Is WIPO “Advising” Complainants?

Is WIPO “Advising” Complainants?

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This is a post written by contributor, Paul Raynor Keating. Paul is an attorney specializing in domain names and related matters. He lives and works in Barcelona, Spain.

I was recently surprised to read the following WIPO notice received by a friend of mine the other day:

“Dear Complainant,
Further to our Acknowledgement of Receipt of Complaint, as required by Paragraph 4(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the Rules) and Paragraph 5 of the WIPO Arbitration and Mediation Center (the Center) Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the Supplemental Rules), we have reviewed your Complaint to verify whether it satisfies the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the Policy), the Rules and Supplemental Rules.

In accordance with Rules, Paragraph 4(b), you are hereby notified of the following formal deficiency with your Complaint:

(1) The text below section (C) of the Complaint, with the emboldened heading “Bad Faith in the Domain Name Use”, does not appear to describe why the domain name should be considered as having been registered and being used in bad faith.

Please note that paragraph 4(a)(iii) of the Policy and paragraph 3(b)(ix)(3) of the Rules require a complainant to describe why the domain name(s) should be considered as having been registered and being used in bad faith.” (Emphasis in original).

Procedural requirements as the form of a complaint are specified in the UDRP and Supplemental Rules and compliance with matters of form are appropriate. Thus, for example, checking to verify that the name of the respondent comports with the WHOIS is a procedural matter because of the notice requirements in the UDRP. Other examples of form verification are the presence of a mutual jurisdiction selection and the required “verification”.

It is entirely inappropriate, however, for an ADR provider to conduct a substantive review of the complaint to verify that the complainant has included sufficient argument and evidence to sustain its burden of proof. There is no requirement in the UDRP or any of the Supplemental Rules stating that a complainant must provide argument and evidence in order to file a UDRP complaint. They only describe the substantive content needed to prevail. ADR providers are supposed to be neutral.

Notices such as the above effectively give the complainant a second bite at the apple because they are being advised to review and correct substantive issues pertaining to their burden of proof. They turn the ADR provider into an editor working for the benefit of the complainant. The proper course would be to refrain from any such apparent impropriety and let the panelist deal with the matter – the consequences of which must be reserved to the parties.

I question the propriety of the above notice for the simple reason that it evidences a substantive review of the complaint on the part of WIPO to correct a “deficiency” which would otherwise have led to a denial of the complaint.

Perhaps I shouldn’t be surprised. But I am continually disappointed at the ever expanding ways in which ADR providers assist complainants in the UDRP process. I have long objected to the constant stream of “reminders” sent to complainants about deadlines and the like, particularly those from NAF reminding complainants to correct complaints that have been rejected for filing. I have never once seen a “reminder” forwarded to a respondent. ADR providers must avoid the appearance of impropriety so as to protect the overall system from criticism and legal attack. ADR providers are supposed to be neutral. Matters of proof are the exclusive realm of panelists and WIPO is crossing the line.

The “deficiency” process is further marred by the way respondents are treated in the process. The domain is locked the minute the ADR provider receives a filing. The lock remains in place during the 5-day correction period. However, respondent is not permitted to see a copy of the complaint that had been submitted with the argument being that the UDRP has not “commenced”. My response is that the domain should then remain unlocked until the complaint is accepted for filing. The fact that the ADR provider maintains the lock and refuses to provide respondent with a copy of the “defective” complaint is merely an exercise to limit any possible advance notice to the respondent.


About The Author: Paul Raynor Keating is a California licensed attorney who has lived and worked in Barcelona and most recently London. He is a respected lawyer that represents domain investors, registrars and domain-related service providers.

Connect with Paul: Website | LinkedIn

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Comments (29)

    Dolly

    “ADR providers must avoid the appearance of impropriety so as to protect the overall system from criticism and legal attack”

    Apparently not! What exactly do you mean by legal attack? They (legal attacks) appear to be relegated to blog post such as the one you’ve made here as opposed to substantive legal attacks which literally challenge the system and the decisons it renders. Between cutting and pasting together responses, employing flawed logic designed to expand the scope of the policy and incidents such as the one you highlight here it is obvious that these guys can do whatever they want without fear of reprisal. Talking about the failings of the system does little to change it and it appears that the systems is at the evry least resistant to change. I suppose based in the fact that regardless of its flaws the system arrives at the right answer in the vast majority of instances. Should a squatter be entitled to keep an obviously infringing domain name due to an oversight by the complainant. That idea is not in keeping with the notion of the system being a simplified and easy way for disputes to be resolves. You can not hold them to the same standard as the court system because they are not the court system and they are afterall subject to oversight by the courts in that an aggregied respondent can always take their case to the courts. I suppose the point you make here is indicative of a problem however in the absence of any concrete examples of said intervention turning the tables on a respondent the problem you allude too is little more than a complaint at the moment as opposed to a systemic problem.

