The Current State of Domain Name Regulation : Domain Names As Second Class Citizens in a Mark-Dominated World [1 ed.] 9780203849583, 9780415477765

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Endorsements

This book is a must-read for any legal scholar or policy-maker interested in understanding the international public policy objectives and political negotiations behind internet domain name policy and trademark law policy. If you want to know how the intersection of trademark law and domain name policy has historically evolved, where it is right now, and where it is going, you have found the right book. – Robin D. Gross, Imagine Law, San Francisco; Executive Director of IP Justice, and Chair of ICANN’s Noncommercial Users Constituency (NCUC) Few academic studies are as timely and compelling as this book. Dr Komaitis provides the first comprehensive analysis and history of the UDRP. Dr Komaitis’ questions, insights and reformulations stand to alter the way we understand domain names and their meanings. His answers to the key question ‘How can we distance the domain names from the catalytic influence of trademark law?’ stand to pave a path to fairer and more neutral treatment of domain names for people around the world. This is an unprecedented book. – Kathryn A. Kleiman, Esq., Senior Internet Law and Policy Attorney, Internet Matters, Alexandria, VA As ICANN proceeds to expand generic top-level domains this timely and thorough critique of the legal regulation of the domain space provides a necessary analysis of the legal nature of domain names. Arguing that without sound ethical principles of equality, fairness and lawfulness underpinnings any regulation of the domain name space is flawed, Komaitis proffers well considered solutions for a just domain name polis firmly rooted in the experience of the first ten years of domain name dispute resolution. – Catherine Colston, University of Strathclyde

The Current State of Domain Name Regulation

In this book Konstantinos Komaitis identifies a tripartite problem – intellectual, institutional and ethical – inherent in the domain name regulation culture. Using the theory of property, Komaitis discusses domain names as sui generis ‘e-property’ rights and analyses the experience of the past ten years, through the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Anticybersquatting Consumer Protection Act (ACPA). The institutional deficit he identifies, generates a further discussion on the ethical dimensions in the regulation of domain names and prompts Komaitis to suggest the creation of an environment based on justice. The relationship between trademarks and domain names has always been contentious and the existing institutions of the UDRP and ACPA have not assisted in alleviating the tension between the two identifiers. Over the past ten years, the trademark community has been systematic in encouraging and promoting a culture that indiscriminately considers domain names as secondclass citizens, suggesting that trademark rights should have priority over the registration in the domain name space. Komaitis disputes this assertion and brings to light the injustices and the trademark-oriented nature of the UDRP and ACPA. He queries what the appropriate legal source to protect registrants when not seeking to promote trademark interests is. He also delineates a legal hypothesis on their nature as well as the steps of their institutionalisation process that we need to reverse, seeking to create a just framework for the regulation of domain names. Finally he explores how the current policies contribute to the philosophy of domain names as second-class citizens. With these questions in mind, Komaitis suggests some recommendations concerning the reconfiguration of the regulation of domain names. Konstantinos Komaitis Ph.D., LLM (Strathclyde University) and LLM (University of Sheffield) is a lecturer at the University of Strathclyde, Glasgow. He was also a member of ICANN’s Special Trademark Issues (STI) team and a drafter of the Uniform Rapid Suspension (URS) system.

Routledge Research in IT and e-Commerce Law

Available books in this series include: Law of Electronic Commercial Transactions Contemporary issues in the EU, US and China Faye Fangfei Wang Forthcoming books in this series include: Online Dispute Resolution for Consumers in the European Union Pablo Cortés

The Current State of Domain Name Regulation Domain names as second-class citizens in a mark-dominated world

Konstantinos Komaitis

First published 2010 by Routledge 2 Park Square, Milton Park, Abingdon, Oxon. OX14 4RN Simultaneously published in the USA and Canada by Routledge 270 Madison Avenue, New York, NY 10016 Routledge is an imprint of the Taylor & Francis Group, an informa business This edition published in the Taylor & Francis e-Library, 2010. To purchase your own copy of this or any of Taylor & Francis or Routledge’s collection of thousands of eBooks please go to www.eBookstore.tandf.co.uk.

© 2010 Konstantinos Komaitis All rights reserved. No part of this book may be reprinted or reproduced or utilised in any form or by any electronic, mechanical, or other means, now known or hereafter invented, including photocopying and recording, or in any information storage and retrieval system, without permission in writing from the publishers. British Library Cataloguing in Publication Data A catalogue record for this book is available from the British Library Library of Congress Cataloging in Publication Data Komaitis, Konstantinos. The current state of domain name regulation: domain names as second class citizens in a mark-dominated world/Konstantinos Komaitis. p. cm. Includes bibliographical references. ISBN-13: 978-0-415-47776-5 (hbk) ISBN-10: 0-415-47776-X (hbk) ISBN-13: 978-0-203-84958-3 (ebk) ISBN-10: 0-203-84958-2 (ebk) 1. Internet domain names-Law and legislation. I. Title. K1569.k66 2010 346.048’8–dc22 ISBN 0-203-84958-2 Master e-book ISBN

ISBN 13: 978-0-415-47776-5 (hbk) ISBN 13: 978-0-203-84958-3 (ebk)

To all legitimate registrants

Contents

Table of legislation Table of cases Preface Selected acronyms 1

Introduction: taking on the sins of ICANN and the UDRP 1.1 Problematising domain name disputes 3 1.2 The research issue 5 1.3 Designing the hypothesis 6 1.4 Goals and plan of the book 7

xii xiv xxiv xxvii 1

PART I

Intellectual problem

9

2

Contextualising property 2.1 The place of property: where property law currently resides 14 2.2 The political mapping of property 19

11

3

Introducing trademarks 3.1 Intellectual property and trademarks 25 3.2 Defending trademarks 27 3.3 The legal philosophy of trademarks 29 3.4 The economic value of trademarks 31 3.5 The political mapping of trademarks 35

24

x

Contents 4 Domain names: their technological, socio-economic and legal status 4.1 The technical nature of domain names: what’s in a name? 41 4.2 The socio-economic function of domain names 44 4.3 Socio-economic norms in the domain name market 45 4.4 Domain name legal theories 48 4.5 Domain names as property 62

39

PART II

Institutional problem

71

5 History of domain name institutionalisation 5.1 ICANN’s authority to create the UDRP 76 5.2 The road to the UDRP 79 5.3 ICANN launches the UDRP 82

73

6 ‘Lex domainia’: the new lex mercatoria?

85

7 The UDRP and arbitration 7.1 Justification of arbitration and the scope of the New York Convention 89 7.2 Arbitration and the UDRP: the face-off 91

89

8 Issues of procedural unfairness 8.1 The UDRP restricts the legal rights of registrants 96 8.2 Issues of inconsistency in a uniform system 100 8.3 Can courts conduct a sufficient review of the UDRP? 107

96

9 Free speech in the context of the UDRP 10 Regulating domain names nationally: the case of the Anticybersquatting Consumer Protection Act 10.1 The U.S. approach prior to the enactment of ACPA 121 10.2 The Anticybersquatting Consumer Protection Act 125 10.3 The rationale behind in rem jurisdiction 127 10.4 ACPA and in rem: a dangerous combination 129 10.5 ACPA v. international institutions 136 10.6 The incompatible status of gTLDs and national legislation 139

113

119

Contents xi 11 Applying the UDRP and ACPA in the right context

141

PART III

Ethical problem

147

12 ‘Haves’ and ‘have nots’ 12.1 Ethical concerns in the context of the UDRP 151 12.2 The domain name ó ς 160

149

PART IV

Themes and issues

167

13 Forwards and backwards … 13.1 Reconfiguring the regulation of domain names 172 13.2 Procedural level 173 13.3 Techno-legal level 180 13.4 Political level 182

169

14 Repeating the same mistakes: new gTLDs and the IRT recommendation report 14.1 Injustice at a procedural level 187 14.2 The report’s substantive issues 189 14.3 The taming of trademark protection 195 Notes Bibliography Index

185

197 236 257

Table of legislation

European Union European Communities Convention on Jurisdiction and the Enforcement of Judgments in Civil and Commercial Matters (‘Brussels Convention’), 1972 O.J. L229, reprinted in 8 ILM 229, 1968, amended at 1990 O.J. C 189 First Council Trademark Directive 89/104/EEC (21 December 1988) Roman law Corpus Juris Civilis CLT United Kingdom Trade Marks Act (1994) Arbitration Act (1996) United States Anticybersquatting Consumer Protection Act, Pub. L. No. 106113, 113 Stat. 1536, codified at 15 U.S.C. § 1125 (d) Federal Trademark Dilution Act, 15 United States Code, Chapter 15, Section 1125 (c) (1) Lanham Act, Title 15, Chapter 3, Sections 81134, Repealed 5 July 1946, ch. 540, Sec. 46a, 60 Stat. 444 Restatement Third of Foreign Relations Law of the United States 101 cmt.e, 402 (1982) Restatement Third, Unfair Competition (1995) United States Constitution International instruments Convention Establishing the World Intellectual Property Organization (14 July 1967); amended 28 September 1979

Table of legislation

xiii

Convention of Paris for the Protection of Industrial Property (March 20, 1883); revised at the Stockholm Revision Conference (14 July 1967) European Convention on Commercial Arbitration (1961) Geneva Protocol on Arbitration Clauses (1923) Geneva Convention on the Execution of Foreign Arbitral Awards (1927) InterAmerican Convention on International Commercial Arbitration of Panama (1975) New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards, New York (June 10, 1958); United Nations, Treaty Series, Vol. 330, 38, No. 4739 (entered into force 7 June 1959) Rome Convention, on the Law applicable to Contractual Obligations, Official Journal C 027 (1980) UNCITRAL, Model Law on International Commercial Arbitration UNEP, Report on the Implementation Committee for the Montreal Protocol, UNEP/OzL.Pro/Imp/Com/20/4 Vienna Convention on the Law of Treaties, 1155 (opened for signature 23 May 1969) World Bank, Convention on the Settlement of Investment Disputes between States and Nationals of other States (1965)

Table of cases

Court cases Canada Douglas Black v. Molson Canada, Court File No. 02CV231828CM3 (Ont. S.C.J.) 2002 European Union Sabel v. Puma, C251/95 [1997] E.C.R. 16191; [1998] R.P.C. 199 Germany John Zuccarini v. Toyota Motor Sales USA Landgerich Dusseldorf (2002) India Maruti Software v. Maruti Udyog, Delhi High Court, Appeal No. D2000-1038 (1997) Malaysia 2000 Skrine v. My Information Centre, Malaysian High Court (2002) United Kingdom Aristoc v. Rysta, 62 RPC 65 (1945) Arsenal Football v. Reed, [2002] All ER (D) 180, Ch. D., Court of Appeal (Civil Division) [2003] EWCA Civ. 96, [2003] All ER D 289 (May) Avnet Inc. v. Isocat, [1998] FSR 16 222 Beauticatic v. Mitchell [2000] RSR 267 Daawat Trade Mark Application [2002] RPC 12 Dee’s Application, [1990] RPC 159 CA

Table of cases

xv

Demon Ale Trade Mark, [2000] RPC 345 Distillers Corp. (SA) v. South African Breweries (1976) 3 SA 515 AD Dunnachie & Co. v. Young & Sons, 4 Ct. Sess. Cas. (4th Series) 874, 1883 Eurolamp Trade Mark, [1997] RPC 279 Harrods v. UK Network Services, Michael Lawrie, The Times, December 9, 1996 222 Hoffman La Roche, Case 102/77, [1978] ECR 1139 Hon. Nicholas Augustine Plant v. Service Direct, [2006] EWCA Civ. 1259 60, 206 Marks & Spencer v. One in a Million, [1998] FSR 265 222 Millington v. Fox (1838) My & Cr 338 29 Mirage Studios v. Counterfeat Clothing, [1991] 20 IPR 185 Mitchell v. Forsyth, 472 YS 511 Mothercare UK v. Penguin Books [1998] RPC 113 Palmer v. Harris 60 Pa. ST 156-9 (1869) Philips Electronics v. Remington Consumer Products (No. 2), Court of Appeal Procter & Gamble’s Trade Mark Application [1999] RPC 673; Civil Division, [1999] RPC 809 and C299/99, [2002] ECR 10000 Reckitt & Colman Products v. Borden and others, [1990] 1 All ER 873 Re Boots Co. sub nom. Dee Corp., [1990] RPC 159 CA Re Coca-Cola Co., [1986] 2 All ER 274 Reuter v. Mulhens (No. 2) [1953] 70 RPC 235 Southwestern Bell Yellow Pages v. Wilkins, 920 SW 2d 544 Trillium, unreported, 28 March 2000, C000053447/1 Whitman v. American Trucking Association, 121 t 903 (2001) Windsurfing Chiemsee v. Attenberger, C108/97 and C109/97 [1999] ECR 12779 Wyeth v. Knoll, [2002] EWHC 899 Zippo, [1999] RPC 173 Zirco Corp. v. AT&T, 21 U.S.P.Q. 21 (BNA) 1542 (TTAB 1991) United States Alitalia-Linee Aeree Italiane v. Casinoitalia.com, 128 F. Supp. 2d 340 (E.D. Va. 2001) 225 America Online v. Deep et al., 01CV909A (E.D. Va. 2001) America Online v. Huang, 106 F. Supp. 2d 848 (E.D. Va. 2000) 226 America Online Latino v. AOL Time Warner et al., 02CV4796, LEXIS 22666 (S.D.N.Y. 2002) American Airlines v. A 1-800-A-M-E-R-I-C-A-N Corp., 622 F. Supp. 673 (N.D. Ill. 1985) American Information Systems v. Board of Regents of the University of New Mexico, 00CV837 (E.D. Va. 2000) American Steel Foundries v. Robertson, 269, U.S 372 (1926) American Waltham Watch Co. v. United States Watch Co. 53 N.E. 141 (Mass. 1899) 221

xvi Table of cases AntiMonopoly v. General Mills Fun Group, 684 F. 2d 1316 (9th Cir. 1982) AT&T Corp. v. ATT.com, No. 01CV1729 (E.D. Va. 2001) Austin v. American Association of Neurological Surgeons, 120 F. Supp. 2d 1151 (N.D. Ill. 2000) Avant v. Millennium & Copthorne International, CV 001027A (E.D. Va. 2000) Avery Dennison Corp. v. Sumpton, 189 R. 3d 868 (9th Cir. 1999) Babson Bros. Co. v. Surge Power Corp., 39 U.S.P.Q. 2d (BNA) 1953, 1954 (TTAB) Banco Inverlat v. www.inverlat.com 112 F. Supp. 2d 521 (E.D. Va. 2000) 220 Barcelona.com v. Excelentisimo Ayuntamiento de Barcelona, 330 F. 3d. 617 (4th Cir. 2003) 219 Barcelona.com v. Excelentisimo Ayuntamiento de Barcelona, 001412A (E.D. Va. 2002) 104–107, 233 Barcelona.com v. Excelentisimo Ayuntamiento de Barcelona, 021396 (4th Cir. 2002) Bargman v. DaimlerChrysler Corp., 00CV992A (E.D. Va. 2000) BAS Industries v. Indian Industries, Case No. 3.00CV2341 (D.Ct. 2000) Board of Regents v. Roth, 408 U.S. 564 (1972) Bosley Medical Institute v. Kremer et al., 01CV1752 (S.D. Cal. 2001) Bosley Medical Institute v. Michael Steven Kremer, 01CV4388 (N.D. Ill. 2001) Boyd v. Roberts, 00CV968 (E.D. Va. 2001) Broadbridge Media v. Hyercd.com, 106 F. Supp. 2d 505 (S.D.N.Y. 2000) Brookfield Communications v. West Coast Entertainment Corp., 174 F. 3d, 1036 (9th Cir. 1999) 223 BuddyUSA v. America Online Corp., 01CV845A (E.D. Va. 2001) Burnham v. Superior Court, 495 U.S. 604 (1990) 132, 133, 226 Cable News Network v. cnnews.com, 162 F. Supp. 2d 484 (E.D. Va. 2001) 132, 133, 139, 203, 225, 226 California Cooler v. Loretto Winery, 774 F. 2d 1451 (9th Cir. 1985) Cardservice International v. McGee, 950 F. Supp. 737 (E.D. Va. 1997) 121, 122, 223 Ceasars World v. CeasarsPalace.com. No. 99550A, 2000, US Dist. (E.D. Va. 2000) 220, 226 Century 21 Real Estate Corp. v. Nevada Real Estate Advisory Commission, 448 F. Supp. 1237 (D. Nev. 1978) Charles Crews v. Biologische Heilmittel Heel, 02CV716 (E.D. Va. 2002) Checkpoint Systems v. Check Point Software Technologies, 2001 WL 1250096 (3rd Cir.) College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board 527 US 666 (1999) 197 College Savings Bank v. Florida Prepaid Postsecondary Education Expense Board, Nos. CIV. 955610 (GEB), 1996 WL 728173 (D.N.J. 13 December 1996) Columbia Insurance Co. v. Seescandy.com, 185 F.R.D. 573 (N.D. Cal. 1999) 128 Commonwealth of Kentucky v. 141 Internet Domain Names, Franklin Circuit Court, Division II, Case No. 08-CI-1409 59, 206 Cytanovich Reading Center v. Reading Game, 208 Cal. Rptr. 412 (Ct. App. 1984) DC Micro Development v. Lange, 3:02CV225(H) (W.D. Ky. 2003)

Table of cases

xvii

Dluhos v. Strasberg, No. 013713 (3rd Cir. 2003) Dial-a-mattress Franchise Corp. v. Page, 880 F. 2d 675 (2d Cir. 1989) Domain Name Clearing Co. v. FCF, 2001 U.S. App. LEXIS 15619, No. 002509 (4th Cir. 2001) Domain Name Clearing Co. v. FCF, 2000 U.S. Dist. LEXIS 21624, No. 001305A (E.D. Va. 2000) Domain Name Clearing Co. v. FCF, No. 745530 (San Diego Co. Superior Ct. 2000) 143 Dorer v. Arel, 60 F. Supp. 2d 558 (E.D. Va. 1999) 51, 52, 53, 55 Downing v. Mun. Court, 88 Cal. App. 2d 345 (1948) 206 Dranoff-Perlstein Associates v. Sklar, 967 F. 2d 852 (3d Cir. 1992) 205 ECards v. King, Civ. File No. 993726SC (N.D. Cal. Filed 2000) E. & J. Gallo Winery v. Spider Webs, 129 F. Supp. 2d 1033 (S.D. Tex. 2001) 227 Easthaven v. Nutrisystem.com, Doc. 00CV202854 (Ont. SC 2001) Eldred v. Ashcroft, 537 U.S. 186 (2003) 221 Eric S. Bord v. Banco de Chile, 01CV1360A (E.D. Va. 2001) ESS Entertainment 2000 v. Rock Start Videos, 444 F. Supp. 2d 1012 (C.D. Cal. 2006) 221 ETW Corp. v. Jireh Publishing, 332 F. 3d 915 (6th Cir. 2003) 221 Eurotech et al. v. Cosmos European Travels, 2002 U.S. Dist. LEXIS 3984, 01CV1689A (E.D. Va. 2002) Eurotech et al. v. Cosmos European Travels, 2002 U.S. LEXIS 13615 (E.D. Va. 2002) EuroZonecom v. Europay International, IP000955D/F (S.D. Ind. 2000) Express Mortgage Brokers v. Simpson Mortgage 31 U.S.P.Q. 2d 1371 (E.D. Mich. 1994) Fairway Foods v. Fairway Markets, 227 F. 2d 193 (9th Cir. 1955) Falwell v. Cohn et al., 02CV40 (W.D. Va. 2003) Fargo & Co. v. Wells Fargo Express Co., 556 F. 2d 406 (9th Cir. 1977) Farmology.com v. Perot Systems Corp., 158 F. Supp. 2d 589, No. 002363 (E.D. Pa. 2001) First Charter Land Corp. v. Fitzgerald, 643 F. 2d 1011 (4th Cir. 1981) 198 First Keystone Federal Savings Bank v. First Keystone Mortgage, 923 F. Supp. 693 (E.D. Pa. 1996) Fisons Horticulture v. Vigoro Industries, 30 F. 3d 466 (3d Cir. 1994) FleetBoston Financial Corp. v. Fleetbostonfinancial.com, 138 F. Supp. 2d 121 (D. Mass. 2001) 225, 226 Fleischmann Distillery Corp. v. Maier Brewing Co., 386 U.S. (1967) Ford Motor Co. v. Greatdomains.com. 177 F. Supp. 635 (E.D. Mich. 2001) 223, 227 Formula One Licensing v. Purple Interactive et al., 2001 U.S. Dist. LEXIS 2968 (N.D. Cal. 2001) Formula One Licensing v. Purple Interactive, No. C 00-2222 MMC (N.D. Cal. Feb. 6, 2001) Freecycle Network v. Oey, 505 F. 3d 898 (9th Cir. 2007) 221

xviii Table of cases Gilmer v. Interstate/Johnson Lane Corp., 500 U.S. 20 (1991) Guardian Life Insurance Co. v. American Guardian Life Assurance Co., 943 F. Supp. 509 (E.D. Pa. 1996) Hanover Star Milling Co. v. Metcalf, 240 U.S. 403 (1916) 24 Harold A. Meyer III v. National Deaf Children’s Society, 02CV 315 (D.R.I. 2002) Harrods v. Sixty Internet Domain Names, 110 F. Supp. 2d 420 (E.D. Va. 2000) Hartford Fire Co. v. California, 509 U.S. 764 (1993) Heathmount AE Corp. v. Technodome.com, 106 F. Supp. 2d 862 (E.D. Va. 2000) Hilton v. Guyot, 159 U.S. 113 (1895) HQM Ltd. v. Hatfield, 71 F. Supp. 2d 500 (D. Md. 1999) 228 Holiday Inns v. 800Reservation, 838 F. Supp. 1247 (E.D. Tenn. 1993) Holiday Inns v. 800Reservation, 86 F. 3d 619 (6th . Cir. 1996) Imperial Tobacco v. Philip Morris, 899, F. 2d 1575 (Fed. Cir. 1990) In re Texas Pig Stands, No. 05-52336 (Bankr. W.D. Tex. 2008) 229 Innovative Merchant Solutions v. AMH Processing, d.b.a. S&S Bankcard Systems et al., CV022050 LGB (C.D. Cal. 2002) International Café v. Hard Rock Café International (USA), 252 F. 3d 1274 (11th Cir. 2001) 227 Interactive Media Entertainment and Gaming Association v. Commonwealth of Kentucky, 2008-CA-002000-OA 206 Intercon v. Bell Atlantic Internet Solutions, 205 F. 3d 12244 (10th Cir. 2000) Intermatic v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996) 123, 124 International Bancorp. v. Société des Bains de Mer et du Cercle des Etrangers à Monaco, 2002 U.S. Dist. LEXIS 3382, 01115A (E.D. Va. 2002) International News Services v. Associated Press, 248 U.S. 215 (1918) 63 International Shoe Co. v. Washington, 326 U.S. 310, 1945 130–133 Internet Billion Domains v. Venetian Casino Resort, 2002 U.S. Dist. LEXIS 11805m C.A. 015417 (E.D. Pa. 2002) I. P. Lund Trading v. Kohler Co., 163 F. 3d 27 (1st Cir. 1998) Jacob Siegel Co. v. FTC, 327 U.S. 608 (1946) 197 James Borrough Ltd and Kobrand Corp. v. Sign of the Beefeater and Montgomery Ward & Co., 192 U.S.P.Q. 555; 540 F. 2d 266 (1976) 202 James Bray v. Board of Regents of the University of New Mexico et al., CV00379 (D. N.M. 2001) Jay David Sallen d.b.a. JDS Enterprises v. Corinthians Licenciamentos and Desportes Licenciamentos, 273 F. 3d 14, No. 011197 (1st Cir. 2001) 109–111, 220, 221, 233 Jay David Sallen v. Corinthians Licenciamentos, 00CV11555 (D. Mass. 2000) Kevin Spacey v. Jeffrey Burgar, CV 013848GAF (C.D. Cal. 2001) Kremen v. Cohen, 2000 WL 1811403 (N.D. Cal. 2000); 99 F. Supp. 2d 1168 (N.D. Cal. 2000); 325 F. 3d 1035 (9th Cir. 2003); No. 0115899, D.C. No. CV9820718JW 56, 57, 59, 62, 206, 207 KP Permanent Make-up v. Lasting Impression I, 543 U.S. 111 (2004) 222 L. L. Bean v. Drake Publishers, 811 F. 2d 26 (1st Circ. 1987) 221 Lawrence Storey v. Cello Holdings, 182 F. Supp. 2d 355, 2002 US. Dist. LEXIS 1029, 01 Civ. 208 (S.D. N.Y. 2002)

Table of cases

xix

Lever Bros v. Winser, 326 F. 2d 817 (C.C.P.A. 1964) 203 Loblaw Companies and Loblaws v. Guita M. Azimi d.b.a PresidentChoice.com, 2001 U.D. Dist. LEXIS 20793, No. C003591 (N.D. Cal. 2001) Lockheed Martin Corp. v. Network Solutions, 985 F. Supp. 949 (C.D. Cal. 1997) 223 Major Bros v. Franklin, 25 Rep. Pat. Cas. 406 (1908) 201 Mattel v. MCA Records, 296 F. 3d 894 221 MDT Corp. v. New York Stock Exchange, 858 F. Supp. 1028 (C.D. Cal. 1994) Mead Data Central v. Toyota Motor Sales USA, 875 F. 2d 1026 (2nd Cir. 1989) Miles Labs v. Frolich, 195 F. Supp. 256 (S.D. Cal. 1961) 203 Mitchell v. Forsyth, 472 U.S. 511 (1985) Moore v. Regents of the Univ. of Cal., 793 P.d 479 (Cal. 1990) 199 Mullane v. Central Hanover Bank & Trust Co. 339 U.S. 306 (1950) Northern Light Tech v. N. Lights Club, 236 F. 3d 57 (1st Cir.) (2001) Nabisco v. PF Brands, 191 F. 3d 208 (2nd Cir. 1999) 223 National Collegiate Athletic Association v. Desire and Alan Bishop, IP 01C1142M/S (S.D. Ind. 2001) National Collegiate Athletic Association v. NCAAbasketballodds.com et al., No. 01374A (E.D. Va. 2001) Network Solutions v. Clue Computing, 946 F. Supp. 858 (D. Colo. 1996) 204 Network Solutions v. Umbro International, 529 S.E. 2d 80 (Va. 2000) 53, 55, 57, 204, 205, 206 Nissan Motor v. Nissan computer, 378 F. 3d 1002 (9th Cir. 2004) 232 New Kids on the Block v. New American Publishing, 971 F. 2d 302 (9th Cir. 1992) 221, 222 Nollan v. California Coastal Commission, 483 US 825 (1987) 65 Northern Light Tech v. Northern Lights Club, 97 F. Supp. 2d 96, 109 (D. Mass. 2000) Oriel v. Russell, 278 U.S. 358 (1929) 205 Paccar v. Telescan Technologies, 115 F. Supp. 2d 772 (E.D. Mich. 2000) Palmer v. Harris, 60 Pa. St. 156–9 (1869) 202 Panavision International v. Toeppen, 141 F. 3d 46 U.S.P.Q. 2d (CA. 1998) 223, 232 Parisi v. Netlearning, 139 F. Supp 2d 745; 139 F. Supp. 2d 745, CV 001823A (E.D. Va. 2001) 93, 94, 216 People for the Ethical Treatment of Animals v. Doughney, 113 F. Supp. 2d 915 (E.D. Va. 2000) 225 Philip R. McNeil v. The Stanley Works, 2002 U.S. App. LEXIS 6762, No. 0016557 (9th Cir. 2002) Pierson v. Post, [3 Caines 175, 2 A.D. 264] (N.Y. Sup. Ct., 1805) 200 Polaroid Corp. v. Polarad Electronics Corp., 287 F. 2d 492 (2nd Cir. 1961) Polaroid Corp. v. Polaroid, 319 F. 2d 830 (7th Cir. 1963) Porsche Cars North America v. Porsch.com, 51 F. Supp. 2d 707 (E.D. Va. 1999) 225 Porsche Cars North America, v. Porsche.net, 302 F. 3d 248 (4th Cir. 2002)

xx

Table of cases

Porsche Cars North America v. AllPorsche.com, 251 F. 3d 1320 (table), WL 742185 (4th Cir. 2000) 225 Prune Yard Shopping Centre v. Robins, 447 U.S. 74 (1980) 207 Radio Computing Services v. Roland Computing Services, S.D. N.Y., No. 00 Civ. (1950) Re Hotels.com, United States Court of Appeals for the Federal Circuit, 20081429 (Serial No. 78/277, 681) 205 Reed Elsevier Properties, 482 F. 3d No. 2006-1309 50 Referee Enters. v. Planet Ref., No. 001391 (E.D. Wis. 24 Jan. 2001) Registral.com v. Fisher Controls International and National Arbitration Forum, C011423 (S.D. Tex. 2001) Registral.com v. Fisher Controls International and National Arbitration Forum, 2001 U.S. Dist. LEXIS 10002, H011423 (S.D. Tex. 2001) Registral.com v. Fisher Controls International and National Arbitration Forum, 2001 U.S. Dist. LEXIS 9990, H011423 (S.D. Tex. 2001) Reliant Energy v. Robert Wiggins, 01CV3590 (S.D. Tex. 2001) Retail Services et al. v. Freebies Publishing et al., 2003 U.S. Dist. LEXIS 2934, 02CV1111 (E.D. Va. 2003) Ringling Bros-Barnum & Bailey Combined Shows v. Utah Div. of Travel Dev., 170 F. 3d 449 (4th Cir. 1999) 228 Rogers v. Grimaldi, U.S. Court of Appeals, 2nd Cir. 875 F. 2d 994 Shaffer v. Heitner, 433 U.S. 186 (1997) 130–133, 226 Shri Ram Chandra Mission v. Sahajmarg.org, 139 F. Supp. 2d 721 (E.D. Va. 2001) Smith v. Network Solutions, 135 F. Supp. 2d 1159 (N.D. Ala. 2001) 227 Spider Webs v. Casa Editorial el Tiempo, H01CV1402 (S.D. Tex. 2001) Spider Webs v. David Taylor Cadillac, 00CV4263 (S.D. Tex. 2002) Steele v. Bulova Watch Co., 344 U.S. 280 (1952) 203 Sterling Drug v. Bayer, 14 F. 3d 733 (2nd Cir. 1994) Strick Corp. v. James B. Strickland, Jr, 00CV3343 (E.D. Pa. 2001) 142 Thumann v. Weekly Homes, H01CV1458 (S.D. Tex. 2001) Times Mirror Magazines v. Las Vegas Sports News, 212 F. 3d 157 (3rd Cir. 2000) 223 Toronto Dominion Bank v. Boris Karpachev, 2002 U.S. Dist. LEXIS 3647, 0110279RGS (D. Mass. 2002) Trademark Cases, 100, U.S. 82, 94 (1879) Twin Peaks Productions v. Publications International, 996 F. 2d 1366 (2nd Cir. 1993) 221 Umbro International v. 3263581 Canada, 48 Va. Cir. 139 (1999) 205, 206 United States v. General Motors Corp. 323 U.S. 373 (1945) United States v. Lopez, 514 U.S. 549 (1995) V&S Vin & Spirit v. Christina Hanson, Bo Ernfridsson and Absolut Beach Party d.b.a. Absolut Beach, CV01164A, 146 F. Supp. 2d 796 (E.D. Va. 2001); U.S. Dist. LEXIS 24848 (E.D. Va. 2001) V. Secret Catalogue v. Moseley, 259 F. 3d 464 (6th Cir. 2001) 182, 232

Table of cases

xxi

Virginia State Board of Pharmacy v. Virginia Citizens Consumer Council, 425 U.S. 748 Vanity Fair Mill v. T. Eaton Co., 234 F. 2d 633 (2nd Cir.) VeriSign v. Venesign.com, 1:00CV01507 (E.D. Va. 2001) Victoria’s Cyber Secret v. V. Secret Catalogue et al., 161 F. Supp. 2d 1339, 01CV1095 (S.D. Fla. 2001) Victoria’s Secret Stores et al. v. Artco Equipment Co., 2002 U.S. Dist. LEXIS 5730, C201198 (S.D. Oh. 2002) Virtual Countries v. Republic of South Africa, 148 F. Supp. 2d 256 (S.D. N.Y. 2001); 300 F. 3d 230 (2nd Cir. 2002) Virtuality and Now Corp. v. Bata, 138 F. Supp. 2d 677, H003054 (D. Md. 2001) Wawa v. Haaf, 40 U.S.P.Q. 2d (BNA) 1629 (E.D. Pa. 1996) WeberStephen Products Co. v. Armitage Hardware & Building Supply, No. 00C1738 (N.D. Ill. 2000) Whitman v. American Trucking Association, 121 t 903 (2001) William L. Stanley v. US Department of Commerce, 02CA192 (W.D. Tex. 2002) Yun Ye v. Traditions, 00CV1854 (N.D. Cal. 2001) Yuba River Power Co. v. Nevada Irrigation District 279 P 128 (Cal. 1929) 206 UDRP cases CPR Institute for Dispute Resolution Nutrisystem.com v. Easthaven, CPR No. 012 eResolution Bata v. Virtuality, AF289b, AF289c Beverages & More v. Glenn Sobel, AF0092 232 Loblaws v. PresidentChoice.com, AF0170 144 Rick Adams for and on behalf of Cello Holdings v. Lawrence A. Storey, d.b.a. LawrenceDahl Co., AF506 Shore Media Ventures v. Both Worlds, AF0228 232 National Arbitration Forum (NAF) America Online v. John Deep d.b.a. Buddy USA, FA96795 Biologische Heilmittel Heel v. Chuck Crews, FA105902 CMG Worldwide v. Eric Dhulos, FA94909 CMG Worldwide v. Naughtya Page, FA95641 David Taylor Cadillac/Buick Co. v. Spider Webs, FA95832 DC Micro Development a.k.a. TopDog Software v. Sophtware.com, FA137042 FCF v. Domain Name Clearing Co., FA93765

xxii

Table of cases

Freebies Publishing v. Retail Services, FA112565 Furrytails v. Andrew Mitchell d.b.a. Oxford DieCast, FA96532 Fisher Controls International v. Registral.com, FA96749 Indian Industries v. Ping Pong Mania & Sporting Goods Co., FA95751 Innovative Merchant Solutions v. S&S Bankcard Systems, FA109721 Kevin Spacey v. Alberta Hot Rods, FA114437 Marcus R. Schatte a.k.a. Sex v. Personal, FA124756 Miller Brewing Co. v. the Miller Family, FA104177 Molson Canada v. %2d%2d, FA112451 Netlearning v. Dan Parisi, FA95471 Perot Systems Corp. v. DomainSale, FA94725 Referee Enters. v. Planet Ref., FA40000 Regents of the University of New Mexico v. American Information Systems, FA94306 Shri Ram Chandra Mission v. Shri Ram Chandra Mission, FA94237 Strick Corp. v. James B. Strickland, Jr, FA94801 The Stanley Works v. Phil O’Neil, FA94233 Traditions v. noname.com, FA94388 V&S Vin & Spirit v. IQ Management Corp., FA98440 V Secret Catalogue et al. v. Artco, FA94342 Victoria’s Secret v. Victoria’s Cyber Secret, FA96536 Weekly Homes v. Fix my House or Else? FA96609 World Intellectual Property Organisation (WIPO) Ahead Software v. its friday, D2001-0883 219 America Online v. Popixel Art d.b.a. America Online Latino, D2001-0957 Aspis Liv. Försäkrings v. Neon Network, D2008-0387 116 AT&T Corp. v. ATTime, D20010804 Banco de Chile v. Bord, D2001-0695 142, 143, 228, 230 Bosley Medical Group and Bosley Medical Institute v. Michael Kremer, D2001-1647 Canada v. eResolution.com, D20000110 Casa Editorial el Tiempo v. Spider Webs, D2000-1757 Clorox Co. v. Marble Solutions a.k.a. Adam Schaefer, D2001-0923 232 Cosmos European Travels v. Eurotech Data Systems Hellas, D2001-0941 Corinthians Licenciamentos v. David Sallen et al., D2000-0461 Cruzeiro Licenciamentos v. David Sallen et al., D2000-0715 DaimlerChrysler Corp. v. Brad Bargman, D2000-0222 Diagio v. John Zuccarini, Individually and t.a. Cupcake Patrol, D2000-0996 Dixons Group v. Purge IT, D2000-0584 Dixons Group v. Abu Ahdullaah, D2007-0843 222 Document Tech. v. International Electronic Communications, D2000-0270 231 Dow Jones v. Idea Studios, D2009-1033 144 Educational Testing Service v. TOEFL, D2000-0044 219 Europay International v. Eurocard.com, Eurocard.org and Chad Folkening, WIPO D2000-0173

Table of cases

xxiii

Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com, D2000-0505 219 Formula One Licensing v. Formula One Internet, D2000-0193 Furrytails v. Andrew Mitchell d.b.a. Oxford DieCast, D2001-0857 Ha’aretz Daily Newspaper v. United Websites, D2002-0272 Julia Fiona Roberts v. Russell Boyd, D2000-0210 Lockheed Martin Corp. v. Nig Ye, D2000-1733 Lion Nathan v. Wallace Waugh, D2000-0030 219 Maruti Udyog v. Maruti Software, D2000-1038 Millennium & Copthorne International v. Blanche McGovern, D2000-0318 Monty and Pat Roberts v. J. Bartell, D2000-0300 232 National Collegiate Athletic Association v. Rosemary Giancola, D2000-0836 National Deaf Children’s Society and NDCS v. Nude Dames, Chat, Sex, D20020128 NCAA v. Randy Pitkin et al., D2000-0903 Reliant Energy v. Robert Wiggins, D2001-0769 Reverend Dr Jerry Falwell and the Liberty Alliance v. Gary Cohn, Profile.net and God.info, D2002-0184 Shoe Zone v. Moniker Privacy Services/DNS Admin. D2009-0964 219 Skrine v. Skrine et al., D2000-1105 Société des Bains de Mer et du Cercle des Etrangers à Monaco v. I. Bancorp Europe et al., D2000-1323 Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Services et al., D2000-1328 Société des Bains de Mer et du Cercle des Etrangers à Monaco v. International Lotteries et al., D2000-1327 Société des Bains de Mer et du Cercle des Etrangers à Monaco v. Britannia Finance et al., D2000-1315 SudChemie v. tonsil.com, D2000-0376 Telekom Austria v. William L. Stanley, D2002-0171 Telstra v. Nuclear Marshmallows, D2000-0003 219 Toronto Dominion Bank v. Boris Karpachev, D2000-1571 144 Toyota Motor Sales USA v. John Zuccarini, D2002-0951 Venetian Casino Resort v. International Services and Internet Billions Domains, D2001-0678 VeriSign v. Venesign, D2000-0303 144 Wal-mart Stores v. Walsucks and Walmarket Puerto Rico, D2000-0477 228 WeberStephen Products Co. v. Armitage Hardware, D2000-0187 Windsor Fashions v. Windsor Software Corp., D2002-0839 Winterson v. Hogarth, D2000-0235 World Wrestling Federation Entertainment v. Michael Bosman, D99-0001

Preface

In April 2001, I was a postgraduate student attending a conference organised by the Norwegian Centre of Computers and Law of the University of Oslo. In the morning session, Diane Cabell, then fellow at Harvard’s Berkman Center for Internet and Society and UDRP panellist, went to the podium and started talking about domain names and trademarks. It was the first time I was hearing words like ‘domain names’, ‘UDRP’, ‘TLD’ and all the other acronyms that now constitute part of my everyday vocabulary. Diane’s presentation was fascinating and really captured my attention. She was sharing with us her experience on how domain name disputes are adjudicated under the UDRP, the role of ICANN and asked us – as young scholars – to follow closely this area of law that, at the time, was in its infancy. In her presentation, she started by comparing the role and scope of trademarks with that of domain names, and exploring the analogy between the two identifiers. She warned us that this was only the beginning of a long process, fearing how the vested interests of the trademark community would expand the scope of trademark law and could potentially dominate the domain name space. She was right. Actually, she was spot-on. Everything she predicted happened and her concerns were not unjustified. The UDRP and the interaction between domain names and trademarks would ultimately become the focus of my postgraduate dissertation. In the summer of 2001, for the first time, I started researching, thinking, understanding and rationalising domain names, their relationship with trademarks and their nature. It was a difficult task. Back then, most of the world did not understand domain names; actually, most of the world was not even on line. While the United States was experiencing the dot-com boom, in Europe online commerce had not manifested its full potential. Domain name registrations were still in an infant state, but they were expanding exponentially. From one day to another we went from standing in cinema queues to purchasing tickets on line. After receiving my postgraduate degree, I decided to continue my intellectual pursuit on the regulation of domain names. Moving to Scotland would become a turning point for my future, as my doctorate would ultimately focus on ICANN’s UDRP and the legal rationale behind domain names.

Preface xxv What had started as intellectual curiosity would become an ‘obsession’ and would ultimately bring me in 2009 to ICANN’s thirty-sixth meeting, in Seoul, where I would be chosen to represent the Non-commercial Stakeholder Group (NCSG) in the Special Trademark Interest (STI) group, tasked to suggest recommendations that would balance the conflicting rights of trademark owners and domain name registrants in light of the Root expansion and the addition of new gTLDs. So this book is a story of all this experience – a story about good versus bad, strong versus weak, right versus wrong. It is about good trademark owners, bad trademark owners, legitimate domain name holders and cybersquatting. Actually, it is a book about protecting the weak, the good and the right. I don’t mean to sound hysterical, and I apologise beforehand to all readers if the book comes across that way. What I wanted to do was to provide an account of the direction we are heading. I fear that after the first big wave of domain name registrations we stopped caring. We stopped caring about the domain name registrants who unfairly lose their domain names to trademark owners and are subjected to unfair UDRP processes and biased panels. We stopped caring about small trademark owners and start-ups, which saw the Internet as the platform to promote their ideas and speech to the world. I want to believe I did not let them down – because I still care and I will continue to care until ICANN and the trademark community realise that the domain name space is everybody’s territory and not some exclusive space for trademark owners. So this book is me – caring. I wanted to write the book and bring awareness. I am not the first and certainly not the last. But in this book you will read what has been happening over the past ten years and what will continue to happen unless we do something about it. I hope there are parts that you will be able to relate to. Before you all proceed to read the book, let me make something clear. This book is not an attack on ICANN or the trademark community and should not be perceived that way. It is a story, written as simply as possible, and aiming to give a different perspective on the regulation of domain names. I felt the need to tell this story because I realised that registrants are unrepresented and are indiscriminately seen as bad actors in an environment that fully supports and protects trademark owners. This book is about sharing experiences, thoughts, ideas and hopes. At this stage, it is only appropriate to thank the people who inspired me, fed me intellectually, argued with me and supported me throughout this project. I would like to thank Diane Cabell for paving the intellectual way almost ten years ago. Special thanks go to Milton Mueller for allowing me to pick his brains every chance I got, sometimes even without him realising it. I would also like to thank my Ph.D. supervisor, colleague and friend Catherine Colston for discussing trademark law with me and rationalising its boundaries. Special thanks should go to Robin Gross, US attorney, friend, chair of NCUC and Executive Director of IP Justice, for explaining to me the history, role and forces within ICANN. Finally, I would like to thank Kathryne Kleiman,

xxvi Preface US attorney, friend and UDRP drafter, for debating, commenting and for ‘travelling’ with me back in the time the UDRP was drafted. Last, but certainly not least, I would like to thank my research assistant Anoop Joshi and express my gratitude to my family and friends for their ongoing and unconditional support, encouragement and understanding. K.K.

Selected acronyms

ACLU ACP ACPA ccTLD CNN CDT DNS DNSO DoC FAA GNSO GPML gTLD gTLD-MoU IAHC IANA ICA ICANN INTA IP IRT ITU JPA MoU NAF NCUC NTIA NSF NSI PETA RDNH SLD

American Civil Liberties Union Administrative Challenge Panels Anticybersquatting Consumer Protection Act Country Code Top Level Domain Name Cable News Network Center of Democracy and Technology Domain Name System Domain Names Supporting Organisation Department of Commerce Federal Arbitration Act Generic Names Supporting Organisation Globally Protected Marks List Generic Top Level Domain Name Generic Top Level Domain Memorandum of Understanding Internet Ad Hoc Committee Internet Assigned Names Authority Internet Commerce Association Internet Corporation for Assigned Names and Numbers International Trademark Association Internet Protocol Implementation Recommendation Team International Telecommunications Union Joint Project Agreement Memorandum of Understanding National Arbitration Forum Non-commercial Users Constituency National Telecommunications and Information Administration National Science Foundation Network Solutions Incorporation People for the Ethical Treatment of Animals Reverse Domain Name Hi-jacking Second Level Domain Name

xxviii Selected acronyms TCP Transport Control Protocol UDRP Uniform Domain Name Dispute Resolution Policy UNCITRAL United Nations Commission on International Trade Law URS Uniform Rapid Suspension System USPTO United States Patent and Trademark Office WWW World Wide Web WIPO World Intellectual Property Organisation

1

Introduction Taking on the sins of ICANN and the UDRP

On August 7, 2009, four people met to discuss issues pertaining to trademark law and trademark protection on the Internet. Two were from the staff of the Internet Corporation for Assigned Names and Numbers – commonly known as ICANN – one was a U.S. trademark lawyer and the other was myself. The discussion focused on the interaction between domain names and trademarks, the weaknesses of the current regime and suggestions on future, innovative solutions. During the course of our meeting, I reiterated the hypothesis and arguments of this book: under its current form, the state of domain name regulation is not working, and I associate this problem with an historical quandary, which has intellectual, institutional and ethical dimensions. It has always been my belief that, for fixing the problems of the current regime, we need to go back and revisit our experiences, before we can safely gaze the future. Otherwise, our vision to construct a legitimate environment for domain names will permanently be tainted by the mistakes of the past. The year 2009 was tough for ICANN, with Congressional Hearings, the expiry of the Joint Project Agreement (JPA) with the U.S. Department of Commerce (DoC) and the materialisation of the ‘Affirmation of Commitments’1 – a new framework of governance, with – as of yet – no clear ends and structure. In the midst of all this political mayhem, 2009 also found ICANN venturing into its biggest ever policy decision – the expansion of the Root through an unlimited addition of new gTLDs. Through this new policy act, ICANN is expected to operate as the deus ex machina for the years to come. Unsurprisingly, one of the most pivotal issues of ICANN’s new policy turned out to be the protection of trademarks on the Internet.2 Over the past ten years, the trademark community has managed through ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP) to achieve an unprecedented level of trademark protection. And, over the same ten years, the trademark community has been seeking opportunities to expand this protection. ICANN’s new venture gave trademark owners the opportunity to suggest policy that arbitrarily revisits basic concepts of trademark law. In 2009 the trademark community struck again – the original report suggested by the Implementation Recommendation Team (IRT) is a true testament of

2

Introduction

how trademark owners perceive domain names and their disrespect towards the legitimate rights of registrants. (I am not arguing, of course, that all registrants are legitimate or that cybersquatting is not a big problem; but, equally, not all domain name holders are ‘trademark thieves’; many are activists, entrepreneurs and innovators.) It was, therefore, quite strange to be speaking about a policy document, when there are so many things we need to rationalise before we start suggesting new trademark policy. It was strange hearing people saying how good the current regime is, without even giving regard to the unprecedented level of unfairness in the UDRP process. It was, finally, strange for me to see that ICANN has never been accurately informed about law by its own constituencies nor have they cared about how its policies impact trademark law. So, I think the timing of this book could not have been more appropriate. Do not expect, however, to find perfect answers – there is no such thing. I just want to tell you a story – with a beginning and an end. I have started with the IRT report and I plan to conclude with the IRT report and issues of trademark protection under the new regime of Root expansion. But, in the meantime, I would like you to hear what, I believe, is the perspective of the average, individual user, like me and, I hope, like you. A colleague once told me that one should not talk about something, unless there is history to refer to. I have been carrying this thought throughout the writing of this book and I often wondered whether the history of the DNS and its policies are old enough to allow me to tell my story. The publication of the IRT report convinced me: suggesting new policy signifies a step to replace an old one. And, this is the mistake that took place in 2009 – we got engaged in an extensive debate about new protection mechanisms for trademarks on the Internet, when we should have first fixed the problems with the existing ones. More than ten years have passed since the first UDRP case and ICANN – as the responsible authority – has not convened a body to revise the Policy, whilst WIPO is wasting its resources on expensive, celebratory anniversaries instead of subjecting domain name disputes to a deep and thorough review.3 The UDRP’s body of case law, the many scholarly articles written and the expressed views of all interested parties constitute tools that ICANN should use to repair the UDRP – because, first, it is the UDRP that requires fixing. There are many things the UDRP did and did not do. It did manage to effectively address the problem of cybersquatting, but it did not manage to adhere to its limited scope. It did succeed in eliminating the involvement of courts, but it did not evolve into a self-sufficient institution with endogenous and exogenous checks and balances. It did, finally, achieve to protect trademark owners, but it did not, equally, achieve to protect the rights of legitimate domain name registrants. And, all these ‘did nots’ led to the perception of today: Domain Names are – without a doubt – second-class citizens in a world dominated by trademark rights. The book and the arguments presented emanate from the thesis that no institution or system has a monopoly on curbing justice arbitrarily, much less

Introduction

3

ICANN and its Trademark Constituency. Academic literature is replete with examples of ICANN’s power and the questionable use of it, the illegitimate status of the UDRP and the way both ICANN and the UDRP have been compromised by trademark interests, which have led to the diminution of legitimate registrants and the lessening of the capacity of domain names as sui generis, ‘e-property’ rights. This level of ‘trademark protectionism’ – the restraint and control exercised upon domain names by the trademark community – is now reaching a critical point: it becomes a normative account of an institutionalisation process that gets ingrained into a culture, which, in any case, is difficult to alter. This is evident in the past ten years, as we move from the UDRP to new policy proposals that, nonetheless, build on the UDRP culture. Nothing has changed and nothing will change, unless we really want such change. But, for this to happen, we need ‘legal awareness’. This might prove difficult considering that courts and national legislatures are not willing to wage war on ICANN’s policies. Generally, courts and judges are not concerned with management decisions, taken outside traditional fora and are, instead, products of political gaming and lobbying. At this stage, I feel the need to clarify that this book is not an attack on ICANN, rather a severe criticism on one specific area of ICANN’s claimed competence – its policy on trademark issues. To a certain extent, this book even takes into consideration that ten years ago, ICANN was almost as blind as the rest of us to the legal ramifications domain names would have on trademarks. However, this time ICANN has to get it right. There is no room for excuses and no room for error. If ICANN does not engage in a substantive dialogue and respond to the concerns of the wider community, it could jeopardise the social stability of the Domain Name System (DNS) and the legal basis of trademark law. The pattern of disputes over the past years demonstrates the trademark community’s wish to exercise full control over the choice of names that enter the DNS. This has led to a misconception over the nature of domain names as solely commercial articles; yet domain names are much more than commercial articles and constitute tools serving the exchange of information. With a policy, therefore, that is more than ten years old, with an organisation that has not experienced a day without criticism and with policies transmogrifying consistently the philosophy of trademark law, it is crucial to reopen a thorough discussion on issues relating to trademarks and domain names. This is the aim of the book, because, no matter how the thesis of domain names as ‘e-property’ rights is welcomed, the reality remains that not all domain names exemplify trademark characteristics and trademark law is not always able to provide efficient answers without interrupting other established legal norms, ergo, upsetting the very balance that is meant to ensure. 1.1 Problematising domain name disputes On May 30, 2005, Cheng Lee – a Chinese national – registered the domain name in the gTLD space. His domain name

4

Introduction

registration represented his trademark, ‘News Beat Corporation’, which was granted to him in 1980 by the Chinese Patent and Trademark Office. Through his Web site, Mr Cheng wished to expand his commercial activities on line and, among others, he offered to consumers music and video downloading, television streaming as well as Internet connection services. After two years of investing on time and resources, the Web site started generating a substantial amount of traffic and Mr Cheng updated his Chinese trademark registrations to reflect the new services he was offering through his Web site. The Web site was in Chinese, targeting the Chinese-speaking world. At the beginning of 2009, Mr Cheng received a cease-and-desist letter from the U.S. National Broadcasting Company, instructing him to surrender his domain name registration on the basis that it was violating NBC’s trademark rights; ‘alternatively’, the letter stated, ‘we would have no other option but to take the dispute to the appropriate forum – the Uniform Domain Name Dispute Resolution Policy (UDRP) – where you will most likely lose. We suggest, therefore, that you surrender the domain name, and to show our good faith, we are willing to buy it from you for the reasonable price of $2,500.’ Mr Cheng’s reply was that the domain name was not for sale and that he also held valid trademark registrations in his nation state which reflected both the domain name and the services provided. In April 14, 2009, NBC initiated a UDRP proceeding, alleging, inter alia, trademark infringement and unfair competition claims. Although Mr Cheng argued that his domain name reflected his trademark registration in China, the one-member panel ordered the transfer of the domain name, disregarding completely the manner in which NBC sought to intimidate Mr Cheng (‘trademark lawyer abuse’) and the issue of reverse domain name hi-jacking (RDNH). This is a fictional case, with fictitious disputants, but not far from the reality of domain name adjudication practices, especially under the UDRP. Fundamentally, the subject matter of such disputes goes beyond just the name: it is a fight over a place on the Internet addressing system; it is a fight over reaching consumers internationally; it is a fight over entering the worldwide market place through a single registration; and, finally, it is a fight over power, money and, sovereignty. The battlefield, where all this occurs, is the UDRP and the winners appear to be the trademark owners. The UDRP celebrates more than ten years of dispute resolution and is admittedly a novel way of addressing online disputes. It counts thousands of domain name cases, its authority is highly persuasive and it has been equally criticised and praised more than any other alternative dispute resolution (ADR) method. It has produced bad, really bad and awful decisions, granting rights and privileges where traditionally none existed. It has afforded its panels wide discretionary powers and is responsible for feeding a biased and unfair culture in the domain name adjudication process. The UDRP was originally created as a means to combat the tangible problem of cybersquatting and that of abusive domain name registrations.

Introduction

5

Since its commercialisation, the Internet and the trademark community were in need of a mechanism to disrupt registrants who were capitalising on the value of trademarks through their domain name registrations. Until the enactment of the UDRP, no other procedure seemed to be able to address efficiently any of the problems associated with cybersquatting and online trademark infringement. Unfortunately though, the UDRP has gone beyond addressing cybersquatting, and is currently the case that trademark owners use the Policy as a means to expand their rights and receive benefits through domain name transfers that, in any case, should not automatically be considered articles of trademark ownership. 1.2 The research issue This book is a reflection on the state of domain name regulation, maintaining the thesis that, under current understandings, domain names are second-class citizens in a world where trademarks proliferate. Generally speaking, both trademarks and domain names are closely linked in that they both indicate origin (certainly a trademark more than a domain name). This common feature, coupled with the fact that they can both acquire substantial value, provides the initial justification for their liaison and their parallel interaction. To be more precise, trademarks are considered intangible, limited property rights and, to this end, law does not protect the mark per se, but the combination of the mark’s symbolic character along with its goodwill. Trademarks assist businesses in building and establishing a role within the market, help consumers to differentiate goods or services from one another and, contribute to the development of trust within market places. In 1946, U.S. Supreme Court Justice Douglas referred to trademarks as ‘valuable business assets’,4 whilst, in 1999, U.S. Supreme Court Justice Scalia remarked that trademarks are ‘property of the owner because he can exclude others from using them’.5 This exclusive right of use allows mark owners to prevent unnecessary interference by others; it also personifies the owner’s concurrent right to ensure that consumers are not confused as to the source or affiliation of the product. Since a trademark symbolises nothing without the attached goodwill, it cannot be sold or assigned in spite of its goodwill. If one seeks to transfer a trademark without transferring some of the associated goodwill, then such an action is characterised as a ‘naked assignment’ and is of no value.6 As a collective unit, trademarks are subject to dominium (the right of property and its ownership and control), just like any other form of intangible property. On the other hand, a domain name is, literally, a combination of numbers and letters and assists in identifying a computer or a URL on the Internet. A domain name is a ‘user-friendly’ way of remembering a sequence of numbers and mainly consists of three parts: a generic top-level, like , which identifies the type of organisation or entity that the domain name corresponds to, a second-level, such as Microsoft, which distinguishes the entity or

6

Introduction

individual registering the name, and, a third-level domain, such as , which is used to identify a particular server. Similar to trademarks, domain names are words and have the capacity to generate trademark rights, because they too can be used to indicate origin and identify the source of information promoted and the products sold on a Web site. Like trademarks – but not normatively so – domain names may represent the goodwill of a business. The value of a domain name and the levels of traffic identified in the Web site result from its goodwill and reputation. Similar to trademarks that are valueless when the right to use the mark in the market is lost, domain names have no value when the exclusive right to use the domain name is subject to a transfer or cancellation; hence, while goodwill might not be necessary, it certainly adds value to a domain name. At the same time, a domain name that functions as a trademark can enjoy the benefits of traditional trademark protection against infringement. However, not all domain names can perform trademark functions; although it might appear so through the UDRP and current practices, trademark law has already prescribed that the benchmarks for domain names as trademarks are the same as for conventional trademarks. A pertinent question, therefore, is: what legal source is appropriate to protect registrants when not seeking to promote trademark interests? How can we delineate a legal hypothesis on their nature? What are the steps of their institutionalisation process that we need to reverse, seeking to create a just framework for domain name regulation? How do the current policies and regulation contribute to the philosophy of domain names as second-class citizens? These are questions that the following chapters will address and discuss. 1.3 Designing the hypothesis In spite of the striking unfairness that takes place within the UDRP, evidenced by a series of public comments and academic writing, ICANN has not taken any steps to address the problems associated with the Policy. This has been detrimental to our overall perception of domain names, as the UDRP is fast becoming a persuasive statute, evolving into an a-national legal framework, influencing both national and international legislative efforts. We need to understand that the impact of ICANN’s Policy on the regulation of domain names is grave and the UDRP has bolstered an environment, where domain names are hardly considered worthy of any protection. 1.3.1 Impact on whom? Our current approach towards domain names cannot continue and, it is a matter of time, before the domain name space becomes an exclusive territory, populated by trademarks. The truth is that legitimate domain name holders are dangerously disadvantaged and end up loosing substantially under the system, because trademark owners consider domain names as their

Introduction

7

de jure rights. And, the whole system supports this belief, minimising, degrading, brutalising and decapitating registrants off their legitimate rights. One of the goals of the book – among others – is to discuss, how through the policies and regulations, the rights of domain name holders have been impacted. 1.3.2 Impact on what? It is my belief that, if domain name policies continue to develop based on the monolithic view of trademark law, this will impact both on the future of the Internet Domain Name System (DNS) as well as trademark law itself; it will, further, jeopardise the evolution of law to incorporate domain names. If domain names constitute – among other things – articles of innovation, entrepreneurship and imagination (examples include names like Facebook, MySpace, Twitter, Yoox), conceptualising them under the philosophy of trademark law is – at its very basic level – demoralising and restrictive. If the Internet is all about progress, our trademark-driven approach on domain names only manages to decelerate this progress. We need to accept that the value of domain names goes beyond their commercial magnitude, and extends to legal and social manifestations. We need to show our support for innovation, whilst our efforts should not place any obstacles in the evolution of domain name law, by giving in to political influences and trademark lobbying. This brings me to my second concern. In the years to come, the current environment will impact trademark law to the severe end of creating an establishment that will not be able to support trademark registrations the way they exist worldwide. There is a great fear that, if we continue with this pace on the Internet, we will not be able to afford similar trademarks in different classes, identical trademarks in different regions or adhere to trademark law’s limitations. Moreover, and whereas trademark law has consistently been evolving through courts, reasoned opinions and balanced rationales by legislators and judges, now it is developing through political interests, trademark lobbying and intimidation. The original report of the very recent Implementation Recommendation Team (IRT), which I will analyse at the end of this book, is a testament of this unreasonableness and of the way trademark owners (especially, big corporations and conglomerates) are using their political and economic influence in ICANN to expand their rights and monopolise the domain name market. The velocity of this influence is sufficiently evident in understanding the detrimental effect trademarks have and will continue to have on the status quo of domain names. 1.4 Goals and plan of the book I have three related objectives in writing this book. One is to give an objective account of the current state of domain name regulation and the impact the trademark philosophy has had upon our perceptions. Another is to use our

8

Introduction

understanding on property law, seeking to offer an alternative thesis of how we can protect domain names that do not exemplify trademark characteristics. This is necessary, if we want to distinguish between domain names operating in their capacity as trademarks and, domain names in their capacity as sui generis rights. Finally, I want to tell the story of how we can structure a fair and just environment for the regulation of domain names – my vision of the ‘Domain Name óς’ (‘Polis’). This book is organised in three parts. Part I is what I consider the ‘intellectual problem’. Its purpose is to place domain names and trademarks into a legal and political confrontation, through a discussion about their history and evolution. What they are, what they stand for and what they represent. To achieve this goal, this part uses peripheral abstractions of property – a concept, which is constantly changing and is flexible to encompass domain names as ‘e-property’ rights under the theory of the ‘bundle of rights’. Part II is institutional. It traces the history of the Uniform Domain Name Dispute Resolution Policy (UDRP) and its evolution throughout the past ten years. I compare the evolution of the UDRP with the lex mercatoria (law of the merchant) model and with arbitration, seeking to illustrate the unorthodox way through which ICANN’s Policy has developed; I also try to exemplify the degree of the UDRP’s illegitimacy through an unprecedented level of procedural unfairness. Then, I move on to discuss the U.S. Anticybersquatting Consumer Protection Act (ACPA), in an effort to address that both national and international attempts juxtapose domain names under the same umbrella of legal discrimination. Part III is ethical. It discusses the role of ethics in the context of the UDRP – or the lack thereof – and explores a possible way of structuring a system that is ethically complacent – my ‘Domain Name óς’ (Polis). I also seek to make recommendations as to how to amend the UDRP, in an effort to transmogrify the Policy into a fair and trustworthy environment for both legitimate domain name holders and trademark owners. Finally, the book also explores the latest trends of trademark policy and how the trademark community continues to influence and manipulate ICANN’s policies to excommunicate legitimate domain name registrants from the domain name space. To this end, mention will be made to the original report of the Implementation Recommendation Team (IRT) of 2009, which constitutes a sensational example of the story this book tries to tell: over the past decade, domain names have become second-class citizens in a world dominated by marks.

Part I

Intellectual problem

2

Contextualising property

Nowadays, reference to domain name disputes provokes a discussion about intellectual property and trademark law. This is consequential to more than ten years of intense Internet policy making and trademark campaigning that the interests identified in domain names are indiscriminately similar to the ones identified in trademarks and, thus, the justifications of trademark law are both economically relevant and socially germane. The result of this strategy has been the creation of a faux legal regime, replete with unfairness and injustice, which has ultimately undermined the role of domain names and has canonised trademarks to objects of appropriation. Trademarks on the Internet do not obey to the same limitations as trademarks in the offline world. Over the past ten years, trademark owners have used ICANN as a platform to suggest and enforce policy that eulogises and promotes the value of trademarks, whilst the evolution of trademark law has shifted from incremental judicial reasoning and is now a product of biased UDRP panels, which, in any case, lack the authority to proceed to any fundamental legal formulations. Our lack of understanding concerning the legal nature of domain names has coincided with the real threat of cybersquatting and this combination provided the grounds for trademark law to begin its unstoppable expansion. Currently, any domain name that poses a threat to the economic value of a trademark is exterminated either through cancellation or transfer. We are facing an intellectual deficit, fed and supported by strong trademark lobbying, on the one hand, and by a certain degree of legal incapacity, on the other, to distinguish domain names as autonomous, sui generis, rights from domain names exemplifying trademark characteristics. This intellectual disorder has had a negative impact on issues of substantive justice and has entailed the closer re-examination of the current state of domain names. Young recognises that substantive justice can only be materialised if a set of specific criteria are in place: equal distribution of resources between the parties (egalitarianism); the distribution of resources according to the parties’ contribution (proportionality of distribution); and, finally, the distribution of resources according to some priority principle such as the need of the parties (distribution rule).1 To this list, we should also add what economists consider

12 The current state of domain name regulation as envy-free distribution mechanisms, which ensure market entry and access to the available resources. None of these customary criteria is identifiable in current domain name practices. In most cases, trademark owners prevail over domain name registrants on the mistaken assumption that trademark rights are – or should be – of more value compared to domain names. Currently, given the way domain name regulation is shaped, substantive justice calls for the institutionalisation and formalisation of domain names within an explicit legal understanding. For, if we wish to apply and enforce appropriate remedies, the relationship between the two competing rights has to be both rectified and amended;2 otherwise, policy and law are paralysed and appear impotent to settle disputes in a fair and equitable manner. What is so significant though about trademarks that has allowed this state of affairs? Generally, trademarks constitute valuable economic commodities and are part of economic institutionalisation processes, which pertain to issues of consumer protection and trade. Trademarks are components of private and public value; on the one hand, they provide the necessary incentives for companies to maintain a certain degree of quality, and, on the other, they encourage creativity. A trademark is a cultural icon associated with national interests and individual habits – for example, we think of Armani and Italy comes to mind or we think of junk food and McDonalds is among our first choices. It is for this reason that trademarks constitute part of the wider intellectual property field and their scope, protection and boundaries are clearly defined through the relevant statutes and conventions. Trademark law applies exclusionary legal norms to names associated with the goodwill of a certain product or service. It operates normatively by imposing a duty upon competitors not to copy, dilute or infringe the mark and confuse consumers. Trademark law, however, is by no means an exclusive form of private property; instead, it recognises a public domain in certain words and, accordingly, excludes them from protection. Generic words and geographical connotations are not available for trademark registration and constitute prime examples where the trademark regime has institutionalised partial common ownership in respect of words. The structure of domain name regulation, on the other hand, is not as clear and there is a lot of ambiguity in law. The main question concerns the legal nature of domain names. In a world where only domain names existed, how would law perceive them? There is really not a straightforward answer without conducting further research and attempt to distance domain names from trademarks. At the same time, there is not a substantial body of case law that we can depend on, making conclusive determinations (certainly the UDRP case law cannot be used as an example and court decisions on this subject matter are unfortunately minimal), whilst no extensive research exists seeking to identify the interests in domain names. However, the limited judicial reasoning so far has identified three possible theories on the legal nature of domain names: one – conclusive – that suggests that they are trademarks, thus trademark law is pertinent; and courts, in the other two, still struggle to distinguish

Contextualising property

13

between domain names as contracts for services and domain names as property rights. The scepticism surrounding the propertisation of domain names is not a new phenomenon and we certainly have not heard the last of it. A disbelief of similar degree was observed with the propertisation of trademarks, where, after many years of academic debate3 and judicial discourse, it was determined that trademarks constitute a form of intangible property. This determination has allowed law to grant trademarks with similar immunities, privileges and powers identified in property law.4 Currently, this debate has shifted and academic scholars as well as courts are seeking answers in an effort to unravel the complex legal imbroglio surrounding the nature of domain names. Unlike trademarks, the complexity in this case rests on the pathology of domain names; because – literally speaking – a domain name is simply a set of numbers. This factor poses various challenges and questions the appreciation of domain names as sui generis rights. The discussion focuses on whether it is feasible for law to adapt to the emerging trends of technology and, in a more specific context, to the new direction that the Internet warrants. Such a leitmotif, however, is certainly not unprecedented. In Roman times, for instance, the concept of dominium was created by evidencing the willingness of the lawyers to adapt to newly emerging socio-economic demands. As Gregory Diosdi writes: … As far as is known, no contemporary legal system, including Greek law, had a notion corresponding to dominium. Preclassical [sic] Roman lawyers did not possess a model. They were compelled to create the notion of dominium, as an unprecedented novelty in the history of law. It has also to be borne in mind that lawyers were above all engaged in practical tasks. They had to develop new legal institutions like usus fructus, to adapt the proprietary remedies and the legal forms of conveyance to the changed conditions.5 Based, therefore, on the mutative nature of law, the Internet, currently, instructs its evolution and modernisation with the aim to structure fairly balanced environments, where traditional notions of law adjust to the challenges of technology. This is what took place with the insertion of the Digital Rights Management in copyright law and this is what happened with the debate concerning the patentability of software and Internet business methods. The same, therefore, challenge is imposed upon trademarks through their juxtaposition with domain names. But, domain names do not always perform the same functions as trademarks and ought not be associated with the goodwill of a product or a service. For these and other considerable differences domain names should find their own place and individuality within legal theory. To this end and considering that the notion of property does not offer an all-inclusive, succinct definition of what constitutes property, two questions

14 The current state of domain name regulation are pertinent: the first one concerns the place of law – where law currently resides in relation to the characteristics of property. Basically, we need to identify the characteristics that historically have provided property with its specific connotation. And, secondly, based on our findings, we need to understand whether these connotations can adapt to novel disciplines, like domain names. 2.1 The place of property: where property law currently resides The concept of property was influenced by a divergence of theories and hypotheses before it finally acquired its pre-eminent status. The orthodox concept of property normally embraces three institutional prototypes relating to access and use of valuable resources – private, public and common property.6 These concepts exist irrespective from, but run parallel with one another. Their point of difference lies in the de jure authority vested on an individual or an entity to make decisions regarding the right of use and access to the property in question. To this end, private property refers to the right of an individual or legal authority, as recognised by a grounded legal framework, to exclude others from that property. In a much similar vein, public property refers to the right of a public authority or agency, as established within law, to exclude others from access and use to that property. Finally, common property exists in situations where ‘no specific individual or entity is recognised under the law as having a right to exclude others from access to and use of a given resource’.7 For the purposes of this book, reference to property will mean private property with public and common concepts of property being explicitly mentioned to strengthen the arguments submitted. Allusion to property can be first traced in ancient times. In the beginning, Aristotle criticised Plato’s preference for common property8 and conceived the right to property as inherent in moral order.9 However, it was not until the early post-Enlightenment years that the next set of influential property theories appeared, with John Locke10 focusing on a ‘natural’ right to property. Locke’s perception of property has been influential in justifying and, ultimately, unifying intellectual property laws – the notion that one is entitled to the ‘fruits of one’s own labour’. In its modern incarnation, the notion of ‘labour’ includes any entrepreneurial, intellectual and management skill, concerning the production and evolution of a particular thing.11 Offering a different approach to the natural rights justification, Hegel’s ‘personhood theory’ relied on the premise that property provides the mechanism by which humans achieve self-actualisation.12 Moreover, Bentham – leading the Utilitarian jurisprudence school of thought – argued: Property and law are born together, and die together. Before laws were made, there was no property; take away laws, and property ceases.13

Contextualising property

15

Generally speaking, property is only a legal conclusion, albeit of significance, best conceived as ‘an abstract right or a legally constructed relationship among people with respect to things’.14 Currently, the term property suggests a multi-faceted concept that includes a bundle of rights, powers, privileges and immunities15 that define the status quo of an individual, organisation or government to a resource (res).16 Property as a situation is not restricted to tangible or corporeal things.17 The notion of property is unusually broad, specifying the right of ownership and any other rights of any nature that can be legally affixed to the res. Such rights include the right to possess, to enjoy income from, to alienate, to exclude, to dispose or to recover title from whoever has illicitly obtained ownership of the res.18 Occasionally called nomen generalissimum, the term property is so inclusive that it is ‘employed to signify any valuable right or interest protected by law, and the subject matter or things in which the rights or interests exist’.19 Much of the debate on property law has focused on whether property only arises in relation to tangible objects, land and goods – following the Germanic view – or whether the concept of property is in line with common-law hypotheses as incorporating chattels, money (bank accounts, company shares, etc.) and intellectual property. In Roman law, the situation was similar to the Germanic school of thought, and actions to vindicate (vindicato) property could only be brought in relation to a tangible res. In contrast, according to Harris,20 within the current Western socio-economic life, intangibles can be considered possessions, which, among others, include cashable rights, intellectual property and any other form of incorporealis. This perception is also in line with the jurisprudence of the European Court of Human Rights and the first protocol to the European Convention on Human Rights.21 The dichotomy between tangible–intangible forms of property, however, has created a split within academic circles, with Bouckaert22 contending that justifications for intangible property fall outside the basis of private law, whilst others, like Mincke, have taken a broader perspective, suggesting that focus should be placed on the economic importance of recognising intangible property rights, and identifying the need to model legal tools accordingly.23 Harris believes that for property to exist in an intangible object, its tangibility needs to be replaced by the economic factor of ‘value’ or marketability, and sides with Mincke, stating: ‘property, of all kinds, both enhances autonomy and subserves the market’.24 Indeed, property that functions despite the market is disjointed from legal realism and is ruinous. At the same time, however, property that solely operates according to market standards is uneven and biased. We should, therefore, be willing to combine economic and legal rationales, so as property can include all valuable rights and extend to every type of valuable rights and interests.25 Therefore, it can be argued that legitimate contract rights are property26 and there is a fine line separating rights derived

16 The current state of domain name regulation from contracts and rights characterised as property. The determination merely relates to factors focusing on the type of use. Each aspect of law complements the other and it is currently accepted that when we seek to determine the balance within the property rights sector, it is insufficient to rely solely on property law. One has to take into consideration that the characteristics of transfer, waiver, licence, or any other policy choice that property affords, are performed though contracts. Contract law provides the means that allow the exercise and, subsequent, manipulation of the property right. It would, otherwise, be naïve to accept that property law, and especially intellectual property law, exists irrespective and operates autonomously from contract law.27 Specifically, in the context of information society, where market forces determine transaction conduct and technology plays such a pivotal role, contracts provide the basic rules of engagement and give rise to proprietary rights according to the commitments made. The interrelationship of property with economy, however, is not a byproduct of the information society. In the mid-eighteenth century property was to become the locus of economic development, which invited scholars such as William Blackstone to proclaim property as that sole and despotic dominion which one man claims and exercises over the external things of the world, in total exclusion of the right and any other individual in the universe.28 Blackstone’s approach viewed property as an absolute and exclusive in rem right and became the focus of the positivist movement of scholars like Bentham and Austin. Influenced by Roman civil law, the main point of interest seemed to be the issue of dominium, which for Blackstone and the positivists equated to absolute ownership, which, in turn, assigned a certain degree of power and control to its owner. However, it was not until the beginning of the twentieth century that legal theorists began to provide a fuller account of property, exploring the effects of the intersection between property, on the one hand, and its societal and economic impact, on the other. The approaches of Honoré and Hohfeld concerning a theory of property based on a ‘bundle of rights’ became the dominant paradigm applied by Western legal philosophers and jurisdictions.29 Early in the twentieth century, Wesley Hohfeld analysed the concept of a ‘right’ and separated it into its respective components of correlative claims and duties between individuals and society; naturally, property was an inclusive part of his analysis.30 Hohfeld remarked that property, as a legal concept, comprises not only rights31 but also privileges32 and powers.33 He further argued that the foundation of property lies not in the relationship between a person and an object, but rather in the nexus of legal relationships among people towards an object.34 Hohfeld’s observations are fundamental for having created an entirely new understanding of property as a ‘socio-legal’ and ‘economic-legal’ right.

