To give credit where it is due, ICANN has been very generous is setting up a new range of dispute resolution processes to handle disputes arising under the new generic top level domains or gTLDs. It is a broad range of processes, starting with objections that specific TLDs should not be allowed at all. But assuming all goes well and a new gTLD is approved, or delegated as it is called , domain names will be issued under those TLDs and disputes will inevitably arise about those domain names and also about the way the registry in any given case conducts its registry. It is in this area that an even more extensive range of dispute resolution processes has been established.
The one that has been the subject of most discussion so far is the Uniform Rapid Suspension System, designed to be a fact track process, quicker than the UDRP and designed to get suspension of a domain name and an infringing website taken down as quickly as possible, without taking the time of a UDRP complaint and of course faster than litigation.
They are early days so far and, although there have been a few cases brought and decided under the URS, it is already apparent that the small print of the process must be read and considered in every proceeding to avoid problems arising. Perhaps because they are early days, the internet community may not yet be aware of how the scheme works and whether there are pitfalls to be avoided.
This note is about one such case which has highlighted, if not a problem, then certainly a factor in the URS that it is wise to bear in mind. The case in question is: Michael Page Recruitment Group Limited v. Tassanee Atsawasakundee, KTI Recruitment Consultants Co. Ltd.
The Complainant was the prominent recruitment firm Michael Page, which had a series of trademarks for MICHAEL PAGE. The Respondent registered the domain name, <michaelpage.careers> with GoDaddy LLC on March 6, 2014 in the space of the new generic Top Level Domain <.careers>. The Respondent used the domain name to resolve to a website with links promoting various goods and services. The Complainant brought a proceeding under the URS to which the Respondent did not reply or file a Response. When the Examiner or panellist had finished writing the decision but before it had been published, the Respondent sent an email to the Complainant, the panellist and the ADNDRC. That email denied that the Respondent had had proper notice of the claim, asserted that the domain name had been registered by “one of the resources who was part of our outsourcing team … (who was)… a third-level human resource in our outsourcing team…”, that Go DADDY and not the Respondent had profited by the use of the domain and that in any event the Respondent was willing to transfer the Domain name to the Complainant.
Normally, in a UDRP proceeding and even one that has advanced to the point where the decision has been written, the panel would make an order for consent to the transfer of the domain name and would refrain from making rulings on the 3 elements required to be proved under the UDRP. There are many prior decisions to that effect.
However, the URS is not the UDRP and as it is a creature of law and probably contract law, an Examiner under the URS can only act within the parameters set down by ICANN in the URS Procedure and Rules.
With that in mind, Rule 14(a) of ICANN’s URS Rules (not the Procedure, but the Rules) provides as follows:
“(a) The sole remedy available to a Complainant pursuant to any URS proceeding before an Examiner shall be limited to suspension of the domain name for the balance of the registration period.”
This seems to be a pretty clear limitation on the power of the Examiner to make any order other than suspension and, if challenged in a competent court, any such order might be set aside. In Michael Page Recruitment Group Limited v. Tassanee Atsawasakundee, KTI Recruitment Consultants Co. Ltd.(supra) the Examiner was clearly of that view and did not make an order for transfer but for suspension. It is probably true that the power to order transfer by consent under the UDRP is a valid power because there is nothing in the UDRP that could be interpreted as restricting a panel’s ability to do so. But the URS is new, built on the experience of the UDRP and contains express provisions that ICANN clearly wants the Examiner to follow. That being so, it is hard to see that an examiner can exercise a power to order transfer by consent or exercise any function other than ordering suspension in a fact situation like that in the Michael Page case. Certainly, it is submitted, the roles of the Examiner and the URS Provider are clearly to perform the functions they are given in dealing with the case before them, including in those cases where the proceeding is not withdrawn before the Determination for suspension is made; in that regard the only function, where the case is made out for the Complainant, is suspension.
In this context, the provisions of Rule 16(a) should also be taken into account. This provides:
“(a) If, before the Examiner’s Determination, the Parties agree on a settlement, the Examiner shall terminate the proceeding.”
This clause will have some effect in an appropriate case, but the Examiner would have to have evidence of a clear agreement on a settlement before acting under it and it does not seem to be the Provider’s role or that of the Examiner to recommend an agreement or to have to make a judgment whether an agreement has been reached or can be read into the dealings between the parties. If, at the time the Examiner is ready to make a Determination, the fact of an “agree (ment) on a settlement” is not evident, the intention of the URS seems to be for the Examiner to go ahead and make a determination on what is before the Examiner at the time and if the case has been made out for the Complainant, that will be an order for suspension.
It might be said that after the making of the order for suspension, a trademark owner complainant could agree with the registrant to effect a transfer of the domain name, but there is a provision in the Procedure (not the Rules, but the Procedure this time) that limits that prospect. That provision is the last sentence in paragraph 10.2 which provides that:
“In addition, the Registry Operator shall cause the Whois to reflect that the domain name will not be able to be transferred, deleted or modified for the life of the registration.”
This seems to suggest that after suspension, a transfer is not possible during the period of suspension.
Perhaps the answer lies in making a re-filed complaint under the URS, which is not prohibited by the Procedure or the Rules, or a complaint under the UDRP, which is not only not prohibited, but assumed always to be available even if URS proceedings have been commenced or concluded. Paragraph 13 of the Procedure seems clear in that regard.
The bottom line is to consider carefully the remedies and consequences available under the URS and the other new dispute resolution processes and the consequences of using those processes. In particular, using the tried and tested UDRP clearly still has a lot of merit.
Delegated, because the power to issue domain names under the TLD is delegated from ICANN to the successful registry.