Compliance with UDRP Decisions: A Case Study of Joker.com
Benjamin Edelman - Berkman Center for Internet & Society - Harvard Law School

[ Background - Results - Future Work ]

Background

Subsequent to a successful UDRP challenge of a domain name sponsored by a given registrar, that registrar is obliged to transfer the domain name to a successful UDRP complainant. This obligation arises pursuant to the Uniform Domain Name Dispute Resolution Policy as referenced in each registrar's Accreditation Agreement with ICANN.

In practice, most registrars seem to comply with this obligation most of the time. However, recent discussions -- including a message within ICANN's Intellectual Property Constituency, a message on the INTA mailing list, and discussion on personal blogs -- provide reason to doubt that all registrars consistently do so. Trademark attorney Martin Schwimmer concludes on his blog: "I had reason to believe that the registrar was systematically refusing to comply with orders from UDRP panels to transfer domain names."

So far, ICANN has made little centralized effort at enforcement of registrar transfer rules, after UDRP proceedings and in other circumstances. As ICANN explains via a form at Internic, ICANN does not resolve individual customer complaints. Nonetheless, ICANN has faced repeated calls for increased compliance efforts remain, including requests on public comment forum areas (1, 2) and in congressional testimony. More recently, ICANN's own press releases and planning documents indicate increased interest in assuring compliance. Indeed, ICANN's proposed FY04 budget allocates increased funds to "monitor[ing] and ensur[ing] compliance with all agreements entered into by ICANN," and ICANN's staff list shows an increase in staff who might have a role in compliance proceedings. However, it is not yet clear what specific actions these staff have taken to assure registrar compliance with applicable policies.

The author previously investigated a situation in which thousands of domains remained registered to a registrant even after a court issued an order that would seem to call for their cancellation or transfer. See Large-Scale Registration of Domains with Typographical Errors (2003). More than 50% of the domains found in this prior study were registered through a single registrar, Joker.com of Duesseldorf, Germany. The author has also received additional communications suggesting that Joker may be particularly slow or hesitant to transfer domains subsequent to a URDP complaint or other proceeding. Accordingly, the author set out to study Joker's post-UDRP domain transfer practices in greater detail and to document trends in observed results.

Methodology & Results

This project set out to determine the ultimate disposition of domains, registered through registrar Joker.com, successfully challenged in UDRP proceedings. Analysis followed the following steps:

1. Determine the full list of domains that were registered through Joker and that were challenged via UDRP. This determination was made using WIPO Domain Name Disputes Case Search and NAF Domain Name Decision Search pages, each in full-text search mode using search terms of "Joker" and "CSL" (an alternate business name used by Joker.com), followed by manual review. This search yielded UDRP decisions as to a total of 187 domain names.
2. For each decision resulting from the search in step 1, determine whether the complainant prevailed and whether a transfer was ordered by the UDRP panel. This restriction reduced analysis to a total of 175 domain names.
3. For each domain name resulting from the restriction in step 2, determine whether the current registrar is Joker.com or some other registrar. This restriction reduced analysis to a total of 76 domains still registered through Joker.com
4. For each of the 76 domain names resulting from the restriction in step 3, determine the ultimate disposition of the domain.
   1. Determine whether the current registrant is the original registrant (the respondent in the UDRP). This is the case for 23 of the domains from step 3.
   2. Determine whether the current registrant is the UDRP complainant. This is the case for 52 of the domains from step 3.
   3. Determine whether the domain name is no longer registered. This is the case for 1 of the domains from step 3.

The following 23 domains (the results of step 4.a., above) have been successfully challenged by UDRP but, according to WHOIS data, remain held by their original registrants through registrar Joker.com.

