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

["Martin B. Schwimmer" <martys@interport.net>]

The post below may create a mis-impression about the treatment of
non-commercial use under trademark law, in part because it does not clearly
make a distinction between non-commercial speech ABOUT a mark (which is per
se protected) and non-commercial use OF a mark which would not be protected
if deemed to be infringing.  You cannot solicit donations under the name
Xerox Charities, nor can you offer the not for profit Compaq Computer
Initiative, without the authorization of those trademark owners.

As for the Bell Atlantic hypo, let's reality test it.  The hypothetically
innocent not for profit, chooses thebell.org.  Rather than fight Bell
Atlantic, it asks for reimbursement of its expenses.  According to the
hypo, Bell (instead of reimbursing the expenses) now attempts to prove its
case by arguing that the DN
registrant's request for X dollars is proof of bad faith.  DN registrant
points out that it really is a not for profit organization (here are our
papers), it really is making non-commercial non-infringing use (after all,
we're asking for reimbursement of publicity expenses) it really costs X
(here's the cancelled check to the ISP and the web site designer) and this
is the only domain name we registered (so you know we're not in the
cybersquatting business.  So the not for profit wins.  So what is the
problem? You cannot design a dispute resolution where only winning claims
are brought.

How about this evidentiary rule for WIPO - allow the DN registrant to send
a "without prejudice" request for documentable expenses associated with
acquiring the name.



At 10:42 PM 8/16/99 EDT, you wrote:
>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
>---------------------------------------------------------------------------
---
>-------------
>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
>
>

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