by ICANN.
The provider of choice will have the task of notifying the Respondent ( the person or company in whose name the domain name is registered, i.e. the domain name holder), that the claim for the domain name is being made against it and delivering with that notice a copy of the Complaint together with the evidence set out in the annexes to the Complaint.
But before doing that, the provider will want to make sure that the Complaint is in order and that it is ready to proceed. This is not a judgment on the merits of the case; it is simply the beginning of the case and it is designed to ensure that the case is procedurally in order before it goes forward to an arbitrator or panelist to make the judgment about the case on its merits. So, before it sends the Complaint off to the Respondent, the provider will examine it to see if it is in order.
I can assure you that the providers take this function seriously and subject every complaint to a thorough examination. I can also say that the providers are right when they draw attention to deficiencies.
This role of the provider to see if there are administrative deficiencies in the claim being filed is set out in Rule 4 of the Rules made under the ICANN policy (“the Rules”). The precise terms of the Rule are as follows:
Rule 4 (d):
“(d) If the Provider finds the complaint to be administratively deficient, it shall promptly notify the Complainant and the Respondent of the nature of the deficiencies identified. The Complainant shall have five (5) calendar days within which to correct any such deficiencies, after which the administrative proceeding will be deemed withdrawn without prejudice to submission of a different complaint by Complainant.”
Notice that Responses are not subject to the deficiencies process.
WHAT ARE DEFICIENCIES?
Most deficiencies will be statements in the Complaint that are inconsistent with the Policy and the Rules. It is conceivable that a deficiency could exist that is not a breach of the Policy or the Rules, but some other deficiency. But it would not be a deficiency if the provider looked over the Complaint and concluded that the chances of the Complainant winning were slim; that is a matter on the merits and the substance of the case which is not what the deficiencies procedure is about. What is clear is that deficiencies relate to procedures only.
What the provider is looking for, then, is whether the Complainant has complied with the Policy, which sets out the substantive domain name law and also with the Rules, which deal with procedural matters.
WHAT HAPPENS WHEN THE PROVIDER FINDS AN ADMINISTRATIVE DEFICIENCY ?
If the provider finds that the complaint is “administratively deficient”, it notifies the Complainant and the Respondent of the deficiencies it has found. It gives the Complainant 5 calendar days to correct the deficiencies. If the Complainant does not rectify the deficiencies, the Complaint is deemed to be withdrawn, although the Complainant may file a new or “different” complaint.
It seems from the way the Rules are drawn that:
(i) the Respondent , as well as the Complainant, is given notice of the deficiencies that the Complainant has committed;
(ii) the Respondent is not, however, being given an opportunity to make a submission on the deficiencies or whether there are other deficiencies the provider may not have noticed; it could, however, raid them in argument during the case;
(iii) the Complainant is not given an opportunity to argue that the alleged deficiencies are not deficiencies at all, or that they are trifling or that they have been rectified, when the provider decides that they have not. The provider alone decides if the deficiencies have been rectified, although presumably it should exercise that discretion judicially.
My experience is that the providers only raise deficiencies that are of substance and which the provider believes on good grounds will hamper the proper consideration of the case if they are not rectified. This is therefore an important step in the arbitration process and it should be treated seriously.
DEFICIENCIES THAT ARE MADE
What types of deficiencies are raised?
This is a study of deficiencies that are often raised, some of them frequently and some of them rarely. But all of the deficiencies mentioned here have been raised at least once and in the number that is given beside each item. Thus, as there were 358 cases examined and if a particular deficiency was raised by a provider in 3 cases, the figure given would be 3/358.
This is therefore not a study of the proportion of all cases where deficiencies have occurred. In some cases I have arbitrated, there have been no efficiencies. The study is a study of 358 cases where at least one deficiency has occurred, to see what the more frequently occurring deficiencies are and how frequently, within the parameters of the 358 cases, they occur.
We will take them in a logical order by reference generally to the stages in the proceeding when they occurred. Sometimes we have described the particular deficiency colloquially, rather than by a convoluted description with copious references to the Rules. The number of times the particular deficiency occurred is placed after the item.
