AIPLA comments on UDRP and Rules

[Lee Schroeder <Lschroeder@aipla.org>]

Yesterday comments were sent as follows to you but they do not yet
appear on your archive.  The comments were sent as an attachment. The
comments were also submitted as a fax. The comments submitted on behalf
of AIPLA by Margaret Boulware, AIPLA President, are:

				
	
October 13, 1999	

Ms. Esther Dyson
Internet Corporation for Assigned Names and Numbers
4676 Admiralty Way, Suite 330
Marina Del Ray, California 90232

Re: Draft Uniform Domain Name Dispute Resolution Policy and Draft Rules

Dear Ms. Dyson:

The American Intellectual Property Law Association (AIPLA) appreciates
the opportunity to comment on the draft Uniform Domain Name Dispute
Resolution Policy and the draft Rules for the Policy.  We commend the
efforts of the drafting group chaired by Mr. Louis Touton, however, we
believe that the draft Policy and its implementing Rules should be
clarified in certain respects detailed below to provide greater fairness
and certainty for both domain name registrants and trademark owners.

	The American Intellectual Property Law Association (AIPLA) is a
10,000 member, national bar association constituted primarily of lawyers
in private and corporate practice, in government service, and in the
academic community. The AIPLA represents a wide and diverse spectrum of
individuals, companies, and institutions involved directly or indirectly
in the practice of patent, trademark, copyright and unfair competition
law, as well as other fields of law affecting intellectual property.
Our members represent both owners and users of intellectual property.
The AIPLA is actively involved in shaping intellectual property policy
worldwide through its work on Federal legislation and regulations, as
well as International Treaties, affecting intellectual property matters.

Uniform Domain Name Dispute Resolution Policy

	Paragraph 1: After the Policy and the Rules are adopted and have
been used for a reasonable  period of time (e.g., one year), the AIPLA
believes that their application should be re-examined with a view to
expanding the range of disputes to which they apply.  Assuming, as we
do, that the administrative dispute resolution system will work well,
it should be expanded to include second level domain (SLD) name disputes
that are not confined merely to cases of bad faith registration or use.
In addition, we believe that the Policy and Rules should be used by the
administrators of ccTLDs as recommended by WIPO and would urge ICANN to
promote their adoption and use by these entities.

	Paragraph 3(d):  The AIPLA believes the phrase "another
registrar's domain name dispute resolution policy that is identical to
this policy in all material respects" is ambiguous and should be
clarified.  We would suggest that the "other" registrar must use the
domain name dispute resolution policy adopted by the ICANN before an
obligation to "cancel, transfer or otherwise make changes" would arise. 

	Paragraph 4(a)(iii): The AIPLA suggests that this paragraph
should be revised to read "registered or is being used in bad faith."
The revision more appropriately comports with the spirit and intent of
protection of intellectual property rights.  Many cybersquatters have
registered domain names in bad faith but have not subsequently used the
names.

	Paragraph 4(b): Similarly, the title of this paragraph and line
4 of the preamble should be changed to "registration or use in bad
faith."

	Paragraph 4(b)(i): The bottom-line threshold to show whether an
SLD name owner is acting in bad faith should be whether an offer to sell
the domain name is for a price in excess of the registration fee.
Therefore, the last line of this paragraph should be amended to read:
"... costs directly related to the registration of the domain name ...."
Additionally, the term "primarily" in the second line should be
stricken, as it demands too high a standard of proof of bad intent.

	Paragraph 4(b)(ii): The AIPLA recommends that the third line be
amended to read "... provided that the facts indicate a pattern of such
conduct."  This will enable a Panel to infer bad faith in appropriate
cases based on an objective presentation of the facts.   In addition to
the four factors listed above, the registration of multiple domain names
incorporating the trademarks, service marks, or well-known names of
others should be added as a fifth factor evidencing bad faith
registration.

	Paragraph 4(c) (Preamble): The AIPLA suggests replacing the word
"demonstrate" with the phrase "be evidence of ...."  A hard and fast
rule is inappropriate, especially since experience may bring more
evidentiary efforts into play.  Thus,  sub-items 4(i)-(iii) should be
items to consider, not items of conclusive proof.

	Paragraph 4(c)(i): The AIPLA suggests striking the phrase
"demonstrable preparations to use," as it will create a loophole for
cybersquatters and will be subject to abuse.