Contextualising property

17

According to this perception, any fixed meaning to the term property should be discharged and the significance of the thing with regard to which the rights are claimed should be de-emphasised.35 In the bundle metaphor, each right, power, privilege or duty is considered as one stick in a cumulative bundle that constitutes a property relationship.36 Whether removing the stick from the bundle will distort the unit that the bundle creates cannot be determined in advance.37 Therefore, the ‘bundle of rights’ theory provides a more flexible approach to property, amenable to numerous transformations and subject to ad hoc decision-making.38 In a much similar vein, A. M. Honoré advanced the theory of the ‘bundle of rights’ by providing a generally accepted list of ‘incidents’, authenticating ownership over the res.39 Accepting that the ‘fashion of speak[ing] of ownership as if were just a bundle of rights’ might entail some modification of the list, Honoré confidently asserted: Ownership comprises the right to possess, the right to use, the right to manage, the right to the income of the thing, the right to the capital, the right to security, the rights or incidents of transmissibility and absence of term, the prohibition of harmful use, liability to execution, and the incident of residuarity: this makes eleven leading incidents.40 Essentially, Honoré established that the importance of the list rests on the alternatives it offers in the ‘distortion’ of the past, in which property was conceived as the concentration of absolute rights of use, exclusion and transfer41 in a single individual.42 Instead, Honoré emphasised that within the bundle there is not a stick/right that prevails or has an advantage.43 In conformity with its nominalist origins, the ‘bundle of rights’ theory implies that whoever owns the property is able to arrange it any way she sees fit. Let’s assume, for example, that we have a shopping basket of fruit, filled with oranges, bananas and apples. A person may take out the bananas and still enjoy a ‘shopping basket of fruit’. There is nothing essential or special about any particular object within the shopping basket; they all share the same importance or unimportance for their owner. As applied to the concept of property, the ‘bundle of rights’ manifests that there is ‘no essential core of those rights that naturally constitutes ownership’.44 When referring to law, academics and courts could use this ‘bundle of rights’ theory without having to make any reference to the term ‘property’ at all.45 Advancing Hohfeld’s ‘conceptual realism’, Coase viewed property under the prism of ‘economic realism’ and, although he still perceived the collection of use of rights as necessary, he argued that these are associated with the allocation of resources and value rather than with only the res.46 Coase, leading the economists’ movement, viewed property under a utilitarian framework analysing it within the context of transaction costs associated with the value derived from the disposition of the property in question. Today, the ‘bundle of rights’ notion of property rules the academic field. As Bruce Ackerman

18 The current state of domain name regulation sarcastically noted, the concept has become a ‘consensus view so pervasive that even the dimmest law student can be counted upon to parrot the ritual phrases on command’.47 Nonetheless for some, the proliferation of the ‘bundle of rights’ theory meant the end of property law. In Thomas Grey’s words: We have gone … in less than two centuries, from a world in which property was a central idea mirroring a clearly understood institution to one in which it is no longer a coherent or crucial category in our conceptual scheme. The concept of property and the institution of property have disintegrated … . The substitution of a bundle-of-rights for a thing-ownership conception of property has the ultimate consequence that property ceases to be an important category in legal and political theory.48 In line with this argument, the ‘bundle of rights’ theory has been severely criticised for failing to clearly distinguish, in terms of legal institutions, proprietary from contractual rights. It has been suggested that the ‘bundle of rights’ is basically another way of describing a multi-faceted series of contractual rights.49 To this end, Epstein added: Property is not all it is cracked to be … The notion of ‘property’ readily collapses back into contract or, more broadly, into a number of arrangements based on assent. No quantum step differentiates contract from ‘property’ for ‘property’ has no clear threshold. There exists instead a spectrum of ‘propertiness’ in which obligations which derive their normal force from discrete acts of affirmative consent shade gradually and almost imperceptibly into obligations whose social persuasiveness rests upon the collective acceptance of sustained acts of assertive control.50 This is, obviously, not a fatal flaw in the ‘bundle of rights’ theory, if it is accepted that the concept of property as a legal institution is only meant to be an alternative for describing a particular set of legal relationships and is neither ‘complete’ nor ‘absolute’. If ownership as established within property law is ‘associated to the wide assortment of use rights that range from the traditionally recognised rights of usus, fructus and abusus, first identified in Roman law’,51 then the ‘bundle of rights’ theory only offers an indicative list of characteristics that property affords. This is correct in as much as legal relationships are not predetermined or destined to perform one particular function. Economic and technological developments, for example, have discouraged this ‘absolute’ and ‘conclusive’ approach and have, instead, taken a more flexible and generative view. Such a strategy favours a theory of incomplete property where property is understood as an incomplete bundle of defined (as established by the ‘bundle of rights’ theory) and undefined rights over the use of assets.52

Contextualising property

19

However, even if we accept the fears of scholars such as Grey, there seems to be one small, albeit significant, detail common throughout the history of property. The notion of ‘exclusion’, as associated with the fundamental right afforded to the proprietor to excommunicate others from using their right, does not come with default instructions. It may be absolute or relative (i.e., it could be exercised by an individual or a group), it may be in the form of a right or a privilege (in the Hohfeldian sense) and it may be de facto, de jure or a blend of the two (depending on the nature of the resource, whether tangible or intangible).53 This minimum standard, accepted by the majority of scholars, becomes, thus, crucial in determining something as property. In a world where occasionally intangibles are more valuable than tangibles and, in many instances, property rights are derived through contract,54 the theory of the ‘bundle of rights’ seems to reflect the way property law has developed and how society, economies and custom have institutionalised property rights. The notion of property structured under a ‘bundle of rights’ has been acknowledged by both the academic community and courts because it affords a certain degree of individuality and autonomy vested upon the right itself to mutate according to socio-political and legal needs. Traditionally, the bundle will include rights that deal with: control use of the property, benefit from the property, transfer or sale of the property and exclusion of others from the property. Under this theory, such an accumulation of privileges allows rights such as trademarks and domain names to be conceptualised as property. 2.2 The political mapping of property The historical evolution of property indicates a multi-faceted and multidimensional right adjacent to the various socio-economic and political contexts. This means that the institutionalisation of property under a theory of ‘bundle of rights’ or, at its minimum level, as a right synonymous to exclusion has always managed to keep pace with the different phenomena that have been established by society, economy and political arrangements. This is neither objectionable nor has it worked to the detriment of property. On the contrary, it has been the catalyst in affirming that property is not an unsystematic or unmethodical right operating outside the confines of society. The institutionalisation of property though has manifested a weakness in its legitimisation process. Property has always seemed to be walking a thin line, supporting an instrumental rather than a deontological reasoning. Under this reasoning, property is associated with control and power, which, however, can often be extraneous and unreasonable. This means that instead of adopting an approach which focuses on the rightness or wrongness of intentions or motives behind certain actions, such as the respect for the rights, duties and privileges

20 The current state of domain name regulation that property entails, we use property as a means to pursue certain aims and objectives without considering at the same time the effect that these may have upon society, law or the market. In this context, property is associated with excessive control, whilst ‘exclusion’ becomes the means through which this control is exercised. Equating property with control is indeed not something new. Blackstone did exactly that when he delineated property as a ‘sole and despotic dominium’.55 However, control is not only to be found in the concept of dominium, although for the Romans dominium ultimately meant the exclusive right to maintain and enjoy the privileges derived from the object. Control is also to be identified in the notion of imperium, which during the Roman times was associated with what was used to characterise a certain segment of the population according to the wealth, prestige and power they held. In short, imperium was for the Romans what sovereignty is for modern times.56 In his famous lecture in 1927, the philosopher Morris Cohen indicated that a combination of wealth and property resulted in the integration of the concepts of dominium and imperium, making the boundaries of the two conceptually blurred.57 In a stinging manifesto, Cohen explains how individuals and corporations in possession of property are able to exert control and power over other ‘less fortunate’ subjects. This, according to Cohen, happens not only by enabling and offering to individuals access to certain resources, but, at the same time, by allowing them to provide services normally belonging to the state. This provides a certain degree of injustice and questions the promotion of property as an efficiency mechanism (economy) rather than as an institutional right (law).58 This certainly is a valid concern as it transforms property from a legal to an economic right with inevitable political manifestations.59 In this context, ‘exclusion’ becomes synonymous with the overwhelming, yet unjustified, power to manipulate not only the resource but also the market. It provides proprietors with a unique device to use the right and its ingrained characteristics against almost any action, even if this action does not produce any actual or substantial harm. Under this purview, property mistakes the exclusive right of ‘exclusion’ and its role as a defence mechanism with political manifestations of power and authority. If ‘exclusion’ is meant to be a core value of property used only in certain circumstances and under a restricted scope, then by allowing proprietors to use their right indiscriminately, imperils not only the essence of property but it also creates an illegitimate division between rights classed as first-class (imperium) and second-class (dominium) citizens. The metamorphosis of property, however, into such a pervasive right is partly property’s own mistake. In an effort to provide incentives targeting social welfare, preserving ‘one’s labour’ has become its political and economic zenith. To this end, property has been interpreted as an economic right, which ensures that one is not deprived of the investment of the value she undertook;

Contextualising property

21

it also ensures that non-participants do not reap the benefits of such an investment and are, consequently, excluded from any exclusive proprietary interests. This is plausible as long as social balance is preserved. However, it can also provide the grounds for the loose interpretation and the convenient connotation of property with power.60 But, sovereignty, if utilised fairly, is a necessary component for property in that it operates as the tool for the protection of proprietors and their rights. Without it property rights are open to violation and breach and this endangers the socio-legal and economic balance they seek to ensure. According to G. Cohen sovereignty entails that each person enjoys, over herself and her powers, full and exclusive rights of control and use, and therefore owes no service or product to anyone else that has not contracted to supply.61 This is reasonable in so far as control is not used to suppress the legitimate rights and claims of other proprietors. Therefore, the right of sovereignty within property should not be expressed as amounting to wealth and power, since neither of these two elements is able to characterise a resource as property. This interpretation is an oversimplified approach used as a means to enforce certain proprietary rights over others and mistakes sovereignty within property as the means for an overpowering and excessive form of protection. Accordingly, imperium – as an association with dystopian power and control over a resource – contradicts the fundamental argument that property relationships among individuals are, or better yet should be, based upon ‘public reasoning’. Within this context, Immanuel Kant advocated a system of private property where individuals share a ‘united public will’ and the assignment of property constitutes a means of establishing equal autonomy for all mutually free individuals.62 Therefore, for Kant, ‘public reasoning’ is the root of a system where all individuals are safeguarded and are able to enjoy their essential freedoms. ‘Public reasoning’, in this context, ensures an equal share of participation and freedom for all persons by conceiving that opportunities are available to everyone. In this context, John Rawls offers a more practical account of ‘public reasoning’. Generally for Rawls ‘public reason’ entails the efforts of a collective body to amend or create laws through the exercise of its political power.63 This thesis, Rawls emphasises, applies only to recognised public institutions, including courts and other public decision-making bodies, and ‘consists of premises and modes of deliberation that are widely accepted or are at least available to all citizens’.64 Thus, public institutions not only have the authority, but also the means, to provide clarifications concerning the right of sovereignty and how it should be exercised within the realm of property. This authority is a direct consequence of their commitment to serve and abide by the premise of ‘public reasoning’.

22 The current state of domain name regulation To this end, Rawls accepts society’s ‘reasonable pluralism’ towards religious, philosophical or moral convictions,65 but, simultaneously, he seeks for the mechanism through which citizens are able to explain to one another … how the principles and policies they advocate and vote for can be supported by the political values of public reason.66 Although Rawls believes that all persons should be afforded equal opportunities to basic rights and liberties within a justice-based system, he accepts that underpinning decisions by the state’s institutions ought not to be based on consensus or reflect an ‘objective’ criterion; rather they should adhere to ‘public reasoning’, at least to some extent.67 So it is these decisions that not only ensure ‘public reasoning’ but also determine the allocation of property and control its institutionalisation processes. ‘Public reasoning’, therefore, helps counterbalance the totalitarian exercise of sovereignty within property rights. It ensures, through public institutions, that private property is not used as a tool for abuse of dominance and unjustified exclusion. It allows the smooth functioning of a society, which respects the peoples’ freedoms, encourages innovation and appreciates the legitimate enforcement of rights while these values are delivered through courts, public administrators and legislators. However, even ‘public reasoning’ and its core values behind it is endangered by a legal system in which … decisionmaking entities are captured, corrupt, or otherwise constructed so that they do not meet the essential features of democratic, transparent, and genuine deliberative discourse … in which ‘public reason’ fails to possess a genuine meaning and cannot claim institutional or normative superiority in establishing the societal nature of property.68 Therefore, in cases where the system is purely private, the reality of ‘public reasoning’ becomes even more problematic. Private systems of adjudication are more prone to corruptive interests and undemocratic practices and, therefore, ‘public reasoning’ cannot operate as an equilibrium between sovereignty – as an exercise of power with the objective of human welfare – and property, which works on considerations of economic efficiency and other socio-legal criteria. It is within these mechanisms where we are likely to experience the employment of sovereignty as a means of power and control, since these systems neither possess nor are they interested in preserving ‘public reasoning’. Under this reasoning, the institutional framework of collective decision-making surrounding the regulation of domain names does not reflect a substantive ‘public’ nature. Although this claim to sovereignty exists in different shapes and sizes in all forms of property, it is more profound in certain cases of proprietary interests

Contextualising property

23

like, for instance, in the wars between trademarks and domain names. In the disputes between these two rights, trademark owners pronounce their sovereignty over names and, this way, create a trademark-driven domain name market. This is merely a consequence of two, often, incompatible legal regimes: the trademark one, which is structured and operates under a coherent understanding of the nature and value of a trademark; and, the domain name regime, which is characterised by its incoherent and vague formation and still struggles to determine the legal ethos of a domain name.

3

Introducing trademarks

I consider a trademark to be equivalent to a man’s signature to a letter. There may be hundreds of John Smiths, but there would be such an individuality in each man’s signature, that you could identify the whole. I consider that when a man puts a mark upon any article he produces to identify it as his production, that is equivalent to his name. ( John J. Smith1 )

The conventional definition of ‘the primary and proper function of a trademark’ is the one given by the U.S. Supreme Court in the leading case of Hanover Star Milling Co. v. Metcalf : ‘to identify the origin or ownership of the goods to which it is affixed’.2 This unique virtue of trademarks to identify goods and/or services constitutes the cornerstone of their justification as property rights and warrants their role within economic markets. In order to examine the sufficiency of this definition, ‘which has been followed by almost every legal regime, with but the slightest of variation and none of meaning’,3 it is essential to recognise their institutional development and the normative features that have conspired towards their economic and legal standing. Until the seventeenth century there was not a concise and structured legal framework surrounding trademark protection; rather, trademarks were regulated entirely according to the existing principles of trade – the so-called ‘guild jurisprudence’.4 Trademark law owes much of its justification in two historical concepts: The first is the notion of the ‘proprietary mark’, which was not necessarily attached to the goods by the owner. This mark was a merchant’s rather than a craftsman’s mark and did not aim at identifying the source of production of the goods in question. The second was the ‘regulatory production’ mark, which accompanied the goods and its main purpose was either to identify ‘defective’ marks or to distinguish between domestic and foreign marks, which might have entered the domestic market illegally. This mark was characterised as a ‘genuine mark’ of origin, denoting the owner of the mark to be the proprietor of the goods.5

Introducing trademarks

25

The French Revolution and its convictions for ‘Liberté, égalité, fraternité’6 penetrated the philosophy of trademarks and paved the way for their reform as substantial legal rights in need of protection. The industrial revolution introduced novel ways of conducting trade and gave consumers more options. This resulted in a new wave of illegal activities focusing on the deception of consumers and the dilution of the products directed to them. In addressing this problem, economies and legal regimes turned to trademarks seeking to harvest consumer confidence. Thus, it is commonsensical that the protection of trademarks originated as a policing mechanism to prevent ‘the grievous deceit of the people’,7 thereby, protecting consumers from products that were defective and flawed. Nevertheless, we should discard the idea – at this early stage of the analysis – that a trademark or a ‘trade name’ solely informs consumers as to the actual origin of goods and/or services. A trademark, first and foremost, indicates the personalities with which the consumer relates to; it operates as a designation of quality, which, in turn, guarantees consumer satisfaction. A trademark serves multiple and multi-dimensional purposes that extent from consumer protection to market efficiency to the institution of values, such as responsibility and obligation to others. Due to this multi-faceted effect, trademark protection is currently circumscribed by a blend of sovereignty and authority over other similar rights. It is true, especially today, that an amalgam of political pressures, lobbying by businesses who mainly support governmental initiatives, along with legal jurisprudence, have encouraged the expansion of trademarks and have affirmed their overwhelming nature. The following chapters focus on an analysis of the legal and economic justifications of trademarks. Nonetheless as an initial step of inquiry, we should briefly examine the pathology of intellectual property law and, subsequently, evaluate the anatomy of trademarks within the intellectual property arena. Such research analysis will provide the necessary means of appropriation in determining the value of trademarks within the wider socio-legal context. 3.1 Intellectual property and trademarks The legal justification of Intellectual Property can be traced in the distinction between tangible and intangible property as first portrayed by the Gaian8 schema during the years of the Roman Empire. According to the Institutes of Justinian: Corporeals are things that are by their nature tangible, such as human beings, gold, silver and countless others. Incorporeals are those things that are intangible. They are those things whose existence is juridical, such as estate of inheritance, a right of use and obligations however constituted …9

26 The current state of domain name regulation In spite of its incoherence,10 the Gaian schema has been the first sensible attempt to distinguish tangibles from intangibles, marking this way the subject matter of intellectual-related concepts as property. The main problem with the Gaian thesis is that, in its simplicity, it leaves the issue of ownership out of the equation and this, in the intellectual property context, is not only unseemly but also unrealistic. Due to this unaccommodating omission, two interpretations are commonly accepted: either that there is no clear distinction between the subject matter and the ownership of that matter or that ownership is not a right at all, but, instead, is the relation between an individual and the subject matter of her patrimony.11 Accepting the effect of the Gaian schema, Ginossar goes further to argue, ‘Ownership is nothing other than the relation by which a thing belongs to a person.’12 Similarly, ‘a personal right is a right belonging to the creditor and attached to her patrimony by means of a right of ownership’.13 To this end, one’s patrimony consists of property. One may own both things and rights. Ownership of things is tangible ownership, whilst ownership of rights is intangible ownership.14 The recognition of ownership within the realms of property law has allowed both civil and common-law systems to develop a more conclusive approach towards property in general and intellectual property in particular. This approach … allows a property analysis of the legal issues which arise when subordinate real rights are granted in respect of an incorporeal thing. For example, it is difficult to explain how A can grant a standard security over the lease if it is not accepted that his relationship to the lease is one of ownership. For no one can burden that which is not his. And the end result of the security transaction is that there are two rights over the incorporeal thing, namely A’s real right of ownership and the heritable creditor’s real right in security.15 Within this context, it can be surmised that intellectual property rights, although not characterised as incorporeal rights per se, entertain incorporeal things as their subject matter.16 A similar approach is to be found within the common-law rationale with Harris favouring the opinion that intellectual property rights have as their subject matter ‘ideational entities’.17 This is also the view taken by the World Intellectual Property Organisation (WIPO), which defines intellectual property as ‘the rights to, among other things, the results of intellectual activity in the industrial, scientific, literary or artistic fields’.18 A narrow reading of this definition leads to the conclusion that trademarks fall outside the scope of intellectual property; they are neither scientific – patents are – nor literary or artistic – as is copyright. Trademarks are signs, distinguishing goods from one another, but, by no means, can they be considered inventions or part of the wider artistic field. The raison d’être of a trademark does not depend upon discovery, novelty, intention or any work

Introducing trademarks

27

of the brain; it requires no fancy or imagination, no genius or laborious thoughts.19 Thus, it is not surprising that when modern trademark law was gradually shaping back in the 1850s, trademarks were not classed as intellectual property rights. This is quite reasonable given that trademark law, at least the way we know it today, was not even conceived at the time.20 Law was generally reluctant to grant rights in respect of limited real rights that were of an abstract nature. However, intellectual property rights are not, in fact, of an abstract nature and intellectual property is not a static phenomenon. Intellectual rights concern a specific subject matter; patents focus on protecting an invention; copyright seeks to safeguard the expression of an idea; and, trademarks aim at fostering a product’s quality, whilst ensuring consumer satisfaction. These may be intangibles but are certainly not rights of an abstract nature. Still though it was quite difficult at a time when property was conceived as equivalent to ‘one’s labour’ to accept that intellectual rights constitute property. Even the libertarian school of thought, which promoted property to be both morally required and socially vital, did not acknowledge intellectual property as being supported by the same philosophical and practical justifications of property. Libertarians would not allow a creator to claim the legal rights conferred to the owner by the state in order to exclude others from her creation.21 This is reasonable for those who argue that ownership should not be conceived as part of property’s institutionalisation. Modern property rights though conceive the right of ownership, possession and licensing as belonging to legal individuals, even if the legal individual is not a real person. Corporations, governments and other collective forms of ownership are framed in terms of individual ownership. By analogy, therefore, intellectual rights constitute property: one owns a house because one bought it; one owns the patent because one made an invention. One possesses a flat because one rents it; one can use an author’s work because one is allowed to. One drives a car because one is licensed to drive it; one can make full use of a trademark as part of a licence agreement. 3.2 Defending trademarks Initial attempts to structure a regulatory framework for trademarks can be traced during the years of the industrial revolution when their importance in society and the need for their protection became evident. Unlike patents and copyright though, trademarks failed to provide a precise subject matter, making their inclusion in intellectual property open to debate. To this end, two and by far different schools of thought were created, both of which had their arguments and supporters. The first argued that trademarks should not be part of the intellectual property rubric because, unlike other intellectual property rights that were highly associated with a new creation, trademarks sought to protect a

28 The current state of domain name regulation pre-existing subject matter.22 Hindmarch, who drafted the government Bill in 1862, and was an opponent of considering trademarks as any form of property, argued: I have heard of persons refer to the law of patents, and the law of design, as parallel cases; but there is nothing parallel there. A man who comes and takes a patent gives a consideration for the grant he obtains and so with a man who comes and registers a design, he acquires a copyright of a limited character, never exceeding three years; he also gives some consideration; there is something new, which the world knows nothing about, and in consideration of that the copyright is given; but in this case, in which it is proposed to give a copyright to a trademark there is no consideration … it would be to create a … monopoly totally and entirely unknown to law … and, as I conceive, contrary to the spirit of the great statute against monopolies.23 A second objection against the inclusion of trademarks within the intellectual property rationale reflected the clear distinction between trademarks and other forms of intellectual rights as to the end result. Even though for copyright and patents one can identify a strong sense of cultural and intellectual activity that mirrors the needs and contributes to the evolution of society, in the case of trademarks the end result is purely economic and seeks to protect consumers from deceitful and anti-competitive practices. For many this view negated the recognition of either any intellectual or property basis within trademarks, thus, excluding them from the scope of intellectual property. By contrast, the two arguments that justify the inclusion of trademarks in the intellectual property discourse are by far more persuasive. According to some the essence of international treaties, the premise of industrial property and the core function of trademarks allowed their mutation as intellectual property rights.24 Trademarks mirror the relationship an owner has with her mark; they correspond to the esoteric need to please consumers and to meet a certain level of excellence. Their philosophical justification might not be as straightforward as that of copyright or patents, their institutionalisation, however, within intellectual property embodies a mix of cultural and iconic representations, which reflect the personality of their creator.25 Moreover, similar to the other intellectual property rights, at the heart of trademark law lays a duty-bearing privilege, which is consistent with cultural diversity, economic efficiency and social harmony. Accordingly, trademarks are consistent with the ‘bundle of rights’ theory as they capitalise on all its elements. Although it should be accepted that intellectual property rights, and especially trademarks, answer to notions of informational property rather than property over the res, still their owners are able to make full use and manipulate the right the same way Honoré instructed. Therefore, if we are able to justify under the theory of the ‘bundle of rights’ how a proprietor may use her trademark, then, by consequence, we

Introducing trademarks

29

should be able to argue that trademarks do incorporate some form of property, intangible in nature and, in certain aspects, intellectual. To this end, the space trademarks occupy within the intellectual property rubric might be vague, but their multi-faceted character allows them to exemplify characteristics of proprietary and intellectual rigour. 3.3 The legal philosophy of trademarks Trademarks constitute limited property rights recognised in respect of the product of the human intellect. Corresponding to the Latin word proprius, the brand name becomes ‘one’s own’.26 This common-law doctrine was first developed in the first half of the nineteenth century in the case of Millington v. Fox,27 where the Lord Chancellor clarified that the basis of equity’s intervention in trademark infringement cases did not concern fraud; instead its subject matter was of a property nature. More fundamentally, trademarks, just like patents, constitute ‘the grant by the state of an exclusionary, and in some cases, exclusive right to … exploitation …’.28 Trademark law jurisprudence has always walked a fine line in both civil and common-law systems. The law is designed predominantly to protect three distinct values: preventing consumer confusion, protecting the goodwill associated with the mark and ensuring free market access for third party competitors.29 Protecting consumers from confusion is the initial, original and quintessential justification for trademark protection. Trademark regimes are structured according to economy-efficiency mechanisms as economic and psychological theories merge with law to justify protection and ensure the satisfaction of consumers. This is the case since the inception of trademarks, when English law allowed the consumer to sue for the harm caused by activating the tort of trademark infringement. When deceived consumers do not purchase what they want, not only do they loose time and potentially money, but, on a more fundamental basis, the functions of trademarks break down. The utility of a trademark includes the guarantee of consistent quality, guarantee of consistent products and guarantee of consistent source.30 Protecting the goodwill of the product constitutes the second manifestation of trademarks’ socio-legal utility. One of the fundamental virtues of trademarks is to promote and encourage innovation and, to this end, law ensures that trademarks are part of a solid legal structure within which manufacturers feel secure to invest in and use trademarks to identify a source, which, in turn, contributes to the reduction of search and transaction costs and helps producers build the so-called ‘brand loyalty’. It is indeed true that only the philosophy of property law can grasp the importance of protecting the broad notion of goodwill that spans from economic to social and psychological manifestations. The protection from unfair and anti-competitive practices is the third token behind the legal philosophy of trademarks. In complementing consumer

30 The current state of domain name regulation protection and protecting the goodwill of the mark, this third value creates an ironic combination of a market, which albeit restricted, does not aim at raising the cost of access to new entrants. Trademarks provide the opportunity to new businesses to enter markets without, however, manipulating and exploiting existing trademark utilities. This does not create monopolies; instead, it respects the multivalence of trademark law. This multiple set of values though leaves trademarks vulnerable to ‘legal subjectivity’ as the precise subject matter of trademark protection still remains uncertain. Whilst for copyright and patents it is clearly creativity and innovation respectively, in the case of trademarks its subject matter consists of a complex set of values spread at different levels of social structures. At its most basic level, the premise of their legal protection is based on the fact that a trademark exists to recognise one competitor from another and not because of the availability of a legal right in the brand name. The legal right needs to be linked with the main function of the trademark otherwise it does not exist. Therefore, although trademark law does not acknowledge a legal right in the name per se, it provides a combination of protection mechanisms that safeguard brand names and the trade dress and packaging of products and/or services and, even sometimes, the configuration of the product itself. In more practical terms, trademark law has always bestowed upon the proprietor the negative right to impede others from using it providing, this way, sufficient levels of protection to consumers. Consumers, on the other hand, anticipate that the product will meet certain standards of quality and excellence that come to justify the trademark’s reputation and its strong form of legal protection. Public authorities will even interfere since a trademark [is] liable to revocation … if it is liable to mislead the public, particularly as to the nature, quality, or geographical origin of those goods or services [in respect of which it is registered].31 Bearing these manifestations in mind, a trademark is a limited, intangible property relating to ownership of the right. Like all other property rights, a trademark incorporates a defined right to exclude others, but this right is, equally, subjected to specific restrictions. These mainly concern limitations in the use of the language and guarantee the property of the commons regarding the use of words. Trademark law bars the registration of generic words or geographical terms, instructing that words belonging to the public domain cannot constitute grounds for trademark protection. Consequently, while a trademark is an important business asset (especially in today’s globalised and informational society), it is important to bear in mind that a simple trademark registration does not provide the trademark owner with the exclusive right to remove a term or a word from the world’s lexicon. This degree of legal concession would provoke discussion on issues of free speech and would provide trademark owners with an overwhelming control over our language.

Introducing trademarks

31

To this end, property in trademark law is not identified in the term itself; it means the right to prevent confusion. As one court has explained: A trademark is not that which is infringed. What is infringed is the right of the pubic to be free of confusion and the synonymous right of a trademark owner to control his product’s reputation … The trademark laws exist not to ‘protect’ trademarks, but, … to protect the consuming public from confusion, concomitantly protecting the trademark owner’s right to a non-confused public.32 A trademark might invite a debatable exclusivity, which, nonetheless, translates into an exact property right. All the immunities and privileges identified in traditional property can be identified in trademarks as they ensure and protect social and economic welfare. 3.4 The economic value of trademarks The prognosis that trademarks constitute a form of intangible property is not accidental; rather, it is substantiated on the face of property’s contribution to society at large. Economists of many persuasions would agree that trademark law, the same way as property law, is a form of ‘government intervention’ aiming at increasing the welfare of society. The term ‘trademark’ denotes its economic significance for stimulating market forces, whilst, at the same time, defends its strong legal protection. The sections that follow discuss how the ingrained characteristics of trademarks stimulate the market and encourage innovation. 3.4.1 Conveyance of information One of the most fundamental attributes of trademarks is their ability to ‘communicate’ with consumers and convey information about the product or service they portray.33 This unique feature allows the efficient function of a competitive market and constitutes the driving force behind trademarks’ dynamism. In the case of trademarks, conveyance of information goes beyond the ability to indicate origin – it allows the individualisation of a certain product by marrying the product with its mark.34 This feature also provides consumers with a freedom of choice, which maximises their satisfaction.35 With the exception of trademarks, there are really no other channels of communication between consumers and products. Through words and logos information is disseminated to consumers about the product in a fast and secure way. When the U.S. Trademark Bill was highly disputed in front of the Senate in 1964, the Senate Committee remarked on the essential features of trademarks: ‘Trademarks indeed … make possible a choice between competing articles by enabling the buyer to distinguish one from the other’.36 Similarly, the role

32 The current state of domain name regulation of trademarks was described in the Memorandum on the creation of the EC ‘Community’ trademark: To make the right choice, the consumer needs to be able to identify and distinguish these goods according to their origin and recognise a connection between a particular product, its quality and reputation. Trademarks facilitate this process of identification and choice …37 Economists term this uniqueness of trademarks as ‘search’, because, essentially, trademarks constitute means to communicate pre-purchase information.38 The trademark regime facilitates the reduction of overall search costs as consumers use marks to acquaint themselves with the product.39 Pre-purchase information may comprise of a variety of information from which one might distinguish between direct or indirect as well as price and non-price information. This is not only cost – but also market – efficient and denotes a deeper psychological need that trademarks serve. A ‘true’ trademark should understand the needs of consumers and accordingly, should seek to serve them. In order to be successful, conveyance of information should work both at a vertical and a horizontal level. At a vertical level, informational features should be able to distinguish the trademark from similar ones, and, at a horizontal, the trademark should be able to exercise convincing power upon consumers. 3.4.2 Trademarks guarantee quality Another feature with more evident socio-economic dimensions concerns the ability of trademarks to guarantee the quality of a product. In this context, quality must be demonstrable in order to provide incentives within the economic market. To this end, Akerlof has established that in the market for used cars, for instance, high quality cars can be driven out of the market due to asymmetric information.40 Consequently, trademarks fill this need by helping economies to find a way to master this informational deficit. If we briefly were to assume that trademarks are not able to provide such information concerning a product’s quality, then such information would have to be acquired in other ways. Given the information asymmetry and the rather complex arrangements of the market, this information, most likely, would have been obtained by other, potentially more expensive and inconvenient ways, such as polls in and outside shops and consumer questionnaires. Therefore, trademarks help the economic stabilisation of the market through the reduction of costs, and help to relieve the market asymmetry. As Landes and Posner graphically phrased it: A trademark conveys information that allows the consumer to say to himself: ‘I need not investigate the attributes of the brand I am about to

Introducing trademarks

33

purchase because the trademark is a shorthand way of telling me that the attributes are the same as that of the brand I enjoyed earlier.41 If guaranteeing quality is an essential feature centred at the heart of the trademark system, then around it exists a multi-dimensional web of other, equally significant, features. These, which, by no means, are exclusive, allow trademarks to sit comfortably within society, law and economies. For trademarks, first, encourage market competition. Market competition depends on the ability of competing products to be unique within a basket of similar products. Without trademarks to assist in the differentiation process, an important incentive to offer products of superior and better quality is eradicated. Second, trademarks act as a major deterrent to careless trade practices, such as manufacturing, and, thus, demand a certain level of responsibility from producers and/or manufacturers. Moreover, trademarks stimulate innovation, as continuous product development in a free market requires a system to ensure that one’s products are recognised and rewarded, should they prove successful. And, of course, trademarks also help to lower costs. Products are identified by their marks without producers trying to invent complicated, time-consuming and financially cumbersome formulas of examining the ‘buying habits’ of consumers. To this end, they save consumers’ time, providing them with a one-of-a-kind combination of easiness and choice. Finally, they stimulate foreign markets, as they make feasible for producers to create substantial volumes of demand for their products.42 All in all, globalisation and the growth of national and international markets destroyed the intimacy between consumers and producers. Trademarks come to rectify this void through mechanisms that ensure consumer satisfaction and confidence. A trademark has a self-reinforcing nature – its value is a consequence of its features and its ability to speak to consumers’ needs. 3.4.3 The language market The economic recognition of trademarks can also be demonstrated in their potential to provide novel and innovative means for economic growth. In this respect, Landes and Posner identified another significant function of trademarks in the market of language. According to their opinion, trademarks have a three-fold effect upon the language market: They increase the stock of names of things, thus economising on communication and information costs … They create new generic words – words that donate entire products … And, they enrich the language, by creating words or phrases that people value for their intrinsic pleasingness as well as their information value.42 Indeed, trademarks enhance and make communication more efficient. As companies strive to build their brand loyalty, they heavily rely on fanciful

34 The current state of domain name regulation and attention-drawing words in advertising and in promoting their goods. This straightforwardly makes conveyance of information more proficient and easier in that, it is simpler, for instance, to order a ‘Mars’ chocolate bar rather than a ‘chocolate bar consisting of plain nougat, almonds, caramel and milk chocolate’. This allows trademarks to invent words, which later smoothly penetrate the language market to either institute new words or replace existing ones. ‘Hoover’ successfully replaced the phrase ‘electric vacuum cleaner’ and ‘Google’ is currently used as a verb, meaning ‘to conduct a search online’. This is quite remarkable considering that there is no equivalent right that serves such a multi-faceted purpose or that has such an effect upon culture and society. The influence of trademarks, therefore, is multi-dimensional. And, while inventing words identifies trademarks as unique intellectual property rights, at the same time, it dilutes this social value by vesting on these names substantial economic interests. Markets are asked to address this problem by allowing a competitive environment, which accepts a multitude of trademarks. One way they achieve this is through advertising. 3.4.4 Trademarks and advertising The intervention of advertising in the trademark philosophy changed the face of trademark disputes from ones adjudicated on the basis of market place custom to ones founded on the protection of legal property. Trademark and advertising practices, at least in the United States, were developed simultaneously, with advertising being responsible for shaping modern trademark law and for shifting the subject matter from bad faith conduit to consumer confusion. Whilst, initially, the rationale for trademark protection was founded on the ‘promotion of honest and fair dealing, because no one has a right to use his own goods of another’,44 advertising made this requirement redundant and, instead, identified a property characteristic that made the connection between the monopoly notion and the rule that fraud need not be proved in trademark cases … apparent, for if a man has the absolute right to use a mark, even an innocent infringement must be forbidden.45 As trademark law was demonstrating a shift towards a more propertycentric regime, advertising was to become key to controlling goodwill.46 This modification was first established by the Progressive movement, pioneered by a diverse coalition of social reformers, intellectuals, professionals and entrepreneurs, in the beginning of the twentieth century.47 Using the teachings of psychology on patterns of behaviour, the Progressives demonstrated that consumers were influenced by irrational desires and, to this end, advertisers used trademarks as a means of manipulating not only consumer behaviour,48 but also of ‘adjusting the process of legal decision-making’.49

Introducing trademarks

35

This allowed trademarks and advertising to become an invincible combination. If advertising is to be effective, there needs to be a close nexus between the product and the advertising; this link is the trademark. The Progressive movement, which still dominates trademark practices, has proven that advertising assists and enhances the economic value of trademarks with a chain reaction taking place within the open market. Effectively, advertising disseminates the mark, whilst the latter distinguishes goods among similar ones. A trademark is the conduit for the advertising’s persuasive power, which, if not properly placed within a precise economic and legal framework, can be transmogrified into a monopolistic and autocratic right. This danger posed by the Progressives’ philosophy necessitated the incorporation of new elements within trademark law. The new philosophy seemed to depend more on ‘objective’ evidence and avoided to proceed to formulations concerning consumers’ attitudes and preferences. Instead of focusing their reasoning on abstract and rhetorical ideals, judges reached decisions based on advertising data that was produced in court: By relying on such objective data, judges could inoculate themselves from complaints that they were relying on easily manipulated formalist legal doctrine.50 More importantly, though, the combination of advertising and trademarks was considered to facilitate and support democratic free speech. According to Rudolph Callmann, ‘a trade-mark is not a monopoly, but on the contrary, a symbol of individuality and individuality is democracy’.51 This is correct in so far as trademarks allow multiple businesses to coexist by distinguishing the goods and/or services from one to another; and, it is also the case, that advertising provides a certain degree of consumer autonomy to make informed and unbiased choices the same way a democratic state would wish for its subjects. This led judges52 to assert that an unlimited supply of trademarks exists and that consumers have the ability to determine the future of a mark through independent decision-making processes. The Progressives, therefore, are partly responsible for the legal transformation of trademark law into a property-centric, exclusive-oriented legal right. Consumer protection, supported by the studies of other disciplines, became the value concerning the goodwill of the mark and the determinative factor for infringement. It is this unique effect of trademarks upon consumers that signifies their role within economic markets. 3.5 The political mapping of trademarks The institutionalisation of trademarks as property rights belonging in the sphere of the human intellect reshaped their legal status and established their position within the wider socio-economic context. The Progressive movement

36 The current state of domain name regulation was partly responsible for this metamorphosis with William Ross stating that the Progressives helped to change judicial attitudes since they weakened the grip of legal formalism on judicial thinking and made judges more aware of the relationship between law and society.53 At first instance, this is not objectionable considering that trademarks provide a sensible symmetry at different levels of societal and economic structures. This value, however, is not absolute and should not be understood as supplying trademarks with unconditional immunity exercised and enforced indiscriminately. Trademarks are objects of appropriation – the shape of property they have acquired is of a certain type whose legal codification is consequential to various historical phenomena and corresponds to basic linguistic and economic restrictions. This is to say that trademark law has transformed into an exclusive property right through a constant flux of political and economic influences that determined its reliability as a means for consumer protection and its authority in identifying the source/origin of goods and/or services. The ‘maturity’ of the trademark right can be ascertained in its adaptability and flexibility to allow external artefacts to penetrate and customise its shape. Politically, this places trademarks under an unparalleled governmental umbrella, which is exemplified by the constant and ascending level of trademark protection.54 Modern trademark law is characterised by a strong sense of sovereignty, encouraged by governmental intervention. Similar to other property rights, this might be justifiable, in the sense that a law which would lack distance from State behaviour, will or interest would amount to a non-normative apology, a mere sociological description. A law which would base itself on principles which are unrelated to State behaviour, will or interest would seem utopian, incapable of demonstrating its own content in any reliable way.55 And trademark law is, indeed, sensitive to state behaviour in so far its axioms are capable of illustrating and responding to the needs of economic and legal markets. However, this effect is often palpable and may impact negatively to the essence of trademark law. State interests have already mistakenly associated trademarks with the protection of national claims providing, this way, trademark law with an immunity and a power of extra-territorial reach, contrary to their nature.56 This, of course, provides trademark owners with ‘legitimate’ claims for sounder protection. It transmogrifies trademarks into entities that, under the chapeau of the ‘bundle of rights’ and with a strong sense of sovereignty, determine market forces, pressure established legal standards and pose serious

Introducing trademarks

37

questions to issues of ethical behaviour. This is a manifestation and exercise of power at its best. Power over private property is not an objectionable situation though as long as it is exercised properly and seeks to preserve equilibrium within society. For trademarks, this equilibrium is the smooth function of the market and the guarantees for consumer protection, the sustaining of fair competition and the stimulation of innovation and commerce. At its most basic level however, power becomes problematic when one is able to identify to its source the ability to proceed to decision-making.57 When this occurs, decision-making processes become the result of pressure and of conflict of interest. In the case of trademark law, this conflict is between the economic value of the mark and the limitations of its protection. For trademark owners this has always been the central issue: how they can stretch the limits of their protection. The Progressives certainly sought to do so, as do big corporations, which seek to expand trademark rights by capitalising on domain names and their influence on ICANN. The current state of trademark law is the result of trademark campaigning, consistently demonstrating the value and promoting the importance of trademark rights. Insisting on the multi-dimensional purpose of trademarks, owners have submitted their wish to see legal regimes and the market responding expediently either by simplifying the tests or expanding the parameters of trademark law. In the U.S. regime, for example, trademark law is challenged by the confusion test, which seems to be allowing trademark claims in spite of confusion.58 In this commotion, the presence of domain names does not assist in bringing trademark law back to its roots. On the contrary, it provides room for more trademark claims, distancing trademark law from its original philosophy. All this is only indicative of the power associated with trademarks and justifies the political implications that we have mentioned above. It undermines the essence of trademark law and diverts it from its initial scope. Eliminating the confusion test provides trademark owners with more control over their mark and, thus, stronger protection mechanisms; and, by limiting such trademark standards, trademarks are granted carte blanche protection at the cost of both the market and society. New entrants will find it very difficult to compete in an unwelcoming environment, which amends rules seeking to secure the interests of existing owners. This is further exemplified by the use and understanding trademarks have acquired on the Internet and, in particular, their association with domain names, which, additionally, manifests the problematic of drawing analogies between the offline and the online world. It is currently unquestionable that domain names have been institutionalised under the influence of trademarks and society regards them as their online extensions. In a similar way to the ‘use test’ theory, this submission stretches the limits of trademark law and bestows on mark owners power, which is more international and transnational. Over the past ten years, trademark owners would systematically seek to transform

38 The current state of domain name regulation the DNS into a ‘markopolis’, which would ultimately allow them to influence policy-making and manipulate domain names. The following chapter discusses the pathology of domain names as unique Internet essentials. This is important considering that, once we understand their unique idiosyncrasy, we will also be able to better comprehend the problems with the UDRP and rationalise domain names as intangible property.

4

Domain names Their technological, socio-economic and legal status

If trademarks are part of an orderly structure of limitations and privileges, domain names are still at a stage of legal uncertainty, which is both accidental and intentional: accidental, because only over the past few years have courts engaged in a substantial domain name dialectic; and, intentional, because over the past decade the trademark community has systematically campaigned that domain names constitute part of their de jure trademark rights. Under a more philosophical context, such an ambiguity also corresponds to the problematic of the Internet and the effort to rationalise its legal challenges through an analogy with offline activities. With this in mind, in this section, our main point of inquiry focuses on trying to delineate an hypothesis as to the legal nature of domain names and whether their characteristics exemplify proprietary interests, sufficient to disentangle them from trademark law and justify their protection as sui generis rights. This is a difficult task considering that from an institutional and ethical point of view, domain names are constructed around the notion that they constitute online extensions of trademarks and, thus, any attempt to evaluate them separately will receive strong opposition. To a certain extent, this is a legitimate expectation, considering that domain name arrangements are rooted in more than ten years of policymaking, pioneered by the trademark community, which, in the beginning especially, experienced a real threat by the proliferation of domain names. What started as an experiment by Joshua Quittner1 with the registration of would ultimately result in a wave of illegal activities, aiming at harming, actually and potentially, trademarks and their owners. For trademark law, cybersquatting would become one of its fiercest enemies and would result in the uneasiness of the trademark community, which was putting pressure upon the ‘administrators’ of the Domain Name System (DNS) – ICANN – to provide solutions to this emerging problem. ICANN responded to these concerns with the formation of the UDRP, an administrative process characterised by its speed, low costs and digital nature. Ultimately, the UDRP would be the turning point for the current intellectual dilemma surrounding the legal nature of domain names, and it was part of an intense institutionalisation process, which was based on

40 The current state of domain name regulation the delegation of a critical Internet resource to the private sector. What should have taken place ten years ago in terms of researching, assessing and analysing domain names as individual legal commodities never occurred; instead, a conclusion – enforced both legally and politically – left domain name registrations accountable to trademark rights. This would ultimately create a culture (the UDRP), which indiscriminately considers domain names as second-class citizens. At the same time, using the UDRP or the comparison with trademarks as a research tool to evaluate the legal nature of domain names is difficult, since this would entail, on the one hand, an analysis of an inconsistent and complex matrix of panel decisions and, on the other, an unequal analogy with trademark law. It would also – as it already has – blur any argument towards assessing domain names as individual legal rights. The thesis that domain names should be judged under trademark law principles might be tenable, but the arguments submitted are superficial and contentious. In many respects domain names are similar to trademarks mainly because they perform similar functions being able to identify the source and origin of goods and/or services. Quintessentially though, they are of different content and foundation, since domain names are letters corresponding to Internet Protocol (IP) numbers, whilst trademarks are combinations of words, signs, colours, visual depictions of a product or a service, representing the associated goodwill of the product or service. If this similarity is sufficient to compensate for their fundamental differences, then any further analysis on the contention that domain names might constitute rights separate from trademarks is futile. But, this similarity is not only insufficient – it also provides a ‘convenient’ way to expand trademarks rights and assign their owners international – imperium – control over words. The underlying contrast between trademarks and domain names is exemplified in the following observation: the philosophy of trademarks is framed under a strict and confined legal environment that promotes their national as opposed to their international character, places certain restrictions and limitations on their registration and seeks to ensure that protection can only be sought in the event that a clear link with the goodwill of the product exists. On the contrary, with the exemption of the ‘first come, first served’ rule – a technical rather than a legal requirement – none of these exemptions is relevant during the registration process of domain names. Therefore, the assumption that we should unchallengeably view domain names through the lenses of trademark law is erroneous. The current environment concerning the regulation of domain names is a direct consequence of the political pressure and economic rationalisation pursued by trademark lobbying. The conception, creation and endorsement of the UDRP was an indirect result of the tension that domain names were causing to the trademark community and was promoted under the untested hypothesis that all domain names could ultimately harm the economic strength of trademarks and, thus, disrupt the market. This prevented any formal legal evaluation of their nature

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or their parameters. Are domain names just trademarks or are there instances where a domain name does not meet the trademarkability requirements? The main thesis of this book is to avoid imperious and unsubstantiated legal judgments but, instead, turn its focus on the evolution of domain names as individual rights. There is nothing erroneous considering domain names autonomous, intangible property rights and this is one of the main arguments of this book. Given the importance domain names have acquired over the years, it now seems appropriate to tune our policies and regulations up to this possibility. Our starting point will be to understand the nature of domain names, which is inherently three-dimensional exemplifying technical, economic and legal features. These constitute the tools in assessing the ethos of domain names. Specifically, their technological necessity is featured in them being part of a larger hierarchical system (the ‘domain name system’) that consists of Root servers and databases; socio-economically they have acquired great attention because they offer the means for conducing online activities and, thus, capturing an international audience easier; and, finally, legally they can either perform a trademark function or – equally significantly – operate as sui generis property. 4.1 The technical nature of domain names: what’s in a name? Domain names are the alphanumeric strings to the right of an @ in an e-mail address2 or they immediately appear after the World Wide Web (www) abbreviation when searching for a Web site. Technically, domain names are mapped into numbers that denote an IP v4 or IP v6 network address and a host ID on a TCP/IP network. These are the Internet Protocol (IP) numbers that play a pivotal role in directing all communications on the Internet, including e-mail and World Wide Web traffic.3 They have been justifiably called the ‘human-friendly address of a computer’4 and it is because of this ‘friendliness’ that commercial and legal disputes may arise. The Internet owes its functionality to its ability to route information quickly from one machine to the other. IP numbers provide the identifying information of each computer that permits an e-mail to reach its destination and a request for a Web page to find the right computer across the Internet. Generally, the norm is that Web page access – unlike e-mail – could always be achieved with an IP number.5 Simply because IP numbers are difficult to remember, the architects of the Internet introduced easy-to-remember alphanumeric domain names as mnemonics. As soon as a user types a domain name into her Web browser, the host computer ‘reads’ the domain name by translating it into an IP address. Both IP numbers and domain names are known for their uniqueness in that only one domain name can exist per space, the same way only one sequence of numbers can exist corresponding to an IP address. To this end, using domain names increases portability, since numbers can be randomly assigned to names; the names may stay constant even when the resources to

42 The current state of domain name regulation which they refer alter. This whole system whereby numbers are translated into names and vice versa constitutes the essence of the Internet’s technical operation. The structure of the DNS is supported by two organised hierarchies – a visible one, associated with the letters that the IP addresses correspond to and determines how domain names are allotted, and an invisible one, which reflects the resolution of names into IP numbers and supports Internet communication. These two hierarchies share strong links but are neither similar nor identical.6 The idea of replacing IP numbers with names usually creates three distinct parts in a domain name: in the address , for instance, is the ‘top-level domain name’ or TLD, while is the second-level domain name (SLD) and any additional parts are joined to create third or higher-level domain names. Governance of the DNS, as exercised by ICANN, has political implications concerning the determination of which TLDs will be added to the legacy Root ‘A’ – the most visible and authoritative Root, which lists and mirrors almost all domain name registrations. Some ‘alternate’ TLDs do exist but are not recognised by the majority of servers.7 It is the current political environment and the objections against ICANN’s authority that negate the listing of these ‘alternate’ TLDs in the ‘A’ Root. Technically, however, their existence does not obstruct the operation of the DNS and any user can access them by directing her software to use them.8 However, the number of users using these and their popularity are not to be compared with the TLDs listed in the ‘A’ Root. Currently, the authoritative Root ‘A’ counts 262 two-letter country code TLDs (ccTLDs)9 and twenty-one generic TLDs (gTLDs).10 The 262 ccTLDs are almost all derived from the International Organisation for Standardisation’s ISO Standard 3166.11 In theory, it is a political decision for ccTLDs to be administered by the various national governments according to the principles of self-determination and sovereignty; in practice, they do, but ICANN still retains the ultimate control. Occasionally, ccTLDs have strict and exclusive rules that make registration difficult or even impossible12 and, as a consequence, registration in gTLD spaces many times appears more attractive. Most of the gTLDs are open without any restrictions, whilst a limited number is reserved for certain entities or organisations, like, for instance, for American academic institutions, for the American government and its agencies, for international organisations, for the U.S. military, etc. 4.1.1 The registration system As we have previously mentioned, the DNS is structured hierarchically to guarantee the uniqueness of every domain name. Before ICANN’s creation, the master file, consisting of all domain name registrations, was maintained individually by a single registry. The current ‘shared registry’ system,13

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enforced by ICANN, changed the previous registration culture in an effort to ensure stability; in theory, having a database controlled by one registry ensures that a domain name is allocated only to one person and, thus, conflicts between registrations are prevented. Users wishing to make themselves visible online should proceed to applications through the various authorised registrars.14 Under the current regime, a registrar can offer domain names and relevant services through an agreement with the registry to operate a certain TLD. Before finalising the registration and assigning the domain name to the registrant, the registrar confirms with the registry that the domain name is available and updates the database accordingly. Whilst the current architecture of the DNS is not exclusive, under the current status ‘domain name uniqueness’ constitutes a principle of paramount importance. This means that a domain name can only belong to one, specified individual or entity, rather that a domain name is associated with only one IP number. The registrant is able to assign various IP numbers to the same domain name, if such action is necessary, for example, to overcome issues of high traffic.15 4.1.2 The domain name resolution hierarchy The resolution of domain names depends on an interdependent, dispersed and hierarchical structure that supports the operation of the DNS. A file, located at the top of a pyramid, is considered as the ‘legacy, “A”, or authoritative Root’ and constitutes the master list of all domain name registrations. ‘Alternate’ TLDs are not part of that file, since it is administered and maintained by ICANN, which has the sole authority to determine which domain names will eventually be listed in the ‘A’ Root. A combination of political pressures, consensus, lack of knowledge, and inertia among the people running the machines that administer domain name lookups means that domain names in TLDs outside the legacy root, e.g., http://lightning.faq, cannot be accessed by the large majority of people who use the Internet, unless they do some tinkering with obscure parts of their browser settings.16 Domain names are resolved through a determined sequence of queries that the end user unknowingly conducts. The query begins by typing a domain name into the browser – at the bottom of the pyramid that is the name server or the Internet Service Provider (ISP). If the information requested cannot be retrieved at that level, the query is automatically directed to the next level until it finds a way to be resolved. At the top of the pyramid sits the ‘authoritative’ ‘A’ Root, maintained in parallel on twelve different computers. These twelve machines – currently identified by the letters B–M – mirror the information of one another and they also contain all the IP addresses associated with every domain name.17 Figure 1 demonstrates the query route and the way a domain name is retrieved in front of a browser.

44 The current state of domain name regulation

“A” ROOT

ROOT SERVERS (B-M)

D

B C

………

L

M

.UK .COM .ORG

TLD NAME SERVERS gTLDs & ccTLDs

BT AOL INTERNET SERVICE PROVIDERS (ISP)

AT&T

LOCAL HOST

Figure 1

4.2 The socio-economic function of domain names As previously noted, domain names constitute indispensable features that support and facilitate communications on the Internet. Technically, domain names are the means that have conspired to create a popular and user-centric Internet. At the most basic level, domain names provided the opportunity for everyone to use the Internet. Within a more socio-economic context, domain names constitute commodities of significant monetary value. Over the past ten years, domain names have entered economic markets in a dynamic fashion and their performance has been remarkable. This is not to say that a simple domain name registration will automatically produce substantial economic benefits the same way a trademark does not have value simply by being associated with the goodwill of a product and/or service. In the case of domain names, the benefit is embedded in the name itself rather than what it stands for. Different names acquire different value and this can be illustrated in the following two ways. First of all, experience in the second-level domain name (SLD) market shows that different names amount to different economic profit.

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ICANN has imposed uniform pricing as a contractual obligation irrespective of the strings used in the primary market for SLDs registered in any of the gTLD spaces. This signifies that from a pricing perspective it will be the same if a domain name holder registers or . There is a secondary market, nonetheless, within which some SLDs command a higher price compared to others. , for instance, was sold for $7.5 million, whilst received a bid for $5 million with and reaching the $3 million and $2.2 million margin respectively. The same does not account for the ccTLD market with price differentials being the exemption and only in the case of some ccTLDs can we experience a similar direct impact as for the gTLDs. The ccTLD for Tuvalu , for instance, markets different names at different prices. Therefore, SLDs constitute essential components of socio-economic utility and their value can be substantial. It is the current economic environment that endorses the worth of some domain names although there is no explanation of ‘the functional differences between SLDs and TLDs’18 that could explain the considerable price difference for the former and the lack of price difference for the latter. ICANN, as part of its mandate and contractual obligations with the U.S. government, cannot distinguish between the various gTLDs even though it is acceptable that some gTLDs are more popular than others. It is more an issue of market normative forces that can resonate the current price differentiation. Imagine, for example, that the following two domain names are auctioned in one of the many domain name auction houses: and . It is almost unreasonable to expect that these two domains would receive the same bids. would certainly command a much higher price due to its generic, descriptive and product-focus connotation, whilst the other domain name would either acquire no or many fewer bids. The following sections will explain the reasons behind this pattern. 4.3 Socio-economic norms in the domain name market At the time Landes and Posner argued on the economic value of trademarks, domain names did not constitute the functional utilities they currently denote; instead, domain names were unknown and devalued. Nevertheless, nowadays one can easily relate to the potential domain names have within economic markets or rationalise why domain names are in demand. It is a fact that certain domain names can acquire more value than others. Such a divide in value reflects a semantic rather than a syntactic logic, which, if combined with some specific characteristics, can increase the value of Internet traffic. To this end, Manheim and Solum19 have identified a combination of non-exhaustive criteria that can explain the reasons behind the success or failure of a domain name within the economic market. In no particular order of significance, these are: guessability, memorability, branding, meaningfulness and enterability.

46 The current state of domain name regulation 4.3.1 Guessability Guessability plays a vital role when considering the value of a domain name. The success of business ventures on the Internet burgeoned the development of other similar business models and, to this end, it has been proven that the more guessable the domain name is the likelier it becomes for the end user to associate it with a particular business. Imagine, for instance, a user searching for a Web site that provides information, products and services on wines; entering would be the logical option and, thus, whichever business manages to register it will receive more hits compared to a similar business that uses the word , for example.20 The abovementioned example relates to the SLD market, but similar results are likely to occur in the case of the gTLD market. Although the expansion of the Root is part of ICANN’s plan to diffuse domain name registrations and give registrants a wider choice, the selection of the gTLDs hitherto reflects an effort to create an environment that will facilitate users in searching for information by guessing under which gTLD such information would be classed. An obvious example is , the gTLD dedicated to the aviation industry and the goods and services linked with this specific sector. For all these reasons, guessable domain names will generally be of more value than the ones that are difficult or cannot be guessed at all.21 4.3.2 Memorability In the case of domain names as online identifiers, memorability plays perhaps the most substantial role, since names have to be innovative whilst adhering to the ‘easy to remember’ principle if they are to dwell on consumers’ minds. Guessability certainly adds value to a name, but, if the term is also memorable, the value will most likely raise substantially. Memorable domain names ought not be necessarily guessable to have value; , for instance, is memorable but is not guessable for an online book retailer, however, its value is significant. On this account, it does not matter whether the domain name is an actual word or does not have semantic meaning. The string , for instance, does not mean anything yet again it is memorable, while the string is a word used in chemistry but it is difficult to remember. But, equally, every short term is not necessarily memorable, with instances where terms like might be both memorable and guessable.22 4.3.3 Meaningfulness As a societal space, the DNS really depends on the use of the language to disseminate information. Accordingly, the economic value of a domain name will also depend upon factors such as whether the name has ‘semantic meaning in some natural language’.23 The words , and all have semantic meaning and are thought to be easier to memorise or guess.

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Despite its significance, this criterion is not conclusive and meaningfulness does not necessarily symbolise maximisation of domain name value. Language is full of words with a negative meaning (for example, ) which, even though they are meaningful and might be easy to remember, are still likely to have less value compared with the string .24 4.3.4 Enterability In an environment where technology plays such a pivotal role, the value of domain names increases depending on the way an end user types the domain name in the standard QWERTY keyboard.25 Since one of the Internet’s qualities is its time effectiveness, a domain name that a user can type faster and easier will likely generate more value. This is not a foolish argument considering the entry typing errors that can occur by any average user. Especially during the first years of the domain name mania, misspellings and mistypings constituted a plague for trademark owners, who had to fight ‘typosquatters’ – individuals who would register famous brands by misspelling their trade names, depending on users’ typing errors, whilst, simultaneously, aiming to gain profit from such mistyping practices. 4.3.5 Branding Branding on the Internet occurs through domain names. Commercial and noncommercial sites use domain names as their marketing tools to ‘speak’ to their audiences and to interact with users. For branding to operate in an effective manner, the domain name needs to incorporate all the above characteristics or a combination thereof, so as to attract the attention of the public, thereby transforming a simple domain name into a primary user destination. Amazon and PayPal have successfully branded their names and now the public associates them with certain goods and services. A similar degree of successful branding is to be identified in the case of Wikipedia, which is currently more popular than the historically trustworthy Britannica. Domain names make branding easier and cost-effective, whilst providing the platform for an international audience. In reality, domain names and branding create a perfect match. Branding is a collection of experiences and associations in relation to an individual, a business or a service. In a similar vein, the choice of a domain name mirrors the personality, ideas and goals of its registrant. In this context, the credibility of the domain name is crucial to its branding success. The webmasters, who used to link at sites, now will ‘twit’ about it instead. Word of mouth is becoming more and more important on the Internet; social networking and similar sites allow the flow of information and exchange of ideas. In such a climate, consumers become indirect marketing tools constantly branding domain names. The ‘distinctiveness’ of branding meets the ‘uniqueness’ of domain names to create an unparalleled combination of economic efficiency.

