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Re: Paper: Concerns about ICANN Uniform Dispute Resolution Policy

Dear Kathy, and all,

a further reason for this extension of the study period and other requests
is to gain a deeper international and transcultural perspective. As an
organizer and participant in the DN-IP consultation in Mexico in February
this year, and through further discussion with people from other
countries, I am witness that many opinions remain to be tapped.

Alejandro Pisanty

On Tue, 24 Aug 1999 KathrynKL@aol.com wrote:

> To the ICANN Board:
> Below is a brief paper discussing some of the substantive and dispute 
> procedural problems with the Names Council WG-A Cybersquatting Report.  I 
> thought it might be of interest in your upcoming debate on this topic.  
> The unintended consequences of these proposals on noncommercial speech, I 
> believe, will be severe.   
> Kathryn Kleiman
> ACM's Internet Governance Committee
> Newly Elected NCDNHC Names Council Representative
> ------------------------------------------------------------------------------
> Some Concerns About Working Group A's Report and WIPO's Chapter 3 on
> Cybersquatting and Mandatory Arbitration of Domain Name Disputes
> [called by ICANN the Uniform Dispute Resolution Policy]
> ICANN is proposing to adopt the Uniform Dispute Policy set out by
> the World Intellectual Property Organization in its Management of
> Internet Names and Addresses: Intellectual Property Issues
> (available at http://wipo2.wipo.int).  ICANN referred consideration
> of Chapter 3 of this report (cybersquatting/uniform dispute
> resolution policy) to the Names Council.
> The Names Council created Working Group A to look at this issue,
> and chairman Jonathan Cohen of the Trademark Constituency
> created four subgroups to look at the following four questions:
> (a) Should the WIPO dispute resolution process be confined to
> cybersquatting/cyberpiracy, or should it be considerably expanded?
> (b) Should there be a standard dispute resolution process throughout
> all Registrars/Registries?
> (c)  Should the dispute resolution process be voluntary or mandatory
> or a combination of both?
> (d)  Should there be some method for contracting out of the right to
> seek a court ruling if one undertakes to submit to the dispute
> resolution process?
> Once people were assigned to a working subgroup, you could not
> switch, and you could not get your choice of working subgroups (at
> least I, as an observer, could not get on subgroup (a), the group I
> had the most expertise and interest in participating in).
> I.  Treatment of WIPO's report far too deferential
> Because the non-commercial voice was missing, I think the entire
> treatment of the WIPO report was far too delicate.  The subgroups
> left key questions about a uniform dispute policy unasked and did
> not address the dangers of WIPO cybersquatting definition to the
> noncommercial community.  Before the Names Council can
> recommend the WIPO report,chapter 3, I think it needs to look
> seriously at some additional questions, including:  
> 1) Is it in the interest of the larger Internet community to adopt a
> definition of cybersquatting that is far broader than any existing law
> on trademark infringement or dilution? 
> The definition of cybersquatting is a definition we first saw in
> WIPO's Final Report so no one has yet had a chance to comment on
> it and, in my opinion, it needs a full and public airing.  The
> discussion starts at paragraph 170 for those who have the WIPO
> Report.  It is also repeated in Annex IV.  It is far too broader than an
> any existing definition of trademark infringement or dilution, at
> least under US law.
> WIPO's new regulation provides:  if a domain name is "identical or
> misleadingly similar to a trademark or service mark in which the
> complainant has rights," and 
> the holder of the domain name has no rights or legitimate interests
> in respect of the domain name; and the domain name has been
> registered and is used in bad faith, the domain name shall be
> considered abusive.
> Evidence of bad faith includes:
> "a offer to sell, rent or otherwise transfer the domain name to the
> owner of the trade or service mark" and  "an attempt to attract, for
> financial gain, Internet users to the domain name holder's website
> by creating confusion with the trade or service mark of the
> complainant"
> and "the registration of a domain name in order to disrupt the
> business of a competitor."
> Nowhere in this definition is there a requirement that the use of the
> domain name has to be commercial.  In the traditional trademark
> sense, the use of the trademarked term by another party has to be in
> a commercial context for goods and service -- thus preventing two
> companies from having a detergent called TIDE out on the market
> and causing customer confusion. Not a single word in this WIPO
> definition requires the trademark owner to prove that the domain
> name holder was using the domain name for commercial use.  Thus,
> there is no requirement that the challenger provide any traditional
> proof of trademark infringement or dilution (both of which
> expressly EXCLUDE noncommercial speech, at least under US
> law).
> All non-commercial use of a domain names is now open for attack.
> (2) Does it make sense to make any financial use of a domain name
> the equivalent of full commercial use?
> Under the WIPO definition, if you are a noncommercial group
> asking for paid memberships on your website, the trademark
> challenger gets an added bonus because it can show that your group
> was using your domain name for "financial gain" (see evidence of
> bad faith in definition)   a showing far easier to make then the
> traditional standard of "use in commerce" for a product or service.
> (3) WIPO's definition fails to protect a legitimate intention to use a
> new domain name by a noncommercial group.  
> If you originally starting an organization (as many of
> us are in the Internet community) then your choice of domain names