classmat.com
Originally held by: John Zuccarini, c/o Wilderness Quest of Nova Scotia Corp., San Jose, Costa Rica
UDRP Decision for Complainant (2002)
Current registrant: RaveClub Berlin of US - WHOIS

classmats.com
Originally held by: John Zuccarini, c/o Wilderness Quest of Nova Scotia Corp., San Jose, Costa Rica
UDRP Decision for Complainant (2002)
Current registrant: John Zuccarini of US - WHOIS

disneychanel.com
Originally held by: John Zuccarini
UDRP Decision for Complainant (2001)
Current registrant: John Zuccarini of US - WHOIS

dukenukem3d.com
Originally held by: Zuccarini, d/b/a Country Walk, of Andalusia, Pennsylvania, U.S.A.
UDRP Decision for Complainant (2002)
Current registrant: John Zuccarini of UNITED STATES - WHOIS

dupontregistry.biz
Originally held by: Simon S. McNally, Lancashire
UDRP Decision for Complainant (2/3/2003)
Current registrant: Simon S. McNally of Great Britain (UK) - WHOIS

flalotery.com
Originally held by: John Zuccarini of Atlanta, Georgia, United States of America
UDRP Decision for Complainant (2002)
Current registrant: John Zuccarini of US - WHOIS

geapliances.com
Originally held by: RaveClub Berlin
UDRP Decision for Complainant (1/13/2003)
Current registrant: RaveClub Berlin of US - WHOIS

girlsgonewil.com
Originally held by: RaveClub Berlin
UDRP Decision for Complainant (2/24/2003)
Current registrant: RaveClub Berlin of BS - WHOIS

googoodols.com
Originally held by: John Zuccarini d/b/a Cupcake Patrol, Nassau, N.P., (Burkina Faso)
UDRP Decision for Complainant (2003)
Current registrant: John Zuccarini of BF - WHOIS

hoildayinn.com
Originally held by: null John Zuccarini d/b/a Country Walk, of Nassau, The Bahamas
UDRP Decision for Complainant (2003)
Current registrant: null John Zuccarini of BS - WHOIS

jeffgordan.com
Originally held by: John Zuccarini dba Cupcake Patrol
UDRP Decision for Complainant (7/30/2002)
Current registrant: John Zuccarini of BS - WHOIS

job-line.com
Originally held by: Deepak Rasiklal Rajani, "DearNet Online" of Torstrasse 141, Berlin 10119, Germany
UDRP Decision for Complainant (2000)
Current registrant: Deepak Rajani of DE - WHOIS

marshalfield.com
Originally held by: John Zuccarini a/k/a Cupcake Patrol
UDRP Decision for Complainant (10/22/2001)
Current registrant: John Zuccarini of BF - WHOIS

marshalfields.com
Originally held by: John Zuccarini aka Cupcake Patrol
UDRP Decision for Complainant (1/25/2002)
Current registrant: John Zuccarini of BF - WHOIS

minorleaugebaseball.com
Originally held by: John Zuccarini, Nassau, Bahamas
UDRP Decision for Complainant (2002)
Current registrant: John Zuccarini of BS - WHOIS

popularmachanics.com
Originally held by: Raveclub Berlin
UDRP Decision for Complainant (6/25/2002)
Current registrant: RaveClub Berlin of US - WHOIS

samclubcredit.com
Originally held by: RaveClub Berlin, Cherry Hill, New Jersey, United States of America
UDRP Decision for Complainant (2002)
Current registrant: RaveClub Berlin of US - WHOIS

simscity.com
Originally held by: John Zuccarini, Nassau, Bahamas
UDRP Decision for Complainant (2003)
Current registrant: John Zuccarini of BF - WHOIS

sonysytle.com
Originally held by: John Zuccarini dba RaveClub Berlin
UDRP Decision for Complainant (8/8/2002)
Current registrant: RaveClub Berlin of US - WHOIS

teenmagizine.com
Originally held by: John Zuccarini, Andalusia, PA 19020, United States of America
UDRP Decision for Complainant (2002)
Current registrant: null John Zuccarini of UNITED STATES - WHOIS

thrifty-car-rentals.com
Originally held by: Patrick Ory
UDRP Decision for Complainant (5/20/2003)
Current registrant: Patrick Ory of MX - WHOIS

toyoto.com
Originally held by: John Zuccarini, Cupcake Patrol, Nassau, N.P., Bahamas
UDRP Decision for Complainant (2002)
Current registrant: John Zuccarini of BF - WHOIS

vanguad.com
Originally held by: John Zuccarini, Nassau, Bahamas
UDRP Decision for Complainant (2002)
Current registrant: John Zuccarini of BF - WHOIS

 

Duration "in limbo" and domain renewals: Old decisions. The earliest of the decisions linked above was issued in the year 2000, while two were issued in 2001, and 13 in 2002. WHOIS data suggest, and email reports confirm, that some of these domains have been renewed -- yielding additional revenue to Joker.com -- subsequent to the issuance of UDRP decisions ordering their transfer to the successful complainants. A registrar's systematic refusal to honor UDRP decisions raises questions as to whether it could maintain its registrar immunity under ACPA section 3004(2)(D)(iii). Note, however, that at least two of the UDRP decisions listed above have been challenged, providing justification, per UDRP rule 4.k, for the corresponding registrars not to transfer the domains to the prevailing UDRP complainants.

