[Comment-Ip] Commentary on WIPO's Final Report [Repost]

["A.Michael Froomkin" <amf@law.miami.edu>]

[something went wrong with my original message; here is a repost]

I attach a Commentary I have written on the World Intellectual Property
Organization's Final Report on "The Management of Internet Names And
Addresses: Intellectual Property Issues".  My comments are also at
http://www.law.miami.edu/~amf/commentary.htm.  I also have a few
WIPO-related links at http://www.law.miami.edu/~amf .

Although I was a member of the "Panel of Experts" that WIPO established
to advise it in this process, this document represents my personal views
only, and the opinions expressed in it should not be attributed to WIPO
or to any other member of the Experts Group other than Laina Raveendran
Greene, who has authorized me to note her agreement with the substance
of this Commentary.

Here is the executive summary of my Commentary:

The World Intellectual Property Organization's Final Report on "The
Management of Internet Names And Addresses: Intellectual Property
Issues" is in many respects a substantial improvement on WIPO's Interim
Report, RFC 3.

*   The attempt to define "abusive registrations" represents a
good-faith effort to define cybersquatting. While this new definition
will no doubt benefit from public comment and discussion it has yet to
receive, the proposal in the body of the report seems to hew closely to
the definitions evolving in the various courts that have considered the
issue. Once flaws in the formal expression of the policy in the Final
Report's Annexes have been corrected, this proposal should represent an
improvement over the current NSI dispute policy, one that will serve the
legitimate interests of trademark and service mark holders without
opening the door to "reverse domain hijacking".

* Unfortunately, the Final Report leaves essentially unchanged the
proposals in the Interim Report regarding the proposed treatment of
globally famous trademarks. It proposes a baroque, ad hoc,
quasi-judicial procedure based on vague and in one case prejudicial)
criteria to define when a trademark is sufficiently internationally
famous to be granted special privileges on the Internet, and proposes
special privileges that trademarks do not currently have under law. At
present there is no agreed definition of a globally famous mark,
although WIPO-sponsored panels have been seeking to formulate a
definition for years. Furthermore, the WIPO proposal rejects imposing
any upper limit on the number of trademarks that may be declared
"famous," perhaps because it is impossible to predict how many marks
will qualify.

* As noted regarding the Interim Report, parties who lose their domain
names under the proposed dispute resolution procedure and believe the
arbitrator erred may find it difficult to find a court capable of
hearing their claim. Because the Final Report restricts the dispute
resolution procedure to a much narrower class of cases than did the
Interim Report, one can expect that there will be many fewer such cases
than initially feared - but not zero.

* In addition, there are a number of ambiguities and possible errors in
material which appears for the first time in the Final Report. This
material will benefit from public review; and in some cases some of this
material may need revision. In  particular, the procedural proposals in
the Annex contain what appears to be a serious drafting error.

*While not strictly an intellectual property issue, and without wishing
to minimize the complexity and importance of the real issues that remain
to be determined, the Final Report provides a less ringing endorsement
than one might have hoped for new global Top-Level Domains (gTLDs) and
for the creation of a new privacy-enhanced gTLD for non-commercial uses.

Summary of Changes From RFC 3

My "Critique of RFC 3", issued as a personal commentary during the
comment period on the Interim Report, identified the
following major areas of concern regarding the Interim Report:

   1.Bias. The plan was biased in favor of trademark holders;
   2.Excessive scope. Rather than addressing only trademark law, and
focusing on the "cybersquatting" problem, RFC 3 sought to create a
system that could adjudicate every type of intellectual-property dispute
relating to a domain name-including disputes based on controversial
theories such as the right of personality.
   3.`Smorgasbord' approach to law. Instead of directing arbitrators to
apply otherwise applicable law, RFC 3 proposed using additional,
different, rules it selected-rules that will often disadvantage
registrants.
   4.Enabling censorship. The RFC 3 failed to protect fundamental
free-speech interests including parody, and criticism of corporations;
   5.Potential for intimidation. RFC 3 created an expensive loser-pays
arbitration process with uncertain rules that would intimidate persons
who have registered into surrendering valid registrations thus enabling
increased "reverse domain name hijacking";
   6.Relied on potentially unenforceable contracts. Because the
contracts of adhesion proposed by WIPO were so one-sided, there was
reason to believe they would not be enforceable in court and that the
entire proposal was therefore unworkable.
   7.The nature of available judicial review. RFC 3 would have allowed
disappointed challengers to domain names registrations  to appeal to a
court in all cases, but would often deny this privilege to the original
registrant if he lost.
   8.Zero Privacy. RFC 3 provided zero privacy protections for the name,
address and phone number of individual registrants;
   9.Discussion of new gTLDs. RFC 3 took an over-timid approach to new
gTLDs. The Final Report's conclusions are welcome, as far as they go -
but do not go far enough.
  10.Treatment of famous marks. RFC 3 created new, cumbersome,
unwarranted, procedures to protect a potentially unlimited number of
"famous" trademarks.

Many of the above issues have been wholly or substantially addressed in
the Final Report. Although the seventh has not been addressed, the ill
effects will be lessened (although not eliminated) by the reduced scope
of the revised dispute resolution procedure. The eight and ninth issues
have been, effectively, put on ICANN's shoulders. After some
fine-tuning, especially regarding the procedural timetable, the
anti-cybersquatting provisions will represent a significant improvement
over the current NSI dispute policy-which should benefit both trademark
owners and legitimate domain name registrants. Unfortunately, the Final
Report makes no material changes in the proposed special privileges for
a new class of globally famous marks.

Several important issues raised for the first time in the Final Report
require careful consideration, notably the definition of cybersquatting,
and the proposed procedural timetable. As the Final Report contains a
wealth of material that is new, or substantially different from the
Interim Report, including the critical Annexes, further review and
public comment are likely to be essential before ICANN takes action.

--
A. Michael Froomkin   |    Professor of Law    |   froomkin@law.tm
U. Miami School of Law, P.O. Box 248087, Coral Gables, FL 33124 USA
+1 (305) 284-4285  |  +1 (305) 284-6506 (fax)  | http:///www.law.tm
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