Comments of the Electronic Frontier Foundation

[Shari Steele <ssteele@eff.org>]

Electronic Frontier Foundation
1550 Bryant Street, Suite 725
San Francisco, CA  94103

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


October 13, 1999


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 ICANN's request for comments on the Uniform Domain Name Dispute
Resolution Policy, the Rules for Uniform Domain Name Dispute Resolution
Policy, and the Staff Report on Implementation Documents for the Uniform
Dispute Resolution Policy, which were posted on the ICANN Web site on
September 29, 1999.  EFF once again thanks you for giving us the
opportunity to provide input into the process of setting up a system for
domain name management that reflects the public interest.

Let me start by reiterating that EFF believes the resolution of trademark
disputes should be handled by the courts, and not any ICANN-created
resolution process.  By creating this procedure, ICANN gives credibility to
the notion that trademark holders somehow hold rights that are superior to
other legitimate rights to domain names.  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.  Trademark holders' interests do not outweigh
any other rights.

Since it appears that ICANN is determined to continue with this process,
here are some specific recommendations of changes that must be made to the
various uniform dispute resolution documents in order to make them comply
with the basic free expression rights of domain name holders.


Problems with the Rules for Uniform Domain Name Dispute Resolution Policy

1.  Definitions
The term Provider, as used in this section and throughout the document, is
misleading.  In Internet parlance, the word provider is used to describe an
Internet Service Provider, or ISP.  That is not what is meant by this term.
 Instead, the definition here calls for a Dispute Resolution Service, or
Service.  A change in this term will avoid the obvious confusion.


18.  Effect of Court Proceedings
We recommend adding the following clause:
(c)  A final judgment in a legal proceeding in a court of competent
jurisdiction terminates all on-going administrative proceedings under these
Rules.

Rationale - The purpose of the UDRP is to provide relief to the parties
without resorting to the court systems.  This dispute resolution process
should not have any authority once a court of competent jurisdiction has
rendered its verdict.


Problems with the Uniform Domain Name Dispute Resolution Policy

3.c.
As currently written:
our receipt of a decision of an Administrative Panel requiring such action
in any administrative proceeding to which you were a party (as explained in
Paragraph 4 below); and/or

Should be changed to:
ten (10) business days after our receipt of a decision of an Administrative
Panel requiring such action in any administrative proceeding to which you
were a party (as explained in Paragraph 4 below); and/or

Rationale - The ten (10) business day waiting period is discussed in
section 4.k.  This change simply makes this section compatible with section
4.k.


4.c.(iii)
As currently written:
you are making a legitimate noncommercial or fair use of the domain name
without intent for commercial gain to misleadingly divert consumers or to
tarnish the trademark or service mark.

Should be changed to:
you are making a legitimate noncommercial or fair use of the domain name
without intent to misleadingly divert consumers for commercial gain.

Rationale - The caveat regarding tarnishment is not appropriately within
this policy.  While not defined here, tarnishment is a dilution principle,
which goes to the unauthorized use of the well known mark of another in
such a manner as to blur its distinctiveness or tarnish its image, even
absent likelihood of confusion.  Tarnishment is not an element of
traditional trademark infringement law, but rather goes to famous marks
only.  It is absurd that ICANN's dispute resolution policy would actually
give trademark holders more rights than they are legally entitled to under
any country's trademark law.

In addition, the clauses regarding diversion and commercial gain should be
transposed.  The lack of intent should be an element of misleadingly
diverting consumers, not of commercial gain.  There are times when fair use
would protect the sale of goods.  Sites that are engaging in parody that is
a fair use should be able to sell t-shirts, for example.


9.
As currently written:
We reserve the right to modify this Policy at any time.  We will post our
revised Policy at <URL> at least thirty (30) calendar days before it
becomes effective.  Unless this Policy has already been invoked, in which
event the version of the Policy in effect at the time it was invoked will
apply to you until the dispute is over, all such changes will be binding
upon you with respect to any domain name registration dispute, whether the
dispute arose before, on or after the effective date of our change.  In the
event that you object to a change in this Policy, your sole remedy is to
cancel your domain name registration or transfer your domain name
registration to another registrar, provided that in the event of a
transfer, you will not be entitled to a refund of any fees you paid to us.
The revised Policy will apply to you until you cancel or transfer your
domain name registration.

Should be changed to:
We reserve the right to modify this Policy at any time.  We will post our
revised Policy at <URL> at least thirty (30) calendar days before it
becomes effective.  We will also notify everyone who has registered a
domain name with us by sending an email with our revised Policy to the
email address supplied at registration at least thirty (30) calendar days
before the revised Policy becomes effective.  Unless this Policy has
already been invoked, in which event the version of the Policy in effect at
the time it was invoked will apply to you until the dispute is over, all
such changes will be binding upon you with respect to any domain name
registration dispute, whether the dispute arose before, on or after the
effective date of our change.  In the event that you object to a change in
this Policy, your sole remedy is to cancel your domain name registration or
transfer your domain name registration to another registrar, provided that
in the event of a transfer, you will not be entitled to a refund of any
fees you paid to us.  The revised Policy will apply to you until you cancel
or transfer your domain name registration.

Rationale - Posting revised policy changes is simply not enough notice to
domain name holders.  In addition to posting the changes, each registrar
should be required to to email all of its registrants of the changes with
at least thirty (30) days' notice.


Staff Report on Implementation Documents for the Uniform Dispute Resolution
Policy

3.  What procedures should be used for selection of Providers and Panelists?

All complaints are submitted to a centralized "Clerk," which assigns the
case to a Dispute Resolution Service on a rotating basis.  The Service
selects the Panelists.

Rationale -- While this creates an extra administrative layer to the
process, this layer is necessary to avoid giving an unfair advantage to
either the Complainant or the Domain Name Holder.  The Registrars are not
appropriate for making this decision for the reasons outlined in option c.
of the Staff Report.

ICANN should rethink its decision to permit price competition among the
Dispute Resolution Services and instead come up with an administrative
price structure.  This judicial proceeding, which domain name holders are
required by ICANN rules to participate in, should not be confused with any
aspect of a free market economy.  Judicial systems such as these *must*
maintain their autonomy in order to be objective and fair.  Any competitive
fee structuring in combination with anything short of a random selection
process will lead to Services being selected for price economy reasons or,
even worse, likelihood of a particular Service ruling in favor of a
particular party regardless of the facts, rather than for equitable
reasons.  The domain naming system has major implications for important
rights, such as free expression and ownership of property.  ICANN should
have no part in a system that can take away these basic rights without
providing minimal protections to ensure that all Dispute Resolution
Services will be fair and balanced.


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)