Comments of Noncommercial Constituency

[KathrynKL@aol.com]

COMMENTS OF THE NON-COMMERCIAL DOMAIN NAME HOLDERS
CONSTITUENCY
OCTOBER 13, 1999

     These comments are submitted on behalf of the Non-Commercial
Domain Name Holders Constituency ("NCDNHC") of the Domain Name Support
Organization in response to the request for comments from the Internet
Corporation for Assigned Names and Numbers ("ICANN") on the proposed
Uniform Dispute Resolution Policy ("UDRP"), published on ICANN's Web Site
on September 29, 1999.

     A.   Overview and Basic Principles

     The NCDNHC supports the efforts of ICANN in preparing this policy.
The NCDNHC believes that the current draft (September 29, 1999) represents a
carefully worked out compromise that embodies a consensus of a wide range of
interested parties, including both non-commercial and commercial interests. 
The NCDNHC believes that the current version is likely to achieve the overall
goal that was set by the Ad Hoc Committee appointed to edit these
implementation documents: that the results be the same as court, but faster
and cheaper.  We urge the ICANN staff to incorporate this test into its staff
documents (effectively, the legislation history) as a yardstick for future
evaluation of the fairness of these rules and procedures. 
                    
     The NCDNHC also urges ICANN staff to incorporate within its staff
document the fundamental principles and limits of trademark law   that basic
dictionary words, first names and surnames are open for all to use, save for 
the
limited rights carved out in the commercial arena for certain types of 
commercial
use.  We request that the staff report include a short overview of the basic
principles of trademark law, as guidance for arbitrators, including these two
basic concepts, that:  "exclusive rights are not available to any generic
term"(used in its generic sense) and "generally speaking, it is permissible 
to use
identical marks on completely dissimilar goods" or services (such as words 
like
pony, intercom or phone).   Hawes, Trademark Registration Practice, Section 
1.  

     B.   Changes Added Were Good

     The NCDNHC finds that many of the changes that were added to the
implementation documents during the tenure of the Ad Hoc Committee were
beneficial to the millions of smaller domain name holders.  While it still 
must be
judged whether the overall process is too fast, too difficult and too 
expensive for
small noncommercial organizations, small businesses and individuals to receive
a fair hearing, we certainly support the addition of:

-          Better Notice to Domain Name Holders and believe the current 
service
     requirements are a) not unduly burdensome and b) less than the
     minimum necessary to achieve actual notice.  It is a start, but if 
defaults
     become common, ICANN must quickly strive to improve notice.

-          Certifications which require both parties to attest to the 
accuracy and
     completeness of their pleadings. 

-          Creation of Registrars' Policy Section 4(c) which provides 
guidance for
     domain name holders who are preparing their responses to complaints. 
     We request that the title of this section be changed to "Some Examples
     of Ways to Demonstrate... " because it is far from a fully inclusive 
list of
     defenses and both domain name holders and arbitrators should be
     alerted to this fact.

-          Editing of Registrars' Policy Section 4(b) which much more clearly 
and
     accurately ties "evidence of registration and use in bad faith" to deeds
     which show bad faith.  This section was the product of intense time and
     negotiations in the Ad Hoc Committee, and the NCDNHC requests that
     this carefully crafted balance be preserved in the final implementation
     documents.  

-          Waiver of Jurisdiction by the Complainant is a very important 
concept
     now included in the implementation documents.  It means that the
     appeal of an Administrative Panel decision by the domain name holder
     can be heard in the same court as the initial case would have been
     heard   a court close to the domain name holder who is forced to
     defend his/her mark.  While we have comments on the specific
     implementation of this language, the basic principle is sound and fair
     and must be preserved. 

-          The introduction of Reverse Domain Name Hijacking decisions by the
     Panel is an important step in balancing this process.  While we hope
     future Policies will do much more in this area, the NCDNHC supports
     this first serious step to balance the process and punish not only bad
     faith registrations of domain names, but also bad faith prosecutions of
     domain name holders.

     C.   Requested Changes

There are a small number of remaining issues raised by the current language of
the draft which require further comment and editing:

     1. The NCDNHC recommends that Section 4(b)(iv) of the UDRP be
revised to read as follows:

          (iv) by using the domain name, you have intentionally attempted to
     attract, for commercial gain, Internet users to your web site or 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, provided, however, that if your use of the
     domain name is a use with respect to goods or services that are
     unrelated or non-competitive to the goods or services identified by 
     Complainant's mark, this fact may be considered as evidence of a lack
     of intent to create a likelihood of confusion.

     2. The NCDNHC recommends that Section 4(c)(iii) of the UDRP be
revised as follows:

                     (iii) you are making a legitimate noncommercial or fair 
use of the
          domain name, without intent for commercial gain to misleadingly
          divert consumers.

     3. The NCDNHC recommends that Section 2(e)(iii) of the Rules for the
UDRP be revised as follows:

                               (iii)    electronically via the Internet, 
provided a record of its
                    transmission is available, and provided further, that no 
message
                    has been received that the transmission bounced or 
otherwise
                    failed.

     4. The NCDNHC recommends that Section 14 of the Rules for the
UDRP be revised as follows: 

                     (a)      In the event that a Party, in the absence of 
exceptional
               circumstances, does not comply with any of the time
               periods established by these Rules or the Panel, the Panel
               shall proceed with the case based on the record to that time
               and continue with all the following steps of the proceeding.

               (b)  If a Party, in the absence of exceptional circumstances, 
does
          not comply with any provision of, or requirement under
          these Rules or any request from the Panel, the Panel shall
          proceed with the next steps of the proceeding without such
          information.