	Paragraph 4(c)(ii): The AIPLA recommends striking this provision
entirely, as whether one is "commonly known" by a name or nickname
raises difficult evidentiary problems and overlooks many factors beyond
the name or nickname which would tend to evidence bad faith rather than
absence of bad faith.
	Paragraphs 4(b)(iv) and 4(c)(iii): In addition to bad faith
registration or use being evidenced when undertaken for purposes of
commercial gain, it is equally evidenced by registration or use for the
purpose of attracting Internet users to a web site for the purpose of
improper criticism, comparison, or defamatory speech.  None of these
activities would be considered "for commercial gain."  In  Planned
Parenthood Federation of America, Inc. v. Richard Bucci, the defendant
used the domain name "plannedparenthood.com" to lure Internet users to
his site, so that he could espouse doctrine contrary to that espoused by
Planned Parenthood.  The defendant's actions would not be considered for
"commercial gain" nor protected by the First Amendment, but this is
cybersquatting nonetheless.  This behavior results in initial interest
confusion for illicit purposes, such as defamation or hate speech, or
improper comment or criticism. 

	Paragraph 4(d): Because the Complainant initially will be
required to pay for the Administrative Panel, the Complainant should be
granted the privilege of selecting the Provider and a single panel
member in the first instance.  If the Respondent is concerned about the
panelist selected, then the Respondent should be afforded the privilege
of requesting an expanded three-member panel and selecting a second
panel member. Where the Respondent requests an expanded panel, the
Respondent would, of course, split the cost with the Complainant. If the
parties cannot agree on the third member, the Provider should select the
third member of the Panel, on a rotating basis, from the list of
neutrals accredited by the Provider.  It is very important that ICANN
carefully accredit Providers to ensure that they have adequately trained
and qualified neutrals to serve as panelists and that the Providers be
totally independent of Registrars.

	Paragraph 4(g): The AIPLA believes that all fees necessary for
selection and implementation of the Administrative Panel should be paid
by the parties in advance.

Rules for Uniform Domain Name Dispute Resolution Policy

	Paragraph 1: The AIPLA disagrees with the definition of "Mutual
Jurisdiction."  The AIPLA believes that the Mutual Jurisdiction for
purposes of Court action should be the principal office of the Registrar
or anywhere that the SLD name holder is subject to personal
jurisdiction.  The SLD name owner should be required to submit to the
jurisdiction of the Registrar's  principal office.
In addition, ICANN should only accredit Registrars that have their
principal place of business in a country that is a member of the WTO and
thus bound by TRIPs.  Jurisdiction over the Respondent in court is
always available where the SLD name owner is located or is doing
business.

	To ensure unbiased decision making, a "Provider" should be
listed on ICANN's site only.  A Registrar's preferred Provider is too
narrow a universe, and could result in the selection of a biased
Provider and Administrative Panels favorable to the Registrar's point of
view (i.e., pro-Respondent or Pro-Complainant).

	Paragraph 2: The AIPLA agrees with the various methods of notice
for communications related to the domain name arbitration.

	Paragraph 3(a): The AIPLA believes that the administrative
proceeding should be initiated by submitting the Complaint to an
accredited Provider.  It should be the Provider's responsibility to
forward the Complaint to the panel and to the Respondent.

	Paragraph 3(b)(ix): The AIPLA suggests that 4000 words is
sufficient for the full presentation of the Complaint (excluding cover
sheets, schedules, exhibits or attachments).  As noted above in other
areas, the second line of paragraph 3(b)(ix) should be amended to read:
"... registered or being used in bad faith."

	Paragraph 3(b)(xii): The AIPLA does not believe that the
Complainant should have the right or the obligation to serve the
Complaint upon the Respondent.  Proper service of the Complaint should
be the sole right and responsibility of the Provider.  This way, there
will be fewer questions whether the Complaint was properly "served."

	Paragraph 3(b)(xiv): The AIPLA suggests that the phrase "as it
now exists or as it may be extended by a good-faith and reasonable
argument" should be replaced by the more settled language found in Rule
11 of the Federal Rules of Civil Procedure which reads  "and other legal
contentions warranted by existing law or by a nonfrivolous argument for
the extension, modification, or reversal of existing law or the
establishment of new law".

	Paragraph 4(b): If a filed Complaint is found by the Provider to
be technically defective, the AIPLA disagrees that the proceeding should
be dismissed and the Complainant forfeit its filing fee.  Rather, the
Complainant should be given a set period of time to file an amended
Complaint after being notified of the deficiency by the Provider.

	Paragraph 5(b)(i): The AIPLA suggests that 4000 words is
sufficient for the full presentation of the Answer and Defenses to
Complaint (excluding cover sheets, schedules, exhibits or attachments).
The language of this paragraph should be revised to state "... respond
specifically to the statements and allegations contained in the
Complaint ...."  In this regard, the lack of specificity in this
paragraph should be contrasted with the detailed requirements for the
contents that must be set forth in the Complaint (see paragraph 3(b)(i)
through (xv)).

