EFF's Comments on the Uniform Dispute Resolution Policy (UDRP)

[Shari Steele <ssteele@eff.org>]

Internet Corporation for Assigned Names and Numbers (ICANN) 
4676 Admiralty Way, Suite 330 
Marina del Rey, CA 90292 
USA


Sent Via Email to comment-udrp@icann.org


Dear Board of Directors,

I am writing to share the thoughts of the Electronic Frontier Foundation
(EFF) on the proposal for a Uniform Dispute Resolution Policy (UDRP) for
domain name registrars in the generic top level domains (gTLDs), submitted
to ICANN by the provisional Names Council of the Domain Name Supporting
Organization (DNSO) on August 3, 1999.  EFF thanks you for giving us the
opportunity once again to provide input into the process of setting up a
system for domain name management that reflects the public interest.

Let me start by stating, again, that EFF does not believe the resolution of
trademark disputes is appropriately before ICANN in the first place.  Any
governance process established for the Internet should preserve access to
domain names for all Internet users and protect the use of domain names for
all forms of expression and communication.  Creating procedures for
protecting the rights of trademark holders in the domain naming system,
while specifically excluding from these procedures disputes involving all
other rights, indicates that ICANN believes trademark holders' rights are
superior to those of the public-at-large.  Trademark holders' interests do
not outweigh any other rights.  Let trademark courts resolve trademark
disputes.

EFF supports the addition of enough generic top level domains so that
multiple people and companies can have the same name if they want it.
Under trademark law, more than one entity can hold a trademark on the same
word, name, or symbol provided that it is used in completely different
business categories.  Failure to provide for multiple uses of the same
trademarked character string in domain names has resulted in big companies
beating up on small companies (and individuals) using the same or similar
names.  The established policy of large trademark holders registering their
marks in all global top level domains effectively "seals off" those
character strings to those in other (or no) area of commerce who would
otherwise legitimately be able to use them, leaving others no option but to
register domain names that are less desirable.  This flies in the face of
established trademark law, which does not permit a global monopoly on all
uses, in all categories, of a character string.  Very narrow exceptions for
"strong marks" (e.g., "Exxon," "Kodak," etc.) can be addressed with current
law even in this new medium.  Any governance process established for the
Internet should preserve access to domain names for all Internet users and
protect the use of domain names for all forms of expression and communication.

That said, in general, the UDRP is a marked improvement over the initial
WIPO proposal for the resolution of trademark disputes in gTLDs.  EFF is
pleased to see that the latest version of the UDRP attempts to limit its
scope to bad-faith/abusive domain name registrations made to the detriment
of trademark holders (cybersquatting) in the gTLDs.  Still, we have some
concerns that we hope ICANN will address before providing its endorsement
to the UDRP as submitted.  We urge ICANN to keep in mind that the ultimate
goal in any process set up for the distribution of domain names must be
what is best for the public interest.  The tests for bad faith registration
have to be strong and clear, and abusive registration must be shown to be
done for the no legitimate free-speech purpose, even if the registration
hurts a trademark holder's business.

Clarifications to the Proposal

In order for the UDRP proposal to protect the public interest, it is
important to eliminate all discretion on the part of the mediator.  Only if
a domain name holder has no legitimate reason to hold a domain name *and*
the registration was made to abuse the trademark holder can the domain name
be taken away by the mediator.  A trademark holder would need to bring any
other kind of allegation to a court of competent jurisdiction.  The only
time this mediation procedure can take away a domain name is when there
truly is cybersquatting.

Flowchart for Resolving Domain Name/Trademark Disputes

In order to give clear guidance as to the scope of an arbitrator's
authority, I have devised the following flowchart, outlining the questions
that must be answered in resolving domain name/trademark disputes.  This
chart is directly modelled after the defintion of abuse that is included in
the UDRP.  Once these questions are asked and answered, the mediator is
done.  S/he has no discretion to make decisions related to domain name
registrations beyond the scope of this limited inquiry.

(i) Is the domain name identical or misleadingly similar to a trade or
service mark in which the complainant has rights?  If no, there is no
dispute resolution available; skip to (iv).  If yes, continue to (ii).