48 The current state of domain name regulation 4.3.6 Potential value restrictions If the value of trademarks is restricted within certain territorial boundaries, the value of domain names can be restricted by the lack of Internet infrastructure. Domain names are only valued in economies, where the Internet has presented itself as a social phenomenon but has also penetrated market forces. In parts of the world where infrastructure is scarce or non-existent and, thus, cannot support Internet-related activities, the value of domain names is insubstantial. However, in those parts where the Internet has infiltrated socio-economic forms of governance, domain names can potentially provide the means for market, sector-specific domination. The domain generated the extravagant amount of $3 million because of its genericness and its ability to encapsulate the sector of providing services for loans. This is the reason domain name registration constitutes a business of its own value and, currently, various online domain name auction houses seek to sell domain names to the highest bidder. But, this potential value of domain names is not accidental, since domain names have the unparalleled virtue of uniqueness that cannot be identified in the case of trademarks. This, combined with their international reach, make domain names indispensible commodities. 4.4 Domain name legal theories With this degree of potential economic value, domain names become valuable commodities of the Internet, thus the need for their legal protection. Currently, the legislature has not taken any conclusive position concerning the legal status of domain names and any official policy is so contradictory that only intensifies the existing confusion. For example, paragraph 12 of Network Solution’s current ‘Service Agreement Version’ states: Assignment and Resale. Except as otherwise set forth herein, your rights under this Agreement are not assignable or transferable. Any attempt by your creditors to obtain an interest in your rights under this Agreement, whether by attachment, levy, garnishment or otherwise, renders this Agreement voidable at our option. You agree not to reproduce, duplicate, copy, sell, resell or otherwise exploit for any commercial purposes any of the services (or portion thereof) without Network Solutions prior express written consent.26 On a totally contradictory note however, the same Network Solutions has asserted: The preliminary question, then, is whether registrants have property rights in their domain names. Network Solutions all but concedes that they do. This is no surprise, given the position of prior litigation.27

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So, what is it really? Are domain names contracts for services or intangible property rights? If they are contracts for services, does it mean that ICANN has contractual ownership over all domain name registrations? And, if they are property, what are the property right’s parameters and scope? Before exploring the legal nature of domain names as non-trademarks, let’s turn our attention to the current conceptual premise: domain names and their relationship with trademarks. 4.4.1 Domain names as trademarks The most common mistake that everyone makes is to consider, indiscriminately, all domain names as an online extension of trademarks. This is consequential to the way the UDRP has portrayed domain name disputes and the way national jurisdictions have codified domain names under existing trademark law statutes. The trademark community and the UDRP panels have been adamant in perpetuating the normative thesis that the legal status of domain names is subjected to that of trademarks and, on this basis, trademark owners are entitled to ownership of their desired domain name. Assuming, momentarily, the accuracy of this theory, this would mean that domain name holders would be able to apply for registration of their domain names following the same procedural framework of trademark registrations. It would, further, indicate that there is an umbrella rule for all domain names being perceived as trademarks. Surely, trademark owners cannot expect to ascribe trademark functions only to those domain names they have interests in and leave the rest legally unspecified and vague, simply because they do not constitute an asset. It is not the first time that sequences of numbers pose an intellectual problem for legal regimes. A few decades ago, courts were asked to comment on a similar challenge in determining the legal nature of telephone mnemonics. Corresponding to the familiar rationale of domain names, telephone mnemonics are user-friendly means and constitute an easy-toremember attempt to distinguish businesses of goods and/or services. In the United States, telephone mnemonics have long been recognised as identifiers that may acquire protection as long as they serve specific purposes and are affiliated with certain goods and/or services. In this sense, mnemonics are recognised as intangible property and are governed by trademark law.28 Building on the same rationale, trademark offices around the world proceeded to establish rules, allowing domain names to be registered as trademarks as long as they meet the traditional registrability requirements. Currently, Patent and Trademark Offices have published policy statements acknowledging the registration of domain names as trademarks.29 Some policies, including the one of the USPTO, make reference to domain names as ‘content providers’ and accept that the criteria for registration of domain names as trademarks should not be simplified because of the influence of

50 The current state of domain name regulation the Internet.30 Under this framework, trademark law will protect unregistered domain names trademarks that are arbitrary or fanciful, suggestive or descriptive and have acquired secondary meaning; similarly, it will not protect generic terms or geographical indications. This is, at least, the position of the U.S. Trademark Office and the U.S. Federal Court of Appeals, both of which agreed that the application for trademark registration of the domain name should be rejected on the basis that the domain name incorporates a generic term (‘hotels’) and that the addition of the suffix is not enough to transmogrify the term into a distinctive mark.31 In its analysis, the Court of Appeals accepted that there is a fine line separating generic from descriptive marks,32 and decided to reject the survey conducted on behalf of the registrant, which demonstrated that consumers actually appeared to have associated the domain name with a brand name. Making reference to Professor McCarthy, the court concluded that the nature of a response to questions in a genericness survey can be affected by the way the question is framed.33 Both the Trademark Office and the Court were unwilling to open the registration process to domain names that incorporate a non-trademark term – and quite accurately. Although the registrant did actually provide evidence that for many could indicate that the domain name had acquired a distinctive character, the court was unconvinced, stating the clear thesis that a mere preponderance of evidence in such a case is not enough [and] the court … should therefore require clear evidence …34 The Court of Appeals, agreeing with the Trademark Trial and Board Appeal, suggested that the word ‘hotels’ names a key aspect of applicant’s services, i.e. that aspect of applicant’s information services and reservation services that deal with hotels, and concluded that hotels.com is properly viewed in the same way and having the same meaning as the word ‘hotels’ by itself.35 The position on the trademarkability of domain names incorporating untrademarkable terms should be considered the norm. In Reed Elsevier Properties Inc.,36 the court held that Lawyers.com is generic for services provided by lawyers for ‘providing an online interactive database featuring information exchange in the fields of law, legal news, and legal services’ encompasses the generic services provided by lawyers.37

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From their end, trademark offices appear capable of distinguishing the situations, where domain names can be registered as trademarks. At the same time, however, by instructing procedures to regulate domain names that follow similar rationales as the ones established under trademark law, trademark offices also recognise that not all domain names will qualify for trademark protection. To this end, for generic domain names, names designating a geographical origin and those denoting free speech (to name a few examples) national offices accept that trademark law will not be able to provide answers and, therefore, domain names will have to acquire protection from an alternative legal source. Which legal source will this be? The following explores the two prominent theories: domain name as contracts for services and domain names as property rights. 4.4.2 Domain name as service contract rights The first thesis concerning the legal status of domain names is that they constitute service contract rights. At the outset, this sounds reasonable. In true contractual fashion, the genesis of a domain name is based on a contractual agreement between a registrar, such as NSI, and a domain name holder. If an end user wishes to obtain a domain name, the registrar will check its availability and, accordingly, will proceed to authorise the registration. The registrar identifies the matching IP number with the domain name and registers the name in the authoritative Root server. For a relatively small fee, the registrar will assign the domain name and as long as the renewal fee is paid then the registrar will continue to renew the registration.38 Among other contractual obligations the registrant agrees to be bound by the Uniform Domain Name Dispute Resolution Process (UDRP).39 Moreover, as part of the registration agreement, the registrant agrees that she will use the domain name and that this use will not interfere with the lawful rights of other holders.40 In as much as the registrant complies with this minimum set of requirements, the registrar continues to provide the agreed services. Keeping this domain name formation process in mind, two courts have erroneously, yet not surprisingly, concluded that domain names are service contract rights. Dorer v. Arel41 Dorer v. Arel is the first case that set the leitmotif on the theory that domain names constitute contracts for services and failed to identify any proprietary interests in them. The subject matter of the case, however, was unrelated to the legal classification of domain names; it rather concerned an attempt by the plaintiff to use garnishment proceedings in an unorthodox way.42 The initial question raised before the court concerned a trademark infringement case, which the plaintiff won. Nonetheless, the court’s decision

52 The current state of domain name regulation did not instruct transfer of the domain name, which represented the plaintiff’s trademark and, thus, the plaintiff instigated garnishment proceedings seeking transfer of the domain name. The court sought to apply Virginia’s garnishment statute but saw no social utility towards this direction claiming that the plaintiff had other legal alternatives at his disposal.43 After failing to apply the writ of fieri facias on reasonable grounds, the court sought to identify any proprietary interests in domain names and, by drawing analogies to trademarks, it decided that domain names do not constitute personal property. The court rationalised its theory on the basis that a trademark is always associated with the goodwill attached to it and cannot be traded alone in the open market; this, the court concluded, should have also applied in the case of domain names. If a creditor, therefore, is not able to use garnishment as defence against a trademark irrespective of its goodwill, the same should be relevant for domain names.44 The court particularly focused on domain names that incorporate a generic term, such as , seeking to grasp the potential value of a domain name, and recognised that there is a ‘lucrative market for certain generic or clever domain names’.45 This economic factor, nonetheless, is by itself not able to transform domain names into property rights. For the court, the interests inherent in domain names are contractual rather proprietary. The role of the registrar and the services provided were not contemplated at any stage of the proceedings, with the court deciding to focus merely on the economic value of domain names, which it considered to be dependable on a variety of factors, including the value that the end user adds to it. In deciding against using garnishment proceedings, the issue of whether domain names constitute property for the purposes of the statute was not further deliberated. The court mentioned that the plaintiff had different options, which better suited his claim. The first one was the registrar’s policy itself, which allowed a domain name subject to litigation to be submitted to the court’s orders. Moreover, there was the option of ICANN’s UDRP, which is a process directly related to the plaintiff’s current subject of litigation. With any of these options the defendant would have a chance of succeeding in obtaining the transfer of the domain name. It is evident that Dorer cannot be used as a template for asserting that domain names constitute contracts for services. The decision manifests the uneasiness and confusion of the court to renounce the current domain name dialectic as well as its effort to be excused from deliberating on a delicate issue. For this reason, it instead directed the parties to the other available legal options. The court did not take into consideration the nature of the services offered by a registrar and failed to produce a convincing analysis of the value of domain names. At the same time, however, this decision demonstrates the perplexity of applying the ‘old’ to ‘new’, of seeking to fit within traditional legal environments novel issues, such as domain names, without having first

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determined their legal nature. A year later, a mistake of similar degree and magnitude would be repeated in Umbro. Network Solutions Inc. v. Umbro International Inc. In 2000, the decision of the Virginia Supreme Court in Network Solutions Inc. v. Umbro International Inc.,46 would open Pandora’s box and unfold a debate that had started in Dorer. In adjudicating that a judgment creditor could not obtain rights in domain names by garnishment, the court characterised the right to use a domain name as ‘the product of a contract for services’.47 Interestingly, while the court was not meant to respond to the issue of whether proprietary interests exist in domain names, the court’s conclusions did ultimately raise questions concerning the presence of proprietary interests in domain names.48 The decision, consequently, created confusion as to whether a domain name can be used as collateral for loan, whether a registrant should consider a domain name as an asset of bankruptcy and, finally, whether a judgment creditor has the potential to attain an enforceable ligamen against a domain name.49 Umbro asked the court to acknowledge proprietary interests seeking to enforce a previous judgment, which concerned the transfer of a number of domain names – including the disputed one – that Canada Inc. had illegally obtained. Umbro convinced the court to grant it a writ of fieri facias through which it managed to bring a civil action against Network Solutions Inc. seeking to garnish the desirable domain names. The court’s order directed Network Solutions Inc. to cease any control over the domain names and immediately submit them to the court’s jurisdiction so as the names could be then auctioned.50 Network Solutions Inc. disregarded the court’s order, arguing that the company did not hold any assets that constituted property for the purposes of the court’s garnishment order that belonged to Canada Inc. NSI’s arguments focused on four main assertions: (1) that the writ of fieri facias ‘does not attach to contractual rights that are dependent on unperformed conditions’; (2) that domain names constitute contracts for services and thus have no proprietary interests; (3) that ‘domain name services do not have a readily ascertainable value’; and (4) that ‘domain name services are not similar to patents and other forms of intellectual property’.51 The court, however, did not accept NSI’s argument arguing that the writ of fieri facias was both relevant and material, since domain names constitute the type of property in which the writ can apply.52 NSI appealed and the appellate court re-evaluated the facts under the premise of whether domain names constituted property rights attached to the Virginia garnishment statute.53 The court concluded that the statute could not apply in the case of domain names and reversed the decision of the Court of First Instance. These conflicting decisions demonstrate an inherent problem in the American judiciary to justify the application of collection remedies to intangible forms of property. In Virginia, the garnishment statute is very

54 The current state of domain name regulation specific in the types of property it covers and the court should proceed to issue a writ of fieri facias, which ‘creates a lien of all tangible and intangible property of the judgment debtor, irrespective of whether the property is subject to levy’.54 The Court of First Instance took for granted that domain names are essentially trademark rights and decided that since domain names constitute a ‘form of intellectual property’55 the writ of fieri facias should apply. The court correctly recognised that the registrant has full control of the domain name after the registration phase is completed and has only to comply with a contractual set of terms and conditions, which, however, do not make the rights so indistinguishable as to not be subject to garnishment. The court evaluated the rights, which are subject to a creditor’s claim, irrespective of their monetary value, although it did recognise that some domain names are of truly ‘substantial value’. Finally, the court refuted NSI’s argument that domain names are contracts for services and explained that the role of a registrar is purely administrative. Under the current registration system, registrars do not investigate how domain names are used or whether registrants can claim any enforceable rights to their domain names.56 The Virginia Supreme Court, on the other hand, asked the question whether the writ of fieri facias could be used in garnishment proceedings. The court deliberately did neither evaluate nor submit to the issue of whether the writ extends to domain names, since for the court this issue concerned part of a subject matter that fell outside the scope of the case; it concerned the legal categorisation of domain names.57 The court separated the issue of whether a fieri facias writ extends to a certain right from whether a certain right can be garnished and concluded that, traditionally, intangible forms of property fall outside the parameters of the statute. The court recognised ‘liability’ as the only intangible form that can fall under the statute and asked whether a determination could be made as to whether domain names could constitute liability that would be able to justify the garnishment proceedings. The court mistakenly confused the exclusive right as exercised by the registrant as ‘inextricably bound’ to the services that the registrar offers. It suggested, therefore, that domain names constitute contracts for services and, consequently, a contract for service is ‘not a “liability” as that term is used in the statute and hence is not subject to garnishment’.58 The court felt that, if they recognised property interests in domain names subject to garnishment, they would create a broad precedent whereby all services would be subject to garnishment.59 In defence of both courts, it is indeed true that domain names have posed various challenges to traditional theories of law and have introduced new norms, still unfamiliar to many legal regimes. The Court of First Instance took the risk in accepting that domain names are rights subject to garnishment and concluded that the problem of shaping the new to the old, of reconciling the dual demands of stability and change, is surely congenial to legally trained minds.60

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On the other hand, the Supreme Court viewed the garnishment statute as barring any ambiguous concepts and, thus, argued that its ‘provisions must be strictly satisfied’.61 This negated any attempt to evaluate domain names as rights subject to garnishment by counterclaiming that courts ‘cannot extend established legal principles beyond their statutory parameters’.62 The court’s decision reflects its fear to set a bad precedent that could potentially expand the garnishment statute beyond its true nature. To this end, the court made the following remark: ‘without statutory changes, we are not willing to allow such results in Virginia’.63 Obviously, the Supreme Court was not interested in creating case law on the legal nature of domain names. On the contrary, the Supreme Court’s decision proclaims a certain amount of conservatism in its view of the garnishment statute under the reality of information technology. The view of the Supreme Court, which almost discounted the concept of incorporealis, was responding to its anxiety not to upset Virginia’s garnishment regime. However, the court was mistaken in asserting that a domain name is a contract for services. Think of the services provided for stocks and bonds for instance. They belong to the owner in as much as the owner is able to sell them, transfer them and exploit them in any way. The bank has the obligation to maintain them, but has no rights on them. Accordingly, the domain name is a non-existent right prior to registration and the registrar may be acting as the link that will assign the requested domain name, but, after it is assigned, the registrar has no control over its use. This is not a decision therefore, that proves that domain names are contracts for services rather one that demonstrates the problematic courts face with the proliferation of the Internet. The argument that the writ of fieri facias cannot extend to domain names for the purposes of garnishment proceedings is unreasonable if one considers that the value of a domain name is not necessarily affiliated with conducting business; rather it is in the name itself. The determination of its value can be a combination of popularity, easiness, or any other criterion unrelated to traditional value measurement standards. To this end, most domain names posses a potential value and, thus, they should – at the very least – be eligible for garnishment. Concluding comments The decisions in both Dorer and Umbro and the arguments submitted in favour of domain names as contracts for services should not be considered conclusive, since their subject matter related to the interpretation of garnishment proceedings rather to an examination of the legal nature of domain names. Both decisions reflect the confusion courts face where the domain name rather than the trademark is the subject matter. First of all, the courts misunderstood the services provided by the registrar and they interpreted the registrar’s role as having control over the domain name. The registrar is the agent through which the domain name is assigned

56 The current state of domain name regulation and placed on the Root server system. Prior to the registration, the domain name is a non-existent entity and registrars do not possess any rights on it. The contractual agreement that is formed between the registrar and the registrant after the domain name is assigned neither includes any clauses regarding how the domain name will be exploited nor indicates control, exercised by registrars. Registrars are not eligible to determine, for instance, that, by virtue of holding proprietary interests in domain names, X would get the X domain name without X asking for it; similarly, they are not able to seize indiscriminately domain names after they have been assigned. Moreover, the court applied the wrong criteria in determining the value of domain names. It is true that, unlike trademarks, domain names are not necessarily associated with the goodwill attached to them, but this lack of association does not deprive them of substantial value. Domain names serve a variety of functions that span across the board; they may be used as trademarks and, thus, they are associated with the attached goodwill, but similarly they might simply be information-based intangibles. This latter case does not undermine their value. We have already mentioned that the value of domain names is dependant on different factors, not necessarily attributable to trademarks. These criteria expand as the Internet progresses and introduces novel utilities. ( or had zero value when they emerged but are currently invaluable.) To this end, the determination of the value is not straightforward and should not by itself negate the recognition of proprietary interests in domain names. This rationalisation was, to a certain extent, applied by the court in Kremen v. Cohen,64 which viewed domain names as intangible property and departed from the judicial tension that was established in Dorer and Umbro. 4.4.3 Domain names as property It has only been over the past few years that courts have begun to acclimatise to the possibility that domain names constitute property. Case law is still relatively minimal, but the arguments courts have hitherto presented offer more convincing conclusions for the categorisation of domain names as property rights. At this stage it is important to note that, whereas in both cases it was Virginia courts that took the view of domain names as contracts for services, in determining that a domain name constitutes property, courts located in Virginia – the home of NSI – were not involved. Kremen v. Cohen65 Departing significantly from the weak arguments of domain names as service contract rights, the theory supporting domain names as property revolves around a more cogent conceptual axis. In Kremen v. Cohen, the conclusion that domain names constitute intangible property rights was based on the idea that property includes

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everything which one person can own and transfer to another. It extends to every species of right and interest capable of being enjoyed as such upon which it is practicable to place a money value.66 Kremen concerned the claim of the plaintiff to initiate an action of conversion and conspiracy to convert property against the registrar, Network Solutions Inc. Kremen had initially registered the domain name and, after some years of warehousing, he decided to exploit it financially only to realise that a third party had managed to fraudulently transfer it by forging a letter to the registrar. Kremen sued NSI for unauthorised transfer of the disputed domain name and NSI, in turn, moved for summary judgment on several grounds and, principally by claiming that domain names do not constitute property susceptible to the tort of conversion.67 The court began its discussion by examining the tort of conversion and suggested that originally conversion was only meant to cover tangible forms of property. However, the court also acknowledged the evolutionary character of Californian law and concluded that, under the new legal framework, conversion applies to forms of intangible property as well. Making a clear distinction between the various forms of intangible property, the court argued that conversion should only be appropriate to the types of intangible property that are merged in or identified with certain types of documents such as bonds, notes, bills of exchange, stock certificates, and warehouse receipts. Intangible property such as the goodwill of a business, trade secrets, a newspaper route, or a customer list is not subject to conversion.68 However, it was ultimately the 9th Circuit that considered domain names as intangible property subject to conversion, on the basis that NSI’s registry of second level domain names – and not the DNS as a whole – should be considered a document for the purpose of conversion. This remarkable conclusion deviated substantially from the Umbro reasoning, which the Kremen court refused to accept. Instead, the court agreed with the dissenting opinion in Umbro in that the right to use a domain name exists separate and apart from NSI’s various services that make the domain names operational Internet addresses. These services … are mere conditions subsequent …69 The approach of the court in Kremen ultimately determined the legal character of a domain name by separating the right of the name from the services provided by the registrar. It, moreover, acknowledged the exclusive right of the domain name holder to make full use of the privileges and immunities of property. For the court, domain names constitute valuable economic

58 The current state of domain name regulation commodities and, on that account, they are intangible property under Californian law. Therefore, the court ordered the defendant to transfer the domain name to its original owner. The original, deceitful transfer was declared void ab initio and the rule that forgery equates to nullity applied in this case the same way as in any other similar case.70 Finally, the Court of Appeals reaffirmed the trial’s court decision and, equally, recognised domain names as intangible property.71 It was indeed, the 9th Circuit that ended the legal battle and had the final wording in the justification of domain names as property. Judge Kozinski was adamant in his opinion of whether domain names constitute intangible property subject to the tort of conversion. Affirming NSI’s liability for the theft of , Judge Kozinski stated that domain names should be subject to conversion to the basis that the whole domain name system itself should be considered a document. He specifically argued: ‘the relevant document is the Domain Name System, or “DNS” – the distributed electronic database that associates domain names like sex.com with particular computers connected to the Internet. We agree that the DNS is a document (or perhaps more accurately a collection of documents). That it is stored in electronic form rather than on ink and paper is immaterial. It would be a curious jurisprudence that turned on the existence of a paper document rather than an electronic one. Torching a company’s file room would then be conversion while hacking into its mainframe and deleting its data would not. That is not the law, at least not in California.’72 Fundamentally, the case offers a well reasoned and profound argument with respect to the legal nature of domain names. Especially, in relation to generic or other domains that cannot acquire trademark protection, this decision is of substantial value, since it allows their assignment or transferability without any restrictions. It echoes the theory of the ‘bundle of rights’ in as much as it recognises the right of a registrant to manipulate the domain name in any way and the exclusive right to alienate others from using or making reference to it. It is obvious that the Court of Appeals applied the theory of the ‘bundle of rights’ to reach its conclusions by considering that property is a broad term, which encompasses ‘every intangible benefit and prerogative susceptible of possession or disposition’.73 For the court, examination as to whether an article can be considered property is a three-part test according to which first there must be an interest capable of precise definition; second, it must be capable of exclusive possession or control; and, third, the putative owner must have established a legitimate claim to exclusivity.74 According to the court’s reasoning, domain names satisfy every criterion. A domain name is a well defined interest similar to the well defined interest identified in the possession of a piece of land. Only the registrant has the authority and ultimate control over its use and exploitation, ergo ownership

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is exclusive because only the registrant can determine its future. And just like other forms of property, domain names have a substantial value, they are bought and sold or auctioned75 and they are subject to the property-oriented in rem jurisdiction. Moreover, the court commented on the social character of the Internet and the incentives that it provides to registrants and domain name entrepreneurs. If registrants did not have a legitimate claim to exclusivity, their impetus towards investing on domain names would be diminished. The court identified a sociolegal utility in ensuring that such investment in money and time should be acknowledged, since it is after all the driving force behind the success and growth of the Internet.76 The case offers convincing and rational arguments for the theory that domain names are intangible property rights, as it appreciates their potential value and respects the limits of their application. It considers domain names as unique Internet resources that ought to be protected by legal regimes in order to continue performing their role. To this effect, it armours domain names with the first layer of protection and places them in a legal category of their own. This is important considering that, under this interpretation, registrants could now have identifiable rights, which they could legitimately seek to enforce against anyone who illegitimately attempts to deprive them of these rights. Commonwealth of Kentucky v. 141 Internet Domain Names77 In November 2008, the Center of Democracy and Technology (CDT) and the American Civil Liberties Union (ACLU) campaigned to a Kentucky Court of Appeals against the seizure of 141 domain names around the world and sought to vacate a trial court’s prior order. The appellate court had a difficult task in ensuring that, among others, free speech was properly addressed. At the first trial, the Commonwealth of Kentucky – seeking to protect its anti-gambling legislation – persuaded the court to seize 141 domain names relating to gambling on the basis that they constituted ‘gambling devices’, facilitating illegal activities for the state of Kentucky. The court agreed, despite the fact that many of the domain names belonged to and were operated by individuals outside the state of Kentucky and, in many cases, outside the United States. For the court, the order was legitimate, unless the sites could screen out Kentucky users.78 On January 20, 2009, the Kentucky Court of Appeals overturned the lower court’s order, concluding that Kentucky’s ‘gambling device’ statutory provision did not cover domain names.79 In spite of its conclusions and their constitutional implications, the trial court also discussed the issue of domain names as property so as to justify the seizure. The opposing Groups and lawyers … collectively assert that domain names are akin to a telephone number or a business or residual address only;

60 The current state of domain name regulation that domain names are but a combination of letters and numbers, which serve as a mnemonic aid, nothing more. They argue that domain names are not property, but are rights in a service contract.80 Consistent with the court in Kremen, the court rejected this argument and concluded that ‘the Defendants’ 141 Domain Names are property, and therefore subject to this Court’s in rem jurisdiction or to possible civil forfeiture’.81 Although the trial court’s decision was finally overruled, the appellate court did not dismiss the argument of domain names as property; in fact, it did not discuss it all. Instead, it contemplated on whether the lower court’s writ fell either in ‘those [classes] where the inferior court is acting without jurisdiction; or (2) those in which the court is acting within its jurisdiction, but erroneously’.82 The appellate court ruled that the trial court lacked jurisdiction – not because domain names are not subject to seizure, but because domain names are not subject to seizure under the interpretation of the ‘gambling devices’ statutory provision.83 The court never dismissed domain names as property; it dismissed domain names as property equivalent to slot machines – a ‘gambling device’.84 The Court of Appeals took a reasonable approach. A state court should not have jurisdiction to seize domain names belonging to non-U.S. registrants, simply because domain name holders possess sites accessible by everyone with an Internet connection. In this specific case, the Kentucky trial court lacked in rem jurisdiction (in any case, as we will see in the analysis of the Anticybersquatting Consumer Protection Act, the provision is problematic for domain names) and, therefore, Kentucky gambling laws were not applicable. Should the court have concluded that the trial court had jurisdiction to act but acted erroneously, any determinations of the lower court concerning proprietary interests in domain name would have had no accuracy. We would be talking about a significant miscarriage of justice, which would have to be rectified. This was not the issue here, the court held, leaving the determination of domain names as property intact and limiting its analysis on the relationship between Kentucky’s gambling statute and its relevance to domain names. Honourable Nicholas Augustine Plant v. Service Direct (UK) As of yet, UK courts have not been asked to deliberate on critical questions concerning the legal nature of domain names. The limited number of domain name disputes that has reached English courts involved trademark infringement cases and these have appropriately been dealt under the 1994 UK Trademarks Act and the tort of passing off. In what can be considered the first case within the UK jurisdiction, the court in Honourable Nicholas Augustine Plant v. Service Direct, was faced with the challenge of assigning proprietary interests in domain names. The defendant, however, sought to convince the court of the property nature of domain names under a different justification.

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In 2005 in Plant v. Service Direct 85 Recorder Claire Miskin was asked to consider whether domain names constitute ‘goods’, which can be converted under the Torts (Interference with Goods) Act 1977. According to the Act, ‘goods’ are defined as ‘all chattels personal other than things in action and money’.86 The clear intention of the Act is that only objects in physical form should be considered as goods, although documentary intangibles, such as bonds and cheques, are also susceptible to the scope of the Act (similar to the criteria existing under the garnishment proceedings in Virginia). In her decision, the recorder limited the subject matter of this case to the criteria that negotiable instruments should represent money by some means and that, also, should exist in some tangible or physical form, such as a piece of documentation. In applying these two criteria, the recorder failed to identify any physical evidence in the disputed domain name and considered that any proprietary interests are only attached to the goodwill of the domain name. Plant sought to appeal and his application was reviewed by Lord Justice May who indicated: [In] the modern world of Internet communication and activity, questions such as these are likely to arise often and may be of some importance generally. It seems to me at the very least that the question whether an Internet domain name is capable of being converted is a question which is fit for consideration by this court on a more extensive and considered basis than is possible upon a single judge application for permission to appeal.87 Following the same rationale, Lord Justice Jacob failed to recognise the possibility for domain names to constitute ‘goods’ for the purposes of the Act. This is plausible in so far as domain names only exist in electronic and not physical form. However, the Lord Justice did not repeal the issue of property rights in domain names altogether. His remark was that domain names could not be classed as goods according to the 1977 Tort Act.88 The Lord Justice left a window open suggesting that an ‘Internet domain name or the rights in it may be a thing in action’.89 He did not, however, contemplate further on the issue on the basis that, in this particular case, the defendant was only concerned with whether his domain names could be converted under the Torts (Interference with Goods) Act 1977. This case is the first attempt by the UK courts to legally fashion domain names and it constitutes a good starting point towards this direction. It, basically, suggests two things: first of all, the fact that domain names exist irrespective of a physical form indicates that domain names cannot be classed as goods under the Torts Act 1977. This, nonetheless, does not preclude domain names as property rights. Property includes both tangibles and intangibles and is not concerned with the medium through which they are personified. On the contrary, property’s focus is on whether the features identified within

62 The current state of domain name regulation the object itself are capable of creating a ‘bundle of exclusive rights’ that can be used as a vacuum against other similar rights. Secondly, the court did not reject the property argument altogether. In spite of the fact that the court narrowly viewed domain names as glued to the concept of goodwill, ergo excluding all these domain names used for purely personal or informational purposes, the court seemed more comfortable to open the issue of whether domain names constitute property. According to the court’s wording, however, this particular case ‘as developed before [the appellate court] ingenuously bypassed all that’.90 4.5 Domain names as property Dissociating domain names from the sphere of trademark influence is important. Over the past ten years, this need has only been peripheral and symptomatic of individual cases that, in any event, did not reflect a true effort to institutionalise domain names as sui generis rights. In today’s Internet, however, things are different. There are trademark forces within ICANN that seek to demise the value of domain names, underestimate the rights of domain name registrants and expand trademark rights at an unprecedented rate.91 Predominantly, the issue concerns the legal nature of domain names that cannot operate as trademarks. There are numerous domain names, for example, that address free speech concerns or include a generic word. Considering that such domain names cannot be trademarked, what are the rights – if any – deriving from them? The legal nature of domain names is characterised by a high degree of ambivalence, which has been responsible for their static and confusing status. The current arrangement, which institutionalises domain names within the realm of trademark law, dilutes any possibility for identifying their real nature, and although, in truth, domain names share a substantial degree of similarity with trademarks, this degree is limited only to cases where use of the domain name exemplifies trademark characteristics. There is a whole number of other instances, where registration does not underlay any trademark interests yet again trademark law constitutes the sweeping authority. Information-based websites or registrations aiming for personal use or criticism would not – under traditional criteria at least – qualify for trademark protection; however, they do prejudice domain name regulation. This is disconcerting, since a sweeping rule of considering domain names as trademarks not only poses a threat to the nature of trademarks and encourages an environment of trademark lobbying and control, but it also undermines the rights derived from domain names. The evolution of domain names from purely technical essentials to features of socio-economic importance has generated the need to explore their legal autonomy. In the late 90’s, a similar understanding was reflected by the National Telecommunications and Information Administration (NTIA), which, commenting on the U.S. White Paper, clarified that

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for cyberspace to operate as an effective commercial market, businesses must have confidence that their trademarks can be protected. On the other hand, management of the Internet must respond to the needs of the Internet community as a whole and not trademark owners exclusively.92 The Kremen court certainly viewed domain names as autonomous rights and, thus, set in motion an intellectual debate concerning their legal nature that, until today, has been overshadowed by the catalytic influence of trademark law. To this end, it can safely be argued that the characteristic of domain name uniqueness – both technological and social – and the entitlements and obligations domain names may create, suggest that domain names can be considered as ‘e-property’ and, therefore, property law with its bundle of individual rights and obligations is apposite. For domain names to be considered property, however, the law has to acknowledge the registrant certain rights relating to the domain name. Otherwise, and as U.S. Supreme Court Judge, Justice Holmes noted in International News Services v. Associated Press, property, a creation of law, [should] not arise from value … Many exchangeable values may be destroyed intentionally without compensation. Property depends upon exclusion by law from interference, and a person is not excluded from using any combination of words merely because someone has used it before, even if it took labor and genius to make it.93 The legal basis of property rests on the individual, the use of the right and its exploitation against third parties; these persist, but all other aspects of property are in constant transition.94 The ‘bundle of rights’ theory is not an umbrella for the justification of property; rather it constitutes the initial point of inquiry addressing whether a right should be considered property. What is needed more is a clear sketch of property’s parameters and an examination as to whether these are legitimate. With this in mind, domain names can be sustained under two legal justifications, both relating to property: they can either function as trademarks, founded upon the conceptual premises of trademark law or they can acquire a sui generis character, rationalised under the theory of the ‘bundle of rights’; in any event, we are talking about an ‘e-property’ right. In the first instance, the parameters of the enforceable right are to be determined by those of trademark law. As we have discussed, trademarks are limited property rights and their protection is only reasonable to the extent that it corresponds to the associated goodwill of the mark. This limitation is key in so far as it imposes upon trademark owners a restrictive framework of proprietary interests – protection of a trademark is reasonable to the point of protecting the goodwill of the product and not the word of the term itself. By the time a trademark ceases to perform this function, its protection terminates

64 The current state of domain name regulation and any subsequent claims of ownership and exclusive use expire as well. It is vital to mention that such a limitation does not dilute the social value of property; on the contrary, it signifies its dominium – as opposed to its imperium – character and ensures that, albeit the existing restrictions, trademark law is still in the position to incentivise and galvanise existing and potential owners. Under this rationale, therefore, domain names will operate under the limitations of trademark law. However, this categorisation still leaves questions unanswered: when two legitimate trademarks exist, which one will be given priority over the domain name registration? How will the DNS compensate for the trademark classification scheme? These constitute quintessential and fundamental questions that the current regime has sought to answer through the UDRP and other policy-related initiatives unsuccessfully. In the second instance, following trademark law rationales to determine the scope of any proprietary interests in domain names can only lead to false justifications and prescribe inaccurate parameters. To this end, BeckermanRodau has successfully applied the theory of the ‘bundle of rights’ to domain names. He has identified the right of use and control, as well as that of alienation and exclusion to suggest that, in reality and practice, a domain name holder possesses a property right, which she can manipulate any way she wishes. Since the registrant is offered a plethora of choices, varying from transforming the domain name to an active Web site, to auctioning it or selling it, and to assigning it to others for financial profit, these choices signify proprietary interests inherent in the name itself.95 Beckerman-Rodau’s thesis is correct and is in line with the argument that domain names constitute property – they have presumptive power, they confer autonomy and control to their owners, they are free from governmental intervention96 and, as de Soto97 has accurately identified, they represent equity. The registrant enjoys the exclusive right of use and the registrar is neither accountable nor can pass any authority on this use. The registrar acts as the administrator of services ensuring that the domain name is operable so as the domain name holder can reap any benefits. Let’s pause briefly to reconsider the registration process and the way a domain name comes to life. The registrant applies for a certain SLD under either the gTLD or ccTLD space and, as long as, the requested domain name is available, the registrant enters a contractual agreement with the registrar. Since, prior to this stage, the domain name did not exist, the contractual agreement can only include clauses that are limited to the rights and obligations of both parties as to the services provided. These services include the listing of the domain name in the ‘A’ Root and its maintenance and do not extend to legal restrictions that limit the legal rights of the registrant. We should, therefore, automatically disregard the idea that domain names are contractual rights. A contract is a legally binding exchange of promises between two or more parties acknowledged and enforced by law; it is a prescription of controlled rights meaning that the boundaries of use and

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exploitation of contractual rights are well defined within the contract and are binding upon the parties. The legal relationship between the registrar and the registrant is characterised by a blend of promises and specifications that do not extend to a determination of domain name use. If, for instance, a registrant requests to register , the registrar cannot force her to use the domain name in a manner, which will necessitate reference to pianos. To this end, a domain name holder has the right to possess, dispose and make use of the domain name and this ability ensures the protection of her rights against collective power; it is the ‘private sphere of individual selfdetermination securely bounded off from politics by law’98 and characterised by a ‘bundle of rights’, which determines the legitimate parameters of the right. Justice Marshall has argued that under the ‘bundle of rights’ property ‘has a normative dimension; it establishes a sphere of private autonomy which government is bound to respect’.99 Accordingly, in Nollan v. California Coastal Commission, Justice Brennan asserted, state law is the source of those strands that constitute a property owner’s bundle of … rights and that the state [in this case] has not sought to interfere with any [of those] pre-existing property interests.100 Since, therefore, the theory of the ‘bundle of rights’ is the contemporary perception of property, there is no valid reason against acknowledging proprietary interests in domain names. In compliance with the theory of the ‘bundle of rights’, a registrant has the exclusive right to the choice of use of the domain name, the exclusive right to the services deriving from the name and, the exclusive right to exchange the domain name at mutually agreeable terms; and, all these whilst, at the same time, affording the possibility of excluding and alienating third parties, organising and controlling the use of the domain name, transferring or selling it and benefiting from its exploitation. In reality, domain name practices should provide room for individual action and selfrule, since normally, just as other intellectual property rights, a domain name registration will reflect a variety of individual characteristics, which subsequently mirror the registrant’s intentions of use.101 It is important, therefore, to explore how domain names would react in an environment that is not dominated by trademark rights. The current legal status of domain names, as well as the regulatory framework surrounding them, demonstrates a legal oversight that promotes domain names as secondclass citizens – rights of inferior legal importance and value to trademarks. This perception is manifested in the international regulatory environment of the UDRP, in the national regime of ACPA, in ICANN’s new gTLD plan and in the laboriousness of courts to separate domain names from trademarks and judge them on their own merit. But, as we have already mentioned, the registration of a domain name does not necessarily give rise to trademark interests and, thus, any attempt to shape domain name law under such a framework is bound to produce misleading conclusions.

66 The current state of domain name regulation Consequently, by recognising a sui generis dominium right for domain names, we detach them from trademark influences and we suggest that trademark law cannot always give the appropriate answers. We, equally, acknowledge that domain names constitute part of the wider sphere of property law, which includes rights and privileges, duties and obligations and we anticipate that property law will succeed where trademark law has failed – to efficiently protect domain name registrants. Property law has always managed to bestow upon the right itself and its owner reassurances that can be condensed into two characteristics, unfamiliar and alien in other legal contexts. First, it is argued that, once a right is established as property, its status remains and cannot be altered. For instance, ‘reasonable expectations’ as to the use of the property right cannot be amended after the right is granted to the satisfaction of either the owner or to reflect collective interests. And, second, a combination of autonomy and control equips property owners with certain panoplies that neither law nor society can disregard. It is these features that attribute to property rights a premise of concreteness and support a non-intrusive environment.102 For James W. Harris property, in a similar manner to liberty, affords individuals exclusive rights with respect to both how they use their rights and how they permit external circumstances to affect the behaviour of their rights.103 Harris views the right to exclude as paramount, albeit not determinative in justifying property interests. He is of the opinion instead that there is a continuum of uses, which allow property to evolve and advance and, depending on these uses, property is considered either an exclusive or a fragmented right. Therefore, it is the exercise of political judgment (autonomy), on the one hand, and the aegis of legal protection, on the other, that allow property rights to be considered as valuable commodities. So, when Harris speaks ‘of amalgams of open-ended, prima facie use-privileges, control-powers and powers of transmission’,104 he personifies and illustrates the boundaries within which property might operate. In particular, attributing property characteristics to domain names will contribute significantly to the legal reordering. First and foremost, the autonomy and control that property rights confer will justify a certain degree of legitimisation for domain name claims. The current, unclear status dismisses any rights registrants may posses and deters them from actively participating in legal actions. For example, even in cases where trademark rights are at stake and trademark owners seek to intimidate domain name holders, the UDRP does not sanction domain name holders to initiate an action of reverse domain name hi-jacking. This kind of legal diminution operates to the detriment of domain name holders, who are deprived of the de facto, non-tangible prerogative to use their domain name in any legitimate sense or to acquire benefits from its use. This is devaluing and it works as a disincentive for innovation. The truth is that the attribution of property to domain names will provide monetary incentives for entrepreneurs. The commercialisation of the Internet and the globalisation of commerce have demonstrated a new

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business pattern based on online presence. Currently, potential entrepreneurs suffer from the possibility that their online business names might be subject to trademark imperialism and feel exposed and unprotected against trademark proprietors. To the extent, therefore, that equitable rights are not approached homogeneously, legal regimes should intervene to balance any conflicting interests. It is indeed interesting that only the United States have straightforwardly acknowledged the existence of domain names as legal commodities, but this has been conducted under the narrow view of domain names as trademarks. But, even in jurisdictions where there is no explicit mention of domain names, national courts apply trademark statutes. If we wish to interrupt the current overt expansion of trademark law, legal regimes ought to make room for the regulation of domain names also as sui generis, ‘e-property’ rights. Besides the privileges that one might enjoy, the owner of a property right has equally certain obligations, which are manifested through a set of parameters. These are fashioned according to the right itself and correspond to social and economic considerations. What are the criteria, therefore, that we will use to determine the limitations of domain names as ‘e-property’ rights? As discussed, a substantial degree of domain name registrations – information-based, encouraging political activism or even involving businesses under a generic or a geographical SLD – do not give rise to trademark interests, yet again their use is evaluated under a strict application of trademark law. These are the cases that domain names operate as sui generis rights and, therefore, any determination of law should be judged against criteria, which relate more to the way the registrant is using the domain name and the results that she seeks to achieve through this use, whilst focusing also on how the domain name holder is able to identify herself though this use. If a registrant is able to prove legitimate use of the domain name, then law should be in the position to protect both the registrant and the domain name against any unfair dispossession. Unlike trademark use, which is based on commercial activity, the test of ‘domain name use’ should not only be limited to the commercial use of the domain name. The DNS is not only commercial. Sure, parts of it exemplify strong commercial ventures, but the Internet is so much more. Through domain names users should be able to interact socially, expect to receive information that go beyond buying and selling, educate or entertain themselves or their peers and, finally, be able to express themselves freely. Accepting that domain names should only be regulated by trademark law, is like accepting that the Internet is only a commercial space; we do not acknowledge its diversity and this is not only unfair but can also hinder its evolution. If we continue applying the trademark test in domain names and allow the trademark culture to penetrate domain name registrations, then any expansion of the Root will highly depend on trademark interests. This way, we limit the Internet’s potential only to its economic interests, dismissing any of its other virtues. We do not provide domain name registrants with any

68 The current state of domain name regulation defence mechanism, thus, subjecting them to an unparallelled and prejudiced situation, which views them as second class citizens. What should, therefore, ‘domain name use’ exemplify? Fundamentally, the test should focus on what the ‘domain name use’ signifies and the real implications of allowing it or restricting it. To this end, the test would examine whether parody sites distress freedom of speech and not trademark law (as it currently happens); whether information-based domain names comply with concerns over copyright infringement; whether non-commercial use respects human rights and basic civil liberties. ‘Domain name use’ means our ability to reflect on the way the domain name – and the registrant through it – behaves in cyberspace; whether its use genuinely upsets legitimate balances that exist offline or disrupts commercial and legal standards. The social and economic value of domain names needs to be protected, but, at the same time, we need to protect the Internet itself as a social and economic space. The ‘domain name use’ test offers a good starting point. Only courts are able to determine the contribution of any given domain name according to criteria of fairness. On the Internet, however, protecting trademarks does not always constitute a legitimate course of action. Why are we reluctant to assign proprietary interests in domain names? Arguably, this will give more power to domain name registrants by acknowledging their claims as legitimate. And, why is this so detrimental? It is really not. It should be anticipated that, under the ‘domain name use’ test, much of the current unfairness will not take place. What we will be protecting through the propertisation of domain names is their characteristics, attributes and utilities. What is without ‘social networking’ attached to its name? For domain names, legal determinations can only be fair, if they take into account the polymeric nature of domain names: the name, its connotation, the way it is exemplified, its social utility – everything. This rationale offers more logic to the illogical predisposition on trademark law. Any further attempt to apply indiscriminately trademark law on the DNS, will completely de-value domain names. The current test juxtaposes all domain names with trademark infringement provisions. This is a mistake. A domain name constitutes intangible, ‘e-property’ and the fact that trademark owners seek – through ICANN – to define its parameters according to trademark principles is problematic. We should really dismiss this form of ‘policy regulation’105 and, instead, turn our attention to the ‘rule of law regulation’. Although a matter of degree and not of kind, the differences and the effects of these two types of regulation are substantial. ‘Rule of law regulation’ follows a more normative, qualitative process, respecting legal standards and is formalised through courts; it is more legitimate than the less fixed ‘policy regulation’. Only through the rule of law, will we be able to structure a balanced legal order. As we have discussed, domain names, presently, signify so much more than a simple name: they embody characteristics of innovation, creativity, imagination and originality, which, combined with the name itself, create a

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nexus of inextricable values worthy of property protection. Of course, not all domain names correspond to these attributes, the same way not all inventions are patentable or all marks trademarkable. Domain names are not exclusive entities of trademark owners and the architects of the DNS did not create a space for trademark owners. The question, therefore, is how can we distance domain names from the catalytic influence of trademark law? What we need to realise is that the idea of a domain name being answerable to the value of a trademark constitutes a norm, rooted deeply in more than ten years of international domain name policy making and trademark lobbying. The UDRP has provided trademark owners with unprecedented opportunities of international protection and expansion and, thus, modifying this perception is not an easy task. It is really the job of the judiciary organs of the national states to intervene and apply the rule of law. So far, the penetration of the UDRP as the authority for domain name disputes is evident in national legislative efforts. After ten years of supporting both the smooth function of the Internet and – more importantly – providing for the informational and commercial infrastructure of the conventional human interaction, domain names deserve their own legal attention. The following part will discuss why the UDRP, in the international context, and ACPA, as a national statute, are – under their current operational framework – unreliable and unsuitable to undertake this task.

Part II

Institutional problem

5

History of domain name institutionalisation

The institutionalisation of domain name disputes has always struggled to strike a balance between its legitimisation and its political appropriation.1 Initial attempts demonstrate the efforts of numerous Internet entities to create a mechanism circumscribed to provide trademark owners with the necessary procedural tools to fight abusive domain name registrations, which threatened to invade their spaces of dominium and imperium. The privatisation of the naming and addressing system by the Clinton Administration produced opportunities for private bodies – like ICANN – to proceed to policy formulations that manifest the political influence these bodies possess on issues relating to the DNS. Through a series of Memoranda of Understanding (MoU), ICANN, alongside the trademark community, demonstrated the detrimental effects that domain names have on trademarks and modelled online trademark disputes around a hybrid and a-national administrative mechanism. In 1997, approximately a year before the promulgation of the UDRP, the International Trademark Association (INTA) had contemplated the legal ramifications that domain names would have upon trademarks in a well articulated ‘White Paper’, which would ultimately provide the legal basis and technical platform for the UDRP’s design.2 INTA’s White Paper recognised consumer protection and the protection of the goodwill as paramount trademark principles that were not to be sacrificed by the introduction of the DNS. To this end, the White Paper criticised heavily the archaic dispute resolution mechanism of NSI as a system where the same rules [applied] whether the domain name holder [was] merely an extortionist or [had] a legitimate business interest. This problem [typified] the difficulty inherent in trying to establish a dispute policy under these circumstances where there may be many equities to consider.3

74 The current state of domain name regulation It is also interesting to observe the limitations that the INTA White Paper sought to place upon any potential dispute resolution mechanism, by recognising that the Internet was not created solely for commercial enterprise and that domain names should not be the exclusive province of trademark owners.4 It is important to understand that INTA’s vision concerning the intersection between trademarks and domain names extended beyond the idea of the Internet as a commercial space. INTA’s White Paper encouraged commercial behaviour on the Internet, but at the same time it did recognise that it is not necessary to have a second level domain name to do business effectively or successfully on the Internet, and thus while it may be preferable to acquire the second level domain name of one’s choice, it is not an absolute right and may have to bend to accommodate competing interests.5 Essentially, the INTA White Paper is an important document because it encouraged a sui generis approach, wilfully leaving any substantive issues concerning trademark law to the jurisdiction of the courts. It further articulated that trademark law principles are an effective vehicle for the regulation of domain name conflicts, but there are also limitations as to the rights a trademark owner should be entitled online. Looking back, INTA’s proposal is certainly a prophetic document. Even before there was an issue of over-expansion of trademark rights on the Internet, it sought to identify and balance the dialectic between trademarks and domain names. It further established that protection of trademarks on the Internet should be pragmatic and proportional to the existing rights. That this suggestion originated from the INTA is not only relevant but also meaningful, due to INTA’s role in the protection and evolution of trademarks. After INTA’s White Paper and NSI’s ineffective mechanism, the succeeding dispute resolution mechanism was legitimised under the Generic Top Level Domain Name Memorandum of Understanding (gTLD-MoU),6 which was initiated by the Internet Ad Hoc Committee (IAHC),7 an entity created by the combining efforts of the Internet Assigned Names Authority (IANA) and the Internet Society.8 The gTLD-MoU’s conceptual background focused on a self-regulatory and market-driven mechanism enforced by administrative challenge panels (ACP) and recommended the expansion of the ‘A’ Root to include more gTLDs that were to be administered by registrars through a collective registration policy. ACPs would be responsible for the operation and consistency of the online dispute resolution mechanism and they would be situated within the World Intellectual Property Organisation’s (WIPO) Arbitration and Mediation Centre. The Policy was meant to cover only disputes concerning registration under the gTLD space and established that

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the panels would receive complaints only by owners with valid trademark rights against SLDs.9 The gTLD-MoU would never attract the required governmental support and would be criticised for provoking an institution that was disproportionally promoting trademark interests.10 At the same time, some voices would express concern over the political power the MoU would provide to certain bodies and feared that such policy would tighten control of the Internet by IANA and the engineering community, thereby leaving a group of academics in charge of an increasingly commercial Internet.11 The problem with the MoU was its lack of legitimacy, coupled with IAHC’s questionable authority to proceed to policy formulations. The memorandum envisaged the International Telecommunications Union (ITU) to act as the storehouse of compliance for the signatory states, an act, which indicates a certain degree of willingness to furnish the memorandum with public international law characteristics. A treaty of course would be illegitimate given the non-governmental nature of many of the signatory members and IAHC’s lack of authority. This view would later be reflected by the MoU’s Revised Guidelines,12 which, in the absence of other means, sought to legitimise the online dispute mechanism by inserting it as a clause in the contractual relationship between domain name registrants and registrars. This way, the mechanism would be part of a wide range of contractual rules and could, therefore, be substantiated as a legitimate contractual obligation. The proposal conceived of a mechanism that would be hybrid in nature, would not replace traditional means of adjudication and would see administrative panels adjudicating disputes under certain objective standards and criteria. Dinwoodie and Helfer argue that the ACP proposal would ultimately create an unorthodox system that ‘blended public and private elements and that was not wholly ministerial, judicial, or arbitral in nature’.13 Although the proposal was never implemented, many of its characteristics would be replicated in the subsequent policy attempt– the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP is a rule-based system created by ICANN. There are two issues here noteworthy of attention: the first concerns the role of rules within the current domain name dispute resolution mechanism and, the second, the role of ICANN within this social structure. Schauer14 argues that when it comes to decision-making institutions, rules can acquire two forms: jurisdictional rules, associated with substantive outcomes and, pure jurisdictional rules. In the former category, decision-makers afford a restricted amount of discretionary power and their focus is on producing decisions that are substantially fair and within their jurisdictional remit. In the latter case, the power of the adjudicator may not be constrained, but the decision-maker is required to decide cases applying additional social and moral criteria. Both of these situations are acceptable as long as the decision-making mechanism is a

76 The current state of domain name regulation product of an institution, which has the authority to design and structure them accordingly. The determination of whether an institution has the authority to create rules – general or particular – and impose them upon societal structures is crucial. As long as the institution is in the position to produce rules, i.e. has the authority to do so, the rules of the system should be structured according to the institution’s needs. Does ICANN have the authority to create such rules? By sanctioning the creation of the UDRP, has ICANN acted within its permissible scope? I will now turn to address these questions before proceeding to discuss the history, evolution, character and rules of the UDRP. 5.1 ICANN’s authority to create the UDRP At the heart of the problems surrounding the regulation of domain names lies an institutionally disturbed governance structure that has failed to establish an equally balanced procedure for the resolution of the disputes between the offline (trademarks) and online (domain name) identifiers. The Internet Corporation for Assigned Names and Numbers (ICANN) is currently celebrating more than a decade of exercising governance on the Internet. Focusing on the domain name system (DNS) and Root server performance, ICANN is also accountable for the UDRP, which was promulgated in response to the U.S. White Paper,15 which warranted the privatisation of the Internet and its independence from its U.S.-centric administration. Since its genesis, ICANN’s UDRP has been characterised by its innovative character to adjudicate the rights of trademark owners and domain name holders and its instrumental nature in shaping domain name dispute mechanisms at a national level.16 At the same time, it has been severely criticised for failing to produce a non-toxic environment for domain names and their holders and has been accused for favouring trademark owners.17 Either way, the fact is that the UDRP has been institutionalised as a mandatory mechanism that performs quasi-judicial functions, whilst its decisions impinge upon the rights of trademark and domain name owners. Decisions of such nature should derive from legitimate bodies – the ones that have the authority to produce them. The institutional illegitimacy of the UDRP though is a direct effect of the illegitimacy of the organisation that produced it in the first place. The premise of the UDRP manifests consistent efforts of the trademark community to lay down the Internet-generated issue of cybersquatting and its subsequent ramifications. ICANN responded to this appeal and legitimised a process to devise a policy that would be applied internationally and would be imposed as a non-negotiable clause within the domain name registration agreement. However, it is the role of ICANN authorising, creating and, finally, ratifying the UDRP that vetoes the mechanism from acquiring the legitimacy and authority to render decisions that effectively determine the allocation of domain name rights.

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To this end, the argument concerning the illegitimacy of ICANN to create the UDRP relates to ICANN’s lack of authority to engage in policy-making. This criticism has been a constant companion during ICANN’s operational years, but has not managed to slow down the policy activities of ICANN. On the contrary and with the support of the trademark community, it has allowed ICANN to perform quasi-legislative functions, based on a canyon of false assumptions. ICANN is a lucid example of how power can be delegated into private bodies and raises concerns about the legitimacy these models can acquire. ICANN’s legal justification is traced in a privatisation process and a government that delegated authority over a small, albeit critical, resource of the Internet. Froomkin argues that ICANN has acquired its status through a web of illegal delegation of governmental power.18 Mueller’s ‘Ruling the Root’ also constitutes an account of ICANN’s power over the DNS. Contemplating on their arguments, one comes to the conclusion that the status of ICANN will inevitably affect the policies it submits as well as their methodologies. The creation of ICANN as a non-profit entity based on the United States and administered by Californian law was part of a plan by the Clinton Administration to privatise one of the Internet’s critical resources. The new corporation would be devoted to the collective interests of the Internet with a board to be composed of representatives of stakeholders on the net and charged to authenticate the policy decisions that the Internet Assigned Names Authority (IANA) was originally supposed to make. In the meantime, the new corporation would have to adhere to four principles, ensuring stability, competition, private bottom-up co-ordination and representation. And, in exchange, the U.S. government would surrender the administration of the DNS and entrust its transition to ICANN. The U.S. Department of Commerce (DoC) and the White Paper19 refer to ICANN as the outcome of a privatisation policy. Mueller asserts that in reality what the DoC has delegated into ICANN is not ownership of a service or an asset but the authority to develop policies and impose rules concerning domain name registration practices.20 This goes contrary to the hypothesis that ICANN was originally created as a technical entity responsible for the day-today management of the DNS. In reality ICANN received the consensus of the international community on the basis of performing technical management of the DNS. In line with this, ICANN’s initial Board stressed that the corporation would be a ‘technical co-ordinator’ and not a model of ‘Internet Governance’.21 Equally, ICANN has asserted that it ‘has no statutory or regulatory authority of any kind’.22 Finally, Esther Dyson, first chairwoman of the ICANN Board, clearly stated: The White Paper articulates no Internet governance role for ICANN, and the Initial Board shares that (negative) view. Therefore, ICANN does not ‘aspire to address’ any Internet Governance issues; in effect, it governs the plumbing, not the people. It has a very limited mandate to administer

78 The current state of domain name regulation certain (largely technical) aspects of the Internet infrastructure in general and the Domain Name System in particular.23 ICANN, therefore, is premised upon the principle of ensuring the proper management of the technical infrastructure of the Internet by taking a standard-setting view. Froomkin explains that this view justifies the ‘delegation of near-regulatory power’ to entities that are private in nature.24 This ‘near-regulatory power’ is exactly what has subjected ICANN to scrutiny over its engagement in policy-making. Although ICANN claims that it is not engaged in actions that have regulatory or governmental implications,25 some of the corporation’s actions demonstrate policy-making characteristics. The addition of new gTLDs, the systematic guidance given to registrars, the enforcement of a dispute resolution system, the assignment of a dispute resolution centres and the formalisation of substantive and procedural rules for the disputes are all examples that manifest that ICANN’s role goes beyond technical co-ordination and administration of some aspects of the Internet.26 Generally, the process leading up to the UDRP and the UDRP itself reveal two things: first, ICANN’s involvement was substantial and, second, the Policy is undoubtedly an action of policy. It equates to the role of the legislature, since any policy aiming at adjudicating conflicting rights constitutes a task of an officially elected or otherwise selected body of people vested with the authority to create laws. It is certainly not part of the mandate of a private body, prone to commercial interests and tasked with technical authority. Froomkin argues that the flaws of the UDRP and its illegitimate status should be traced to the bodies responsible for its substantive and procedural rules, which were predominantly influenced by trademark constituencies.27 WIPO, for example, is an organisation that seeks to promote intellectual property rights, whilst, on the other hand, ICANN’s involvement was compromised by groups in support of trademarks interests, which saw an opportunity to secure and expand their rights on the Internet. As Froomkin figuratively states: It remains the case that if you put a committee of foxes in charge of a chicken coop, you tend to get a lot of happy foxes and dead chicken.28 Similarly, various voices have expressed concern over ICANN’s venture in the policy-making field, and have, in particular, questioned the legitimacy of the UDRP as a mandatory administrative procedure. Specifically, during the period of the ‘Second Staff Report on Implementation Documents for the Uniform Domain Name Dispute Resolution Policy’, Mike Roberts asserted that ICANN has ‘neither the authority nor the resources’ to proceed to the creation of a dispute resolution mechanism.29 William Lovell, in a letter to Milton Mueller, stated that before evaluating or identifying any flaws in the

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Policy we need to question ‘the authority and jurisdiction of the UDRP process in the first place’ to reach decisions that have an impact on the rights of trademarks owners and domain name holders.30 All of the above have contributed significantly to the expansion of trademark law while neglecting domain names. In effect, trademarks have found through domain names a way to enter international markets and approach consumers outside their national markets. The UDRP has vindicated trademark owners and has hitherto dominated the market of out-of-court adjudication. 5.2 The road to the UDRP In spite of the gTLD-MoU’s illegitimate character, its recommendation for the creation of administrative panels would ultimately be used as the procedural basis of the UDRP – ICANN’s answer to the failed ACP proposal. The UDRP is the result of the co-operation between the U.S. Department of Commerce (U.S. DoC) and WIPO to devise a mechanism for the efficient resolution of domain name disputes. In two fundamental documents – the February 1998 Green Paper31 and the June 1998 White Paper32 – the U.S. government announced its plan to delegate to the private sector the administration and maintenance of the naming and addressing system. Both documents reflected governance decisions and the choices made by the U.S. government were part of a much larger institutionalisation process that was promoting a model structured around private decision-making ideals. To this end, both papers sought to address the experiences of the previously unsuccessful NSI policy and ACP proposal by requesting comments on the formation of an online, fast and inexpensive mechanism under the aegis of WIPO. These comments would later be presented before ICANN’s Board of Directors and would provide guidance on the following contestable issues: (1) the structure of an online dispute resolution mechanism; (2) the steps taken regarding the protection of famous and well known marks; and (3) a prognosis as to whether the addition of new gTLDs on the Root would disturb the balances of the current intellectual property regime.33 Under a governance arrangement, WIPO’s involvement signalled the first attempt towards a multistakeholder model, where governmental institutions work alongside private bodies to formulate policy directions. WIPO, in its capacity as a United Nations body for ‘promoting the protection of intellectual property throughout the world’34 was the only legitimate authority to conduct a study that involved trademark rights. Unlike other traditional international law instruments led by WIPO, the challenge, in this case, was to submit a proposal that would reflect the private nature of the DNS, whilst respecting the proprietary interests of trademark owners. To this end, WIPO initiated a process of open consultations and public comments, seeking, at the same time, the contribution of governments, intergovernmental organisations, private corporations, professional bodies and end users.35 On April 30, 1999, and

80 The current state of domain name regulation nine months after the U.S. government requested its input, WIPO submitted its final report to the ICANN Board.36 Although WIPO’s involvement during the drafting process clothed the new policy with a certain degree of legitimacy, there are still some issues that deserve close consideration. Unlike its historical practices, WIPO acted on the request of a single government to deliberate on issues that would impact on a multitude of jurisdictions. Accordingly, WIPO’s recommendations would not be reviewed by the U.S. government, but by a private entity that held the ultimate authority to accept or reject WIPO’s recommendations. This issue is central in understanding that any of WIPO’s authority was subjected to ICANN’s Board and, quite contrary to multistakeholder participatory models, the private sector was pioneering a process that fell outside its legitimate scope. The time frame of the proposal was brief and much of its methodology was based on input from the private sector. Governments were noticeably absent and unrepresented, an omission, which has questioned the democratic ethos of the whole process. The main problem with the lack of governmental participation in the WIPO process was that, ultimately, it was users who were unrepresented, something, which is noticeable in the wording of the documents. (Ironically, this mistake would be repeated ten years later during the drafting process of the IRT recommendation.) Representative democracies assign governments to protect and respect the rights and values of their citizens, but the way WIPO conducted this process negated such representation. In the meantime, practical difficulties had a negative impact on participation, as the consultative process was ‘not well understood by the public or even key participants’.37 Froomkin, a WIPO connoisseur and a key participant in the WIPO exercise, asserts that the process suffered from a number of weaknesses ranging from its short deadlines to the pressures exercised by trademark constituencies as well as WIPO’s taxing and complex documents.38 Despite the controversial nature of the proceedings, WIPO managed to produce two documents – first, its Interim and, then, its Final Report – both of which echoed the hybrid nature of the new dispute resolution model and indicated the efforts of the UN body to limit the range of disputes, whilst restricting the discretional limits of the assigned panels. WIPO resuscitated ACP’s rationale that the mechanism should be introduced to the parties as a non-negotiable clause within their registration agreement and, accordingly, modified the system to make full use of the advantages of arbitration.39 The Interim Report did not stay true to its mandate and contrary to the White Paper, which favoured a restrictive approach towards cases of abusive domain name registrations,40 WIPO asserted that the dispute resolution mechanism should cover ‘any [emphasis added] disputes concerning the alleged violation of intellectual property rights through a domain name registration’.41 Conflict of laws and jurisdictional problems were circumvented by allowing panels to employ ‘the laws that, in light of all the circumstances of the case, are applicable’ as well as ‘a set of [seven] guiding principles’.42

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For WIPO these principles ‘represented a distillation of the dominant approaches that have been adopted by national courts’43 but did not constitute an autonomous body of binding legal rules in any jurisdiction. WIPO’s recommendation for engaging panels in a system that was much like traditional litigation was conscious to the extent that the Interim Report suggested that all panel decisions should be made available to the public domain.44 With such a procedural device in place, decisions under the new system would erupt a body of persuasive precedents to enhance the predictability of the dispute-resolution system and contribute to the development of a coherent framework for domain names.45 Moreover, such decision would also provide the necessary incentives for the promotion of the new system as an attractive alternative compared to the existing traditional venues of court-based adjudication. According to the Interim Report, panel decisions would be quasi-binding, allowing the parties to proceed to court litigation at any time. This inevitable legal formality threatened the success of the system, which WIPO sought to counterbalance through a model of adjudication that would ensure predictability, low costs and speed during the adjudication phase. Establishing rules that would not be subjected to jurisdictional restrictions faced under traditional means of adjudication would enhance trust in the ‘credibility and consistency of decisions’46 and ensure the success of the system. The Interim Report was welcomed with resistance and suspicion by registries, domain name holders and the Internet’s technical community, emphatically expressing concerns over the way the proposal was disproportionally favouring trademark rights and was expanding the conceptual background of trademark law beyond the established national and international trademark law agreements.47 WIPO’s response focused on addressing these concerns by limiting the applicability of the mechanism to ‘deliberate, bad faith and abusive domain name registrations or cybersquatting’ and placed a jurisdictional bar, instructing panels to reject ‘disputes between parties with competing rights acting in good faith’.48 Moreover, it further restricted the scope of the disputes only to trademark claims dismissing this way the use of the policy for other intellectual property-related issues.49 WIPO’s Final Report suggested the existence of a default three-member panel, the composition of which would depend on the selected providers rather than the parties.50 To ensure its appeal to the parties, WIPO suggested a speedy process of forty-five days51 without the option of an internal appeals process and with limited internal and external checking and review mechanisms.52 Despite its purely advisory nature, WIPO’s Final Report would ultimately become the foundational document behind the UDRP. For this reason, some observers voiced concerns over WIPO’s capacity to remain neutral during the drafting process, especially when there is a common understanding concerning

82 The current state of domain name regulation the organisation’s remit to protect intellectual property rights. It constitutes an additional flaw in a process that revitalised the illegitimate premise of the former ACP proposal and allowed WIPO to detour from procedures consistent with its intergovernmental nature. Irrespective of these substantial flaws however, WIPO’s authority was restricted by the White Paper and, thus, any political influence that WIPO could exercise over DNS policy was subjected to the U.S. government. The same cannot be argued for ICANN, which, as discussed, held the political power over the administration of the DNS and, thus, the ultimate authority to amend WIPO’s proposal. 5.3 ICANN launches the UDRP WIPO’s proposal was never meant to be binding upon ICANN, which retained the ultimate authority for the UDRP’s implementation. The recommendations were supposed to have persuasive power to the extent that ICANN – for legitimacy purposes – had to accept their conceptual background as the basis for the new dispute resolution mechanism. However, ICANN’s complicity would ultimately undermine the Policy’s legitimacy and would place the proposed mechanism under political and judicial scrutiny. At the time though, ICANN’s authority as the ‘supreme’ manager of the DNS would allow ICANN to design and structure the UDRP in a way that it would ensure the political support of the trademark community. In this environment of politics and lobbying, ICANN’s Interim Board referred WIPO’s Final Report to the ICANN Domain Name Supporting Organisation (DNSO) – currently operating as Generic Name Supporting Organisation (GNSO)53 – one of the three pillars of ICANN’s organisational structure responsible for the recommendation of policies that affect administration in the generic top-level domain name space. ICANN sought to complete the whole processes within an expedited timetable. Working under a strict three-month deadline,54 the DNSO’s working group submitted a consensus-based approach to the ICANN Board, which also received comments from a group of accredited registries and registrars.55 ICANN’s Board accepted the DNSO amendments and, in pure multistakeholder fashion, formed a working group to undertake the Policy’s implementation methodology, taking into consideration the suggestions submitted by registries and registrars and the newly formed Non-commercial Domain Name Holders Constituency (NCDNHC). There was intensive pressure for the Policy to incorporate some small amount of registrants’ rights, which ultimately resulted in Section 4(c) – Rights and Legitimate Interests of Registrants – of the UDRP. After allowing a short period for public comment, the ICANN Board approved, on October 24, 1999,56 the final version of the submitted documents and formalised the Uniform Domain Name Dispute Resolution Policy as an administrative procedure for the resolution of conflicts relating to trademarks and domain names.57 The ICANN Board used the recommendations of registrars and WIPO as a guide but, compared to the original WIPO Final Report, it narrowed

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substantially the scope of the Policy. Accordingly, the DNSO was instructed to refine three main features of the Policy, which concerned the determination of the circumstances where a registrant would have legitimate rights on a domain name, the need for a right to appeal available to both parties and a risk assessment on the effects of ‘reverse domain name hi-jacking’.58 The DNSO addressed the Board’s specifications in a revised draft of the Policy and Rules by incorporating within its substantive text the circumstances under which a registrant will be considered as a legitimate rights holder, by allowing parties to proceed to court litigation and by identifying ‘reverse domain name hi-jacking’ as a threat.59 By addressing these issues, ICANN was promoting a balanced, non-binding mechanism, aiming at receiving the consensus of the international community. Who could anticipate that, in practice, the UDRP would hardly make use of any of these registrant defences. In typical ICANN fashion, the public comment period for this set of revisions was short and idle of substance, since ICANN, while acknowledging the value of the comments received, dismissed them, concluding that the Policy was ‘balanced, workable and fair’ in its suggested form.60 The Second Staff Report mirrored ICANN’s intention to limit the application of the UDRP to cases involving ‘abusive registrations’ made with bad-faith intent to profit commercially from others’ trademarks (e.g. cybersquatting and cyberpiracy).61 According to the Report, the fact that the policy’s administrative dispute-resolution procedure does not extent to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark) is a feature of the Policy, not a flaw.62 Quintessentially, paragraph 463 constitutes the core of the UDRP’s substantive rules, which, despite its plain wording, constitutes the source of much of the UDRP’s controversy. In compliance with the WIPO Final Report, paragraph 4(a)64 enumerates the circumstances that legitimise the initiation of a complaint, while its subsequent sections (b) and (c) list examples of legitimate use65 and bad faith conduit66 respectively. According to Dinwoodie and Helfer, the Policy was formalised under a ministerial model, which limited the cases only to cybersquatting and, silently, acknowledged that more complex legal issues would have to find resolution before national courts.67 In essence, what ICANN attempted to achieve through this ministerial design, was to address some of the concerns over the authority of the UDRP to adjudicate trademark rights. At the same time, seeking to satisfy the fears of trademark owners, ICANN stated that the examples of paragraph 4(b) are ‘not intended to be exhaustive’,68 providing this way judicial discretionary powers to its panels. These panels, in turn, which were to be composed by

84 The current state of domain name regulation one or three members, would be selected by the provider as chosen by the complaining party.69 Finally and using arbitral archetypes, the Policy afforded the option of court litigation to a court of ‘mutual jurisdiction’.70 Similar to the Anticybersquatting Consumer Protection Act (ACPA) in the United States, the UDRP recognises as mutual jurisdiction the place of the registrar or that of the domain name holder.71 Notwithstanding questions of legitimacy and in the midst of criticism against ICANN’s authority over the implementation of the Policy, the UDRP was finally adopted with WIPO assigned as the first dispute resolution provider. Some other providers followed (some of which are not operable today) and, on January 1, 2000, a one-member panel decided the first domain name dispute. The UDRP constitutes a turning point in the philosophy of international dispute settlement practices and should not be dismissed easily. It manifests an attempt to reconcile the views of significantly divergent stakeholders and demonstrates the effects associated with ICANN’s policy-making ventures. The Policy would have been worthy of praise, if only it had managed to maintain its genuine, restricted character to cases that concerned abusive domain name registrations. This way the UDRP would have provided an unbiased solution to illegal commercial activities without upsetting trademark law and without tarnishing the ethos of domain names. Despite the severe criticism against ICANN’s trademark policies, the UDRP continues its construction of case law undisturbed. The evolution of the UDRP should not be considered a success story. Although we have to appreciate it as novel and genuinely intelligent, we also have to realise that the UDRP is intentionally designed to be weak and trademark-oriented. It is not accidental that its structure allows the judicial superiority of courts, but it does so in a way that disassociates the two systems completely. The success of a system should depend upon its ability to deliver justice, rather than in factors associated with how fast or inexpensive it is; these are important issues, but they cannot determine legal superiority. The unfairness of the UDRP should not be taken lightly. Ten years after the UDRP, similar problems resurfaced with the IRT recommendation, only to illustrate the great need to go back and reflect on the failure of the original Policy to relate to the dispute resolution archetypes, like arbitration or lex mercatoria. A close look at the UDRP’s operation manifests that the absence of internal and external checks has cost much of the UDRP’s real success. The following explore the compatibility of the UDRP with the lex mercatoria and arbitral models.

6

‘Lex domainia’ The new lex mercatoria?

