Lord of your domain, but master of none: The need to harmonize and recalibrate the domain name regime of ownership and control

International Journal of Law and Information Technology

Volumn 16, Issue 1, 2008, Pages 8-72

  Chik, Warren B ^a,b,c,d,e,f  

^a SINGAPORE MANAGEMENT UNIVERSITY   (Singapore)

^b Society of International Law   (Singapore)

^c UNIVERSITY COLLEGE LONDON   (United Kingdom)

^d TULANE UNIVERSITY   (United States)

^e NATIONAL UNIVERSITY OF SINGAPORE   (Singapore)

^f NONE

Author keywords

[No Author keywords available]

Indexed keywords

EID: 62649098275     PISSN: 09670769     EISSN: 14643693     Source Type: Journal    
DOI: 10.1093/ijlit/eam005     Document Type: Article

References (357)

1. I.e. the use of electronic communications and information delivery methods and through networks such as the Internet which grants access to the World Wide Web (WWW) and various forms of audio-visual conferencing facilities and Instant Messaging services.
2. E.g. the sale of digital books and music and movies through various audio-visual formats as well as of electronic games and other interactive gaming products and services.
3. The concept of virtual property, meaning a property interest that is intangible but still exclusionary, is made to distinguish it from real property and from intellectual property. However, it has not yet acquired the same sort of recognition as latter two. This is partly because of the rapidity of technological changes and the resistance toward the need for an entirely new legal and regulatory framework for these forms of property. The tendency is to prefer dealing with them largely under the current framework of intellectual property law. See David Nelmark, Virtual Property: The Challenges of Regulating Intangible, Exclusionary Property Interests Such as Domain Names, 3 Nw. J. Tech. & Intell. Prop. 1, 2-4 (2004), in particular Part II ("Defining Virtual Property") where the author examined the emergence of virtual property as "a whole new class of property" and identified its differences from more conventional notions of intellectual property.
4. See also, Christine Soares, Are Domain Names Property? The Sex.com Controversy, Duke L. & Tech. Rev. 32 (2001), for an interesting perspective on the impact that characterizing domain names as property have on the causes of action available for domain name litigation. The larger consequences and considerations of treating virtual assets as either tangible or intangible property are outside the scope of analysis of this paper. For more on this, see Xuan-Thao N. Nguyen, Cyberproperty and Judicial Dissonance: The Trouble with Domain Name Classification, 10 Geo. Mason L. Rev. 183 (2001).
5. From "Pacman" to "Tamagotchi" to "The Sims", computer gaming has given rise to a lifestyle where virtual worlds exist with computer-simulated environment that is created for humans to inhabit and interact via digital avatars. The cyber realm is becoming more like a real world mnemonic as life simulator games (where players live artificial lives) and God games (fantasy simulations of communities and worlds where players control artificial lives) become more sophisticated. The lines between real lives and digital alter egos are becoming less distinct as digital products and services generate tremendous economic revenue and online trade and interaction becomes an integral part of life for many people, especially when it becomes an escapist venture.
6. Other than the Open Source and Free Software Movements in relation to technology, there are also some other sectors that embrace this concept of proprietary-free sharing such as in the information (e.g. Wikipedia, which subscribes to the 'copyleft' principle) and research (e.g. the World Legal Information Institute or WorldLII) areas.
7. However, it is to be noted that it is increasingly difficult to maintain the free access and content model due to tensions between content regulations and freedom of expression and speech online. The days of the Internet tax moratorium may also be numbered.
8. Consider, for example, the line of decisions in the United States dealing with the dispute between peer-to-peer (P2P) technology creators on the one hand and copyright owners on the other. The disputes over P2P technology have gone up to the United States Supreme Court in 2005 ( MGM Studios, Inc. v. Grokster, Ltd., 125 S. Ct. 2764 (2005)).
9. In the same year, a similar type of case went up to the Australian Federal Court (Universal Music Australia Pty. Ltd. v. Sharman License Holdings Ltd. [2005] FCA 1242), although it has since been reported in 2006 that the parties to this action have reached a monetary settlement with the P2P company that owns Kazaa paying the recording industry $151 million dollars.
10. See Rebecca Giblin-Chen, Kazaa Pays $151m, Sydney Morning Herald, 15 August 2006, available at: http://www.smh.com.au/news/biztech/ kazaa-pays-151m/2006/08/14/1155407745947.html.
11. Although some of the analysis and arguments will also apply, generally or specifically, to other forms of virtual property.
12. The primary reason for a more detailed comparison of these three countries is due to their actual and potential computer usage saturation and Internet access coverage. The United States is still singularly the largest Internet market while the European Union (which the United Kingdom will provide a good country study example) also has strong Internet usage. These countries have also provided most of the jurisprudence that have emerged from the UDRP and from national dispute panels and court decisions. Internet connectivity and usage is rapidly growing in China and it is projected that China, with the largest population in the world and a burgeoning economy, will continue to expand its electronic connectivity and communications infrastructure. Statistics from the China Internet Network Information Center (CNNIC) show that China's Internet users have reached 123 million by 30 June 2006, having grown by 19.4 percent within a single year, and that the country's web sites amounted to 788400, growing 90000 in the first half of 2006 alone.
