[Comment-Ip] Comments for ICANN on the WIPO report

[Carl Oppedahl <carl@oppedahl.com>]

Summary:

If ICANN chooses to adopt the WIPO recommendations for domain name
disputes, it should do so *only* with some changes.

A.  The "exclusion List" should be available only for entities who can show
that their mark is coined and unique.  It should be grounds for striking a
mark from the List if it can be shown that the mark is not or was not unique.

B.  In a domain name dispute, the transfer-the-domain-name remedy should be
available *only* in cases where the asserted mark is demonstrably coined
and unique.  Otherwise the only remedy available should be cease-and-desist
relief (cutting off the domain name).

Details:

Things that WIPO got right:

A.  WIPO officially recognizes reverse domain name hijacking as a problem
(which NSI has never done).

B.  Decisions will be published rather than secret (as NSI does).

C.  Domain name owners will be told that a challenge is happening *before*
the case is decided rather than after (as NSI does).

D.  Domain name owners will be allowed to tell their side of the story
rather than being told of the decision only after it was made (as NSI does).

E.  Domain name owners will be able to point to their own rights and
legitimate interests rather than being limited to showing that they have a
trademark registration (as NSI does).

Things that WIPO got wrong:

1.  WIPO proposes an exclusionary List that should only be available to
those with demonstrably unique and coined trademarks, but is instead open
to anyone who wins the race to file an application to be on the List, thus
harming other like-named companies.

2.  WIPO proposes to *transfer* a domain name to a challenger, even if
there are other equally deserving recipients of the domain name, thus
rewarding the complainant who wins the race to file a WIPO challenge.

The details.

The WIPO report, to its credit, at least acknowledges that "reverse domain
name hijacking" is a problem (mentioned at paras. 134, 323, and 325).  The
report also acknowledges that NSI's domain name policy has been said to be
"flawed in several important respects" (para. 329).  The report goes so far
as to cite the Roadrunner v. NSI case, which is the first case in which a
domain name owner sued NSI to block the cutoff of its domain name under
NSI's policy (para. 324).  Despite NSI's initial determination that the
domain name would be taken away from Roadrunner, the outcome of the case
was that the domain name owner got to keep its domain name (footnote 206).
[My law firm represented Roadrunner in that case.]

Apparently in response to this, the WIPO recommendation is that the *only*
circumstance in which the WIPO decisionmaker would entertain a domain name
complaint would be in the case of a demonstrably "abusive, bad-faith"
domain name registration.  WIPO says that its process would not be
available in cases where the two parties have competing rights (para. 172).
 Presumably this means that if WIPO had been running things for the past
few years instead of NSI, we would not have seen these embarassing cases in
which NSI so consistently got the "wrong answer", ruling in favor of the
reverse domain name hijacker even when the domain name owner had done
nothing wrong (e.g. epix.com, cds.com, dci.com, earth.com, see para. 324).

The WIPO report offers a definition of "abusive", but it is too soon to
know whether this definition will actually serve WIPO's desired purpose,
namely discerning between these different types of cases.  Fortunately,
WIPO will avoid one of NSI's mistakes which was to do its decisionmaking in
secret.  Instead, WIPO would have each decision *published* (Annex V,
article 33).  This will permit the Internet community to review the WIPO
decisions and assure itself that the WIPO decisionmakers are being fair in
their decisions, and are correctly classifying cases as abusive, reverse
domain name hijacking, or otherwise.

A very large fraction of challenges brought under NSI's policy were classic
reverse domain name hijacking, where the challenger had no bona fide claim
of trademark infringement but merely coveted the subject domain name.  If
the WIPO recommendations are adopted by ICANN (thus replacing the flawed
NSI policy), it is to be expected that some such challengers will try to
use the WIPO process just as NSI's policy was used.  Such challengers will
try to shoehorn their fact patterns into the WIPO definition of "abusive"
(see Annex IV).  At this time we can only hope that the WIPO decisionmakers
would stand firm and refuse to allow the WIPO process to be misused in this
way, but until a few such decisions have been made and published we cannot
know whether WIPO will get the "right answers".