Comment:  The initial burden of proof is with the trademark holder.  It
must prove that 1) it has a valid trademark and 2) the domain name is
identical or misleadingly similar to that trademark.  If the trademark
holder fails to make this initial showing, there is no dispute resolution
available.  This is pretty straightforward.  The definition of
"misleadingly similar" should be specified better, perhaps with a reference
to the definition of that term within trademark law.

(ii) Does the holder of the domain name have any rights or legitimate
interests in respect of the domain name?  If yes, the domain name remains
with the domain name holder; skip to (iv).  If no, continue to (iii).

Comment:  If a trademark holder meets the initial burden of proof, the
burden then shifts to the domain name holder, who simply must show a
legitimate, non-abusive reason to have registered that domain name.  In
section #172, the UDRP correctly indicates, "Domain name registrations that
are justified by legitimate free speech rights or by legitimate
non-commercial considerations would [] not be considered to be abusive."
It would be helpful if this definition of legitimate uses of domain names
were expanded to include references to political commentary, parody,
consumer complaints, and other similar expressive activities.

If it is found that the domain name holder has a legitimate right to his
domain name, the mediator must decide against the trademark holder and in
favor of the domain name registrant, regardless of the validity of the
trademark claim.  In other words, the trademark claim must not invalidate
any other legitimate, prior use of a domain name.  This is not
cybersquatting, and the holder of the domain name has a legal right to be
using the name.  It is essential that ICANN include language within the
UDRP that protects legitimate domain name registrants from having their
names taken away from them by any sort of weighing of rights on the part of
the mediator.  Trademark holders' rights must not trump other legitimate
rights to domain names.

(iii) Was the domain name registered and used in bad faith?  If no, the
registrant keeps the domain name and there is no remedy available to the
trademark holder through this process.  If yes, the mediator orders the
reassignment of the domain name to the trademark holder, and the registrant
must pay all fees related to the mediation.  No further punishment is
available through this process.

Comment:  If the domain name holder did not have a legitimate reason to
have registered a domain name, but he did not act in bad faith (as defined
in section #171) in registering the name, then the domain name holder does
not lose the domain name as part of this mediation process.  The UDRP says,
"[T]he behavior of innocent or good faith domain name registrants is not to
be considered abusive."  However, if the domain name holder purposely
registered a domain name in bad faith, the domain name holder must
surrender the domain name to the trademark holder and pay the cost of the
mediation.

(iv) Did the trademark holder bring the complaint in the first place to be
abusive?  If no, no further action is required.  If yes, the trademark
holder must face appropriate punishment.  In either case, the trademark
holder pays all fees related to the mediation.

Comment:  Trademark holders who are bad actors should be exposed.  Reverse
domain name hijacking is equally a showing of "bad faith," and often
prejudices smaller companies and individuals who do not have large budgets
to be able to defend themselves in lengthy trademark/domain name disputes.
If a trademark holder attempts to harass a domain name holder into giving
up his domain name when he has a legitimate right to that domain name, the
trademark holder should be subject to public reprimand and fines.  There
are countless numbers of cases, both reported and unreported, where
trademark holders have used the threat of protracted litigation to
intimidate people into giving up their legally acceptable domain names.
This should not be able to happen under the UDRP.

Settlement Offers Must Be Excluded from Evidence of Bad Faith

As currently written, the UDRP would punish a domain name holder who offers
to sell his domain name to a trademark holder in an effort to avoid a
dispute resolution proceeding or trial.  Section #171(2)(b) of the UDRP
says that evidence of the registration and use of a domain name in bad
faith includes, "an offer to sell, rent or otherwise transfer the domain
name to the owner of the trade or service mark . . . for valuable
consideration."  I suspect that punishing a domain name holder who wants to
resolve his dispute amicably is not really what ICANN had in mind.  This
section should be rewritten to correct this oversight.  Perhaps adding the
word "unsolicited" before "offer to sell" will be sufficient.


Once again, I would like to thank you for giving us the opportunity to
express our concerns with the Uniform Dispute Resolution Policy for domain
name registrars in the generic top level domains.  Please feel free to
contact me at 301.283.2773 or ssteele@eff.org if you need further
clarification or if I can provide you with any additional assistance.

Sincerely,
Shari Steele

~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~-~
Shari Steele
Director of Legal Services
Electronic Frontier Foundation		ssteele@eff.org
P.O. Box 649					301-283-2773 (voice)
Bryans Road, MD  20616			301-283-5337 (fax)