13. See Winny Wang, China's Internet Users reach 123m, Shanghai Daily, 19 July 2006, available at http://www.shanghaidaily.com/art/2006/07/19/ 286627/China_039_s_Internet_users_reach-123m.htm. China had also recently made some interesting and significant changes to its domain name dispute resolution policy on 14 February 2006, which took effect from 17 March 2006, which must be considered in the light of their differences to other policies. Other than the above considerations and the fact that they represent three continents, the differences in their regimes, which will become apparent from the coming evaluation, will provide a good segue into Part 3 of the article.
14. Some of the latest statistical information can be found at the Internet World Stars web site at: http://www.internetworldstats.com/stats.htm.
15. An IP address consists of a series of numbers separated by periods. Substituting them with alpha-numeric lettering and numbers separated by punctuations, typography and characters such as periods, hyphens, underscores and backslashes renders an address more recognizable and easier to remember. An analogy can be made to the use of telephone number mnemonics. See MTV Networks v. Adam Curry, 867 F. Supp. 202, 203 n.2 (SDNY) where the court noted that "[a] domain name mirroring a corporate name may be a valuable corporate asset, as it facilitates communication with a customer base."
16. See Panavision Int'l, L.P/v. Toeppen, 141 F.3d 1316, 1327 (9th Cir. 1998), where the court pointed out the functional aspect of domain names.
17. The ICANN web site is at: http://www.icann.org. An informative ICANN Fact Sheet is available at: http://www.icann.org/general/fact-sheet.htm. ICANN was formed in October 1998 pursuant to a White Paper and Green Paper issued by the Clinton Administration. See Developments in the Law - The Law of Cyberspace; The Domain Name System: A Case Study of the Significance of Norms to Internet Governance, 112 Harv. L. Rev. 1657, 1665 to 1670 (1999)
18. and Chad D. Emerson, Wasting Time in Cyberspace: The UDRP's Inefficient Approach Toward Arbitrating Internet Domain Name Disputes 34 U. Balt. L. Rev. 161, 168 to 169 (2004). In 1998, the Clinton Administration issued a White Paper proposal that addressed Internet domain name management, which contained the common themes of "open participation, bottom-up coordination, and consensus building". The White Paper embodied the established norms of the Internet and its publication was also regarded as an important step in the codifi cation of principles of Internet governance. It recommended that ICANN coordinate Internet operations, such as managing IP addresses and root servers, increasing the number of top-level domains, and establishing protocol parameters. ICANN works on the basis of transparency, engagement and participation of all stakeholders.
19. For more, see Donna L. Howard, Trademarks and Service Marks and Internet Domain Names: Giving ICANN Deference, 33 Ariz. St. L.J. 637 (2001), where the author argued in support of ICANN and the UDRP system. But contra.
20. David E. Sorkin, Judicial Review of ICANN Domain Name Dispute Decisions, 18 Santa Clara Computer & High Tech. L.J. 35, 55 (2001)
21. John Magee, Domain Name Disputes: An Assessment of the UDRP as Against Traditional Litigation, U. Ill. J.L. Tech. & Pol'y 203 (2003)
22. and J.R. Hildenbrand, A Normative Critique of Private Domain Name Dispute Resolution, 22 J. Marshall J. Computer & Info. L. 625 (2004).
23. For a critical web site on ICANN, see ICANN Watch at: http://www.icannwatch.org/.
24. Before ICANN, the assignment and administration of domain names was performed by a private company, the Network Solutions, Inc. (NSI), through a government contract with the United States Administration. See Adam Silberlight, WWW.How To Be a Master of Your Domain.Com: A Look at the Assignment of Internet Domain Names Under Federal Trademark Laws, Federal Case Law and Beyond, 10 Alb. L.J. Sci. & Tech. 229, 230 to 238, 270 to 273 (2000), where the author provides an overview of the Internet and the Internet domain name structure and scheme of Network Solutions, Inc. (NSI) before ICANN came into the picture, including the process whereby a domain name is obtained, as well as the advent of ICANN.
25. See also Jay P. Kesan, Rajiv C. Shah, Fool Us Once Shame on You - Fool Us Twice Shame on Us: What We Can Learn from the Privatizations of the Internet Backbone Network and the Domain Name System, 79 Wash. U. L. Q. 89 (2001), on the privatization of the "Internet backbone network" and the DNS.
26. Finally, for some developments in the politics over the control of the Internet, see Elliot Noss, Perspective: A Battle for the Soul of the Internet, CNet News.com, 8 June 2005, available at: http://news.com.com/A+battle+for+the+soul+of+the+Internet/ 2010-1071_3-5737647.html;
27. and Chris Nolan, The United Nations is Looking Into Taking Away U.S. Control of ICANN. That's Good News - Or is it?, eWeek.com, 27 October 2005, available at: http://www.eweek.com/article2/ 0,1759,1878155,00.asp?kc=EWNKT0209KTX1K0100440.
28. See also the United Nations World Summit on the Information Society web site at: http://www.itu.int/wsis/