DEFICIENCIES THAT HAVE BEEN IDENTIFIED BY PROVIDERS
SPELL ICANN CORRECTLY
In one case only, ICANN was spelt incorrectly as ICAAN. It might seem trivial, but by itself it can hold up the process of a whole case.
DESCRIBE THE DOMAIN NAME CORRECTLY
The domain name at issue must be specified. And it must appear that it is registered in name of the Respondent.
In one case, the domain name was described incorrectly by preceding it with “http://” in the Complaint heading. In 8 cases, the domain name was described incorrectly by preceding it with “www”. This latter deficiency is frequently made, even by practitioners in the field, but it is not always notified as a deficiency by a provider. A domain name does not start with the letters “www”. ICANN’s domain name, for example is not www.icann.org, but <icann.org>.
ICANN itself has made a request that “www” not be included in domain names.
There was I case where two domain names had to be removed from the claim as they were already registered to the Complainant.
One further case where the domain name was changed in the Complaint.
THE COMPLAINT SHOULD BE IN A SEPARATE FILE
The Complaint itself should be in a separate file from the Exhibits to the Complaint, i.e. the evidence in support of the claim, such as a certificate of registration of the trademark relied on by the Complainant. The Complaint is where the Complainant sets out its case or submission and it is that which must be in a separate file. The Complaint itself may of course cite or refer to an exhibit that is in a separate file.
The applicable rule is Rule 3(b)(xiv).
The word “file” is of course used here in the computer sense, i.e. a collection of related data or program records stored on some input/output or auxiliary storage medium.
The evidence must be included, particularly evidence of TM registration.
WORD LIMIT AND FILE SIZE
Parties should refer to limits and other formal matters set out in the Supplemental Rules of the provider with which the Complaint has been filed.
ANNEX THE ICANN POLICY TO THE COMPLAINT
Pursuant to ICANN’s UDRP Rule 3(b)(xv), the Complaint should have a copy of the UDRP Policy annexed to it. This is important, as the Policy is the basis for the Panel having jurisdiction over the dispute being referred to it. If the Policy were not in evidence, the Panel would have no jurisdiction or power. The panel acquires its jurisdiction by the domain name holder (the registrant) being bound by the UDRP Policy (to which it agreed to be bound when it bought the domain name). Thus, as the Complainant needs to assert jurisdiction over the domain name holder, an essential part of its evidence to mount that case, is the UDRP Policy, so it should be annexed as an exhibit to the Complaint as evidence.
IS THE UDRP THE RIGHT POLICY TO USE?
Although only 4 cases were identified where this deficiency occurred, you may rest assured that from time to time cases appear where the Complainant has sought to rely on the UDRP where it is not the correct policy. For instance, the UDRP cannot confer jurisdiction on a panel to arbitrate on a .us domain name, because the UDRP is not the dispute resolution policy for those domain names and the registrant of a .us domain name has never agreed to be bound by the UDRP procedure. Again, if the Complainant is seeking to claim two domain names in the one proceeding ( which it is entitled to do) and one of them is a .com domain name, but the other is a .us or .com.au domain name, it is incorrect to rely on the UDRP in the claim for the .us domain name.
In the case of the latter domain name, the .us one, the complaint will have to be withdrawn and a correct procedure commenced, citing the correct policy for .us disputes.
The provider will probably invite the Complainant to sever the invalid claim and proceed with the valid claim. It would seem that the provider would not even have power to require the Complainant to delete references to the UDRP for the .us domain name.
THE UDRP RULES
CITE THE UDRP RULES CORRECTLY
The study suggests that parties and their advisers are aware that the Rules must be referred to, to confirm the jurisdiction of the Panel to apply the Policy and ensure that the procedural requirements of the Rules are also applied. But some parties and their advisers cite the wrong edition of the Rules and do not refer to the current, prevailing Rules that were instituted from July 31, 2015. It is these and only these Rules that have force and they should be correctly cited.
The Complaint should refer to the “Rules for Uniform Domain Name Dispute Resolution Policy” that were updated and effective from July 31, 2015.
This deficiency has occurred several times in the past when new versions of the Rules have been introduced. It is better to go to the ICANN website before filing a new complaint to note the current edition of the Rules so that it may be cited correctly in the Complaint. It will save a lot of bother.