    On another note businesses are in business to serve their customers. Who are their clients. Right, complainants. Obviously they are going to serve the complainant because quite simply, complainants pay the bills. Thats how the world turns, like it or not. Do corporations that make huge political contribution recieve any benefit from their contributions? The jury suggests they do. Is that right or fair? Probably not but again, thats how the world revolves.

    There are lots of complaints about the udrp but again, they get the answer right almost everytime. So, in the end until there is verifiable documentary evidence of malpheasance all the bitching and complaining is little more than bitching and complaining.

    Every parent has told their children that the world is not fair. Add your complaint to the list.

    March 28th, 2012 at 11:21 am

    Anthony

    Dolly,

    Are you my mother in law?

    March 28th, 2012 at 12:07 pm

    SL

    “There are lots of complaints about the udrp but again, they get the answer right almost everytime (sic).”

    Damn you Andrew and all your wirey domain name articles. We’ve been hoodwinked!

    March 28th, 2012 at 12:23 pm

    HOWARD

    @ Dolly

    I don’t know where you recieved your information that “they always get it right” because that is not even close to the truth. Paul is correct that the system is corrupt and getting worse. Oh, and by the way, if the Respondent wants a 3 person panel, he has to cough up $2,000, so WIPO gets $$ from both ends, but only caters to the Complainants.

    @Paul

    As you know, my client is the one who received this notice. However, we DID get the original complaint which was not withheld by WIPO. The Amended Complaint has been filed, but we have received no notice from WIPO yet as to acceptance or rejection.

    March 28th, 2012 at 12:41 pm

    Ron

    WIPO, ICANN, as domains become more valuable they become more inconsistent, trend?

    March 28th, 2012 at 1:13 pm

    Dolly

    @ Howard who said Dolly said “they always get it right”

    I know lawyers love to twist things around to suit their particular agendas but I did not say what you have quoted me as saying. I did not say they always get it right. I said they get it right in the vast majority of instances. If you have information to refute that comment please do share. I do not believe that to be possible but I would stand to be corrected. Besides what are you whining about. Wait for the outcome to cry about how unfairly they treated you. If you win the case then what effect did their “help” have? And if you lose? what do you plan to do about it? Challenge this supposedly corrupt system or take it to court because that is where proper legal battles are fought? Anyways I hope for your clients sake that you review the complaint with a more literal and discerning eye than you viewed my comments because the case in front of you will most definitely not turn on statements and or allegations that are nowhere to seen in the complaint. Try sticking to the facts

    March 28th, 2012 at 2:53 pm

    Paul Keating

    @Howard,

    just to let everyone else know, I obtained the consent of both Howard and his client before posting the article above.

    Howard, I would be curious to know the changes made by the complainant following the WIPO notice.

    March 29th, 2012 at 1:01 am

    Picas

    Waiting for a new great change in Wipo org ..new men,new rules …

    March 29th, 2012 at 4:22 am

    Offerbot

    WIPO ? WIPO can “WIPO” my ass.

    March 29th, 2012 at 5:18 am

    EU

    @Howard, is wipo the last frontier before loosing my domain in case there is a decision against me?
    Cant I take it to European courts as I can do with other cases in my everyday life?

    March 29th, 2012 at 5:29 am

    Neil Armstrong

    Thanks for bringing that up, Paul. Is it perhaps time to look at the whole UDRP / WIPO process and at the very least separate out powers and appoint full time judges who don’t also work as, or consult as, domain name legal advisers?

    March 29th, 2012 at 6:10 am

    Steven Swimmer

    I’m all for making the process transparent up front, but that kind of coaching could compromise fairness of the system.

    This may give the appearance of bias which is particularly troubling given the potential that WIPO could be helping a reverse domain hijacking.

    I don’t follow this closely enough to know if there is a trend towards favoring complainants. I certainly hope not.

    March 29th, 2012 at 6:15 am

    Mike UK

    I have always maintained that WIPO would not stand up to a test of compliance with Article 6.1 of the Human Rights Act in Europe. They are required to be impartial and independent and from what I know and have seen with my own eyes they would not comply with either of those requirements. The only thing is “how do we get a case into the ECHR” . It may well be that I get the opportunity because no doubt a UDRP will be issued against a company that I “know” and then if they win at UDRP level then I shall issue proceedings in the Courts and take it right the way up to ECHR for them to rule on. The other point I would like to make about WIPO (and possibly the other ADR firms also but have never had one of those) is that they always try to get the Respondent to agree a term in the Response form that you will absolve them of all liablity for any mistakes etc etfc. I disputed this and WIPO backed down and said that after their lawyers consideration I did NOT have to agree that term, only the Complainant was bound to agree to it. So please ,if you are a Respondent decline to accept that term/clause the the Response. If anyone has any comment on this point would be good to hear.

