9.2 Branding the Name Space: WHOIS and UDRP | Ruling the Root: Internet Governance and the Taming of Cyberspace

< Day Day Up >

At least since the gTLD-MoU, intellectual property interests had insisted on directly linking management of the DNS root with trademark protection functions in order to reduce their transaction costs. They hoped to reengineer the contractual regime of domain name registration to facilitate centralized policing and enforcement of their rights. Some even wanted to use DNS to expand the scope of their property rights, for example, by obtaining global exclusion of a mark from the domain name space regardless of how the mark was used. If implemented, these policies would dramatically reduce the transaction costs of trademark protection in the domain name space. But those reductions would be achieved at the expense of other, less powerful interests. The costs of supplying registrar service would increase; the costs of the institutional overhead (for ICANN) supported by the Internet industry would increase; barriers to entry into the registry and registrar market would increase; possession of a domain name by individuals would become riskier. In short, the intellectual property holders' agenda for the DNS would require shifting transaction costs away from themselves and on to others.

That agenda could not be executed unless the Internet root was administered by an organization that transcended national jurisdiction and was fully committed to the subordination of the domain name system to the protection of incumbent intellectual property in names. The Department of Commerce fully supported the trademark lobby's wishes. The White Paper made trademark domain name dispute resolution a critical part of ICANN's mandate. It authorized WIPO, an entity entirely beholden to intellectual property owners, to create a set of policy recommendations for handling the disputes.

WIPO responded by initiating, only one month after the release of the White Paper, an extensive global consultation procedure. At the conclusion of its first round of consultations in December 1998, it issued an interim report with specific proposals (WIPO 1998). The report revealed that WIPO and the major multinational intellectual property holders were fully aware of the tremendous opportunity ICANN presented for a favorable redistribution of wealth. The database of domain name registrations not only offered a point of automated and centralized surveillance of registration records, it also offered administrators the leverage for effective and inexpensive enforcement: the withdrawal of a domain name. The December interim report strained for the strongest intellectual property regime imaginable. It proposed the following:

Secure complete and accurate contact information from all domain name registrants, and make the use of false, misleading, or inaccurate registration information grounds for forfeiting a domain name, even without any intellectual property violation.
Make the databases (known as the WHOIS database) containing the contact information of domain name registrants cheaply and easily available, regardless of privacy considerations, so that intellectual property rights holders could use it to identify potential violations and issue effective legal challenges to any domain name registration in the world.
Create a new system of global dispute resolution to protect intellectual property on the Internet. All domain name registrants would be contractually bound to submit to an arbitration process when they registered a name. (By positioning itself as the sole dispute resolution service provider, WIPO also stood to benefit economically from the proposal.)
Extend WIPO's proposed adjudication procedures to every type of intellectual property dispute involving the Internet, including rights of personality and copyright as well as trademark. WIPO ceased using the word trademark to describe the object of the proceeding and used intellectual property instead.
Define procedures to allow WIPO to recognize and protect 'famous' trademarks by excluding them from the DNS database in all top-level domains. Famous mark holders would only have to pay a one-time fee reflecting administrative costs to obtain these exclusion rights in perpetuity.

WIPO's overreaching in the interim report generated a powerful backlash. Its comments site was deluged with negative reactions from domain name registries, organizations representing the Internet technical community, civil liberties groups, and many individual domain name holders (Froomkin 1999). WIPO was forced to modify significantly its final report, but the earlier report is valuable as an indication of the specific distribution of wealth hoped for by the intellectual property interests.

In its final report (WIPO 1999), issued April 30, WIPO retracted the focus of its compulsory dispute resolution process to 'abusive' domain name registrations and confined its focus to trademark concerns rather than intellectual property in general. It grudgingly recognized the existence of reverse domain name hijacking. The revised proposals still sought to give intellectual property owners access to complete and accurate contact information about domain name registrants, and a uniform and mandatory dispute resolution procedure. Arbitrators were instructed to apply national laws whenever possible. The final report also retained recommendations that 'a mechanism be established before the introduction of any new open gTLDs whereby exclusions can be obtained and enforced for marks that are famous or well-known across a widespread geographical area and across different classes of goods and services.'