LANGUAGE OF THE PROCEEDING
As the internet itself and the international nature of the proceedings necessarily involve the use of international languages, it is not surprising that issues of the language in which the proceeding should be conducted often arise. Is it to be the Complainant’s language or is to be English, as the widely adopted language of the internet or some other language and, if so, why? This uncertainty has given rise to many deficiencies in proceedings.
The answer, initially, is to be found in Rule 11 which provides that the language of the proceeding is to be the language of the Registration Agreement. The Registration Agreement is the contract by which an individual acquires a domain name. It sets out the rights and obligations of the domain name holder and the registrar, which is the party brokering the acquisition. The Registration Agreement must include the UDRP. So Rule 11 provides in effect that when there is a dispute over a domain name and it is to be adjudicated by means of the UDRP, the proceeding will be conducted in the same language as the language of the Registration Agreement.
There is, however, an exception or, really, there are several exceptions. The first one is if the parties agree otherwise. Thus, the Registration Agreement may be in the Chinese language because it was a Chinese registrar, accredited by ICANN, who sold the domain name to the registrant who now becomes the Respondent in the proceeding. The presumption would be that the proceeding would be conducted in Chinese. The parties may agree, however, as Rule 11 says they may, that the proceeding will be conducted not in Chinese but in English.
The other exception is that the Registration Agreement, although itself in Chinese, may say that any dispute proceeding will be conducted not in Chinese, but in English or any other language.
All of this is subject to another “exception”, which is that the Panel has an over-riding discretion to order that the proceeding will be conducted in a language other that the language of the Registration Agreement. That discretion must be exercised judicially, by having regard to “the circumstances of the administrative proceeding.”
Note that the discretion is to be exercised by “the Panel” and not by the provider.
With that background, what are the deficiency issues that have been noticed?
If the Registration Agreement is in, say Chinese, the proceeding will prima facie be in Chinese. One provider takes the view that, as the proceeding will be in Chinese, that requirement is met if the Complaint itself and the Table of Contents to the annexures (exhibits) are in Chinese. That standard is often not reached and 24/358 cases had that deficiency; so the proceeding had to be delayed until the Complaint and the Table of Contents were translated into Chinese. It would be wise to follow that practice to avoid a finding of a deficiency, even if it is not persuasive that merely by having the Complaint and Index translated into Chinese, the proceeding as a whole can be said to be in Chinese, including the decision and , say, directional orders and responses.
Also, when that approach is being taken, the language of the proceeding is the language of the Registration Agreement and it is being met by translating the Complainant and Index into that language, in our example Chinese, the Complaint must carry the signature of the Complainant or its authorized representative. In practical terms this will mean the original Complaint (in English) and the Chinese translated version. It will be a deficiency if the Complaint and the translated version are not signed.
Likewise, the Table of Contents must be translated into, say, Chinese as the language of the proceeding if that has not already been done.
The provider will advise the Complainant of this, but the Written Notice will also have to be translated into the Language of the proceeding and served.
The provider will probably present it to the Complainant that it has the option of keeping to the language of the Registration Agreement and as a part of doing so, translating the Complaint, Index and Written Notice into that language, OR opening a case to persuade the Panel (not the provider) as to why the language of the proceeding should not be the language of the Registration Agreement, but another language, probably English. This often happens when the language of the Registration Agreement and hence the language of the proceeding is Chinese, but the Complainant wants the whole case to be conducted in its own language, English, because the Respondent must be presumed to be familiar with the English language. So the Complainant should bring forward any evidence to show the Respondent has facility in the English language, such as that correspondence between the parties has been in English
It seems that even where such a case is successful, the Written Notice will still be in the language of the Registration Agreement.
Note also Rule 11(b) by which the Panel may order the translation into the language of the proceeding of any document not in that language. This may happen where it is the Respondent who has requested the proceeding be conducted in the language of the Registration Agreement or the Panel on its own volition so orders. One would think that an adviser to the complainant would automatically translate documents into the language presumably used by the panelists, simply to help them understand the case.
COMPLAINANT-DESCRIBE THE COMPLAINANT CORRECTLY
12/358 cases, where the Complainant was wrongly described.