29. and the United Nations Working Group on Internet Governance web site at: http://www.wgig.org/index.html (on a multi-stakeholder policy dialogue and on the revamping of the Internet infrastructure). The main players are the United Nations (UN), the International Telecommunications Union (ITU), the United States government and ICANN.
30. A generic top-level domain (gTLD) is the last portion of an Internet domain name. The most popular gTLD, and hence the most valuable, is the .com gTLD. Others include, for example, .org and .edu.
31. See Jeffrey J. Look, The Virtual Wild, Wild West (WWW): Intellectual Property Issues in Cyberspace - Trademarks, Service Marks, Copyrights and Domain Names, 22 U. Ark. Little Rock L. Rev. 49, 56 n.30 (1999). The author examined the development of registration systems since the initial monopoly by Network Solutions, Inc. (NSI) and noted that the registration procedures remain largely unchanged including the oft-criticized first-come-first-served basis for registration.
32. See Jessica Litman, The DNS Wars: Trademarks and the Internet Domain System, 4 J. Small and Emerging Bus. L. 149, 151 (2000).
33. "Cyber-squatting" generally describes the practice of registering Internet domain names for the purpose of offering to resell it to a trademark holder or other person or entity with a genuine interest or right in the name in order to reap a profit. See the non-legal definition offered in Wikipedia at: http://en.wikipedia.org/wiki/Cybersquatting. "Typo-squatting" (also known as "typo-pirating", "typo-trolling" or "URL hijacking") is a variant of cybersquatting whereby a deliberately misspelt web site address is registered that leads to an alternative address owned by a cybersquatter. It arises out of the fact that users performing searches on a web browser address bar by typing in domain name or through a search engine may make mistakes when typing in their search targets or terms respectively (e.g. "Goggle.com" instead of "Google.com"). This can arise quite often particularly for popular names that are susceptible to genuine typographical mistakes. The purpose is the same, which is to induce an interested person or entity to either buy over the name or to pay for it not to be used.
34. See the non-legal defi nition offered in Wikipedia at: http://en.wikipedia.org/wiki/Typosquatting.
35. See also, Steven R. Borgman, The New Federal Cybersquatting Laws, 8 Tex. Intell. Prop. L.L. 265, 266 (2000). The author lists five variants of cybersquatting: Registering another's trademark as a domain name; registering a similar misspelling of another's trademark as a domain name; registering another's trademark as a domain name with an extension other than .com; registering a domain name which consists only partly of another's mark; and registering another person's name as a domain name.
36. A case example of a dispute involving typo-squatting that was ultimately decided in favour of the complainant is the WIPO Administrative Panel Decision of Amazon.com, Inc. v. Lorna Kang a/k/a Yong Li a/k/a Mahmoud Nadim a/k/a The Data in Bulkregister.com's WHOIS Database is p a/ k/a Amjad Kausar, D2005-0635 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2005/ d2005-0635.html. The complainant, Amazon.com Inc., successfully sought the transfer of the following misspellings of its name by the registrant: Amadon.com, amazaon.com, amoazon.com, amoson.com, amozen.com, amozom.com, amozone.com, azazon.com, wwamazon. com, wwwamozon.com.
37. A generic top-level domain (gTLD) is the last portion of an Internet domain name while second-level domain names (SLDs) will be used to describe anything in between for the purposes of this article. For example, for "www.Google.com", .com is the TLD and Google is the SLD. In the case of a domain name which ends with a country-specific suffix, the TLD is considered "country coded" (ccTLD) to indicate the country of origin of an Internet address. For the lists of currently existing TLDs, see the Internet Assigned Numbers Authority (IANA) web site at: http://www.iana.org/domain-names.htm. SLDs usually consist of the identifiable name of the person or entity concerned and hence it is at this level that the issue arises as to ownership rights.
38. For more, see Marshall Leaffer, Domain Names, Globalization and Internet Governance, 6 Ind. J. Global Legal Stud. 139, 144 (1998). For the purposes of this paper, a gSLD refers to a generic second-level domain that comes before a ccTLD (e.g..com.us or .co.uk).
39. E.g., consider the controversies surrounding the creation of the .xxx and .tel TLDs. See Anick Jesdanun, Internet Agency Considers Domain Name to Oragnize Contacts, Union Tribune, 14 April 2006, available at: http://www.signonsandiego.com/news/tech/ 20060414-1230-contactdomainname.html. Rights ownership and protection is becoming more and more unmanageable and expensive, and accurate searches are becoming more and more complicated and difficult. Hence, there is a constant need for greater innovations in search engine technology and user sophistication and skills upgrading.
40. For more, see Navin Katya, The Domain Name Registration .BIZness: Are We Being "Pulled Over" on the Information Super Highway?, 24 Hastings Comm. & Ent. L.J. 241 (2002).
41. The function and purpose of the UDRP will be explained in greater detail in Part 2 of this article.
