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Comments of Viacom in Response to ICANN's UDRP

Comments of Viacom Inc.
in response to 
ICANN's Uniform Domain Name Dispute Resolution Policy

Viacom Inc. ("Viacom") appreciates the opportunity to comment on ICANN's
proposed Uniform Domain Name Dispute Resolution Policy and accompanying
rules.  Our concerns are both procedural and substantive, and each will be
discussed in turn. 

Substantive Concerns with the Proposed Policy

Viacom's concerns with the policy include the following four areas:

*	Generally, the Policy provides that a domain name holder with
demonstrable bad faith can continue to possess the domain name under the
proposed procedures by pointing to some intention to use the domain name to
sell goods or services.  This will create a loophole which will greatly
limit the availability of the entire procedure.  

	Domain name "pirates" are sophisticated users and manipulators of
the Internet and the procedures governing it.  Thus, in order to avoid the
commercial requirement of a dilution claim and the case law finding that
offering a domain name for sale is sufficiently commercial to satisfy this
requirement, such third parties have developed veiled techniques to hide
their true intentions.  These techniques include:  claiming to respond to a
non-existent inquiry as to the domain name's availability; asking for
reimbursement of unsubstantiated expenses; and claiming some charitable
purpose for the request for money.  

	Similar phantom claims of intention to use the domain name to sell
goods will inevitably arise under this defense.  For example, the domain
name holder would, under this standard, merely have to post an offer for any
services/goods on its web site at the time of registration to defeat a
claim.  Bad faith alone should suffice to cancel a registration.

*	The criteria under the Policy's Section 4(b)(i) for proving that
offers for sale of a domain name are evidence of bad faith are unduly

	Section 4(b)(i)'s limitation to offers to the trademark owner or its
competitors will also permit unfair manipulation of the procedure.  If, as
is the common practice to date, the domain name holder offers the domain
name to anyone interested, this factor is eliminated.  The fact is that
domain name "pirates" do not generally care who they sell the domain name
to, as long as they receive their price.  Similarly, the requirement that
the domain name holder offer the registration for consideration in excess of
costs places an unfair burden on the trademark holder:  "Pirates"
traditionally inflate their purported out-of-pocket costs in defending their
demands, and it is impossible for the trademark holder to counter those
claims during  expedited procedures that do not include the normal tools of
discovery, as set forth in these rules.

*	The increased burden on the traditional likelihood-of-confusion
standard, as found under the Policy's Section 4(b)(iv), is contrary to
universal trademark law and unfair.   

	Under the proposed Policy, if the domain name holder seeks to
confuse the public, but not for commercial gain, the arbitration procedures
will be circumvented.  Not only does this leave open the opportunity to
manipulate the system by suggesting a narrow definition of commercial gain,
but it ignores other equally serious, bad faith motives, such as pure

*	Under the Policy's Section 4(c)(iii), the exception for
non-commercial use is subject to manipulation and unfair application.  

Specifically, a legitimate interest in a domain name can be demonstrated
several circumstances, including making "fair use of the domain name,
without intent for commercial gain to misleadingly divert consumers or to
tarnish the trademark or service mark."  This section provides a fair use
exception which is overly broad.  In addition, no such fair-use exception
exists under international law.

Procedural Concerns with the Policy and Rules

Briefly, Viacom's procedural concerns are:

*   That the complainant is required to submit to the jurisdiction of the
domain name holder.

*   That the parties waive all claims against registrars, registries and
ICANN in submitting to the procedure.

*   That the burden is on the claimant to pay all fees in connection with
the arbitration.

By:  Michelena Hallie
        Vice President, Senior Counsel, Intellectual Property 
        1515 Broadway
        New York, New York  10036
        michelena.hallie@viacom.com <mailto:michelena.hallie@viacom.com> 

October 13, 1999