In some cases the Complainant was wrongly or inconsistently described because it was referred to in various ways in different parts of the Complaint or where the description of the Complainant was different from its description as the trademark owner. If the Complainant is described as an LLC company in one part of the Complaint, but as a company that is “doing business as” elsewhere, a deficiency may be noted.
The Complainant must be described consistently including in the “Complainant Information” section.
In 1 case, the Complainant’s authorized representative’s address appeared incomplete in Section 3(b) of the Complaint. A rectification was required.
In several other cases, the Complainant has been wrongly described or its name misspelled or there is confusion as to which of several companies holds the trademark relied on.
Note that the contact details of the Complainant and its representative must be included.
A preferred method of communication must also be included.
The issue is generated by Paragraph 3(a) of the Rules, which provides that “[a]ny person or entity may initiate an administrative proceeding by submitting a complaint.” So the complainant must be a person, i.e. one person.
But the party initiating a complaint may be 2 or more persons claiming rights in the domain name if there is sufficient nexus between them or if, it might be said, if they have a common dispute with the Respondent and it is efficient to do so . This has been embodied by the FORUM (National Arbitration Forum) in its Supplemental Rule 1(e) which defines “The Party Initiating a Complaint Concerning a Domain Name Registration” as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed in the Complaint.”. This shows that 2 or more persons with the requisite nexus may be “the party initiating the proceeding”.
But a deficiency was noted in one case where it appeared there was a relationship between several entities said to constitute the Complainant. That relationship must be explained and the relationship of those entities to the trademarks relied on.
Alternatively, the Complaint could be amended to specify a single Complainant.
Note that the consolidation of separate disputes is governed by Paragraph 4f of the Policy. This presumably goes as far as disputes concerning different domain names, but between the same complainant and the same respondent.
RESPONDENT-DESCRIBE THE RESPONDENT CORRECTLY
The name and contact details of the Respondent must be given.
Frequent deficiencies occur in describing the Respondent. This apparently comes from inadequate information in the WHOIS examined by the Complainant’s advisers before the Complaint is filed. Of course, the Respondent may not have provided correct information when the domain name was acquired and registered, but the important thing is to ensure that the information that the Respondent gave about itself is accurately stated in the Complaint.
The correct information must be taken from the public WHOIS register.
Deficiencies also occur where the correct name of the Respondent does not appear in both the English and any other-language translated Complaint.
The correct information must also appear consistently throughout the whole of the Complaint.
Other frequent deficiencies occur in providing particulars of the Respondent’s contact information and those of its authorized representative. In the course of these deficiencies being noted, mere typographical errors were also noted; but they were still deficiencies. The location of the Respondent, in particular, is frequently incorrect.
An abbreviation of a country’s name should not be changed from what is in the WHOIS.
In general, be sure to check that the Respondent’s name, address, email address and telephone and fax numbers are correct and that there are no typographical errors in the ZIP code.
Sometimes, a provider will ask for correct information on the Respondent to be included in the Complaint, and will invite the Complainant to use the registrar’s verification email to provide the information because the public whois record has not listed the Registrant’s name or complete address.
We appreciate that a lot of this sounds trivial. But it does not matter whether any of us think it is trivial or not; the fact is that in each case, the provider has issued a Deficiency Notice which has to be complied with or the case will not proceed.
Sometimes a particular dispute resolution policy other than the UDRP, for example the .us Policy may require specific details to be included. Thus, the following was notified as a deficiency in a case concerning a .us domain name: “Please amend Section 9(d) of Complaint to specify “(d) the Department of Commerce, as well as their directors, officers, employees, and agents.” (usDRP Rule 3(viii))
The deficiency here arises from including more than 1 Respondent in the Complaint, usually when the claim is expressed to relate to more than 1 domain name. Rule 3(c) provides that the Complaint may relate to more than I domain name, but they must be registered by the same domain-name holder, meaning that there is more than 1 Respondent. Hence it is a deficiency if there is more than 1 domain name in the Complaint, but different domain name holders.
The provider is entitled to ask the Complainant to remove one or more of the Respondents and the corresponding domain name or names from the Complaint or it will not be allowed to proceed.