42. The conflict of interests is complicated when it occurs in relation to the same individual or entity whether due to his online persona/role or the time/purpose of registration. For instance, an individual may want to be accorded protection and a strong protective regime to protect his personal name as a domain name from use by others. At the same time, if his name is common and another registrant has already been using it, it will be in his interest to have a less expansive protective regime so that he can likewise register a similar domain name (e.g. perhaps with a variation in the SLD or with a different TLD) so as to become in effect a concomitant or concurrent user (this is particularly so as the uniqueness of a domain name diminishes with the proliferation of variations in the use of language or permutations). Another example involves a user with differing interests due to different roles online - an individual may want to be allowed to use his personal name as a domain name as a content provider even though it is widely registered but yet be able to navigate the Internet effectively to fi nd what he wants, as a web surfer.
43. See Nelmark at Note 3, 3-4. The author further distinguishes virtual property from intellectual property as not requiring creative effort (which is a requirement for all traditional forms of intellectual property), low in cost (as compared to the building of goodwill in trademarks) and easy to acquire (through mere registration rather than stringent examination processes like that required for trademark and patents). Virtual property arose out of economic interests and the effort is mostly in the technological infrastructure. Hence, the considerations for apportionment of rights are very different and the weights factored in the balance of interest scale must be recalibrated and reassessed.
44. Search engines and the accuracy of URLs and search results play a major part in this. For search engine providers like Google and Yahoo!, there is the continuous effort to change search indicators to produce more accurate search results - it has even led to sanctions imposed for some web site administrators who deliberately manipulate the search function system such as the incident involving the German BMW web site and Google. See Keith Regan, Google Says BMW Manipulated Search Rankings E-Commerce Times, 2 June 2006, available at: http://www.ecommercetimes.com/story/48701.html. It is to be noted that the use of keywords is another more nebulous form of virtual property that is even more diffi cult to control and yet concerns interest parties tremendously as can be adjudged by the cases relating to use (and misuse) of metatags, keyword stuffing and other techniques used to direct valuable Internet traffic to a web site.
45. For more, see Jeffrey J. Look, The Virtual Wild, Wild West (WWW): Intellectual Property Issues in Cyberspace - Trademarks, Service Marks, Copyrights, and Domain Names, 22 U. Ark. Little Rock L. Rev. 49 (1999), where the author canvassed a cross-section of the many intellectual property issues that have arisen relating to the Internet of which domain name is only a part, albeit a signifi cant portion, of the debate.
46. The balancing exercise is also more nuanced and multifaceted given that the parties and interests differ from traditional forms of intellectual property, which are often bifocal (involving only 2 opposing parties and causes) and involves a strong commercial component (with some exceptions, such as the protection of moral rights in copyright law). In fact, as stated in Note 22, the same party may have opposing interests within itself depending on the circumstances and considerations in question.
47. In the case of a domain name which ends with a country-specific suffix, the TLD is considered "country coded" (ccTLD) to indicate the country of origin of an Internet address.
48. The breakdown of the categories available for registration in Singapore currently consists of the following categories: (a) com.sg for commercial entities; (b) .org.sg for non-profit organisations which is registered or about to be registered with the Singapore Registry of Societies; (c) .net.sg for Singapore Internet network providers; (d) .gov.sg for Singapore Government bodies or agencies; (e) .edu.sg for educational institutions registered with the Singapore Ministry of Education; (f) .per.sg for personal web sites; and (g) .sg for all with a valid Singapore postal address. For more details, see the Singapore Network Information Centre web site at: http://www.nic.net.sg/sub_about/ sg_domains.html. The registry does not appear to check that the choice of gSLD appropriately represents its use and the web site content. This is a problem that permeates registries all over the world.
49. There is a more recent trend of allowing the registration of SLDs with ccTLDs (as its subdomain) without a gSLD (i.e. a pre-defi ned SLD category) in some countries including Singapore (15 September 2004), Hong Kong (26 January 2004) and the United States. This is a relaxation of the earlier preference for opening registration only to TLDs to facilitate proper distribution.
50. For ICANN on gTLDs, see the ICANN web site at: http://www.icann.org/tlds/.
51. For a list of all valid TLDs, see the ICANN web site at: http://www.icann.org/registries/top-level-domains.htm.
52. For the full list of ICANN policies that apply to the various possible types of disputes between registrants and third parties over the registration and use of domain names, see the ICANN web site at: http://www.icann.org/udrp/.
53. See Jeffrey M. Samuels and Linda B. Samuels, Internet Domain Names: The Uniform Dispute Resolution Policy, 40 Am. Bus. L.J. 885, 886-895 (2003). The authors established the background on domain names, traced the UDRP's development and explained the process for resolving domain name disputes.
54. For information maintained by the Internet Assigned Numbers Authority (IANA) on ccTLDs, see the IANA web site at: http://www.iana.org/cctld/ cctld.htm.
55. E.g. to check for identical domain names that have previously been registered, but typically not to cross-check with the trademark records of the national intellectual property agency or with the companies and businesses bureau for identical or similar registrations.