To ICANN and the Commerce Department, protecting trademark holders was the second-highest priority after introducing competition in the .com space. After the conclusion of the WIPO process, ICANN leveraged its centralized, exclusive control of the domain name root to implement a trademark dispute resolution regime. It defined a Uniform Dispute Resolution Policy (UDRP) and bound all registrars of domain names under .com, .net, and .org to it as a condition of accreditation. ^{[10 ]}Through their contracts with registrars, all registrants of domain names under the generic TLDs are contractually bound to submit to arbitration under the UDRP.

The UDRP procedure allows any person, anywhere in the world, who believes that a domain name registration infringes his trademark right, to challenge a registration. Independent arbitrators make a decision quickly and (relative to courts) inexpensively. ICANN does not handle disputes itself but rather accredits independent dispute resolution service providers (RSPs). The RSPs assemble their own stable of arbitrators and compete for the business of resolving domain name disputes. To successfully challenge a name, a trademark holder must prove three things: that the domain name is identical or confusingly similar to a mark in which the complainant has rights; that the registrant has no rights or legitimate interests in the domain name; and that the domain name has been registered and is being used in bad faith.

The UDRP is arguably ICANN's most significant accomplishment. It handled over 2,500 cases involving nearly 4,000 domain names in its first year. Procedurally, the UDRP is heavily biased in favor of complainants. It allows the trademark holder to select the dispute provider, thereby encouraging dispute resolution service providers to compete for the allegiance of trademark holders. The resultant forum shopping ensures that no defendant-friendly service provider can survive (Mueller 2000). It provides little time for respondents to react or prepare (Froomkin 2000). Moreover, once a name has been taken away through the UDRP, it is unclear, at least in the United States, whether the original registrant can get it back from the courts. ^{[11 ]}

ICANN's attempts to safeguard intellectual property interests in the domain name space also shaped its policies toward the introduction of new top-level domains (see section 9.5). New TLDs were given a low priority relative to other objectives. Movement toward that goal was extremely slow. When new ones were introduced, the number was small and the approval process encouraged registries to employ practices that would privilege trademark holders in the initial assignment of names. So-called 'sunrise' or 'daybreak' procedures, for example, allow all the world's trademark holders the privilege of preregistering their names in a new toplevel domain before the domain is opened up to anyone else. Both techniques offer preemptive forms of protection that simply do not exist in traditional trademark law.

In this policy arena, too, ICANN's allegedly bottom-up consensual procedures did not work according to plan. A major revolt by Internet users was required to prevent ICANN's board from endorsing the WIPO report in its entirety at its May 1999 meeting in Berlin, before its DNSO had even been formed. ^{[12 ]}A DNSO working group on the UDRP was created in the late summer but failed to produce a concrete proposal. Most of the actual negotiating and definition of the policy was performed by an ad hoc committee assembled and led by ICANN's staff (Froomkin 1999; Weinberg 2000). Although a working group on famous trademarks made it clear that there was no consensus within ICANN's DNSO for creating a list of famous marks or any kind of 'sunrise' proposal, ^{[13 ]}the impact of those decisions was undercut by the decisions of management and staff to encourage applicants for new top-level domains to include 'sunrise' provisions and name exclusions in their proposals.

^{[10 ]}Section II(K) of ICANN's Registrar Accreditation Agreement, <http://www.icann.org/nsi/icann-raa-04nov99.htm >.

^{[11 ]}In a case involving the domain name corinthians.com, Judge Young ( Massachusetts District Court) held that no declaratory judgment was available to the registrant, not even under the Anticybersquatting Consumer Protection Act, if the victorious party in the UDRP (the trademark holder) disclaimed any intention to file a trademark lawsuit of its own. There being exactly that disclaimer, he then dismissed the case for failure to state a claim.

^{[12 ]}A 'Petition to ICANN and the U.S. Department of Commerce,' May 1999, objecting to the adoption of WIPO recommendations without any action by the DNSO was signed by 86 prominent people from the legal, technical, and policy communities, including four members of WIPO's panel of experts. <http://www.domainhandbook.com/petition-0599.html>.

^{[13 ]}Michael Palage, chair, 'Working Group B Report,' submitted to the DNSO Names Council April 17, 2000. In its summary of consensus points, the report noted, 'There does not appear to be the need for the creation of a universally famous marks list at this point in time,' and 'There appears to be a consensus that protection afforded to trademark owners will depend upon the type of top-level domain.'

< Day Day Up >