Domain Names (I) – Governance and Ownership

1. Domain Names (I) – Governance and Ownership Internet Governance Topic 5 Professor Graham Greenleaf and Russell Allen

2. Control of domain names • Allocation • In theory, a global hierarchical structure • Crucial control is of Top Level Domains (TLDs) - both generic (gTLDs) and by country (ccTLDs) • ICANN controls .com and .org gTLDs, and creation of new ones • For ccTLDs, the control structure differs by country • At every DNS level, someone has the right to allocate new sub-domains • DNS servers located throughout the Internet, keep at least the addresses of the root servers for each TLD

3. Legal implications of domain names • Uniqueness gives commercial value • How TLDs are managed is very political - it controls who can be found on the net • Eg China’s attempt to control Chinese character names • Eg attempts to create .sucks and .union TLDs • Threats and attempts to create alternative DNS systems result • Disputes within ICANN

4. Control of domain names (2) • Most disputes are about domain name allocation • We assume domain names will function internationally once allocated - • that DNS servers will resolve to the ‘correct’ IP address • What type of rule or ‘law’ is this? • Exceptions: • China’s corruption of the DNS to make <google.com> resolve to Chinese search engines

5. Are Domain Names Property? • Domain names are merely contractual arrangements. • Maybe linked, however, to Trade Marks • Network Solutions Inc v. Umbro Intl Inc. 529 SE 2d: Domain names cannot be garnished in bankruptcy • Zurakov v. Register.com (Unrep, Supreme Court of State of New York, Maskowitz J, 27 July 2001): Merely contractual

6. Organisational Control • http://www.artslaw.com.au • ICANN (.), delegates to: • auDA (.au), delegates to: • MelbourneIT et al (.com.au), delegates to: • Arts Law Centre of Australia (artslaw.com.au), delegates to: • Itself! (www.artslaw.com.au)

7. Can we avoid the entire system? • Alternate Roots are Technically Possible • Alternate Roots have existed - .bix, .kids etc • …but, none has got critical mass to interfere with ICANN policies.

8. Allocation Pre-DNS • Single list of names, shared between all computers. • Didn’t scale • New System was needed.

9. Some Terms • TLD – Top Level Domain • gTLDs - .com, .org etc • ccTLDs - .au, .uk, .nu • specialTLD - .arpa

10. gTLDs • sTLD and uTLD • In 1980s: • .org .com .edu .gov .int .mil .net • Now: • .aero .biz .coop .info .museum .name .pro

11. ccTLDs • Countries or merely indicators? • Over 240 countries • Changes over time

12. Allocation Pre-ICANN • IANA, Jon Postel and NSI

13. The Creation of ICANN

14. ccTLD Issues • Nuie Case Study • .au Degation Changes Case Study

15. Issues • Dispute resolution policies (DRPs) • gTLD, .hk, .cn, .au • Criticisms of DRPs and their administration • Decisions under DRPs - law or chaos? • Chinese (and other) character domain names • ICANN as a model of Internet governance?

16. Domain Names (II) – gTLD Dispute Resolution

17. gTLD Dispute resolution policies (ICANN’s UDRP) • Substantive grounds - P4(a), (b) and (c) • Choice of law - no provision - R15(a) • 1 or 3 member panel? - • P4(d), R3(b)(iv), R5(b)(iv), P4(g) (fees) • Complainant (TM owner) chooses if only 1 • Both complainant and respondent can request 3 • No appeal provisions (even if only 1 chosen) • Remedies limited to cancel/transfer (P3, 4(i))

18. gTLD Dispute resolution policies (ICANN’s UDRP) • Court proceedings • Reg will obey order of a Court/Tribunal ‘of competent jurisdiction’ (P3(b)) • P4(k) - either party can submit to Court, either before or after Panel decision (or 10 day stay) • R3(b)(xiii) - complainant agrees to submit to jur’n of Court in ‘Mutual jurisdiction’ (R1)

19. Criticisms of UDRP and its administration • Dr Milton Mueller Rough Justice (2000) • Suspected incentive for providers to favour complainants to attract cases (they choose) • Proved substantial results bias of 2/3 providers in favour of TM owners • Prof Michael Geist Fair.com? (2001) • Shows how the results bias occurs • Non-decisive factors • Price competition is very limited • Panelists of the 3 providers were very similar • Advertising and supplemental rules also minor

20. Geist’s Fair.com? criticisms • Decisive factor is case outcomes - but why are the outcomes biased? • Allocation of panelists provides the answer • Little known about allocation procedures • However, study of 3,000 allocation outcomes show the 2 pro-TM providers: • Allocate cases only to a handful of panelists • These result in 83% decisions pro-TM owner • For 3 member panels, % drops to 60%

21. Suggested UDRP reforms • Geist’s Fair.com? suggests • Mandatory 3 member panels (complainant’s cost) • Caseload maximum/minimum for all panelists • Quality control reviews of panelists • Better transparency through searching • Meuller’s Rough Justice suggest • Random selection of panelists • Appellate procedure • Closer ties between registrars and providers

22. UDRP caselaw - Overview • How do you find it? - implications • Elements of a UDRP complaint • DN ‘identical or confusingly similar’ • Registrant has no rights or legitimate interests • Evidence of bad faith • Decisions under .cc DRPs • DRP decisions challenged in Court • Other Court decisions on domain names • Are the UDRP and .ccDRPs successful?

