Comments on the Draft UDRP, Accompanying Rules, and Provider Selection

["Schwartz, Scott B" <scott.b.schwartz@intel.com>]

Intel Corporation takes this opportunity to respond to the request for
comments from the Internet Corporation for Assigned Names and Numbers
("ICANN") on the Uniform Dispute Resolution Policy ("UDRP"), its
accompanying rules, and provider selection which were posted on the ICANN
Web site on September 29, 1999.

Intel found the UDRP posted on ICANN's Web site to generally be a positive
development in terms of the protection of trademarks in cyberspace.
However, we have noted a number of areas where we believe amendments are
needed.  These proposed amendments are described below. 

Intel appreciates ICANN's request for comments on the UDRP and looks forward
to working with the Internet community to ensure that the UDRP is
administered in a fair and effective manner.  Given the evolving nature of
the Internet, we also welcome the opportunity to revisit the substance of
the UDRP twelve (12) months after its implementation by ICANN.  This will
provide both ICANN and the Internet community an opportunity to review the
implementation of the UDRP and whether any changes or revisions are
appropriate.

The UDRP

Section 4(a)(iii)	

Intel recommends that the word "and" as it appears between "registered" and
"is" in this provision be stricken and replaced with the word "or".  The
revised provision would read as: 

(ii) your domain name has been registered or is being used in bad faith.

We recommend this change so as to make it clear that instances of alleged
warehousing are considered to be "Applicable Disputes."  Increasingly,
cybersquatters are registering famous trademarks in bulk, but in most cases,
do not post an active Web site.  Moreover, as currently drafted, this
provision is inconsistent with the provisions of 4(b) wherein mere
registration of a mark can be in bad faith and, therefore, subject to the
policy.

Section 4(b)(i)		

Intel believes that the burden of proof required by the phrase "primarily
for the purpose of" as contained in this provision is far too high of a
hurdle for the complainant.  It requires the complainant to know of the
domain name owners intent -- his state of mind when the domain name was
registered. 

For the phrase in this provision which states "for valuable consideration in
excess of your documented out-of-pocket costs directly related to the domain
name," Intel recommends inserting the words "registration of the" before the
word "domain".  While a domain name registrant may incur costs in connection
with developing a Web site, it will incur virtually all of those costs
regardless of the domain name associated with that site.  In the experience
of the trademark community, cybersquatters will claim any and all costs
associated with the development of a Web site as being directly related to
its selection of a domain name.  This change will make clear that general
Web site development costs should not be considered in considering whether a
demand for a fee to transfer a domain name is in excess of what is
reasonable.

Section 4(b)(ii)	

Intel requests clarification of the meaning of the term "pattern" as it
appears in this provision.   

In the final phrase of this provision, "provided that a pattern of such
conduct has been established on your part," Intel recommends that everything
after the word "conduct" be stricken and that the words "the facts indicate"
be inserted before "a pattern."

The revised provision would read as:

		(ii) you have registered the domain name in order to prevent
the owner of the trademark or service mark from reflecting the mark in a
corresponding domain name, provided that the facts indicate a pattern of
such conduct; or 

This change clarifies the ambiguous passive use of the term "has been
established."  It clarifies that the panel may properly infer a pattern of
past misconduct from the facts or circumstances presented in the case.

Section 4(b)(iii)

Intel believes that the burden of proof required by the phrase "primarily
for the purpose of" as contained in this provision is far too high of a
hurdle for the complainant.  It requires the complainant to know of the
domain name owners intent -- his state of mind when the domain name was
registered.

Section 4(b)(iv)

Intel believes that this provision should be revised to read as: 

		(iv) by using the domain name, you have intentionally
attempted to attract, for commercial gain, Internet users to your web site
or any other on-line location, by creating a likelihood of confusion with
the Complainant's mark as to the source, sponsorship, affiliation, or
endorsement of your web site or location or of a product or service on your
web site or location.

This revision clarifies use of the wording "your web site" such that this
provision would include an on-line location even if the domain name
registrant did not own it.

Section 4(c) (Preamble)	

Intel believes that the circumstances listed in 4(c) should be treated as
"factors" and not conclusive proof of "legitimate rights."  Guiding factors
rather than conclusive proof is, in our opinion, more preferable in fact
intensive cases such as those involving domain names. 

Section 4(c)(i)		

Intel believes that the phrase "demonstrable preparations to use," as
contained in this provision leaves trademarks subject to abuse by
cybersquatters.  It provides a cybersquatter with an easy-to-use mechanism
for defeating pre-existing trademark rights.  What precisely are
"demonstrable preparations to use"?  Could they be as simple as a
one-paragraph business plan?  Could this simple document somehow take
precedence over years and millions of dollars worth of investment in a name
by a trademark owner?  The phrase leaves open too many questions.   

