WIPO End Report on Case Administration under the Afilias Sunrise Registration Challenge Policy for .info
Annex 1: Evaluation
This Annex forms a part of WIPO’s End Report on Case Administration under the Afilias Sunrise Registration Challenge Policy for .info. The Annex identifies a number of issues that have influenced the effectiveness of the .info Policy, as well as WIPO’s processing of challenges filed thereunder. WIPO believes that a description of these issues may, where relevant, provide guidance in the development and implementation of future dispute resolution mechanisms.
The experience gained on this project is particularly valuable since the .info Sunrise mechanism was the first of its kind. Neither ICANN, nor the Registry, nor the involved Registrars, nor the Center could draw on specific prior experience with such a start-up procedure. The essential features of the Sunrise mechanism were determined by the Registry and approved by ICANN. Some of these features proved to cause considerable difficulties for the Center’s administration of Sunrise challenges.
1. Afilias Sunrise Registration Challenge Policy for .info
The dispute resolution mechanism presented problems mainly in two respects: (i) the lack of pre-screening mechanisms for Sunrise applications, and (ii) the initial possibility for Sunrise Challengers to obtain transfer of a Sunrise registration without having to prove their own compliance with the Conditions.
Of these issues, the lack of pre-screening mechanisms clearly constituted the most important one. The Registry, when accepting Sunrise applications, did not examine (e.g. by requiring submission of trademark certificates or by accessing trademark databases) whether these applications were based on compliant trademark rights on the part of the registrant, nor did the Registry have such applications examined by third parties. In addition, the registration system did not include safeguards that could have prevented a good number of fraudulent registrations from slipping through the system. For example, the .info registration facility accepted obviously nonsensical trademark information, such as non-existing or clearly non-compliant trademark registration dates.
The absence of such pre-screening mechanisms tempted a great number of parties without trademark rights to abuse a registration option that had been created to serve the interests of genuine trademark owners. Unsurprisingly, therefore, most of the challenges filed under the .info Policy concerned cases of this type. In order to address such abuse, the Registry, in consultation with the Center, decided to file Challenges of Last Resort against questionable Sunrise registrations.
A further problem resulted from the Original Policy’s failure to require Challengers to prove trademark rights as a precondition for transfer, which caused a considerable number of Sunrise domain names to be transferred to non-compliant Challengers. This was corrected through the adoption, with WIPO’s assistance, of the Revised Policy.
Whereas the above issues relate to abusive registrations, there was also dissatisfaction concerning some of the Conditions as they affected legitimate trademark owners. A number of such owners were unable to retain their Sunrise registrations, as they did not strictly meet the requirements of the .info Policy.
For example, some trademarks, while clearly very similar to the domain name, did not meet the "identical" requirement because of minor variations, such as when the article "the" contained in the trademark was missing from the domain name. Other issues of concern for certain trademark owners related to relevant dates of registration. The fact that in some countries, the "effective" date of trademark registration is accepted as being the same as the date of filing of the application, conflicted with the fact that in many other countries, the "effective" registration date is subsequent to the application filing date. The .info Policy did not leave the Center any choice but to accept only the registration date as shown on the trademark certificate as the valid date of registration.
Such dissatisfaction led to several court proceedings challenging individual provisions of the .info Policy, or its applicability as a whole.
2. Challenges of Last Resort
The submission of Challenges of Last Resort against Sunrise registrations that appeared to have been made in violation of the Conditions required the Registry to review all Sunrise domain name registrations. The Registry’s serious efforts notwithstanding, its selection of names in respect of which it filed Challenges of Last Resort met with criticism. While a number of clearly fraudulent Sunrise registrations remained unchallenged, the Registry did challenge a number of good-faith trademark owners whose Sunrise registrations were based on certain rights with respect to names corresponding to the domain names, but which did not strictly meet the Conditions - because of slight differences between domain name and trademark or because the corresponding trademarks were only issued after October 2, 2000 (even though they had been applied for prior to that date). Such Challenges of Last Resort were generally regarded as unnecessary challenges against legitimate trademark owners, leaving the Center with the role of placating a number of dissatisfied trademark owners.
Parties to the .info Sunrise challenge procedure were, in the majority of cases, non-lawyers, with an attendant lack of understanding of the substantive and procedural elements of the .info Policy. Coupled with the issues described in the above paragraphs, this resulted in considerable frustration being expressed by certain parties about the procedure. As a consequence, the case administration involved a profuse number of communications by various means from and to parties outside the standard communication provided for under the Policy. In addition to the Center, the Registry itself also made efforts to be responsive to such communications.
More than under the UDRP, the Center’s administration of disputes was dependent, in part, on the Registry’s execution of its obligations under the Policy and Rules, primarily the provision of accurate information on the domain name registrant and the timely follow-up in relation to decisions rendered under the Policy. As the administrator of a newly established gTLD, the Registry had to deal with a wide range of start-up operations, merely one of which was the implementation of its untested Sunrise dispute resolution mechanism. Possibly as a result, the Center was faced with difficulties that included the following.
The most important problems resulted from deficiencies in the .info WhoIs register. Maintaining accurate WhoIs data for a disputed domain name is vital for the administration of a dispute resolution procedure. In the Sunrise challenge procedure, there were numerous instances where the WhoIs information for the disputed domain name was not updated and remained inaccurate. For example, WhoIs information showed the name of the losing Respondent months after the Center had notified a transfer decision in favor of the Challenger. This not only frustrated the process for the winning Challenger, but also prevented the Center from determining the ownership status of the domain name as was necessary in cases involving queued challenges. As a further example, the information provided in the .info WhoIs would sometimes differ from the information provided in the concerned Registrar’s WhoIs. Insufficient information also concerned challenges in relation to names that turned out to be Registry-reserved and that could, therefore, not be subject to Sunrise challenges.
Many of the problems created by such deficiencies could have been avoided, or at least resolved more swiftly, had the Center’s repeated requests for action and clarification met with a more efficient response.
A further complication resulted from the Registry’s blanket lock on the WhoIs information of all Sunrise registrations. The Registry did not agree to allow any modifications in the WhoIs information. As a result, when a Registrar or a registrant had erroneously, often in good faith, entered certain information, there was no recourse available to correct such data. This would, in turn, place the Center in a difficult position, as the Center’s decision had to be based on the (sometimes obviously inaccurate) information provided in the WhoIs.
In promoting the new .info top-level domain, many Registrars did not properly inform registrants of the Conditions required for registration during the Sunrise Registration Period. This resulted in a number of Sunrise registrants learning of the existence of the .info Policy and requirements thereunder only upon receipt of a challenge under this Policy. Numerous registrants, in fact, complained that their Registrar’s marketing in this regard had already been misleading. Many parties also complained of incorrect data registration by the concerned Registrars, resulting in incorrect WhoIs information. Finally, the Registry itself indicated that it had considerable communication difficulties with a number of its own Registrars.