1. Domain Names Professor Graham Greenleaf and Russell Allen

2. Introduction Why is this important?

3. Ubiquity of Domain Names Predominant method of finding resources on the net (but google?) My local pizza shop has a domain name No viable alternative

4. Value of Domain Names Compaq buys altavista.com in 1998 for US$3.3m eCompanies buys business.com in 1999 for US$7.5m Tuvalu sold.tv domain to Idealab for US$50m/year til 2012

5. Domain Name System A human readable addressing system which translates domain names into IP addresses

6. Allocation Pre-DNS Single list of names, shared between all computers. Didnt scale New System was needed.

7. DNS Heirachical names Heirachical mechanics Distributed Mechansim(P2P like) Cached system

8. DNS A Protocol Implementation (BIND) An agreed root directory

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

10. gTLDs 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. ccTLDs as indicators.nu for Niue (new).tv for Tuvalu ( television).ws for Western Samoa ( Web site).tm for Turkmenistan (trade mark).to for Tonga (go.to)

13. Governance and Ownership Covers the governance and ownership of domain names, control of the DNS and the institutions involved

14. 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

15. 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)

16. 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 Chinas 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

17. DNS Universality 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: Chinas corruption of the DNS to make resolve to Chinese search engines

18. 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

19. 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.

20. Allocation Pre-ICANN IANA, Jon Postel and NSI

21. The Creation of ICANN Set up by US Department of Commerce in 1998 non-profit corporation … formed to assume responsibility for … domain name system management … functions perfomed under US Government contract by IANA

22. ICANN ccTLD Issues Nuie Case Study.au Degation Changes Case Study

23. ICANN results and 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?

24. Dispute Resolution Covers the gTLD and auTLD domain name dispute resolution process

25. gTLD Dispute resolution policies (ICANNs 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))

26. gTLD Dispute resolution policies (ICANNs 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 jurn of Court in Mutual jurisdiction (R1)

27. 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

28. Geists 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%

29. Suggested UDRP reforms Geists Fair.com? suggests Mandatory 3 member panels (complainants cost) Caseload maximum/minimum for all panelists Quality control reviews of panelists Better transparency through searching Meullers Rough Justice suggest Random selection of panelists Appellate procedure Closer ties between registrars and providers

30. 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?

31. 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

32. Existing search facilities Berkman Centers UDRP Opinions - search engine with limited connectors etc Berkman Centers UDRP Opinions ICANN UDRP search - uses Berkman ICANN UDRP search Berkman Centers UDRPmate - hypertext linking between decisions by cutnpaste Berkman Centers UDRPmate Umass UDRP seach engine - complex searches possible Umass UDRP seach engine UMass/Cornell LII UDRP Publishing Project - searching based on detailed subject indexing UMass/Cornell LII UDRP Publishing Project See

33. 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

34. 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

35. Elements of a complaint Complainant must prove all 3 (cl 4(a)): (i) domain name is identical or confusingly similar to complainants 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.

36. 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)

37. DN identical or confusingly similar to TM Mass registration cases Eg 38 variations of all found confusingly similar (Kur) Fan sites and sales sites may be confusingly similar but not in bad faith

38. 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

39. 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

40. 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

41. 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

42. 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

43. Bad faith - (III) Intent to disrupt competitors business Registration with intent to disrupt competitors 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

44. 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 complainants 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

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

46. 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)

47. 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

48. 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 -

49. 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

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

51. UDRP decisions in Court Sources of decisions WIPO Selection of UDRP-related Court Cases - 16 to Oct 02Selection of UDRP-related Court Cases Jones UDRP "Appeals" in Court (on UDRP.net) - 61 to Oct 02UDRP "Appeals" in Court 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?

52. UDRP - Do Courts decide differently? Decisions same as UDRP panel Strick Corporation v Strickland (US Dist Ct) Victorias Cyber Secret (US Dist Ct) Barcelona.com Inc (US Dist Ct) Decisions contrary to UDRP panel Storey v Cello (US Dist Ct) - procedural issue Gunnings 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

53. 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

54. 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

55. Court Resolution Covers court cases on domain names, and the integration between the domain name system and trademarks