New decisions. Of the decisions issued in 2003, the author notes only one issued within the ten days prior to the release of this report, the registrant's appeal period during which transfers are not to take place.

Hand coding of data. Note that the data provided above is, by and large, hand-coded by the author. The Syracuse University Convergence Center's UDRP Tracking Project offered some data as to the status of Joker registrations challenged via UDRP, but its data was incomplete. The Cornell Uniform Domain Name Dispute Resolution Database does not provide for searches by registrar name or by full text of UDRP decision. The author's hand-coding of raw WIPO an NAF decisions, and the WIPO and NAF search engines, may have introduced errors or omissions in results; please bring any such anomalies to the author's attention for prompt investigation and correction.

Future Work

This research considers only registrations via a single registrar. Much might be learned from comparing outcomes across registrars -- learning which registrars seem to make it particularly easy, and which particularly difficult, for prevailing UDRP complainants to obtain the names granted to them by URDP panels. When the Cornell and/or Syracuse UDRP databases provide a comprehensive inventory of UDRP decisions, such analysis should be straightforward, primarily using automated tools and scripts. For now, the time required for hand-coding keeps cross-registrar analysis beyond the reach of the author on his own.

A cross-registrar comparison of post-UDRP failures to transfer would serve to assess the ease with which each registrar facilitates outbound transfers subsequent to successful UDRP actions. As it stands, experience offers two distinct reasons why a given domain might remain registered to its original registrant at its original registrar, rather than being transferred to a successful UDRP complainant. First, the complainant may fail to provide the necessary instructions to complete the transfer -- including new registration address, nameservers, and payment details. Second, the registrar may in some way impede the transfer -- by requiring use of a confusing or poorly-documented process, or by simply failing to satisfy its contractual obligations. The rate of post-UDRP complainant errors and failures is likely to be approximately equal across respondent registrars; complainants who challenge domains registered at Joker.com are unlikely to differ in any important respect from the complainants who challenge domains registered at other registrars. A comparison of failures to transfer successfully challenged domains therefore serves to assess the ease of outbound transfers from each registrar.

Beyond the UDRP, comparisons across registrars can also be informative in other contexts. For example, in Survey of Usage of the .BIZ TLD (2002), the author (with Jonathan Zittrain) found that certain registrars sponsored disproportionately many .BIZ registrations that failed to conform to .BIZ registration restrictions. As part of .NAME Registrations Not Conforming to .NAME Registration Restrictions (2002), the author produced similar listings of registrars with disproportionately many nonconforming registrations in .NAME. These methods can also be used to study the rate at which each registrars' domains are put to active use, rather than held for speculative or defensive purposes. See, for example, the author's .US Domain Usage by Registrar, a section of Survey of Usage of the .US TLD (2002).

This project grew out of discussions with Martin Schwimmer and from his postings on his blog and on mailing lists. Mr. Schwimmer approached ICANN requesting that it evaluate Joker.com's compliance with its obligations under its accreditation agreement, after, as he saw the situation, Joker defied a UDRP order to transfer a domain to his client. Among the evidence Mr. Schwimmer submitted to ICANN was the author's Large-Scale Registration of Domains with Typographical Errors (2003). Recognizing that evidence of systematic non-compliance was likely fragmented, Mr. Schwimmer solicited feedback from the IPC and the INTA listserv, as well as from readers of his blog. With these anecdotes, disproportionately involving Joker, Mr. Schwimmer approached the author and suggested a systematic review of UDRP decisions as to Joker-registered domains -- the inquiry that inspired this project. See also Mr. Schwimmer's blog discussion of these results, their context, and significance.

Last Updated: June 23, 2003 - Sign up for notification of major updates and related work.