[registrars] Multi-Lingual Disputes

["Michael D. Palage" <michael@palage.com>]

Hello All:

As was bound to happen, disputes involving multi-lingual domains are
beginning to pop-up. Listed below are some questions that one registrar has
asked with regard to a specific dispute they are currently involved with. I
have removed any reference to the specific company, but I believe that these
kinds of questions will be of value to the group. Again this is just my
humble opinion and should not constitute legal advise :-)

Best regards,

Mike

Question A. If a trademark holder requests to transfer or delete a
Multilingual domain name which has been registered by a third party and is
identical with his/her trademark, should an ICANN's accredited registrar
accept the request and transfer the domain name to the trademark holder or
delete the domain name?

Answer A. This depends on the terms of the contract that the Registrar has
with the domain name registrant. Most registrars elect not to get involved
in trademark disputes and refer the complaining trademark owner to the UDRP
provision that all ICANN accredited Registrars must incorporate into their
contract with the domain name registrant. However, with regard to
multi-lingual registrations, some registrars have modified their standard
registration contract to further limit the rights of a domain name
registrant. This modification was "advised" by the Registry during the
announcement of the Multi-lingual Testbed period. See suggested language
below:

http://www.nsiregistry.com/multilingual/genfaq.html#19

How will the VeriSign Global Registry Services handle trademark issues with
regard to international domain names?

As a registry, VeriSign Global Registry Services is not involved in the
intellectual property disputes surrounding domain name registration. The
VeriSign Global Registry Services will advise                    registrars
that, during the testbed, registrars should consider deleting any
multilingual second level domain name registration upon receipt of a formal
(written) objection from any legitimate                    source received
by that registrar for a limited period of time to be specified by the
particular registrar. In addition, the VeriSign Global Registry Services is
aware that accredited registrars may continue to use the Uniform Domain Name
Dispute Resolution Policy (UDRP) to resolve disputes, including those
involving multilingual domain names.

In response to this "advisement" some registrars have incorporated the
following contractual language that NSI (the registrar) has implemented. See
contractual terms below.

http://global.networksolutions.com/legal/service-agreement.jhtml;jsessionid=
52GHEEYAAAP4XWFI3EHCFGI

You specifically acknowledge and agree that an MDN shall be considered a
domain name for purposes of the Domain Name Dispute Policy and the
provisions relating thereto in this Agreement. Notwithstanding anything to
the contrary contained in the Domain Name Dispute Policy, you agree that
during the Test Bed we may terminate your registration of an MDN in our sole
discretion without notice to you if, within 45 days of your registration, we
receive a formal, written objection to the registration by any legitimate
authority, including without limitation a trademark owner or governmental
entity. Our right of termination under this provision shall continue until
such time as: (1) Verisign Global Registry Services publicly announces that
its                Test Bed is complete; and (2) we determine in our sole
discretion that all of the encoding schemes, protocols and other
MDN-enabling technologies that are used to provide your MDN registration
services have been approved by appropriate standard-setting bodies.

Therefore, if you company has incorporated the contractual language as
outlined by NSI the registrar above, it should be in your company's
discretion to cancel the domain name registration. If your company has not
incorporated this additional language I would have your legal representative
review your contract to see if their is another provision that will allow
for cancellation of the disputed name if you so choose. Most registrars
include a "catch-all" provision to minimize its potential liability. In the
alternative you can point the trademark owner to the UDRP which the domain
name registrant is still subject to.

Question B.  Is there any specific policies regarding ML domain dispute that
an ICANN's accredited registrar should be aware of?  If you do, please
provide these policies.

Answer B: The only policy regarding Multi-Lingual disputes that I know of is
the FAQ that the registry has posted above. I do not know of any policy
documents that ICANN has issued.

Question C: Where would be a proper e-mail address an ICANN's accredited
registrar can inquire questions or get assisted?

Answer C: Although over-worked and under-paid, I would suggest that you
contact the Registrar Liaison, Dan Halloran (halloran@icann.org).