     
DISCUSSION

     1. The first recommendation is made because the NCDNHC believes
that the existing language allows an inference that any intentional commercial
use which creates a "likelihood of confusion" (a concept well known in
trademark law of many countries) is a use in bad faith. If this inference 
were to
be made, it would involve a conflation of traditional trademark law concepts 
of
infringement with concepts of dilution. The recommended change allows the
Provider to consider lack of relatedness and lack of competition as evidence 
of
good faith. The language does not compel any decision - it simply allows
consideration of further evidence. In making this recommendation, the NCDNHC
assumes that ICANN does not intend to introduce dilution concepts into the
UDRP (which targets cybersquatting), and that the treatment of famous marks,
and the related issue of dilution, will be reserved for a separate proceeding.

     2. The second recommendation is for the deletion of the reference to
tarnishment in the existing section. The deleted phrase, "... or to tarnish 
the
trademark or service mark", if left in, would introduce a new and significant
substantive legal issue into a policy statement that is intended to represent 
a
simple, cost-effective and expeditious means of handling "cybersquatter"
disputes.  The concept of tarnishment has no place in the UDRP. 

     There is almost universal agreement that cybersquatting is not a
legitimate use of the domain name system. The claims of domain name holders
who are simply holding trademarks for ransom have been uniformly rejected by
courts throughout the world. Their bad faith has been apparent. These cases,
and the resulting body of case law, are intended to be the basis for the UDRP.

     There have been cases, however, where the bad faith of the alleged
cybersquatter has not been immediately apparent, and relief has been denied to
a trademark holder. The UDRP attempts to track the generally accepted
principles of existing law on this subject and to draw lines both for 
complaints of
cybersquatting and defense of such claims.

     The concept of tarnishment has been introduced into the UDRP in the
guise of bad faith conduct that can be disavowed in defense of a charge of
cybersquatting. Section 4(c) lists types of evidence that demonstrate a domain
name holder's rights and legitimate interests. Accordingly, it is a defense 
to a
charge of cybersquatting that the domain name holder is making legitimate
noncommercial or fair use "without intent...to tarnish the trademark or 
service
mark".  Implicit in this expression of the defense is the principle that even 
a
legitimate noncommercial use, WITH INTENT to tarnish, is tantamount to
cybersquatting. But this implicit principle is not part of generally accepted
principles of what constitutes bad faith in allegations of cybersquatting

     Presumably the concept of tarnishment has been introduced in the
UDRP because it is recognized as one of the two jurisprudential bases of
trademark dilution (the other being "riding on the coat-tails" of the 
complaining
mark).  However, in American law, where the concept of dilution is most highly
developed, mere intent to "tarnish" another's mark, standing alone, is not a 
basis
for relief on dilution grounds. In the Federal Trademark Dilution Act, 
enacted in
the United States in 1995, the word "tarnish" does not appear. More
significantly, the statutory defenses to a charge of dilution (which might in 
fact be
based on an alleged tarnishment) include the right to make "fair use" in
comparative or competitive advertising, noncommercial use and all forms of
news reporting and commentary. Under the U.S. statute, tarnishing a trademark
may be in some circumstances be protected against a charge of dilution.

     The UDRP, however, implicitly regards all tarnishment as grounds for
forfeiture of a domain name. Within the broad ambit of "bad faith", the
touchstone for a cybersquatting complaint, it is conceivable that a 
comparative
advertising use of a mark, or a competitor's use, could be deemed
"tarnishment", even in circumstances where a dilution statute like the one in
force in the U.S. would not treat the use as actionable.

     For these reasons, the phrase "... or to tarnish the trademark or service
mark" should be deleted from Section 4(c)(iii).

     3. The third recommendation is simply to provide for the all too common
eventuality that an email message can bounce unexpectedly. When a message
is known to have bounced, the presumption of completed transmission should
not apply. 
                          
     4. The fourth recommendation eliminates the guidance to arbitrators that
a failure to respond to the Complaint is, in and of itself, bad faith.  As 
discussed
often in the Ad Hoc Committee, real world court procedures require diligence 
on
the part of the plaintiff to find and serve the plaintiff.  No such efforts 
are being
required under this proceeding (not even efforts to search Yahoo or online
telephone listings , which NCDNHC continues to urge).  Absent such efforts, we
are likely to find that many domain name holders will not learn of this 
proceeding
until after its completion.   Absent actual notice, the NCDNHC does not 
believe
that an inference of bad faith should be made against a domain name holder. 
Rather, the proceeding should go forward and the complaint should be
evaluated to see whether it proves cybersquatting.  The recommended
language makes this basic change.

     D.   Additional Public Notice Needed

     In its staff report, ICANN presented four different types of selections 
for
Providers and Panelists.  The NCDNHC strongly supports the change in the
implementation documents from a Provider forum chosen by the complainant to
a Provider and Panel jointly selected by the domain name holder.  This is an
important and fair move. 

     The NCDNHC believes that in response to the broad public notice on
this point (section 3 of open implementation issues), ICANN will receive ideas
and input that are new, innovative and meriting attention.  We are 
particularly
interested in reviewing proposals we understand will be forthcoming from the
US Small Business Administration whose interest in balanced panels, low cost,
and ease of use for small business is consistent with the needs of
noncommercial organizations and individuals. 

     In light of the variety of options that we expect will be provided, we
strongly request and urge an expedited further notice of the implementation
documents on this critical issue. 

NON-COMMERCIAL DOMAIN NAME HOLDERS CONSTITUENCY
Kathryn A. Kleiman, Esq., Names Council
David W. Maher, Esq.