International dispute resolution is not a static phenomenon and there are no default models of out-of-court adjudication; rather, alternative dispute resolution mechanisms mutate according to trading practices and adjust to the transitional nature of international trade. They all share, nevertheless, the common feature of seeking to apply justice and, hence, they are – to a certain extent – resilient towards economic interests and market demands. It is, indeed, the employment of justice as a minimum standard of adjudication that has guaranteed their deference and has secured their legitimisation. Lex mercatoria is one such system demonstrating how commonsensical grounds should exist in order to resolve disputes that spur out of international trade. In the Middle Ages, when international trade was starting to take shape, itinerant merchants, engaged in trading activities outside the confines of their territories, sought to establish a system of adjudication, detached from local sovereign law and able to govern the practices and norms that were to be generated by the exchange of goods and services. Lex mercatoria (law of the merchant) originated from the need to structure a system that would be efficient in adjudicating the claims of merchants, but, at the same time, would be able to produce decisions that would carry value equivalent to the decisions reached through traditional means. The system of lex mercatoria designed rules based on good faith and justice that were meant to govern the disputes between merchants at trade fairs in countries with substantially divergent local, feudal, royal and ecclesiastical laws. Generally speaking, merchant customs and legal claims, extracted from extraterritorial trading practices, were neither considered as part of the law of any country nor did they pay attention to the locus of the activity.1 The need for dispute resolution, therefore, that gave meaning to lex mercatoria can be analogous to the need to establish dispute resolution mechanisms on the Internet. Since the commercialisation of the Internet and the new trading practices it introduced, a lex mercatoria-like mechanism seemed to be an appealing idea and a vital tool for the reliability of the Internet trade culture. As the Internet crosses national jurisdictional borders and expands commercial ventures, governmental and national laws cannot adequately resolve potential commercial disputes, like the ones concerning trademark and domain names.2

86 The current state of domain name regulation Is it possible, therefore, that the UDRP and the ordre publique transnational of international economic and trade law – lex mercatoria – to share a common conceptual background to the extent that it would legitimise ICANN’s Policy?3 Both systems are hybrid and rule-based, each with their own portions of autonomous law and normative rules.4 Notwithstanding their level of autonomy, we should bear in mind that every system seeking to apply legal rules cannot be entirely self-ruling and is influenced by a variety of sociological, political and cultural formulations – no less systems like lex mercatoria or the UDRP, which were the results of these socio-political and cultural experiences. Historically, the lex mercatoria model has been associated with extensive debates concerning its ability to proceed to legal, qualitative arguments, but has, nonetheless, produced a substantial and noteworthy body of case law, which has been rationalised under a strict application of justice.5 Not quite the same takes place in the case of the UDRP, where, although the Policy has been subjected to an extensive political debate and has produced a substantial amount of case law, the application of justice in its substantive and procedural rules still remains questionable. The economic success of lex mercatoria has been worthy in setting an example of how autonomous legal orders should be governed and succeeded in putting an end to questions concerning its a-national character.6 Can the definitional characteristics of lex mercatoria be personified in the UDRP? Has the UDRP elements of a ‘third-level autonomous legal system beyond municipal and public international law with a claim to global validity’, which is ‘created and developed by the law-making forces of an emerging global civil society’, is ‘founded on general principles of law as well as social usages’ and is ‘administered by private dispute resolution service providers and codified – if at all – by private formulating agencies’?7 Despite the management of the UDRP by ICANN and its private dispute resolution providers, the UDRP still fails to exemplify features of a lex mercatoria model. The problem focuses on the participation of civil society and non-commercial individual and groups, which, although ICANN recognises them in its governance structure, they were almost excluded during the UDRP’s drafting process. Consequently, the architects of the UDRP could not claim their credentials within the law-making forces of civil society. The degree of trademark penetration was high and the input of individual users was weak.8 In spite of the absence of civil society representatives, the UDRP and lex mercatoria are similar to the extent that they both constitute consensual, international systems of adjudication. In the UDRP, ICANN panels apply the rules of the Policy lege artis, which is equivalent with the process used in economic conflict resolution where ‘an elaborated process of norms application gives final judgment to the legality/illegality of the desired conduct’.9 Each system constitutes a non-static model that does not recognise sovereign restrictions. The conceptual background of lex mercatoria consists of trading

’Lex domainia’: the new lex mercatoria? 87 practices, established norms, contractual agreements and a substantial body of case law. Similarly, the UDRP is based upon the infringing acts of domain name holders and is governed by the principles of the Policy, the ‘Rules for the Uniform Domain Name Dispute Resolution Policy’ combined with the ‘Supplemental Rules’ of the accredited by ICANN service providers as well as a sizable body of case law.10 Structurally, the systems resemble more to common rather civil law rationales, while their evolution relies on them producing a significant amount of case law, which matures through the use of precedent. In neither model do we find a hierarchy of binding precedent, but both models demonstrate a certain degree of dependence on previous decisions, much like the commonlaw system philosophy.11 In the context of international law this might become problematic in as much as these rules are products of extra-legal influences and, thus, if they manage to portray legal authority, they prevail over other international or national law instruments. Despite this ascertainable homogeneity, the two systems are also exceptionally distinct. Lex mercatoria’s esoteric duty to apply justice finds its justification on the face of confidentiality and the utter respect of the disputants. On the contrary, the UDRP does not exemplify a similar amount of respect towards the parties or the confidentiality of the process. Whereas lex mercatoria creates an environment of decisional harmony, the UDRP’s case law constitutes part of an increasing body of precedent, which is inconsistent and arbitrary.12 This is problematic, since it conspires towards the creation of a case law structure, which lacks the necessary legal authority to adjudicate the conflicting rights of the parties. Surprisingly enough, however, the legal foundations of the UDRP appear to be stronger compared with the ones of lex mercatoria. The latter has often been criticised for its wide, vague and inexplicit rules and how they fail to capture the substance of the disputes and provide apposite relief mechanisms. On the other hand, and irrespective of current practices, the UDRP’s jurisdiction is very clear and depends upon a precise set of rules and principles, which are applicable to disputes of a specific subject matter. This precision in content denotes a certain degree of legal quality and would have been an adequate criterion for the UDRP’s legitimacy, should ICANN, WIPO and later its enforcers have submitted to its restricted framework.13 Unfortunately, this did not take place and one of the few values of the UDRP has turned out to become one of its nemeses. Going back to their nature, both systems are vulnerable when it comes to their political legitimacy as autonomous international systems of adjudication.14 In reality, none has acquired its legitimacy through the traditional and long-standing processes of democratic will creation, although the same can be claimed for many systems that operate under national law. When it comes to the lex mercatoria mechanism, the New York Convention15 legitimised its conceptual background, which paved the way for the development of arbitration as the next logical step in out-of-court

88 The current state of domain name regulation adjudication. By contrast, the UDRP is part of a series of contractual relationships between ICANN and the U.S. DoC, ICANN and its registries and registrars and its political legitimacy has been acquired through a process of dubious pedigree. Based on its history and operation, the UDRP fails to legitimise its autonomy over domain name disputes. In a climate of antagonistic interests, one of the essential features of any dispute resolution system, which wishes to ensure legal consistency and procedural cohesion, should be identified in relation to the sanctions it applies and the carrying though enforcement and implementation of its decisions. Taking its lead from authors as diverse as Austin, traditional legal theory measures legal character against the imposition of sanctions.16 At the level of autonomous, self-governed dispute resolution mechanisms, the informal sanctions applied by the market are not sufficient and recognition must be granted to decisions by national courts in order to ensure implementation through national jurisdictions. Therefore, the core of the mechanism’s legal quality might be challenged, but – at the same time – its integrity is preserved by the intervention of the state under specific circumstances. The situation is completely different when it comes to Internet enforcement under the UDRP. The Policy offers a very short window for the losing party to initiate court litigation and, as soon as it lapses, ICANN becomes the enforcer of the decision by altering the information on the ‘A’ Root server. 17 To this end, the UDRP and lex mercatoria are distinctly dissimilar, since the latter has managed, through its body of case law, to produce some informal norms – stricto sensu. These ensured the preservation of consistency and fairness within the system and established that certain patterns of behaviour ought to be followed in the interest of both the system and the community. Ensuring that communal interests are maintained and protected is what distinguishes a system as fair and just.18 As an adversary effect, in the case of the UDRP, justice is noticeably absent and after ten years of dispute settlement, the system has not been capable to produce netiquettes, as codes of conduct for its participants. It is unacceptable that after such a considerable body of case law, the UDRP does not have in place rules concerning issues of ‘trademark lawyer abuse’ or ‘serial cybersquatting’. We should, therefore, abandon the idea that the UDRP is an extra-legal system, self-sustained and just, like lex mercatoria. The same degree of difficulty is demonstrated in the legal comparison between the UDRP and arbitration.

7

The UDRP and arbitration

It is a common mistake to refer to the UDRP as arbitration. It is also a common mistake to believe that UDRP decisions carry the same weight as the arbitral ones. This mistake is partly because much of both ACP’s and the UDRP’s procedural context was based upon an arbitral structure of decision-making. The binding obligations, for instance, arising out of the contractual relationship between registrars and registrants, the use of specialist trademark agents as decision-makers, the availability of different dispute resolution centres to hear domain name disputes and the inexpensive and fast-paced nature of the mechanism, all mirror characteristics identified in the arbitral genealogy. In relation, however, to issues of decision enforcement, the parameters and control of the panels’ discretionary powers, the role of the courts and the Policy’s substantive rules, the UDRP fails to live up to its arbitral antecedents. Such a realisation is crucial since much of the Policy’s procedural legitimacy derives from arbitration. As the UDRP’s history rolls on, a central question should focus on whether the Policy is meeting the consent requirement and adheres to the traditional principles of the New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards.1 7.1 Justification of arbitration and the scope of the New York Convention Arbitration should be considered as an ad hoc, compromise-oriented process characterised by a sense of informality and with a strong emphasis on fairness. Although arbitral decisions do not epitomise the legal accuracy of traditional litigation processes, they still typify a certain degree of legal authority and practical wisdom, which is sufficient to designate arbitration as a legitimate means of adjudication. Arbitrators are expected to reach fair and equitable conclusions, even if sometimes this means that they will disregard the expressed contractual terms or the chosen rule of law. This amount of flexibility is often incorporated in formal doctrines, such as amiable compositeur 2 and ex aequo et bono,3 which unequivocally legitimise arbitrators to ignore the legal confines of auxiliary rules in order to deliver justice.4

90 The current state of domain name regulation The legal justification and social contribution of arbitration can be traced in the development and use of lex mercatoria and its minimum substantive requirement of good faith. Good faith constitutes the first indication of the ability of the system to be autonomous and dependable as an out-ofcourt process. Arbitration considers the fairness in the decision-making as paramount and seeks to authenticate its decisions through a process open to court review.5 Over the past century, and more visibly after the commercialisation of the Internet, international businesses and trade have grown in both competitiveness and diversity and have been challenged by sovereign interests and national limitations. In response to these challenges, arbitration has been signalled as the finest and most systematic means to adjudicate international disputes and has been assigned a formal, legal character, sufficient to render it a model of ‘offshore litigation’.6 With no regulatory competition and jurisdictional restrictions in place, arbitration has developed into a unique legal regime, which is generally detached from state interests, legal limitations and customary rules; it constitutes panacea for international conflicts and an affirmation of the parties’ long-standing relationship. The United Nations New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards epitomises the conceptual background of arbitration and constitutes the primary legal source concerning the enforcement of international commercial arbitral awards. The essence of the Convention is the contractual agreement and the subsequent privately ‘legislated’ rights, governed by law and enforced by the state. Although not being limited by jurisdiction and domestic law, there is certainly a nexus between the Convention and a state’s legal framework in that the state recognises the right of the parties to arbitrate and holds the promise that the award will be enforced. At the same time, however, the Convention also recognises the pragmatic right of the state to refuse an award, if it is to the detriment of its national interests and beliefs. A convention that does not respect this need is legally inaccurate. In a restricted number of sixteen articles, the New York Convention secures the harmonised effects of arbitration agreements but does not seek to substantiate arbitral decisions as establishing new legal rules; rather, it celebrates the private nature of the parties’ relationship and gives them room for autonomy and individual action. Parties are able to structure their relationship according to their needs not bound by national legal impositions and guaranteed that their award will be final and enforceable. This is a significant advantage in a market that seeks to find a balance between the globalisation of commerce and the protection of national trade interests and can, therefore, leave parties amenable to jurisdictional restrictions. Arbitration, therefore, provides answers to challenging questions that the Internet currently faces. It constitutes the aphorism of online dispute resolution procedures that have emerged since the Internet’s commercialisation and have placed courts in legal uncertainty. For arbitration to rectify such

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an uncertainty, its structure requires a solid framework of procedural and substantive limitations that do not disturb national laws and respect national interests. This is not the case with ICANN’s Policy, however, which has used the arbitral model as part of its justification and arrangement but has failed to submit to its philosophical abstractions. The UDRP is confusingly similar to arbitration as it resembles its nature, but neither serves justice nor facilitates the parties’ needs. The following will discuss the substantial differences between the two systems and will demonstrate how much of the Policy’s features contravene arbitration’s rationales. 7.2 Arbitration and the UDRP: the face-off International arbitration operates on the basis of ex ante estimates, meaning that the disputing parties have the ability to structure the arbitration agreement in such a way that gives them freedom to control both the procedural and substantive aspects of the dispute. Such party autonomy ensures that the contracting parties have at their disposal the means to decide between ad hoc and institutional arbitration, to determine the locus of arbitration and the composition of the panel and to choose the applicable law to govern their dispute.7 This is important to the extent that arbitration is not concerned with creating law and establishing new legal norms; rather it functions solely for the benefit of the parties and is limited to a specific subject matter. Depending on the parties’ needs and priorities, arbitration works as the catalyst, to satisfy and guarantee the application of justice. As a corollary of this, the UDRP does not promote any of the incentives identified in the arbitral model. The Policy constitutes a uniform and mandatory dispute resolution mechanism with which registrants are obliged to abide with, if they wish to register a domain name. Essentially, every domain name holder is required to comply with a predetermined and prescribed set of procedural and substantive rules at the time of registration. Although the UDRP’s contractual clauses mention good faith, in reality these clauses have never been included in the rationale of the panels’ decisions. How can a system expect its respondents to depend on good faith, when it fails to recognise their legitimate interests?8 In a similar vein, whilst arbitration is part of a wide legal philosophy, the UDRP is a ‘bastardised’ mechanism. ICANN has retained the ultimate control of how the UDRP will operate and which rules will govern the procedural and substantive rights of the disputing parties. As discussed, ICANN’s involvement in the UDRP process does not substantiate by itself its illegitimate character; it is rather ICANN’s authority over the content of the policy and its failure to produce rules that would provide a fair balance between trademark owners and domain name holders that costs the Policy much of its legitimacy. Additionally, after the UDRP was officially launched, any of the creational checking mechanisms that could have assisted in the evolution of the system, such as a decisive check on the authority of the

92 The current state of domain name regulation UDRP panels, never occurred resulting in a system that is currently spinning out of control. If one were to compare arbitration as established in the New York Convention and the UDRP, one would reach a troubling conclusion. ICANN’s Policy promotes a system which is unfamiliar to arbitral processes and does not offer similar guarantees to international arbitration. Much of the arbitration’s prescribed principles and procedural requirements are omitted from or diluted within the UDRP, suggesting its cursory character. To be more precise, arbitration is an agreement between two contracting parties who wilfully decide to enter a contractual agreement to arbitrate before a third, neutral party. Article II of the New York Convention states: the term agreement in writing shall include an arbitral clause in a contract or an arbitration agreement, signed by the parties or contained in an exchange of letters of telegraphs.9 Therefore, the parties to the agreement are the same as the parties that will later participate in the dispute. On this account, the UDRP offers a different approach and promotes a system where the parties to the contract are different from the parties in the dispute. Although the rules of the Policy recognise as parties both the complainant and the respondent,10 the same rules determine that, for the purposes of the UDRP’s mandatory character, the contractual agreement should be considered as ‘the agreement between a registrar and a registrant’.11 Therefore, a binding contractual agreement might exist in the case of the UDRP, but the contracting parties are not the same as the ones appearing before the panels.12 More specifically, when a domain name registration takes place, the registrant is contractually obliged to accept that, if trademark owners think that their intellectual property right is infringed by such registration, they reserve the right to initiate a dispute resolution procedure under the rules of the UDRP. Essentially, the domain name holder signs an agreement to arbitrate any potential dispute, but this agreement does not bind the trademark owner in her capacity as the complainant. The terms of the contract, therefore, are enforceable for only one of the parties with the other party having the option to choose the UDRP or submit to court litigation. It, thus, becomes apparent that, even before the claim has been made, the UDRP is sided with the trademark owner, providing her with a variety of options. Another point of reference concerning the non-arbitral character of the UDRP should be identified in the Policy’s mandatory character. Two issues are very important in this clause: first it is not an arbitral one, since the Policy selfproclaims its ‘mandatory administrative’ character and, second, it only covers a significantly limited scope of disputes, restricted to bad faith registrations and cybersquatting. Contrary to standard arbitration clauses, which normally seek to address ‘any controversy or claim arising out of or relating to this contract, or breach thereof’,13 the UDRP was originally meant to address only

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one particular aspect of trademark infringement – cybersquatting.14 Moreover, according to the UDRP the remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of [the] domain name or the transfer of [the] domain name registration to the complainant.15 This constitutes a clear distinction between traditional arbitration clauses, which do not provide a default rule concerning the available remedies; rather, they tailor them according to the parties’ needs and the subject matter of each individual case.16 Furthermore, ICANN’s Policy provides the right to the complaining party to initiate a complaint at a forum of her choice. In spite of the side effects this rule might have upon the ICANN-accredited centres, since it provides them with the possibility to engage in questionable competitive practices, measured according to party satisfaction, allowing only one party to select the provider and pay the appropriate fees contrasts standard arbitration, where the provider is selected and the fees are paid by both parties. The rationale basis for the mutual selection of forum and payment of fees by both parties has to be associated with ‘equal control’ – a balanced approach over the procedural aspects of the dispute. However, perhaps the most crucial disparity between arbitration and the UDRP is the approach courts seem to take when the losing party in a UDRP action seeks relief from a prior UDRP decision. Contrary to the finality of the arbitral award and a court’s obligation not to challenge it, judges approach UDRP cases on the basis of de novo review and, hence, they are not bound by the restrictions of the New York Convention. This was the conclusion that the Eastern District of Virginia reached in the Parisi case, with the judge arguing that UDRP decisions should not be considered as final for the purposes of the New York Convention and the Federal Arbitration Act (FAA).17 Parisi v. Netlearning Inc.18 In the case of Parisi v. Netlearning Inc., the U.S. District Court for the Eastern District of Virginia decided that administrative proceedings conducted under ICANN’s UDRP should not be considered as arbitration subject to the FAA and the New York Convention. The case concerned Parisi’s registration of the domain name . Parisi did not possess any valid trademark rights on the name. After an unsuccessful attempt to purchase the disputed domain name, Netlearning initiated proceedings under the UDRP. A three-member panel issued a twoto-one majority decision in favour of Netlearning and instructed Network Solutions Inc., as the registrar, to transfer the domain name to its lawful owner. A few months later, Parisi filed a suit in which, among other claims,

94 The current state of domain name regulation he sought to obtain an order directing the U.S. Patent and Trademark Office (USPTO) to refuse Netlearning’s pending trademark application as well as an award of fees and costs. Netlearning moved to dismiss the lawsuit.19 In denying Netlearning’s motion to dismiss the complaint, the court rejected the defendant’s argument that a UDRP ‘mandatory administrative proceeding’ should be treated as an arbitral process under the FAA or the New York Convention. The court noted: Parisi’s declaratory judgment complaint should be treated as a motion to vacate an arbitration panel’s award, which must comport with the requirements of §10 and §12 of the FAA.20 This legal determination was consequential to an examination and analysis of the UDRP by Judge Brinkema, who concluded that the UDRP’s unique contractual arrangement renders the FAA’s provisions for judicial review of arbitration awards inapplicable.21 First of all, the court argued that, unlike situations covered by the FAA, where litigation must be stayed pending the arbitration awards, ‘the UDRP contemplates parallel litigation’.22 Moreover, according to the court, while Section 4 of the FAA compels arbitration before permitting court proceedings, if the parties have agreed upon avoiding a court action, such compulsion ‘would not be appropriate … in UDRP proceedings … as a prerequisite to litigation’.23 On the contrary, the court noticed that in UDRP proceedings the complainants are ‘strangers to the registration agreement and therefore [sic] are under no obligation to avail themselves to the UDRP’.24 The court further argued that, contrary to arbitration agreements, which may be affirmed or enforced pursuant to Section 9 of the FAA, the Policy itself ‘mandates a judicial forum for challenges to UDRP decisions’.25 Furthermore, unlike the provisions concerning arbitration awards under FAA, judicial review of the UDRP decisions is ‘not confined to a motion to vacate’.26 The court explained that by contemplating ‘parallel litigation and abbreviated proceedings, the Policy does not provide such deference’.27 Binding awards are not subject to de novo review by the courts and they may only ‘be vacated in narrow circumstances of arbitrator misconduct, serious procedural flaws, or ‘manifest disregard of the law’.28 These limitations can be found in §10 of the FAA or article VI of the New York Convention. On the contrary, Judge Brinkema asserted that judicial review of UDRP decisions is not confined to a motion to vacate an arbitration award under §10 of the FAA … The extreme deference of [FAA is limited] to proceedings intended by the contracting parties to be binding.29

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The judge proceeded to a distinction between ‘binding’ and ‘non-binding’ types of arbitration. However, when it comes to the UDRP, this distinction might be irrelevant, since, as Stephen Ware argues, even ‘binding’ arbitration is ‘non-binding’ in a sense, and vice versa.30 ‘Binding’ arbitration is non-binding when a court is provided with substantial grounds for the vacation of an award. In these circumstances, certain procedural flaws, such as arbitrator misconduct, allow the court’s intervention and the arbitral award transforms from final to one subjected to the court’s judgment. And non-binding arbitration is binding, because the losing party in order to prevent enforcement of the award seeks the intervention of the court. Thus, the distinction between the types of arbitration that judge Brinkema identified ‘is not a difference of kind but rather a difference of degree’.31 It is indeed true that the qualifying test for characterising a mechanism as arbitration rests on the degree of respect that courts have for arbitral decisions and their willingness or unwillingness to intervene in order to review arbitral awards. After all, the entire social utility of arbitration is that it takes the burden off courts and, hence, it would be unreasonable for arbitral awards not to be final. In the United States, with respect to arbitral proceedings under the FAA, courts have been reluctant to review arbitral decisions.32 The situation is quite different in the case of the UDRP, where, by allowing the losing party to initiate court proceedings, a certain degree of indirect control by courts takes place. This control, however, is, first of all, not sufficient to render ICANN’s Policy arbitration; it does not equally serve the same social utility as arbitration, since it charges courts with reviewing the case from the very beginning.

8

Issues of procedural unfairness

The institutional problem of the UDRP is not only associated with the process followed in its creation by ICANN and the unsuccessful attempt of the UDRP to evolve into a self-reliant mechanism and follow the paradigms of lex mercatoria and arbitration. The institutional problem of the UDRP is also associated with the amount of procedural unfairness that characterises the operation of the Policy, the interpretation of its rules and the behaviour towards individual registrants. 8.1 The UDRP restricts the legal rights of registrants Notwithstanding the UDRP’s failure to follow the normative course of similar dispute resolution archetypes, the UDRP strives to promote itself as a success story. It fails, however, to account for a process that consists of checks and balances and is consistent with due process. By and large, the UDRP offers panels limited incentives to produce self-imposed constraints when adjudicating domain name conflicts. This chapter will discuss how the panels’ discretionary powers, combined with their wide interpretative approach, manage to significantly restrict the rights of domain name holders; but, first, it will consider how the current culture of the UDRP encourages a canon of forum shopping and invites a behaviour associated with trademark lawyer abuse.1 The fact that the UDRP lacks fundamental internal and external checks has permitted the proliferation of a peremptory phenomenon – the flip side of cybersquatting – trademark lawyer abuse. This pattern sees lawyers, representing their trademark clients, to engage in bad acts, unsubstantiated threats, send ‘cease and desist’ letters and manipulate domain name holders – all in an effort to intimidate registrants into surrendering ownership of their domain names. It is the typical case of Goliath v. David, where the impuissant domain name holders become parties in a fight against dominant trademark owners. Despite the fact that similar patterns can also occur in the offline world, these have acquired different dimensions within the uncontrolled environment of the UDRP, which appears to canonise such behaviour.

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To this end, Professors Dinwoodie and Helfer have accurately argued that, at the minimum level of procedural justice, decision-makers and the institutions they are working for should be committed to providing incentives to the parties to avail themselves of procedures that are able to deliver fair outcomes.2 In order to achieve this goal, the system should encourage panellists to operate within a predetermined set of jurisdictional boundaries, which provide an estoppel against misuses of power. On the contrary, in the case of the UDRP these incentives only affect Trademark Offices and their customers. The UDRP rules allow only complainants to choose the dispute resolution service providers by virtue of their ability to initiate the dispute and pay the applicable fee in all single-member cases. Respondents, on the other hand, can opt for a three-member panel, split the fees with the complainants and, essentially, participate actively in the whole process. This limited availability of procedural rights, if combined with the treatment of default cases and the added costs of opting for a three-member panel, constitutes the first indication of the UDRP’s unfriendly and unwelcoming environment towards the responding party. This lack of incentives provided to respondents has a consequential implication, associated with patterns of forum shopping and trademark tolerance.3 Professor Froomkin has already asserted that dispute service providers are acting on the ‘irresistible incentive to … develop a reputation for deciding cases in favour of complainants’.4 This assertion, which has been the source of the UDRP’s criticism since its early days,5 has left ICANN unimpressed; however, it poses a serious threat to the dynamics of the system, as it promotes a substantial degree of procedural imbalance. With service providers targeting only the complaining party and with complainants choosing their centres according to illicit criteria, the role of respondents diminishes; they remain passive and defenceless within a system that, ostensibly, fails to offer them any guarantees. Moreover, the identity and credentials of the panellists account for the way UDRP decisions are deliberated and delivered. To be appointed as a panellist, the service providers require expertise and experience in the field of intellectual property law with particular emphasis on trademark law.6 The requirement for expertise constitutes a concern also of international arbitration, where the tendency is to show preference towards experienced and qualified arbitrators depending on the dispute and the award in question. However, in international arbitration such a shortcoming gets compensated by the various internal review mechanisms that indirectly impose a restraining effect on the arbitrators’ behaviour. In the UDRP though the fact that the ICANN centres are afforded the discretion to set and follow their own supplemental rules and procedures not only has a negative impact upon the uniformity of the system (the focus of the next chapter) but it also calls into question its ability to distance itself from the affiliated interests of the complaining party.

98 The current state of domain name regulation Logically, when evaluating a novel and ambiguous system like the UDRP, focus should be placed on the safeguards it incorporates or, at least, is willing to offer to the disputants. Given that ICANN’s Policy appears to welcome a ministerial system-type review – deference to a predetermined set of rules and availability of court proceedings – the effectiveness of these checking functions is more of an illusion. De novo review by the courts could potentially provide a certain degree of external checks, but the Parisi case7 made it clear that courts do not consider the UDRP as a system legitimised to produce final and binding awards. Within this framework, the UDRP’s presumptuous rule allowing court proceedings does not offer any real benefits. The structure appears to aim at delivering justice, but, in practice, it just adds a burden of bureaucracy, unfamiliar with arbitral or ministerial models. With certainty, an internal appeals process would work to the benefit of the UDRP, but it was a suggestion that ICANN rejected for no obvious reasons. Thus, in the absence of such an external checking function, an alternative should be in place in order to ensure that the rules produced in the administrative sphere fall within the original legislative mandate and do not violate the rights of individuals or other private interests.8 However, even considering that courts would be willing to proceed to a review of the UDRP decisions, the current structure of the Policy makes that option potentially futile. The rules of the Policy allow the losing party to initiate litigation in a court of so-called ‘mutual jurisdiction’9 to challenge a UDRP decision that has ordered the transfer or cancellation of the domain name – a process many have erroneously characterised as an ‘appeals’ procedure,10 despite its de novo character. But, even if we accept courts as the appellate fora for the UDRP, the strict deadlines imposed on the losing party, promote the appellate process as a difficult choice. Comparatively, this impacts on the rights of respondents more, since, if the complaining party loses, her status remains unchanged and any stringent deadlines become immaterial. By contrast, it is the respondent who has to adjust to the new state of affairs since her status has changed significantly and her presence on the Internet has been affected. This produces a deterrent effect upon the registrant who loses any possible incentive to litigate and engage in time consuming and expensive court procedures.11 If we are, therefore, to accept that one of the purposes of every system of adjudication is to provide the necessary incentives to the parties to advocate their rights, under the ICANN regime such incentives are chimerical. After the ten-day window lapses, ICANN will enforce the decision by altering the registrant’s information on the ‘A’ Root, an action, which by itself refutes any further proceedings. This is crucial to the extent that the UDRP may have a knockout effect especially in those circumstances where the domain name holder registers a domain name as part of an entrepreneurial step, seeking to

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establish an online presence. An internal appeals process would likely work as the catalyst towards inspiring the registrant to persist in the fight to keep the domain name. In any case, it would work as a more tempting alternative to traditional litigation, which requires time and capital and most start-ups do not necessarily possess the means to participate in such demanding forms of adjudication. Additionally, given the current understanding of law concerning the state of domain name jurisprudence, it is a fact that under national law most respondents lack the ability to make valid claims of infringement and abuse, since under many national laws domain names do not constitute individualised legal commodities.12 Froomkin has criticised this as one of the major weaknesses of the Policy.13 The fact that the respondent is not allowed to initiate a UDRP procedure coupled with the Policy’s influential character on national jurisdictions,14 manifests an esoteric need to rearrange the structure of the UDRP so as to acknowledge registrants as legitimate owners entitled to relief. Whether this criticism can become a default rule concerning the right of the registrant to initiate court litigation is debatable especially under U.S. law. American courts have, so far, dealt with a substantial number of cases where dissatisfied respondents have requested the court to rectify the UDRP Panel’s justifications. More precisely under ACPA, the losing party has the right to initiate a civil court action before a federal court seeking to establish that the transfer or cancellation of the domain name under ICANN’s UDRP – or under a similar process – was not legitimate under the Lanham Act. Under this provision, the court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.15 Although such clauses within national legislation can provide equitable grounds for relief, the fact remains that the structure of the UDRP does not even remotely address this problem. Furthermore, experience in the way panels treat default cases exemplifies another way in which the Policy limits the rights of respondents. A close overview of the UDRP decisions demonstrates an unusual high number of UDRP cases in which respondents fail to defend themselves against the trademark owner’s allegations.16 These default cases should pre-empt any proceedings and – in a true ministerial fashion – panels should dismiss them and ensure that ample notice and reasonable care has been provided to the defaulting party to respond. In the case of the UDRP, however, default is indiscriminately interpreted as bad faith and panels proceed undisturbed.17 Professors Dinwoodie and Helfer argue that at the level of individual justice and in cases where there are uncontested facts of abusive domain name registrations, default cases will not really affect the jurisprudence of the UDRP

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and the evolution of its case law. This is true in as much as most of the default cases decided so far are unlikely to change the way the UDRP functions.18 It becomes problematic, however, at a level of both procedural and collective justice, because such a pattern dismantles the rights of registrants further. When default cases first appeared in the context of the Policy, panels found themselves in a conundrum between ensuring the speed of the mechanism and adhering to due process requirements. The approach adopted viewed defaulting as an indication of bad faith, subjecting the UDRP to additional illegitimacy. Such an interpretation, as supported by the precedent-based system that operates within the body of the UDRP case law, has inevitably created problems in the evolution of the Policy. It is narrow-minded and unfair to view all default cases as uncompromising bad faith behaviour, especially in cases where the registrant is not a cybersquatter and the domain name registration is legitimate; in cases where there is not an abusive domain name registration and the reason for the default might be subject to ICANN’s short deadlines or any other legitimate reason. With no other guarantees in place, the approach of the UDRP can only signify a certain degree of favouritism towards complainants,19 which is linked to the Policy’s forum shopping and ‘trademark lawyer abuse’ tolerance. To this end, all these issues generate a more general, political problem – the democratic fractions of the system are weak and incapable to resist trademark penetration. Issues of legitimacy, transparency and trust are vital resources for every international, democratic system of adjudication that seeks to consolidate different norms, rules and cultures.20 For the UDRP, issues of openness and transparency are even more significant, due to the criticisms against ICANN’s lack of accountable procedures. It is essential, therefore, for the UDRP to seek ways to enhance its credibility by being more representational and fair in order to gain the trust of the community it influences. Within conventional ministerial systems, a government’s accountability provides an undisputed check of the ministers’ actions. For the UDRP, similar checks do not exist as panels are not liable and neither are the accreditation centres nor ICANN, which appear unwilling to scrutinise and review panel decisions. It becomes, therefore, an incontestable fact that the Policy was drafted at the behest of the intellectual property community, especially in light of the fact that at an international level – from the European Court of Human Rights to the WTO – there is a systematic effort by dispute resolution models to adhere to justice, by moderating the number of default cases, by checking the conduct of their adjudicators and by designing a system based on trust and principles of fairness. 8.2 Issues of inconsistency in a uniform system Every system of adjudication should, first and foremost, strive towards designing procedures that aim at producing fair decisions. To reach this level

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of procedural legitimacy, alternative dispute resolution mechanisms should ensure that parties are treated equally and are provided with the same degree of procedural certainty. Guaranteeing this level of procedural justice is pivotal, in particular for mechanisms, like the UDPR, which have been legitimised through a political web of dubious pedigree and, in the face of value pluralism, have failed to construct a process that adheres to the principles of procedural justice. Although ICANN’s system has been projected as a social construction based on the ongoing process of trademark practices and the interaction of trademark owners with domain name holders, it, still, has not managed to produce a continuous process in which claims and practices in numerous specific cases are abstracted in the wider institutions of international society, then made specific again at the moment of application in the political, legal and social processes of particular cases and societies.21 It is indeed true that, while the need to cure cybersquatting has substantiated the creation of the UDRP as an adjudication system and has addressed the fears of the trademark community, the mechanism has transpired into an unsuccessful model, which has failed to adhere to its historical and limited mandate. The entire system is based upon the illogical conclusion that all domain name registrations are potentially abusive and harmful and, occasionally, without any distinction or assessment between actual harm (cybersquatting) and the likelihood of such harm, it normatively evolved into an inconsistent paradigm. The manifestation of this inconsistency is first identified in the way the service providers, as well as ICANN, impose upon their panellists any rules or codes of conduct. Under the fundamental principles of impartiality and independence and in line with traditional arbitral proceedings, all panellists are obliged to maintain their neutrality and be disassociated from both parties; and, although the impartiality of the parties constitutes a prerequisite within ICANN’s Policy, the way it is imposed is not consistent. The UDRP loses its uniformity in this context by allowing each one of the centres to produce their own rules and set their individual parameters of panellist independence. WIPO has not produced any substantive rules for party challenges;22 the National Arbitration Forum (NAF) accepts challenges only after the panellist has been appointed and only within a small time frame;23 the Asian Domain Name Dispute Resolution Centre (ADNDRC) allows challenges any time during the procedure but before the rendering of the decision,24 while the newly appointed Czech Arbitration Court does not provide to the parties any guiding rules for the challenge of panels.25 Although it has to be accepted that these rules provide a certain degree of flexibility for the centres to address issues of impartiality and independence according to their particular needs, the very use of the word rules and the language they use demonstrate their peremptory and emphatic character.

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In one of the first critiques against the UDRP’s practices, Michael Geist commented that the procedural freedom afforded to the dispute service providers would eventually work to the detriment of the UDRP.26 The fact that ICANN – as the ultimate enforcer of the UDRP decisions – supports this inconsistency in the rules concerning the independence of the panels might induce service providers to start competing over the rules for panellist challenges. If ICANN were conscious about creating a fair system through the UDRP, it would have imposed upon its centres a uniform rule, similar to the one incorporated in the UNCITRAL Model Law, which could ensure a minimum standard of consistency. Article 12(1) states: When a person is approached in connection with his possible appointment as an arbitrator, he shall disclose any circumstances likely to give rise to justifiable doubts as to his impartiality or independence. An arbitrator, from the time of his appointment and throughout the arbitral proceedings, shall without delay disclose any such circumstances to the parties unless they have already been informed of them by him.27 The UNCITRAL provision successfully provides for this minimum standard for arbitrators’ disclosure and, conforms to basic principles of justice. It, further, secures the uniformity of the system. Failure to meet this minimum standard would normally result in the court’s inference. Would the same occur under the UDRP? This is rather unclear and there has not been any reported UDRP case where court felt the need to intervene. But should courts decide to intervene, they, generally, operate on the basis of an official complaint and, thus, their intervention will only impact individual cases rather than the entire system. In light of this procedural deficiency, we need to turn our focus on the Policy’s founding documents in an effort to identify any rules or principles that could be used as a means to restrict the power and authority of the UDRP panels. Indeed, some of the UDRP’s provisions do indicate a wish to substantiate the Policy on ministerial systems and, henceforth, limit the interpretative power of the decision-makers. At the same time, however, some other provisions create the perception that the rules of the UDRP allow exceptionally increased freedom to their panels, rooting the Policy’s procedural illegitimacy deeper and distancing the process from other international decision-making mechanisms.28 This interpretative discretion prevents the consistent application of the UDRP rules, and encourages a pattern of inconsistency between panels. And, given that panels have replaced judges and much of trademark law is currently established through the UDRP, we should not be surprised by the wish of the trademark community to make use of this opportunity in order to expand their protection online.29 In this context, it is worrying that the drafters of the UDRP failed to provide guidance, with regard to the way UDRP decisions would ultimately

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relate to one another. Given the justification of the UDRP to create a uniform dispute resolution mechanism and ensure the homogeneity of domain name disputes in the international sphere, the UDRP failed to address procedural questions concerning the nexus between the decisions of the accredited centres. Is it possible for a domain name dispute to be heard by different panels? If so, and in case two different opinions are delivered, which one would prevail? One of the odd qualities of the UDRP is that there is no estoppel and nothing prohibits complainants from bringing multiple actions. Under this understanding, trademark owners can file complaints in multiple centres until they finally receive the desired result.30 Since the UDRP providers are not required to have tools of decision co-ordination and dispute compatibility, trademark owners will be in the position to game the system: indirectly, the UDRP provides them with four opportunities, four centres and four different claims of action, which in the absence of an appeal process, indicate an erratic and a diametrically heterogeneous system. To add to this complexity, the UDRP’s substantive provisions are abstract and, at best, etymologically obscure. The UDRP’s ‘law’ is epitomised in paragraph 4(a) of the Policy, which lists the circumstances that, if met successfully, the panel will proceed to order the transfer or the cancellation of the domain name. Evidently, the interpretation of paragraph 4 is the source of all problems associated with the UDRP. In the confusingly similar element of paragraph 4(a)(i) for example, it is unclear whether the drafters of the Policy sought to apply this test on the basis of names’ comparison solely or on a more substantial assessment that further extends to the juxtaposition of the products and services offered. Panels have unwittingly decided that a text-by-text comparison is enough for their decisions. In a similar vein, when it comes to the rights and legitimate interests of domain name registrants (paragraph 4(a)(ii) of the Policy), admittedly the only provision able to limit trademark proliferation on the Internet, UDRP panels have twisted its original justification and meaning to accommodate their biased decisions. This is more evident in the case of criticism and parody sites, where panels have repeatedly disregarded the legitimate, free speech rights of registrants. And, all this is taking place, while panels do not possess the legitimacy to proceed to formulations that fall outside the parameters of the UDRP or to provide conclusions that inflict upon otherwise recognised rights.31 It is, however, the incorporation and interpretation of the bad faith element that exemplifies the frenzied interpretative discretion of the UDRP panels. It is the single, one element that poses the real interpretative challenges and is responsible for much of the inconsistency within the Policy. In particular, paragraph 4(b) of the Policy provides a list of examples that might indicate bad faith;32 but, it is the wording of the opening sentence of this paragraph – ‘for the purposes … in particular but without limitation … bad faith’ – that indicates the intention of the UDRP drafters to provide their panels with

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wide discretionary powers. Such open-ended and wide clauses have provided for an environment that can potentially twist good faith registrations by making them look as if in bad faith, so as to grand relief to the trademark owner.33 In his 2002 study Success by Default 34 Professor Milton Mueller listed a range of factors that during the first years of the UDRP have been determined by the panels as being indicative of bad faith. These cover a wide range of domain name use and registrant activities and constitute insufficient sources in establishing real bad faith registration and use. With this in mind, it has been established among others that passive holding,35 providing false or inaccurate information in the WHOIS,36 failing to respond to a trademark owner’s inquiries37 and not contributing any value to the Internet38 all constitute bad faith for the purposes of the Policy. Although the study was conducted years ago and only covers a small fraction of the UDRP caseload, the use of precedent within the Policy has indirectly established these cases stare decisis. This is worrying, since, without a review process in place, the reasoning of these decisions penetrates the UDRP, encourages a pattern where panels are given carte blanche authority to substantiate bad faith and creates a vicious circle, where ‘bad’ decisions get constantly reproduced. The case perfectly demonstrates the problematic with the UDRP and the discretion afforded to panellists. These arbitrary manifestations of domain name behaviour create a blanket rule of bad faith, without considering how this arbitrariness might affect the incremental evolution of domain name regulation and its impact on national laws. I can think of one situation, where a panel’s view that a registrant’s wish to maintain her privacy is a bad faith indicator will generate substantial legal conflicts. The Canadian registry system39 allocates all domain name registrations under a default setting, in order to limit the amount of ‘spam’ and protect the personal information of registrants. A domain name holder will have to opt for a WHOIS listing, otherwise, the registration defaults to private. Is the entire Canadian registry privacy system operating in bad faith? In a time, when governments are pushing social networking sites to change their privacy policies, the UDRP is promoting the exposure of registrants and users. In truth, to what extremes are the UDRP panels willing to go, in order to please trademark owners? The Barcelona.com case40 The case concerning the domain name constitutes the clearest example of a panel’s discretionary powers and demonstrates the unsteady procedural environment of the UDRP, as well as the problems in applying loosely the bad faith element. Generally, Barcelona was a political decision consistent with the UDRP’s culture to protect trademark interests. The panel’s conclusions manifest an indirect form of bias, as a Chilean lawyer,

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seeking to find a way to justify the transfer of the domain name, applied the relevant law mistakenly. Eventually, the dispute was resolved by the U.S. Fourth Circuit,41 which recognised the domain name holder as the legitimate owner of the disputed domain name. In February 1996, Joan Nogueras Cobo (‘Nogueras’), a Spanish citizen, registered the domain name with NSI, the Virginia-based registrar, in the name of his wife. On the Web site, which became active almost instantly, the Spanish couple offered tourist information about the city of Barcelona, e-mail services, a chat forum, and links to other Web sites.42 In early 1999, the Noguerases e-mailed the mayor of Barcelona and suggested the parties should come to an agreement for the acquisition of the domain name by the City Council of Barcelona. He received no response.43 Later that year, Nogueras and a business partner formed Barcelona.com Inc. under Delaware law to own and run the Web site. Although Barcelona.com Inc. maintained a New York mailing address, it had no employees in the United States, neither owned nor leased office space on American soil and did not have a phone listing in the United States. Furthermore, its computer server was located in Spain.44 In March 2000, the City Council contacted Nogueras to investigate his business venture and his plans for the domain name. Nogueras and his marketing director met City Council representatives and later sent them a business plan of the Web site and an analysis of their portfolio. The subsequent negotiations that took place between the parties failed to reach an amicable solution and, in May 2000 the City Council sent a cease-and-desist letter to the Noguerases demanding transfer of the domain name to the municipality of Barcelona.45 After Barcelona.com Inc. refused to transfer the domain name, the City Council, which possessed numerous trademark registrations in Spain incorporating the term Barcelona, initiated a UDRP proceeding against the registrant, claiming that the registration of the domain name was in violation of the UDRP. The City Council prevailed in the WIPO procedure, with the panellist concluding, inter alia, that under Spanish law the complainant had trademark rights in the term Barcelona and that the domain name had been registered and used in bad faith. Especially in relation to bad faith, there was no hard evidence that the registration of the domain name had been done primarily for the purposes of paragraph 4(b)(i) of the Policy.46 The panel was vague and its determinations were based on the unsubstantiated assertions that attitudes and actions of Respondent since the registration of the Domain Name at issue, which are clearly reflected in Respondent’s response and its annexes, [and which] have further contributed to convince this Panel to put in doubt the existence of good faith at the time Respondent obtained the registration of Domain Name ‘barcelona.com’ and, in particular, thereafter in the use of such Domain Name.47

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After losing the domain name, the Noguerases initiated court proceedings in the District Court of the Eastern District of Virginia seeking a declaratory judgment and arguing that the registration of the domain name was lawful under ACPA. The District Court’s decision affirmed the UDRP’s conclusions and validated the transfer of the domain name to the City Council, repeating the panel’s mistaken assertion that under Spanish law the City Council was probably the rightful owner of the domain name and, generally, of all the marks incorporating the term Barcelona. Moreover, the court argued that the registrant demonstrated ‘bad faith intent and profit’ and, therefore, the registration could not be pronounced ‘lawful’.48 The district court also discussed the potential application of ACPA and found that the Act also protected foreign marks against cybersquatting. Since the Council succeeded in showing valid trademark rights under Spanish law, and since the domain name was identical or confusingly similar to those marks, the request for declaratory judgment in favour of the registrant was denied.49 In a unanimous opinion, the Fourth Circuit reversed, invalidated and adjourned the lower court’s decision, denying the transfer of the domain name to the City Council.50 The court focused its analysis on four critical issues that dealt with issues of jurisdiction, the effect of foreign law on the U.S. legal regime, the elements of RDNH and, finally, whether ACPA was appropriate to adjudicate the Barcelona mark. The court, first, substantiated the exercise of jurisdiction under ACPA on the basis of RDNH,51 which provides the registrant with a legitimate cause of action and relevant remedies in a federal court after the registrant has failed to convince a UDRP panel on the legitimate rights on the domain name. Essentially, the ACPA’s RDNH provision recognises the losing party a second opportunity to persuade the court that the registration of the domain name is lawful under the Lanham Act. On this basis, the Fourth Circuit asserted that because the UDRP is susceptible of being grounded on principles foreign or hostile to American law, ACPA authorises reversing a panel decision if such a result is called for by application of the Lanham Act.52 Although the City Council asserted that upon filing the UDRP complaint, they, consequently, agreed to be subjected to the jurisdiction of the courts of Virginia (United States), only with respect to any challenge that may be made by [Nogueras] to a decision by the Administrative Panel to transfer or cancel the domain name that is subject to this complaint,53 they, similarly, equally questioned the court’s jurisdiction. The defendants even suggested that the court should apply law which is consistent and in harmony with the law applied by the UDRP panel. In rejecting this request, the court explained that WIPO’s decision and its methodology carried no weight.54 The UDRP’s lack of any jurisdictional basis

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was determinative for the court’s authority over the disputed domain name and clearly manifests the UDRP’s lack of legal authority to fill the gap that exists in international domain name adjudication. Consent to a UDRP procedure – as exemplified in the non-negotiable contract between the registrar and the registrant – can have no bearing under any national court, because it seeks to legitimise an assorted application of legal rules. To this end, the court gave no deference to Spanish law and concluded that the District Court had erred in its legal determinations. For the court, the RDNH provision provides for a cause of action under ACPA and, hence, foreign law cannot have any influence upon American courts. Accordingly, if all elements of the RDNH provision are relevant, then the claim is valid and the losing party in a UDRP dispute can seek protection under ACPA. More specifically, under the statute plaintiffs must demonstrate that (1) they are the domain name registrant; (2) their domain name was suspended, disabled or transferred under a policy implemented by the registrar; (3) the owner of the mark had a notice of action in a federal court; and (4) the plaintiff’s registration or use of the domain name is not unlawful under the Act. Since the first three criteria were uncontested and the City Council did not attempt to prove trademark rights on the term Barcelona under U.S. law, the court determined that the plaintiff was entitled to the protection of the RDNH provision.55 Last but not least, the court explained that even if the City Council were to seek to establish trademark interests on the term Barcelona, they would still be unsuccessful. The Lanham Act does not protect purely descriptive geographical designations, and the City Council could show no evidence that the term Barcelona had acquired secondary meaning other than the city itself, which would have allowed it to a legitimate claim. According to the court, the term could not be protected under U.S. law.56 In reality, the term is not even protected under Spanish law after the passage of a Directive calling for the approximation of trademark laws across the European Union,57 which prohibits the registration of geographical terms as trademarks. The inconsistent determinations of Barcelona.com provide a bad example and, subsequently, set a bad precedent for domain name disputes. The panel was clearly biased towards the City Council and its application of trademark law was substantially flawed. Proof of secondary meaning in cases of geographical designations constitutes an unvarying rule of trademark law as it contributes to the balance between free market access and unfair competition. If the City Council had any legitimate claims on the name, these were certainly not trademark ones and fell outside the scope of the UDRP. 8.3 Can courts conduct a sufficient review of the UDRP? Generally speaking, courts have not demonstrated any willingness to intervene and correct the inconsistencies of the Policy. Although Dinwoodie and Helfer58 assert that in the case of the UDRP de novo review provides the ultimate review

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mechanism, since courts review disputes afresh (which by itself provides a sufficient level of scrutiny), it is still debatable whether de novo review, as established by the Parisi case, can produce conclusive results that will affect the collective operation of the Policy. Evaluating the facts of a case from the beginning fails to serve the purpose of a ‘review mechanism’, as the continuity gets interrupted and consistency collapses. This is the nature of a de novo review. It is not concerned with rectifying any injustice or addressing the inefficiency of a system; it only seeks to make a determination in a manner dictated by law. Under this understanding, is it possible for de novo review to prove beneficial for the UDRP? Most likely not, since courts may have the power to change panel decisions but not to intervene and proclaim the general injustice of the UDRP. They may indirectly review it in their analyses, but they cannot go and say, ‘The UDRP is procedurally flawed – change it.’ Additionally, issues concerning the jurisdiction where the dispute will be adjudicated as well as the law that will be applied raise considerable questions as to the ability of the courts to review the UDRP and the further impact that this might have on the Policy. Under the mutual jurisdiction provision,59 it would be feasible for the courts that are located in those jurisdictions, where registries and registrars operate, to develop a certain amount of expertise in domain name adjudication. This, however, will offer a short-term solution, since registries and registrars speedily multiply following ICANN’s competitive and expansive registration policy.60 Currently, for example, the Eastern District of Virginia by being the physical location of NSI, the sole registry for the popular space, has dealt with a considerable amount of disputes. Although one might argue that the Eastern District of Virginia could potentially articulate a coherent domain name case law,61 its national character would equally restrict any attempt to use this case law as a template for international adjudication. At this stage, it is really only the UDRP that can demonstrate a considerable and evolving body of collective case law that can be used as reference for international domain name disputes. Considering, therefore, the UDRP’s complex legitimisation process and its political manifestations, it should be anticipated that national courts will struggle to separate ICANN’s political authority from their own national interests. During the UDRP process, ICANN had demonstrated a certain degree of vulnerability towards both the U.S. government and American commercial interests. This, as we have discussed, has had a negative impact upon the legitimisation process of the UDRP. It is rather questionable whether national courts would wish to officially engage in such dialectic, since the effect of this kind of intervention is, in any case, unclear. Generally, courts prefer to submit to conclusions on an individual basis and only when national interests are at stake; they abstain from reaching conclusions that may account for the implications a system may have upon the legal rights of either of the parties. In light of this philosophy, a court’s admission on the nature of the

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UDRP does not have the power to declare the Policy politically unwarranted. On the contrary, it can provide legal guidance and can, in effect, undermine its application within national jurisdictions. The Sallen case Among the first domain name disputes that raised serious concerns over the current state of domain name regulation – within both the UDRP and ACPA contexts – is Sallen v. Corinthians Licenciamentos Ltda.62 The case attracted much attention because the court’s final judgment both undermined ICANN’s Policy and questioned ACPA’s expansive application. In August 1998, Sallen registered the domain name and, approximately a year later, he sought to sell it to Corinthians, informing them, at the time, that there were many parties interested in purchasing the domain name. Corinthians rejected the offer and initiated UDRP proceedings with WIPO, asserting that the respondent was in violation of the Policy and that his conduct constituted a clear indication of bad faith. The WIPO Panel did recognise that all three elements of paragraph 4(a) of the UDRP were applicable and ordered the transfer of the domain name to the Complainant.63 Before the ten-day time frame lapsed, Sallen filed a lawsuit, thus, disallowing WIPO from enforcing the transfer of the domain name. Sallen’s complaint sought declaratory relief to establish that his registration and use of was not unlawful under ACPA and, therefore, he should not be required to transfer the domain name to the defendants. In particular, he alleged that under ACPA he did not have ‘bad faith intent’ to profit from the Corinthian’s mark, is not confusingly similar to the defendant’s mark ‘Corinthiao’ and, finally, he had reasonable belief that his use of the domain name was fair or otherwise lawful.64 Corinthians moved to dismiss Sallen’s complaint, arguing that the district court lacked subject matter jurisdiction, since Sallen had requested a declaration of his rights under ACPA and Corinthians did not intent to sue Sallen under the Act. The District Court agreed and Sallen appealed. For the U.S. Court of Appeals the main legal question concerned the effect that UDRP decisions have upon national courts and any limitations they might induce to their authority. In this case, the Court of Appeals was asked to review the issue of whether a domain name holder, whose domain name had been transferred by a UDRP Panel, could initiate ACPA proceedings before a federal court in an effort to override the conclusions of the panel. After reviewing the statute, the court submitted that under ACPA, a registrant reserves the explicit right to request the court to reverse a UDRP decision and that, in any case, U.S. law prevails over any independent arbitral process. The appellate court reached these conclusions after reviewing the case de novo.65 The reasoning in permitting Sallen’s cause of action was substantiated on the U.S. federal jurisdiction statute, which states that district courts

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have jurisdiction of all civil actions arising ‘under the Constitution, laws, or treaties of the United States’.66 Sallen’s complaint, therefore, was reasonable on the basis of Section 1331 of U.S.C.67 Although the court acknowledged that the defendants did not intent to sue under ACPA, at the same time it determined that subsection (D)(v) is best understood to provide domain name holders with a cause of action to rectify reverse domain name hi-jacking by trademark holders using the UDRP process to require registrants to transfer domain names originally held by rightful users under U.S. Law.68 For these reasons, the Court of Appeals concluded that the District Court’s decision should be reversed and the case should be remanded.69 Furthermore, the appellate court’s conclusions constitute a clear illustration of the state of domain name regulation and demonstrate the lack of guidance in domain name disputes. The Court of Appeals accurately exemplified its supremacy over the UDRP, but decided on a mark that was out of its geographical reach – essentially giving U.S. courts and ACPA not only precedent over the UDRP, but also supremacy over other national trademark law statutes, completely disregarding the territorial restrictions of trademark law. What is, therefore, the effect of the court’s conclusions? First of all, and considering ICANN’s main rationale in enforcing a mechanism like the UDRP, it becomes apparent that the original objectives behind the Policy cannot be properly served if UDRP decisions are subject to the ability of national courts to cripple their validity. A system cannot develop into a self-sufficient and self-reliable mechanism, if its processes are questioned and not recognised by exogenous judicious bodies. A system of adjudication functioning in isolation from the adjudication machine can be taxing as it adds unnecessary bureaucracy. What the Sallen court – as well as many others – established, therefore, is that the UDRP operates outside the confines of what courts consider legitimate means of adjudication and is highly unreliable. Furthermore, the degree of institutional inconsistency at the level of decision-making does not allow the Policy to operate as a proper model of alternative dispute resolution (ADR). Allowing the parties to initiate a court action with no substantive limitations or procedural restrictions lessens the capacity of the UDRP, since the cost and time invested are far greater than if the case were to be brought straight before courts. The situation becomes even more expensive and time-consuming in case any of the parties needs the solicitation of extra legal assistance for court proceedings. It is arguably the case that the process of finding a lawyer, who is familiar with domain name adjudication, can be lengthy and costly.70 What is more, even the mandatory character of ICANN’s Policy appears to be redundant, since the parties have the legitimate right to initiate a court

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action and this right cannot be restricted by the Policy. In particular, the UDRP provides that a registrant is ‘required to submit to a mandatory administrative proceeding in the event that a third party asserts a violation’.71 The Sallen decision proves that this requirement is not incumbent for the losing party, since the overlap between ACPA and the UDRP has the potential to severely limit the strength of the UDRP, at least where the [domain] name at issue appears sufficiently valuable to institute a federal action.72 Why should either of the parties trust a system whose decisions can easily be overridden by courts? Why should such a system exist in the first place? If its decisions are not enforceable and a court of law can disregard them, then we are dealing with a system of weak dynamics and fragile balances. However, by allowing courts to indirectly intervene within the UDRP, despite being necessary under its current operation, the need for the Policy’s reform becomes less pressuring. At the same time, we face the problem where national trademark laws are applied extraterritorially against jurisdictional barriers. This, of course, further limits the legal rights of domain name holders who lack adequate protection – both at a national and international level. For example, in an effort to define ‘mark owner’ so as to apply ACPA, the Sallen court noted that interpreting ‘mark owner’ to apply only to registered U.S. marks would create a perverse result at odds with our view of ACPA as granting relief to registrants who have wrongly lost domain names in UDRP proceedings. It would be very odd if Congress, which was well aware of the international nature of trademark disputes, protected Americans against reverse domain name hi-jacking only when a registered American mark owner was doing the hi-jacking. Such a policy would permit American citizens, whose domain names are subject to WIPO transfer orders, to get relief against abusive mark owners that have registered in the U.S., but not against abusive mark owners that have not registered (including both foreign mark owners and domestic mark owners that have not registered). It would leave registrants unprotected against reverse domain name hi-jackers so long as the hi-jackers are not registered with the PTO.73 Lacking appropriate remedies, domain name registrants have therefore found themselves subjected to multiple trademark law statutes that historically seek to protect trademark owners and to the UDRP Rules that provide an unbalanced regime. Irrespective of the result in Sallen, this case comes to question the authenticity of ICANN’s Policy and magnifies the problem of domain name adjudication. Domain name registrants cannot resort to either

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national laws or the UDRP to find the vindication they are entitled to. It is almost certain that this pattern will continue to develop, unless we start acknowledging the legitimate rights of domain name registrants and accept that domain name usage goes beyond commercial activities. A domain name registration can also signify free speech or non-commercial use.

9

Free speech in the context of the UDRP

The use of words in trademark law has always had a chilling effect on fundamental constitutional principles and trademark regimes have consistently sought to strike an appropriate balance between trademark protection and the respect of free speech.1 Under the existing doctrine of trademark infringement, only ‘commercial use’2 may provide grounds for violation, ensuring, therefore, that there is a clear distinction between commercial speech and freedom of expression. Given the axiomatic nature of free speech and its constitutional character, the criterion of ‘commercial use’ is inserted to identify the circumstances under which a trademark owner would be able to challenge the use of a word. Generally, trademark law has always operated on the assumption that words are trademark-able within specific contexts and under a limited and restricted framework of rules and principles. The idea is not to remove words from our everyday vocabularies, since such a level of ‘exclusivity’ can potentially impede artistic, political and critical speech to the extent that much useful social and commercial discourse would be all but impossible if speakers were under threat of an infringement lawsuit every time they made reference to a person, company or product by using its trademark.3 To this end, in trademark law the balance between economic interests and constitutional values has been accomplished through the incorporation of doctrines that negate the trademarkability of generic terms or bar the protection of descriptive terms. This way, trademark law manages to maintain a steady equilibrium between protecting trademarks and respecting constitutional standards. At its most basic level and, in most of the cases, this balance seems to operate effectively. However, at a more pragmatic level, trademarks may limit expression, in particular when owners intentionally prevent, intimidate or make difficult for others to criticise their products and practices.4 When the balance shifts towards economic values, the ones of free expression succumb to imperium, making axiomatic principles redundant. Why, then, do

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constitutional courts not intervene to correct this level of unconstitutionality? Anecdotal evidence suggests that these cases rarely result in litigation as trademark owners sent cease-and-desist letters to ‘violators’, who seem to conform to their requests.5 It appears that, in certain situations, even the restrictive nature of the ‘commercial use’ doctrine does not seem able to disrupt the force of trademark owners. In the American trademark regime, the danger trademark law imposes upon the Constitution has been subjected to debate, with U.S. Federal Judge Leval suggesting that the conceptual background of the First Amendment should be ‘internationalised’ in line with the philosophical premises of trademark law.6 Unnecessary constitutional decisions can obstruct the evolution of law and, especially the law of trademarks, which evolves incrementally through the adjudication process. At the same time, however, constitutional law cannot remain lethargic towards the misuse of the ‘commercial use’ doctrine. Doctrines on ‘fair use’ not only internalise free speech concerns (the same way the genericness doctrine internalises concerns over the removal of words from the everyday language), but they also provide a balance, which ‘can protect speech without the negative effects of excessive constitutionalisation.’7 Under this context, courts do not have to refer to constitutional reasoning beyond the statute, since manifestations of free speech can be found within the body of the statute. This, for example, has been labelled as a success story in the case of copyright’s ‘fair use’ doctrine, since, after all, ‘copyright law contains built-in First Amendment accommodations’.8 Given that such constitutional challenges constitute part of trademark law, has the UDRP sufficiently managed to address free speech? In traditional trademark litigation, issues of free speech have been troubling courts. In the end, however, judicial reasoning appears to provide answers and rectify any judicial errors,9 although – at least in the United States trademark regime – courts tend to approach trademark ‘fair use’ differently.10 Have ICANN and WIPO addressed issues of free speech within the Policy? Is the doctrine of ‘non-commercial use’ upheld, especially given the fact that the DNS is not structured according to trademark criteria and the Internet is – first and foremost – an information based network, which serves the pragmatic need for criticism and parody? To an extent, free speech is dealt with under the Policy, and the wording of paragraph 4(c)(iii) seems to be seeking to draw a balance between commercial and non-commercial use. In particular, legitimate interest is defined as including a legitimate non-commercial or fair use of the domain name without intent for commercial gain, to misleadingly divert customers or to tarnish the trademark or service mark at issue.11 This defensive clause, however, seeks to consolidate two incompatible concepts for if ‘commercial use’ constitutes a determinative criterion for

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trademark infringement, the Policy’s limiting clause ‘… to misleadingly divert consumers or to tarnish the trademark or service mark at issue’ normatively modifies ‘non-commercial use’ by inserting in its meaning a further substantive requirement. In short, under the UDRP rules, any noncommercial use is protected as free speech as long as it does not tarnish the mark in question. The adaptation of the tarnishment concept – with its vague and abstract connotation – adds an extra layer of limitations to the use of trademarked words and compromises the ‘non-commercial use’ doctrine and the fair use defence. It further undermines the descriptive use defence, the intelligent ‘nominative use’ doctrine, established in the United States12 and the defence of truthful comparative advertising, established by Professor McCarthy.13 Nevertheless mention should be made to the fact that paragraph 4(c) was originally meant to distinguish the instances between commercial and non-commercial speech; it was meant to provide legitimate domain name registrants with immunity against trademark abuse.14 Given the current interpretation of paragraph 4(c), various voices have raised concerns about the natural effect of this language on restricting free speech and the impact that such a clause might have on fundamental constitutional rationales. ICANN sought to address this problem by mentioning in its Second Staff Report: In view of the comments, one detail of the policy’s language should be emphasised. Several commentators indicated that the concept of ‘tarnishment’ in paragraph 4(c)(iii) might be misunderstood by those not familiar with United States law or might otherwise be applied inappropriately to non-commercial uses of parody names and the like.15 In spite of this admission, the concept still exists in the UDRP and is as elusive as it has always been. In true UDRP fashion, panels do not accept paragraph 4(c) as providing an efficient defence mechanism based on legitimate, non-commercial speech. Nominally, it will be very difficult within the UDRP practice for the domain name registrant to manage to direct the panel to deliberate on free speech. Needless to say that given the restricted scope of the mechanism and the administrative character of the Policy, any such determinations would be valueless; yet, free speech – on the limited basis of protecting the name – should be addressed. We have to bear in mind that it is, indeed, the purpose of every criticism to provoke democratic debate and inform. This, to an extent, might insinuate tarnishment, but as the Supreme Court has noted The common law’s tolerance of a certain degree of confusion on the part of consumers [should be understood as the] undesirability of allowing anyone to obtain a complete monopoly on use of a descriptive term simply by grabbing it first.16

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This tolerance afforded by law is important as it balances the conflicting constitutional and intellectual property interests. The UDRP’s ‘tarnishment concept’, nonetheless, does not afford any such degree of tolerance. Primary case law indicates the easiness with which panels choose to disregard free speech claims and their view of the Internet as a commercial space.17 In a much similar vein, recent case law also demonstrates a pattern that disregards free speech concerns, with panels unwittingly transferring domain names to trademark owners based on inaccurate and imprecise justifications of trademark protection and consumer confusion. The application, therefore, of the UDRP in free speech claims is dangerously problematic, as it is not coherent, falls outside its scope and is biased towards trademark owners. In Aspis Liv Försäkrings AB v. Neon Network LLC,18 a three-member panel ruled in favour of the transfer of the critical site to the mark owner, not only disregarding free speech, but also proceeding to discuss substantive issues of the association between free speech and trademark law. In a split two-to-one decision, the majority noted: The cases cited in paragraph 2.4 of the WIPO Overview as being authority for the proposition that the use of a domain name which essentially comprised a trade mark without any additional ‘modifier’ for a criticism site will not provide ‘rights’ or ‘legitimate interests’, are to be preferred.19 In continuing their baseless reasoning, the majority panellists made remarks with serious First Amendment implications: This conclusion involves no real curtailment of the principles of free speech. What is being curtailed is not free speech, but impersonation. A respondent can always choose a domain name that does not carry with it the perception of being authorised by the trademark owner. It is also an approach that involves no judgment being made on the content of the criticism site. Of course, it may be that as a consequence of using a different domain name less people will see the criticisms that the registrant wants to make public. However, if this is true, this of itself is evidence of the fact that the misrepresentation inherent in the domain name is the thing that draws people to the site.20 Finally, justifying the misapplication of paragraph 4c of the Policy, the panel thought that It is not the Panel’s role to pass comment on the content of a genuine criticism website. No matter how robust that content may be, that content is incidental to the consideration of the issue of bad faith. The bad faith that exists in this and similar cases arises not from any critical statement

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or alleged ‘smear’ but from the fact that the Respondent has chosen a domain name that comprises without modification a mark used by the Aspis group and the misrepresentation and impersonation that this involves.21 In this respect, the current state of domain name regulation is infiltrated with confusion and is undergoing a serious constitutional crisis. Fundamental rights have become obscure as panels proceed to formulations and direct future panellists to axe critical and parody sites under false premises. In the context of the UDRP, free speech becomes unevenly mixed with the rules on bad faith and the principles behind the confusingly similar nature of the mark, whilst the registrant remains trapped in a biased and unequal system of trademark exploitation. On that basis, we should understand that by rejecting the idea of domain names as autonomous property rights, we equally diminish the inherent relationship between free speech and property. The present ambiguity surrounding the legal nature of domain names negates the opportunity to domain name registrants to proceed to courts seeking to uphold free speech claims. In any case, freedom of speech is supposed to mean the right of everyone to say whatever he likes. But the neglected question is: Where? Where does a man have this right? He certainly does not have it on property on which he is trespassing. In short, he has this right only either on his own property or on the property of someone who has agreed, as a gift or in a rental contract, to allow him on the premises.22 It is certainly worrying that at an age of Internet canonisation and Web site proliferation, the fate of a criticism site depends solely on the unstable environment of the UDRP and its constitutionally flawed connotations. It is equally subversive that domain name holders cannot seek the appropriate constitutional protection and have their free speech rights vindicated. Exemplifying this degree of systematic effort to minimise free speech has also one deeper effect – panels are viewing the DNS as a commercial space with no room for criticism or expression.23 The idea of upholding the sharing and exchanging information in a networked society, protecting users who share similar views and ideas, unfortunately, is not visible in any of the panel decisions. The UDRP is not a constitutional statute and panellists are not constitutional adjudicators; equally, free speech concerns are not part of what the UDRP was meant to address and cure. Criticism is what makes information flow, leads to market reorganisation and, in many instances, places products under a new perspective. As consumers become more vocal through the Internet, the UDRP panels attempt to silence them and are willing to protect commercial over non-commercial speech.

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At this level of substantive evaluation, national legislation appears to be more accommodating. It is still the case, however, that any attempt by national legislation to juxtapose domain names under trademark law creates procedural problems at the level of justifying the application of the territorial trademark statutes to the international context of domain names.

10 Regulating domain names nationally The case of the Anticybersquatting Consumer Protection Act

Even before ICANN was seeking ways to institutionalise domain name conflicts internationally, Congress was exploring tools to combat cybersquatting within the American trademark law regime. The first attempt, which sought to address abusive domain name registrations via the Lanham Act – the U.S. trademark law statute – was deemed ineffective and portrayed the need to examine cybersquatting as a separate cause of action, instead of one linked with classic trademark infringement or dilution. This course of action was in concert with the vision of the U.S. DoC and INTA – the main forces behind ICANN’s UDRP – and the political decisions reached then exemplify a close nexus between the UDRP and the way the American trademark law regime decided to address cybersquatting. In 1999, the creation of the Anticybersquatting Consumer Protection Act (ACPA) signalled a significant move towards the establishment of a concrete legal framework for domain names. The Act, which was inserted as a separate Section under the Lanham Act,1 was meant to cure the perceived weaknesses of existing remedies under trademark law and was designed to fight cybersquatting and abusive domain name registrations. Under ACPA, and similar to the UDRP, a claimant has to prove that the domain name is identical or confusingly similar to a trade or service mark and that it has been registered or (as opposed to the UDRP’s ‘and’) is being used in bad faith. Unlike ICANN’s Policy, though, the remedies available under the Act are not restricted to the cancellation or transfer of the disputed domain name, but further extent to compensation for civil damages. Considering cybersquatting to constitute a new manifestation of trademark infringement and to give rise to the tort of passing off,2 the Act seeks to protect national trademark interests and the American public from confusion. To this end, the Act consists of terminology borrowed by the trademark law philosophy and the Internet. Seeking to fulfil trademark law rationales, the Act constitutes the original ‘anti-cybersquatting’ legislation to pass at a national level and it is also the first one, to address the problems of compatibility

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between cyberspace and jurisdiction. How does ACPA overcome the territorial nature of trademark law in the amorphous sphere of the Internet? To overcome any jurisdictional barriers, ACPA has incorporated the provision of in rem jurisdiction as a unique procedural device. This provision is Congress’s answer to the national-less sphere of the Internet and targets registrants that pose threats to American commerce through their registrations. By upholding that a domain name is the res, and the situs of the res is determined by the location of the registrar, ACPA provides an additional legal tool to trademark owners, which, under normal circumstances, they do not possess. Despite its potentially unconstitutional use, the insertion of the in rem provision within ACPA – yet again – demonstrates the state of domain name regulation and how law perceives the rights derived by domain names.3 Substantially, ACPA does not add much to the current trademark law philosophy. It ensures that questions relating to online trademark behaviour should not trouble courts, but, instead, a solid framework specifically designed to provide answers should be in place. To a certain extent, this has cost some of the ACPA’s procedural fairness, manifested though in a different manner compared to the UDRP. Contrary to the UDRP, the difference is one of substance rather than of degree; similar to the UDRP though, ACPA epitomises the political pressures and the uneven state of domain name regulation. On this account, the U.S. approach demonstrates a deeper legal flaw rooted in the institutionalisation process of domain names and the lack of legal analysis. Trademark law is not designed to address all the complex questions posed by domain names and their use; there will always be instances, where its limitations will negate its authority. The limitations on trademark law’s authority are neither accidental nor should they be perceived that way; they are collateral for the power trademarks actually denote and the levels of imperium their owners enjoy. We have to acknowledge, however, that there are those cases, where registrants operate with the purpose of harming or diluting the trademark and instances, when anonymity creates a web of limitations for national courts and relief becomes very difficult to obtain. In such scenarios, the precise application of the in rem provision might assist the trademark owner. It is, therefore, an issue of striking a balance between trademark protection and trademark abuse. Does ACPA manage to sustain this balance? Unfortunately not and this is due to the inconsiderate application of the in rem provision, which creates more problems than the one it attempts to cure. Seeking to apply American law unilaterally, the Act disregards the territorial nature of trademarks. Of course, there will be illegitimate registrations, but, what about the legitimate registrations, the ones reflecting non-American trademark interests? Why should such domain names be taken away from their owners? How can American trademark law apply and justify its extraterritorial reach?

