[Random-bits] Brenda Sandburg: Domain Dilemma

[James Love]

http://www.callaw.com/stories/edt1012c.shtml

         Domain Dilemma
Some worry mediators may go too far when settling domain name fights

By Brenda Sandburg
The Recorder
October 12, 2000

It's cheap. It's quick. And it's designed to keep disputes over Internet
domain names out of court.

The nearly year-old arbitration system to resolve conflicts between
domain name holders and trademark owners established by the Internet
Corporation for Assigned Names and Numbers (ICANN) has been -- by most
accounts -- a success.

But there are a few glitches. Some lawyers worry established copyright
law is sometimes undermined by arbitrators, giving trademark owners
rights they don't really have. Decisions are occasionally inconsistent,
and ICANN panelists don't have set guidelines to follow when they rule
in a dispute, they say.

  [snip]

Dubed the Uniform Dispute Resolution Policy, the ICANN procedure arose
as a way to handle cybersquatting cases in which someone registers a
domain name that is identical or confusingly similar to a trademark in
order to make a profit off the name or draw traffic to a Web site.

Under the system, a trademark owner who objects to a domain name
registration can file a complaint with one of four ICANN-accredited
bodies which then appoint a panel to hear the dispute. The parties can
select either a one-person or three-person panel, which issues an
opinion within about two weeks.

In making their decision, panelists must consider whether a domain name
is identical or confusingly similar to a service mark, if the registrant
obtained the name in bad faith, and if the registrant has a legitimate
interest in it.

The types of cases the panelists have reviewed have become more complex
over time. While initial disputes involved clear cases of
cybersquatting, panels are now handling "more questionable cases that
are not as clear cut," Donahey said.

Take for instance, fights over domain names that use a generic word that
also serves as a trademark.

J.Crew International Inc. was incensed when it learned an individual had
registered the domain name "crew.com" and was attempting to sell it. The
company filed a complaint, and a mediation panel ruled 2 to 1 in its
favor.

On the other hand, a man who registered penguin.org won his fight to
keep the domain name, despite a complaint from publishing giant Penguin
Books Ltd.

Jamie Love, director of Consumer Project on Technology, a consumer
advocacy group founded by Ralph Nader, said decisions like the one in
the J.Crew case are unjustly expanding trademark law "to give trademark
holders broader rights in cyberspace than they have in the real world."

Love and others contend the use of a generic name as a service mark does
not guarantee that the trademark owner has exclusive rights to all uses
of the word.

But David Bernstein, a lawyer who serves as an ICANN arbitrator, said
the issue is not as simple as that. The key question, in his mind, is
what is the domain name holder's motivation.

"You need to look beyond the name itself to the motivation of the
registrant and the way the name is being used," said Bernstein, a
partner at New York's Debevoise & Plimpton.

Panelists have also been split in cases where a registrant claims fair
use rights to a trademark, such as to criticize a company or set up a
fan site.

A former employee of Bridgestone Firestone Inc. registered
bridgestone-firestone.net for a Web site that included critical
information about the tire manufacturer. A panelist ruled that the
registrant had legitimate fair use and free speech rights to the domain
name.

In another case, a mediator ordered the registrant of wal-martsucks.com
to transfer the domain name to Wal-Mart Stores Inc. The panelist
concluded that the domain name was identical or confusingly similar to
Wal-Mart's trademark and that the registrant had registered the name in
bad faith, intending to sell the domain name for profit.

   [snip]

Mediators are also concerned that their colleagues are going beyond
their mandate.

"It's not clear to some people whether traditional infringement is or
should be grounds for finding a violation of the [domain name] policy,"
said Mark Partridge, a partner at Chicago's Pattishall, McAuliffe,
Newbury, Hilliard & Geraldson.

Partridge, who was among a panel of experts that recommended creation of
ICANN's dispute resolution system, said he believes panels were not
intended to rule whether domain names constitute infringement.

Panelist Dana Haviland agrees.

"The process is designed to provide a quick remedy -- not binding -- to
cybersquatting," Haviland, a partner at Wilson Sonsini Goodrich &
Rosati, said. "The proceeding is not intended as a substitute to going
to court to prove trademark infringement."

FINE-TUNING THE SYSTEM

Nevertheless, panelists, IP attorneys and consumer advocates believe the
system can be fixed.

Donahey, for one, advocates creation of an appellate process that can
overturn improper decisions and establish precedent.

"No one analyzes contradictory opinions," Donahey said. "We need someone
to say 'this is the standard.'"

But A. Michael Froomkin, a professor at the University of Miami School
of Law who has closely followed ICANN procedures, argues an appeals
process will make the system more expensive. Instead, he thinks the fix
lies in a stricter set of rules.

"There ought to be a set of agreed examples of the application of the
rules" that would serve as guideposts for panelists mediating certain
issues, such as free speech, Froomkin said.

Others suggest ways to cut down on the docket of disputes.

Love argues that there would be fewer battles if the domain space was
expanded to include top-level domains that define one's Internet address
by what one does (e.g. .airline, .union). ICANN plans to select a test
bed of new top-level domains by the end of the year.

IP attorney Carl Oppedahl, of Frisco, Colo.-based Oppedahl & Larson,
believes trademark owners who act in bad faith should be dinged. There
should be "a meaningful penalty" imposed on those who misuse the system
in an attempt to steal a domain name by claiming it to be a trademark --
so-called reverse domain name hijacking, Oppedahl said.

ICANN is open to hearing recommendations about the dispute system.
Andrew McLaughlin, ICANN's chief policy officer, plans to see how the
rules are being applied and if they need to be tightened up.

As to the proposal for an appellate body, McLaughlin said he was
personally opposed to the idea.

"The right appeals forum is a court," he said. ICANN's system "was
intended as a cheap, quick alternative to court. If the UDPR goes into
the appeal process, everyone will appeal and it will double the amount
of time" to resolve a dispute.

-- 
James Love, Consumer Project on Technology
v. 1.202.387.8030, fax 1.202.234.5176
love@cptech.org, http://www.cptech.org