56. For the full list, see the ICANN web site at: www.icann.org/udrp/ approved-providers.htm.
57. The challenger bears the burden of proof for all the elements under paragraph 4(a) (see the last sentence of paragraph 4), and hence is also required to prove lack of any and all rights or legitimate interests (not just illegitimate interests). Paragraph 4(c) lists the non-exhaustive genuine (hence the time factor) evidences of rights to and legitimate interests that a registrant can use in anticipation of and in response to such a challenge. For instance, under this 'shield' or "safe harbour" provision (and most NDRPs have an equivalent provision), if the registrant can demonstrate a bona fide plan to use the domain name for a legitimate purpose, show a relationship between the domain name and the registrant's name, or a bona fide non-commercial use for the domain name, the registrant should prevail in the dispute.
58. Paragraph 4(b) lists the non-exhaustive evidences of registration and mala fide uses.
59. For a useful list of country-by-country data on the governance and administration of ccTLDs, see the ccTLD Governance Project web site at: http://www.cctldinfo.com/country.htm. Links are also provided in the web site to the relevant administrative agency for ccTLDs in each listed country. However, it must be noted that the list is not comprehensive.
60. For an overview of the Canadian Experience, see Vincent-Joel Proulx, Borrowing From Our Common Law Cousins: American and British Influences on the Merger of Canadian Trademark and Internet Domain Name Laws, 22 Ariz. J. Int'l & Comp. Law 505 (2005).
61. It first began as Advanced Research Projects Agency Network (ARPANET) developed in the 1960s by the Advanced Research Projects Agency of the United States Department of Defence.
62. See the Neustar Inc. web site at: http://www.nic.us/index.html. The relevant documentation can be found at the subdomain: http://www.nic.us/ policies/index.html. Neustar Inc. has formal relations with the United States Department of Commerce (DOC) and functions pursuant to a contract with the DOC. The DOC has final authority on the structure and the policies of the ccTLD and can terminate its contract with Neustar Inc. if the latter fails to perform its duties adequately.
63. See e.g. Playboy Enterprises, Inc. v. Netscape Communications Corp. 354 F.3d 1020 (9th Cir. 2004), where the defendant linked advertisements to the plaintiff's trademarked terms "playboy" and "playmate";
64. and Brookfield Communications, Inc. v. West Coast Entertainment Corp. 174 F.3d 1036 (9th Cir. 1999), where the plaintiff's trademarked term was used in the defendant's metatag to attract traffic.
65. There are already many articles written on the intersection and development of trademark and related laws to deal with domain name issues in the US and they shall not be considered in greater detail in this paper. For more, see e.g. Neil L. Martin, The Anticybersquatting Consumer Protection Act: Empowering Trademark Owners, But Not the Last Word on Domain Name Disputes, 25 J. Corp. L. 591 (2000), where the author compared US trademark law to the ACPA;
66. Jason M. Osborn, Effective and Complementary Solutions to Domain Name Disputes: ICANN's Uniform Domain Name Dispute Resolution Policy and the Federal Anticybersquatting Consumer Protection Act of 1999, 76 Notre Dame L. Rev. 209 (2000), where the author compared the UDRP to the ACPA;
67. and Gregory B. Blasbalg, Masters of Their Domains: Trademark Holders Now Have New Ways to Control Their Marks in Cyberspace, 5 Roger Williams U. L. Rev. 563 (2000).
68. U.S.C. Generally trademark infringement in the US is found on the basis of "commercial use" and "causing consumer confusion"; or "unfair competition" under the common law for unregistered trademarks.
69. U.S.C. §1125 (c).
70. U.S.C. 1§125(d).
71. It was introduced as the Domain Name Piracy Prevention Act of 1999 (Senate Bill No. 1461). The ACPA was passed as an amendment to the Lanham Act by President Clinton on 29 November 1999. It remains within the trademark umbrella with its commercial use requirement and largely protects trademark owners. However, it does allow parties without trademark rights, such as individuals whose personal names are registered as domain names to challenge a domain name registration. On the other hand, the UDRP appear, on paper at least, to offer greater protection only to trademarks holders. Compare 15 U.S.C. §1129(1) (which states that "any person who registers a domain name that consists of the name of another living person... shall be liable") to the UDRP paragraph 4(a)(i) (which requires the complainant to "specify the trademarks or service marks on which the complaint was based"). Trademark owners continue to enjoy greater protection and more favourable outcomes than other interest parties, including where there are conflicting claims (and legitimate interests) between the two. For more, see Gregory B. Blasbalg, Masters of Their Domains: Trademark Holders Now Have New Ways to Control Their Marks in Cyberspace, 5 Roger Williams U. L. Rev. 563, 600 (2000), where the author stated that by creating additional rights for domain names under the ACPA, the US legislature could be offering an additional weapon to trademark owners to stifle Internet speech and commerce;
72. K.J. Greene, Abusive Trademark Litigation and the Incredible Shrinking Confusion Doctrine - Trademark Abuse in the Context of Entertainment Media and Cyberspace, 27 Harv. J.L. & Pub. Pol'y 609, 624-625 (2004), where the author also argued against extending personality-based rights to corporate entities beyond that given to living individuals;