> (if you choose the domain name first, to make sure it is available) is
> suspect and challengeable  until you began actively using it.  
> (Because you don't have an rights in it.)
> This is the inverse of traditional law.  Under traditional trademark
> principles, your choice of an organizational name would be
> PROTECTED until you began using it, because there is no way that
> you can cause confusion to another's trademark if you are in the
> early planning stages of your organization and are not actively out
> promoting your organization.  Although the descriptive paragraph,
> number 72 states that a bona fide intention to use the domain name"
> should protect a domain name registrant, the text of the definition
> does not say that.
> (4)  The definition of bad faith in the WIPO definition turns
> perfectly legitimate and legal conduct into something shady,
> suspect, and punishable. 
> The problem lies in the phrase "an offer to sell, rent or otherwise
> transfer the domain name to the owner of the trade or service mark"
> (see definition of bad faith).  Do cybersquatters do this, yes.  But the
> real question is: do other legitimate parties do it also, and the
> answer is YES.  
> For example, if a large commercial organization like Bell Atlantic
> demands a domain name from a small noncommercial organization,
> the normal response (and I have seen it a hundred times) is: "I don't
> think you entitled to it, and yet I don't have the money to fight you. 
> Here is the amount I invested in the domain name/publicity/website,
> and here is the amount it would cost me to change to a new domain
> name.  Bell Atlantic will you pay me this amount?"
> Is this punishable conduct?--- not under existing rules in the US. 
> Under US Federal Rules of Evidence, the small noncommercial
> organization's offer to sell the domain name is not generally not
> admissible in a court of law as evidence of its "guilt."  Why?
> Because US Courts want to encourage the parties to compromise
> and settle disputes among themselves, and neither side will give
> anything if they know these acts of compromise can also be viewed
> as acts of guilt. (US Federal Rules of Evidence 408). 
> Under the WIPO proposals, the small noncommercial group
> offering to transfer its new domain name to Bell Atlantic, say
> THEBELL.ORG for a school organization, would be deemed to
> have provided evidence of bad faith.  To create such a conflict
> between protected action under traditional courts and unprotected
> action under WIPO rules is to create a Catch-22 (an unwinnable
> situation) for noncommercial entities.  
> (5) The cybersquatting definition of WIPO encourages cyberspace
> trademark abuse.  
> Trademark attorneys know that in the courts of the US, they cannot
> harass noncommercial organizations.  If  Apple Computer tried to
> seize the domain name of Apple Internet Development Group (a
> hypothetical non-commercial group with AppleD.org) on the
> grounds that it was "misleadingly similar", the Court would deny
> the request and could even impose sanctions against the attorneys
> for bringing a frivolous law suit.   The Courts know that Apple is a
> normal word and everyone has a right to use it in a generic,
> descriptive or noncommercial way.   
> WIPO offers us (the noncommercial community) no such protection
> and fails to make a distinction between coined or fanciful marks
> with lots of protection (made up words like Xerox and Exxon) and
> normal dictionary words that have some limited protection for
> certain commercial purposes under trademark law, but are otherwise
> open to all to use (avoiding the "commercial monopolization" of
> language -- a promise given by the US Supreme Court).  
> Under its broad cybersquatting definitions, overly broad claims by
> trademark owners are invited and will be made with impunity. 
> There is no punishment for frivolous claims or harassment or
> trademark abuse.  
> II.  Continued work between ICANN and WIPO is inappropriate
> In its report, the Working Group has recommended that WIPO go
> back and come up with more decisions and recommendations.  I
> think the noncommercial community show request that the role of
> WIPO in drafting and rule making be ended with its report.  
> WIPO did a very good job of gathering information from the
> intellectual property community, and drafting this first cut of a
> cybersquatting definition and procedures for arbitration.  But WIPO
> has a vested interest in the outcome of this DNSO debate: it is an
> intellectual property organization committed by its charter to the
> expansion and harmonization of intellectual property law worldwide
> and on the Internet.  While one can and should say many good
> things about the commitment of the WIPO staff to this matter, one
> cannot say that they are committed to the expansion and protection
> of fair use, or to strong enforcement of the traditional limits,
> exceptions and defenses to intellectual property laws).  
> Under the White Paper, WIPO has given us its "recommendations."
> They belong to the Internet community from there   to us.  Any
> further work and calcification should be done by a balanced
> committee created BY the Internet community, not by WIPO.  
> [As background, I am a telecommunications and intellectual
> property attorney, co-founder of the Domain Name Rights
> Coalition, participant in WIPO's 1997 Consultative Meeting on
> Trademarks and Domain Names and many other policy
> proceedings, attorney for domain name holders in disputes, and
> veteran of far too many cases of cyberspace trademark abuse by
> large corporations against small noncommercial domain name
> holders.]
> ---
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     Dr. Alejandro Pisanty, 
     Director General de Servicios de Computo Academico
     (Director, Computing Academic Services)
     Universidad Nacional Autonoma de Mexico (UNAM)
     Ciudad Universitaria, 04510 Mexico City DF MEXICO

Tel. (+52-5) 622-8541, 622-8542; Fax 622-8540
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