[ga] Paper: Concerns about ICANN Uniform Dispute Resolution Policy

[KathrynKL@aol.com]

Below is a brief paper discussing some of the substantive and dispute 
procedural problems with the Names Council WG-A Cybersquatting Report.  I 
thought it might be of interest

Kathryn Kleiman
ACM's Internet Governance Committee
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Some Concerns About Working Group A's Report and WIPO's Chapter 3 on
Cybersquatting and Mandatory Arbitration of Domain Name Disputes
[called by ICANN the Uniform Dispute Resolution Policy]

ICANN is proposing to adopt the Uniform Dispute Policy set out by
the World Intellectual Property Organization in its Management of
Internet Names and Addresses: Intellectual Property Issues
(available at http://wipo2.wipo.int).  ICANN referred consideration
of Chapter 3 of this report (cybersquatting/uniform dispute
resolution policy) to the Names Council.

The Names Council created Working Group A to look at this issue,
and chairman Jonathan Cohen of the Trademark Constituency
created four subgroups to look at the following four questions:

(a) Should the WIPO dispute resolution process be confined to
cybersquatting/cyberpiracy, or should it be considerably expanded?

(b) Should there be a standard dispute resolution process throughout
all Registrars/Registries?

(c)  Should the dispute resolution process be voluntary or mandatory
or a combination of both?

(d)  Should there be some method for contracting out of the right to
seek a court ruling if one undertakes to submit to the dispute
resolution process?

Once people were assigned to a working subgroup, you could not
switch, and you could not get your choice of working subgroups (at
least I, as an observer, could not get on subgroup (a), the group I
had the most expertise and interest in participating in).

I.  Treatment of WIPO's report far too deferential

Because the non-commercial voice was missing, I think the entire
treatment of the WIPO report was far too delicate.  The subgroups
left key questions about a uniform dispute policy unasked and did
not address the dangers of WIPO cybersquatting definition to the
noncommercial community.  Before the Names Council can
recommend the WIPO report,chapter 3, I think it needs to look
seriously at some additional questions, including:  

1) Is it in the interest of the larger Internet community to adopt a
definition of cybersquatting that is far broader than any existing law
on trademark infringement or dilution? 

The definition of cybersquatting is a definition we first saw in
WIPO's Final Report so no one has yet had a chance to comment on
it and, in my opinion, it needs a full and public airing.  The
discussion starts at paragraph 170 for those who have the WIPO
Report.  It is also repeated in Annex IV.  It is far too broader than an
any existing definition of trademark infringement or dilution, at
least under US law.

WIPO's new regulation provides:  if a domain name is "identical or
misleadingly similar to a trademark or service mark in which the
complainant has rights," and 
the holder of the domain name has no rights or legitimate interests
in respect of the domain name; and the domain name has been
registered and is used in bad faith, the domain name shall be
considered abusive.

Evidence of bad faith includes:
"a offer to sell, rent or otherwise transfer the domain name to the
owner of the trade or service mark" and  "an attempt to attract, for
financial gain, Internet users to the domain name holder's website
by creating confusion with the trade or service mark of the
complainant"
and "the registration of a domain name in order to disrupt the
business of a competitor."

Nowhere in this definition is there a requirement that the use of the
domain name has to be commercial.  In the traditional trademark
sense, the use of the trademarked term by another party has to be in
a commercial context for goods and service -- thus preventing two
companies from having a detergent called TIDE out on the market
and causing customer confusion. Not a single word in this WIPO
definition requires the trademark owner to prove that the domain
name holder was using the domain name for commercial use.  Thus,
there is no requirement that the challenger provide any traditional
proof of trademark infringement or dilution (both of which
expressly EXCLUDE noncommercial speech, at least under US
law).

All non-commercial use of a domain names is now open for attack.

(2) Does it make sense to make any financial use of a domain name
the equivalent of full commercial use?

Under the WIPO definition, if you are a noncommercial group
asking for paid memberships on your website, the trademark
challenger gets an added bonus because it can show that your group
was using your domain name for "financial gain" (see evidence of
bad faith in definition)   a showing far easier to make then the
traditional standard of "use in commerce" for a product or service.

(3) WIPO's definition fails to protect a legitimate intention to use a
new domain name by a noncommercial group.  

If you originally starting an organization (as many of
us are in the Internet community) then your choice of domain names
(if you choose the domain name first, to make sure it is available) is
suspect and challengeable  until you began actively using it.  
(Because you don't have an rights in it.)