73. Jian Xiao,AI. Intellectual Property: C. Trademark: 1. Domain Name: a) Federal Law: The First Wave of Cases under the ACPA, 17 Berkeley Tech. L.J. 159 (2002), for a look and critique of the US cases determined under the ACPA until 2002;
74. and Hal I. Kaplan, Trademark Law and the Internet-When Registering Domain Name, Bad Faith Use of Another's Name Leads to Severe Consequences, Syracuse L. & Tech. J. 3 (2002).
75. U.S.C. §2252B.
76. The TDNA, together with the Prosecutorial Remedies and Other Tools to end the Exploitation of Children Today (PROTECT) Act of 2003 (117 STAT. 652) forbids the use of misleading domain names with the intention of attracting Internet users into viewing visual depictions of sexually explicit conduct online. See Christopher G. Clark, The Truth In Domain Names Act of 2003 and a Preventative Measure to Combat Typosquatting, 89 Cornell L. Rev. 1476 (2004). The TDNA is just one component of the comprehensive PROTECT Act of 2003. Whereas the ACPA protects distinctive or trademarked names in a civil context, the TDNA criminalizes the act of knowingly registering a misleading domain name with the intention of deceiving a person into viewing obscene materials on the WWW; and in particular its objective is to deter such deception targeting children.
77. For more, see Lisa D. Davis, Trapping "Mousetrappers" with the Truth in Domain Names Act of 2003: The Constitutionality of Prohibiting "Typosquatting" on the Internet, 57 Ala. L. Rev. 521 (2005)
78. and Michael Honig, The Truth About The Truth In Domain Names Act: Why This Recently Enacted Law Is Unconstitutional, 23 J. Marshall J. Computer & Info. L. 141 (2004).
79. It has been noted that traditional trademark laws are inadequate as they currently stand due to the onerous burden of proof, in particular the requirements of commercial usage and consumer confusion that may not apply to cyber-squatters who make no commercial use of the web site other than to reserve the name for ulterior purposes, mostly like, for profit by sale or rent. Other applicable trademark laws including anti-dilution statutes fare a little better than traditional trademark laws, but they also face other problems in relation to domain names such as the commercial usage requirement (which, although expanded to cover cyber-squatting activities, remains a requirement that can be problematic for interest parties whose concerns go beyond the sphere of commerce). For more, see Scott N. Barker, Famous.Com: Applying the FTDA to Internet Domain Names, 22 Dayton L. Rev. 265 (1997).
80. See Tamarah Belczyk, Domain Names: The Special Case of Personal Names 82 B.U.L. Rev. 485, 494-505 (2002). The author examined the options in the US and the mechanics of each of the methods for the resolution of domain name disputes as well as the interaction between the law and private arbitration.
81. See John Papavasiliou, Using the Federal Trademark Registration Process to Create a Broader Yet Fairer Solution to Domain Name Conflicts 11 U. Balt. Intell. Prop. L.J. 93, 111-112 (2003). The author noted that despite the slew of US trademark legislation such as the FTDA and the ACPA as well as the UDRP (where applicable), results remain mixed and cybersquatters can still succeed in registering domain names of "nonfamous or non-distinctive marks" or by registering "catchy names" that potential registrants intend to use or are likely to use. The victims without recourse are usually the small businesses and individuals that are entering the WWW. They also face the threat of trademark owners that can take their domain names away from them under the ACPA.
82. See Gary Soo, The New Regime for Domain Name Protection in China, 41 ABLR 3 (2003) for an overview of the Chinese regime until 2002. As will be noted, the so-called 'new regime' has since undergone yet another significant transformation.
83. See also, Hong Xue, The Voice of China: A Story of Chinese-Character Domain Names, 12 Cardozo J. Int'l & Comp. L. 559 (2004). The author traces the development of the Chinese domain name management system from 1996 when the Leading Panel for Informationization Work (LPIW) was established by the then Premier of China to promote the development and use of the Internet, signaling a new policy towards the Internet and the cn domain for greater usage.
84. In relation to the situation in Taiwan as of the turn of the millennium, see Lee and Li, Electronic Commerce Law, 27 ABLR 43, 45 (2000).
85. For an overview of the Japanese regime, see Yukozo Yamasaki and Naoto Sugiyama, Resolving Domain Name Disputes in Japan, 33 ABLR 57 (2001)
86. John Kaninuki and Yasuyoshi Goto, Electronic Commerce Law, 30 ABLR 33, 35 to 36 (2000)
87. and Brent T. Yonehara, Landoftherisingsun.co.jp: A Review of Japan's Protection of Domain Names Against Cybersquatting, 43 IDEA 207 (2003), where the author reviewed Japanese domain name and cybersquatting law and compared it with the US regime. The Japan Registry Services Co. Ltd. (JPRS), a private non-profit corporation, has administered jp ccTLD registrations since March 2002. The Japan Network Information Center (JPNIC), a government agency, manages and develops the Japan Domain Name Dispute Resolution Policy (JPDRP).
88. See China Internet Network Information Center (CNNIC), Memorabilia of the Development of the Internet in China, available at http://www.cnnic.net.cn/timeline.shtml.
89. See the CINNIC web site at: http://www.cnnic.net.cn/en/index/. The relevant documentation can be found at the subdomains: http://www.cnnic.net.cn/en/index/0L/index.htm and http://www.cnnic.net.cn/en/index/0P/index.htm.