 From my point of view the biggest blunder by WIPO is the recommendation
that there be a newly created intellectual property right, called the
domain name "exclusion" (annex VI).  WIPO would establish a List of
trademarks that have been found to be "famous or well-known".  Any
trademark owner fortunate enough to get its trademark on the List would
enjoy two powerful rights having no basis in previous intellectual property
law.

1.  No one other than the trademark owner would be allowed to register an
Internet domain name that contains the trademark that is on the List (Annex
VI).

2.  If someone has a domain name that is shown by the trademark owner to be
"misleadingly similar" to a trademark that is on the List, then in the
event of a WIPO challenge brought by the trademark owner, a strong
evidentiary presumption would be made against the domain name owner that
could be overcome only by satisfying "the burden of justifying the
legitimacy" of the domain name (Annex V, article 26).

This blunder will lead to endless acrimony and struggle as owners of
non-unique, non-coined trademarks manage to get their trademarks on the
List.   The many past disputes involving two like-named companies (Juno
Electric v. Juno Online, Pike Electric v. Pike, Prince Sporting Goods v.
Prince computer training) and involving a trademark and a like-named
company (e.g. Hasbro's "Clue" game v. Clue Computing) will play out again
and again under WIPO's exclusion-list policy.  Suppose Hasbro manages to
convince WIPO that "clue" belongs on the List because it is "famous or
well-known".  Then the common dictionary word "clue" would be effectively
withdrawn from the domain name address space, and nobody could register a
new domain name of that common dictionary word.  Suppose the sporting goods
company manages to convince WIPO that "prince" belongs on the List, again
because it is "famous or well-known".  Then the common dictionary word
"prince" would be unavailable to anyone registering a new domain name.

What's worse, Hasbro and the sporting goods company could then use the
newly created strong evidentiary presumption against not only identical
domain names, but also against domain names that are merely alleged to be
"misleadingly similar".

The proposed WIPO exclusionary List is a disaster, failing completely to
acknowledge that in real life there can be many like-named companies.  When
any one of a group of like-named companies manages to get its name on the
List, there will be never-ending trouble as uses its List status to try to
block the other like-named companies from getting domain names that
correspond to their own names.  There is a United Air Lines and there is a
United Van Lines, each probably correct in thinking its name is "famous"
and "well-known".  there is a Ford Modeling Agency and a Ford Motor
Company, each "famous" and "well-known".  When WIPO announces the day on
which companies can first apply to be on the List, there will be a land
rush by companies to get on the List so that they can gain advantages over
slower but like-named companies.

WIPO should have said that only companies with demonstrably unique names
(e.g. Exxon, Xerox) are permitted on the List.  This would avoid battles
between groups of like-named companies who will fight to get on the List
and who will later use their status on the List to the disadvantage of
their like-named counterparts who were slower to try to get on the List.

The final mistake made by WIPO relates to the possible outcomes of disputes
decided under its dispute policy.  Under the NSI policy, the only thing
that happened if a challenger prevailed was cease-and-desist relief -- the
domain name owner was no longer able to use the domain name.  But WIPO says
one of its available remedies will be to *transfer* ownership of a domain
name from the previous owner to the challenger (Annex IV, "remedies"
section).  But this ignores that for a domain name that is a non-unique,
non-coined word (e.g. prince.com) there may well be dozens or hundreds of
entities equally well deserving to own the domain name.  WIPO will ignore
the other entities and will transfer the domain name to the challenger who
happens to have "won the race to the courthouse", an unseemly way of
determining who gets the prize when there may be other deserving recipients.

WIPO should have said that only companies with demonstrably unique names
are entitled to transfer-the-domain-name relief.  Other companies who
prevail in WIPO challenges should only be entitled to cease-and-desist relief.

This latter point has been raised by the undersigned in an amicus brief
filed in the appellate case of Avery v. Sumpton (brief at
http://www.patents.com/avery/avery1.htm ) which will be argued June 8, 1999
(docket sheet at http://www.patents.com/avery/docket.txt ).