Question: If I reserved a domain acmesucks.com for a site that criticizes the Acme company, would the present arbitration process allow Acme to take that domain away from me? Should it?

Nominee Replies

Harris Miller - posted on 2000-09-17 14:59:03 The answers are likely no and no. Under the UDRP, Acme Company could assert that they are entitled to the domain name if: (a) the domain name is identical or confusingly similar to the trademark in question; (b) the domain name holder has no rights or legitimate interests in respect of the domain name, and (c) the domain name holder has registered, or is using, the domain name in bad faith. And in the end, even if the arbitrators found against acmesucks.com, you would still be able to defend your interests in court. As you have described it, the registration of the trademark is not for the purpose of resale to Acme as trademark owner. Nor, if no products are being sold, is it likely that acmesucks.com could be mistaken by a consumer to be an official Acme site. The UDRP process should provide an expedited disposition of the matter in a way that benefits consumer expectations and the user community and the rights of intellectual property holders. The UDRP process itself can evolve now that we have some experience with it. I would be interested in exploring a means of creating stronger legitimacy for the process by allowing the user community to have a voice in selecting participants. Aspects of its scope similarly can be tightened somewhat. And in general, the process should be designed to be more transparent, to remove fears of bias by the arbitrators for the claimant. We have well over 2,000 arbitrations now. That is enough experience for us to study the results and look at the process from the light of experience. Lyman Chapin - posted on 2000-09-16 15:29:05 No to both questions. Barbara Simons - posted on 2000-09-15 21:43:23 ICANN should not be attempting to enforce trademark law, and it most certainly should not be expanding the rights of trademark holders on the Internet beyond the rights that they have off the Internet. We tend to forget that trademark law was established not to protect the trademark owner, but rather to protect the consumer from being duped into believing that a product was produced by a known and reputable firm, when in fact it was not. The only role appropriate for the Uniform Dispute Resolution Policy is in providing fast and cheap arbitration in the case of extreme bad faith registration of a registered trademark for the purpose of resale to the trademark owner or to a direct competitor. It is a stretch to claim that acmesucks.com could be mistaken by a consumer to be an official Acme site, especially if there are no products being sold on the acmesucks.com site. Assuming that the owner wishes to use the site only to criticize Acme products, he or she should be allowed to do so. If Acme Company is not happy with such a decision, then the dispute should be handled by the courts - not by ICANN. Suppose that a few months ago someone whose SUV had crashed created Are_Firestone_tires_dangerous.com with the goal of finding out if many other people had also been in accidents cause by tire failure. If acmesucks.com is in violation of trademark law, then surely Are_Firestone_tires_dangerous.com is too. Yet, I believe that most of us would feel that accident victims should be allowed to use domain names as a tool to help gather information about other accident victims. My article Trademarking the Net, http://barbara.simons.org/trademarking.pdf, discusses some other problems with the manner in which trademark is being dealt with on the Internet, including the scarcity problem. Emerson Tiller, J.D., Ph.D. - posted on 2000-09-15 11:37:31 Under the current set of decisions, an arbitrator migh ask Did you try to sell acmesucks.com to Acme company? If you did, some arbitrators would say that you were acting in bad faith and should transfer your ownership (see the walmartcanadasucks.com decision). I disagree with that decision. First, sucks related domain names are generally used for criticism and parody and are not likely to be confused with a trademark holder's website (Acme in your example). Second, even if you offered to sell acmesucks.com to Acme, you should not be required to give it up in an ICANN proceeding. Acme has no more right to it than another person who would like to use it to criticize Acme. You should be able to sell it to whomever you want. Moreover, the mere fact that you force Acme to pay for a protest site is in some way speech. ICANN should not evaluate motives in sales of -suck (or generic word) domain names. Lawrence Lessig - posted on 2000-09-15 04:01:23 Under ICANN's UDRP, if you aim to tarnish the trademark, then under the mandatory rules, that may help constitute bad faith and hence lead to your losing the domain name. Thus does the UDRP resolve a contested policy question. And by making the procedure mandatory, thus does ICANN resolve a contested policy question. This is a mistake. Trademark law is law. No one elected ICANN to make law. Karl Auerbach - posted on 2000-09-14 11:07:57 Under the current UDRP the answer is possibly. However, I believe that the current UDRP is flawed and ought to be revised. See: http://www.cavebear.com/ialc/platform.htm#dnspol-udrp I'd like to mention that I do believe that the UDRP is, in its effect, a supra-national law and that ICANN, by creating the UDRP, is acting as a supra-national legislature. This fact concerns me at least as much as the UDRP itself.