This is the inverse of traditional law.  Under traditional trademark
principles, your choice of an organizational name would be
PROTECTED until you began using it, because there is no way that
you can cause confusion to another's trademark if you are in the
early planning stages of your organization and are not actively out
promoting your organization.  Although the descriptive paragraph,
number 72 states that a bona fide intention to use the domain name"
should protect a domain name registrant, the text of the definition
does not say that.

(4)  The definition of bad faith in the WIPO definition turns
perfectly legitimate and legal conduct into something shady,
suspect, and punishable. 

The problem lies in the phrase "an offer to sell, rent or otherwise
transfer the domain name to the owner of the trade or service mark"
(see definition of bad faith).  Do cybersquatters do this, yes.  But the
real question is: do other legitimate parties do it also, and the
answer is YES.  

For example, if a large commercial organization like Bell Atlantic
demands a domain name from a small noncommercial organization,
the normal response (and I have seen it a hundred times) is: "I don't
think you entitled to it, and yet I don't have the money to fight you. 
Here is the amount I invested in the domain name/publicity/website,
and here is the amount it would cost me to change to a new domain
name.  Bell Atlantic will you pay me this amount?"

Is this punishable conduct?--- not under existing rules in the US. 
Under US Federal Rules of Evidence, the small noncommercial
organization's offer to sell the domain name is not generally not
admissible in a court of law as evidence of its "guilt."  Why?
Because US Courts want to encourage the parties to compromise
and settle disputes among themselves, and neither side will give
anything if they know these acts of compromise can also be viewed
as acts of guilt. (US Federal Rules of Evidence 408). 

Under the WIPO proposals, the small noncommercial group
offering to transfer its new domain name to Bell Atlantic, say
THEBELL.ORG for a school organization, would be deemed to
have provided evidence of bad faith.  To create such a conflict
between protected action under traditional courts and unprotected
action under WIPO rules is to create a Catch-22 (an unwinnable
situation) for noncommercial entities.  

(5) The cybersquatting definition of WIPO encourages cyberspace
trademark abuse.  

Trademark attorneys know that in the courts of the US, they cannot
harass noncommercial organizations.  If  Apple Computer tried to
seize the domain name of Apple Internet Development Group (a
hypothetical non-commercial group with AppleD.org) on the
grounds that it was "misleadingly similar", the Court would deny
the request and could even impose sanctions against the attorneys
for bringing a frivolous law suit.   The Courts know that Apple is a
normal word and everyone has a right to use it in a generic,
descriptive or noncommercial way.   

WIPO offers us (the noncommercial community) no such protection
and fails to make a distinction between coined or fanciful marks
with lots of protection (made up words like Xerox and Exxon) and
normal dictionary words that have some limited protection for
certain commercial purposes under trademark law, but are otherwise
open to all to use (avoiding the "commercial monopolization" of
language -- a promise given by the US Supreme Court).  

Under its broad cybersquatting definitions, overly broad claims by
trademark owners are invited and will be made with impunity. 
There is no punishment for frivolous claims or harassment or
trademark abuse.  


II.  Continued work between ICANN and WIPO is inappropriate

In its report, the Working Group has recommended that WIPO go
back and come up with more decisions and recommendations.  I
think the noncommercial community show request that the role of
WIPO in drafting and rule making be ended with its report.  

WIPO did a very good job of gathering information from the
intellectual property community, and drafting this first cut of a
cybersquatting definition and procedures for arbitration.  But WIPO
has a vested interest in the outcome of this DNSO debate: it is an
intellectual property organization committed by its charter to the
expansion and harmonization of intellectual property law worldwide
and on the Internet.  While one can and should say many good
things about the commitment of the WIPO staff to this matter, one
cannot say that they are committed to the expansion and protection
of fair use, or to strong enforcement of the traditional limits,
exceptions and defenses to intellectual property laws).  

Under the White Paper, WIPO has given us its "recommendations."
They belong to the Internet community from there   to us.  Any
further work and calcification should be done by a balanced
committee created BY the Internet community, not by WIPO.  

Please let ICANN know your concerns before the Santiago meeting.  If don't 
communicate with ICANN, the Interim Board will almost certainly pass these 
proposals and domain name use we care about  (including, perhaps, our own) 
will suffer.  The ICANN comment email address is comment-udrp@icann.org.

[As background, I am a telecommunications and intellectual
property attorney, co-founder of the Domain Name Rights
Coalition, participant in WIPO's 1997 Consultative Meeting on
Trademarks and Domain Names and many other policy
proceedings, attorney for domain name holders in disputes, and
veteran of far too many cases of cyberspace trademark abuse by
large corporations against small noncommercial domain name
holders.]

- Kathryn Kleiman, ACM-IGC