UDRP too weak on RDNH

[Milton Mueller <mueller@syr.edu>]

Comments on the Uniform Dispute Resolution Policy and Procedural
Rules
Dr. Milton Mueller, Associate Professor, Syracuse University
School of Information Studies

This comment accepts the inevitability of ICANN's adoption of a
UDRP and proposes minor modifications to make it as fair as
possible. As a matter of principle, however, I do not believe
that a uniform dispute resolution policy is necessary or
beneficial to the public.

1. The Sanctions on Reverse Domain Name Hijacking are too weak.
ICANN Board resolution 99-83 asked that the UDRP be amended to
"minimize reverse domain name hijacking." I believe that the
measures incorporated in the implementation documents are not
strong enough to minimize it.

Muiltinational corporate (MNC) trademark and intellectual
property owners typically have vast resources to devote to
dispute initiation -- much more than their victims. Even to
participate in a proceeding is likely to cost a domain name
holder hundreds or thousands of dollars. Thus, a legitimate
defendant in a case has strong financial incentives to yield to a
reverse domain name hijacker, regardless of the merits of the
objection. A MNC complainant who fails to win cheaply via the
UDRP can always take the matter to court. Unless there are
specific penalties for initiating a reverse domain name
hijacking, a UDRP, even if it is administered fairly, is in great
danger of acting as a "welcome mat for reverse domain name
hijacking."

Now, what economic and procedural incentives exist to prevent
reverse domain name hijacking? The cost of bringing a complaint,
relative to the potential value of stealing a valuable domain
name, is trivial to a MNC. The only sanction is this: paragraph
15(e) of the rules of procedure provides that an administrative
panel finding that a complaint was brought in bad faith "shall
note that fact in its decision."

This is laughable. There is no penalty whatsoever for bringing a
complaint in bad faith. A MNC does not care whether an obscure
panel finding calls them a reverse domain name hijacker or not --
there are no legal or monetary penalties associated with it.

Specific and significant penalties should be imposed on the
complainant in cases where the administrative panel determines
that a complaint has been brought in bad faith. This could
include: awarding costs and penalty fees to the cleared
registrant; maintaining a public list of regular domain name
hijackers on an ICANN web site, mandatory consideration of such
patterns of abuse in other cases involving the complainant, in a
way that might help to prejudice UDRP outcomes against regular
hijackers.

2. Evidence of bad faith by a registrant
Section 4(b)(i): it is essential that this evidentiary standard
retain language that the registrant's PRIMARY PURPOSE was to
resell the name in a way that exploits the goodwill of a
trademark. This is not a subjective standard. Registrants who are
actual cybersquatters will leave objective trails of evidence
behind, such as previous sales, prior registrations of
trademarked names, and so on.

On the other hand, we can anticipate that many innocent domain
name holders, when challenged, will be willing to settle the
matter by selling the domain name. However, the notion that a
domain name holder in this situation should only be compensated
for their out of pocket costs of registering a name is extremely
unfair. Domain name holders build up equity and value in a name.
If the name is in active use they will face potentially heavy but
not easily quantified costs that go well beyond the cost of
registration, such as informing customers or users of their new
domain name, foregone business caused by confusion, reprinting
business cards, stationery, and other materials, links to a site
that no longer work, and so on. An innocent registrant who wants
to settle has a right to ask that the transfer price reflect
these very real costs.

3. Rights and Legitimate Interests in a Domain Name
I support the basic ideas behind the protections enumerated in
4(c) (i - iii). Point (i) is necessary to protect start-up
businesses and small businesses making a transition to the
Internet. Point (ii) recognizes the fact that domain names are
not trademarks per se, i.e. they are not necessarily used as an
identifier of goods and services, but primarily serve a locator
or address function. It is only natural and fair that people be
free to use their own names as a locator, free of trademark
concerns, as they do in telephone books, mailboxes, and so on.
Such uses do not conflict with trademark rights in a significant
way unless there is a commercial offering that confuses or
misleads consumers.
Point (iii) is badly phrased and requires simplification. It
should simply say "you are making legitimate non-commercial or
fair use of the domain name." The addition of the qualifying
language "without intent for commercial gain to misleadingly
divert consumers or to tarnish the trademark or service mark"
directly contradicts the first part of the sentence. If a use of
a domain name is legitimately non-commercial, then it goes
without saying that it is without intent for commercial gain.
Likewise, if a domain name is being used for parody or expressive
purposes, legal concepts of tarnishment do not apply. The concept
of "tarnishment" is particularly dangerous in this context,
because it could be used to block legitimate, legally permissible
criticism of companies or products. ICANN's UDRP has no business
attempting to re-arrange the delicate balance between freedom of
expression and intellectual property. The purpose of the UDRP was
to filter out the most extreme cases of cybersquatting, not to
replace the court system with a new global system of intellectual
property. The courts still exist as a redress for such cases.
When in doubt, ICANN should err on the side of caution.

4. The waiver of jurisdiction contained in the rules should be to
the location of the domain name holder, not the jurisdiction of
the registrar. First, working in the jurisdiction of the
registrar may place an unfair burden on smaller, less wealthy
domain name holders, relative to MNCs who are easily able to act
in any jurisdiction. How is an ordinary individual domain name
registrant supposed to find a lawyer conversant with the rules of
a foreign jurisdiction in the brief amount of time afforded?
Second, such a provision undermines the competitive level playing
field for the registrars. Customers may refuse to utilize
registrar businesses because of the jurisdiction they are based
on.

5. For procedural protection of defendants, email messages sent
to notify them of a challenge must be resent when the message
bounces, in case a simple coincidence such as a mail server being
temporarily down prevented them from receiving it.