90. The original version of the policy together with the rules of registration and procedural rules for dispute resolution were issued on 25 September 2002. See Mo Zhang, Governance of Internet Domain Names Against Cybersquatters in China: A Framework and Legal Perspective, 26 Hastings Int'l & Comp. L. Rev. 51, 51-60 (2002), for the history and two-layered administrative framework of domain name governance in China. The laws against cybersquatters in China are not as extensive as that in the US and consist of certain amendments to the Trademark Law and the Unfair Competition Law.
91. Ibid. at 65-66.
92. Similarly in Japan, where the Trademark Law and Unfair Competition Law contain amendments to deal with cybersquatting and where there are other additional defences put in place under the registration policy to deter cybersquatting. These include a "presence" requirement, a one year deadline to use a registered domain name (e.g. by putting up a functioning web site) and the one-domain per-registrant policy. See Yonehara at Note 49, 220-224.
93. The Japanese Arbitration Center for Intellectual Property (JACIP) is the arbitration body authorized by the JPNIC to handle domain name disputes. See Yamasaki Law Office, New Developments in Japanese Law: Trademark Issues on the Internet, available at: http://www.yamasaki-law.com/ practice5.htm.
94. The protection of "civil rights or interests" is noticeably a broader-based protection than the one accorded under the UDRP, the USDRP and other similar policies which extend protection only to "trademark or service mark" rights holders. This distinction and difference in treatment will be further considered under Part 3 where the issue of protectable rights will be considered in greater detail. However, it is to be noted that so far it appears that individuals cannot register domain names under .cn. See Xue Hong, Domain Name Dispute Resolution In China: A Comprehensive Review, 18 Temp. Int'l & Comp. L.J. 1, 7 (2004)
95. and Mo Zhang at Note 51, 58.
96. In summary, the three significant changes brought about by the 2006 Policy are as follows: (1) Time limitation - Domain name dispute resolution bodies will no longer accept complaints involving domain names that have been registered for two or more years; (2) Definition of "bad faith" - The mere act of offering to sell a disputed domain name with a view to obtain "improper benefits" will no longer be considered an act of "bad faith". To constitute "bad faith", the offer to sell, license or transfer the domain name must be made to the complainant or its competitor; and (3) Legitimate use defense - The following may qualify as the registrant's legitimate use of the domain name: (a) good faith use of the domain name or corresponding name (which presumably is a trademark, enterprise name/trade name or a personal name) by the registrant during the course of providing goods or services; (b) the registrant's domain name has acquired a certain degree of fame even though the registrant's trademark has not yet been registered in China; and (c) reasonable use or noncommercial use of the domain name by the registrant, without any intent to obtain commercial benefit or cause consumer confusion.
97. The previous version of the policy did not have any time bar for the bringing of complaints. Since 17 March 2006, trademark owners have to go to court to try to recover pirated registrations of .cn and Chinese language domain names that have been registered for more than two years.
98. However, this may have the adverse effect of encouraging complaints to be heard in the public courts which will, contrary to the suggestions given earlier, cause a problem of duplicity in dispute management systems and increase time and costs. If there should be any limitation period imposed, that should be made consistent for any and all administrative and legal recourse. If that is the case, perhaps a two year period is too short and something like a six year period, which is common in many common law countries for most civil cases, may be more reasonable and give legitimate rights holders more time to react. See also, The Supreme People's Court, Explanations to Several Questions on Application of Law in Civil Actions Concerning Internet Domain Names available at http://www.all-patent.com/mall/gallery/ laws&rules/interpatention.asp.
99. The previous version of the policy had less stringent requirements concerning proof of bad faith. The original provision reads as follows: "Any of the following circumstances may be the evidence of the registration and use of a domain name in bad faith: (i) the disputed domain name holder has registered or acquired the domain name for the purpose of selling, renting or otherwise transferring the domain name to obtain unjustified benefits; (ii) the disputed domain name holder registered the domain name in order to prevent the owners of the name or mark from reflecting the name or the mark in a corresponding domain name, provided that the domain name holder has been engaged in a pattern of such conduct; (iii) the disputed domain name holder has registered or acquired the domain name for the purpose of damaging the Complainant's reputation, disrupting the Complainant's normal business or creating confusion with the Complainant's name or mark so as to mislead the public; (iv) other circumstances which may prove the bad faith."
100. There are also some changes to the wording in Articles 9(ii). However, the significance of the changes has yet to be shown upon a literal reading alone. For example, the new Article 9(ii) replaces "engaging in a pattern of conduct" with "on many occasions", which arguably appears to mean the same thing.
101. Contrast this to the provisions in the UDRP and other NDRPs as well as the jurisprudence arising from the application of similar bad faith provisions. See e.g., Adam Silberlight, Domain Name Disputes Under the ACPA in the New Millennium: When Is Bad Faith Intent to Profit Really Bad Faith and Has Anything Changed with the ACPA's Inception?, 13 Fordham Intell. Prop. Media & Ent. L.J. 269 (2002).