Moreover, despite the so-called "preparations" the domain name holder has
made to use the particular domain name, they simply may not have the right
as a legal matter to use such name.  For example, an individual who wishes
to set-up a site called www.disney.teeshirts.com to sell shirts with MICKEY
MOUSE and DONALD DUCK on them does not have the right to use the DISNEY
trademark in his domain name because he has developed a business plan.  The
name belongs to The Walt Disney Company and only The Walt Disney Company can
use it or authorize its use.

Section 4(c)(ii)	

Intel strongly recommends that this provision be stricken completely.  

First, this provision creates a giant loophole for an individual to adopt or
allege that a trademark is a nickname in order to obtain the domain name
that corresponds to that nickname.  Moreover, what would be the burden of
proof imposed upon an individual to show that the domain name is indeed his
or her nickname?  Finally, once the respondent asserts that he or she is
"commonly known" by the domain name, how can the complainant, as a practical
matter, disprove this fact?

Second, the "commonly known" concept is dangerously ambiguous.  For example,
who must the domain-name owner be "commonly known by" in order for their
ownership of the domain name to be deemed legitimate?  In addition, it is
unclear as to how long the domain name owner must be known by the domain
name.

Third, it runs contrary to U.S. law.  The "commonly known" clause is an
example of people substituting their emotional take on an issue reserved for
the considered deliberation of the courts.  In the 1800's, there were some
decisions holding that "[e]very man has the absolute right to use his own
name in his own business, even though he may interfere with or injure the
business of another person bearing the same name . . ."  Meneely v. Meneely,
62 NY 427 (1875). 

This "sacred" right theory is now referred to as "archaic" by Professor Tom
McCarthy in his treatise titled McCarthy on Trademarks and Unfair
Competition (Fourth Edition, Section 13:8, note 14), and has been expressly
repudiated.  See, e.g., David Findlay v. Findlay, 18 N.Y.2d 12 (1966); John
R. Thompson Co. v. Mrs. Lee Holoway, Sr., et. al. 366 F.2d 108 (5th Cir.
1966).

In 1914, Supreme Court Justice Oliver Wendell Holmes wrote in the "Waterman
Pen" case that while everyone had a right to use their own name, the junior
user must to take precautions in the manner of use so as not to cause
confusion with the senior user's mark.  L.E. Waterman Company v. Modern Pen
Company, 235 U.S. 88, 59 L. Ed. 142 (1914).

A belief in the "sacred right" has led to a series of situations where
companies hired people of a certain name to join their businesses in a bad
faith attempt to acquire a defense against infringement, see Cartier v.
Three Sheaves Co., 465 F. Supp. 123 (SDNY 1979) (bad faith license by Pierre
Cartier), or where people have entered businesses just to take advantage of
their last name, Champion Spark Plug Co. v. Champion, 23 F. Supp. 638 (E.D.
Mich. 1938) (Prosper Champion enjoined from selling spark plugs). 

All the above cases refer to surnames.  The circumscribed right to use one's
own name has, for the most part, not been extended to nicknames.  John
Walker & Sons Ltd. v. Bethea, 305 F. Supp. 1302 (D.S.C. 1969) ("Johnny
Walker" Bethea enjoined from using JOHNNY WALKER).  As the court pointed
out, when adopting a nickname as a trademark, the defendant had an infinite
number of choices and chose a confusingly similar one.
 
However, if ICANN elects to retain the provision in some form, we recommend
that amendments be made.  In particular, we suggest that there be some type
of high evidentiary standard placed upon the domain name owner to
demonstrate that he is known by the domain name in question.  Another
suggestion is to insert language which suggests that the domain name owner's
use is legitimate if he is "legally known by" the domain name.  Finally, we
also believe that this provision should only be relevant if the domain name
owner is known by the name prior to any notice of the dispute.

The re-drafted provision could read as:

		you (as an individual, business or other organization)
provide substantial (or clear and convincing) evidence that, prior to any
notice of the dispute, you have been legally known by the domain name, even
if you have acquired no trademark or service mark rights at issue.

Accompanying Rules

Rule 2(a)

While Intel believes that it is important that domain name holders receive
actual notice of any proceeding, we find that the language in this provision
places an undue burden on the provider, increasing their level of
administration, as well as transaction costs.  Ultimately, providers may
elect not to participate in the ICANN UDRP process because of their
responsibilities under 2(a).  We recommend that ICANN revisit this provision
and consult with the providers concerning matters of notice.

Provider Selection

Intel believes that of the options regarding provider selection which were
presented in the "Staff Report," letter d is the most appropriate.  Letter d
allows both the complainant and the 
respondent some level of control in a system which is new and will likely be
met with some skepticism.  Allowing the complainant to chose the provider
will encourage competition among providers to offer efficient and cost
effective dispute resolution to the parties, thereby decreasing the
transaction costs involved in the UDRP.  Moreover, given that the
complainant has to pay, it is only fair that a complainant have a choice in
whose rate fits its budget.  Lastly, this is fairly close to the way typical
arbitration proceedings are carried out.

Thank you for your consideration and the opportunity to submit these
comments.

Scott B. Schwartz
Senior Attorney
Trademarks & Brands
Intel Corporation Legal Department
scott.b.schwartz@intel.com