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10.1 The U.S. approach prior to the enactment of ACPA When the first conflicts between trademarks and domain names emerged, trademark owners sought remedies in traditional trademark law. While legal regimes around the world are still trying to approach such disputes by applying general and traditional principles of trademark law, the U.S. law has evolved. Even before 1999, the Lanham Act provided three separate actions trademark owners could rely on. These actions included trademark infringement, unfair competition and relief against dilution. However, since in many cases trademark owners did not succeed in their actions, due to the nature of the Internet and the increasing ability of cybersquatters to avoid liability, Congress enacted ACPA in 1999 as the last legislative resort to deal with the subject matter of these disputes. In the beginning, trademark and domain name jurisprudence was institutionalised under the principles set out in the Lanham Act. In 1995, U.S. Congress enacted the Federal Dilution Act, which, four years later, was extended to also cover cybersquatting. However, dilution’s primary focus on the fame of the mark, limited its application in domain name disputes. The result was the enactment of ACPA as a tool designated to prevent registrants from infringing trademarks on the Internet. 10.1.1 The Lanham Act: Its Legislative Scope and Judicial Parameters The Lanham Trademark Act provides protection for trademark owners by incorporating and building upon the common-law doctrine of unfair competition. Chapter 15 U.S.C. Section 1125(a) establishes liability for any person who in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device … which (a) is likely to cause confusion.4 In addition, federal registered trademarks are given a supplementary remedy under 15 U.S.C. Section 1114, where liability centres on the likelihood of confusion caused by using in commerce ‘any reproduction, counterfeit, copy or colourable imitation of a registered mark’.5 Despite its precise and coherent scope, this provision would ultimately become the barrier for adjudicating domain name disputes under traditional trademark infringement. The first case that demonstrated the difficulty of the U.S. courts to answer legal questions posed by the proliferation of domain names under the existing federal trademark infringement and unfair competition provisions was Cardservice International Inc. v. McGee.6 In this case, the defendant had registered the domain name for his debt and credit card processing services. CardService International held a valid trademark

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registration for ‘Cardservice’, which was registered prior to the registration of the domain name in question. McGee began to advertise his service plan business at through a business called ‘EMS – Card Service on the Caprock’. After the defendant refused to comply with the demands of the plaintiff to ‘cease and desist’ all Cardservice related activity on the Internet, Cardservice filed a civil action alleging trademark infringement and unfair competition to prevent McGee from making continued use of the domain name.7 In ruling in favour of the plaintiffs, the court first clarified that domain names are subject to federal trademark law and, in spite of registering a domain name before the opposing trademark, a registrant may still be liable under federal law. In the eyes of the court, there was a likelihood of consumer confusion between McGee’s use of as a domain name and Cardservice’s registered trademark ‘Cardservice’. Consequently, the defendant was found liable based on the likelihood of confusion test for both unfair competition and trademark infringement under 15 U.S.C. sections 1125(a) and 1114(1) respectively. The underlying argument of the presiding judge was that since Cardservice had obtained a legitimate trademark in the name of ‘Cardservice’, it should not be forced to compete with others over the use of that name.8 By employing traditional trademark law, the court failed to address other issues that were raised during the proceedings and reveal the complexity of domain name adjudication.9 In particular, the court failed to answer to McGee’s argument that he held priority over the use of the contested domain name since he was the first to make use of the words ‘card service’ in his business name. McGee further explained that he had no choice but to register the domain name without a space, since the registration culture does not support domain names with spaces. The court, however, considered this issue worthless of consideration and, instead, relied on the strength of Cardservice’s mark and McGee’s direct competition with the plaintiff to prohibit the latter’s use. In bypassing this argument the court avoided to identify the qualitative criteria under which domain name disputes are to be adjudicated and did not address the technological restrictions imposed upon registrants or to the way they can reflect their domain names. Notwithstanding these important questions, the court’s conclusions seemed to suggest that in cases where both parties hold valid trademark registrations priority of use in commerce would be the categorical criterion.10 Additionally, the court proceeded to determine priority of use by giving considerable weight to the strength of Cardservice’s federal mark. Despite the court’s opinion that the size of the parties’ businesses could not ascertain who had priority over the domain name, at the same time, the court seemed to imply that the majority of the public is more likely to be confused if a ‘weaker’ trademark owner registers a domain name that is similar to a more well known mark than vice versa.11

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The distinction between ‘strong’ and ‘weak’ marks, as to which deserves a place on the Internet, is very distant from the philosophy of trademark law. It is the divorce between theory and practice. Although case law shows that, in reality, courts do consider the priority of use test as a conclusive factor,12 owners of strong trademarks appear to maintain their dominant position under the law.13 This case not only demonstrates the incapacity of trademark law to respond to the challenges that domain names pose but, similarly, it exemplifies that the ‘stronger’ the mark, the more likely it is to receive stronger forms of protection. The court used quantitative criteria in its determinations, which confirmed the thesis that views domain names as second-class citizens. This is a reasoning, which – more often than not – is perpetuated by courts, policymaking bodies, like ICANN, and intellectual property constituencies. And, this is a reasoning that would also be persistent in both the U.S. Dilution Act and ACPA. 10.1.2 Federal dilution law It took almost a century for the U.S. legal regime to finally address Frank Schechter’s vision of dilution, exemplified in his famous Harvard Law Review article ‘The Rational Basis of Trademark Protection’. According to Schechter, dilution, in the context of trademark law, should be understood14 as the lessening of the capacity of a famous mark to identify and distinguish goods, regardless of the presence or absence of (1) competition between the owner of the mark and other parties, or (2) likelihood of confusion, deception or mistake.15 Until the final passage of the Anticybersquatting Act, dilution seemed to be the appropriate remedy against cybersquatting. Traditional trademark infringement principles appeared inappropriate to deal with the new form of unfair competition. Also, the fact that a registrant was merely reserving the domain name and not using it for commercial purposes did not quite fit in the philosophy of trademark infringement. With the implementation of the Dilution statute, courts appeared seemingly willing to apply the dilution theory to cybersquatting, suggesting that reservation of a domain name constituted ‘commercial use’ on the basis that the act of registering and reserving a domain name constitutes a business on its own right and, hence, dilutes the mark. Dilution existed, since the domain name holder prevented the trademark owner from reflecting the mark on any of the gTLD spaces. These issues constituted the focus on Intermatic Inc. v. Toeppen.16 In this case, Intermatic initiated a civil action against Dennis Toeppen, a famous cybersquatter, for registering its mark ‘Intermatic’ as a domain name.

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After finding that the plaintiff met the ‘famous’ criterion under the statute, the court argued that Toeppen’s actions of registering the domain name with the intention of eventually selling it back to Intermatic constituted ‘commercial use’ according to the statute. To this end, the court held that the plaintiff’s use of the Internet as a means of business conduct satisfied the statute’s requirement that the mark should be used ‘in commerce’. The court concluded that the plaintiff’s use of had diluted the defendant’s trademark rights. Since Intermatic was not able to use its own mark as a domain name, this fact alone had diminished the plaintiff’s ability to distinguish its goods from others, which constituted a clear violation of Congress’s intent to encourage the development of trademarks to assist the public in differentiating products. Additionally, the court clarified that dilution would have been constituted even in the occasion where Toeppen was simply using as his Web site, since, at a minimum level, Intermatic’s trademark would be associated with any messages posted on the site and, thus, its reputation would be affected.17 Despite its successful application against Toeppen, the theory of dilution failed to deal effectively with cybersquatting. In fact, the Ninth Circuit feared that by stretching the theory of dilution to accommodate cybersquatting, trademark law theory would be opening to a new form of illegal dilution, distant from the notions of tarnishment and blurring.18 As trademark law czar Thomas McCarthy has stated … one of the first applications of the new antidilution law was to get judges and attorneys thinking of the new law as a result-oriented tool, easy to bend and twist to a situation that appeared to be ‘unfair’.19 Looking at the law prior to the enactment of ACPA, trademark owners realised that the existing regime failed to precisely address the needs of the new digital medium.20 Specifically, under a federal unfair competition claim, trademark infringement and trademark dilution statutes require the trademark owner to prove that the defendant has used the domain name ‘in commerce’.21 In the borderless electronic environment, a potential defendant might escape liability by simply not using the domain name – a practice that has been known as ‘warehousing’.22 The defendant may hide behind the registration of the domain name, which constitutes a pattern that falls outside the requirement of use ‘in commerce’.23 Furthermore, although a claim under the federal trademark dilution statute does not require proof of defendant’s use that is causing likelihood of confusion,24 a trademark dilution claim is generally not practical, because, in reality, only few trademarks qualify for protection under dilution. The dilution statute explicitly provides protection only to trademarks that are truly famous25 or famous and distinctive, limiting, this way, the scope of applicable disputes even further.26

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10.2 The Anticybersquatting Consumer Protection Act In 1999, taking the inadequacies of the Lanham Act and the Federal Dilution statute into consideration, Congress addressed the problem of cybersquatting by enacting ACPA, which prohibits bad faith registration of a domain name consisting of another’s mark.27 Congress realised that the increasing use of domain names, their international character and the anonymity of the Internet were all issues that could not be traded in under the existing laws and, to this end, it incorporated within the Act a unique and compelling procedural tool for use in cases where the registrant cannot be located in or be subjected to the jurisdiction of a U.S. court. In such cases, ACPA authorises the mark owner to bring an in rem action directly against the domain name itself.28 Through this device, Congress hoped to avail mark owners with additional enforcement tools, irrespective of whether such tools would violate the rights of other legitimate owners or would have the effect of expanding the territorial nature of American trademark law. It is indeed true, that the in rem provision expands the rights of mark holders further, adding substantially to the existing complexity of domain name regulation. 10.2.1 Subject matter of ACPA In the U.S. legal regime, domain name disputes have been institutionalised under the traditional conceptual background of trademark law and ACPA follows the philosophy of traditional trademark infringement. According to the Act: A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, without regard to the goods or services of the parties, that person: (i) has a bad faith intent to profit from that mark, including a personal name … and (ii) registers, traffics in, or uses a domain name that: (iii) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark; (iv) in the case of a famous mark that is famous at the time of registration of the domain name, identical or confusingly similar to or dilutive of that mark.29 Recognising the nature and use of domain names, ACPA does not require that registrants use the Web site in connection with goods and/or services.30 For the purposes of ACPA, the confusion test is based on a loose comparison between the names, disregarding the goodwill of the product or the association of the mark with goods and/or services. What is more, ACPA extends the scope of trademark law even further by not calling for evidence that the disputed

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domain name has been used ‘in commerce’,31 raising, disproportionally, the bar of protection in favour of trademark owners. In a manner similar to the UDRP and seeking to establish the bad faith of an individual or an entity that registers a trademark as a domain name, ACPA provides a non-exhaustive list of factors that courts need to consider.32 At this point, the Act seems to contradict itself, when in its opening section it does not require trademark owners to establish association with any goods or services, yet some sections later it expects domain name owners to use the domain name in connection with goods or services so as to prove the bona fide use of the domain name. In any event, in cases where personal jurisdiction is invoked, ACPA allows, in addition to transfer of the domain name, the award of actual and statutory damages ranging from $1,000 to $100,000 per domain name.33 This provision can open the road for trademark bullying against registrants acting in good faith into surrendering the domain name – a practice associated with domain name hi-jacking (RDNH) and ‘trademark lawyer abuse’ practices.34 This is despite the fact that the statute states that bad faith intent … shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that use of the domain name was a fair use or otherwise lawful.35 In addition to these ‘generous’ substantive provisions, ACPA’s in rem jurisdictional clause provides a procedural mechanism, which expands the threshold of trademark protection even further. A trademark owner can invoke in rem jurisdiction either when she fails to identify the registrant of the domain name or when the registrant does not fall within the personal jurisdiction of the court, which would apply to many domain name holders residing outside the United States.36 In such instances, ACPA allows the mark owner to initiate a civil action against the domain name itself in the judicial district where the domain name registrar is located.37 By allowing a party to turn against the domain name itself, Congress has characterised a domain name as res (property). Is Congress through this rationale suggesting that, only for the purposes of applying the in rem provision, the domain name is property? If so, why has it been so difficult for American courts to declare proprietary interests in domain names? It appears that Congress enabled this rule as a device to ensure protection of trademark owners, rather than as a wish to deliberate on the nature of domain names. The implications over such an arbitrary suggestion, therefore, are gigantic and generate a myriad of concerns. These issues have led scholars, like Michael Froomkin, to fear that the legislation may end up reducing the visibility of online political activism, by making it difficult for protesters to latch on to a company name to launch a critical Website.38

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Similarly, Senator Patrick Leahy voiced First Amendment concerns about ACPA particularly with regard to its potential restrictive effect on online criticism.39 In 2000, a case would appear before the courts with the trademark owner invoking ACPA to restrict various websites that were allegedly defamatory. In the case, Verizon Communications attempted to suppress a collection of critical online sites. Verizon, the former Bell Atlantic and GTE, decided to register seven self-critical domain names, including , in an effort to prevent others from registering sites that could be critical of the company. 2600, a hacker magazine, subsequently registered the available , forcing Verizon to send a cease-and-desist letter invoking the provisions of ACPA and demanding that the magazine cease all use of the Web site.40 Verizon never actually initiated a lawsuit against 2600, probably for fear of adverse publicity. Of more concern, however, to the fate of critical domain names has been the successful application of ACPA by the People for the Ethical Treatment of Animals (PETA) against the domain name owner of .41 The site originated in 1995 as a parody portal against the organisation and its activities and, in 2000, PETA sued Doughney under ACPA and succeeded in seizing control of the domain name. These two instances do not seem to have alarmed Congress about the potential threat of misuse and misapplication of ACPA. After all, ACPA has managed to contain the problem of cybersquatting and ensure the protection of trademark rights from online threats. It has, however, ignored much of the philosophy behind trademarks by endangering democratic speech and would continue to do so through its in personam and in rem jurisdiction. 10.3 The rationale behind in rem jurisdiction Whilst establishing in personam jurisdiction is straightforward in the sense that a party is subject to it as long as she is a U.S. citizen and her domain name registration infringes the rights of a valid U.S. trademark, the issue becomes complicated when seeking to understand the conceptional boundaries of in rem jurisdiction. ACPA allows a trademark owner to invoke in rem jurisdiction under two distinct circumstances – anonymous registrants and registrants over whom in personam jurisdiction is unavailable – both of which however provide auxiliary levels of protection to mark owners and appear to expand the rational boundaries of the in rem jurisdictional provision. 10.3.1 Anonymous registrants The fundamental basis behind the enactment of ACPA was to resolve the conflicting issues of domain name registration and trademark infringement. To this end, Congress considered it essential to address a multitude of procedural challenges that corresponded, on the one hand, to the anonymity of cyberspace

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and, on the other, focused on the Internet’s international character. At the same time, the House Committee Report stated that a significant problem faced by trademark owners in the fight against cybersquatting is the fact that many cybersquatters register domain names under aliases or otherwise provide false information in their registration applications in order to avoid identification and service of process by the mark owner.42 Prior to the enactment of ACPA, courts in the United States had generally refrained from proceeding with cases where the defendant was anonymous and had insisted that the plaintiff caries the burden of proof in identifying the defendant in order for due process to transpire. The case of Columbia Insurance Co. v. Seescandy.com43 perfectly demonstrates the problem with the anonymity on the Internet and exemplifies the lack of a court’s executive authority to decide cases where the identify of a party cannot be concealed. In this case, the owner of various trademarks relating to See’s Candy Shops Inc. initiated a complaint in federal court alleging that the defendant had violated federal and state trademarks and competition laws associated with the registration of the domain names and by someone other than the plaintiff. Since the registrant had provided incomplete or false information when he registered the domain name, the plaintiff was unable to collect the information necessary to serve the complaint.44 The district court focused on the need for the plaintiff to discover the registrant’s identity, but it balanced this need against ‘the legitimate and valuable right to participate in online forums anonymously and pseudonymously’.45 The court concluded that if the plaintiff wanted to get discovery on the issue, he would have to meet four specific requirements according to which the plaintiff should (1) identify the missing party with sufficient specificity such that the Court can determine that defendant is a real person or entity who could be sued in federal court; (2) identify all previous steps taken to locate the elusive defendant; (3) show that its claims could withstand a motion to dismiss; and (4) specify, and justify, the discovery requests and the entities to which those requests would be addressed.46 It appeared, therefore, that in the chaotic Internet environment, in personam jurisdiction was an insufficient tool against registrants that intentionally hide behind their registrations by providing false or inaccurate information. The in rem provision comes to rectify this procedural anomaly and resolves the situation of anonymous domain name holders. Under Section 1125(d)(2)(A)(ii)(II),

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a trademark owner who has a legitimate claim against a domain name holder may bring a law action against the domain name itself (res), should the plaintiff fail to determine the identity of the registrant. At the outset, the in rem provision appears an intelligent tool against abusive domain name registrations. Current domain name registration practices do not operate on the basis of an examination as to whether the information submitted by the registrant is authentic or imprecise; it is only at the stage of a possible claim by a trademark owner that issues of anonymity might arise. In those situations and, as long as the plaintiff has sent notice to the address provided, the in rem provision holds the promise of providing meaningful protection to trademark owners while balancing the interests of privacy and anonymity on the Internet.47 10.3.2 Foreign registrants As an additional step to the cases of anonymity, Congress contemplated on issues, such as when ‘a non-U.S. resident cybersquats on a domain name that infringes upon a U.S. trademark’.48 In addressing this possibility, Congress established that the in rem action might also be activated when the court fails to justify in personam jurisdiction against the defendant.49 The irony, however, is that there can really be no situation where enforcement of a domain name dispute can have an impact upon a non-U.S. resident and at the same time be constitutional. Trademark law is adamant on the issue of territoriality and its scope, which exists as a means to encourage new markets and stifle competition. The provision pushes trademark law to new conceptional territories and encourages U.S. trademark practices to monopolise the Internet’s naming space. This assessment challenges the constitutionality of the in rem provision as Congress appears willing to provide trademark owners with unconstitutional claims, failing, at the same time, to distinguish between legitimate and non-legitimate ones. Considering such constitutional concerns, how legitimate is it for courts to apply the in rem provision in domain name disputes? Are courts able to make a conservative and wise use of the in rem provision in the context of trademark law? All seem to point towards a mistaken interpretation of the minimum contacts requirement rule and its application in domain name disputes. 10.4 ACPA and in rem: a dangerous combination Traditional trademark law has always maintained a cautious attitude before invoking the in rem provision in trademark disputes.50 This is partly related to the fact that the relief resulting from in rem actions was often considered extraordinary. It also has to do with the constitutional standards following in rem jurisdictional claims. The idea behind an in rem action is to adjudicate the

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rights of persons in absentia and, naturally, such actions raise serious questions concerning due process.51 In one of the few examples, a court was uneasy in rationalising in rem jurisdiction and argued that, in the absence of in personam jurisdiction, the application of the in rem provision should always adhere to the fundamental principles of justice and due process.52 Congress’s decision to incorporate in rem in ACPA was justified on the basis that the anonymity in the impersonal sphere of the Internet could work to the detriment of U.S. trademark interests.53 In essence, Congress granted carte blanche authority to adjudicate the rights of foreign registrants by virtue of the in rem provision, although these foreign registrations may have no contact – physical or digital – with any of the American states or influence American trademark interests, to the extent that the public feels confused.54 There is a constitutional problem in allowing in rem actions in trademark disputes, relating to the justification of the minimum contacts requirement and the results in Shaffer. 10.4.1 The conceptual scope of in rem jurisdiction In rem jurisdiction might be invoked under three distinctive circumstances: when property rights constitute the subject of the dispute (‘true in rem’);55 when property rights directly relate to a specific individual (‘quasi in rem I’);56 and, finally, when property rights are related to a specific person, yet the underlying claim is unrelated to the res that justifies jurisdiction (‘quasi in rem II’). In this last situation ‘the plaintiff does not dispute the property rights of the owner of the res, but seeks to obtain the res in satisfaction of some separate claim’.57 The highly controversial conclusions in Shaffer v. Heitner 58 highlight the problems associated with the quasi in rem II action. In this case, the U.S. Supreme court declared the Delaware jurisdiction statute unconstitutional. The statute determined that in the absence of the parties from the dispute, the in rem provision could be invoked through the seizure of a number of shares controlled by a Delaware corporation.59 The underlying claim, which related to the shareholders’ action against a corporation’s managers, was extraneous to the res – the shares at question.60 Despite this substantive legal gap, the court still concluded that the action satisfied the minimum contacts requirement and also argued that the fundamental principles of substantive justice as established in International Shoe Co. v. Washington61 were apposite. The court concluded that the standard for determining whether an exercise of jurisdiction over the interest of persons is consistent with the Due Process clause is the minimum contacts standard elucidated in International Shoe.62 In the context of domain name disputes,63 Shaffer, hitherto, has been interpreted as implying that the minimum contacts requirement should apply

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only to quasi in rem II actions. So far, the central question faced by the courts concerned whether the in rem provision is appropriate in the case of domain name conflicts. Congress has unwittingly circumvented this problem by assigning proprietary interests to domain names and designating the registrant’s location as the situs of the res.64 ACPA recognises that a registrant has the right to litigate the dispute in the same judicial district where the domain name is administered.65 Under this conceptional framework some minimum contacts do exist for the domain name to be adjudicated before the judicial district where the registrar is located; after all, such minimum interests seem to comply with the traditional standards of fair play and procedural justice.66 The confusion in Shaffer was centred over the types of in rem jurisdiction, associated with the minimum contacts requirement. In the eyes of the court, the requirement should extent to all cases of in rem jurisdiction and, thus, before proceeding to establish a uniform rule that would apply indiscriminately across the whole range of in rem types, the court first sought to identify any repercussions that such a rule would cause to all different types of in rem jurisdiction.67 For the court in International Shoe, the mere presence of property in a particular forum was not enough to justify jurisdiction, although it can provide assistance in determining whether the essential minimum contacts are present. On the contrary, the Shaffer court considered that when claims to the property itself are the source of the underlying controversy between the plaintiff and the defendant, it would be unusual for the state where the property is located not have jurisdiction, since [sic] the defendant’s claim to property located in the state would normally indicate that he accepted to benefit from the state’s protection of his interest.68 Moreover, in such cases the forum will often have a strong interest in assuring the marketability of property within its borders and in providing a procedure for peaceful resolution of disputes about the possession of that property.69 Therefore and as long as the res can be identified within a specific judicial district, the application of the International Shoe standard would not really affect the other types of in rem jurisdiction. The Shaffer court accepted the difficulties in applying the conclusions of International Shoe in quasi in rem II actions, since, if the underlying claim is unrelated to the property in question, then the plaintiff would find it impossible to prove the existence of minimum contacts. For minimum contacts to have relevance, the contacts will have to be consistent, systematic and continuous – a test that cannot be met by claiming ownership singlehandedly over the res within a specific forum. The Supreme Court found that in Shaffer the contacts between the

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defendant and the corporation were not enough to justify the exercise of in rem jurisdiction and decided that the Delaware court had erred in applying in rem jurisdiction.70 10.4.2 In rem in the context of ACPA The original rationale for allowing in rem jurisdiction in domain name disputes was to ease the concerns and protect the trademark community against anonymous registrants. ACPA instructs that an in rem suit will be allowed only in cases where the domain name is located within the United States, ergo it has either been registered or is administered by a U.S. entity. This takes place as long as the plaintiff can prove the existence of the minimum contacts requirement. The existence of property within the forum should not, by itself, be enough.71 This is a procedural complexity that can set a very bad precedent. To this end, Shaffer’s logic should not be disregarded, especially under the current practices, in which most domain name registrations are carried through designated dealers and representatives and the registrant is often unaware of the entity that ends up administering the domain name. In such cases and according to Shaffer, the presence of the domain name within the forum where the registrar is located would not normally be able to substantiate minimum contacts. Therefore, for in rem jurisdiction to exist either the registrant has minimum contacts so as to satisfy due process or else the International Shoe standard should bar the exercise of any type of jurisdiction – in rem or in personam.72 This rationale, however, would not be followed by the Eastern District of Virginia, which decided to disregard Shaffer’s reasoning. In Cable News Network LP v. cnnews.com,73 the defendant, a Chinese company, registered the disputed domain name , which it used in connection with a Chinese Web site offering news services and other information, primarily targeting Chinese-speaking users around the world. Although the text of the Web site was originally in Chinese, the site also included a significant amount of content in English. Upon learning of the Web site, the plaintiff brought an in rem action under the Anticybersquatting Act against the domain name, including claims for trademark infringement and trademark dilution. In seeking to justify the exercise of in rem jurisdiction, the court concluded that in an ACPA in rem action, it is not necessary that the allegedly infringing registrants have minimum contacts with the forum.74 Three unreasonable arguments were proffered in support of the court’s ‘convenient’ contentions focusing on the following: (1) Shaffer’s requirement of minimum contacts is dictum and, thus, not binding upon courts; (2) Justice Scalia’s opinion in Burnham v. Superior Court 75 overruled Shaffer’s requirement of minimum contacts for in rem actions; and (3) some other sources, which suggested that minimum contacts are not a necessary prerequisite in justifying

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in rem jurisdiction in ACPA actions.76 In CNN, the court recognised that ‘there is language in Shaffer that could be read to require that all in rem cases conform to the same due process constrains as in personam cases but argued: The greater weight of (and more persuasive) authority holds that the language of Shaffer requires minimum contacts only for quasi in rem II type cases.77 Generally, the court in CNN justified the application of in rem jurisdiction beyond any reason or convention and as for the authorities quoted, they should be considered either erroneous or inappropriate. First of all, reference to Burnham does not add anything to the argument advanced by the court, since Burnham concerned a defendant who was physically located in the forum state and, hence, the application of in rem jurisdiction was irrelevant. In that case, the court correctly decided against using the minimum contacts requirement and the reasoning of International Shoe on the basis that, similar to Shaffer, in rem jurisdiction provides relief only to cases where the defendant is absent from the forum state. In Burnham, however, the defendant was both known and present; thereby, the minimum contacts test was unnecessary. The logic of Shaffer’s holding – which places all suits against absent non-residents on the same constitutional footing, regardless of whether a separate Latin label is attached to one particular basis of contact – does not compel the conclusion that physically present defendants must be treated identically to absent ones.78 It is worth mentioning that Justice Scalia’s interpretation of Shaffer favours its application to ‘all suits against absent defendants’ – including the ACPA in rem actions.79 Absent the instances of anonymous registrants however, ACPA’s in rem provision covers only those cases where the registrant is not located within the jurisdiction of the forum state. Therefore, Justice Scalia’s reference to Burnham as an example of vacating the criterion of minimum contacts is by its own terms inappropriate, since its subject matter concerned a case of in personam jurisdiction. Justice Scalia went far enough to suggest that, instead of placing focus on the traditional minimum contacts requirement, the conclusions in Burnham should be associated with the notion of ‘tag jurisdiction’. Justice Scalia considered that the conceptional boundaries of tag jurisdiction fit more comfortably in novel contexts,80 like that of domain name disputes, where it is easier to prove for the purposes of service of process that an individual has transitorily been present in the territory of a U.S. state than proving the existence of minimum contacts with the state. This approach, however, can be dangerous. The idea of minimising the procedural standard for in rem jurisdiction would be detrimental, since it would essentially be allowing

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an overt expansion of trademark claims against any domain name holder. Considering the number of registries and registrars located in the United States and the registration practices through authorised agents, almost every registrant would have, at the very minimum, temporary presence in the United States. We should, therefore, bear in mind that the idea of the minimum contacts is not a concept based on loose legal ends; rather it constitutes a fundamental principle, which serves the constitutionality of due process and ensures justice. To this end, the standard of its application should not disintegrate, but should instead be based on solid criteria. In the context of domain name disputes, for example, the contacts should not only be minimum but also perpetual and substantial. The application of in rem jurisdiction in ACPA and the steps Congress took to ensure that U.S. trademark owners would have legal claims against domain name holders, promote American law as an international legal paradigm. Under this purview, ACPA is deeply unconstitutional and illegitimate, especially when the court is willing to minimise traditional standards in order to justify extra-territorial trademark reach. Even in cases where the domain name holder is intentionally deceitful and seeks to harm the U.S. trademark owner commercially, in rem jurisdiction cannot be easily warranted. According to trademark law’s philosophy, protection can only be national and no domestic law can claim international sovereignty. For such cases, international mechanisms, such as the UDRP, should they adhere to basic ethical and legitimate standards, will be able to provide the appropriate relief. It is, therefore, illegitimate to ask courts to apply the minimum contacts test in domain name disputes, since there are other alternatives that, if designed and applied correctly, can provide legitimate and efficient answers. Otherwise, more questions emerge, which, consequently, create more legal complexities. 10.4.3 The situs of the domain name The main question in applying in rem jurisdiction in domain name conflicts concerns the determination of the situs of domain names since for in rem jurisdiction to be valid, the court has to identify that the piece of property in question (res) falls within its jurisdictional boundaries.81 This is problematic to the extent that domain names are articles of intangible property that are located everywhere there is a computer, whilst, at the same time they exist nowhere. To this end, ACPA provides that, for the purposes of the actions arising out of the Act, the location of a domain name is associated with the location of the registry or registrar.82 The decision of Congress to establish the locus of the registry as the situs of domain names manifests another political attempt to ensure that – to the most possible extent – American trademark interests would be secured. Before ICANN’s creation, NSI was the sole registrar for domain names by virtue of its contract with the National Science Foundation (NSF).83 NSI’s monopoly over domain name registrations would come to an end with the creation of

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ICANN and its mandate to allow more competition in the registration of domain names. As part of the transition, NSI’s domain name registration was divided into two separate units – a registry and a registrar. As a registrar, NSI continued to offer the same services as one of the multiple registrars accredited by ICANN. However, as a registry, NSI still continues to maintain the monopoly over the registrations in the popular space. In effect, Congress realised that ACPA’s limited jurisdiction could not reach all domain name registrations; it could, however, cover the ones registered under the most popular space. NSI is located and offers its services from Virginia, U.S., which automatically places all trademark disputes concerning a registration under the jurisdictional umbrella of the Eastern District of Virginia. This implies that under the Act, the Eastern District of Virginia has jurisdiction to adjudicate the substantive rights of foreign registrants although there might be occasions where the registrant will have no contacts – actual or digital – with the forum. Consequently, by designing a procedure which prescribes the registry as the situs of the domain name and, subsequently, permits in rem actions before the courts in the judicial district of the registry, the notions of fair play and procedural justice are compromised.84 Under this modus operandi, domain name disputes become predictable and prejudiced as registrants come face-to-face with situations where they are fighting for their rights in an unfamiliar forum, with unfamiliar laws and against trademark owners who have at their disposal presumptuous legal tools. But the true implication of Congress’s incorporation of the in rem provision in the Act has a deeper and more substantial effect in establishing a default court which is empowered to reach conclusions that produce an extraterritorial effect and govern the rights of foreign nationals. 10.4.4 The ‘butterfly effect’: the establishment of a default court The determination of the situs of domain names according to the location of the registry or registrar does not only threaten procedural justice but it also produces an ensuing effect through the creation of a default court for domain name disputes. As stated, the Act recognises that the district court where the registrar is located has the jurisdictional duty to adjudicate the conflicting rights of the parties. Professor Nguyen argues that in practical terms this means that, because of the substantial volume of registrations in the and spaces, the Eastern District of Virginia – home of NSI – is indirectly established as the default court to hear the majority of domain name disputes.85 This prescribes a questionable rule of law to the Virginia court, which is virtually able to attract all disputes and designates ACPA as an international statute, in spite of its nationally restricted application.86 The basis validating the Eastern District of Virginia as the appropriate forum to hear domain name disputes is also substantiated in a small, albeit significant, detail behind the structure of the DNS – the authoritative ‘A’ Root.

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The ‘A’ Root, the technological convention supporting the smooth operation of the Internet’s naming system, is ‘physically’ located in Virginia and, in essence, constitutes a database which lists all domain name registrations. The amount of power bestowed upon ICANN and NSI (which control the Root) and its implications constitute discussions that take place in other fora, but generally there is strong opposition to ICANN’s authority over the DNS.87 Despite this political aspect, ICANN performs an important social function of Root maintenance, since all the technical transfiguration of domain names – from their conversion into names to their identification with an IP number – take place within the Root zone.88 VeriSign89 (former NSI) alongside ICANN, is currently in control of the master Root zone server.90 Under this understanding, Congress indirectly authorised all domain name disputes that fall under the most popular space to be heard before the courts of the judicial district of Virginia.81 The effect Virginia courts have on domain name adjudication practices is material and real as other U.S. courts have asserted lack of either in rem or in personam jurisdiction and have directed the parties to the Eastern District of Virginia as the appropriate forum to hear domain name disputes.92 Some scholars have proceeded far enough to argue that even in cases a court were to decide to proceed and adjudicate the dispute, it would most probably resonate its conclusions by reference to decisions rendered by the Eastern District of Virginia.93 This legal culture, developed since the passage of ACPA, poses legal threats that span across trademark law and have political implications concerning how trademark law is regulated on the Internet. The direct inference is that the decisions produced by the Eastern District of Virginia essentially impose U.S. trademark law on the rest of the world. Such a practice ignores justice, due process and sovereignty, placing the protection of American trademarks at the forefront of the commercial Internet. Similar to the UDRP, but at a different level, ACPA promotes a procedural model that compromises the legitimate rights of registrants. ACPA has one goal and one goal only: to protect American trademark interests. The Act’s awkward application of the in rem provision is testament to the uncomfortable relationship between trademarks and domain names and demonstrates Congress’s willingness to ensure that American trademark interests are not affected by domain name registrations. And it has succeed in doing so without regard to ACPA’s antithesis with other international law instruments. 10.5 ACPA v. international institutions Under a general context, the intention of national laws is to serve the interests and protect the rights of their nationals within restricted geographical limits that determine the extent of authority over the disputing parties. The limits

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of ACPA, which was created to protect American trademark rights, to secure a safe electronic environment and to fight cybersquatting, were meant to apply only within the U.S. borders. At the expense of these values, and contrary to the territorially confined scope of trademark law, ACPA’s effects have allowed the extraterritorial reach of American law with its in rem provision violating trademark conventions and principles of international law. Professor Nguyen has shared these fears, arguing that the Act collides with the longstanding principles of the Paris Convention and those behind the jurisdiction to prescribe. For the registrant community, this translates to a further demise of their potentially legitimate rights.94 10.5.1 ACPA v. the Paris Convention The United States, alongside other countries, is a signatory state to the Paris Convention.95 The Convention constitutes the result of an international effort to align the national character of trademarks with the globalised nature of commerce. Essentially, the Convention provides any trademark owner with the possibility of international trademark protection on the basis that such protection is sought through separate registrations. In practical terms, this means that the Convention instructs trademark laws to open their registration system to foreign mark holders. Accordingly, the conditions and rules of registration are subject to the trademark procedures of individual member states.96 The Convention obliges every signatory state ‘to assure to nationals of countries of the Union an effective protection against unfair competition’.97 The Convention is self-enforcing in the sense that each country must incorporate it within its domestic legislation. In the United States, the principles and rules of the Paris Convention are reflected in the Lanham Act and any potential trademark registration ought to respect and comply with its provisions.98 The Paris Convention does not seek to surpass the fundamental principle of trademark territoriality. The Convention respects the registration regime of each nation and allows every member nation to become a signatory without having to amend any of its own laws. This is the only way the Convention can both prevent unfair competition practices and ensure consumer protection. Consequently, the United States – as a member of the Convention – should have regard to foreign trademark regimes and abstain from imposing American law upon legitimate foreign owners.99 ACPA’s in rem provision, however, as interpreted and applied by U.S. courts, contradicts the vision of the drafters of the Convention. It constitutes a demonstration of trademark authority over the Internet’s naming system and circumvents the basis of the Convention. International protection cannot be granted through one, single registration and no national interest can prevail over others.

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10.5.2 ACPA v. jurisdiction to prescribe Within the context of international law the only instance that could justify the application of any national law and – for the purposes of this book – the effect of ACPA and its imposition to foreign conduct is the jurisdiction to prescribe.100 As classically defined, jurisdiction to prescribe refers to the manner in which the international community makes its law applicable to the activities, relations, or status of persons, or the interests of persons in things …101 The Restatement identifies two potential situations where jurisdiction to prescribe would be apposite – the ‘effect principle’ and the ‘nationality principle’.102 Under the ‘effect principle’ extraterritorial exercise of U.S. law is allowed if the conduct abroad influences substantially trade in the United States.103 Under the ‘nationality principle’, jurisdiction is permitted when the activities and interests of foreign nationals have an impact upon the activities and interests of U.S. citizens.104 These two principles are internationally recognised and under international law all countries have them at their disposal.105 In line with the Restatement, jurisdiction to prescribe is a procedural device used only in particular circumstances and with ‘reasonableness’. The Restatement determines reasonableness by listing eight exhaustive factors, which set the jurisdictional limits of when a state is able to enforce its decisions on a foreign person or conduct.106 These eight essentials focus on the activity that takes place within the territory as well as the necessity of regulating such an activity. The Restatement indicates that jurisdiction to prescribe should only be applicable in cases where there is a need to regulate the activity of a person, which may have an effect upon the territory of the regulating state. These restrictions operate as a catalyst for claims arising out of domain name conflicts in that they sketch the legal boundaries of national courts. In theory, all domain name disputes could potentially generate incidents where a state might consider that the conduct of an international domain name registration threatens national interests and interrupts national commercial activities. Any nation state, accordingly, would have had a legitimate claim against domain name registrations that notionally impede national trademark interests and rights. This, nonetheless, would not only impact the structure of the domain name registration system but would equally have an adverse effect on the globalisation of trade and the steps towards the integration of commerce. For this reason, a set of strict criteria exists that bar the nation state from exercising power over foreign conduct and these mainly focus on the state proving that the foreign conduct has ‘substantial, direct and foreseeable effect’.107 The state needs to show how the external activity might pose dangers that are both substantial and upset internal arrangements. More rigorously, the state should also prove that the behaviour has a foreseeable effect upon

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its internal market. In the CNN case for instance, one could potentially argue that the effect of the domain name registration would disrupt the commercial activities of the Cable News Network company both directly and substantially within the United States, but it is certainly the case that the registration and use of the domain name did not exhibit conduct that could have a foreseeable effect, since the Web site was basically addressing a Chinese-speaking audience. To this effect, in rem jurisdiction contradicts the notion of the jurisdiction to prescribe. Where the latter is used in exceptional circumstances, ACPA’s jurisdictional provision becomes a normative paradigm within the American trademark law regime. A reasonable recommendation, therefore, would be to evaluate the accuracy of the jurisdiction to prescribe in domain name disputes by pronouncing additional criteria, where the state would have to take into consideration factors such as the target audience of the Web site. This is a sensible way to circumvent the international character of the DNS and the multiplicity of similar trademarks that currently coexist in harmony in different legal environments. If a domain name interrupts that harmony through its illegitimate nature, it is only tenable to allow a nation state to seek to regulate foreign conduct. In any case evidence so far demonstrates that Congress’ lack of sophistication smoothes the way for the U.S. legal regime to inflict U.S. trademark law over foreign registrants. 10.6 The incompatible status of gTLDs and national legislation It is unfortunate that ACPA has no counter-national legislation to compare itself with. Methodologically, an analogy with a similar statute could explain much of the instability that exists and elucidate a hypothesis on the applicability of the in rem provision. Standing alone, the Act manifests the problematic of mapping the gTLDs’ a-national character into national, restricted legal frameworks. gTLDs are meant to be resilient to national confines, considering that most of them do not follow the restrictions of ccTLDs. Seeking, therefore, to apply national legislation in the gTLD space, we are creating clusters of different laws, many of which may be incompatible. It would be interesting, for example, to see what would happen if ACPA were to collide with another national domain name statute. Such a scenario would certainly contain the force of ACPA and it would raise significant legal questions: Which statute would prevail? Would the U.S. regime accept the imposition of foreign trademark law to its legal territory? Which court would have jurisdiction to adjudicate the competing rights of two, equally legitimate, mark owners? Such questions are relevant considering that a noteworthy number of countries are currently building infrastructure,108 which is able to better support the wider use of the Internet and which will inherently generate their need to recognise domain names as valuable commodities.

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The current state of domain name regulation

To this end, ACPA demonstrates the familiar pattern of ‘trademark protectionism’ spread throughout the domain name regulatory environment. The Act is definitely more clearly structured and drafted compared with the ill operated UDRP, but still falls significantly short of procedural justice and offers an unconvincing approach to egalitarianism. The combination of the UDRP and ACPA, begs the following question: considering the problems of both systems, should we proceed to dismiss them entirely?

11 Applying the UDRP and ACPA in the right context

It is unfair to dismiss the entire body of domain name adjudication under the UDRP and ACPA. Both mechanisms have contributed significantly in identifying the malicious conduct of domain name registrations and have provided recourse to the trademark community. They have adapted to the online environment, seeking to provide definitive answers and ensure that the commercial aspect of the Internet follows rules, principles and norms similar to the ones applied in offline commerce. Regulatory practices, however, have resulted in the following paradox: UDRP decisions have made jurisdictional problems redundant, but in a very unsuccessful way, since the awards they produce are neither final nor binding upon courts. On the contrary, the codification of ACPA into trademark law has managed to serve its initial purpose, yet in an unorthodox way: the insertion of the in rem jurisdictional provision has removed issues of jurisdiction, achieving what the UDRP was meant to perform. Both systems have been canonised for managing to provide efficient answers to the problem of cybersquatting as well as that of abusive domain name registrations. Both systems have appeared to comply with the challenges of cyberspace and the way the Internet has influenced trademark law. Both systems, nevertheless, have also fed and supported the culture that sees domain names as second-class citizens. This is not surprising considering that both the UDRP and ACPA appeared at the same time and the forces conspiring to create them were also the same. U.S. Congress, the U.S. Department of Commerce and the trademark community (especially big corporations possessing numerous and famous marks) have been the brains that orchestrated the methodological approach that over the past ten years has instructed panels and judges alike to endorse the current climate of domain name adjudication. Both the UDRP and ACPA have left burning questions, concerning the interface of trademarks and domain names, unanswered. Under the current climate, domain name disputes are viewed under a restricted rationalisation, which promotes domain names as non-autonomous systems of appropriation

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The current state of domain name regulation

whilst their resolution depends solely upon arbitrary examination of the similarity of the name at issue. Both systems have minimised the criteria of trademark infringement, tarnishment, harm and abuse to the level of redefining much of trademark law. We are, therefore, facing a serious problem of contextualising the boundaries of domain name regulation. Peripheral issues of power, imperium and trademark proliferation have outshined the real potential of both systems. The aim of this chapter is to show that both mechanisms have the capacity to produce fair decisions, legitimate conclusions and well reasoned arguments and find their place in the field of domain name adjudication. The following case law represents a handful of different instances, where reason and fairness has triumphed. In the case of Strick Corporation v. James B. Strickland Jr,1 for instance, the court, elaborating on the power of famous marks, noted: Nothing in trademark law requires that title to domain names that incorporate trademarks or portions of trademarks be provided to trademark holders. To hold otherwise would create an immediate and indefinite monopoly to all famous mark holders on the Internet, by which they would lay claim to all .com domain names, which are arguably ‘the same’ as their marks. The Court may not create such property rights-ingross as a matter of dilution law. Trademark law does not support such a monopoly.2 Similarly, in the panel decision of Banco de Chile SA v. Eric S. Bord, Esq.,3 panellist Diane Cabell, expressing the dissenting opinion, accurately explained the nature of a trademark. In particular, she noted, inter alia, … the majority misunderstands the nature of a trademark. A trademark does not give the owner exclusive title to some verbal territory from which all trespassers can be barred. In fact, U.S. trademark law allows for many, many multiple users and a search of almost any common work in the USPTO database will reveal this. There are over 100 marks that include the word ‘Chile’. A mark owner has no right to exclude the world at large, only to prevent commercial use that is likely to confuse consumers as to the source or origin of goods or services. Knowledge of an existing mark is nothing more than knowledge of the claim of use in a particular location and for a particular purpose … it is not a bar to other legitimate uses. I cannot agree that constructive notice prohibits any other legitimate uses of a similar name.4 Moreover and already discussed, the incorporation and wide interpretation of the bad faith element constitutes an issue, which has been responsible for inconsistent decisions and for setting ‘bad’ precedent. Not all adjudicators though are willing to open Pandora’s box regarding the application of

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bad faith. In the case of Domain Name Clearing Company LLC v. FCF,5 the Court remarked that ACPA contains a safe haven, which states that bad faith intent shall not be found in any case which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.6 This safe haven provision, therefore, leaves a door open and provides substantial defence for those cases where the registration of the domain name incorporates the registrant’s good faith. This rationale, however, is not followed by the UDRP panels, who they tend to completely disregard the notion of good faith, despite its significance especially in civil law jurisdictions.7 In any respect and in the absence of good faith, establishing bad faith should nominally be the most stringent criterion in domain name disputes, since a party attempts to abuse the process and undermine the substantive rights of the other party. Bad faith constitutes, singlehandedly, the most critical element of both the UDRP and ACPA. In the aforementioned Banco de Chile case, one of the panellists elaborated on the concept, stating: The clear statement of Section 4(a)(iii) is that the Complainant must prove both bad faith registration and bad faith use. This distinction was not casually made by the UDRP drafters. It contrasts with the terms of U.S. Anticybersquatting Consumer Protection Act (which was being enacted at the same time as the UDRP), which allows a claim based on either bad faith use or bad faith registration. Twisting this very clear requirement on its head, the majority says ‘non-use’ can equal ‘use’ … Here, there is no evidence of any specific intent to prevent the mark owner from reflecting its mark in a corresponding domain name. To deprive evidence of intent from the simple fact of registration is to ignore the requirement of finding intent. To apply 4(b)(ii) in cases where, as here, the mark owner already has numerous domains corresponding to its mark is illogical. The mark owner has no right to every possible variation on its theme … it has a right to use its mark in some corresponding domain name, not all of them. Again, cybersquatting is an act that shows particular harm to the mark owner, not some general disadvantage.8 To a certain extent it can be, nonetheless, argued that ever since the two systems came into force, the number of cybersquatting cases has shrunk significantly. This result, however, has been achieved through decisions, which have often touched upon substantive issues of trademark law – issues that are not necessarily compatible with the rationale of the UDRP or ACPA. The result of this trend is that both systems over time became unpredictable. The zeal to protect trademarks online has resulted in an over-expansion of trademark law and the reordering of its philosophical justifications.

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The current state of domain name regulation

In the case of VeriSign Inc. v. VeneSign CA,9 the panel contemplated the boundaries and limitations of the UDRP, stating: This decision should not be understood as a substantive decision on the likelihood of confusion between the parties’ use, which will be a dispute for the courts to decide, taking into account the fact that the Respondent is converting its own company name in a domain name. Especially, the latter will be an important point of consideration for a court in the dispute between the parties. Such issues, however, cannot be resolved under the UDRP, but will rather have to be addressed in a court proceeding.10 To this end, panels have indeed demonstrated their willingness to comply with the restricted subject matter of the UDRP, which was never meant to touch upon substantive issues of trademark or any other law. In the case of Loblaws Inc. v. PresidentChoice.com11 the panel concluded: The Complainant apparently filed the complaint in the mistaken belief that the UDRP was designed to be a pre-emptive tool to protect distinctive marks from the threat of dilution. The Policy is much narrower: it reaches only bad faith domain name registration and those only when the registrant has no rights or legitimate interests.12 Following a similar rationale and aiming at limiting the subject matter of domain name disputes only to abusive domain name registrations, in Dow Jones & Co. Inc. v. Idea Studios LLC d.b.a. Envent, the panal noted: Decisions under the Policy are directed to the issue of abusive domain name registration and use. They are not directed to issues of trademark or service mark infringement. Without prejudice to the legal character of Respondent’s future conduct, that the Panel decides Respondent did not register the disputed domain name in bad faith in 1997 does not provide instruction regarding whether Respondent may now or in the future infringe on a service mark owned by Complainant. These are distinct legal issues. It is possible to register a domain name in the absence of bad faith, yet subsequently infringe a third party trademark or service mark.13 The fact that well reasoned UDRP and ACPA decisions exist should not come as a surprise. In both systems, there are adjudicators that not only seek to apply justice, but proceed to a critique of the system. In the case of The Toronto Dominion Bank v. Boris Karpachev,14 the panel observing the inequalities of the UDRP noted: There is nothing in the UDRP Rules about remedies available to a Respondent. This is inequality. The litigation process in the USA contains the possibility for defendant to make a counterclaim. As there is a

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possibility under the Rules of ‘submitting the dispute to a court’ – Rule 4(k), and provision for a panel to ‘decide a complaint on … principles of law’ – Rule 15(a), the Respondent has a legitimate right to make a counterclaim, proposing remedies he considers appropriate, namely cancellation of the domain name or, better, suspension until the dispute between the Respondent and the broker has been resolved.15 Of course, there are more cases that follow the same approach, but are overshadowed by the careless approach of all other decisions. As ICANN is preparing to introduce a new rapid suspension system (URS), we need to focus on advancing the UDRP to producing fair and balanced decisions. The aim is for such decisions to become the norm in the adjudication process of domain names. Adjudicators need to operate within their jurisdictional remit and within the boundaries of the system. We need to ensure that checks and balances exist, which are able to respond to the irregularities of those defecting it. This requires a solid ethical framework, which – at the level of the UDRP – does not exist. It is this book’s third and final concern.

Part III

Ethical problem

12 ‘Haves’ and ‘have nots’

One crucial issue that we have to explore is whether the UDRP’s favouritism towards the trademark community is consequential to the lack of a precise legal definition concerning domain names (intellectual problem) or is associated with the absence of ethical standards. Making this distinction is important, considering that – in the first instance – favouritism is incidental and peripheral to rules, which, although initially represent a fair consensus between ‘haves’ and ‘have nots’, it is to be expected that at some point they will result in favouring the wealthy and professional players (‘haves’).1 In this instance, favouritism relates to an attempt to structure a system that intentionally seeks to promote the interests of ‘haves’. Rule makers and their institutions can only attend to some possible reconfigurations, readjusting those rules, which have been skewed towards particular groups. In all other cases, the readjustment should come from the application of ethics. Within institutions of adjudication, ethics relate more to meta-ethical questions on justice rather to objective standards of excellence. Institutions of adjudication do not materialise in default; instead, they are subject to individual standards, serve specific needs and address discrete questions. In the same way that not just one, fixed, type of institutional structure exists, ethics fluctuate according to the needs of the institution. The idea, therefore, that ethics are not subject to objectivity, provide an institution with the opportunity to coin ethical standards according to certain demands and, consequently, provide for a conformist environment. Addressing, therefore, ethical concerns is pivotal, in particular when considering that institutions are susceptible to exogenous socio-legal influences and endogenous political pressures. In this context, it is often observed that the rules of dispute resolution mechanisms tend to favour certain, politically eminent groups and alliances – similar to the way the rules of the UDRP tend to favour the trademark community. Does this insinuate, however, the absence of ethics? The answer should not be forced to the negative but it should contribute to the dialectic that, since institutions are prone towards this kind of behaviour, the presence of ethics is key in crystallising the degree of injustice that takes place within any given institutional arrangement.

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The current state of domain name regulation

In this context, Marc Galanter2 has confirmed the thesis that the rules of a system … tend to favour older, culturally dominant interests. This is not meant to imply that the rules are explicitly designed to favour these interests, but rather that those groups, which have become dominant have successfully articulated their operations to pre-existing rules.3 Within such an institutional framework, there can be instances where institutions and adjudicators take a passive position – what Black refers to as ‘reactive’.4 Galanter’s accurate observations exhibit generic weaknesses, relating to the way institutions and their adjudicators approach a system where claimants are afforded more advantages in the form, for example, of access to information, the opportunity and flexibility of dealing with issues concerning the costs as well as the ‘skill to navigate restrictive procedural requirements’.5 For Galanter, the question, whether favouritism becomes problematic, depends on the structure of the system, since the broader the delegation to the parties, the greater the advantage conferred on the wealthier, more experienced and better organised party.6 It is, therefore, not only socially significant but also ethically inescapable for institutions of adjudication to operate under an ethically solid framework. After more than ten years of domain name adjudication, the UDRP fails to detail the ethical standards which may account for much of its body of decisions. Which ethical standards – if any – had the drafters of the UDRP in mind? Under which ethical framework do UDRP panellists operate? Which are the ethical criteria that should apply in order for the UDRP to mutate into a normative, rule-based, self-sufficient mechanism, like lex mercatoria or arbitration? Given the egalitarian ethos of democratic rule making, institutions of adjudication should promote rules and procedures that meet and adhere to axiomatic standards of procedural fairness. It is an issue of practical consideration to structure fair and balanced mechanisms, since systems are, in any event, procedurally vulnerable. Therefore, systems of adjudication need to be transparent, demonstrating their effort to provide rules with clarity and with a sense of moral responsibility. As long as systems submit to this systematic hypothesis, they will succeed in structuring a fair process [that] treats all parties equally and respectfully, gives each party an appropriate degree of voice and influence, and establishes clear procedures for collective decisionmaking.7 For fairness, however, to have any substance, the system should promote a lawful model. One of the criticisms against Internet regulation is that it

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has reprioritised the criteria behind rule making processes seeking primarily to satisfy political interests and ease the concerns of economically dominant groups.8 As Coglianese notes, ‘a consensus among a select group will not always equate to socially optimal policy’.9 There has always been a fear that the Internet might provide the appropriate circumstances for certain groups to become more vocal and influential at the level of rule making and decision-making. Equal concerns have been expressed over the possibility that public administrators might lose sight of their initial regulatory obligations and become ‘captured’ by the private sector.10 For this reason, compliance with lawful standards is both ethically indispensable and institutionally imperative. Emanating from the thesis that ethics play a fundamental role in the adjudication process, I submit to the following chapters how the application of ethics in the UDRP is insubstantial. Given the existent gap and learning from the omission of ethics in domain name adjudication, I attempt to suggest some justice-compliant features for the domain name óς (polis). 12.1 Ethical concerns in the context of the UDRP Within the liberal state, administrative decision-making necessitates that decisions affecting the legal rights of individuals should comply with minimum ethical principles. These principles are in place to certify that the decision-making process and the decisions themselves are fair, reasonably balanced and legitimate. To achieve these ideals – especially, in the context of hybrid decision-making – it is essential to produce mechanisms and procedures that the parties feel comfortable with and can trust. At the same time, we need to ensure that such systems are able to provide the participants with at least basic safeguards, such as, for instance, that disputes are adjudicated by impartial decision-makers or that the system intends to treat the parties under equal terms. Ethics, nonetheless, cannot serve their intended function if they are not evaluated within a wider rule-based context and are not associated with a set of basic principles of justice. To be more precise, in the case of ICANN’s UDRP – and more generally in the environment of domain name regulation – ethics will be able to play their fundamental role only if, at a preliminary stage, the regulatory framework of domain names is justly construed. For this reason, ethical standards (as integrated within a mechanism) can ensure a balanced and nonpartisan approach that serves the parties’ needs and ensures the system’s legitimacy. Such ethical criteria assist in the shaping of a concrete regulatory environment, ease the concerns relating to the division of shares in social benefits and burdens and rectify any injustice – procedural and/or substantive – that takes place within the domain name óς. Ethical standards are, therefore, concerned with the means through which social groups, such as ICANN, institutionalise the application of the criteria of corrective and distributive justice.

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The current state of domain name regulation

Any mechanism that seeks to adjudicate the legal rights and interests of individuals should have in place strict ethical parameters that ensure the correct application of natural justice. Generally speaking, every regime that seeks to deliver justice should adhere to the principles of natural justice, seeking to provide a balance between the correct application of rules and the fair making of decisions. Such principles are vital to the extent that they provide guidelines of how legal order and justice can be achieved and, normally, they incorporate notions such as equality, fairness, impartiality, fair hearing and discovery. Despite the fact that mechanisms of adjudication ought to comply with these ideals, this chapter will demonstrate that the UDRP lacks basic ethical axioms and the Policy’s commitment to ethical norms is more of an ‘acoustic agreement’.11 The conclusions of this chapter are somewhat disconcerting: the basic, fundamental and ingrained axioms of natural justice and ethics are not inherent in the current framework of domain name regulation. It is indeed the case that the application of ethics can work as the catalyst towards a system’s efficacy, as it exemplifies the intention of the system to apply justice; it can also guarantee the system’s capacity to evolve into a solid legal order. It is, therefore, this application of ethical criteria that creates a web of trust, ensures fairness and demonstrates the competency of the decision-making process. In such a context, participating actors are aware that the procedures in place are fair and that their rights will be adjudicated under an environment that consciously seeks to apply justice. The evaluation of the role of ethical standards within the UDRP will demonstrate the way in which concerted reflection on such an ambiguously constructed Policy raises questions and identifies issues that should have concerned the drafters of the Policy. Balancing the rights and interests of individuals constitutes an essential component and it should be the primary concern of every decision-making mechanism.12 When this fails, however, this desired balance cannot be achieved; and, this is precisely what has taken place within ICANN’s Policy. 12.1.1 Equality At its most basic procedural level, the UDRP is a deeply unequal statute, overtly promoting the interests of trademark owners. This should not come as a surprise, considering that the UDRP Rules constitute essentially an unoriginal version of trademark law principles, and thus, the substance and process of the Policy are configured towards the protection of trademark rights. Very rarely will the Policy attempt to recognise the legitimate rights of domain name registrants. Although certain procedural aspects of the Policy can be substantiated on legal priority,13 in principle the structure of the UDRP and the control trademark owners have upon its procedures designate a profoundly

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unequal environment. All of the Policy’s rules are skewed towards satisfying trademark owners. Only trademark owners, for example, have the ability to initiate a UDRP administrative procedure,14 panels are instructed to apply any rule of trademark law they deem applicable,15 whilst disregarding the interests of registrants.16 Rawls would reject this view as ‘surely incorrect’,17 since under this understanding domain name registrants are unequal counterparts in an institutional arrangement of unequal distribution of shares. In effect, any institution should be ethically supreme in a sense that ethical standards should have normative precedent to other non-ethical ones. As long as the UDRP fails to acknowledge ethical priority as a normative standard, the abstract notion of legal priority will impair the legal rights of domain name holders. Generally speaking, the Policy uses language that affects the procedural rights of the parties at a different level and degree – what Elizabeth Thornburg has referred to as the ‘asymmetrical paths’ of the Policy.18 Despite the fact that both the complainant and the respondent have to abide by the same set of rules, in practice these tend to favour only complainants. More precisely, according to the Policy, the time to challenge a panel decision is ten days for both parties;19 this seems to be a uniform procedural rule. This rule, however, is arbitrary, as it does not impose the same amount of procedural burden on to both parties. The fact that a complainant never had control of the domain name means that this time frame becomes irrelevant, if the complainant loses the UDRP action. On the contrary, for registrants this rule is enforced, imposing procedural restrictions and jurisdictional limitations. In a similar vein, the Policy, as well as the supplemental rules of the ICANNaccredited dispute service providers, question the nature of the UDRP as an equitable set of rules. Let’s take for instance, the unequal time-restrictions the Policy has in place, which, again, attack only domain name holders. Under the UDRP principles, the complainant’s submissions are not subjected to any time limitations, thus logically, will be more legally articulated and intelligent compared to those of registrants, which are subjected to a strict time frame confined in twenty days.20 Realising this procedural inaccuracy, various centres have introduced in their supplemental rules clauses that seem to be capitalising on registrants’ need to ‘buy’ some time, extending the twenty-day time frame. The National Arbitration Forum’s (NAF) Supplemental Rules, for instance, acknowledge the possibility for the respondent to submit a response after the twenty-day deadline and only with an additional financial burden.21 These procedural flaws account for much of the UDRP’s unequal status. They exemplify the system’s weakness to formulate rules and procedures that respect and, subsequently, recognise registrants and trademark owners as equal counterparts. If a system that is as pervasive as the UDRP is so evidently unequal, then legal balances are inevitably shaken, especially as trademark owners may seek refuge to ICANN and the UDRP for substantive legal determinations.

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The current state of domain name regulation

12.1.2 Fairness (impartiality/independence) Impartiality constitutes a manifestation of fairness and relates to the general idea that for a system to be fair, it must be firmly rooted in a framework of formal requirements about how rules are made, interpreted and applied.22 The degree of this type of procedural fairness consists of factors, which concern the rules, their symbolic character and their application in a consistent manner; it also relates to the institution’s capacity to ‘treats like cases alike’. Finally, it means that appropriate checking mechanisms are in place, capable to restrict the adjudicators’ discretionary powers and to ensure the consistency of the emerging body of decisions. In this context, consistency becomes the means through which we ensure that the mechanism operates under a coherent structure. To achieve this target, we need to have appropriate tools that will control the conduct and discretionary power of panels. Unfortunately, the UDRP fosters an inconsistent environment,23 which allows the wide interpretation of its rules, especially in relation to the bad faith element and it also lacks an internal appeals process that would attenuate much of the discretion exercised by UDRP panels. Under the current regime there is no way to challenge any decision either to correct the outcomes in individual cases or to reconcile splits and create a common ground of what will later become the ‘law’ of ICANN.24 Panellists do not submit to checks with both ICANN and the disputes service providers waiving any responsibility on how the decisions are reached or the degree of their contribution to the procedural unfairness of the UDRP. What do we mean though when we expect panellists to be in the position to accept their share of responsibility? Generally, we anticipate that panellists will not abuse their position by producing biased decisions or fail to respect the principles of impartiality and independence. Tribunals should inherently be and remain impartial throughout the course of the adjudication process.25 This is a concept that has been embraced and accepted by all societies, from modern European nations to traditional African and ancient Greek and Indian civilisations.26 For some, fairness should lie within the idiosyncrasy of adjudicators, which in turn calls for audi alternam partem.27 Within this context, fairness pre-empts obvious transgressions, such as providing arbitrators with a direct stake in the outcome of the case or not activating checking mechanisms that will allow the control of biased behaviour. Arbitrators, panellists, mediators, negotiators, judges and, generally anyone involved in the adjudication process, have been assigned the duty to maintain professional impartiality. Impartiality constitutes an integral feature of every institution and adjudicators should strive, within the context of their professional ethics, to reach decisions that are unprejudiced. In this context, adjudicators are truly impartial, if they can demonstrate that their

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conclusions are independent of any bias and they remain unswayed in their judgments by any interest other that of delivering justice. Concern over the impartiality and independence of UDRP panellists has beset the Policy’s procedural body ever since the first UDRP dispute was decided – almost ten years ago. This concern has been consequential to the apprehensiveness over the unsteady legitimacy of the UDRP’s drafting process and the trademark-oriented wording that was irrevocably integrated in its charter. For some, the ICANN process demonstrates how bias – direct or indirect – can easily infiltrate a dispute resolution settlement mechanism. In this context, by ‘direct bias’ we mean the association the adjudicator has with one of the parties or those circumstances indicating that the panellist might indulge in some financial interest; in most such cases, the tribunal will succeed in controlling this behaviour. At other times, bias is indirect growing out of ‘such subtle heuristics as cultural and professional biases’.28 Generally, a mechanism where the participating actors do not share the same amount of privileges when it comes to the choice of the provider may involve an understated kind of direct bias. Traditionally, reliable dispute resolution providers will have well established codes of ethics with which adjudicators are obliged to comply and instruct them to abstain from deciding cases where any direct conflict of interest with any of the parties can be identified: In this era of entrepreneurial ADR, the arbitrator often does have a subtle but substantial economic interest in the outcome of the case in that his or her ability to get future disputes depends, at least in part, on party satisfaction.29 In ICANN’s dispute resolution regime, only trademark owners reserve the right to initiate a domain name dispute before an accredited panel.30 As long as dispute service providers are dependent on getting their fees from Complainants, and thus have an interest in keeping Complainants happy, we are in danger of having a biased system.31 On a different note, indirect bias involves elements associated with the adjudicators’ profile. Under a general context, arbitrators – unlike traditional adjudicators – are known for their substantive expertise in a specific, often narrow, area. Such expertise is considered an asset, since it contributes towards more accurate and articulate decisions; however, ‘with expertise bias is often inevitable’.32 Within the regime of securities arbitration, for instance, it has been identified that 89 per cent of the arbitrators are white males with an average age of sixty years, many of whom have had an expertise in the brokerage industry.33 In practice, this means that former brokers will most likely be in favour of the broker’s side in the dispute; in health care arbitration it would not

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be surprising for doctor-arbitrators to be in favour of the doctor’s side in the dispute;34 thus, in trademark disputes, it must not be startling for arbitrators with trademark expertise to be in favour of trademark owners. This is somehow inevitable and to a certain extent tolerable considering that traditional arbitral processes have in place internal and external checking mechanisms that are able to control and address issues of impartiality. If this is the case, what are the credentials of the UDRP panels and is it possible for them to remain neutral in trademark disputes? Does ICANN’s Policy take into consideration the possibility that the rules of the dispute resolution providers for panellists’ accreditation might invite some form of indirect bias? It appears that most of the UDRP decision-makers are practicing intellectual property lawyers and, to this end, Professors Dinwoodie and Helfer assert: It is at least an open question whether decision-makers from the private sector can sufficiently distance themselves from the milieu in which they practice to self-limit their own powers and develop balanced norms for the trademark-domain name interface. This is particularly true if panellists are permitted to trade on their UDRP expertise by representing trademark owners in future domain name disputes before the same dispute settlement provider.35 In light of the fact that the UDRP lacks any substantial internal and external checking mechanism to control the behaviour of panellists, it becomes quite predictable how certain panellists will approach the disputes that appear before them. For example, in the UDRP case concerning the domain name , the Chilean bank was represented by Marino Porzio, the same individual who reached the ill judged conclusion in the case, and quite predictably assigned the domain name to the trademark owner, even though the bank’s claims had serious legal gaps that could have considerably weighted in favour of the registrant.36 In spite of the absence of conscious animus, it seems most likely that panellists approach the UDRP process under a specific philosophy based on their experiences and subjective interpretations; such an approach not only affects the cases at an individual level, but, at a more collective level, it institutes a bad precedent, which affects the UDRP’s body of cases.37 Additionally, the UDRP’s accompanying documents provide no guidance as to how the providers should proceed to assign their arbitrators – an omission that throws off balance the uniformity and consistency of the mechanism and challenges the willingness of the UDRP to be seen as an impartial system of adjudication. Each dispute resolution centre provides a list of approved panellists, but the way panellists get assigned to individual cases – especially those involving one-member panels – is not disclosed. Theoretically, this procedural imprecision allows centres to assign panellists according to

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loose criteria and even proceed to advertise themselves as complainant or respondent-friendly.38 This constitutes a form of indirect bias and, under the current regime, it is highly questionable whether a party will be able to challenge and prove that a panellist has not been acting independently. This problematic is further intensified by the fact that each dispute resolution provider has its own supplemental rules concerning panel challenges and a distinct level of diversity also exists on the grounds under which a challenge might be brought. The National Arbitration Forum (NAF), for instance, lists a set of specific circumstances for disqualification,39 whilst WIPO promotes its own loose criteria.40 It is really a question why ICANN, seeking to maintain a uniform system for domain names, did not subject its centres to common rules and principles, ensuring a more robust framework for panel independence. Under the current environment, it is highly unlikely that any of the dispute providers would disqualify a panellist from deciding a case, unless there was an obvious and overt case of bias. Similarly and after a proceeding has been terminated, none mechanism exists for allowing parties to initiate complaints regarding a particular decision-maker.41 In August 2001, Professor Michael Geist undertook a study concerning the inadequacies of the UDRP.42 Although the study is outdated, it still is worthy of consideration as a way to demonstrate the systematic unfairness of a system only two years after its operation. When it comes to bias, the Geist study reached a troubling conclusion. The identity of the arbitrators contributes significantly in determining and settling domain name disputes and case allocation appears to be heavily biased towards ensuring that a majority of cases are steered toward complainant-friendly panellists.43 The study further showed that panel allocation is not random with some panellists on the approved list having never served and with others sharing a significant amount of case allocation. These findings are, of course, only indicative of lack of fairness but, equally, they cannot be easily dismissed. It is true that the UDRP has managed to provide quick solutions to domain name disputes. It is also true that the system is still raving over its success in alleviating the problem of cybersquatting. However, the UDRP still remains an one-sided, highly biased, mechanism. 12.1.3 Lawfulness In the context of dispute resolution settlement, lawfulness relates to the assumption of responsible behaviour during the adjudication process. A culture encouraging lawfulness will normally ensure that meaningful hearings and discovery constitute key components in the adjudication process. It is the responsibility of any system of adjudication to structure processes and institutionalise rules that avail the disputing parties in their legal attempts and allow them to enjoy due process.