    March 29th, 2012 at 6:44 am

    JJ Stokers

    This is repulsive, along with so much WIPO and ICANN do. And they sit behind their thin veneer of “fairness” and “intellectual property.” I sit in fear that 4 domains of mine will be reverse hijacked when I hand registered these domains well before the current trademark owners even started their business or filed for trademark protection. If they paid me a fair price I would sell it to them, but they have been highly unreasonable. If they take me to court they will outspend me, when they could easily spend less and own the domains outright. The system is stacked against me. Thankfully, the trademark owner is not a huge corporation.

    March 29th, 2012 at 7:14 am

    Mike UK

    @EU Whether you can take the UDRP to Court depends on what Registrar you used and/or what address is in the Whois for the domain. I recently spent 3 years in Germany fighting a UDRP decision and won the domain back. I believe that one prong that could be made in any European Court (which HAVE to comply with all of the European Convention on Human Rights) is the non compliance of WIPO and/or procedure with Article 6.1 of that convention. Quoting from that article “…everyone is entitled to a fair and public hearing within a reasonable time by an independent and impartial tribunal …” >From case law I have read I KNOW WIPO would have hard time complying with that Article.

    March 29th, 2012 at 8:13 am

    Brett Lewis

    I have had the same exact thing happen with WIPO. TWICE. In both cases, the Complainant filed a substantively deficient Complaint and WIPO came back and advised the Complainant to back up its bad faith claims. The Complainant’s attorneys still did a poor job in both cases, and lost in both cases, but they should never have been given a second chance.

    Brett

    March 29th, 2012 at 9:10 am

    Two Trains Runnin

    @ Brett

    It happened twice and you won both! They obviously are not helping the complainants in any substantive way. If a claim is deficient wipo will not accept it. Seems reasonable to advise the complainant on what’s missing. That doesn’t make a case. I’ve seen judges prod and coax too. Is that verboten? Apparently not.

    March 29th, 2012 at 9:28 am

    Paul@law.es

    @EU
    In theory a respondent can challenge a
    UDRP filing in courtnbut it is only in THEORY. Mto file a claim one must have a legally recognized laim (called a cause of action) he problem is that few jurisdictions have such causes of action. On the other hand complainants always have the ability to file a claim based on trademark infringement or passing off.

    As a registrant you are required to allow for ADR under the UDRP.

    March 29th, 2012 at 10:37 am

    Paul

    @Two trains runnin

    Your premise is not correct. It is always up to panelists and judges to inquire. Many panelists would not ask and render a decision based on the comai t However this case deals with the neutral administrative body. It Is no for the ADR provider to make such advances and provide advice.

    And if the did then they must do so on behalf of both sides. Thus they should send out reminders to respk de ts and advise them that their response does not deal with all the issues and provide 5 days to correct it.

    What i object to is the one-sided approach helping only complainants.

    March 29th, 2012 at 10:44 am

    Mike UK

    @Paul@law.es You say in theory you may challenge a UDRP filing. Of course if you look in the UDRP Rules & Policies it specifically makes mention of that right, and indeed in the “Barcelona.com” case heard in the US Court of Appeals the Court specifically referred to the UDRP being as “light” arbitration procedure that “invited” intervention of the Courts (worth referring to when trying to get a case to Court. Likewise I challenged a decision in a German Court and although I lost at lower Court the Appeals Court ruled in my favour and gave me back the domain that WIPO panelist had given to complainant. The case was only heard in late 2011 and not reported.

    March 30th, 2012 at 9:28 am

    Hemendra Kumar Saini

    All the dirt stuff is happening with these new agencies, new agencies, new problems, why should united nations have unified authority for this icann and wipo dirt

    March 30th, 2012 at 3:50 pm

    chris

    Surely the point with this WIPO letter is that any tribunal is entitled to require parties to prove jurisdiction, and this is not about the merits, but about whether the complaint fits into the regulatory framework which provides the jurisdiction. I see no problem with that.

    April 4th, 2012 at 8:20 pm

    Mike UK

    @Chris “Jurisdiction” can mean geographic location OR “whether”the” Court/tribunal has jurisdiction themselves, it does NOT mean content of the pleadings.

