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

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

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

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 resolve to Chinese search engines

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

Organisational Control 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! (

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.

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

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

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

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

Allocation Pre-ICANN IANA, Jon Postel and NSI

The Creation of ICANN

ccTLD Issues Nuie Case Study.au Degation Changes Case Study

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?

Domain Names (II) – gTLD Dispute Resolution

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))

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)

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

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%

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

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?

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

Existing search facilities Berkman Center‘s UDRP Opinions - search engine with limited connectors etc Berkman Center‘s UDRP Opinions ICANN UDRP search - uses Berkman ICANN UDRP search Berkman Center‘s UDRPmate - hypertext linking between decisions by cut’n’paste Berkman Center‘s 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

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

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

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.

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’)

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

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

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

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 )  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

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

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

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

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

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

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)

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

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 -

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

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

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?

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

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

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

Domain Names (III) – ccTLD policies on Dispute Resolution

.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

.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)