...
URS Recommendation #1 The Working Group recommends that the URS Rules Rule 3(b), and, where necessary, a URS Provider’s Supplemental Rules be amended to clarify that a Complainant must only be required to insert the publicly-available WHOIS/Registration Data Directory Service (RDDS) data for the domain name(s) at issue in its initial Complaint. Furthermore, the Working Group recommends that the URS Procedure para 3.3 be amended to allow the Complainant to update the Complaint within 2-3 calendar days after the URS Provider discloses the registrant provides updated registration data related to the disputed domain name(s). Note: This recommendation is related to URS Question #1. |
Context:
This recommendation specifically concerns the following URS Rules[1] and URS Procedure[2]:
- URS Rule 3(b)(iii): Provide the name of the Respondent and all other relevant contact information from the Whois record as well as all information known to Complainant regarding how to contact Respondent or any representative of Respondent, including contact information based on pre-complaint dealings, in sufficient detail to allow the Provider to notify the Respondent of the complaint as described in Rule 2(a);
- URS Procedure para 3.3: Given the rapid nature of this Procedure, and the intended low level of required fees, there will be no opportunity to correct inadequacies in the filing requirements.
...
Since the implementation of European Union’s General Data Protection Regulation (GDPR), personally identifiable information, including the contact details of the registrants, is masked in the public WHOIS/RDDS data. URS Providers receive the contact information and other relevant WHOIS/RDDS data of the registrants from Registries or Registrars.
In May 2018, the ICANN Board approved a Temporary Specification as an interim measure to bring existing WHOIS obligations in line with requirements of GDPR[3]. In relation to the URS, Section 5.6 of the Temporary Specification obligates ICANN’s Contracted Parties to comply with Appendix D of the Temporary Specification (and, relatedly, Appendix E for the UDRP).
Appendix D states that a Registry Operator “MUST provide the URS provider with the full Registration Data for each of the specified domain names, upon the URS Provider notifying the Registry Operator (or appointed BERO[4]) of the existence of a Complaint, or participate in another mechanism to provide the full Registration Data to the Provider as specified by ICANN. If the gTLD operates as a ‘thin’ Registry, the Registry Operator MUST provide the available Registration Data to the URS Provider [and if] the domain name(s) subject to the Complaint reside on a ‘thin’ registry, the Registrar MUST provide the full Registration Data to the URS Provider upon notification of a Complaint”. In addition, “Complainant’s Complaint will not be deemed defective for failure to provide the name of the Respondent (Registered Name Holder) and all other relevant contact information required by Section 3 of the URS Rules if such contact information of the Respondent is not available in registration data publicly available in RDDS or not otherwise known to Complainant. In such an event, Complainant may file a ‘Doe’ Complaint and the Examiner shall provide the relevant contact details of the Registered Name Holder after being presented with a ‘Doe’ Complaint.”
The EPDP Phase 1 recommendations that were approved by the GNSO Council and adopted by the ICANN Board in 2019 included the Recommendation #21[5] that suggested that the RPM review consider the topic that is the subject of this URS Recommendation #1. The EPDP work also included Recommendation #23[6] and Recommendation #27[7] that suggested updates be made to existing procedures and rules impacted by the GDPR. The Working Group believes that its recommendation is consistent with the EPDP Phase 1 Recommendations #21, #23, and #27.
During the Working Group’s deliberations, MFSD (a URS Provider) suggested amending the URS Procedure para 3.3 in order to enable the Complainant to modify the Complaint within 2-3 days from the disclosure of the full registration data by the URS Provider. FORUM (another URS Provider) also supported the suggestion of manually amending the Complaint after submission.
...
MFSD commented that without access to the registration data before submission of the Complaint due to GDPR, and without the possibility to amend the Complaint after submission, it may be difficult for the Complaint to satisfy the second and third URS elements[38]. The utilization of URS may decrease because the Complainant may file a UDRP Complaint instead, which can be amended after submission.
...
Therefore, the Working Group recommends amending the URS Rule 3(b)(iii) and URS Procedure para 3.3 as a result of GDPR implementation. This recommendation is also consistent with the EPDP on the Temporary Specification for gTLD Registration Data Phase 1 Recommendations #21, #23, and #27
...
[4]. [1] URS Rules can be downloaded here: https://newgtlds.icann.org/en/applicants/urs/rules-28jun13-en.pdf
[2] URS Procedure can be downloaded here: https://newgtlds.icann.org/en/applicants/urs/procedure-01mar13-en.pdf
[3] The URS requires a trademark owner, or the “Complainant,” to show all three of the following elements: (i) The disputed domain name is identical or confusingly similar to a word mark that meets certain criteria; (ii) the registrant of the domain name, or the “respondent,” has no legitimate right or interest to the domain name; and (iii) the domain name was registered and is being used in bad faith.[4] See https://www.icann.org/en/system/files/files/gtld-registration-data-temp-spec-17may18-en.pdf. Following the Board’s adoption of most of the EPDP’s Phase 1 recommendations, an Interim Registration Data Consensus Policy was implemented that requires gTLD Registry Operators and ICANN-accredited Registrars to continue to implement measures that are consistent with the Temporary Specification on an interim basis, pending the full implementation of the final Registration Data Policy (see https://www.icann.org/resources/pages/interim-registration-data-policy-en.)
[4] BERO: Back-end Registry Operator
[5] EPDP Recommendation #21: Requests the GNSO Council to instruct the RPMs PDP Working Group to consider whether to update existing requirements to clarify that a complainant must only be required to insert the publicly-available RDDS data for the domain name(s) at issue in its initial complaint, and whether the complainant may be given the opportunity to file an amended complaint upon receiving updated RDDS data. Please see the full text of this recommendation in the “Background” section of this Initial Report.
[6] EPDP Recommendation #23: Defines requirements for URS/UDRP to ensure the procedures continue to function given other EPDP recommendations. Please see the full text of this recommendation in the “Background” section of this Initial Report.
[7] EPDP Recommendation #27: Recommends that updates be made to existing policies to ensure consistency with the EPDP recommendations. Please see the full text of this recommendation in the “Background” section of this Initial Report.
[8] The URS requires a trademark owner, or the “Complainant,” to show all three of the following elements: (i) The disputed domain name is identical or confusingly similar to a word mark that meets certain criteria; (ii) the registrant of the domain name, or the “respondent,” has no legitimate right or interest to the domain name; and (iii) the domain name was registered and is being used in bad faith.