But the Complainant may also wish to argue to the Panel that the case should proceed with more than 1 Respondent. This can be argued by putting it that the more than one Respondents are in reality the same person and therefore that they come within the words “the same domain-name holder” in Rule 3 (c). This argument may be advanced by relying on the WHOIS which might show that both or all the domain names are controlled by the same registrant because of their addresses or other contact information being the same, or because all of the domain names were registered on the same day, and that that registrant should be the sole Respondent, making the Complaint a valid one.
If the case has been commenced in the FORUM (National Arbitration Forum) there is a specific Forum Supplementary rule on this, Rule 4(e), requiring an additional fee of $130. In more than 11 cases this requirement was posted as a deficiency.
SPECIFICALLY TO CHANGE THE ADDRESS OF THE RESPONDENT TAKEN FROM THE WHOIS
It is important to give the correct details of the Registrar through whom the domain name was acquired or bought. This is important for at least two reasons, as well as the fact that the Rules require this information to be included in the Complaint. First, it may be needed when the Complainant comes to choose the location of the Mutual Jurisdiction, one of the options open to a Complainant being the location of the Registrar’s place of business, when the Complainant wishes to submit to that jurisdiction in case the Respondent brings court proceedings to set aside a transfer. The second reason is the all important process of enforcing a decision for transfer made by the Panel; the provider and the Complainant will need to know the name and whereabouts of the Registrar to whom the order for transfer will be addressed.
Note that sometimes the correct information is required to rectify a deficiency in section 4(b) of the Complainant form (the requirement to include this information in the Complaint) and sometimes for selecting the mutual jurisdiction.
Providing correct information on the registrar of the domain name in the Complaint is important for the purpose of submitting to the jurisdiction of the courts in one Mutual Jurisdiction, an express requirement of Rule 3(b) (xiii). The Complaint must say that if the decision in the proceeding is challenged the Complainant will submit to the jurisdiction of the courts in at least one Mutual Jurisdiction, defined as the principal office of the Registrar or the address of the domain name holder. See the definition of Mutual Jurisdiction in the Rules.
In at least one case, the deficiency was that there were two Registrars and only one had been listed.
THE GROUNDS OF THE COMPLAINT
It might seem obvious, but it should be emphasised that the Complaint must describe the ground relied on. Complainants and their advisers sometimes omit one or more of the grounds under the UDRP and it should be remembered they all 3 must be alleged and proved. So at least something should be said about each of the 3 grounds.
The Rule concerned, Rule 3(b) (ix) goes further and requires, “in particular”, that the Complaint must describe each of the 3 elements will be made out, so some degree of particularity must be given.
THREE PERSON PANELS
The Complaint should state if the Complainant wants a 1 or 3 person panel to hear the case.
Under Rule 3 (b) (iv), the Complaint must provide the names and contact information of 3 panelists from whom one will be selected if a three person panel has been elected. These candidates nominated by the Complainant may be chosen from any ICANN approved provider’s list of potential panelists (.i.e. not solely from the list of the provider with whom the Complainant has chosen to file the Complaint, but from the list of that provider or the list of another approved provider). Presumably, also, all three candidates need not necessarily be taken from the panel list of the one provider.
MAY A RESPONDENT CHANGE ITS AGREEMENT TO FOR A ONE-PERSON PANEL?
Apparently yes, in at least 1/358 cases.
In the case in question, the Respondent originally agreed to the appointment of a single panelist, but on filing the Response, it sought permission from the provider to select instead a three-member panel. The Complainant objected to this, but the provider agreed to the Respondent’s request for a three-member panel, on the grounds that no panel had yet been appointed and no time in the proceeding had been lost.
ADD TABLE OF CONTENTS OR ANNEXES TO THE COMPLAINT
This is a frequent mistake and a very clear deficiency as the requirement is provided for in Rule 3(b)(xv). The rule should be complied with and while complying with it, it is wise to try to make the table of contents as user friendly as possible so that is acts as a useful guide to panellists wanting to locate particular exhibits. Thus, it is not very helpful to submit an index or table of contents that lists exhibits in a manner like this as:
“Item 1. Annex A.
Item 2. Annex B”
It is more valuable to list the exhibits and state what they are, in a manner like:
“Item 1. Annex A- Copy of Complainant’s trademarks.
Item 2. Annex B. Screenshot of Respondent’s website “.