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Within such an environment, meaningful hearings, assisting the parties in demonstrating their arguments, constitute an essential feature of natural justice. Any system of adjudication is required to have in place appropriate tools that allow the disputants to present their arguments. This means, for instance, that participants are given ample notice of the dispute and a fair opportunity to present their arguments. This necessity to provide meaningful hearings is premised upon the idea that every system needs to design procedural guarantees that will, subsequently, ensure the equal distribution of rights. The UDRP, however, fails to adhere to this simple requirement. Procedurally, ICANN’s Policy does not provide any leeway for meaningful hearings and presents a poor model concerning the way decisions are reached. UDRP panel decisions are based on and they constitute direct judgments of a set of documents, which contain the parties’ submissions. The pleadings are not made under oath, but under an uncertified presumption of good faith, which, nonetheless, should not be considered sufficient to guarantee the parties’ honest intentions. Concomitantly, the Policy does not penalise deceitful behaviour, lacking any rules or provisions addressing the situation where any of the parties produces false statements.44 Moreover and as domain name disputes intensify and expand beyond simple cybersquatting issues, there might be instances where adjudicators will need clarifications that go beyond the parties’ contentions. The UDRP does not have a mechanism in place to accommodate this possibility and any kind of a meaningful hearing is strangely alien. Ironically, the rules do not allow the use of technology, through videoconferencing, instant messaging services or even telephone conferencing, although it can definitely be argued that the decision-maker would benefit from such alternatives. Forbidding these simple tools might contribute towards the speed of the process, but by no means does it enhance the confidence of the parties or the lawfulness of the system. WIPO has actually stated that the ICANN model would be inadequate for those domain name disputes that are more fact-intensive.45 In particular, the system is totally inadequate to deal with issues of anti-competitive practices or market monopolies, which, nevertheless, can create controversy in the disputes between trademarks and domain names. It is important, therefore, that the system mutates in an orderly and credible fashion, aiming at demonstrating its ability to adapt to novel challenges, whilst showing a certain degree of responsibility in providing answers that affect the rights of the parties. Subject to specific circumstances, for instance, any dispute resolution model should afford its parties cross-examination alternatives or allow the decision-maker to ask for tangible evidence when such action is required for the delivery of justice. Especially in the context of online disputes where issues of identity and trust play such a pivotal role, thought needs to be given to the means through which the average (claimant) may submit evidence to the mechanism (certainly not ruling

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out of ordinary e-mail) and how a mechanism may obtain credible testimony from witnesses (including how and when electronic ‘witnesses’ may be questioned).46 To this end, even within the restricted and unlawful context of the UDRP, decision-makers have come to realise the Policy’s impotence to deal with issues of credibility. Responding to a complainant’s request, who was seeking to establish that the domain name registrant was acting in bad faith, the panel considered that this degree of credibility check could only be resolved in a forum, like the United States court, that permits for more probing, searing search for truth. This proceeding is not conductive to such credibility determinations given the lack of discovery and, in the normal course, the lack of live testimony.47 Discovery, therefore, constitutes another essential feature of lawfulness in a sense that disclosure of information between the parties ensures a certain degree of fairness in the decision-making process.48 Discovery invites the notion of preserving a healthy environment, where parties can exchange and share information; it also serves the mutual trust of the parties, which, in turn, will enhance representation.49 At its most basic level, discovery precludes the hiding of information, which might be important and might influence the outcome of a case.50 It basically expresses the esoteric need of law to bring parties together in a manner that should allow them to understand the nature of their conflicting claims. The UDRP, therefore, is problematic for cases where the parties would benefit from the exchange of information. In arbitration, for example, information sharing means fairer decisions as the parties become acquainted and trade detailed submissions that may result in avoiding confrontation.51 We always need to bear in mind that essentially every system of adjudication should strive towards bringing the parties closer than placing them at opposite ends. Discovery facilitates this functional utility, as it does not prioritise the parties according to criteria of power. It is important to understand that to the extent that the private system’s inquiry is less thorough, the private system permits the underlying power of the stronger party to persist undeflected.52 Within this lawless environment, the ICANN panellists decide their cases only in reference to the submissions of the parties. Although in theory panellists have the discretion to request further information, in practice this is unlikely considering the need for fast decision-making. The operation of the Policy does not allow the complainant to understand the existence of any of the respondent’s legitimate interests. It equally prevents the respondent to comprehend the type of infringement committed. The UDRP provides

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a hostile environment for both parties, but even more so for domain name registrants. 12.2 The domain name óλις Justice belongs to the óς; for justice is an ordering of the political community and justice is a judgment as to what is just. (Aristotle, Politics53 ) Taking into consideration the indisputable absence of ethical references and before proceeding in suggesting alternatives for the recalibration of the UDRP, we need to provide for an environment based on justice. With this in mind, my effort in this chapter will focus on the construction of an environment, which will ensure that the ethical concerns the UDRP failed to address will now complement the Policy’s procedures. For Aristotle the Greek óς represented a special kind of association, a political community, which was able to embrace the citizens and aimed at achieving good in its greatest possible form. For the purposes of this book, and based on the previous analysis, the domain name óς is the structured cosmos of the DNS, a place where domain names form the skeleton and constitute the essence of the community. For the domain name óς to function effectively, it is necessary that its structure is all-embracing, it considers the whole greater than the sum of parts and it aims at righteousness. What does this mean? Within the restricted context of domain names, it means the appreciation of domain names as autonomous legal entities rather than objects of manipulation by the trademark regime. The same way every community is organised by some form of ‘constitution’, regulation of domain names is exemplified in ICANN’s UDRP – which, despite its lack of constitutional relevance, it is currently considered as the point of reference in the domain name adjudication process. For this reason, compliance with justice is key, if we are to structure regulative models and accept their conclusions as canonical. At the same time though, it is important to understand that justice, as an institution consisting of subjective criteria, is open to discretionary interpretations and open-ended rationalisations and, thus, any attempt to define these should respond to the needs of every mechanism. Overall, justice should not be detached from society and should serve specific needs. Taking into consideration, therefore, that justice validates a system’s autonomy to regulate the legal rights of individuals, which interpretation of justice fits better in domain names? The current arrangement of domain names promotes justice as a concept disengaged from society and limited in serving only a small community – the trademark community. We need to establish minimum criteria that will guide the discussion on how the domain name adjudication framework should be structured. These criteria can relate to views based on ‘justice in relation to property, ‘lawfulness’, ‘equality’ and

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‘fairness’ and aim to account for the effectiveness they could provide, if they were to be applied in the environment of domain names. I will now turn to discuss their relevance in the regulation of domain names. Although Nozick’s view on social justice in property is in relation to the role of the state, his thesis is, nonetheless, relevant in the context of an institutional private arrangement concerning property rights. Three critical questions constitute Nozick’s primary focus: justice in the context of the initial acquisition, justice in the context of succeeding transfers and, finally, justice relating to redress mechanisms for the violation of the first two.54 What this means for the regulation of domain names and how is it relevant? Fundamentally, Nozick follows Locke’s understanding of owning the products of our labour and having the right to appropriate what is not owned, provided that any such appropriation leaves ‘enough and as good’ for others.55 Locke argues that the right to own, albeit paramount, should always be limited to ‘the subsistence level’.56 One should be allowed to own and accumulate property as long as her actions do not oppose justice. This answers Nozick’s question concerning the limits of property rights derived from one’s labour. Should a can of tomato juice spilled into the ocean, Nozick characteristically asks, make the ocean my property? This question is particularly relevant in the context of the relationship between domain names and trademarks, where one must define the dividing line between these two rights. After all, domain name holders are equally labourers and their use of the domain name can add substantial value. In this context, justice protects only what is lawful. Lawfulness is what Aristotle considers as general justice, which is concerned with the common good of the community.57 In Politics, Aristotle refers to justice as being a communal virtue, specifically claiming: Similarly, then, we shall say that virtue has a just claim in the dispute since [general] justice, we say, is a communal virtue, which all the other virtues necessarily accompany.58 Within this framework of general justice, the realisation of the communal virtue of justice can only derive from the end of law. As Aristotle graphically phrases it: The laws aim either at the common benefit of all, or at the benefit of those in control, whose control rests on virtue of some other basis.59 Laws and policies facilitate human interaction and set objective parameters of action or inaction. They have a constraining effect on individuals and seek to ensure equilibrium within a widely unbalanced universe of authority and submission. How good policies and laws perform this function is highly problematic. We need to bear in mind that they constitute objects of human creation and, thus, are not immune to subjectivity and bias. As ideational

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entities, however, they are highly redemptive; they hypostasise the perception of individuals, who depend on them to pre-empt actual or potential harm; they, finally, symbolise communal happiness and, at a minimum level, they represent lawfulness. The UDRP – as a quasi-legal edifice – falls short of this sense of lawfulness. As discussed, the alternative it provides epitomises a loose cannon of discretionary rules, wide interpretations and bias. The Policy is hostage to the vulnerabilities of those who fashioned it – who, in any case, are susceptible to imperfection – and fails to provide a ‘lawful’ set of rules that would reinforce communal standards of obligations and would foster safety and trust. It is indeed true that ‘as soon as a rule is invoked in order to short circuit the process of individual confrontation with reality, morality [is] abandoned’.60 That is the point where ‘lawfulness’ is apposite, as it assists in inducing justice. If those who drafted the rules did so without embodying ‘lawfulness’ in their policies, how can we expect disputants to adhere to it? ‘Lawfulness’, therefore, partly depends on the esoteric need of its subjects to adhere to its moral conviction. To a certain extent, this is further dependent upon ensuring that the regulatory environment in place is arranged in a fashion that promotes the equal participation and treatment of the parties. Aristotle discusses equality as a central theme in the Politics and relates it to the controversy between the democratic and oligarchic factions – basically, asking what constitutes a just regime. For Aristotle this controversy is contingent on the distinction between proportional and arithmetical equality. The oligarchic view is based on the inequality of property and supports the hypothesis that political power should be allocated in proportion to wealth. In contrast, the democratic position is based on the equality of free status. Since all free men are equal with respect to their freedom, they all are entitled to an equal share in power – a proposition that relates to the rule of the majority.61 Within this premise, equality denotes a qualitative relationship with prescriptive use, which refers to the normative conviction that parties should be equal before polices and laws that directly affect their status. Equality is an incomplete predicament often followed by a tripartite question: equal in relation to what, when and whom? This constitutes equality’s ethical conviction. For if one addresses these questions, one can orchestrate a framework of tertium comparationis – an environment of precise and concrete rules within which equality can operate efficiently. It has been repeatedly stated that the current status of the domain name óς is characterised by the proliferation of oligarchic factions, whereby property is allocated according to trademark standards, while the predominance of trademark owners is a direct consequence of their political power and wealth. The main focus is on seeking to deviate from this oligarchic scheme and design a framework where both trademark owners and domain name holders will have an equal standing before judges and UDRP panels. Appreciating, however, that equality denotes variable manifestations, in the UDRP it should be interpreted as an equal treatment before laws and rules.

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Given the abstract legal nature of domain names, however, it is advisable to address the inequalities of a system and, mainly those under the social justice philosophy. Rawls’s thesis on justice consists of two complementary principles affecting the participatory rights of the parties to an institution. The first one holds that every individual within an institution or affected by it has an equal right to the most extensive liberty, considering that such liberty is open to all and enjoyed by all interested actors. The second one views inequalities, as established by the institutional arrangement or fostered by it, as arbitrary, unless and within reason it can be suggested that they operate to everyone’s advantage and provided that any opportunities present are at everyone’s disposal. In this context, inequalities are functional imperatives that seek to stimulate the institutional structure and aim at improving the parties’ expectations. If the system fails to use them to its advantage – in other words when inequalities stop serving common interests – they transmogrify into injustice.62 This is conclusive for the UDRP as is conclusive for any other institution. Inequalities between domain names and trademarks are logical to the extent that trademarks constitute distinct intellectual property rights, whilst domain names have not yet reached a similar level of legal recognition. And, the UDRP’s problematic is that it failed to use this degree of inequality to establish norms that would contribute towards a more impartial set of rules. Instead, the Policy’s normative principles have only intensified the cavity of the existing schism. In order to use inequalities for the system’s benefit, however, we need to have a mechanism that is fair. If the structure is unfair, then problems are inevitable. Let’s take the relationship between trademarks and domain names once again. By defining the functional equivalence between the two identifiers discretionarily and by inserting such subjective interpretations in its ‘constitution’, the system fails to recognise the real worth of the right possessed by registrants. On the other hand, acknowledging that the two rights run in parallel autonomous legal channels, which means that domain name holders possess legally enforceable rights, constitutes the starting point in setting the parameters of ‘fairness’. This is not an easy task considering that failure to identify an individual’s worth can lead to unfairness, Aristotle’s εóε ´ ( pleonexia), which can be interpreted as the desire to have more of some socially available good and is also linked to greed or acquisitiveness. For Aristotle, εóε ´ is the root of social unrest. In the Politics, specifically, he considers the desire to have more external goods and its effect on social harmony: The principal general cause of people being in some way disposed to change their constitution is the one we have in fact already mentioned. For those who desire equality start faction when they believe that are getting ’´ ´ o ε ε ], even though they are the equals of those who are less [ε´   getting more [εoε oU˜ ]; whereas those who desire inequality – that is to say superiority – do so when they believe that, though they are

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The current state of domain name regulation ’´ unequal, they are not getting more [´εoε ε ε ], but the same or less ’´ ’´ ’´ [ o  ε o]. Sometimes these desires are just, sometimes unjust. For inferiors start faction in order to be equal, and equals do so in order to be superior. So much the conditions of those who start faction. The things over which they start faction are profit, honour and their opposites. For people also start faction in city-states to avoid dishonour and fines, either for themselves or for their friends … For people are also stirred up by profit and honour not simply in order to get them for themselves, which is what we said before, but because they see others, whether justly or unjustly getting more [εoε oú ς].63

To this end, when Aristotle mentions ‘the things over which they start such faction … friends’, he raises another important point. There can be cases when officials use their position in the government to obtain more of these social goods. When officials use their office as a means to ravage the wealth of others, they act out of εoε ´ .64 In Politics, Aristotle discusses the effects of when officials behave in such a manner: The effect of arrogance and profit, and the way the two operate, are pretty much evident. For when officials behave arrogantly and become acquisitive [εoε oúω], people start faction with one another and with the constitution that gave the officials authority. Sometimes their acquisitiveness [εoε ´ ] is at the expense of private properties, sometimes at the public funds.65 The ironic analogy between trademark owners and the arrogant officials is apparent in this regard, and the only way to address it is through the rule of law. If Aristotle were to judge the actions of trademark owners, he would conclude that their arrogance is based on claims of desert and entitlement, which, in any case, constitute direct results of their titles. However, the argument over what people possess is also contingent upon the question over what people ought to possess under an ethical view. To this end, Rawls rejects natural liberty and liberal equality claiming that the assets and attributes they reward are arbitrary to the extent that they cannot provide conclusive criteria for possession. Rawls believes that under these principles, individuals are given an unfair priority by enjoying natural and social endowments that do not belong to them – at least according to a strict, constitutive sense of possession. To be sure, Rawls does not oppose claims of possession but the way these are exemplified within institutional arrangements and the subsequent claims they give rise to. For Rawls, possession does not equate with automatic entitlement; rather, it substantiates the role of certain individuals (the ones who are in possession of rights and assets) as guardians and repositories of the assorted rights that are the subject of the institution’s operational charter. Unless we acknowledge, therefore, the possible arbitrariness of the rights of possession, Rawls claims, we will

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confuse such rights as belonging to certain individuals according to a strong, constitutive sense and we will, subsequently, ground these on distributive shares. This constitutes a mistaken interpretation of fairness and permits a subjective and arbitrary connotation of distributive shares, which nonetheless is ethically unfair.66 Expressed in terms of rewards, it is to be accepted that under this scheme people are receiving rewards that, in reality, they are not entitled to. Although some may consider that rights claimed outside an institution can be equally claimed within a new one, this approach is inherently mistaken: it seems to be one of the fixed points of our considered judgments that no one deserves his place in the distribution of native endowments, any more than one deserves one’s initial starting place in society. The assertion that a man deserves the superior character that enables him to make the effort to cultivate his abilities is equally problematic; for his character depends in large part upon fortunate family and social circumstances for which he can claim no credit. The notion of desert seems not to apply to these cases.67 This is, indeed, true in the institution of the UDRP, where trademark owners claim their rights on the basis of prior rights claimed within a different environment. In the context of the UDRP, however, these claims can potentially be more arbitrary than not and, hence, any such claims cannot derive automatically based solely on criteria of prior possession. As far as ICANN’s Policy is concerned, trademark owners are primarily guardians as opposed to possessors, since substantively only cybersquatting gives them rights of possession. On balance, any ‘deserts’ that trademark owners might enjoy within the UDRP should be proportionate to their trademark right as ‘desert without a basis is simply not desert’; but, equally, ‘not any old basis will do’.68 Acknowledging, therefore, the superiority of trademark owners over their marks according to obsolete criteria is unfair and, thus, ethically objectionable. To this end, the UDRP’s institutional arrangement presupposes that established trademarks rights should be given priority over new ones and considers the distribution of shares according to a strict, constitutive sense of possession, which, nonetheless, is not always fair or correct. The challenge, therefore, of constructing an environment based on just criteria, on the rule of law and on principles of equality is pertinent in all institutional arrangements. Whilst, however, some reflection on ethics constitutes the primary goal, in ICANN’s UDRP this is not the case. It is indeed surprising to realise how unreliable the system is; it is equally alarming to realise the level of protection the system affords to trademark owners; it is un-amusing to see how the rights of domain name registrants are rarely protected; and, finally, it is certainly shocking that after so much criticism, controversy, academic writing and thought, the UDRP has not been placed under a microscopic review to be amended.

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The following section is a discussion on potential steps towards this direction. It offers an amalgam of views and ideas that could work to the benefit of the UDRP, can twist the Policy into a legitimate system, always considering that at the basis of the UDRP should lie, a mechanism complying with ethical standards.

Part IV

Themes and issues

13 Forwards and backwards …

Some time in 2009 we found ourselves concerned again with the interaction between domain names and trademarks. The expansion of the Root and the proposal for an unrestricted availability of new gTLDs prompted fresh discussions and generated a heated debate on the relationship between trademarks and domain names. The setting was highly reminiscent of the old times; trademark owners were still manipulating ICANN as a platform for promoting their trademark interests, cybersquatting and abusive domain name registrations were still used as justifications for lengthy reports on trademark protection and non-commercial users were – once again – voicing concerns over the over-expansive nature of the proposals. All seemed too familiar and routine – nothing had changed in the ICANN processes as, unfortunately, nothing had changed in our perception on the state of domain name regulation. In 2009, our understanding of the relationship between trademarks and domain names was exactly the same as in 1998. But, why is that? Throughout this book, I have systematically sought to promote the idea that the principal challenge concerning the relationship between trademarks and domain names concerns their conceptual boundaries. Trademark law is, generally, cautious about the dispensation of rights. Trademark rights are allocated on the basis that the name in question blends some specific characteristics that trademark law considers vital (e.g. indication of origin of a good and/or service). If such characteristics cannot be identified, then the name is not worthy of trademark protection, since protecting it would result in a relentless and heterogeneous appointment of rights. For trademark law, some marks are considered too important to protect, either because such protection will cause malfunction within the competitive environment or it will contradict fundamental rights, such as free speech. The allocation of domain names, on the other hand, is not nearly as cautious. The registration of domain names allows an indiscriminate allocation of rights, thus fluctuating the core foundations of trademark law. Any phrase, name or term is eligible for registration as a domain name as long as it is available. No names are considered too important to protect, even though they might encourage anti-competitive practices or oppose fundamental rights.

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Domain names, therefore, do not submit to the degree of limitations or the level of restrictions that trademarks are subjected to. They are more appealing, they capture international audiences through the click of the mouse and, they are in sync with conventional ways of conducting business. Everyone wants a domain name. The fact that trademark law is challenged by domain names is commonsensical to the extent that both domain names and trademarks can be used as means to indicate origin. However, we should also understand that the amount of influence the one exercises over the other is more of a convention and habit rather than an issue concerning the true dispensation of trademark rights on to the domain name space. Although my intention has not been to underestimate cybersquatting and its impact on trademarks, it is important to understand that, at their most basic and fundamental level, domain names and trademarks do not exemplify identical characteristics, thus the registration of a domain name should not automatically generate trademark interests. If it did, we would be accepting, by consequence, that trademark law is also in the position to protect words, merely granting owners rights to terms used in our everyday vocabularies. This is not what trademark law is – or should be – concerned with. It is for this reason that the affiliation between domain names and trademarks should be circumscribed under regulation that is able to engineer rules, respectful of the conceptual boundaries of both intangible rights. Regulation, however, is a term of indefinite connotations, which allows governments and other bodies to produce requirements of compliance to individuals as well as organisations and/or corporations; their authority depends on their structure as laws, rules or orders. Realising that the power to create encompasses the power to destroy, one of the essential features of a sound regulatory regime is to ensure that checking and balancing mechanisms are in place. Generally, institutions engaged in regulatory efforts ought to be free from political influences and bureaucratic or other pressures. At a basic level, this ensures that policies will be made on merit and matters will be dealt in a fair manner without succumbing to partisan manoeuvring and lobbying. The doctrine of regulatory freedom is essential as it allows regulatory agencies to proceed to formulations unswayed by political interests. Consequently, justice and transparency play a pivotal role in regulatory establishments. In the final analysis, access to justice and its open, transparent dispensations is a significant measure of the way affairs are conducted and administered in society. Rules and principles regulating legal behaviour should ultimately have a human face, since, in practice at least, their major manifestation is to reflect the needs of the parties involved and guarantee them access to justice. Only when regulation is transparent and just, is its application possible. Unfortunately, the UDRP lacks both these essentials, offering a much complex and idiosyncratic design.

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Lawrence Lessig argues that architectures of regulation can differ both in the values they embrace as well as in the way they regulate behaviour. In the case of ICANN’s Policy we identify an additional, third way, in which architectures may differ – they may also differ in the justifications they entail. Taking the architecture of the UDRP, at its heart lies a framework of rules that has made no attempt to address the substantial differences between trademarks and domain names, has made no effort to consolidate the conflicting interests between trademark owners and domain name holders and has abandoned domain name registrants. Certainly, within regulatory establishments endogenous and exogenous factors influence the design and structure of the architecture. Such influences, nonetheless, should not drive regulatory attempts to fundamentally different directions. Take a look at the UDRP and how from a mechanism concerning cybersquatting has climaxed to the point of being the online institution of trademark law. With this in mind, in 1998, we irrevocably avoided discussions on issues of substance. In 2009, we were still avoiding to discuss issues pertaining to the nature of domain names and the legitimate rights of domain name registrants. The commercialisation of the Internet might have demonstrated the value of domain names as online identifiers, but their legal nature has never been seriously contemplated. The dominance of trademark interests and trademark imperium outstripped the possibility of any discussion on the legal nature of domain names. It is surprising that during the drafting process of the UDRP, no one attempted to promote the idea of domain names as autonomous rights. Of course, any such determination would require extensive debate and discussion, but the need to protect trademarks online was greater – or so we thought back then. It is disconcerting that after all the experience of the past decade, we are still not ready to address issues concerning the legal nature of domain names. The legal ground is now fertile and jurisprudence appears ready to accept domain names as sui generis rights – capable of generating privileges and obligations for their owners. To this end, we should amend our mechanisms and retune our understandings. The catalytic force of the Internet in society, culture, politics and law has allowed domain names to blossom into commodities of significant value – in some respects exemplifying characteristics, more valuable than that of trademarks. This is because domain names can have three distinct dimensions: from a technical point of view, they constitute the basis of and the foundation behind the running of the Internet, since without their presence the Internet (at least in its current operational form) cannot function. From an economic point of view and especially over the past few years, we have seen an increase in their monetary value, an issue that has been responsible for the creation of domain name auction houses and, generally, the establishment of a very profitable domain name industry. Finally, from a legal point of view, they constitute autonomous legal rights, epitomising characteristics of intangible and intellectual property.

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Given this tripartite set of values, domain names are articles that deserve special attention. Consequently, the need to construct a fair environment for the adjudication of domain names is imperative. Considering how conceptually relevant the creation of online dispute resolution models are in the Internet era, we ought to ensure that their substance and process aim at delivering justice, that the models serve the parties equally and that they have in place mechanisms that are able to control their scope. This does not take place within the environment of the UDRP. More precisely, many of its substantive rules invite a wide interpretation, its procedural principles fail to respect the rights of individual registrants and, overall, the Policy promotes a culture where domain names are promoted as second-class citizens in a world dominated by marks. Accordingly, if we want to go forwards in structuring a sound and just framework for the domain name óς, we, first, need to go backwards. We need to understand that the UDRP is the dominant policy establishment for the regulation of domain names. Even if we want to reject this thesis, ICANN, trademark owners and much of the wider Internet community will find it difficult to. This is what the latest IRT report suggested and is in sync with ICANN’s (and WIPO’s) trademark policy vision. 13.1 Reconfiguring the regulation of domain names Nothing in the history of domain name regulation indicates an effort to dispose domain names into a concrete legal context. From NSI’s Policy to the IRT recommendation and national regulatory efforts, domain names have consistently appeared accountable to trademarks, and all energy has been placed on how to create a safe, online environment for trademarks. Our zeal to create trademark policy, however, has been taxing, not only because discussions on the legal nature of domain names have been sidestepped, but also, whereas trademark law was incrementally evolving through court decisions, over the past decade, private interests and ICANN politics have replaced trademark law judges. From an intellectual point of view, this book discussed that domain names epitomise characteristics of dominium and, according to the much celebrated theory of the ‘bundle of rights’, they should – at the very least – be considered a sui generis, ‘e-property’ right. From an institutional point of view, the current mechanisms of adjudication – the UDRP and ACPA – agonise between the Scylla of protecting trademark interests and the Charybdis of ensuring the operation of the DNS, hence the functioning of the entire Internet. Although both systems emphatically seek to strike a balance between trademark and domain name disputes, the degree of procedural unfairness, exemplified by them both, has to be associated with the undetermined legal nature of domain names. Our policies have to be based predominantly on just – and less on political – criteria; our vehicle has to be an amalgam of legal, fair and strategic ideals. Political magic has the tendency to be unjust.

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This is indeed true, especially in the context of ICANN, where political interests play a predominant role. ICANN’s trademark politics have certainly contributed towards the transmogrification of trademark law. The beginning was back in 1998, when ICANN created the UDRP, acting outside its scope and sanctioning, in essence, the wishes of the trademark community. As soon as the UDRP was authorised, trademark owners were ‘dancing’ in the corridors of ICANN celebrating a big success: no more arduous court litigation, no more expensive procedures and no more cybersquatting. The UDRP was a great moment for the trademark community. The UDRP is far from a flawless system, but it is not a bad system. In all truth, the UDRP walks hand-in-hand with domain names and should be seen as a remarkable establishment of a quasi-judicious body, operating in the chaotic sphere of the Internet. The problem with the UDRP is not its concept. It is a problem of management; very bad management decisions that have defamed the whole system. If only the UDRP were to adhere to its scope, promote its mission and address solely the issue of cybersquatting, none of this would be relevant. But, the UDRP did not mange to do that and, as more domain names emerge and new right holders appear, it is time to amend the system, seeking to achieve the original balance. What follows is a set of recommendations – at different layers and serving different needs – seeking to provide a balanced approach and to put an end to the abuse of the system. 13.2 Procedural level At a procedural level, the UDRP should first introduce a statute of limitations for domain name disputes, preventing trademark owners from initiating complaints against gTLDs that have registered more than one year previously. What will this achieve? As important is to understand the time and resources trademark owners spent on building the reputation of their mark, it is equally important to appreciate the time and resources registrants spend on promoting their domain names. Provided that the current structure of domain name regulation gives priority to valid trademark registrations, there is always the possibility for a registrant, after investing on a domain name for years, to find herself vulnerable and defenceless against a trademark owner. Barring the trademark owner from making a complaint against a registrant who enjoyed more than a year of domain name business will facilitate new ventures and encourage entrepreneurship in the online environment. It will also provide a reasonable balance between the conflicting rights of trademark owners and registrants, since, in all truth, one year is more than enough for a trademark owner to realise whether an Internet site is causing actual harm to the trademark. Trademark or brand owners who want to initiate a complaint after the specified period is over will have to file a civil law suit in a court of an appropriate jurisdiction.

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Having a system that puts a chronological limit is significant, considering the fact that over the years we observe less and less court adjudication taking place. Of course, the UDRP’s procedures contribute towards this attitude, with trademark owners preferring to use the UDRP and appear before panels that are likely to reach favourable conclusions. This is UDRP’s ‘forum shopping’ problem. It was a problem identified in 2002 by the Geist study and it is a problem that continues to exist. ‘Forum shopping’ is a peripheral issue to ICANN’s decision to encourage competitive environment in dispute resolution, but it is not ICANN’s fault. It is symptomatic to the lack of internal and external checking functions, as well as to the system’s incapacity to resist trademark influences. Having multiple dispute resolution providers, however, prevents monopolistic practices and abuse of position; it provides parties with options and it is what the market demands. So, how are we to address UDRP’s ‘forum shopping’? One way would be to introduce a ‘Random Centre Generation’ system. The system should be simple, user-friendly, computer-generated and able to perform functions that respond to the parties’ needs, like, for instance, the language of the proceedings. In mathematics a ‘random number generated’ system consists of a computational device designed to generate random sequences of numbers. In the UDRP, rotation will ensure consistency and impartial decision-making. Permitting a computer to choose the provider eliminates human intervention, which can be consequential to gaming and bias. Furthermore, a significant step would be to re-evaluate the scope of the bad faith element. According to the Policy, bad faith is substantiated through registration and use and through a non-exhaustive list of indicators, found in paragraph 4(b) of the Policy. At a minimum level, we have to be persistent on the complainant proving bad faith registration and use; this seems to be a detail that through the years has become redundant as complainants and panels – intentionally or accidentally – appear to interpret it as an ‘either–or’ situation. Unlike ACPA, the drafters of the UDRP were correct in requiring both registration and use as a precondition for bad faith and they correctly viewed malicious conduct as a continuum of harm that is born in the registration of the domain name but, subsequently, proceeds to its use. Therefore, although the similar rule within ACPA might appear unfair compared to the one in the UDRP, we have to bear in mind that ACPA has also checks and balances that the UDRP is short of. The mere fact that ACPA disputes are heard before a court of law is sufficient to render any such issues less problematic. Moreover, we should deter panels from proceeding to subjective bad faith interpretations and raise the bar of the bad faith requirement. Given the way bad faith is evaluated under the UDRP and its results, it is not unreasonable to instruct panels to intensify their approach towards finding bad faith. This would, first, require the change of the current bad faith culture, which is based on abstract submissions that do not provide concrete evidence of abusive behaviour. Under the new rules, ICANN and its centres could ask parties to

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proceed to more detailed submissions, followed by statements made under oath. They could, equally, provide panels with the necessary incentives to proceed to evaluations beyond the assertions of the parties. This could mean the sacrifice of some of the UDRP’s speed, but on balance it will curb superficial discretions. Considering this is a private system, such incentives may be in the form of financial or professional reward. Taking such steps could only incentivise panels to focus on raising the social and legal welfare of domain name adjudication. We should also discourage panels from making use of precedent, at least under the current operation of the UDRP. A precedent-based system might be practical and constitute a convenient timesaving device with greater certainty in the law, but such advantages only materialise when appropriate checks and balances are in place and the system has prescribed specific rules concerning the parameters of precedent’s proper use. Unfortunately, in a system like the UDRP that lacks these checks, precedent shows mainly its detrimental effects in perpetuating mistakes, creating too many precedents, being confusing, limiting the development of case law and, generally, causing injustice. Despite its non-binding nature, the use of precedent in the UDRP adds more problems compared to the ones it seeks to rectify and has been a measure, which was adopted irresponsibly and without careful consideration. Precedent indicates a certain degree of authority, vested upon trusted judicial bodies to deliver justice, provide efficiency and organise social relations. UDRP panels do not exert this kind of authority or trust; hence, we cannot rely on precedent to provide answers and serve its intended purpose. Ideally, for the time and until the UDRP is structured under a framework of checks and balances, we should suspend the arbitrary use of precedent so as to avoid the vicious circle that currently exists and manages to perpetuate bad decisions. At the same time, the Policy should further clarify and elucidate on the benchmarks domain name registrants would have to meet in order to convincingly demonstrate their rights and legitimate interests in the domain name. At the most basic level, registrants should be in the position to show that they have used the domain name in good faith. In these cases, trademark registration should not constitute the only prerequisite, but, instead, registrants should be able to prove that they have acquired a certain degree of reputation through use, or that they have legitimately used the domain name for commercial and/or non-commercial purposes without intending to mislead the public. The advantage of this direction would be that – provided the domain name resolves to an active Web site – it will be more difficult for a trademark owner to argue that the domain name registrant has no legitimate interests in the disputed domain name. In a similar vein, the legitimate use of a domain name cannot incorporate concepts that negate this use. The UDRP’s wording and use of paragraph 4(c)(iii) is a potpourri of concepts concerning fair use, consumer confusion and tarnishment, which conceptually are impossible to consolidate. We have already discussed the effects this subsection of the UDRP has on freedom of

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speech and criticism sites and how panels have used this paragraph to establish that, despite the non-commercial use of the domain name, the fact that it tarnishes the mark is by itself sufficient to render the use illegitimate. This proves the immaterial nature of the UDRP reasoning and the incapability of panels to distance themselves from the milieu of trademark bias. For legitimate use to operate effectively, therefore, the concepts of tarnishment and consumer confusion must be removed as incompatible with the notion of fair and non-commercial use. So long as registrants use domain names for non-commercial speech, trademark law issues are peripheral and the UDRP should be in the position to acknowledge the non-commercial character of the domain name. To this end, the UDRP should adapt to the different domain name uses by inserting a clear ‘fair use’ provision for the bona fide use of criticism and parody sites. The message should be: support free speech, legitimise parody sites, and justice is served. ICANN can ensure that the system is not abused by asking registrants to attest to evidence demonstrating that the domain name is a true criticism site and should, therefore, be protected under free speech. UK’s Nominet has inserted a similar fair use clause within its dispute resolution1 and it is a welcoming development that shows the good faith in protecting non-commercial use. What is the reason for its absence in the UDRP? Revisiting, however, these substantive provisions of the UDRP cannot by itself guarantee that the Policy’s amount of inconsistency will also be rectified. The UDRP lacks basic internal and external checking mechanisms that prevent the Policy from evolving into a reliable system of equitable rules and norms. The proposal for an internal appeal process in the body of the UDRP is neither new nor uncontroversial. As discussed, WIPO had suggested during the drafting process that such a mechanism should be implemented, but ICANN rejected this proposal on groundless justifications. In particular, in its ‘Staff Manager’s Issues Report on UDRP Review’,2 although ICANN admitted to the validity of an internal appeals process – especially in promoting consistency and uniformity – at the end, it was suggested that an appellate process would add administrative and other costs and the UDRP would lose its magnetism as an inexpensive and fast process of adjudication. Validating an appeals process, nevertheless, is the one, single policy that ICANN ought to have adopted fearlessly. In traditional litigation, the freedom to appeal a decision provides safety valves and ensures the proper application of justice; it also guarantees the uniformity of the system, both procedurally and judicially. Accordingly, in traditional litigation an appellate procedure is considered as the means through which legal systems ‘review’ and ‘evaluate’ their adjudicators and the way they apply justice. Any system that wants to characterise itself just, legitimate and autarkic should depend on its own processes and have in place mechanisms that demonstrate its autonomy and its ability to remedy its own legal oversights. Given the unstable environment of the UDRP, an internal appeal process will be an indispensable asset for the well balanced operation of the mechanism.

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It will certainly enhance trust towards the mechanism and institute a whole new culture of domain name adjudication. Firstly, for such a system to work efficiently it should not be complex and burdensome on the parties and the appellate bodies. This will require the officials and/or panels assigned to come from within the existing judicial machine and form a constant and steady appellate body that will use its increased familiarity with the mission, structure, components and establishment of domain name disputes to its advantage. It will also require explicit time management, compatible with the current speed of the UDRP decisions. An appeals process should not, under any circumstances, disproportionately delay current domain name adjudication practices. Allowing an internal appeals process will also detain trademark owners from filling numerous identical complaints until they finally get the desired result. The Policy needs to address the extent of the nexus between the decisions, delivered by the four providers, and adhere to its uniform nature. Trademark owners should not be in the position to file complaint after complaint, game the system and receive relief that is based on the UDRP’s incapacity to ensure a consistent environment. In situations concerning old cases which complainants seek to reopen by bringing new facts to the attention of the panel, UDRP providers should be disallowed from filing such cases under a new number. Given that a prior decision exists in the body of the UDRP, a new decision, even if it happens to reach the same conclusions, will be based on different reasoning and will create new precedent. This is not uniform and adds much to the current inconsistent environment. By having an appellate process, therefore, we deny the complainants the ability to abuse the system, without denying them at the same time the right to present new facts or air their concerns. An internal appeals process, however, does not constitute panacea to all the problems the UDRP is facing and it certainly should not be viewed that way. The favouritism, for example, that takes place at the UDRP’s basic level cannot be fully addressed through an appellate device. More solid structures need to be in place at the initial stage of adjudication. In 2001, the Geist study3 found that three-member panels, generally, provide more equitable results, thus the percentage of cases decided in favour of the complainants was not as high as in cases decided by a single panellist. Geist’s observation should not be taken lightly, since it is, indeed, true that three-member panels have the tendency to produce fairer results. That does not mean that three member panels are always correct or their decisions always adhere to justice. It is the case though, that in panels composed by three adjudicators the level of legitimacy is stronger and firmer, since the outcome is the result of debate and the exchange of ideas between the panellists, an element that may curtail any possible misapplication of the Policy and ensure more resonated, rational and coherent decisions. Moreover, three-member panels serve another, more substantial purpose, which, in every respect, reflects the nature and complexities of the Internet.

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Being multi-faceted and globally accessible, the Internet supports the merging of various ideas, customs and cultures. In such a sophisticated environment, it is destined that people and cultures will clash. By imposing an umbrella rule for three-member panels across the UDRP, we allow the parties to choose at least one member of the panel that shares their cultural beliefs and aspirations and who is in the position to ‘support’ and ‘advocate’ for those beliefs. We similarly, respect, the character of the Internet, which calls for this very merging of customs. It will be a rather complex task, otherwise, for the panel to decipher cultural convictions from the written statements of the parties and, accordingly, reach fair decisions. Notwithstanding the imposition of a three-member panel blanket rule, another of the UDRP’s most delicate issues concerns the volume of default cases, which can be consequential to the Policy’s extremely short deadlines. Standard arbitration practices allow default cases to proceed, only if there is evidence that the defaulting party has failed to respond, even though ample and adequate notice has been given. Despite the fact that there is not a homogeneous rule determining the extent of adequate notice, most arbitration centres consider a forty-five day time frame to meet this standard.4 Offering what can only be characterised as inadequate and inapt notice (the respondent has only twenty days to respond to the trademark owner’s allegations), the UDRP could learn from the sophistication of arbitration. It is of great importance for the conceptualisation of the UDRP as an Online Dispute Resolution (ODR) mechanism to provide the disputing parties with the necessary means for active participation, instead of fostering an environment where such participation becomes complicated and difficult. Since ICANN’s Policy has embraced elements from the arbitral process, it should also make room to accommodate default cases. Responding in a fashion that indiscriminately considers all default cases as bad faith does neither promote justice nor contribute towards the establishment of a trust-based system. Why, however, do default cases occur in the first place? Admittedly, some of them are due to bad faith registrations and uses of domain names; but there are cases where default might also be resonated on the face of ‘trademark lawyer abuse’ and intimidation and the system should be able to identify them. To a certain extent, the UDRP is encouraging the proliferation of default cases, since, through the weakness of its Reverse Domain Name Hi-jacking (RDNH) provision, respondents are disincentivised to participate. Compared with the sanctions concerning a registrant’s bad faith, the only sanction for RDNH is the obligation of panels to ‘note that fact in [their] decision’.5 It is essential that we reactivate, give effect and substance to the unemployed and poorly used RDNH provision. Specific and strict penalties should be enforced against trademark owners, who engage in a pattern of RDNH. We need to bring back to the UDRP the lost trust and, to this end, we need to ensure that the mechanism has tools that equally punish malicious behaviour, emanating from either the complainant’s or the respondent’s actions. To this end, Milton Mueller put forward four

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reasonable proposals in relation to the RDNH, consistent with the UDRP culture that should be incorporated in the Policy. These could include: the award of costs and penalty fees to the legitimate registrant; the listing of the hijacker in a public database, maintained by ICANN; provisions concerning the mandatory consideration of RDNH in other domain names disputes involving the same ‘hi-jacker’;6 and recognition of the domain name as lawful and of the domain name registrant as a legitimate owner. Moreover, another way to attend to the desired balance in the UDRP is to give registrants the possibility to initiate a UDRP dispute against a trademark owner. In the United States, ACPA permits the domain name holder to bring a civil law suit against the trademark owner seeking to declare use of the domain name as lawful.7 Notwithstanding ACPA’s paradigm though, domain names possess characteristics that give rise to proprietary interests and the current institutional arrangement of the UDRP does not support legitimate claims of registrants. So, what will this procedural change bring? Normatively, every legal mechanism strives to provide equal opportunities for its parties. Under the current arrangement of the UDRP, only trademark owners are allowed to initiate a dispute, thus placing domain name holders in a position of no defence. Providing domain name registrants, nonetheless, with the ability to instigate a UDRP action will stabilise the bargaining power between the parties, making room for parity and eradicating the current environment of prejudice. It will further enhance the credibility of the UDRP as well as its versatility towards new legal trends that see domain names as sui generis rights. Incorporating this procedural device within the UDRP will also contribute towards the fight against cybersquatting, as it will help distinguish the truly legitimate registrants from the ones registering and using domain names in bad faith. Imagine a registrant who is given recourse to protect the domain name – she will seek to protect it, the same way a trademark owner will seek to protect her trademarks. If the lack of incentives constitutes one of the UDRP’s predicaments, amending the Policy to acknowledge the legitimate claims of registrants will incentivise domain name holders not to default, will assist in the identification of abusive registrations, will isolate cases of RDNH and will allow the Policy to return back to its roots: a mechanism with a limited subject matter, addressing issues related to cybersquatting. As a final note, and despite these genuine advantages, consider how unfair the current system for domain name registrants is. Under the current status, trademark owners have at their disposal different venues and a multitude of claims against domain name holders. Starting with trademark infringement as their essential cause of action, trademark owners are secure that, should infringement claims fail, they still have dilution and/or passing off as their defence. As a corollary of this beneficial state of affairs, the current philosophy does not support the claims of registrants. Theoretically, they can proceed to court litigation and have their rights vindicated, but, in reality, this option is more of an illusion. Given the unclear nature of domain names and their nexus

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with trademarks, jurisdictions will adjudicate the merits of the case applying trademark law rationales, thereby missing completely the value in judging a domain name on its own. 13.3 Techno-legal level As we have explained, at the heart of the DNS lies a pedantic technical structure of domain name allocation and assignment. This technical arrangement creates legal problems, as it adds substantially to the complexity of the relationship between trademarks and domain names. Crucial questions regarding issues of dominium are generated and require policies that merge the incompatible concepts of law and technology. Considering that there are two legitimate mark owners with identical trademarks in different geographies, who should have priority over the registration of a given domain name? Or, considering that there is a legitimate registrant, whose domain name happens to be similar with that of a trademark owner, why should the domain name holder have to surrender the domain name? Currently, the assignment of domain names operates under two incompatible principles – one legal and one technical – both of which fail to take into account the issue of conflicting, legitimate rights: trademark priority (legal) and ‘first come, first served’ rule (technical). In the first instance, so long as the owner can prove a valid trademark registration, UDRP panels consider that the domain name belongs to the mark owner – de jure. In case, where there are two legitimate mark owners, the UDRP does not offer much insight, but the general rule is that allocation will be determined according to chronological criteria (prior registration). In the second instance, registries and registrars assign domain names on the normative basis of ‘first come, first served’, which cannot always provide fair answers, since there might be more than one rights, yet only one space to accomodate them. This technicality in the structure of the DNS contradicts issues of justice (as exemplified in the domain name óς), which cannot adequately be exercised under the premise of the ‘first come, first served’ rule. How can we consolidate the incompatibility between the de jure and de facto concepts within the domain name system? A good starting point would be the impending expansion of the Root to mirror the International Schedule of Classes of Goods and Services for Trade and Service Marks, which is used by Trademark Offices around the world to classify the subject matter of the goods and/or services for trademarks and service marks. The system constitutes trademark’s law answer to issues concerned with ownership over words and constitutes an effective tool, allowing trademarks to coexist within a competitive market as well as the proper functioning of trademark law. In 2001, ICANN took action towards this direction by introducing seven new domain names and, since then, ICANN has been consistent in producing new gTLDs. In the future, ICANN is planning on its biggest ever expansion of the Root, authorising an unrestricted application process, where any entity

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or body in the position to sustain a registry, will be able to apply and register any possible word as a gTLD. Despite the advantages of this policy – mainly the fact that the current , and spaces have created artificial scarcity and artificial trademark problems – the expansion of the Root could create a new complexity. ICANN should stop and block any applications by trademark owners seeking to register a generic, descriptive or geographical gTLD. Mainly, the Root expansion should adhere to the limitations and restrictions of trademark law. Under this proposal, for instance, Warner Bros Inc. should not be allowed to register the words ‘Time’ or ‘Fortune’, as Apple Inc. should not be able to register the word ‘Apple’ and operate a registry. Given the financial burden that comes with the ICANN application process, it is mainly big corporations that create such risk. gTLDs representing generic terms should be accessible to all registrants, the same way generic names are available for all of us to use. Imagine, for example, if Warner Bros Inc. were to reserve the word TIME and, thus, decide which registrations would be listed under . It would create an unfair market place, dominated by multinational corporations, where the foundations of trademark law would collapse. At the same time, instead of trying to consolidate the conflicting rights of trademark owners with those of domain name registrants and revamp the existing culture, an uncontrolled expansion of the Root will encourage an irreversible situation – trademark owners operating registries under a generic term will have the political power to block any registration. The impact this will have on free speech, entrepreneurship and innovation will be profound. Realising, therefore, the potential threat of ICANN’s vision, ICANN should authorise WIPO to submit recommendations that reflect the International Schedule of Classes, which would further be incorporated in the forthcoming Root enlargement. Considering that all appropriate steps are taken and that a conceptual analogy between a distinct gTLD space and a distinct class of goods and services can be drawn, then two identical or similar domain names would be able – for the first time – to coexist in the domain name óς, as long, of course, as they do not confuse consumers. Accordingly, through this classification scheme, domain names will also acquire their justification as sui generis rights. This is a unique solution for those domain names operating as trademarks, as clashes between legitimate owners will be lifted. Notwithstanding the certain objections by registries, registrars and trademark owners, the classification scheme will allow multiple trademark owners, domain name holders, business entrepreneurs and free-speech advocates to establish an online presence without disrupting each other’s activities. The classification system, however, will not perform its intended purpose and will not effectuate its expected benefits if the way we are evaluating domain names does not change accordingly. Current domain name practices have hitherto evaluated domain names and trademarks on a ‘text by text’ comparison, not only decreasing the barrier of traditional trademark infringement to

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the minimum, but also omitting a whole range of possible scenarios where the domain name was unrelated to the trademark. We should bear in mind that domain names are lexical tokens and can represent goods, services, and information or serve other utilities. The current regime continues to evaluate domain names under the prism of consumer confusion. Judging domain names and trademarks, however, on a names’ comparison is unrelated to consumers or their needs. Therefore, if we want to prove confusion, the name of the Web site will have to be assessed along with its related goods and/or services. The evaluation of a site should not be substantive and panels should be asked to focus on one simple question: is the Web site consistent with the goodwill of the alleged trademark? This way panels are not given discretionary powers to proceed to content regulation, but at the same time, they are provided with the possibility to protect websites that under the current simple ‘text by text’ comparison test are in danger of being unjustifiably transferred or cancelled. It has to be acknowledged that the reconfiguration of the DNS to embody the classification system might not assist cases concerning famous marks. In such cases, as long as trademark owners or domain name registrants are able to prove that their marks have acquired fame, the principles of dilution can be activated. Considering that only a few marks meet the standard of fame,8 the number of domain name conflicts concerning dilution will normally concern cybersquatting and will constitute efforts by domain name holders to acquire fame by using a famous mark. Generally speaking though, proving dilution in domain name disputes is – in any case – a challenging task, assigned only to courts. To the extent that complainants seek to base their arguments on the legal theory that the famous mark was diluted by an abusive domain name registration, principles of fairness and equity – as supported by V. Secret Catalogue Inc. v. Moseley9 – would require complainants to meet the more rigorous standard established as appropriate for such cases. In any event, dilution cases should fall outside the limited scope of the UDRP. 13.4 Political level Any recalibration effort becomes immaterial, if, at the level of political decision-making, the UDRP continues to be amenable to ICANN’s authority and to the interests of the trademark community. Whereas ten years ago many questioned the authority of ICANN to create the UDRP, despite the fact that ICANN was, in reality, following the instructions of the U.S. DoC, today, its involvement with the future of the Policy is unnecessarily inconvenient. The UDRP’s evolution displays elements of international law paradigms, which go beyond ICANN and its mandate as the administrator of the DNS. The massive body of case law established through the Policy and its influence in the realm of international law should negate any future participation of ICANN. Due to issues of legitimacy and time, the UDRP was intentionally not framed under international law paradigms although its creation was indeed

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a direct result of the pragmatic economic and legal threat that cybersquatting was expected to have upon trademark law. Its historical documents provide evidence that the UDRP was never supposed to be clothed under international law principles, whilst WIPO’s role appears to be more of a consultant rather than operating in the capacity of an UN organisation responsible for the creation of intellectual property international principles. From a theoretical point of view, the only procedural deficit forbidding the UDRP from being an international law tool is the absence of member state engagement during its drafting process. From a practical point of view, however, the UDRP has always behaved as the authority on domain name disputes and has mutated into a model resembling international law. The UDRP’s considerable and expanding body of case law has established normative principles similar to ones exhibited by international law instruments. On certain occasions, the UDRP’s normative principles have been accepted unquestionably by national courts10 and have penetrated domestic jurisdictions,11 indicating the Policy’s influential character in the international context. This manifests that the UDRP is not just private regulation – it is a peculiar nexus of private efforts and international law practices, enforced through a much-debatable consensual approach. The Policy can demonstrate more than ten years of domain name case law, which is remarkable considering that the UDRP has never been subjected to any sizable amendments and, despite its various critics, its case law does not show any signs of decline; on the contrary, it is speedily expanding. This, of course, might be consequential to the leverage the Policy provides to the trademark community. We need to remember that the UDRP has provided a fast, cheap and efficient dispute resolution mechanism as opposed to traditional, slow and expensive court litigation. Through the UDRP, trademark owners found the platform to protect their marks internationally, court litigation became scarce and the evolution of trademark law became subject to discussions between private administrative panels. The UDRP ‘internationalised’ the otherwise territorial nature of trademark law so fast that no other international law instrument could have achieved. It also shifted its incremental evolution from governmental fora to ICANN and other private decision-making. What does this mean for the UDRP? It indicates that the Policy portrays strong international law characteristics, to the extent that when referring to the Policy we are talking about a form of ‘quasi international law’. At the same time, however, its fate is subjected to ICANN and not to an international intergovernmental organisation. This highly complex structure of the UDRP places an embargo to any judicial review and state intervention, even though it suggests an international mechanism that binds unilaterally domain name holders. For ICANN, which is in control of the UDRP, and for the trademark community, which reaps the benefits of its decisions, the current international status of the Policy constitutes a ‘dream scenario’, since without any official, formalised process, the UDRP creates international trademark law, where

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none existed. Within the wider international law context, however, the pace of the UDRP is dangerous. To this end, action is required in order for the UDRP to reflect the pragmatic need of its philosophy, whilst adhering to established international law paradigms. Counting more than ten years of history, exhibiting a substantial body of case law and, having acquired the consensus of the international community, nothing prevents the UDRP from becoming a soft law instrument. This would mean the removal of ICANN as the authority behind the Policy and the reconfiguration of the UDRP under soft law rationales. Soft law has a non-binding nature, which distinguishes it from a treaty’s hard form, making it more versatile, flexible and less pressuring for the signatories. Often reflecting social, political and economic concerns, various voices have criticised whether soft law can, in reality, produce objective standards in the international field. It is possible, however, for non-binding legal formulations to exert a certain degree of ‘bindness’, especially where pressure, exemplified through social, economic or political coercion, imposes some sort of ‘duty’ upon the states to reach an agreement.12 It is soft law’s intention to avoid reference to ‘rules’ and, instead, make use of more informal terminology, which provides a certain degree of elasticity in international negotiations. In an epoch of political and economic antagonism, soft law relates better to consensual processes and offers viable alternatives at the level of international negotiations. Taking into consideration that some form of international regulation is inescapable, soft law’s limited legal commitments and impositions serve the need for international co-operation.13 This is the kind of philosophy that needs to shape the UDRP: a nonpressuring and non-demanding environment, distant from ICANN and strong trademark lobbying, ready to apply justice and subjected to the political authority of an intergovernmental organisation, like WIPO. And, it will not be difficult to promote the UDRP as a soft-law paradigm. The UDRP counts years of history and an internationally shaped conceptual framework that can be used to its advantage to invite participants to sign to its mandate. As long as we agree on the best way to recalibrate the UDRP, soft law will not be an impossible option, considering that the UDRP – as a concept – has acquired the consensus of various governmental actors, a reality, which is exemplified by the fact that many national jurisdictions have adopted the UDRP or a UDRP-like procedure for their own national ccTLDs. We need to change the source of authority of the UDRP, since, no doubt there are other ICANN policies – present and future – hatching somewhere and ready to transmogrify trademark law further.

14 Repeating the same mistakes New gTLDs and the IRT recommendation report

In 2009, securitisation of trademark interests on the Internet was again at the forefront of ICANN’s policies. As ICANN was announcing its plans to launch its much-anticipated expansion of the Root through the addition of new gTLDs, trademark owners feared that the current protection mechanisms would not be sufficient to sustain and safeguard their rights online. Seeking, therefore, to address the addition of new gTLDs with stricter ‘regulatory’ measures, an Implementation Recommendations Team (IRT) was tasked to review ICANN’s new gTLD policy and provide recommendations on the best way to protect trademarks online. The team submitted its recommendations in a lengthy report and sought to … provide … a tapestry of globally-effective solutions, which …, if taken together and not significantly unpinned, [would] help reduce the incidence and severity of trademark abuse in the new gTLDs.1 Since ICANN’s creation, one of its main goals has been to increase competition within the domain name market place, whilst preserving the security and stability of the daily functions of the Internet. ICANN’s wish to expand the Root server has been a long process and always constituted part of ICANN’s wish list. In November 2000, the Board approved seven new gTLDs and, since then, almost every year, ICANN has been systematic in producing policy and taking initiatives towards this direction. In 2008, the biggest expansion in gTLDs was approved for implementation and, sometime in the near future, ICANN hopes to accept the first wave of applications.2 Until recently, the addition of gTLDs has been somewhat controlled and constrained. So far the gTLDs, joining the original historic ones, had been chosen solely by ICANN and individuals and registries were barred from making proposals on types of gTLDs. Under this process ICANN anticipated that, if the Root were to include gTLDs, such as , or (to name a few), registrations would be automatically dispersed among the gTLDs. Additionally, such an expansion would take the burden off the populated space and would raise competition. This plan, however, did not really work. The first wave of gTLDs was chosen by ICANN

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under a constrained form of competition3 and, with some exemptions, the gTLDs failed to attract the attention of individual registrants, businesses and trademark owners. Registrations in the space still generate the majority4 and, through this new wave of open applications, ICANN hopes that this culture will change. A combination of strong opposition by the intellectual property (IP) constituency and political pressures placed the protection of trademark interests at the forefront of this forthcoming expansion of the Root. Trademark owners feared that ICANN had not carefully considered the potential implications this expansion would have upon their legal rights and pushed ICANN to place trademark protection in the new gTLD agenda. In June 2009, at its Mexico meeting, the ICANN Board requested the GNSO’s Intellectual Property Constituency in consultation with staff to convene an Implementation Recommendation Team comprised of an internationally diverse group of persons with knowledge, expertise, and experience in the fields of trademark, consumer protection, or competition law, and the interplay of trademarks and the domain name system to develop and propose solutions to the overarching issue of trademark protection in connection with the introduction of new gTLDs.5 The Implementation Recommendation Team (IRT) held its first telephone meeting on March 25, 2009 and had its first face-to-face meeting the next month in Washington. The Board instructed the IRT to produce its recommendations within a strict and tight time frame, in order to allow time for public comment and final implementation.6 A preliminary report of the IRT recommendation was submitted on April 24, 2009, for a thirty-day public comment period. The IRT’s final report was submitted to the Board and was simultaneously posted for public comment on May 29, 2009. The public comment period, which initially was meant to last only thirty days, until June 29, 2009, was further extended until July 6, 2009. A significant number of the trademark community did not welcome the addition of new gTLDs, insisting on first creating sufficient means of protection and then proceeding to expand the Root. Trademark owners have always feared that an imminent expansion of the Root will increase the number of trademark abuses occurring through the registration of domain names, and would disrupt their ability to conduct business on the Internet. Striving towards what they called ‘a tapestry of globally effective solutions’, the recommendations were limited to and reflected the views of business and trademark interests.7 By the time the IRT proposal started generating the first reactions, the IRT was already ‘on the road’ promoting the report, seeking to convince the wider Internet community to support it. Following ICANN’s June annual Sydney meeting, which was dominated by discussions on the new gTLDs and online trademark protections,8 the IRT travelled in New York,

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London, Hong Kong and Abu Dhabi to discuss its recommendations, receive feedback and hear the concerns of the public.9 Overall, the IRT report parroted the language and justifications used ten years ago to legitimise the UDRP. The IRT called the Internet community to support its recommendations on the fight against cybersquatting, relying on arbitrary data by WIPO. In 2008, WIPO – the main UDRP provider – ‘reported on a 7 per cent rise in the number of UDRP cases’,10 and the IRT considered this a sufficient justification to determine a rise in cybersquatting. The data of WIPO can be interpreted in a variety of ways, one of which could relate to ‘forum shopping’. In any case, it was careless to interpret a rise in UDRP cases as equating with a rise in cybersquatting. Domain name registrations have multiplied exponentially since ten years ago and it is only to be anticipated that more UDRP cases will reach dispute providers. To this end, the IRT recommendation sought to promote the ethos that all domain name registrants are cybersquatters and that all domain name registrations aim at harming the value of trademarks. The report failed dramatically to consider the legitimate use of domain names by individual registrants or non-commercial organisations, suggesting that with domain names ‘something often goes wrong’.11 The IRT could have easily used this opportunity to address the unfairness in domain name regulation as has been manifested over the past ten years. The recommendations could have sought to produce a bipartisan approach, promoting a balanced regime of rights and ICANN itself could have taken advantage of its vision for Root expansion to address the concerns of individual users, in a time where fundamental issues, like free speech, are more challenged than ever before. The timing of the report was perfect, yet the opportunity was missed. The IRT recommendation has meandered down pathways of procedural and substantive errors; I will now turn to discuss these. Their analysis is crucial as it contributes substantially to the overall argument this book seeks to make. The IRT recommendation constitutes a clear testament of the view trademark owners have when it comes to trademark law polices on the Internet. It manifests, beyond any reasonable doubt, that we have not learned anything from the UDRP experience. For the trademark community, the only rights worth protecting are trademark ones, even if it means expanding trademark law and outstripping the rights of legitimate registrants. 14.1 Injustice at a procedural level The publication of the IRT recommendation was not welcomed with the anticipated enthusiasm. Much of the criticism focused on the process through which ICANN formed and formalised a team of intellectual property experts to suggest protection mechanisms for the new gTLDs. It is quite uncertain where ICANN has drawn its authority to legitimise a process that would seek to align traditional trademark law principles with the

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new gTLDs. The most probable explanation is that ICANN succumbed to the pressures of its IP constituency, which were objecting the expansion of the Root until efficient protection mechanisms where in place.12 Ten years ago, it was the White Paper which legitimised WIPO’s proposals on the protection of trademark rights in the domain name space and the subsequent creation of the UDRP. Ten years later, WIPO was not even invited to join the IRT and criticised much of its substantive recommendations.13 Individual users and registrants were once again not invited to submit their recommendations and any potential balance that could have infiltrated the recommendation was sacrificed to the interests of the trademark community. In a letter to Frank Fowlie, ICANN’s Ombudsman, Philip Corwin, legal counsel of the Internet Commerce Association (ICA), commented on how the creation of the IRT was against ICANN’s bylaws and how the process negated the participation of many registrants and was one-sided and biased.14 Mainly composed of legal counsels representing big corporations, like Time Warner and the Richemont Group, the IRT was indeed a partisan and unrepresentative body. It was another manifestation of ICANN’s inability to weather the pressure of the big corporations and their constituencies. Why, otherwise, after ten years of ‘trademark lawyer abuse’ and UDRP unfairness, would ICANN be repeating the same mistake? It has been one of the most undemocratic moves of the corporation in the past ten years. The IRT was an illegitimate creature, justified in ICANN’s bureaucracy and formalised through a high degree of arbitrariness. Clearly, the views and interests of domain name holders – non-commercial, commercial, individual – were considered either irrelevant or of no great significance. All this led to the formation of the IRT under a climate of mysticism, characterised by the self-delusion and dreamy confusion of trademark owners that trademark rights should be afforded über-protection on the Internet. To this effect, the IRT conducted its proceedings within a close circle of individuals, bound by confidentiality agreements and unable to share any information. Contrary to current ICANN practices, where committee meetings are minuted and made available to the public, many of the IRT meetings were conducted behind closed doors and no information was made available to the wider public. Arguably, this ‘Masonic’ approach operated to the detriment of procedural justice and placed a big question mark on the way substantive issues were deliberated and managed.15 Repeating many of the mistakes that have taken place during the drafting of the UDRP,16 the IRT shut the world out and produced a recommendation limiting further the rights of legitimate domain name registrants. The procedural vulnerabilities of the recommendation have been key in its rejection by the wider ICANN community. In June 2009, in the ICANN annual meeting in Sydney, the IRT received negative feedback on the report. The Non-commercial Users Constituency (NCUC) and the At-large Advisory Committee (ALAC) joined forces for the first time and expressed their deep concern over the recommendation. Strong language was used to portray that

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trademark protection is not ‘one of the four horsemen of the Apocalypse’.17 The governments of Brazil and France questioned the legitimacy of the IRT composition and debated the substantive proposals of the report.18 Public comment poured into ICANN’s e-mail servers, evidencing the biased nature of the report and the fear that trademark owners are using ICANN as the platform to suggest policy that would allow them to dominate the market of the domain name language. Finally, it goes without saying that the same restrictions that should have stopped ICANN back then to proceed to policy making through the UDRP also apply in this case. This time, the IRT recommendation went beyond the setting up of a private administrative procedure; it went far enough to suggest proposals which would change the face of trademark law, transcend its limitations and deny any rights for domain name registrants. 14.2 The report’s substantive issues Disregarding completely the canons of fairness and equal opportunity, the substantive issues that the IRT addressed represented ‘the views of business and trademark interests in general’.19 The IRT recommendation presented six fundamental proposals: (1) the creation of an IP clearinghouse; (2) the creation of a Globally Protected Marks List (GPML); (3) the establishment of a Uniform Rapid Suspension System (URS); (4) the existence of post-delegation dispute resolution mechanisms at the top-level domains; (5) reconsideration of the WHOIS requirements for new gTLDs; and (6) the use of algorithm in string confusion review during initial evaluation.20 For purposes of political gaming, these recommendations were linked consequentially and, according to the team, should one fail, the whole report could fall apart. This was the IRT’s way of suggesting to ICANN that the proposal was implementable in its whole, which, as it would turn out, was not the case. From the range of the recommendations, much of the debate concentrated on the first three21 – the IP clearinghouse, the GPML and the URS. The proposals on the WHOIS database and algorithm use fell, in any event, outside the IRT’s remit. The first three, however, were truly interesting; they exemplified the effect of trademark forces, pressures and lobbying that conspired to excommunicate legitimate registrants from having a place on the Internet’s naming space. 14.2.1 The IP clearinghouse: substituting national trademark offices The main idea behind the IP clearinghouse envisioned the creation of ‘an information repository’ concerning existing trademarks across the five regions of the world. According to the proposal, data relating to the legal rights of trademark owners would be submitted to an independent provider, which should not ‘[have been] under a direct contractual relationship with

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ICANN’ and, which, nonetheless, would operate under a licence with ICANN. Trademark owners would bear the cost of their listings, while the clearing house was urged to be state-of-the-art so as it could maintain and support the myriad of listings. Among others, the IP clearinghouse was recommended to be highly scalable in order to accommodate the diversification of national trademark laws and the international classification system. What the IRT envisioned is not – altogether – a bad idea. Having an information storehouse is economically efficient and responds better to the expansion of the Root. It ensures consistency and helps registries and registrars avoid expensive and arduous sunrise procedures. However, the fundamental issues behind the clearinghouse were highly problematic and failed to take into consideration potentially legitimate threats. Under the vision of the IRT, ICANN would be in charge of a massive database, open to abuse and susceptible to ICANN’s vulnerabilities. Ironically enough, the recommendation seemed to ‘welcome’ the possibility of an abuse as it stated: [The IP clearinghouse] can also perform similar functions for other types of [Rights Protection Mechanisms] RPMs besides those recommended by the IRT at this point.22 This suggestion left too much discretionary power to ICANN to use the listings in the clearinghouse as authoritative to make other regulatory determinations. It granted ICANN powers currently enjoyed by national trademark offices and legitimised an international structure of trademark indexing that failed to address how it would compensate for trademark law’s limitations, such as that of territoriality.23 One could easily predict the future of the IP clearinghouse. Given ICANN’s trademark policy over the past ten years and its biased nature, a certain degree of abuse should have been expected. Without proper checks and balances, ICANN would potentially be able singlehandedly to promise listing even to the dimmest trademark right, hence, further decreasing the possibilities for individual registrants to exist in the domain name space. Further complicated questions emerged concerning the system’s ability to conform and respect national trademark laws. This issue concerned the validity of trademark registrations that were being assigned by trademark offices throughout the world. If WIPO were to be assigned as the designation for undertaking such task, this issue would not seem that important. For unintelligible reasons, however, WIPO was not mentioned as a possible option. WIPO operating in its capacity as an intergovernmental organisation, knowledgeable of the national trademark laws of its signatories, would have been able to examine the validity of trademark registrations across the world. For this reason, during the public comment period it was that suggested national Trademark Offices ought to be included in the discussion. National offices share similar substantive understandings of trademark law, but they

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differ in their perception as to their degree and influence (for example, different requirements for well known/famous marks, different protection standards for cultural icons, etc). At the same time, national Trademark Offices can recognise the constitutional barriers of trademark law, its relation to freedom of speech and the limits of fair use. A single index would displace these issues, which constitute core part of the trademark philosophy. It would further cloud any possibility for domain name registrants to receive appropriate forms of protection under the ICANN regime. 14.2.2 The Globally Protected Marks List: ‘superstar’ trademarks It is not the first time that discussions have taken place concerning a list of marks that are so famous so as to be worthy of global protection. Normally, such discussions reach a cul-de-sac because of the difficulty to invent a list of famous/well known marks let alone ‘superstar’ marks. The IRT attempted to create policy, through the establishment of the GPML for the protection of ‘Globally Protected Marks (GPM) at the top and second levels’.24 The recommendation recognised the need for higher levels of protection for GPMs and clarified that the notion of GPMs should neither be confused nor associated with the category of famous/well known marks.25 Recognising the need for high standards for inclusion in the GPML, the IRT particularised three main requirements, which – in reality – were relatively too arbitrary to legitimise the GPML.26 The recommendation made no reference to examples of what sort of marks the IRT considered ‘superstar’ for the purposes of the list. By excluding relevance to famous/well known marks, I suspect that the IRT had in mind an exclusive set of marks, like Apple Computers or Time Magazine. But is it possible to justify – even for these marks – a greater level of protection? What degree of authority did the trademark lawyers of the IRT wish for this list? The fact that the IRT expressly sought to dissociate GPMs from famous/well known marks should be seen as an effort to create a new category on top of the existing one. Here was the first part of the problem with the GPML; no equivalent list exists under trademark law for famous/well known marks and WIPO has systematically refrained from producing one. This indicated the degree of arrogance of trademark owners, who are under the impression that the DNS is some exclusive trademark territory. This was strongly manifested by the language of the recommendation, which suggested: The GPML applicant should not be required to apply for a gTLD corresponding to its applied-for GPM as a condition of inclusion in the GPML.27 The trademark community strategically sought to give presumptive power to list so that – at some point in the future – the list would be used as the main source of authority. That presumptive power would ensure that

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trademark interests would be protected online, disregarding the rooted axioms of trademark protection and its limitations. This brings us to the second part of the problem and how the GPML disrespected the limits of trademark law, reinforcing the thesis of trademark prevalence on the DNS. Although the IRT denied any relevance to the famous/well known marks, I find the category of famous marks as the most appropriate tool to demonstrate that, even at the level of possessing a famous mark, the owner is not necessarily shielded with extra protection. Generally, the criteria a court would consider in determining the fame of a mark (thus, that is subject to dilution), albeit not conclusive, focus on the following questions: (1) the degree of inherent or acquired distinctiveness of the mark; (2) the duration and extent of use of the mark in connection with goods or services with which the mark is used; (3) the duration and extent of advertising and publicity of the mark; (4) the geographical extent of the trading in which the mark is used; (5) the channels of trade for the goods or services with which the mark is used; (6) the degree of recognition of the mark in the trading areas and channels of trade used by the mark’s owner and the person against whom the injunction is sought; (7) the nature and extent of use of the same or similar marks by third parties.28 This is a set of strict requirements, which suggests that for traditional trademark law the fact that a mark is famous does not automatically activate über-protection mechanisms. With much insight some years ago, trademark law authority Thomas McCarthy, talking about the way trademark owners use the Federal Dilution Act to simplify the test and receive über-protection, stated: Some attorneys for owners of famous marks began to think it was preferable, because it was easier [emphasis added] to use this new antidilution law in order to prevail in garden-variety cases of infringement by a competitor.29 This was the intention of the IRT when suggesting the creation of the list – the maximisation and increase of the forms of protection their marks currently enjoy under traditional trademark law. Trademark owners were using the excuse of the addition of the new gTLDs and their influence on ICANN to promote bad policy that categorically sought to advance their supremacy over domain name registrants. Despite efforts by the IRT to the contrary, it does not take a lot to realise that much of the GPML had derived its scope from the theory of dilution. Creating a list of ‘superstar’ marks, calling for special protection and seeking to exclude an international audience, indicates the same wish that has prompted the passage of various anti-dilution statutes around the world. Moreover, seeking to block identical marks – at the top and second level domain names – operates under the assumption that the mark’s power will weaken and that users will be automatically confused. This is a mistaken assumption. For McCarthy, the

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theory of dilution (declaring that a mark is worthy of this extra degree of protection) is based on three assumptions: the assumption of multiple uses; the assumption of mental connection; and, the assumption of damage to the famous mark. For McCarthy, no mark should qualify as famous/well known, until the owner is able to submit evidence that these assumptions are true and valid. To this end, Professor McCarthy suggests that courts have yet to create a category of ‘superstar’ marks and puts in test the word Amazon to suggest that should not automatically afford global protection because it is famous, since the word Amazon can acquire different meanings.30 To this end, if various individuals sought to register the word Amazon and associate it with restaurants, gyms or gardening services, Amazon should not be able to block its use on the basis of fame. As Professor McCarthy graphically says: My thought is that, to a majority of consumers, these uses would not immediately call to mind that particular use of the word ‘Amazon’ as a famous mark for an online seller.31 This is something that the recommendation failed to consider. In the years to come, the GPML proposal will continue to remain the example of how a group of trademark lawyers wished to defy the limits of trademark law. Eventually, the GPML would operate as the tool for blocking registrations in all new gTLDs – including those intended for non-commercial use, criticism and free speech. At the same time, such a list would grant exclusive rights to the use of generic words on the Internet. Generic terms such as ‘Time’, ‘People’, ‘Ford’, ‘Shell’, which can now be used for legitimate purposes, would be removed from the domain name dictionary. As Professor McCarthy argues, referring to the protection of such terms under the theory of dilution, I do not think that it can be assumed or presumed that the ordinary consumer, when confronted with an identical mark on nonconfusing, far removed goods or services, will inevitably and necessarily think of the famous mark.32 Professor McCarthy’s point is acute and, if this is the understanding in traditional trademark law, we need to ensure that any policy we create in the online world reflects the same rationale. Blocking registrations of domain names and gTLDs on the basis of an arbitrary list and using the UDRP in an erroneous way to address issues of due process,33 does not serve this purpose. The only great thing about the GPML is that it manifested beyond any reasonable doubt the agenda trademark owners have had all these years. It has exemplified that over the past ten years, trademark forces have persisted in protecting their rights on the Internet at the expense of domain name registrants. Why should the use of the word ‘Time’ be proscribed only to Time Warner?