    Lets see how it would go in a Court of Law. You would file the application and affidavit at the Court office (read “Wipo” in this case we discuss) and they would set a hearing date. You would attend the hearing and the Judge/Panelist would look at the pleadings/affidavit and point out any errors in the FORM (but NOT the content) of the pleadings/affidavits/applications. He/She would then either allow them to stand and continue to hear the matter and decide the matter, OR they could throw case out and then the parties would go back to beginning. It appears from this present matter with WIPO that they are seeking to present themselves as independent (thats a joke)
    ADR forum , but then going on to act as an advisor to the Complainants. It should be the Panelist who makes any decision at all on the content and voracity or not of the complaint.

    I would be interested to see how WIPO would react if a Respondent asked them “please could you have a look at this Response and tell me if it is sufficiently pleaded” ?. I BET they would say “sorry we cannot advise you” . Then spring claim in Court that they were biased (as they are).

    April 5th, 2012 at 4:30 am

    Mike UK

    Stop press. I see now that WIPO is in serious trouble for exporting Servers to North Korea !!!

    April 5th, 2012 at 6:13 am

    Paul Keating

    @Mike UK & @Chris

    Several points to both of your recent posts:

    1. Although the UDRP provides that parties can file in a court, the court’s don’t largely see it that way. The US court proceedings brought by respondents is brought under the ACPA – reverse highjacking. However, other courts have rejected even the idea that a losing respondent can sue. Recently, the UK appeals court in the Emirates case declared that there was no cause of action under the Nominet rules (which used virtually identical language in this issue to the UDRP). I have made 2 attempts in Australia but it is far from clear how the court will rule.

    2. Jurisdiction comes in 2 flavors: (a) personal jurisdiction – can you be sued in the particular court? and (b) subject matter jurisdiction – does the court have the power to hear the issues raised in the complaint.

    In the ADR environment, WIPO has personal jurisdiction to hear the matter because the complaint filed the complaint and the respondent agreed to the ADR process in the body of their domain registration agreement. WIPO also has subject matter jurisdiction because it was supposedly “approved” by ICANN as an ADR provider for UDRP disputes involving .COM domain names.

    Nothing in the case underlying the above article gave rise to any issue concerning jurisdiction.

    The UDRP states what must be in a complaint. However, this is not whether the complaint was in a proper form (e.g. the correct parties named, the certification provided, the mutual jurisdiction selected, etc). The complaint in this matter did have a body containing allegations arguments about trademarks, legitimate interest and bad faith. What must be in the complaint is specified in the ICANN Rules, Section 3c(i-xv). The relevant portion here is Section 3c(x) “(3) why the domain name(s) should be considered as having been registered and being used in bad faith“. This requires only that there be allegations as to the above. It does not mandate that any particular arguments or evidence be provided to support the allegation. In the instant case, the complainant had baldly alleged bad faith registration and use but had not included facts supporting the former. And just to be clear, no mandate is stated in the UDRP Policy. Section 4 of the Policy is directed towards the RESPONDENT and explains how the RESPONDENT may prove its position.

    So, I agree with the analogy that @Mike UK put forward. I have never received a “reminder” by any ADR provider and I certainly believe that a request that they “kindly review the response and point out any shortfalls” would be met with a “not our job” response. Again, the point is that they are supposed to be neutral. If they are unwilling to send reminders and review responses for respondents, they have no business doing so for the complainants.

    April 5th, 2012 at 8:00 am

    Mike UK

    @Paul Keating Interesting to read abouit Emirates. I will have to look up and read that Judgement. So there we have it, as I have always suspected, Jurisdiction is the key to making or breaking an ability to challenge a UDRP or DRS decision. I believe u may know this Paul but I recently had a win in the Appeal court in Germany re a .com that had been lost at UDRP . The trouble is I cannot read the Judgement as is in ,of course German , but that aside it at least shows that Germany is a forum that will allow appeals against UDRP decisions but how far that goes I do not know until I manage to get the Judgement translated. A bit unrelated , this seems interesting read in case you havent seen it: http://www.inta.org/INTABulletin/Pages/UDRPHijackingAvoidinganInvoluntaryPassagetoIndia.aspx click on the links as there are updates etc .

    April 5th, 2012 at 8:16 am

    Paul Keating

    @mike UK.

    Email me at paul@law.es. I might actually have a translated copy of that for you. :-)

    April 5th, 2012 at 8:38 am

    Graham Schreiber

    Please could you let me know, how many of you here, have had issues with the domain names ending with uk.com ~ .eu.com and others of the CentralNic portfolio.

    I’ve contacted WIPO / Francis Gurry for statistics, on these domain endings; however his people are rather tight-lipped.

    Thanks for feedback.

    Cheers, Graham.

    May 30th, 2012 at 10:02 pm

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