23. Finding decisions - the problem • Number of decisions to consider • Already 1,300+ gTLD decisions in 2002 • Usually no system of appeals - single instance wilderness • Number of decision-makers • gTLDs have 4 • Most .ccTLDs have one or more • Courts add to the numbers • Panelists must (and do) consider them • No formal system of precent, just good practice and efficient to consider expertise of others • Unusual for arbitrators / mediator to have so many decisions by their peers to consider • Result is that secondary analyses are important

24. Existing search facilities • Berkman Center‘s UDRP Opinions - search engine with limited connectors etc • ICANN UDRP search - uses Berkman • Berkman Center‘s UDRPmate - hypertext linking between decisions by cut’n’paste • Umass UDRP seach engine - complex searches possible • UMass/Cornell LII UDRP Publishing Project - searching based on detailed subject indexing • See <http://lweb.law.harvard.edu/udrp/library.html>

25. Studies of UDRP decisions • Early analysis by Cabell (Harvard) 2000 • Kur UDRP, 2002, Max Planck Institute • analysis of over 3,000 decisions to mid-2001 • No major flaws in principles applied (but considers eResolution discrepancy needs addressing) • Main problem is ‘confusingly similar’ cases (free speech implications; issues of proof) - does/should UDRP require actual confusion? • Possible procedural reforms: defaults and appeals • Mueller and Geist - more statistics than law

26. Limited role of UDRP decisions, and burden of proof • UDRP limited to disputes with 3 elements • Disputes outside these elements must be resolved by Courts, not UDRP panels (‘deference’ by UDRP). This is crucial to proper interpretation. • cl 4 - burden on complainant to ‘prove’ all 3. • But cl 4(c) seems to require respondent to establish legitimate interest • Kur: Complainant must establish prima facie case, then burden shifts to respondent

27. Elements of a complaint • Complainant must prove all 3 (cl 4(a)): • (i) domain name is ‘identical or confusingly similar’ to complainant’s TM • (ii) registrant has no rights or legitimate interests in respect of the domain name; • (iii) domain name has been registered and is being used in bad faith.

28. DN ‘identical or confusingly similar’ to TM • UDRP 4(a)(i) • Few cases - usually identical • The ‘sucks’ cases • Lockheed Martin v Paresi [2000] • Vivendi v Sallen [2001] • Two views of the UDRP? (see Kur 3.2.1): • (I) actual confusion not necessary (‘misappropriation’), but lack of bad faith may excuse (separate ground) • (ii) actual confusion is necessary - leave other variations to the Courts to decide (‘deference’)

29. DN ‘identical or confusingly similar’ to TM • ‘Mass registration cases’ • Eg 38 variations of <yahoo!> all found confusingly similar (Kur) • Fan sites and sales sites may be confusingly similar but not in bad faith

30. Bad faith - Registration and use • UDRP requires DN 'has been registered and is being used in bad faith' (cl 4(a)(iii)) • Requirement of ‘use’ has been weakened: • Offer to sell considered to be use • Passive holding (’inactive use’) included • Telstra Case

31. Evidence of bad faith • UDRP 4(a(iii) and 4(b)(i), (ii), (iii) or (iv) • Importance of prior knowledge of TM • (i) Registration for gain from TM owner/competitor • (ii) Pattern of hoarding names • (iii) Intent to disrupt business of competitor • (iv) Intent to divert users to website by confusion • Other evidence of bad faith

32. Prior knowledge of TM • ‘The most essential aspect … is not even mentioned expressly in the Policy’ - whether respondent was aware or had reason to be aware of conflicting TM (Kur 3.2.2.1) • Usually prima facie sufficient for bad faith • Respondent then has 2 options: • Refute claim of knowledge by showing DN chosen for credible independent reasons (no bad faith) • Show positive prior legitimate interest in the DN, so issue of knowledge becomes irrelevant

33. Bad faith - (I) intent to sell to TM owner / competitor • Registration with intent to profit from TM owner/competitor (cl 4(b)(i)) • Intent to sell to others irrelevant • Must be intent to sell to a complainant with a reputation in the name