	Paragraph 5(b)(iv): As stated above, the Respondent should pay
its portion of the fees for an expanded (3-member) administrative panel
in advance (i.e., at the time it files the Answer to the Complaint with
the Provider).

	Paragraph 5(b)(v): In addition to other legal proceedings in
which the Respondent is involved, the Respondent also should be
obligated to list all the different domain names it owns.  This could be
relevant to the issue of bad faith registration of an SLD name.

	Paragraph 5(c): The AIPLA believes that this paragraph should be
revised to provide that, upon submission of a written stipulation
between the parties, the Respondent's time for answering

 the Complaint may be extended at the discretion of the Provider.  This
would be particularly useful if the parties require a short period of
time to discuss and conclude settlement negotiations.

	Paragraphs 6(a)-(c): Our comments with respect to paragraph 4(d)
of the Policy apply fully to paragraphs 6(a) to (c) of the Rules.

	Paragraph 8: The second sentence of this provision should be
amended by specifying the means by which the parties will or may
communicate with the case administrator appointed by the Provider (i.e.,
e-mail, fax, overnight courier, etc.).  Appropriate addresses and
telephone numbers for this purpose should be provided.  Additionally,
this provision specifically should state that any party's communications
with the case administrator should be copied to the adverse party by the
same method of communication, or by the adverse party's preferred method
of receiving communications.

	Paragraphs 10(b), 12, and 15(a): The AIPLA suggests that
additional thought be given to promulgating specific rules by which the
parties will submit their evidence in support of their case.  For
example, rules should be established for the presentation of trademark
registration certificates, evidence of first and continuing trademark
use, proof of first and continuing Internet use,  proof of acquired
trademark distinctiveness, recognition, or renown, and those facts
establishing the SLD name holder's superior rights.

	Paragraphs 14(a) and (b): The language is ambiguous regarding
the consequences of default.  The language "... proceed to a decision on
the complaint ..." and "... draw such inferences therefrom as it
considers appropriate ..." is unclear.  In paragraph 14(a), the
consequence of default should be either expungement or transfer of the
SLD name, or a ruling that the SLD name holder may retain ownership of
the SLD name.  In paragraph 14(b), the consequence of default should be
the drawing of adverse evidentiary inferences against the party in
default.

	Paragraph 15(e): The AIPLA  questions whether any useful purpose
is served by requiring the panel to declare in its decision any finding
that the Complaint was brought in bad faith and constitutes an abuse of
administrative procedures. However, should this requirement remain,
consideration should be given to balanced treatment with respect to
those decisions in which the Complainant prevails.  

	Paragraph 16(b): The AIPLA suggests that the website for the
posting of an administrative  panel's  decision should be maintained by
ICANN.  The body of administrative decisional precedent governing SLD
name disputes should be maintained and published from a single location
created by ICANN.  The Rules should not allow each Provider to publish
its decisions on "a publicly accessible website."

	Paragraph 17(a): The AIPLA believes that proof of a final
written settlement between the parties should be sent to the case
administrator, and then to the Provider and the Panel, before the Panel
may terminate the arbitration proceeding.

	Paragraph 17(b): The language "... becomes unnecessary or
impossible to continue the administrative proceeding ..." is ambiguous.
This provision should be clarified to specify, by example, the types of
situations under which the Panel will terminate the arbitration
proceeding.  The reason for the panel's  termination of the proceeding
should be stated in writing.

	Paragraph 18: In the event of the initiation of a legal
proceeding, the AIPLA does not believe that the Panel should have the
discretion whether to continue with the administrative proceeding.  If a
legal proceeding is initiated, and acceptable proof of same is provided
to the Panel, the administrative proceeding should be terminated
immediately.

	Paragraph 18(b): In conformity with paragraph 8, notice of the
initiation of a legal proceeding should be given to the case
administrator, not the panel or the Provider generally.

	Paragraph 19(a): The AIPLA does not agree that the Complainant
should be obligated to pay the fee for a three-member panel up front.
The fee for a single arbitrator should be all the Complainant is
required to pay for initially, unless the Complainant requests a
three-member panel when the Complaint is filed.  This suggested revision
will reduce the Provider's administrative burden of issuing refunds, and
will also promote greater fairness to the dispute resolution system.

	The AIPLA again wishes to compliment ICANN for the transparency
of this process and the opportunity to express its views.

	
Sincerely,



								Margaret
A. Boulware
	
President