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14.2.3 Uniform Rapid Suspension System: ‘distancing the courts’ Fearing that the addition of new gTLD will increase the degree of trademark infringement, the IRT recommended ‘that all new gTLD registries be required, pursuant to their contracts with ICANN, to take part in a Uniform Rapid Suspension System (URS)’.34 The recommendation routed the concept of the URS via the UDRP and its language indiscriminately condemned all domain name registrants, whose activities categorically harm the value of trademarks.35 The IRT’s choice of this language was certainly not accidental as it sought to legitimise a process that not only repeats the mistakes of the UDRP but, at the same time, undervalues domain names as autonomous rights. In reality, the URS was an unimaginative recommendation, lacking any clear justification or serving any real purpose. But, here is the problem with domain name regulation, since, essentially, the URS was just another attempt by the trademark community to exclude domain names and, generally, control domain name registrations. The current climate of the UDRP of course, encouraged the IRT to take this step. The recommendation used the ten years of UDRP experience – irrespective if this experience is tainted by substantial misconceptions – and envisioned the URS to be a supplemental tool and not a replacement.36 This vision allowed the IRT to create an additional tool for trademark owners and merge the two systems (UDRP and URS) into one big pool of private adjudication, distancing the parties – and especially the weaker registrant – further from court adjudication. Parroting the language of the UDRP, the URS was meant to address a cybersquatting problem for brand owners that is already insidious and enormous in scale, and which will continue to spiral out of control with the introduction of an unlimited number of new gTLDs unless addressed.37 The IRT aspired the URS to be fast and inexpensive, reflecting the same wish the team had ten years ago.38 If the justifications and rationale behind the URS were so similar to the UDRP, why did the IRT not choose to expand the UDRP by including the new gTLDs? It is not clear from the recommendation, what the IRT had in mind with this proposal. Is it possible they considered the UDRP an unsuccessful tool? On the contrary, the IRT celebrated the UDRP as ‘an important and successful mediation tool for trademark owners and domain name registrants alike’.39 It can only be, therefore, that the IRT intentionally sought to create an additional mechanism on top of the UDRP and sought to do so, without the participation of individual registrants, systematically fostering the culture of the past ten years. Through the URS, the IRT wished for the minimal possible interference of the courts. Creating an inextricable connection between the two systems and using two layers of fast and cheap adjudication, courts would appear monolithic with fossilised processes. If under the current UDRP regime

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courts’ interference is minimum, the URS would detach courts from domain name adjudication completely. Trademark owners would ultimately have two systems at their disposal, registrants would be left disincentivised and alone, while the expensive nature of courts would seem as an undesirable alternative to both parties. To suggest that the recommendation contemplated on the mistakes of the UDRP would be a mistake. Issues of justice that are currently unaddressed, remained unaddressed. Under this recommendation, it was almost certain that the URS would exemplify a familiar pattern of decisions that exceeded their scope, raised issues of justice and disrespected the legitimate rights of registrants.40 The system was once again structured in a cursory manner with extremely short deadlines and no checks or balances. In a manner worse than the UDRP, the URS failed to address issues of legitimate interests, made the bad faith requirement allinclusive and created a complex structure concerning the burden of proof. Naturally, it failed to contemplate on issues of trademark limitations as well as how the two systems would merge; it further failed to answer questions relating to issues of legal superiority between the systems and whether the URS would have any internal/external checks, etc.41 Arguably, if the trademark constituency were able to proceed with the URS in its original form, the system would inevitably spiral out of control, and would be open to trademark abuse. What the IRT came up with lacked vision and proper evaluation of due process and justice. The introduction of the new gTLDs was the perfect opportunity to really open a debate about the UDRP and seek to cure its fundamental flaws. It could have led to a systematic review, where the level of the UDRP’s procedural unfairness would by itself serve as evidence of the need for reform. 14.3 The taming of trademark protection Despite the IRT’s efforts, promotion and campaigning, the recommendation failed to receive the acquired consensus and was rejected by the ICANN staff and the wider Internet community. In an interesting turn of events, the ICANN staff submitted new proposals on rights protection mechanisms, some of which echoed the IRT, whilst others departed significantly from the original proposals. Rejecting the proposal for a Globally Protected Marks list altogether, the staff proposals focused on the creation of a trademark clearing house – replacing the expansive previous IP term – and the establishment of a Rapid Suspension System for the egregious cases of cybersquatting, which was unfortunately worse than its original format. The ICANN staff proposals, however, were not meant to be binding. On the contrary, the ICANN staff instructed the GNSO to proceed to the creation of a Special Trademark Interest (STI) team, tasked with reviewing the proposals and either accept them or recommend new ones. In any event, the STI was assigned the heavy duty to submit recommendations, based on consensus and aiming to create the necessary balance that was omitted in the IRT recommendation.

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On October 29, 2009, the GNSO passed a resolution, affirming the creation of the STI. According to the resolution, the STI would be comprised of representatives designated as follows: the Registrar and Registry Stakeholder Groups with two (2) representatives each, the Commercial Stakeholder Groups and the Non-Commercial Stakeholder Groups with four (4) representatives each, At-Large with one (1) representative, one representative from the Nominating Committee Appointees(1) and the Government Advisory Committee (GAC) with one (1) observer. Alternate members may participate in case of absence of the designated representatives.42 ICANN should really be applauded for deciding to bring the issues of trademark protection back to its constituencies. This move has been in line with ICANN’s bottom-up policy processes and departs significantly from the intransparent process that created the IRT. The STI’s mission is of great significance, as any conclusions this new team will reach, will have an impact on the regulation of domain names for the years to come. Once again, however, the time frame given to the STI to reach consensus has been unreasonably tight, considering that as of yet ICANN is not even in the position to provide a timetable for the launch of its new gTLD programme. At the Seoul meeting, ICANN deferred the implementation of the new gTLDs to the future and, despite intense pressures by the registrar community and other entities, ICANN was not able to commit to an exact launch date. Why then ICANN chose to put such pressure on the STI? In reality, ICANN wants to settle the issue of rights protection mechanisms as soon as possible. It is the one issue that, unless resolved, it can potentially prevent the expansion of the Root and the assignment of new gTLDs. The Intellectual Property Constituency is willing to curb this expansion and it has already demonstrated that it has the power to do so. To this end, ICANN believes that, once the issue of trademark protection is resolved, the plan to offer an unlimited number of gTLDs can progress with fewer obstacles. And, in the midst of all this, WIPO is promoting its fast-track process, bypassing and overshadowing the work of the STI.43 As of the writing of this book, the STI has concluded its heavy task and has produced balanced recommendations, which address issues of justice and due process. ICANN has already opened the recommendations to the public comment period and has received feedback, mainly from the trademark community, which flooded ICANN’s servers expressing, unsurprisingly and unimaginatively, a strong wish to go back to the proposals of the illegitimate IRT report. However, in reality there is only one thing that we should focus on: a UDRP amendment. The message cannot be clearer: the current regime has problems and we need to fix them as soon as possible!

Notes

1 Introduction 1 ‘Affirmation of Commitments’ by the U.S. Department of Commerce and the Internet Corporation for Assigned Names and Numbers, available at www. icann.org/en/announcements/announcement-30sep09-en.htm#affirmation (visited October 5, 2009). 2 ‘The Expansion of Top Level Domains and its Effects on Competition’, Hearing of the Committee of the Judiciary, available at http://judiciary.house.gov/hearings/ hear_090923.html (visited October 5, 2009). 3 ‘WIPO Conference: Ten Years UDRP – What’s Next?’ Available at www.wipo.int/ amc/en/events/workshops/2009/10yrs-udrp/index.html (visited October 5, 2009), WIPO’s UDRP and domain name dispute workshops are held in Geneva and are always followed by a substantial fee, which makes participation difficult and expensive, especially for individual domain name registrants. 4 Jacob Siegel Cl. v. FTC, 327 U.S. 608 (1946). 5 Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd. 527 U.S. 666 (1999). 6 Port, Kenneth (1993), ‘The Illegitimacy of Trademark Incontestability’, Ind. L. Rev. 26:519, at p. 559. 2 Contextualising property 1 Young, H. Peyton (1994), Equality in Theory and Practice, Princeton University Press. 2 Baumol, William J. (1986), ‘Superfairness: Applications and Theory’, cf. empirical analysis in Keller, Robin L. and Sarin, R. K. (1988) ‘Equity in Social Risk: Some Empirical Observations’, Risk. Anal. 8:135. 3 Scholars who voiced their opinion on the propertisation of trademarks included: Schechter, Frank I. (1925), ‘Historical Foundations of the Law relating to Trademarks’, Columbia Law Review, 25:8. 4 These might include: the claim to exclusivity (possession), the privileges of use, the privilege to appropriate fruits, the power of disposal, and the immunity from loss of the foregoing claims, privileges and power (‘bundle of rights’ theory). 5 Diosdi, Gyorgi (1970), Ownership in Ancient and Preclassical Roman Law, Akademiai Kiado (Budapest), at p. 136. 6 Waldron, J. (1997), The Right to Private Property, Clarendon Press, at pp. 37–42.

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7 Cahir, John (2004), ‘The Withering Away of Property: The Rise of the Internet Information Commons’, O.J.L.S. 24:4, at p. 620. 8 Plato, Republic, 5:2, at §7–9: ‘A common-pool resource (CPR), alternatively termed a common property resource, is a particular type of good consisting of a natural or human-made resource system, the size or characteristics of which makes it costly, but not impossible, to exclude beneficiaries from obtaining benefits from its use.’ 9 Aristotle. Politics, §5, at 25–29: ‘Property of this sort then seems to be bestowed by nature herself upon all, as immediately upon their first coming into existence.’ 10 Locke, John (1960), ‘The Second Treatise of Government’, §27, at 17. 11 De Long, J. (1977), Property Matters, Free Press, at p. 73. De Long has actually criticised Locke’s theory stating the following: ‘Why does labor itself create any rights in a thing? The labor theory rests at least upon the belief that each person owns himself. Yet that claim, unless it be accepted as bedrock and unquestioningly, must be justified in some way (leaving aside the question of to whom the justification must be made) … . The difficulties do not end here. Suppose the proposition that each person is indeed the owner of himself has been demonstrated satisfactorily. How does this ownership allow him, as against all other persons in the world, to appropriate things to himself by the expenditure of labor?’ However, this argument fails from a practical point of view. As Jacqueline Lipton asserts: ‘A “fruits of one’s labor” justification of property rights might now be regarded as a practical description of a societal phenomenon in modern Western communities, rather than a philosophical theory underpinning the creation of a property right.’ Lipton, Jacqueline (1999), ‘A Revised “Property” Concept for the New Millennium?’ I.J.L. and I.T., 7, at p. 175. 12 Hegel, G. W. F. (1896), ‘Philosophy of Right’, §45 at 52. 13 Bentham, Jeremy (1882), The Theory of Legislation, 113. 14 Dickerson, Michele A. (1997), ‘From Jeans to Genes: The Evolving Nature of Property of the Estate’, Bankr. Dev. J. 15, at p. 287. 15 Hohfeld, Wesley, N. (1913), ‘Some Fundamental Legal Conceptions as applied in Judicial Reasoning’, Yale Law Journal 23, at pp. 22–23. 16 Carter, Stephen L. (1993), ‘Does it Matter whether Intellectual Property is Property?’ Chi-Kent Law Rev. 68:715, at pp. 22–23. 17 Fanning, David, F. (2001), ‘Quasi in rem on Cyberseas’, Chi-Kent Law Rev. 76, at pp. 1896–97. 18 First Charter Land Corp. v. Fitzgerald, 643 F. 2d 1011 (4th Cir. 1981), at pp. 1014–15. 19 ‘The Corpus Juris Civilis’, CLT, Chapter 3, p. 729. 20 Harris, J. (1996), Property and Justice, Clarendon Press, at p. 10. 21 ‘Every natural or legal person is entitled to the peaceful enjoyment of his possessions.’ European Convention on Human Rights (1950), Protocol 1, article 1 (1952). 22 Bouckaert, B. (1990), ‘What is Property?’ Harvard Journal of Law and Public Policy 13:475. 23 Mincke, W. (1997), ‘Property: Assets or Power? Objects of Relations as Substrata of Property Rights’, in Harris (ed.), Property Problems from Genes to Pension, Kluwer, 78–88. 24 Harris, J. (1996), Property and Justice, supra, note 20, at p. 10. 25 ‘The Corpus Juris Civilis’, supra, note19, at p. 738.

Notes 199 26 Freeman, Alexis (2002), ‘Internet Domain Name Security Interests: Why Debtors can Grant them and Lenders can Take them in this New Type of Hybrid Property’, Am. Bankr. Inst. L. Rev. 10, at p. 873. 27 O’Rourke, Maureen, A. (1997), ‘Rethinking Remedies at the Intersection of Intellectual Property and Contract: Toward a Unified Body of Law’, Iowa L. Rev. 82. 28 Blackstone, William, Commentaries ∗ 2. 29 Barnett, Kathy (2000), ‘Western Australia v. Ward: One Step Forward and Two Steps Back: Native Title and the Bundle of Rights Analysis’, Melb. U. L. Rev. 24, at p. 469. 30 Hohfeld, Wesley, N. (1917), ‘Fundamental Legal Conceptions as Applied in Judicial Reasoning’, Yale Law Journal 26. 31 Hohfeld gives meaning to ‘right’ by comparison with its correlative ‘duty’ through the following example: ‘if X has a right against Y that he shall stay off the former’s land, the correlative (and equivalent) is that Y is under a duty toward X to stay off the place’. Ibid., at p. 32. 32 For Hohfeld, the antithesis of the right–duty relationship is the privilege–no right relationship. As he observes: ‘The privilege of entering is the negation of a duty to stay off’. Ibid., at p. 2. 33 ‘Power’, in the Hohfeldian taxonomy, has the correlative ‘liability’. Ibid., at p. 44. 34 This conclusion stems from the observation that rights are by definition relationships between people. Where there is a right there must essentially be a correlative duty and an object cannot owe a duty. Ibid. 35 Merrill, Thomas W. and Smith, Henry E. (2001), ‘What Happened to Property in Law and Economics?’ Yale Law Journal 111, at p. 357. 36 Ibid., at p. 360. 37 Moore v. Regents of the Univ. of Cal., 793 P. d 479 (Cal. 1990), at p. 510: ‘Though a … limitation or prohibition diminishes the bundle of rights that would otherwise attach to the property … what remains is still deemed in law to be a protectable property interest … [This is because] ‘… property or title is a complex bundle of rights, duties, power and immunities, [and] the pruning away from some or a great many of these elements does not entirely destroy the title …’ [quoting People v. Walker, 90 P. d 854 (1939)]. 38 Bell, Abraham and Parchomovsky, Gideon (2005), ‘A Theory of Property’, Cornell Law Review 90:3, 531–615, at pp. 545–6. 39 Honoré, A. M. (1961), ‘Ownership’ in Oxford Essays in Jurisprudence, Oxford University Press 107, at pp. 112–28. 40 Ibid., at p. 113. 41 Honoré added ‘immunity from expropriation’ to the list. Ibid. 42 Ibid. 43 Ibid. 44 Grey, Thomas C. (1986), ‘The Malthusian Constitution’, U. Miami L. Rev. 41:21, at p. 30. 45 Mossoff, Adam (2003), ‘What is Property? Putting the Pieces Back Together’, Arizona Law Review 45, at p. 74. 46 Coase, R. H. (1960), ‘The Problem of Social Cost’, J.L. and Econ. 3:1. 47 Ackerman, Bruce A. (1977), Private Property and the Constitution, Yale University Press, at p. 6.

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48 Grey, Thomas C. (1980), ‘The Disintegration of Property’, in Nomos XXII: Property 69 ( J. Roland Pennock and John W. Chapman, eds). 49 Eleftheriadis, P. (1996), ‘The Analysis of Property Rights’, Oxford Journal of Legal Studies, 16, at p. 40. 50 Epstein, R. (1979), ‘Possession as the Root Title’, Georgia Law Review 13, at p. 1227. 51 Nicita, Antonio, et al. (2007), ‘Towards a Theory of Incomplete Property Rights’, American Law and Economics Association Annual Meetings, at p. 5, available through SSRN: http://ssrn.com/abstract=1067466 (visited on January 15, 2009). 52 Ibid. 53 Balganesh, S. (2006), ‘Common Law Property Metaphors on the Internet: The Real Problem with the Doctrine of Cybertrespass’, Mich. Telecomm. L. Rev. 12, at p. 11. 54 Property rights may arise from contract, in the sense that there might be an overlap of rights between the two systems. In relation to the sale of land, for instance, two sets of legal relationships exist alongside one another: the personal right to sue for damages as derived from the contract and the proprietary right exercisable over the thing. 55 Blackstone, supra, note 28. 56 Balganesh (2006), ‘Common Law Property Metaphors on the Internet’, supra, note 53, at p. 18. 57 Cohen, Morris R. (1927), ‘Property and Sovereignty’, Cornell Law Quarterly 13:8. 58 Ibid., at pp. 9–30. 59 Balganesh, S. (2006), ‘Common Law Property Metaphors on the Internet’, supra, note 53, at p. 18. 60 This is the position that was taken in Pierson v. Post [3 Caines 175, 2 A.D. 264] (N.Y. Sup. Ct., 1805), where Justice Livingston argued that any decision should consider how the law can be used to stimulate the social and economic good. He took the view that property rights should vest in the individual whose effort and labour gave rise to the foxhunt, which under the circumstances was deemed to be the investment necessary in breeding and maintaining the hounds. 61 Blackwell (2004), The Blackwell Dictionary of Western Philosophy, Blackwell Publishing, p. 630. 62 Kant, Immanuel (1797), The Metaphysics of Morals (Mary Gregor, ed. and trans.), Cambridge University Press, 1996. 63 Rawls, John (1995), Political Liberalism, Columbia University Press, at pp. 13–214. 64 Lehavi, Amnon (2008), ‘The Property Puzzle’, Georgetown Law Journal 96, at p. 1995. 65 Rawls, John (1995), Political Liberalism, supra, note 63, at p. 36. 66 Ibid., at p. 240. 67 Ibid., at pp. 223–4. 68 Lehavi, Amnon (2008), ‘The Property Puzzle’, supra, note 64, at p. 1996. 3 Introducing trademarks 1 Smith, J. J., 1862 Select Committee on Trade Marks 58 (q. 1210). 2 240 U.S 403, 412 (1916).

Notes 201 3 Schechter, Frank, I. (1927), ‘The Rational Basis for Trademark Protection’, Harvard Law Review, XL:813, at p. 815. 4 Pickering, C. D. G. (1998), Trademarks: In Theory and Practice, Hart Publishing. 5 For a more detailed analysis, Schechter (1927), ‘The Rational Basis for Trademark Protection’, supra, note 3. 6 The theories of John Locke (1632–1704) and Adam Smith (1723–1790) were prominent during this era. Locke proposed a theory of property built on the idea of natural law, arguing that, by mixing one’s labour with an object, one owns the object. On the other hand, the father of classical economics, Adam Smith, believed that individual welfare rather than national power was the correct goal; he, thus, advocated that trade should be free of government restrictions. 7 Major Bros v. Franklin & Son, 25 Rep. Pat. Cas. 406 (1908), at 414. 8 Scialoja, Vittorio (1927), ‘Teoria della proprietà nel diritto romano’, I:27. 9 As translated in Gretton, George L. (2007), ‘Ownership and its Objects’, Rabels Zeitschrift für ausländisches und internationales Privatrecht 71, at pp. 804–5. 10 ‘Taken literally, this classification is gimcrack. One should not hesitate to challenge it. How can one contrast two terms that have nothing in common, things on the one hand and rights on the other? And why not mention ownership, which after all is a fundamental right, logically prior to usufruct and the servitudes?’ De Page, Henri, Traité élémentaire de droit civil belge V (1941), 5, 536. Nicholas also mentioned: ‘It [the corporeal/incorporeal distinction] is a convenient distinction, and it certainly corresponds to the way we speak – a man will say that he has bought one plot of land, a right way over a second, and an option on a third – but on strict examination it is illogical. It identifies ownership with the object owned. The strictly comparable statement to “I have bought a right of way over a plot of land” is not “I have bought a plot of land” but “I have bought the ownership of a plot of land”. In each case I have acquired a right.’ Nicholas, B. (1962), An Introduction to Roman Law, Clarendon Press, 107. 11 Gretton, G. (2007), ‘Ownership and its Objects’, supra, note 9, at p. 807. 12 Ginossar, S. (1960), ‘Droit réel, propriété et créance. Élaboration d’un système rationnel des droits patrimoniaux’, Librairie Genérale de Droit et Jurisprudence (LGDJ), at p. 33. 13 Ibid., at p. 35. 14 Gretton, G. (2007), ‘Ownership and its Objects’, supra, note 9, at p. 811. 15 Reid, Kenneth G. C., et al. (1996), Law of Property in Scotland, Butterworth, at para. 16. 16 Meijers, Eduard Maurits (1948), Algemene leer van het burgerlijk recht I, De algemene begrippen van het burgerlijke recht’, Leiden, at p. 280. 17 Harris, J. (1996), Property and Justice, at chapter 4. 18 www.wipo.int/tk/en/glossary/#ip (visited January 28, 2009). 19 Trademark Cases, 100, U.S. 82, 94 (1879). 20 Sherman, Brad and Bently, Lionel (1999), The Making of Modern Intellectual Property Law, Cambridge University Press. 21 Palmer, Tom G. (1997), ‘Intellectual Property: a Non-Posnerian Law and Economics Approach’, in Intellectual Property: Moral, Legal and Intellectual Dilemmas (ed. Adam D. Moore), Rowman & Littlefield, at p. 179; Kinsella, Stephan N. (2001), ‘Against Intellectual Property’, Journal of Libertarian Studies 15:2, at p. 1. 22 Schechter, F. (1927), ‘The Rational Basis for Trademark Protection’, supra, note 3, at p. 817.

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23 Hindmarch, W. (1862), Select Committee on Trademarks, 129, q. 2772. 24 Wood, Trueman, H. (1875), ‘The Registration of Trademarks’, Journal of the Societies and Arts 24, at pp. 17–18; Drewry, C. (1878), The Law of Trademarks, Knight & Co. 25 Schechter, Frank I. (1927), ‘The Rational Basis for Trademark Protection’, supra, note 3. 26 Philips, Jeremy and Firth, Alison (1995), Introduction to Intellectual Property Law, Butterworth, 3rd edn, at p. 4. 27 [1838] 3 My. and Cr. 338 28 Philips and Firth (1995), Introduction to Intellectual Property Law, supra, note 26, at p. 2. 29 Wood, T. (1875), ‘The Registration of Trademarks’, supra, note 24. 30 Ibid. 31 Art. 12, para. 2b, Directive 89/104/EEC of the Council of 21st December 1988 to approximate the Laws of the Member States relating to Trademarks, OJ, EC. No. L40 of 11.2.1989. 32 James Burrough Ltd and Kobrand Corp. v. Sign of the Beefeater Inc. and Montgomery Ward & Co. 192, U.S.P.Q. 555; 540 F. 2d 266 (1976). 33 Ozga, S. A. (1960), ‘Imperfect Markets through Lack of Knowledge’, Quarterly Journal of Economics 74, at p. 29. 34 Sanders and Maniatis (1993), ‘A Consumer Trademark: Protection based on Origin and Quality’, E.I.P.R., 406, at p. 406. 35 Brown, Ralph S. (1984), ‘Advertising and Public Interest: Legal Protection of Trade Symbols’, Yale Law Journal 1165, at p. 1186. 36 S. Rep. No. 1333, 79th Cong. 2d Sess. 4, reprinted in 1946, U.S. Code Cong. and Ad. News 1274, 1275. 37 Bulletin of the European Communities, Supplement 8/76, para. 11–12. 38 Folsom & Tepley (1980), ‘Trademarked Generic Words’, Yale Law Journal 89, at p. 1335. 39 Landes, William M. and Posner, Richard A. (1987), ‘Trademark Law: An Economic Perspective’, J.L. and Econ. 30, at p. 269. 40 Akerlof, George (1970), ‘The Market of Lemons: Quality, Uncertainty and the Market Mechanism’, Quarterly Journal for Economics 84, at pp. 488–500. ‘Asymmetric Information’ is the practice whereby one party in a transaction has more information compared to others about that transaction and, hence, has an advantage that can result in market inefficiencies. 41 Landes and Posner (1987), ‘Trademark Law’, supra, note 39, at pp. 268–270. 42 ‘Trademarks Promote U.S. Economic Growth’, published by the U.S. Trademark Association, New York, 1978. The report was referring to how trademarks are able to influence the U.S. economy. 43 Landes and Posner (1987), ‘Trademark Law’, supra, note 39, at p. 271. 44 Palmer v. Harris, 60 Pa. St. 156–9 (1869). 45 Handler, M. and Pickett, C. (1930), ‘Trade Marks and Trade Names: An Analysis and Synthesis’, Colum. L. Rev., 30:168, at p. 770. 46 Bone, Robert, G. (2006), ‘Hunting Goodwill: A History of the Concept of Goodwill in Trademark Law’, B.U.L. Rev. 86:547, at p. 582. 47 Ross, William, G. (1994), A Muted Fury: Populists, Progressives and Labor Unions Confront the Courts, Princeton University Press. 48 Pope, Daniel (1983), The Making of Modern Advertising, Basic Books, at p. 414.

Notes 203 49 Bartholomew, Mark, ‘Trademark Law and the Historical Myth’, draft paper, www.law.depaul.edu/centers_institutes/ciplit/ipsc/paper/Mark_ BartholomewPaper.pdf (visited on February 2, 2009), at p. 16. 50 Ibid., at p. 20. 51 Callmann, Rudolph (1947), ‘Unfair Competition without Competition?’ U. Pa. L. Rev. 495:43, at p. 464. 52 Miles Labs Inc. v. Frolich, 195 F. Supp. 256 (S.D. Cal. 1961) at p. 260; Lever Bros. Co. v. Winser Co., 326 F. 2d 817 (C.C.P.A. 1964), at pp. 819–820. 53 Ross, William (1994), ‘A Muted Fury’, supra, note 47, at pp. 315–16. 54 Bartholomew, Mark, ‘Trademark Law and the Historical Myth’, supra, note 49. 55 Koskenniemi, Martti (1989), From Apology to Utopia: The Structure of International Legal Argument, Cambridge University Press, p. 192. 56 Steele v. Bulova Watch Co. Inc., 344 U.S. 280 (1952); Cable News Network LP v. cnnews.com, 162 F. Supp. 2d 484 (E.D. Va. 2001). 57 Dahl, Robert A. (1961), Who Governs? Democracy and Power in an American City, Yale University Press. 58 Dinwoodie, Graeme B., and Janis, Mark D. (2007), ‘Confusion over Use: Contextualism in Trademark Law’, Iowa Law Review 92. 4 Domain names 1 In the fall of 1994, journalist Joshua Quittner interviewed Scott Williamson, an InterNic manager, who claimed that no real checks are conducted for potential trademark violations by domain name registrations. Quittner asked Williamson if that meant that nothing stops him from registering a famous trademark as a domain name, and Williamson replied: ‘there is nothing that says that the register can stop you from doing that’. This prompted Quittner to proceed to the registration of , an action that eventually resulted in McDonalds Inc. paying a fee to Quittner, which he later donated for computer equipment to an elementary school. With this experiment Quittner indicated the potentially hazardous effect of domain name registrations. 2 For example, [email protected]. 3 Mockapetris, P. (1987), ‘Request for Comments (RFC) 1034: Domain Names – Concepts and Facilities 29’, Internet Engineering Task Force (IETF), available at www.ietf.org/rfc/rfc1034.txt (visited March 2, 2009). 4 ‘The Management of Internet Names and Addresses: Intellectual Property Issues’, Final Report of the WIPO Interim Domain Name Process, April 30, 1999, available at www.wipo.int/export/sites/www/amc/en/docs/report-final1. pdf (visited March 2, 2009). 5 A few years ago, so-called ‘name-based virtual hosting’ introduced the possibility of operating unrelated Web servers, identified by different domain names but with a single IP address. Fielding, R. et al., ‘RFC 2616: Hypertext Transfer Protocol-HTTP/1.1’ §52, Information Science Institute, available at www.ietf. org/rfc/rfc2616.txt (visited March 2, 2009). 6 Froomkin, Michael (2000), ‘Wrong Turn in Cyberspace: Using ICANN to Route Around APA and the Constitution’, Duke L.J. 50:17, at pp. 38–39. 7 Rony, Ellen and Rony, Peter, The Domain Name Handbook 26 (1998), at pp. 513–572. 8 Froomkin, M. (2000), ‘Wrong Turn in Cyberspace’, supra, note 6, at p. 39.

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9 A List of the ccTLDs and their registries is available at www.iana.org/domains/ root/db/ (visited March 3, 2009). 10 A list of the gTLDs and their registries is available at www.icann.org/en/tlds/ (visited March 3, 2009). 11 ISO 3166, Code Lists, English Country Names and Code Elements, available at www.iso.org/oso/en/prods-services/iso3166ma/02iso-3166-codelists/list-en1.html (visited March 3, 2009). 12 For instance, registration in the domain name is allowed only to individuals resident in the United States or entities that are tied to the United States. 13 The ‘shared registry’ system is a communal data pool made up of the registration data for the gTLDs collected by all ICANN-approved registries and maintained by NSI. Network Solutions, Glossary of Terms, VeriSign Global Registry Services, www.nsiregistry.com/glossary/gt3.html (visited March 3, 2009). 14 A ‘registrar’ is a firm that contracts with clients [‘registrants’] to collect their information and payment in order to make a definitive and unique entry into a database containing all domain names registered in a top-level domain name; the database is maintained by a ‘registry’. 15 For instance, has been associated with two IP numbers, namely 64.209.200.100 and 64.209.200.101. 16 Froomkin, M. (2000), ‘Wrong Turn in Cyberspace’, supra, note 6, at p. 42. 17 Ibid., at p. 43. 18 Manheim, Karl, M., and Solum, Lawrence, B. (2004), ‘An Economic Analysis of Domain Name Policy’, Hastings Communications and Entertainment Law Journal 25:317, at p. 350. 19 Ibid. 20 ‘Some people find the word “Meritage” meritorious. Others find it meretricious. But most people have no idea what it means.’ Denver Post; June 8, 1994. And the dictionaries provide no help: as of early 2003, no major dictionary had an entry on the term – which has an interesting history. In 1988, California wine makers sponsored an international contest to create an up-scale term for a table wine blended from two or more Bordeaux varietals grown in the United States. A California grocery-store wine buyer won the contest with ‘Meritage,’ a portmanteau word formed by combining merit with heritage. Yet many wine enthusiasts mistakenly give it a Frenchified pronunciation, which has become lamentably widespread. 21 Manheim and Solum (2004), An Economic Analysis of Domain Name Policy, supra, note 18, at p. 350. 22 Ibid., at p. 351. 23 Ibid. 24 Ibid. 25 Ibid. 26 ‘NSI Service Agreement, Version 7.12’, available at www.networksolutions.com/ legal/static-service-agreement.jsp (visited March 5, 2009). 27 Network Solutions Inc. v. Umbro Int’l. Inc. 529 S.E. 2d 80 (Va. 2000), at 86. Network Solutions acknowledged before this court that domain names are a form of intangible property. See also Network Solutions Inc. v. Clue Computing Inc., 946 F. Supp. 858 (D. Colo. 1996), at 860.

Notes 205 28 Dranoff-Perlstein Associates v. Sklar, 967 F. 2d 852 (3rd Cir. 1992); the court refused to recognise any trademark rights in a mnemonic and argued that, if trademark protection were to be extended to mnemonics using generic terms, ‘the first firm in a given market to obtain such a telephone number would, merely by winning the race to the telephone company, gain an unfair advantage over its competitors’. 29 U.S. Patent and Trademark Office Examination Guide No. 2-99, Marks Composed in Whole or in Part of Domain Names, available at www.uspto. gov/web/offices/tac/notices/guide299.htm (visited September 18, 2009), U.S. Patents and Trademark Office, ‘Applying to Register a Trademark’ available at www.ipo.gov.uk/tmapply.pdf (visited September 18, 2009). 30 ‘Since the implementation of the domain name system, the Patent and Trademark Office has received a growing number of applications for marks composed of domain names. While the majority of domain name applications are for computer services such as Internet content providers (organisations that provide Web sites with information about a particular topic or field) and online ordering services, a substantial number are for marks used on other types of services or goods.’ USPTO, Ibid. 31 Re Hotels.com LP, U.S. Court of Appeals for the Federal Circuit, 2008-1429 (Serial No.78/277, 681). 32 In quoting Professor McCarthy (§12.05[1] (3d edn 1992), the court asserted that: ‘Descriptive terms describe a thing, while generic terms name the thing … there is only a fine line between describing and naming’. Ibid. 33 Re Hotels.com LP, supra, note 31. 34 Oriel v. Russell, 278 U.S. 358, 362–3 (1929). 35 Re Hotels.com, L.P, supra, note 31, at p. 8 36 482 F. 3d, No. 2006-1309. 37 Ibid., at 1377. 38 Network Solutions Domain Name Registrar Agreement P4, http://myhosting. com/NSI-Agreement.htm (visited March 5, 2009). 39 Ibid., Schedule G. 40 Ibid., at p. 11. 41 60 F. Supp. 2d 558 (E.D. Va. 1999). 42 Ibid., at p. 559. 43 Ibid., at pp. 558–562. 44 Ibid. 45 Ibid., at p. 561. 46 529 S.E. 2d 80 (Va. 2000). 47 Ibid., at p. 81. 48 Nguyen, Xuan-Thao (2001), ‘Cyberproperty and Judicial Dissonance: The Trouble with Domain Name Classification’, Geo. Mason L. Rev. 10, at pp. 198–199. 49 Ibid., at p. 185. 50 Umbro Int’l Inc. v. 3263581 Canada Inc. 48 Va. Cir. 139 (1999), at p. 145. 51 Ibid., at pp. 81–82. 52 Ibid. 53 Network Solutions Inc. v. Umbro Int’l Inc., supra, note 27, at p. 86. 54 Moringiello, Juliet, M. (2003), ‘Seizing Domain Names to Enforce Judgments: Looking Back to Look to the Future’, U. Cin. L. Rev. 72, at p. 105. 55 Umbro Int’l Inc. v. 3262581 Canada Inc, supra, note 50, at p. 145.

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84

85 86 87 88 89 90 91

Notes Ibid., at pp. 144–145. Network Solutions Inc. v. Umbro Int’l Inc., supra, note 27. Ibid., at pp. 85–87. Moringiello (2003), ‘Seizing Domain Names to Enforce Judgments’, supra, note 54, at p. 106. Umbro Int’l Inc. v. 3262581 Canada Inc., supra, note 50, at p. 145. Network Solutions Inc. v. Umbro Int’l Inc., supra, note 27, at p. 86. Ibid. Ibid., at pp. 87–88. 99 F. Supp. 2d 1168 (N.D. Cal. 2000). Kremen v. Cohen, 2000 WL 1811403 at ∗ 3 (N.D. Cal. 2000), quoting Yuba River Power Co. v. Nev. Irrigation Dist., 279 P. 128, 129 (Cal. 1929). Ibid. Kremen v. Cohen, supra, note 64, at pp. 1170–1174. Ibid. Ibid., at p. 1173. Ibid., at ∗ 1–4. Kremen v. Cohen, No. 01-15899, D.C. No. CV-98-20718-JW, 10153. Kremen v. Cohen, 325 F. 3d 1035, 1038–39 (9th Cir. 2003), at p. 1038. Ibid., at 10165, quoting Downing v. Mun. Court, 88 Cal. App. 2d 345 (1948), at 350. Ibid., quoting G. S. Rasmussen, 958 F. 2d, at p. 903. Ibid., quoting Greg Johnson, ‘The Costly Game of Net Names’, LA Times, April 10, 2000, at A1. Ibid., quoting G. S. Rasmussen, 958 F. 2d, at p. 900. Franklin Circuit Court, Division II, Case No. 08-CI-1409. Ibid. Interactive Media Entertainment and Gaming Association Inc. v. Commonwealth of Kentucky, 2008-CA-002000-OA. Commonwealth of Kentucky v. 141 Internet Domain Names, supra, note 62, at p. 13. Ibid., at p. 15. Ibid., at p. 7. ‘Thus, the focus of our inquiry is necessarily whether the trial court had jurisdiction to act. This determination requires analysis of two factors: (1) whether petitioners have standing to pursue a writ in this forum; and (2) whether the domain names fit within the statutory definition of “gambling devices” so as to trigger subject matter jurisdiction over the nature of the case and the type of relief sought’. Ibid. ‘It stretches credulity to conclude that a series of numbers, or Internet addresses, can be said to constitute a “machine or any mechanical or other device” … designed and manufactured primarily for use in connection with gambling’. Ibid., at p. 9. [2006] EWCA Civ. 1259. Torts [Interference with Goods] Act 1977, §14(1). Hon. Nicholas Augustine Plant v. Service Direct (UK), B2/2006/0027, at §9. Ibid., C6/2006/0027. Ibid., at §10. Ibid., at §11. The current Implementation Recommendation Team (IRT) report on trademark protection is a clear example. I discuss the report extensively

Notes 207

92 93 94 95 96 97 98 99 100 101

102 103 104 105

in Chapter 14, the ‘IRT Recommendation on Trademark Protection on New gTLDs’: www.icann.org/en/topics/new-gtlds/irt-final-report-trademarkprotection-29may09-en.pdf (visited July 10, 2009). Management of Internet Names and Addresses, 63 Fed. Reg. 31,741 ( June 10, 1998), at 31,747. 248 U.S. 215 (1918), at p. 146. Cribbet, Edward John (1986), ‘Concepts in Transition: The Search for a New Definition of Property’, U. Ill. L. Rev. 41. Beckerman-Rodau, Andrew (1994), ‘Are Ideas within the Traditional Definition of Property? A Jurisprudential Analysis’, Ark. L. Rev. 47:603. The only exemption where governments might claim rights on their domain names concerns ccTLDs and, under the new ICANN proposals, also in those cases that concern geographical names. De Soto, Hernando (2000), The Mystery of Capital, Basic Books, 1st edn. Michelman, Frank (1998), ‘Takings 1987’, Columbia Law Review 88, at p. 1626. Prune Yard Shopping Center v. Robins, 447 U.S. 74 (1980), at p. 93. 483 U.S. 825 (1987), at pp. 855 and 857 respectively. ‘Finally, registrants have a legitimate claim to exclusivity. Registering a domain name is like staking a claim to a plot of land at the title office. It informs others that the domain name is the registrant’s and no one else’s. Many registrants also invest substantial time and money to develop and promote websites that depend on their domain names. Ensuring that they reap the benefits of their investments reduces uncertainty and this encourages investment in the first place, promoting the growth of the Internet overall.’ Kremen v. Cohen, No. 01-15899, D.C. No. CV-98-20718-JW, 10153, at 6. Underkuffler, Laura S. (2003), The Idea of Property: Its Meaning and Power, Oxford University Press, at p. 41. Harris, J. W. (1996), Property and Justice. Harris, J. W. (2002), ‘Reason of Mumbo Jumbo: The Common Law’s Approach to Property’, Proceedings of the British Academy 117, at p. 466. See IRT Recommendation on Trademark Protection on New gTLDs, supra, note 90.

5 History of domain name institutionalisation 1 For four years (1995–99) Network Solutions Inc., in its capacity as the sole registry and registrar for all gTLDs, devised a non-discretionary policy that sought to provide relief to trademark owners. In brief, the policy set two main criteria to determine whether a domain name would be placed on hold pending court resolution. These criteria, based on the trademark owner proving prior legitimate rights on the domain name, which had to be identical to the trademark, and on the registrant having to prove existing valid rights over the domain name, were condemned from all sides advocating reform and the Policy would eventually be terminated in November 1999. In spite of its procedural and substantial flaws, NSI’s policy would be used as a foundational model for the rules of the UDRP. See, Mueller, Milton (2000), ‘Technology and Institutional Innovations: Internet Domain Names’, Int’l J. Comm. L. and Pol. 5:1. 2 International Trademark Association (1997), ‘The Intersection of Trademarks and Domain Names: INTA “White Paper” ’, Trademark Rep. 87:668.

208 3 4 5 6

7

8

9 10 11 12 13 14 15 16 17

18 19 20 21 22

Notes Ibid. p. 679. Ibid., at p. 699. Ibid., p. 700. Internet Ad Hoc Committee (IAHC) and Internet Assigned Names Authority (1997): ‘Establishment of a Memorandum of Understanding on the Generic Top Level Domain Name Space of the Internet Domain Name System (gTLD-MoU)’, www.gtld-mou.org/gTLD-MoU.html (visited April 7, 2009). IAHC consisted of an unusual coalition of international organisations, national governmental bodies and private institutions, including the Internet Architecture Board, IANA, the Internet Society, the International Telecommunications Union, the International Trademark Association, the National Science Foundation and the World Intellectual Property Organisation. IAHC was dissolved on May 1, 1997. The Internet Society is an international, non-profit organisation, which is responsible for setting Internet standards and provide education and policy on Internet-related issues. For more information, www.isoc.org (visited April 7, 2009). gTLD-MoU, supra, note 6. Mueller, ‘Technology and Institutional Innovations’, supra, note 1, at p. 8. (gTLD-MoU contained ‘concessions to trademark owners’ which gave them ‘extraordinary power over domain name registrations’.) ‘Developments in the Law: the Law of Cyberspace’, 112 Harv. L. Rev. 1574 (1999), at pp. 1666–1667. ‘[Revised] Substantive Guidelines concerning Administrative Domain Name Challenge Panels’, May 23, 1997, available at www.gtld-mou.org/docs/racps. htm (visited April 7, 2009). Dinwoodie, Graeme and Helfer, Laurence (2001), ‘Designing Non-national Systems: The Case of the Uniform Domain Name Dispute Resolution Policy’, William and Mary Law Review 43:141, at p. 160. Schauer, Frederick (1991), ‘Rules and the Rule of Law’, Harv. L.J. and Pub. Policy 14:645, at p. 652. Management of Internet Names and Addresses, 63 Fed. Reg. 31,741, June 10, 1998 (the White Paper) available at www.ntia.doc.gov/ntiahome/domainname/ 6_5_98dns.htm (visited February 9, 2009). Anticybersquatting Consumer Protection Act (ACPA), Pub. L. No. 106-113, Stat. 1536, codified at 15 U.S.C. §1125(d). Froomkin, Michael (2002), ‘ICANN’s UDRP: Its Causes and (Partial) Cures’, Brook. L. Rev. 67; Geist, Michael (2002), ‘Fair.com? An Examination of the Allegations of Systematic Unfairness in the ICANN UDRP’, Brooklyn Journal of International Law 27:903. Froomkin, Michael (2000), ‘Wrong Turn in Cyberspace: Using ICANN to route around the APA and the Constitution’, Duke Law Journal 50:17. ‘White Paper’, supra, note 15. Mueller, Milton (2002), Ruling the Root: Internet Governance and the Taming of Cyberspace, MIT Press, at p. 211. Ibid. Letter from ICANN to Rep. Tom Bliley, Chairman, U.S. House Committee on Commerce, July 8, 1999, available at www.icann.org/correspondence/blileyresponse-08jul99.htm (visited February 9, 2009).

Notes 209 23 Letter from Esther Dyson (ICANN Interim Chair) to Ralph Nader, founder, Center for Study of Responsive Law, and James Love, Director, Consumer Project on Technology, June 15, 1999, available at www.interesting-people. org/archives/interesting-people/199906/msg00028.html (visited February 9, 2009). 24 Froomkin M. (2000), ‘Wrong Turn in Cyberspace’, supra, note 18, at p. 95. 25 For more information see ‘Article of Incorporation of Internet Corporation for Assigned Names and Numbers’, revised November 21, 1998, available at www.icann.org/general/articles.htm (visited February 9, 2009). 26 Froomkin M. (2000), ‘Wrong Turn in Cyberspace’, supra, note 18, at p. 95. 27 Froomkin, M. (2002), ‘ICANN’s UDRP’, supra, note 17. 28 Ibid., at p. 716. 29 ‘Second Staff Report on Implementation Documents for the Uniform Domain Name Dispute Resolution Policy’, submitted to the board at its October 24, 1999 meeting, posted October 25, 1999, available at www.icann.org/en/udrp/udrpsecond-staff-report-24oct99.htm (visited February 9, 2009). 30 [ga-UDRP] Motion No. 6, UDRP Review, DNSO Mailing List Archives, available www.dnso.org/clubpublic/ga-udrp/Arc00/msg00029.html (visited February 9, 2009). 31 Improvement of Technical Management of Internet Names and Addresses, 63 Fed. Reg. 8826, February 20, 1998 (the Green Paper). 32 The ‘White Paper’, supra, note 15. 33 The White Paper recommended: ‘The U.S. Government will seek international support to call upon the World Intellectual Property Organization (WIPO) to initiate a balanced and transparent process, which includes the participation of trademark holders and members of the Internet community who are not trademark holders to (1) develop recommendations for a uniform approach to resolving trademark/domain name disputes involving cyberpiracy (as opposed to conflicts between trademark holders with legitimate competing rights), (2) recommended a process for protecting famous trademarks in the generic top level domains, and (3) evaluate the effects … of adding new gTLDs and related dispute resolution procedures on trademarks and intellectual property holders. These findings and recommendations could be submitted to the board of the new corporation for its consideration in conjunction with its development of registry and registrar policy and the creation and introduction of new gTLDs.’ Ibid., at 31, 747. 34 Convention Establishing the World Intellectual Property Organization, July 14, 1967 (as amended on September 28, 1979), art. 3(1), available at www.wipo.int/ treaties/en/convention/trtdocs_wo029.html (visited April 7, 2009). 35 WIPO, Interim Report of the WIPO Domain Name Process, December 23, 1998, available at www.wipo.int/export/sites/www/amc/en/docs/reportfinal1.pdf (visited April 7, 2009). 36 WIPO, Final Report of the WIPO Internet Domain Name Process, April 30, 1999, available at www.wipo.int/export/sites/www/amc/en/docs/reportfinal2.pdf (visited April 7, 2009). 37 Froomkin, M. (2000), ‘Semi-private International Rule Making: Lessons learned from the WIPO Domain Name Process’, Regulating the Global Information Society 211 (Christopher T. Marsden, ed.), available at www.law.miami.edu/∼froomkin/ articles/tprc99.pdf (visited April 7, 2009), at p. 2.

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38 Ibid. 39 Dinwoodie and Helfer (2001), ‘Designing Non-national Systems, supra, note 13, at p. 171. 40 The Interim Report attempted to define the scope of the White Paper’s ‘abusive registrations’ mandate, recommending that the complaining party would have to prove ‘that the registration or use of the domain name by the domain name holder is without relevant rights or interests and unfairly: (i) capitalises on the goodwill associated with the complainant’s legitimate rights, whether by way of trademarks, personality rights, geographical indications or otherwise, or (ii) frustrates the complainant’s desire to reflect its rights in a domain name’. WIPO, Interim Report of the WIPO Domain Name Process, supra, note 35, at § 244. 41 Ibid. 42 The seven principles were: ‘(1) The rights and interests of the parties; (2) The use of the domain name; (3) The length of time of registration; (4) The nature of the top-level domain in which the domain name is registered; (5) Abusive Registration of the Domain Name; (6) Identical or confusingly similar; and (7) First-come, first-served principle’. Ibid. 43 Ibid., at §196–8. 44 Dinwoodie, Graeme, B. (2000), ‘A New Copyright Order: Why National Courts should create Global Norms’, U. Pa. L. Rev. 149. 45 WIPO, Interim Report of the WIPO Domain Name Process, supra, note 35, at §186. 46 Ibid., at §140. 47 Mueller (2000), ‘Technology and Institutional Innovations’, supra, note 1, at p. 22. 48 WIPO, Final Report of the WIPO Internet Domain Name Process, supra, note 36, at §135(i). 49 Ibid., at §135(ii). 50 Ibid., at §207–9. 51 Ibid., at §203. 52 Ibid., at §222. 53 ‘The Generic Names Supporting Organization (GNSO) of ICANN is the successor to the responsibilities of the Domain Name Supporting Organization which relate to the generic top-level domains. ICANN’s by-laws outline three supporting organizations, of which the GNSO belongs. The SOs help to promote the development of Internet policy and encourage diverse and international participation in the technical management of the Internet. Each SO names three Directors to the ICANN Board.’ Available at http://gnso.icann.org/ (visited April 9, 2009). 54 ICANN, Minutes of Meetings, Res. 99.45, 99.46 and 99.47, May 27, 1999, available at www.icann.org/en/minutes/minutes-27may99.htm (visited April 9, 2009); see also ICANN, Timeline for the Formulation and Implementation of the Uniform Domain Name Dispute Resolution Policy, available at www.icann.org/udrp/udrp-schedule.htm (visited April 9, 2009). 55 ICANN, Timeline for the Formulation and Implementation of the Uniform Domain Name Dispute Resolution Policy, ibid. 56 Ibid.

Notes 211 57 The Uniform Domain Name Dispute Resolution Policy (UDRP), available at www.icann.org/udrp (visited April 9, 2009). 58 ICANN, Resolutions approved by the Board, Santiago Meeting, Res. 99.83.4, August 26, 1999, available at www.icann.org/santiago/santiago-resolutions.htm (visited April 9, 2009). 59 ICANN, Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, 4, September 29, 1999, available at www.icann.org/udrp/staffreport-29sept99.htm (visited April 9, 2009). 60 ICANN, Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, p. 4, 9, October 24, 1999, available at www.icann. org/udrp/udrp-second-staff-report-24oct99.htm (visited April 9, 2009). 61 Ibid., §4.1(c). 62 Ibid. 63 ‘This Paragraph sets forth the type of disputes for which you are required to submit to a mandatory administrative proceeding. These proceedings will be conducted before one of the administrative dispute resolution service providers listed at www.icann.org/udrp/approved-providers. htm (each, a “Provider”)’. Uniform Domain Name Dispute Resolution Policy, available at www.icann.org/en/dndr/udrp/policy.htm (visited April 9, 2009). 64 ‘Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a “complainant”) asserts to the applicable Provider, in compliance with the Rules of Procedure, that: (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in the respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present.’ UDRP, supra, note 39, para. 4(a). 65 ‘How to Demonstrate your Rights to and Legitimate Interest in the Domain Name: Responding to a Complaint. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of para. 4(a)(ii): (i) before any notice to you of the dispute, your use of or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark; or (iii) you are making a legitimate, non-commercial or fair use of the domain name, without intent for commercial gain or to misleadingly divert consumers or to tarnish the trademark or service mark at issue.’ Ibid., para. 4(c).

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66 Evidence of Registration and Use in Bad Faith. For the purposes of para. 4(a)(ii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name primarily for disrupting the business of a competitor; or (iii) by using the domain name, you have intentionally attempted to attract for commercial gain, Internet users to your Web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the sponsorship, affiliation or endorsement of your website or location or of a product or service on your Web site or location.’ Ibid., para. 4(b). 67 Dinwoodie and Helfer (2001), ‘Designing Non-national Systems, supra, note 13, at pp. 184–185. 68 ICANN, Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, supra, note 60, §4.5(b). 69 Rules for the Uniform Domain Name Dispute Resolution Policy, para. 4(d) (f) and 3 (b)(iv) and 5(b)(iv–v.) available at www.icann.org/en/dndr/udrp/uniformrules.htm (visited April 9, 2009). 70 Para. 1, Ibid. 71 ‘Mutual jurisdiction means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s WHOIS database at the time the complaint is submitted to the Provider.’ Rules for the Uniform Domain Name Dispute Resolution Policy, Rule 1: www.icann.org/en/dndr/udrp/uniform-rules.htm (visited September 5, 2009). 6 ‘Lex domainia’ 1 Reidenberg, Joel R. (1998), ‘Lex Informatica: The Formulation of Information Policy Rules’, Texas Law Review 76, at p. 533. 2 See generally, Johnson, David R. and Post, David (1996), ‘Law and Borders – The Rise of Law in Cyberspace’, Stan. L. Rev. 48. 3 There are various critiques questioning the efficiency of lex mercatoria as an efficient dispute resolution mechanism. This book, however, is not concerned whether lex mercatoria has been an autarky system or a self-sufficient legal order; it is not concerned whether its creation was vital or not. The idea is to seek justifications for the UDRP in the lex mercatoria system.

Notes 213 4 Systems theory argues that this plurality was always part of lex mercatoria. ‘Our definitive question would be: where are norms actually produced? In national politics and in international political relations? Or, in global economic and social processes? The hypothesis also seems to be well founded in legal experience that a global economic law is developing along three dimensions. Of course, this presupposes a pluralistic theory of norm production which threats political, legal and social law production on an equal footing’. Cf. Teubner, Gunther (1997), ‘Globale Bukowina: Legal Pluralism in the World Society, Global Law without a State’, Dartmouth Pub. Co. 3, at p. 11. 5 Berger, Klaus P (2000), ‘The Law Merchant and the New Market Place: A 21st Century View of Transnational Commercial Law’, Inter’l Arb. L. Rev. 91. 6 Karavas, Vaios and Teubner, Gunther (2003), ‘www.CompanyNameSucks.com: The Horizontal Effect of Fundamental Rights on “Private Parties” with Autonomous Internet Law’, German Law Journal, 4:12, at p. 1352. 7 Gralf P. Calliess (2002), ‘Reflexive Transnational Law: The Privatisation of Civil Law and the Civilisation of Private Law,’ Seitschrift Fuer Rechtssoziologie 185, at p. 188. 8 Discussion with Ms. Kathy Kleiman, Esq. – U.S. trademark attorney and drafter of the Uniform Domain Name Dispute Resolution Policy. 9 Karavas and Teubner (2003), ‘www.CompanyNameSucks.com’ supra, note 6, at p. 1353. 10 Ibid. 11 Ibid., at pp. 1353–4. 12 Wotherspoon, David and Cameron, Alex (2003), ‘Reducing Inconsistency in UDRP Cases’, Canadian Journal of Law and Technology, 1:3. 13 Karavas and Teubner (2003), ‘www.CompanyNameSucks.com’, supra, note 6, at p. 1354. 14 Ibid., at p. 1355. 15 New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards, New York, June 10, 1958; entered into force June 7, 1959, United Nations Treaty Series vol. 330, p. 38, No. 4739 (1959). 16 Austin wanted to include within ‘the province of jurisprudence’ certain ‘exceptions’, items which did not fit his criteria but should nonetheless be studied with ‘other laws property so called’: ‘repealing laws, declarative laws and imperfect laws’ – laws prescribing action but without sanction. Austin believed that positive laws were set by sovereign people and thus sanctions should have a sovereign character. Austin, J. (1832), The Province of Jurisprudence Determined (Revised), Weidenfeld and Nicolson, Lecture 1, at p. 36. 17 UDRP, para. 4(k), supra, note 39 (Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be cancelled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel’s decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint,

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file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our WHOIS database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel’s decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.). 18 See generally, Mangels, Antje and Volckart, Oliver (1999), ‘Are the Roots of the Modern Lex Mercatoria really Medieval?’, Southern Economic Journal 65. 7 The UDRP and arbitration 1 New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards, New York, June 10, 1958; entered into force June 7, 1959, United Nations Treaty Series vol. 330, p. 38, No. 4739 (1959). 2 The doctrine has often been translated to mean ‘author of friendly compromise’ and has been described as allowing arbitrators to ‘decide cases in accordance with customary principles of equity and international commerce. This power permits arbitrators to arrive at an award that is fair in light of all circumstances, rather than in strict conformity with legal rules but … generally they may not disregard mandatory provisions of substantive law or the public policy of the forum state’. Strong, S.I. ‘Third Party Intervention and Joinder as of Right in International Arbitration: Infringement of Individual Contract Rights or a Proper Equitable Measure?’ 31 Vand. J. Transnat’l L. 915 (1998), at p. 932. 3 This doctrine is rather similar to amiable compositeur but it extends further in allowing arbitrators to disregard substantive provisions of law, thus providing them with wider discretionary powers. – Ibid. 4 Rogers, Catherine (2002), ‘Fit and Function in Legal Ethics: Developing a Code of Conduct for International Arbitration’, Mich. J. Int’l. L. 23:341, at p. 350. 5 Ibid., at p. 357. 6 Ibid. 7 Dinwoodie and Helfer (2001), ‘Designing Non-national Systems’, at p. 193. 8 Froomkin, Michael (2000), ‘Wrong Turn in Cyberspace: Using ICANN to Route Around the APA and the Constitution’, Duke Law Journal, 50:17, at pp. 98–99 9 New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards, Article II, supra, note 1. 10 Rules for the Uniform Domain Name Dispute Resolution Policy, Rule 1 (‘Party means a Complainant or a Respondent’). 11 Ibid. (‘Registration Agreement means the agreement between a Registrar and a domain-name holder’). 12 Komaitis, Konstantinos (2004), ‘Cruel Intentions: ICANN’s Uniform Domain Name Dispute Resolution Policy and Arbitration’, Intellectual Property Forum 56.

Notes 215 13 MacNeil, Ian R. et al. (1994) ‘Arbitration Law’, §20.2.2. 14 UDRP Policy, para. 5. (‘All Other Disputes and Litigation. All other disputes between you and any party other than us regarding your domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of Paragraph 4 shall be resolved between you and such other party through any court, arbitration or other proceeding that may be available.’) 15 Ibid., para. 4(i). 16 Ware, Stephen J. (2000) ‘Domain Name Arbitration in the Arbitration-Law Context: Consent to, and Fairness in, the UDRP’, J. Small and Emerging Bus. L. 6, at p. 161. 17 Title 9, U.S. Code, Section 1-14, was first enacted February 12, 1925 (43 Stat. 883), codified July 30, 1947 (61 Stat. 669), and amended September 3, 1954 (68 Stat. 1233). Chapter 2 was added July 31, 1970 (84 Stat. 692), two new sections were passed by the Congress in October of 1988 and renumbered on December 1, 1990 (PLS 669 and 702). Chapter 3 was added on August 15, 1990 (PL 101-369); and Section 10 was amended on November 15. 18 139 F. Supp. 2d (2001). 19 Ibid., at p. 749. 20 Ibid. 21 Ibid., at p. 751. 22 Ibid. 23 Ibid. 24 Ibid. 25 Ibid., at p. 752. 26 Ibid. 27 Ibid. 28 Ibid., at p. 750. 29 Ibid., at p. 752. 30 Ware, S. (2000), ‘Domain Name Arbitration in the Arbitration-Law Context’, supra, note 16, at p. 164. 31 Ibid. 32 Ibid. 8 Issues of procedural unfairness 1 The term ‘trademark lawyer abuse’ was first coined by Ms. Kathryne Kleiman, during the ICANN Sydney meeting in June 2009; see also ‘Chilling Effects Clearinghouse’ at www.chillingeffects.org/ (visited September 6, 2009). 2 Dinwoodie and Helfer (2001), ‘Designing Non-national Systems’, at pp. 210–11. 3 In 2002, WIPO was generating more than half of the domain name case law (58 per cent). Geist, Michael (2002), ‘Fair.com? An Examination of the Allegations of Systematic Unfairness in the ICANN UDRP’, at p. 7. In 2008, the numbers still show WIPO as the main dispute resolution provider and have recorded a questionable rise of 8 per cent in cybersquatting: www.wipo.int/pressroom/en/articles/2009/article_0005.html (visited September 6, 2009). Taking into account that this number has only been recorded by WIPO and none of the other ICANN-accredited

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4 5 6 7 8 9

10 11 12 13 14 15 16

17

18

Notes providers, WIPO’s data can equally be interpreted as an example of forum shopping. Froomkin, Michael and Post, David (2000), ‘Letter to ICANN Board’, available at www.icannwatch.org/archive/post_froomkin_udrp_letter.htm (visited April 17, 2009). Berryhill, John (2000), ‘The UDRP provides Disputable Resolution Incentives’, available at www.icannwatch.org/archive/udrp_and_incentives.htm (visited April 17, 2009). Dinwoodie and Helfer (2001), ‘Designing Non-national Systems’, supra, note 2, at p. 212. Parisi v. Netlearning Inc. 139 F. Supp. 2d (2001). Lindseth, Peter L. (1999), ‘Democratic Legitimacy and the Administrative Character of Supranationalism’, Colum. L. Rev. 99:628, at p. 646. Rules for the Uniform Domain Name Dispute Resolution Policy, para. 1 – ‘Mutual Jurisdiction’ means a court jurisdiction at the location of either (a) the principal office of the Registrar (provided the domain-name holder has submitted in its Registration Agreement to that jurisdiction for court adjudication of disputes concerning or arising from the use of the domain name) or (b) the domain-name holder’s address as shown for the registration of the domain name in Registrar’s WHOIS database at the time the complaint is submitted to the Provider. ICANN ‘Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy’, available at www.icann.org/en/udrp/udrp-secondstaff-report-24oct99.htm (visited April 17, 2009). Dinwoodie and Helfer (2001), ‘Designing Non-national Systems’, supra, note 2, at p. 204. Ibid., at p. 205. Froomkin, Michael (1999), ‘A Commentary on WIPO’s Management of Internet Names and Addresses: Intellectual Property Issues’, available at http://osaka.law. miami.edu/∼amf/commentary.htm (visited April 17, 2009). Take, for instance, the similarities between the UDRP and the 1999 U.S. Anticybersquatting Consumer Protection Act, which in any case is the only existing domain name statute that can be used as a template. 15 U.S.S.C., §1114 (2)(D)(v). See Berkman Centre for Internet and Society, Harvard Law School, ‘Analysis of Key UDRP Issues’, available at http://eon.law.harvard.edu/udrp/analysis.html (visited April 17, 2009); see also UDRP, A Study by the Max-Planck Institute of Foreign and International Patent, Copyright and Competition Law, 2002, available at www.zar.uni-karlsruhe.de/admin/get_data.php?resID=95 (visited April 17, 2009). Rules for the Uniform Domain Name Dispute Resolution Policy, Rule 14(a): ‘Default. (a) In the event that a Party, in the absence of exceptional circumstances, does not comply with any of the time periods established by these Rules or the Panel, the Panel shall proceed to a decision on the complaint. (b) If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.’ Dinwoodie and Helfer (2001), ‘Designing Non-national Systems’, supra, note 2, at p. 216.

Notes 217 19 Mueller, Milton (2002), ‘Success by Default: A New Profile of Domain Name Trademark Disputes under ICANN’s UDRP’, available at http://dcc.syr.edu/ markle/markle-report-final.pdf (visited April 21, 2009); see also Bannon, Adrian (2006), ‘The UDRP: A Stunning Success or a Spectacular Failure?’ C.O.L.R. XII. 20 Dinwoodie and Helfer (2001), ‘Designing Non-national Systems’, supra, note 2, at p. 216. 21 Kingsbury, B. (1998), ‘Indigenous Peoples in International Law: A Constructivist Approach to the Asian Controversy’, American Journal of International Law 92:3:414. 22 WIPO, Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, Rule 8, Annex C, available at www.wipo.int/amc/en/domains/statement/ panel.html (visited April 20, 2009). (‘Statement of Acceptance and Declaration of Impartiality and Independence. Before making a panellist appointment, the Center checks with each prospective panellist whether there are any facts or circumstances, past or present, or that could arise in the foreseeable future, that might call in to question that person’s independence in the eyes of one or both of the parties in the administrative proceeding. Taking into consideration the envisioned procedural schedule in a case, the Center also checks whether the prospective panellist is able to commit the time required to discharge his or her duties responsibly and within the required deadlines. Finally, the Center requires all prospective panellists to complete and submit a Statement of Acceptance and Declaration of Impartiality and Independence.’) 23 ‘Impartiality and Independence. (a) All Forum Panellists will take an oath to be neutral and independent. (b) A Panellist will be disqualified if circumstances exist that create a conflict of interest or cause the Panellist to be unfair and biased, including but not limited to the following: (i) The Panellist has a personal bias or prejudice concerning a party or personal knowledge of disputed evidentiary facts; (ii) The Panellist has served as an attorney to any party or the Panellist has been associated with an attorney who has represented a party during that association; (iii) The Panellist, individually or as a fiduciary, or the Panellist’s spouse or minor child residing in the Panellist’s household, has a direct financial interest in a matter before the Panellist; (iv) The Panellist or the Panellist’s spouse, or a person within the third degree of relationship to either of them, or the spouse of such a person: (1) Is a party to the proceeding, or officer, director, or trustee of a Party; or (2) Is acting as a lawyer or representative in the proceeding. (c) A party may challenge the selection of a Panellist, provided that a decision has not already been published, by filing with the Forum a written request stating the circumstances and specific reasons for the disqualification. (d) A request to challenge must be filed in writing with the Director of Arbitration within five (5) Calendar Days of the date of receipt of the notice of the selection. National Arbitration Forum Dispute Resolution for Domain Names UDRP Supplemental Rules Page 8 Effective November 1, 2007 (e) Provided a decision has not already been published by the selected Panellist, the Forum will promptly review the challenge and determine whether circumstances exist requiring Panellist disqualification in accord with this rule.’ National Arbitration Forum, Dispute Resolution for Domain Names, Supp. Rule 10(d), available at http://domain.adrforum. com/users/icann/resources/UDRPSuppRules20071101.pdf (visited April 20, 2009).

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24 ADNDRC, Supplemental Rules to the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy and the Rules for the Uniform Domain Name Dispute Resolution Policy, Article 9, available at www.adndrc.org/adndrc/bj_supplemental_rules.html (visited April 20, 2009). (‘Impartiality and Independence. The Panellist(s) shall be and remain at all times wholly independent and impartial, and shall not act as advocate for any Party during the proceedings. Prior to the appointment of any proposed Panellist(s), and after the appointment, the Panellist(s) shall declare in writing to the Parties and the relevant Office of the Centre any circumstances which are likely to create an impression of bias or prevent a prompt resolution of the dispute between the Parties. Except by consent of the Parties, no person shall serve as a Panellist(s) in any dispute in which that person has any interest, which, if a Party knew of it, might lead him/her to think that the Panellist(s) might be biased. After a Panellist(s) has been appointed but before rendering a decision, a Panellist(s) dies, is unable to act, or refuses to act, the relevant Office of the Centre will, upon request by either Party, appoint a replacement Panellist(s).’) 25 CAC’s UDRP Supplemental Rules of the Czech Arbitration Court, article 7, available at www.adr.eu/arbitration_platform/udrp_supplemental_rules.php#7 (visited April 20, 2009). (Art. 7 of the Rules: ‘Impartiality and Independence. Prior to appointment as a Panellist, a candidate shall be required to submit to the Provider a Declaration of Independence and Impartiality using the form included in the list of Forms contained in Annex B hereto and posted on the Provider’s Web site.’) 26 Geist, Michael (2002), ‘Fair.com?’, supra, note 17. 27 1985 – UNCITRAL Model Law on International Commercial Arbitration, with amendments as adopted in 2006, UN General Assembly Resolution 61/33 (2006). 28 Dinwoodie and Helfer (2001), ‘Designing Non-national Systems’, supra, note 2, at p. 224. 29 The latest report of the Implementation Recommendation Team (IRT) is a testament to this wish. 30 A clear example is the following two cases: CPR0207-020402 and D2002-0844, both concerning the domain name and both reaching conflicting conclusions. 31 Take, for instance, the highly debatable phenomenon that has reached the UDRP Panels. Most of these cases, although they indicated the legitimate interest of the domain name holder under the fundamental principle of free speech to criticise trademarks as to the goods and services they offered, were still decided in favour of the complainant. Komaitis, Konstantinos (2004), ‘Cruel Intentions: ICANN’s Uniform Domain Name Dispute Resolution Policy and Arbitration’, Intellectual Property Forum 56. 32 Paragraph 4 b, UDRP. 33 Donahey, M. Scott, ‘The ICANN Cybersquatting Decisions No. 2, 2nd March 2000 through the 6th April 2000’, available at http://eon.law.harvard.edu/udrp/ decisions/2000-2.html (visited April 21, 2009). 34 Mueller, Milton (2002), ‘Success by Default: A New Profile of Domain Name Trademark Disputes under ICANN’s UDRP’. 35 Telstra v. Nuclear Marshmallows, WIPO D2000-0003. Although this was the main

Notes 219

36

37 38

39 40 41 42 43 44 45 46

47 48 49 50 51 52 53 54

problem with the application of trademark law, which requires ‘use in commerce’, UDRP panels have, without reservation, concluded that passive holding should mean bad faith. In Shoe Zone Ltd v. Moniker Privacy Services/DNS Admin, D2009-0946, for instance, the panel stated: ‘the Respondent’s use of the privacy service is at least consistent with bad faith. A respondent’s use of a privacy service is likely to cause a complainant some delay while it endeavours to ascertain details of the true respondent to its prospective complaint, and the respondent continues to derive click-through revenue during that period of delay.’ Lion Nathan Ltd v. Wallace Waugh, WIPO D2000-0030; Ahead Software AG v. its friday BV, WIPO D2001-0883. Educational Testing Service v. TOEFL, WIPO D2000-0044. (According to the wording of the panel, ‘… the respondent is contributing no value-added to the Internet and the broad community of Internet users will be better served by transferring the domain name to a party with a legitimate use’.) Canadian Internet Registration Authority, available at www.cira.ca/ (visited September 23, 2009). Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., WIPO D2000-0505. Barcelona.com Inc. v. Excelentisimo Ayuntamiento de Barcelona, 330 F. 3d. 617 (4th Cir. 2003). Barcelona.com Inc. v. Excelentisimo Ayuntamiento de Barcelona, 189 F. Supp. 2d 367 (E.D. Va. 2002). Barcelona.com Inc. v. Excelentisimo Ayuntamiento de Barcelona, supra, note 41, at p. 620. Ibid. Ibid. Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., supra, note 41. (‘The circumstance provided for in Paragraph 4(b)(i): “circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant in excess of your documented out-of-pocket costs directly related to the domain name.” The above quoted circumstance is partially present in this case. Although it can not be stated that Respondent acquired the domain name ‘primarily’ for the purposes therein contained, it is evident that eventually Respondent planned to obtain some kind of payment from Complainant – naturally quite in excess of ‘out-of-pocket costs’ – when although clearly denying the possibility of ‘selling’ the Domain Name at issue, suggested nonetheless the possibility that Complainant ‘invest’ in Respondent’s Business Plan to develop the Domain Name, through acquiring twenty per cent of the stock.’) Ibid. Ibid., at p. 376. Barcelona.com Inc. v. Excelentisimo Ayuntamiento de Barcelona, supra, note 43. Ibid. 15 U.S.C. 1114(2)(D)(v) (2000). Barcelona.com Inc. v. Excelentisimo Ayuntamiento de Barcelona, supra, note 42. Ibid. Ibid., at p. 625.