34. Bad faith - (II) Pattern of conduct of hoarding names • Registering name to prevent TM owner, if part of a pattern of hoarding names (cl 4(b)(ii)) • Only names relevant are those in which there is a prior reputation • Avoids need to show intent to sell, if hoarding can be shown

35. Bad faith - (III) Intent to disrupt competitor’s business • Registration with intent to disrupt competitor’s business (cl 4 b(iii) • Examples: • Diversion of DN to an undesirable site • Diversion of DN to any other website to cause confusion • ‘Typo’ diversions - obtaining a (similar) DN to attract ‘typo error users’ to your site or another

36. Bad faith - (iv) Diversion to your own site, by creating confusion • Using DN to intentionally divert users to your site for commercial gain, by creating confusion with complainant’s TM (cl 4(b)(iv)) • Eg Reed Executive v Reed Business Information (UK HC, 2002) - use of metatag ‘Reed’ (same as TM of other party) was a breach of TM - implications for UDRP, as metatag could increase confusion caused by a similar domain name

37. Bad faith - (I) Other indicators • UDRP cl 4 - factors not exhaustive • Panels have inferred bad faith from failure to respond and little else

38. Registrant has no rights or legitimate interests • Default advantage of 1st registration • Holder should win if has legitimate interest • UDRP 4(a)(ii) and 4(c)(i), (ii) or (iii) • Use re bona fide goods/services (I) • Distributors, licencees and resellers • Use of own name (ii) • Honest concurrent use (iii)

39. Legitimate use - for marketing • Sale/advertising of domain name itself can satisfy this (if before notice of TM) • Distributors, licencees and resellers • have legitimate uses of TMs to advertise the goods/services provided • They have notice of mark, not of dispute • ‘bona fide offering’ must not extend to pretending to be the TM owner • Protection against similar names only • Descriptive /geographical/ generic names • More likely to succeed the more generic is the TM

40. Legitimate use - Honest concurrent use • First to register DN of honest concurrent users should be able to retain name • Any further disputes must be left to Courts • Examples: • Fuji Film v Fuji Publishing -

41. Legitimate use - Own name • Examples: • Penguin v Katz - nickname ‘Penguin’ was enough to retain DN • Change of name to ‘Mr Oxford University’ was not enough to retain DN

42. Legitimate use - other • Cl 4 c (iii) allows ‘legitimate noncommercial or fair use’, not to ‘mislead consumers’ or tarnish the TM

43. UDRP decisions in Court • Sources of decisions • WIPO Selection of UDRP-related Court Cases - 16 to Oct 02 • Jones UDRP "Appeals" in Court (on UDRP.net) - 61 to Oct 02 • Types of analysis • Patrick Gunning - do Courts decide differently from UDRP panels? • David Sorkin - what ‘deference’ do and should US courts show to UDRP panels?

44. UDRP - Do Courts decide differently? • Decisions same as UDRP panel • Strick Corporation v Strickland (US Dist Ct) • Victoria’s Cyber Secret (US Dist Ct) • Barcelona.com Inc (US Dist Ct) • Decisions contrary to UDRP panel • Storey v Cello (US Dist Ct) - procedural issue • Gunning’s conclusion - too early to say: • Few decisions ‘appealed’, and Court usually reached same conclusion as UDRP panel • But this could also reflect cost of litigation and .com downturn

45. UDRP - What ‘deference’ should Courts give it? • Sorkin: US Courts ‘normally apply an extremely deferential standard of review to arbitration decisions’ • Reviews 5 UDRP decisions before US federal courts - UDRP decisions ignored or briefly mentioned; some Court said that decision would be de novo

46. UDRP - What ‘deference’ should Courts give it? • Sorkin concludes review should be de novo: • UDRP excludes ‘legitimate’ disputes • (anational) UDRPolicy ≠ trademark law • Procedural reasons are even stronger • Parties expectations (and intent of UDRP) • Streamlined UDRP procedures do not allow testing of evidence • Disparity in appeal requirements deny due process • Conclusion: de novo review is consistent with UDRP and required for fairness

47. Domain Names (III) – ccTLD policies on Dispute Resolution

48. .hk Dispute resolution policy • HKDNDR appoints HKIAC sole provider • Same as gTLD UDRP except: • Only orders of a HK Court are recognised (P3(b)) - enforcing a foreign judgment? • Similarity must be to a TM ‘in HK’ (P4(a)(i)) • R3(b)(xi) requires complainant consent to ‘final and binding arbitration’; see also P4(a) • Arbitration Ordinance s2AC requires written agreement • Same provisions for 1 or 3 member panels

49. .cn Dispute resolution policy • Covers both .cn and CNNIC’s Chinese character names • CNNIC appoints CITEC as service provider • Similar to gTLD UDRP in most respects • Substantive grounds similar (P5, P8, P9) • Can submit to a Chinese court or arbitration body at any time (P14, P15)