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55 Ibid., at p. 628. 56 Ibid., at p. 629. 57 First Council Directive 89/104/EEC of 21 December 1988 to approximate the Laws of the Member States relating to Trade Marks, O.J. L 040, 11.02.1989, pp. 1–7, Article 6(1)(b), ‘Limitation on the Effects of a Trademark. The trademark shall not entitle the proprietor to prohibit a third party from using, in the course of trade … indications concerning the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of the service, or other characteristics of goods or services …’ 58 Dinwoodie and Helfer (2001), ‘Designing Non-national Systems’, supra, note 2, at pp. 202–3. 59 Rules for the Uniform Domain Name Dispute Resolution Policy, Rule 1. 60 Dinwoodie and Helfer (2001), ‘Designing Non-national Systems’, supra, note 2, at p. 208. 61 Some include: Banco Inverlat, SA v. www.inverlat.com, 112 F. Supp. 2d 521 (E.D. Va. 2000); Ceasars World Inc. v. Ceasars-Palace.com, 112 F. Supp. 2d 502 (E.D. Va. 2000) 62 The case reached both the UDRP Panels (WIPO, D2000-0461) and the federal courts. Sallen, 273 F. 3d 13 (1st Cir. 2001). 63 WIPO, ibid. 64 Sallen, supra, note 62, at §4. 65 Ibid., at §40. 66 Ibid. 67 28 U.S.C. §1331 grants original jurisdiction to federal district courts for civil actions arising under the laws of the United States. This action arises under the Lanham Act, 15 U.S.C., §1125. 68 Sallen, supra, note 62, at p. 4. 69 Ibid., at §55. 70 Rohrer, Amanda (2003), ‘UDRP Arbitration Decisions Overridden: How Sallen Undermines the System’, Ohio S.T. J. on Disp. Resl. 18:563, at p. 587. 71 UDRP Policy, at para. 4(a). 72 McLaughlin, Nicole (2002), ‘A Warning to Overreaching Trademark Owners: ACPA gives Domain Name Registrants Cause of Action’ L. Intelligencer, January 3. 73 Sallen, supra, note 62, at §33. 9 Free speech in the context of the UDRP 1 See, for example, Am. Waltham Watch Co. v. United States Watch Co., 53 N.E. 141, 142 (Mass. 1899). 2 Courts have defined ‘commercial speech’ as one that ‘does no more than propose a commercial transaction … removed from any exposition of ideas’ (Va. State Bd. of Pharm. v. Va. Citizens Consumer Council Inc., 425 U.S. 748, 762), In Europe, under the Trademarks Directive 89/104 EC, commercial use is a pivotal element when claiming infringement. Section 10 of the Trademarks Act 1994 lists several grounds of infringement, all of which should occur ‘in the course of trade’. 3 New Kids on the Block v. New Am. Publ’g Inc., 971 F. 2d 302, 307 (9th Cir. 1992).

Notes 221 4 L. L. Bean Inc. v. Drake Publishers Inc., 811 F. 2d 26, 33 (1st Cir. 1987) (‘a corporation could shield itself from criticism by forbidding the use of its name in commentaries critical of its conduct’). 5 James Gibson (2007), ‘Risk Aversion and Rights Accretion in Intellectual Property Law’, Yale Law Journal 116:882:913; Heins, Marjorie and Beckles, Tricia (2005), ‘Will Fair Use Survive? Free Expression in the Age of Copyright Control’, pp. 35–36, available at www.fepproject.org/policyreports/ WillFairUseSurvive.pdf; see Chilling Effects Clearinghouse: Search the Database, www.chillingeffects.org/search.cgi (last visited May 18, 2009) (database with examples of legal threats against trademark holders); Citizen Media Law Project Legal Threats Database, www.citmedialaw.org/database (last visited May 18, 2009). 6 Leval, Pierre N. (2004), ‘Trademark: Champion of Free Speech’, Colum. J.L. and Arts 27:187, at pp. 188–189. 7 McGeveran, William (2008), ‘Four Free Speech Goals for Trademark Law’, Media and Entertainment Law Journal, 18. 8 Eldred v. Ashcroft, 537 U.S. 186, 219–21 (2003). 9 Freecycle Network Inc. v. Oey, 505 F. 3d 898 (9th Cir. 2007), rev’g Freecycle Network Inc. v. Oey, No. CV 06-173, Preliminary Injunction Order (D. Ariz. May 11, 2006). 10 Twin Peaks Prods. Inc. v. Publ’ns Int’l Ltd, 996 F. 2d 1366, 1379–80 (2d Cir. 1993). (In the United States, the Second Circuit applies First Amendment concerns by balancing the doctrine of ‘likelihood of confusion’ and free speech.) See also Mattel Inc. v. MCA Records Inc. (‘Mattel–MCA’), 296 F. 3d 894 (9th Cir. 2002); ETW Corp. v. Jireh Publ’g Inc., 332 F. 3d 915, 927–8 (6th Cir. 2003); ESS Entm’t 2000 Inc. v. Rock Star Videos Inc., 444 F. Supp. 2d 1012 (C.D. Cal. 2006), appeal docketed, No. 06-56237 (September 8, 2006). All these cases have followed the reasoning of Rogers v. Grimaldi, which established the balancing test as the ultimate defence instead of a way to countervail it against the ‘likelihood of confusion test’), 11 Uniform Domain Name Dispute Resolution Policy (UDRP), para. 4(c)(iii). 12 The ‘nominative defence’ doctrine recognises the right of one to make use of another’s mark in order to describe the other product or compare it with its own. The doctrine was established by judge Alex Kozinski in New Kids on the Block v. New America Publishing Inc., supra, note 3. 13 For more information on issues of traditional trademark law and free speech, see McCarthy, Thomas J., McCarthy on Trademarks and Unfair Competition 23:62, 23:63, 23:69. 14 In conversation with Ms Kathy Kleiman, Esq., U.S. trademark attorney and drafter of the UDRP, September 14, 2009. 15 ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, October 5, 1999, available at www.icann.org/udrp/ udrp-second-staff-report-24oct99.htm (visited May 19, 2009). 16 KP Permanent Make-up Inc. v. Lasting Impression I Inc., 543 U.S. 111, 121–2 (2004). 17 Dixons Group PLC v. Mr Abu Abdullaah, WIPO D2001-0843 (‘Mr Abdullah is using the domain name primarily for the purpose of disrupting the business of a competitor. While it may be that the respondent is not using its domain name for commercial gain, it has been held in several panel decisions that ‘competitor’ has a wider meaning and is not confined to those who are selling or providing

222

18 19 20 21 22 23

Notes competing products. In this wider context it means ‘one who acts in opposition to another and the context does not demand any restricted meaning such as commercial or business competitor’. In the present case, the Respondent is competing with the Complainant for the attention of Internet users, which he hopes to attract to his site. Given also its purpose of acting as a complaint site, this seems like an evidence of the Respondent’s intention to both acquire and use the disputed domain name in bad faith. While the interests of free speech and consumer protection may be advanced to justify the Respondent’s acquisition and use of the disputed domain name, this is a domain name and clearly has the potential to disrupt the complainant’s business.’) WIPO D2008-0387. Ibid. Ibid. Ibid. Rothbard, Murray N. (1977), Power and Market, 2nd edn, Sheed Andrews & McMeel, at pp. 238–9. On the contrary, the Nominet Policy, which deals with the disputes in the space, includes a proviso that domain names which use the suffix will be allowed. The only requirement attached to this clause is for the site to be truly used as parody or for the purposes of criticism and not for commercial gain. Nominet, Dispute Resolution Service Policy, para. 4(b), available at www.nominet.org.uk/disputes/drs/?contentId=5239 (visited May 19, 2009).

10 Regulating domain names nationally 1 Anticybersquatting Consumer Protection Act, 15 U.S.C. 1125(d). 2 Although there is no explicit mention of domain names, the UK regime has tackled domain name and trademark disputes under a similar rationale. See Marks & Spencer PLC v. One in a Million Ltd. [1998] FSR 265; Harrods Ltd. v. UK Network Services, Michael Lawrie, [The Times, December 9, 1996] (the first decision by the English courts which confirmed that trademark law applies to the Internet in the same way as in any other medium); Avnet Incorporated v. Isocat Ltd. [1998] FSR 16 (on an application for summary judgment Jacob J. held that an ISP facilitating customers to advertise on their own websites was not trademark infringement of a registration covering advertising services). 3 Ward, Jonathan, M. (2001), ‘The Rise and Fall of the Internet Fences: The Overbroad Protection of the Anticybersquatting Consumer Protection Act’, Marq. Intell. Prop. L. Rev. 5:211. 4 15 U.S.C. §1125(a)(1)(A) (2000). 5 Ibid., at §1114(1)(a). 6 950 F. Supp. 737 (E.D. Va. 1997). 7 Ibid., at para. III. 8 Ibid. 9 Ward (2001), ‘The Rise and Fall of the Internet Fences’, supra, note 3, at p. 221. 10 Ibid. 11 Cardservice International Inc. v. McGee, 950 F. Supp. 737 (E.D. Va. 1997). 12 Brookfield Communications Inc. v. W. Coast Entm’t. Corp., 174, 3F. 3d 1036 (9th Cir. 1999).

Notes 223 13 Papavasiliou, John (2002/2003), ‘FV: Using the Federal Trademark Registration Process to create a Broader Yet Fairer Solution to Domain Name Conflicts’, U. Balt. Itell. Prop. J. 26:93, at pp. 97–98. 14 15 U.S.C. §1125(c). 15 15 U.S.C. §1127 (2000). 16 141 F. 3d 1316, 1325 (9th Cir. 1998). 17 Ibid. 18 Ibid., at 1326. 19 McCarthy, Thomas (2004), ‘Proving a Trademark has been Diluted: Theories or Facts?’ Houston Law Review, 41:713, at p. 725. 20 The Senate also expressed its view on the issue, stating: ‘While the Federal Trademark Dilution Act has been useful in pursuing cybersquatters, cybersquatters have become increasingly sophisticated as the case law has developed and now take the necessary precautions to insulate themselves from liability. For example, many cybersquatters are not careful to no longer offer the domain name for sale in any manner that could implicate liability under existing trademark dilution case law. And, in cases of warehousing and trafficking in domain names, courts have sometimes declined to provide assistance to trademark holders, leaving them without adequate and effective judicial remedies. This uncertainty as to the trademark’s application to the Internet has produced inconsistent judicial decisions and created extensive monitoring obligations, unnecessary legal costs, and uncertainty for consumers and trademark owners alike.’ S. Rep. No. 106-140, at 7 (1999). 21 Panavision Int’l LP v. Toeppen, 141 F. 3d 1316 (9th Cir. 1998), at 1318. 22 See, for example, Ford Motor Co.v. Greatdomains.com, 177 F. Supp. 2d 635 (E.D. Mich. 2001), at p. 655. 23 See, for example, Lockheed Martin Corp. v. Network Solutions Inc. 985 Fr. Supp. 949 (C.D. Cal. 1997), at p. 956. 24 15 U.S.C. §1127 (2000). 25 See, for example, Times Mirror Magazines Inc. v. Las Vegas Sports News, 212 F. 3d 157 (3rd Cir. 2000). 26 See, for example, Nabisco Inc. v. PF Brands Inc. 191 F. 3d 208 (2nd Cir. 1999). 27 15 U.S.C. §1125(d). 28 Ibid. ACPA purports to authorise ‘an in rem civil action’. 29 15 U.S.C. §1125(d)(1)(A). 30 ACPA, 15 U.S.C. §1125(d)(1)(A), states: ‘A person shall be liable in a civil action by the owner of a mark … if without regard to the goods or services of the parties’. On the contrary, the Lanham Act, 15 U.S.C. §1125(a)(1), requires ‘connection with any goods or services’. 31 Federal Trademark Dilution Act, 15 U.S.C. §1125(c)(1), requiring a ‘person’s commercial use in commerce of mark or trade name’. 32 ACPA states that a court may consider, but is not limited to, factors such as the following: 1 2

The trademark or other intellectual property rights of the person [referring to the alleged cybersquatter], if any, in the domain name. The extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person.

224

Notes 3 4 5

6

7

8

9

The person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services. The person’s bona fide non-commercial or air use of the mark in a site accessible under the domain name. The person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation or endorsement of the site. The person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct. The person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct. The person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties. The extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c)(1) of section 43.

33 15 U.S.C. §1117(d), 1125(d)(1)(c), Supp. V (2000). 34 Grossman, Mark and Hift, Allison K. (2000), ‘Is the Cybersquatting Cure worse than the Disease?’ Legal Times, January 24, at p. 24. 35 15 U.S.C. §1125(d)(1)(B)(ii). 36 Lee, Thomas R. (2000), ‘In rem Jurisdiction in Cyberspace’, Wash. L. Rev. 75:97, at p. 104. 37 15 U.S.C. §1125(d)(2)(A). 38 Plitch, Phyllis, and Hunter, Bounty (1999), ‘New Law puts Squeeze on Net Domain Name Cybersquatters’, Wall St. J. WL-WSJ 24926545 (December 20). 39 ‘Cybersquatting and Consumer Protection: Ensuring Domain Name Integrity’, Hearing on S. 1255 before the Senate Committee on the Judiciary, 106th Cong. 41–4 (1999): ‘The bill would criminalize dissent and protest sites. A number of Web sites collect complaints about trademarked products or services, and use the trademarked names to identify themselves. For example, there are protest sites named and www.PepsiBloodbath.com. While the speech contained on those sites is clearly constitutionally protected, [ACPA] would criminalise the use of the trademarked name to reach the site and make them difficult to search for and find online’. Statement of Senator Patrick Leahy. 40 ‘Verizon attacks critical Domain Names’, 2600 (May 8, 2000), available at www.2600.com/news/view/article/322 (visited March 24, 2009). 41 People for the Ethical Treatment of Animals Inc. v. Doughney, 113 F. Supp. 2d 915 (E.D. Va. 2000).

Notes 225 42 43 44 45 46 47

48 49 50

51 52 53 54 55 56 57 58 59 60 61 62 63 64 65 66 67

68 69 70

H.R. Rep. No. 106-412 (1999), at 14. 185 F.R.D. 573 (N.D. Cal. 1999). Ibid., at pp. 577–8. Ibid., at p. 579. Ibid., at 580. ‘Some have suggested that dissidents or others who are online incognito for similar legitimate reasons might give false information to protect themselves and have suggested the need to preserve a degree of anonymity on the Internet particularly for this reason. The in rem provision addresses this concern by [sic] decreasing the need for trademark owners to join the hunt to chase down and root out these dissidents or others seeking anonymity on the Net.’ Statement of Senator Hatch. 145 Cong. Rec. S10513-02, S10516 (daily ed. August 5, 1999). H.R. Rep. No. 106-412 (1999), at 14. 15 U.S.C. §1125 (d)(2)(A)(ii)(I). Porsche Cars N. Am. Inc. v. AllPorsche.com, 51 F. Supp. 2d 707 (E.D. Va. 1999); Porsche Cars N. Am. Inc. v. AllPorsche.com, 251 F 3d 1320 (table) 2000 WL742185 (4th Cir. 2000), See also Lee (2000), ‘In rem Jurisdiction in Cyberspace’, supra, note 36. Alitalia-Linee Aeree Italiane SpA. v. Casinoitalia.com, 128 F. Supp. 2d 340 (E.D. Va. 2001). Porsche Cars N. Am. Inc. v. AllPorsche.com, supra, note 50. S. Rep. No. 106-140, 10–11 (1999), at 4; H.R. Rep. No. 106-412, 12 (1999), at 5. Sharrock, Lisa M. (2001), ‘The Future of Domain Name Dispute Resolution: Crafting Practical International Legal Solutions from within the UDRP Framework’, Duke L.J. 51. Fleetboston Fin. Corp. v. Fleetbostonfinancial.com, 138 F. Supp. 2d 121 (D. Mass. 2001). Cable News Network LP v. CNNews.com 162 F. Supp. d 484 (E.D. Va. 2001). Fleetboston Fin. Corp. v. Fleetbostonfinancial.com, supra, note 55, at p. 132. 433 U.S. 186 (1997). Ibid., at p. 193. Ibid., at pp. 190–192. 326 U.A. 310 (1945). Ibid., at p. 207. Cable News Network LP v. CNNews.com, supra, note 56; Caesars World Inc. v. CaesarsPalace.com 112 F. Supp. 2d 502 (E.D. Va. March 3, 2000). 15 U.S.C. §1125(d)(2)(A) and (C)(2000). Fleetboston Fin. Corp. v. Fleetbostonfinancial.com, supra, note 55, at p. 135. Ibid. In a dissenting opinion and expressing serious concern over the majority’s position, Justice Powell separately stated the following: ‘I would explicitly reserve judgment … on whether the ownership of some forms of property whose situs is indisputably and permanently located within a state may, without more, provide the contacts necessary to subject a defendant to jurisdiction within the state to the extent of the value of the property.’ Shaffer v. Heitner, at. p. 217. Ibid., at pp. 207–8. Ibid. Ibid., at p. 208.

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71 The court suggested that such an inference might be unfounded, for instance in cases where a chatter was brought into the forum without the owner’s consent or where the plaintiff’s fraud induced the owner to send the chattel into the forum. Ibid., citing Restatement (Second) of Conflicts of Laws 60 cmts. c and d. 72 Am. Online Inc. v. Huang, 106 F. Supp. 2d 848 (E.D. Va. 2000). 73 Cable News Network LP v. CNNews.com, supra, note 56. 74 Ibid., at p. 491. 75 495 U.S. 604 (1990). 76 Cable News Network LP v. CNNews.com, supra, note 56. 77 Ibid., at pp. 490–491. 78 Burnham v. Superior Court, 495 U.S. 604 (1990), at §IID. 79 Ibid. 80 Ibid. 81 Fleetboston Fin. Corp. v. Fleetbostonfinancial.com, supra, note 55. 82 15 U.S.C. §1125(d)(2)(A). A registry is the authority responsible for the registration and maintenance of domain names. 83 Froomkin, Michael (2000), ‘Wrong Turn in Cyberspace: Using ICANN to Route around APA and the Constitution’, at p. 57. 84 Cable News Network LP v. CNNews.com, supra, note 56. 85 Nguyen, Xuan-Thao (2003), ‘The Digital Trademark Right: A Troubling New Extraterritorial Reach of United States Law’, N.C.L. Rev. 81:483, at p. 535. 86 Cable News Network LP v. CNNews.com, supra, note 56. 87 Mueller, Milton, ‘China Threatens to Leave IGF’, Internet Governance Project Blog, available at http://blog.internetgovernance.org/blog/_archives/2008/12/ 5/4008174.html (visited March 31, 2009). 88 The process of converting domain names into IP addresses begins with the ‘Root zone file’, which is the highest level of the domain name system and contains the databases enabling an Internet address query to be routed to its proper destination. Froomkin (2000), ‘Wrong Turn in Cyberspace’, supra, note 83, at p. 43. 89 On March 7, 2000, security software VeriSign said it had agreed to acquire Net registrar Network Solutions Inc. in an all-stock deal worth about $21 billion. 90 ICANN–NSI Registry Agreement, Approved November 4, 1999; Signed November 10, 1999; Posted November 10, 1999, available www.icann.org/en/ nsi/nsi-registry-agreement-04nov99.htm (last visited March 31, 2009). 91 Smith v. Network Solutions Inc. 135 F. Supp. 2d 1159 (N.D. Ala. 2001), at p. 1162. 92 For example, Ford Motor Co. v. Greatdomains.com Inc. 177 F. Supp. 2d 656 (E.D. Va. 2001). 93 See generally, E. & J. Gallo Winery v. Spider Webs Ltd. 129 F. Supp. 2d 1033 (S.D. Tex. 2001); see also Nguyen (2003), ‘The Digital Trademark Right’, supra, note 85, at p. 535. 94 Nguyen (2003), ‘The Digital Trademark Right’, at pp. 540–555. 95 Convention of Paris on the Protection of Industrial Property, March 20, 1883, as revised at the Stockholm Revision Conference, July 14, 1967. 96 McCarthy, Thomas, McCarthy on Trademarks and Unfair Competition 29:25 97 Ibid. 98 See generally Int’l Café SAL v. Hard Rock Café Int’l (USA) Inc. 252 F. 3d 1274 (11th Cir. 2001).

Notes 227 99 Nguyen (2003), ‘The Digital Trademark Right’, supra, note 85, at p. 543. 100 ‘There is … a type of “jurisdiction” relevant to determining the extraterritorial reach of a statute; it is known as “legislative jurisdiction” or “jurisdiction to prescribe”.’ Hartford Fire Co. v. California, 509 U.S. 764 (1993), at p. 813. Generally, there are three types of jurisdiction recognised in international law: (1) jurisdiction to prescribe; (2) jurisdiction to enforce; and (3) jurisdiction to adjudicate. 101 Restatement (Third) of Foreign Relations Law of the United States 101 cmt. E, 402 (1986); see also John, Mary Claire (1994), ‘Extraterritorial Application of Title VII: The Foreign Compulsion Defense and Principles of International Comity’, Vand. J. Transnat’l L. 27:869. 102 Restatement (Third) of Foreign Relations Law of the United States 101 cmt. E, 402 (1)(c) (1986). 103 Ibid. 402(3). 104 Ibid. 402(2). 105 Jurisdiction to prescribe refers to the state’s authority to make its substantive laws applicable to particular persons and circumstances. International law has long recognised limitations on the authority of states to exercise jurisdiction to prescribe in circumstances affecting the interests of other states. In principle, it was accepted that a state had legislative jurisdiction to regulate activities within its territory, as well as the conduct of its nationals abroad. Yet there is wide international consensus that not even the links of territoriality or nationality suffice in all instances for the exercise of jurisdiction to prescribe. For instance, according to article 34 of the Vienna Convention on Diplomatic Relations, diplomats are exempt from most dues and taxes. 106 These factors include: (a) the link of the activity to the territory of the regulating state, i.e. the extent to which the activity takes place within the territory, or has substantial, direct and foreseeable effect upon or in the territory; (b) the connections, such as nationality, residence or economic activity between the regulating state and the person principally responsible for the activity to be regulated or between the state and those whom the regulation is designed to protect; (c) the character of the activity to be regulated, the importance of regulation to the regulating state, the extent to which other states regulate such activities and the degree to which the desirability of such regulation is generally accepted; (d) the exercise of justified expectations that might be protected or hurt by the regulation; (e) the importance of regulation to the international, political, legal or economic system; (f) the extent to which the regulation is consistent with the traditions of the international system; (g) the extent to which another state may have an interest in regulating the activity; and, (h) the likelihood of conflict with regulation by another state.’ Ibid., at 403. 107 Ibid., at 402(2)(a).

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108 ‘The infrastructure of the Internet moves towards a more centric, culturebased system through the expansion of the DNS Root servers. Initially, when the commercial Internet was still considered mainly a Western privilege, the majority of the thirteen existing Root servers were located in the United States, where the number of users was much higher compared with the rest of the world. Currently and as the number of users increases in other parts of the world, most notably in countries like China and India, governments invest money to host Root servers so as to correspond to the increase of user traffic. Therefore national governments invest money and begin to have the capacity to customise the Internet according to their culture and enforce their demands, like it happened with the notorious cases of big corporations, such as Microsoft, Google and Cisco, and their surrender to China’s imposition of culture and tradition’. Komaitis, Konstantinos (2009), ‘Internet Governance: Why Plato is still Relevant’, International Journal of Communications Law and Policy 13, at p. 137. 11 Applying the UDRP and ACPA in the right context 1 00-CV-3343 (E.D. Pa., August 27, 2001). 2 Ibid., at p. 3, citing HQM Ltd, 71 F. Supp. 2d at 507 (citing Ringling Bros– Barnum & Bailey Combined Shows Inc. v. Utah Div. of Travel Dev., 170 F. 3d 449 (4th Cir. 1999), cert. denied, 528 U.S. 923 (1999)). 3 WIPO, D2001-0695. 4 Ibid. Dissent, Diane Cabell, Esq. 5 2001 U.S. App. LEXIS 15619, No. 00-2509 (4th Cir., July 12, 2001). 6 Ibid., at II. 7 Wal-mart Stores Inc. v. Walsucks and Walmarket Puerto Rico, WIPO D2000-0477 8 Banco de Chile SA v. Eric S. Bord, Esq., WIPO D2001-0695. 9 WIPO, D2000-0303, available at www.wipo.int/amc/en/domains/decisions/ html/2000/d2000-0303.html (visited May 5, 2009). 10 Ibid. 11 eResolution AF-0170. (The case is no longer available. eResolution is no longer accepting UDRP cases.) 12 Ibid. 13 D2009-1033. 14 WIPO, D2000-1571, available at www.wipo.int/amc/en/domains/decisions/ html/2000/d2000-1571.html (visited May 5, 2009). 15 Ibid. 12 ‘Haves’ and ‘have nots’ 1 Kennedy, Duncan (1973), ‘Legal Formality’, Journal of Legal Studies 2:351. 2 Galanter, Marc (1974), ‘Why the “Haves” Come out and Ahead: Speculations and Limits of Legal Change’, Law and Society Law Review 9:1, 95–160. 3 Ibid., at p. 123. 4 Black, Donald J. (1973) ‘The Mobilization of Law’, Journal of Legal Studies 2:125, at p. 141. 5 Galanter, Marc, ‘Why the “Haves” Come out and Ahead’, supra, note 2, at p. 123. 6 Ibid., at pp. 119–121. 7 Leach, William D. (2004), ‘Is Devolution Democratic? Assessing Collaborative

Notes 229

8

9

10 11

12 13

14 15 16 17 18 19 20 21 22 23

Environmental Management’, California State University, Sacramento, Centre for Collaborative Policy, available at http://papers.ssrn.com/sol3/papers.cfm? abstract_Ibid.=628122 (visited May 14, 2009). See, for example the highly controversial decision on Pirate Bay: Stockholm District Court, Division 5, Unit 52, Verdict B 13301-06, April 17, 2009, available at www.ifpi.org/content/library/Pirate-Bay-verdict-Englishtranslation.pdf (visited May 14, 2009), the UDRP, and the three-strike copyright law, which passed in France in 2009, available at www.theregister.co.uk/2009/ 04/03/french_three_strikes/ (visited November 13, 2009). Coglianese, Cary (1999), ‘Rethinking consensus: Is Agreement a Sound Basis for Regulatory Decisions?’ Paper read at ‘Environmental Contracts and Regulation: Comparative Approaches in Europe and the United States’, University of Pennsylvania Law School. Scholz, John T. (1991), ‘Cooperative Regulatory Enforcement and the Politics of Administrative Effectiveness’, American Political Science Review 85:1:115. The term ‘acoustic agreement’ is used to describe the readily apparent but superficial commonalities between systems. Rogers, Catherine (2002), ‘Fit and Function in Legal Ethics: Developing a Code of Conduct for International Arbitration’, Mich. J. Int’l. L. 23:341, at p. 330. Rawls, John (1971), A Theory of Justice, Oxford University Press. Within legal reasoning, legal priority relates to the right to have supremacy over the claims and rights of others. Its application is mainly prevalent in bankruptcy law. See, for instance, In re Texas Pig Stands Inc., No. 05-52336 (Bankr. W.D. Texas 1.10.08), where the judge stated: ‘[T]he Comptroller is entitled to distribution from the sales proceeds to the extent that the proceeds are available to satisfy the Comptroller’s tax lien, subject to the payment of prior liens and claims. Unfortunately, the sale proceeds will not satisfy the Comptroller’s tax lien in full. The employees, trade vendors and all other general unsecured creditors therefore will remain unpaid.’ Order granting Authority for Liquidation Trustee to Distribute Sales Proceeds, p. 7. Rule 1, UDRP Rules, available at www.icann.org/en/dndr/udrp/uniform-rules. htm (visited May 11, 2009). Rule 15(a), ibid. UDRP Policy, para. 4a. Rawls, John (1971), A Theory of Justice, supra, note 12, at p. 104. Thornburg, Elizabeth (2001), ‘Fast, Cheap and Out of Control: Lessons from the ICANN Dispute Resolution Process’, Journal of Small and Emerging Business Law 7, at p. 359. UDRP Policy, para. 4(k). UDRP Rules, Rule 5(a). NAF Supplemental Rules to ICANN’s Uniform Domain Name Dispute Resolution Policy, para. 6(i)(E), available at http://domain.adrforum.com/users/ icann/resources/UDRPSuppRules20071101.pdf (visited May 11, 2009). Franck, T. M. (1995), Fairness in International Law and Institutions, Oxford University Press, at p. 8. The decisions in greglloydsmith.com is a clear example of the amount of inconsistency. Komaitis, Konstantinos (2003), ‘Like Alice in Wonderland’, Trademark World 159, pp. 26–8.

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24 Dinwoodie and Helfer (2001), at pp. 202–209. 25 Curtis, Dennis and Resnik, Judith (1987). ‘Images of Justice’, Yale Law Journal 96:1727, at pp. 1727–1728. 26 Mani, V. S. (1980), International Adjudication: Procedural Aspects, Martinus Nijhoff, at pp. 16–17. 27 Ibid. 28 Reuben, Richard C. (2000), ‘Constitutional Gravity: A Unitary Theory of Alternative Dispute Resolution and Public Civil Justice’, UCLA L. Rev. 47:949, at p. 1057. 29 Ibid. 30 Froomkin, Michael A., ‘A Critique of WIPO’s RFC 3’, at §10, available at www.law.miami.edu/%7Eamf/critique.htm (visited May 12, 2009). 31 King, Stacey H. (2000), ‘ “The Law that it deems Applicable”: ICANN, Dispute Resolution and the Protection of Cybersquatting’, Hastings Comm. and Ent. L.J. 22:453, at p. 500. 32 Thornburg (2001), ‘Fast, Cheap and Out of Control’, supra, note 18, at p. 42. 33 Ibid. 34 Ware, Stephen J. (1996), ‘Arbitration and Unconscionability after Doctor’s Associates Inc. v. Casarotto’, Wake Forest L. Rev. 31:1001, at pp. 1021–1022. 35 Dinwoodie and Helfer (2001), ‘Designing Non-national Systems’, supra, note 21, at p. 212. 36 Banco de Chile S.A. v. Eric S. Bord, Esq., WIPO D2001-0695. 37 Thornburg (2001), ‘Fast, Cheap and Out of Control’, supra, note 18, at p. 44. 38 It is indeed the case the WIPO Arbitration and Mediation Centre has experienced the majority of domain name disputes and is seen as complainantfriendly. 39 National Arbitration Forum (NAF) Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy, para. 10(b), available at http:// domain.adrforum.com/users/icann/resources/UDRPSuppRules20071101.pdf (visited May 12, 2009). 40 World Intellectual Property Organization (WIPO), Supplemental Rules for the Uniform Domain Name Dispute Resolution Policy, available at www. wipo.int/amc/en/domains/rules/supplemental/index.html#7 (visited May 12, 2009). 41 Thornburg (2001), ‘Fast, Cheap and Out of Control’, supra, note 18, at p. 45. 42 Geist, Michael (2002), ‘Fair.com?’. 43 Ibid., at p. 8. 44 UDRP Rules, Rules 8(b)(xiv) and 5(b)(viii). 45 ‘The Management of Internet Names and Addresses: Intellectual Property Issues’, Final Report of the WIPO Internet Domain Name Process, http://wipo2. wipo.int (April 30, 1999), available at www.wipo.int/export/sites/www/amc/en/ docs/report-final1.pdf (visited May 13, 2009). 46 Council of Better Business Bureaus/BBBOnline, ‘Protecting Consumers in Cross-border Transactions: A Comprehensive Model for Alternative Dispute Resolution’ (2000), available at www.bbbonline.org/about/press/whitepaper.doc (visited May 13, 2009). 47 Document Tech. Inc. v. Internat’l Elec. Communications Inc. WIPO D2000-9270. 48 Hazard, Geoffrey C. (1978), ‘An Historical Perspective on the Attorney–Client Privilege’, Cal. L. Rev. 66:1061.

Notes 231 49 Hill, Alison M. (1995), ‘A Problem of Privilege: In-house Counsel and Attorney– Client Privilege in the United States and the European Community’, Case W. Res. J. Int’l L. 27:145, at p. 172. 50 Rogers, Catherine (2002), ‘Fit and Function in Legal Ethics’, supra, note 11, at pp. 371–373. 51 Thornburg (2001), ‘Fast, Cheap and Out of Control’, supra, note 18, at pp. 35–37. 52 Bryant, Gareth G. (1992), ‘Privatization and the New Market for Disputes: A Framework for Analysis and a Preliminary Assessment’, Studies in Law, Politics and Society 12:36, at p. 382. 53 Aristotle, Politics I.2, at 1253a, 37–9. 54 Nozick, Robert (1974), Anarchy, State and Utopia, Basic Books, pp. 151–152. 55 Ibid., pp. 74–8. 56 Winfrey, John C. (1981), ‘Charity versus Justice in Locke’s Theory of Property’, Journal of the History of Ideas, 42:3:423, at p. 432. 57 According to the Marx–Lenin definition, ‘lawful’ should be considered a virtue, which corresponds only to the will of the working class and its party. König, Klaus (1993), ‘Administrative Transformation in Eastern Germany’, Public Administration 71 (1–2), 135–149. 58 Aristotle, Politics I.2, 1283a, 36–9. 59 Aristotle, Nicomachean Ethics, 1129b, 15–18. 60 Greer, Germaine (1994), The Madwoman’s Underclothes: Essays and Occasional Writings, Atlantic Monthly Press, as cited in Gladstein, Jed, ‘Law and Lawfulness in a Civilised Society’, available at www.americanthinker.com/2009/04/law_ and_lawfulness_in_a_civili.html (visited May 6, 2009). 61 Aristotle, Politics VI.2 1317b, 1–12, and 1318a, 2–10. 62 Rawls, John (1989), ‘The Domain of the Political Overlapping Consensus’, New York University Law Review, 64:2, at pp. 65–70. 63 Aristotle, Politics, 1302a, 22–40. 64 de Vecchio, G. (1952), Justice: an Historical and Philosophical Essay’ (A. H. Campbell, ed.), Edinburgh: Edinburgh University Press. 65 Aristotle, Politics, at 1302b, 5–9. 66 Rawls (1971), A Theory of Justice, supra, note 12. 67 Ibid., at p. 104. 68 Feinberg, Joel (1970), Justice and Personal Desert, Princeton: Princeton University Press, at p. 48. 13 Forwards and backwards … 1 Para. 4(C) of the Nominet Dispute Resolution Policy, available at www.nominet. org.uk/disputes/drs/?contentId=5239 (visited November 23, 2009). 2 ‘An appeals system would be complicated and expensive.’ ICANN, ‘Staff Manager’s Issues Report on UDRP Review’, August 1, 2003, www.icann. org/gnso/issue-reports/udrp-review-report-01aug03.htm (visited September 9, 2009). 3 Geist, Michael (2002), ‘Fair.com?’. 4 Article 23 of the UN Commission on International Trade Law (UNCITRAL) Model on International Commercial Arbitration, Arbitration Rules, states: ‘The periods of time fixed by the arbitral tribunal for the communication of written statements (including the statement of claim and statement of defence) should

232

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6 7 8

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12

Notes not exceed forty-five days. However, the arbitral tribunal may extend the timelimits if it concludes that an extension is justified.’ Para. 15(3) of the Rules for the Uniform Domain Name Dispute Resolution Policy states: ‘Panel decisions and dissenting opinions shall normally comply with the guidelines as to length set forth in the Provider’s Supplemental Rules. Any dissenting opinion shall accompany the majority decision. If the Panel concludes that the dispute is not within the scope of Paragraph 4(a) of the Policy, it shall so state. If after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hi-jacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.’ Available at www.icann.org/en/dndr/udrp/uniform-rules.htm (visited September 10, 2009). Mueller, Milton (1999), ‘UDRP too Weak on RDNH’, ICANN, UDRP Public Comment Period, available at www.icann.org/en/comments-mail/commentudrp/current/msg00088.html (visited September 10, 2009). Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. §1114 (2)(D)(5). Panel disputes include: The Clorox Co. v. Marble Solutions a.k.a. Adam Schaefer, D2001-0923, Monty and Pat Roberts Inc. v. J. Bartell, D2000-0300, Beverages and More Inc. v. Glenn Sobel MGT, AF0092, Shore Media Ventures Inc. v. Both Worlds Inc. AF0228. Court disputes include: Panavision International LP v. Toeppen, 938 F. Supp. 616 (CD. Cal. 1996), Nissan Motor Co. v. Nissan Computer Corp., 378 F. 3d 1002 (9th Cir. 2004), V. Secret Catalogue Inc. v. Moseley, 259 F. 3d 464 (6th Cir. 2001). 259 F. 3d 464 (6th Cir. 2001). In this case the court explained that, unlike traditional infringement law, the prohibitions against trade mark dilution are not motivated by an interest in protecting consumers. Instead, dilution refers to injury to business reputation – sometimes called tarnishment – and to the distinctive quality of a trade mark – sometimes called blurring. More important, the mere fact that a consumer may mentally associate a domain name with a famous mark is not sufficient to establish actionable dilution. The courts instruct that a mere mental association will not necessarily reduce the famous mark’s capacity to identify its owner’s goods. Consequently, in cases where there is a complete absence of evidence of any lessening of the complainant’s mark’s capacity to identify and distinguish goods or services sold, the complainant should not prevail. See, for example, Barcelona.com Inc. v. Excelentisimo Ayuntamiento de Barcelona, 189 F. Supp. 2d 367 (E.D. Va. 2002). In this case the court of first instance accepted the UDRP reasoning on the transfer of the disputed domain name ; Sallen v. Corinthians Licenciamentos Ltda, 273 F. 3d 14 (1st Cir. 2001). Many national policies concerning disputes over ccTLD names have been influenced by the UDRP, and many of them are operating under the auspices of WIPO. For more information see WIPO Domain Name Dispute Resolution Service for country code top-level domain names, available at www.wipo.int/ amc/en/domains/cctld/ (visited May 23, 2009). For example, the ‘Helsinki Accords’ – representatives of thirty-five nations gathered in Helsinki, Finland, in 1975 for a conference on Security and Co-operation in Europe. The Final Act of the conference – known as the ‘Helsinki

Notes 233 Accords’ – sets forth a number of basic human rights: ‘The participating States will respect human rights and fundamental freedoms, including the freedom of thought, conscience, religion or belief, for all without distinction as to race, sex, language or religion.’ 13 Boyle, A. E. (1999), ‘Some Reflections on the Relationship of Treaties and Soft Law’, International and Comparative Law Quarterly 48:901, pp. 901–2. 14 Repeating the same mistakes 1 ‘Final Report on Trademark Protection in New gTLDs’, prepared by the Implementation Recommendation Team (IRT) (IRT Report), available at https://admin.na3.acrobat.com/_a819976787/p91732370/ (visited July 17, 2009). 2 gTLD and IDN historic timeline, New gTLD Program ‘Openness, Change, Innovation’, available at www.icann.org/en/topics/new-gtld-program.htm (visited July 17, 2009). 3 Froomkin, M. and Lemley, M. (2003), ‘ICANN and Antitrust’, Ill. L. Rev. 1. 4 Domain Name Counts and Internet Statistics, available at www.domaintools. com/internet-statistics/ (visited July 17, 2009). 5 Adopted Board Resolutions, Mexico, 6 March 2009, para. 7, ‘Protection of Trademarks in New gTLDs’, available at www.icann.org/en/minutes/resolutions06mar09.htm (visited July 17, 2009). 6 New gTLD and Trademark Issues: Implementation Recommendation Team (‘IRT Recommendation’), 26 March 2009, available at www.icann.org/en/ announcements/announcement-26mar09-en.htm (visited July 17, 2009). 7 Ibid., at p. 1. 8 For more information and transcripts of the discussions, http://syd.icann.org/ syd/transcripts (visited July 20, 2009). 9 For more information, including presentation by members of the IRT team, ICANN and individuals: www.icann.org/en/topics/new-gtlds/consultationoutreach-en.htm (visited July 20, 2009). 10 IRT Report, supra, note 1, at p. 2. 11 Ibid. 12 ‘Non-commercial Users Constituency (NCUC) Procedural Comments on the IRT Recommendation’ (NCUC Procedural Comments), http://ncdnhc.org/profiles/ blogs/ncucs-procedural-comments-on (visited July 23, 2009). 13 Eun Joo Min, ‘ICANN’s New gTLD Program: Trademark-related Concerns’, www.icann.org/en/topics/new-gtlds/presentation-min-15jul09-en.pdf (visited July 23, 2009); see also WIPO, Comments on the ICANN Implementation Recommendation Team Draft Report, www.wipo.int/amc/en/docs/ icann100509.pdf (visited July 23, 2009). 14 Corwin, Philip, ‘ICA to ICANN: The IRT must Open up or be Stripped of Official Status and Support’, www.internetcommerce.org/node/179 (visited July 23, 2009). 15 NCUC Procedural Comments, supra, note 12. 16 Froomkin, Michael, ‘Comments on ICANN Uniform Dispute Policy’, available at http://personal.law.miami.edu/∼amf/icann-udp.htm (visited July 23, 2009). 17 NCUC Procedural Comments, supra, note 12.

234 18 19 20 21

22 23 24 25 26

27 28 29 30 31 32 33

Notes Ibid. ‘IRT Recommendation’, supra, note 1, at p. 1. Ibid. at p. 7. Both New York (July 13, 2009) and London (July 15, 2009) have focused on these issues. Information about the New York meeting is available at www.isoc-ny.org/?p=769 (visited July 24, 2009); for the London meeting, information is available at www.isoc-ny.org/?p=769 (visited July 24, 2009); see also Komaitis, Konstantinos, ‘Internet Users are being Threatened: The IRT Meeting in London’, http://ncdnhc.org/profiles/blogs/internet-users-are-being (visited July 24, 2009). IRT Recommendation, supra, note 1, at p. 13. The report actually states: ‘The IP Clearinghouse must be highly scalable. For example, … recognising the territorial nature of trademark law …’, and it stops there. No mention is made as to how the IP clearing house thinks to achieve so. IRT Recommendation, supra, note 1, at p. 16. ‘The GPML is also not a consolidated list of what may constitute ‘well known’ or ‘famous’ marks under national trademark laws, and should not be interpreted as such.’ Ibid. The IRT put forward the following requirements: ‘(1) Ownership by the trademark owner of [number] trademark registrations of national effect for the applied-for GPM that have issued in at least [number] countries across all 5 ICANN Regions; (2) All trademark registrations must have been issued on or before the date that GPML applications are first accepted and must be based on trademark registration applications filed on or before 1 November, 2008; and (3) The second level domain name for the GPM’s principal online presence must be identical to the GPM.’ Ibid., at p. 17. Ibid., at p. 18. Federal Trademark Dilution Act, §43, 15 U.S.C. §1125 (c)(1). McCarthy, Thomas (2004), ‘Proving a Trademark has been Diluted: Theories or Facts?’ Houston Law Review, 41:3, 713, at p. 724. It can refer either to Greek women warriors or the great river basin in South America. McCarthy, Thomas (2004), ‘Proving a Trademark has been Diluted’ supra, note 29, at p. 738. Ibid., at p. 739. ‘The NCUC, as a final drafter of the UDRP, notes that the IRT Report uses UDRP Paragraph 4(c) in a manner which it was never drafted nor intended – and in a way completely outside the bounds of law and language. UDRP Paragraph 4(c), rights of registrants, was drafted as a defense to cybersquatting. It was never intended to incorporate all rights of a new registrant to a domain name – nor to require registrants to justify their right to use ordinary words or common names. We may name our children any name we like, without regard to ‘existing rights’; we may pick the names of our new products without any right to the terms we choose (other than avoiding clear confusion), Benjamin Franklin named his almanac Poor Richard’s Almanac without any existing right or interest in “Richard”. The IRT report turns this notion of rights on its head ad shifts the burden of proof on to the registrant.’ Non-commercial User Constituency (NCUC), Substantive Comments on the IRT Recommendation (NCUC Substantive Comments), http://ncdnhc.org/ profiles/blogs/ncucs-substantive-comments-on (visited July 27, 2009).

Notes 235 34 IRT Recommendation, supra, note 1, at p. 25. 35 For example, in the Introduction to the URS there is a part that reads: ‘Many brand owners face thousands of infringing websites per year. Often these Web sites monetise off the value and goodwill of a brand, distribute counterfeit goods, malware and other malicious software, phishing attempts, and adult content. Cease-and-desist letters often go unanswered and brand owners are forced to spend large amounts of money drafting and filing UDRP complaints. In those obvious cases – as noted above – registrants often either fail to respond or simply agree to transfer the domain name after initiation of the UDRP. The end result is that brand owners spend large amounts of money to build up portfolios of domain names they do not want, simply to prevent fraud on their consumers and misuse of their brands.’ Ibid. 36 ‘The URS is intended to supplement and not replace the UDRP. They are separate proceedings with distinct remedies. The URS is designed to provide a faster means to stop the operation of an abusive site. The UDRP is designed to result in the transfer of the abusive domain name. Brand owners seeking to thwart infringement could utilise either or both proceedings.’ Ibid. 37 Ibid., at p. 26. 38 ‘Except in cases involving “abusive registrations” made with bad faith intent to profit commercially for others’ trademarks (e.g. cybersquatting and cyberpiracy) the adopted policy leaves the resolution of disputes to courts and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of “abusive registrations”.’ Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, October 24, 1999, www.icann.org/udrp/ udrp-second-staff-report-24oct99.htm (visited July 28, 2009). 39 IRT Recommendation, supra, note 1, at p. 25. 40 ‘We have serious issues with the Uniform Rapid Suspension Service (URS) as proposed. For instance, the URS mechanism subverts conventional UDRP practice as it gives entirely insufficient time for notice to the registrant of the pending dispute. Thus, the registrant is unfairly limited in his/her right of response and the process is missing the fundamental principles of due process.’ Joint Statement on the IRT Report from ALAC and NCUC, https://st.icann.org/gnso-liaison/index.cgi?joint_statement_ on_the_irt_report_from_alac_and_ncuc (visited July 28, 2009). 41 Keating, Paul, ‘Comments on the IRT Final Report Uniform Suspension System’, ICANN Community Presentation Comments, London (July 15, 2009), available at: www.icann.org/en/topics/new-gtlds/presentation-keating-15jul09en.pdf (visited July 28, 2009). 42 The GNSO’s motion can be found at: https://st.icann.org/gnso-council/index. cgi?28_oct_motions (visited November 4, 2009). 43 Komaitis, Konstantinos (2009), Why WIPO’s Fast-track UDRP Process is Flawed, www.circleid.com/posts/20091102_wipo_fast_track_udrp_process_ flawed/ (visited November 4, 2009).

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Index

Note: The references include footnotes, for example, 222n453 refers to footnote 453 on page 222. ‘A’ Root server 42, 43, 64, 74, 88; ‘physically’ located in Virginia 135–6; UDRP decision 98 abusive domain name registrations 4, 73, 101, 119, 179, 182; see also bad faith registration; cybersquatting accountability 100 Ackerman, Bruce 17–18 Administrative Challenge Panels (ACPs) 89; gTLD-MoU (1997) 74–5 advertising and trademarks 34–5, 115 .aero 46, 185 Africa 154 Akerlof, George 32 altavista.com 45 Amazon 46, 47, 193 amiable compositeur doctrine 89 anonymous registrants 127–9 anti-competitive practices 29–30, 158 Anticybersquatting Consumer Protection Act (ACPA) 65, 69, 84, 99, 119–20, 140, 141–3, 144; bad faith registration or use 119, 125, 126, 142–3, 174; confusion test 125; default court for disputes 135–6; in rem jurisdiction and 127–39; incompatible status of gTLDs and national legislation 139; initiation of civil law suit 179; jurisdiction to prescribe 138–9; Paris Convention 137; rational behind in rem jurisdiction 127–9; reverse domain

name hi-jacking (RDNH) 106–7, 110–11, 126; subject matter 125–7; US approach prior to 121–4; versus international institutions 136–9 appeal process in UDRP, lack of internal 98–9, 103, 154; recommendation 176–7 applicable law 80–1, 91 arbitration: amiable compositeur doctrine 89; comparison between UDRP and 89–95, 97, 102; default cases 178; ex aequo et bono doctrine 89; independence of arbitrators 102, 155–6 Aristotle 14, 160, 161, 163–4 Asian Domain Name Resolution Centre (ADNDRC) 101 At-large Advisory Committee (ALAC) 188 audi alternam partem 154 Austin, J. 16, 88 auto.com 45 bad faith registration or use (ACPA) 119, 125, 126, 142–3, 174 bad faith registration and use (UDRP) 83, 92, 103–4, 119, 143, 144, 154; Barcelona.com case 104–7; credibility check 159; criticism websites 116–17; default cases 99–100, 178; initiation of procedure by domain name registrants 179; privacy 104;

258

Index

recommendations 174–5, 179; Sallen case 109 bad faith and Uniform Rapid Suspension System (URS) 195 Beckerman-Rodau, Andrew 64 Bentham, Jeremy 14, 16 Black, Donald J. 150 Blackstone, William 16, 20 Bouckaert, B. 15 branding: brand loyalty 33–4; domain names and 47 Brazil 189 ‘bundle of rights’ theory of property 16–19, 28–9, 36, 63; case law 56; domain names 64–5, 172 burden of proof 128, 195 Business.com 45 Callmann, Rudolph 35 Canada 104 cars 32 ccTLDs (country code top-level domain names) 42, 45, 64, 184 cease-and-desist letters 96, 114 civil law 26, 29, 143 civil liberties 68 clearing house, IP 189–91 Clinton Administration 73, 77 CNN 139 Coase, R.H. 17 Coglianese, Cary 151 Cohen, G. 21 Cohen, Morris R. 20 .com 108, 135, 136, 181, 186 common law 26, 29 common property 14 competition and trademarks, market 33 concept of property 14–19 conference calls 158 conflict of laws 80–1 conflicts of interest 37, 155 consumer protection 181, 182; ACPA confusion test 125; trademarks 12, 25, 28, 29, 30, 31, 35, 36, 37, 73; UDRP and consumer confusion 175–6 consumers and free speech 117 contract law 15–16, 18, 19; domain names as service contract rights

51–6, 64; registration of domain names 64, 65, 75 conversion 57 .coop 185 copyright 13, 26, 27, 28, 30, 68; fair use doctrine 114 corporations, multinational 7, 37, 141, 181, 188 Corwin, Philip 188 country code top-level domain names (ccTLDs) 42, 45, 64, 184 criticism sites 103, 116–17, 176, 193, 222n453; Anticybersquatting Consumer Protection Act (ACPA) 126–7 cultural diversity 178 cyberpiracy 83 cybersquatting 11, 121, 143, 165, 170, 182; ACPA see Anticybersquatting Consumer Protection Act; ICANN proposal for Rapid Suspension System 195; initiation of UDRP procedure by domain name registrants 179; IRT (Implementation Recommendation Team) 187, 194; serial 88; UDRP 2, 4–5, 39, 76, 83, 92–3, 101, 143, 157, 171, 173, 179, 183; US Federal Dilution Act 123–4 Czech Arbitration Court 101 damages: ACPA 126 de novo review by courts 93–5, 98, 107–12 De Soto, Hernando 64 default cases (UDRP) 99–100, 178, 179 democracy/democratic legitimacy 22, 35, 80, 87, 100, 150, 188; oligarchic and democratic factions 162 Digital Rights Management 13 dilution 123–4, 179, 182, 192 Dinwoodie, Graeme 75, 83, 97, 99, 107–8, 156 Diosdi, Gyorgi 13 discovery and UDRP 159 domain names 5–6, 12–13, 39–41, 141–2, 169–70, 171; different content and foundation to trademarks 40, 48; legal theories 48–61; online extensions of trademarks 37, 39,

Index 259 49–51; as property 56–62, 66, 117, 171; self-critical 127; as service contract rights 51, 56; similarities to trademarks 40, 62; socio-economic function of 44–5; socio-economic norms in market 45–8; sui generis rights 3, 8, 11, 13, 39, 62, 67, 171, 179, 181; technical nature of 41–4 due process and in rem jurisdiction 130, 136 Dyson, Esther 77–8 e-mail 41, 159 economic value of trademarks 31–5 .edu 42 enterability of domain names 47 Epstein, R. 18 equality and UDRP 91–3, 144–5, 152–3, 162–5 estoppel 97, 103 ethical concerns and UDRP 149–52; domain name óς 160–6; equality 152–3, 162–5; fairness 154–7; lawfulness 157–60, 161–2 European Convention on Human Rights 15 European Court of Human Rights 15, 100 European Union 107 evidence 158–9, 174–5 ex aequo et bono doctrine 89 expertise bias 155–6 Facebook 7, 56, 68 fair use 114–15, 126, 191; recommendation 175–6 fairness: impartiality/independence of UDRP panellists 101–2, 154–7; see also justice; procedural unfairness forum shopping 96, 97, 100, 174, 187 France 189 free speech 30, 35, 51, 59, 62, 103, 113–18, 169, 187, 191; Globally Protected Marks List (GPML) 193; recommendations 175–6, 181 French Revolution 25 Froomkin, Michael 77, 78, 80, 97, 99, 126

Gaian 25–6 Galanter, Marc 150 garnishment proceedings 51–6 Geist, Michael 102, 157, 174, 177 Generic Names Supporting Organisation (GNSO) 195–6 generic words 52, 58, 62, 67; gTLDs 181, 193; trademark law 12, 30, 50–1, 113 generic top-level domain names see gTLDs geographical terms 67; Barcelona.com case 104–7; gTLDs 181; trademark law 12, 30, 50, 51, 107 Ginossar, S. 26 Globally Protected Marks List (GPML) 191–3, 195 good faith 90, 91, 143, 175 goodwill associated with trademarks 5, 35, 40; advertising 34; protection of 29, 63, 73 goodwill and domain names 6, 13, 56, 61 ‘Google’ 34 .gov 42 Greece, ancient 154 Grey, Thomas C. 18, 19 gTLD-MoU 74–5, 79 gTLDs (generic top-level domain names) 5, 42, 45, 64, 65, 78, 82, 123; expansion 1, 46, 180–1, 185–96; Implementation Recommendation Team (IRT) 186–95; incompatible status of national legislation and 139 guessability of domain names 46 Harris, J.W. 15, 26, 66 health care arbitration 155–6 Hegel, G.W.F. 14 Helfer, Laurence 75, 83, 97, 99, 107–8, 156 Hindmarch, W. 28 history of domain name institutionalisation 73–6; ICANN’s authority to create UDRP 76–9; road to UDRP 79–82; UDRP launched 82–4 Hohfeld, Wesley 16–17 Honoré, A.M. 16, 17, 28

260

Index

‘Hoover’ 34 human rights 68 ICANN (Internet Corporation for Assigned Names and Numbers) 1–3, 7, 11, 42, 62, 65, 68, 73, 123, 134–5, 136, 172, 173; competitive environment in dispute resolution 174; ethical concerns 151, 152, 153, 157; expansion of the Root 1, 46, 180–1, 185–96; IRT (Implementation Recommendation Team) 1–2, 7, 80, 84, 172, 186–95; pricing of SLDs 45; registration system 42–3, 108; Special Trademark Interest (STI) team 195–6; UDRP see separate entry; United States 1, 77, 88, 108, 182 impartiality/independence of UDRP panellists 101–2, 154–7 Implementation Recommendation Team (IRT) 1–2, 7, 80, 84, 172, 186–95, 196; Globally Protected Marks List (GPML) 191–3, 195; injustice at procedural level 187–9; IP clearing house 189–91; substantive issues 189–95; Uniform Rapid Suspension System (URS) 194–5 in rem jurisdiction 59, 60, 120, 125, 126; ACPA and 129–37; ACPA v. jurisdiction to prescribe 138–9; Paris Convention and ACPA’s in rem provision 137; rationale 127–9 inconsistency and UDRP 87, 100–7, 110, 154 independence of UDRP panellists 101–2, 154–7 Indian civilisations 154 industrial revolution 25, 27 inequality and UDRP procedure 91–3, 144–5, 152–3, 162–5 information: domain names 3; IP clearing house 189–91; IRT (Implementation Recommendation Team) 188; trademarks: conveyance of 31–4 injunctions 99 innovation 7, 181; trademarks 33, 37 instant messaging services 158

.int 42 intangible property 5, 13, 15, 19, 25–6, 30, 56; conversion 57; telephone mnemonics 49 intellectual property and trademarks 25–9 international law: jurisdiction to prescribe 138–9; Paris Convention 137; recommendation: UDRP as soft law 182–4; trade see lex mercatoria International Telecommunications Union (ITU) 75 International Trademark Association (INTA) 119; 1997 White Paper 73–4 Internet 7, 66, 68, 76, 85–6, 114, 173; analogy with offline activities 39; arbitration 90; business methods 13; consumers and free speech 117; diversity of 67, 74; domain names as property rights 58, 171; ethical concerns 150–1; infrastructure 139; merging of customs 178; technical operation 41–2 Internet Ad Hoc Committee (IAHC) 74, 75 Internet Assigned Names Authority (IANA) 74, 75, 77 Internet Commerce Association (ICA) 188 Internet Protocol (IP) numbers 40, 41, 43, 51, 136 Internet Service Providers (ISPs) 43 Internet Society 74 IRT (Implementation Recommendation Team) 1–2, 7, 80, 84, 172, 186–95, 196; Globally Protected Marks List (GPML) 191–3, 195; injustice at procedural level 187–9; IP clearing house 189–91; substantive issues 189–95; Uniform Rapid Suspension System (URS) 194–5 ISO Standard 3166 42 jurisdiction 80–1, 106; Anticybersquatting Consumer Protection Act (ACPA) 65, 69, 110, 111, 120, 125, 126, 127–39; mutual jurisdiction provision in UDRP 98, 108

Index 261 justice 11–12, 20, 22, 100, 170; ACPA and procedural 120, 135, 136, 140, 172; arbitration 89; domain name óς 160–6; Implementation Recommendation Team (IRT) and procedural 187–9; natural 152, 158; UDRP and procedural unfairness 87, 96–112, 150, 151, 154–7, 172 Kant, Immanuel 21 Landes, W.M. 32–3 language market and trademarks 33–4 lawfulness 161–2; dispute resolution 157–60, 162 lawyers 110; trademark lawyer abuse 4, 88, 96, 100, 126, 178; UDRP decision-makers 156 Leahy, Patrick 127 legal priority 152–3 legal theories on domain names 48–9; as property 51, 59, 62; as service contract rights 51–6; as trademarks 37, 39, 49–51 legitimacy 100; see also democracy Lessig, Lawrence 171 lex mercatoria (law of the merchant) 85, 86–7, 90 loans.com 45, 48 Locke, John 14, 161 Lovell, William 78–9 McCarthy, T. 50, 115, 124, 192–3 McDonalds 39 Manheim, Karl M. 45 manufacturers 33 market access for third parties: trademark law 29–30, 37, 107 market competition and trademarks 33 market value of domain names 44–8, 52, 56 ‘Mars’ 34 meaningfulness of domain names 46–7 memorability of domain names 46 .mil 42 Mincke, W. 15 monopolies 158 Mueller, Milton 77, 104, 178–9

multinational corporations 7, 37, 141, 181, 188 multiple actions and UDRP 103, 177 .museum 185 National Arbitration Forum (NAF) 101, 153, 157 national legislation 99, 118; ACPA see Anticybersquatting Consumer Protection Act; Federal Dilution Act 123–4, 192; Lanham Trademark Act 99, 119, 121–3, 137 National Science Foundation (NSF) 134 natural justice 152, 158 natural rights to property 14 .net 181 Network Solutions Incorporated (NSI) 48, 51, 73, 74, 108, 134–5, 136, 172 networking, social 47, 68, 104 Nguyen, Xuan-Thao 135 ‘nominative use’ doctrine 115 Nominet Policy 176, 222n453 Non-commercial Domain Name Holders Constituency (NCDNHC) 82 Non-commercial Users Constituency (NCUC) 188 Nozick, Robert 161 oligarchic and democratic factions 162 .org 135, 181 Paris Convention and ACPA 137 parody sites 67, 103, 127, 176, 222n453 passing off 60, 119, 179 passive holding 104 patents 13, 26, 27, 28, 30 PayPal 47 Plato 14 εóε ´ (pleonexia) 163–4 political mapping of property 19–23 Porzio, Marino 156 Posner, R.A. 32–3 precedent 87, 104, 142, 156; recommendations 175, 177 priority, legal 152–3 privacy and bad faith 104 private property 14

262

Index

procedural unfairness and ACPA 120, 135, 136, 140, 172 procedural unfairness and IRT 187–9 procedural unfairness and UDRP 96, 150, 151, 154, 172; de novo review by courts 107–12; impartiality/independence of panellists 101–2, 154–7; inconsistency 87, 100–7, 110, 154; restrictions on legal rights of registrants 96–100; see also recommendations on UDRP producers and/or manufacturers 33 Progressives movement 34–6, 37 property 11–14; ‘bundle of rights’ theory 16–19, 28–9, 36, 58, 63, 64–5, 172; concept of 14–19; domain names as 56–69, 117, 171; exclusion 19, 20, 22, 30; free speech 117; in rem jurisdiction 126; political mapping of 19–23; social justice in 161 public property 14 ‘public reasoning’ 21–2 publicity and lawsuits 127

185–96; Network Solutions Incorporated (NSI) 48, 51, 134–5; situs of domain names 134–5; spaces in domain names 122; UDRP 51, 76, 91, 92, 94, 107 remedies 144–5; ACPA 126; injunctions 99; registrant’s bad faith 93; reverse domain name hi-jacking (RDNH) 178–9 reverse domain name hi-jacking (RDNH) 4, 66, 83, 106–7, 110–11, 126; recommendation 178–9 Richemont Group 188 Roberts, Mike 78 Rome, ancient: dominium 13, 20; imperium 20; Roman law 13, 15, 16, 18, 25–6 Root ‘A’ server 42, 43, 64, 74, 88; ‘physically’ located in Virginia 135–6; UDRP decision 98 Root expansion 1, 46, 180–1, 185–96 Ross, William 36 rule of law 68, 69, 135, 164, 165

quality guarantee: trademarks 32–3 Quittner, Joshua 39 QWERTY keyboard 47

Schauer, Frederick 75 Schechter, Frank 123 securities arbitration 155 self-critical domain names 127 service contract rights, domain names as 51–6, 64 SLDs (second-level domain names) 5–6, 42, 64, 67; market for 44–5, 46 Smith, John J. 24 social networking 47, 68, 104 socio-economic function of domain names 44–5 socio-economic norms in domain name market 45; branding 47; enterability 47; guessability 46; meaningfulness 46–7; memorability 46; potential value restrictions 48 soft law 184 software 13 Solum, Lawrence B. 45 Special Trademark Interest (STI) team 195–6 start-ups 99 .sucks 222n453

random number generated system 174 Rawls, John 21–2, 153, 164–5 RDNH (reverse domain name hi-jacking) 4, 66, 83, 106–7, 110–11, 126; recommendation 178–9 recommendations on UDRP 169–73; classification system 180–2; default cases 178, 179; initiation of procedure 179; internal appeal process 176–7; political level 182–4; procedural level 173–80; random centre generation 174; reverse domain name hi-jacking (RDNH) 178–9; techno-legal level 180–2; three-member panel blanket rule 177–8; time limit to initiate complaint 173–4 registration of domain names 42–3, 51, 54, 55–6, 65, 75, 80; anonymity 127–9; Canadian registry system 104; expansion of the Root 1, 46, 180–1,

Index 263 tangible property 15, 19, 25–6 tarnishment concept in UDRP 114–16; recommendation 175–6 technical nature of domain names 41–2; registration system 42–3; resolution hierarchy 43–4 telephone mnemonics 49 third-level domain 6 Thornburg, Elizabeth 153 time limits: challenge to UDRP decision 98, 109, 153; default cases: arbitration and UDRP 178; recommendation on initiation of complaint 173–4 Time Warner 188 TLDs (top-level domain names) 42, 45; alternate 42, 43; see also ccTLDs; gTLDs tort: conversion 57; passing off 60, 119, 179; trademark infringement 29; wrongful interference with goods 60–1 trade law, international see lex mercatoria trademark lawyer abuse 4, 88, 96, 100, 126, 178 trademarks 5, 7, 12, 13, 24–5, 169, 170, 179; advertising 34–5, 115; classification system 180; conveyance of information 31–3; defending 27–9; dilution 123–4, 179, 182, 192; domain names: online extensions of 37, 39, 49–51; domain names: similar and different 40, 48, 62; economic value of 31–5; famous 123–4, 125, 141, 142, 182, 191, 192–3; freedom of expression 113–14, 169; geographical terms 12, 30, 50, 51, 107; intellectual property and 25–9; International Trademark Association (INTA) 73–4; language market 33–4; legal philosophy of 29–31; Paris Convention and ACPA 137; political mapping of 35–8; quality guarantee 32–3; territoriality 36, 110, 111, 120, 129, 137; typosquatters 47; UDRP and trademark law 102, 141–2, 143–4; US: Federal Dilution Act 123–4; US: Lanham Trademark Act 121–3;

US: ACPA see Anticybersquatting Consumer Protection Act transparency 100, 150, 170 Tuvalu 45 Twitter 7, 47, 56 typosquatters 47 UDRP (Uniform Domain Name Dispute Resolution Policy) 1, 2, 3–5, 11, 12, 39–40, 52, 64, 65, 69, 119, 141–5, 160, 170, 171; appeal process, lack of internal 98–9, 103, 154; appointment of panellists 97; background 73–6; bad faith registration and use see separate entry; comparison between arbitration and 89–95, 97, 102; comparison between lex mercatoria and 85–8; contractual obligation 51, 76, 91, 92, 94, 107; de novo review by courts 93–5, 98, 107–12; default cases 99–100, 178, 179; discovery 159; domain names as trademarks 49, 69; enforcement 88; equality and 91–3, 144–5, 152–3, 162–5; ethical concerns 149–60; false statements 158; free speech in context of 113–18, 175–6; ICANN launches 82–4; ICANN’s authority to create 76–9, 91; inconsistency 87, 100–7, 110, 154; independence of panellists 101–2, 154–7; initiation of procedure 83, 92, 93, 97, 99, 153, 155, 179; lawfulness of process 157–60, 162; procedural unfairness 87, 96–112, 150, 151, 154–7, 172; recommendations see separate entry; remedies 93, 144–5; restrictions on legal rights of registrants 96–100; road to 79–82; tarnishment concept 114–16, 175–6; time limits 98, 109, 153, 173–4, 178; witness testimony 159 .uk 222n453 UNCITRAL (United Nations Commission on International Trade Law) 102 unfairness and ACPA, procedural 120, 135, 136, 140, 172

264

Index

unfairness and IRT, procedural 187–9 unfairness and UDRP, procedural 96, 150, 151, 154, 172; de novo review by courts 107–12; impartiality/ independence of panellists 101–2, 154–7; inconsistency 87, 100–7, 110, 154; restrictions on legal rights of registrants 96–100 Uniform Rapid Suspension System (URS) 145, 194–5 United Kingdom: domain names as property rights 60–1; Nominet Policy 176, 222n453; trademark infringement 29, 60, 222n455 United States 5, 76, 141; ACPA see Anticybersquatting Consumer Protection Act; advertising and trademarks 34; Clinton Administration 73, 77; confusion test and trademark law 37; Constitution 114, 127; domain names as property rights 56–60, 62, 63, 65, 66–7, 126; Eastern District of Virginia 93–5, 106, 108, 132–3, 135–6; Federal Dilution Act 123–4, 192; free speech 114; garnishment proceedings 51–6; gTLDs 42; ICANN 1, 77, 88, 108, 182; Lanham Trademark Act 99, 119, 121–3, 137; Patent and Trademark Office (USPTO) 49–50; telephone mnemonics 49;

UDRP 79, 82, 88, 93–5, 99, 104–7, 109–11, 141 .us 204n144 used cars 32 VeriSign 136 Verizon Communications 127 videoconferencing 158 Ware, Stephen 95 warehousing 124 Web page access 41 WHOIS 104, 189 Wikipedia 47 witness testimony 159 World Intellectual Property Organisation (WIPO) 2, 78; Arbitration and Mediation Centre 74; definition of intellectual property 26; IRT (Implementation Recommendation Team) 187, 188, 190; recommendation 181; UDRP procedure 78, 79–82, 83, 84, 87, 101, 105–7, 109, 157, 158, 183, 184; UDRP procedure: fast-track process 196 World Trade Organisation (WTO) 100 World Wide Web (www) 6, 41 wrongful interference with goods 60–1 Young, H. Peyton 11