102. It means that evidence obtained by means of anonymous approaches will no longer be sufficient to prove bad faith. Instead, evidence of offers to sell, hire or assign, directed at the right owner or a competitor will be required.
103. On the other hand, it may still be argued that the non-exhaustive nature of the provision leaves the possibility open for sufficient evidence to show bad faith on the registrant's part based on the facts and circumstances of each case. In other words, the dispute resolution panel maintains its discretion over the case before it.
104. The original provision reads as follows: "If a Complainant files Complaints against multiple domain names owned by the same domain name holder, the Complainant or the Respondent may request that the Dispute Resolution Service Providers consolidate the disputes before a single Panel. The Panel may determine whether to make the consolidation."
105. It must be done before receipt by the respondent of the complaint, ostensibly to prevent the registrant from manufacturing circumstances to support its case after notification and an awareness of such an action. The actual wording of the 2006 provision is as follows: "Before receiving the complaint, any of the following circumstances may be evidence of the rights to and legitimate interests in the domain name: (1) Your use of the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (2) You have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; (3) You are making a legitimate noncommercial or fair use of the domain name, without intent of or commercial gain to misleadingly divert consumers."
106. After 17 March 2006, rights holders will have to be constantly vigilant and conduct periodical domain name searches to ensure that domain name complaints are filed in a timely manner and before the expiry of the two year period from the registration of an objectionable domain name. A careful reassessment of the evidence of bad faith and the interests acquired by the registrant in the disputed domain name must also be made taking into consideration the peculiarities of the new CNDRP as compared to other policies particularly the UDRP. Registrants, on the other hand, must also take stock of their rights to a domain name by ensuring that their actions, intentions and interests do not give rise to a potential attack under Articles 9 and 10.
107. However, it could be looked at as a potential counter-balance to expanding the rights holders who are eligible to challenge existing registrations if that proposal, which is submitted earlier in this paper, is also taken on board. Interestingly, Article 8 is still left deliberately vague when it comes to the rights holder, with the Chinese policy retaining the reference to "civil rights or interests", which is broad enough to include rights other than intellectual property (particularly trademark and brand owner) rights. This may be parlayed into or interpreted as including other rights such as an individual's right or interest in the protection of personal data and privacy as well as reputation (having reference to the Chinese law on these rights and interests).
108. For an overview of the European perspective, see Rodney A. Myer, Domains Without Borders: Reconciling Domain Name Dispute Resolution Policies and Trademark Rights Between the United States and the Nations of the European Union, 20 Penn St. Int'l L. Rev. 415, 425-430 (2002).
109. See the Nominet web site at: http://www.nic.uk/. The relevant documentation can be found at the subdomain: http://www.nic.uk/ disputes/. The contracts for registration are available at the subdomain: http://www.nic.uk/disputes/terms/and the dispute resolution materials are available at the subdomain: http://www.nic.uk/disputes/drs/. Unlike, for example, Neustar Inc. in the US, the UK-based Nominet does not have formal relations with the UK government and it does not function pursuant to a contract with the government. However, a government representative sits as an observer on Nominet's Policy Advisory Board. Nominet does maintain a relationship with the UK Department for Trade and Industry.
110. Paragraph 1 of the UKDRP states that an "Abusive Registration means a Domain Name which either: (i) was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the Complainant's Rights; [or] (ii) has been used in a manner which took unfair advantage of or was unfairly detrimental to the Complainant's Rights".
111. The UKDRP is available at the subdomain: http://www.nic.uk/disputes/drs/ policy/.
112. However, it was clarified under paragraph 2 of the UKDRP that "a Complainant will be unable to rely on rights in a name or term which is wholly descriptive of the Complainant's business", which means that generic words are also not acceptable. It is interesting to note that under the link to "rights", it is stated that the rights test is "not a particularly high threshold test", and more significantly, that it does not require the existence of a "trademark (registered or unregistered)" although a trademark right will be more helpful and easier to satisfy the burden of proof. See e.g., Naomi Gross, United Kingdom: First Nominet Appeal Decision Strengthens Trademark Owners Rights in .uk Domain Names, 29 July 2002, available at: http://www.mondaq.com/article.asp?articleid=17420.
113. In fact, it is even stated that "[a] complainant's own name" can constitute sufficiently "genuine interest" to constitute a protectable right. The right must be in existence at the time of the complaint. See the subdomain: http://www.nic.uk/disputes/drs/Rights/.
114. Nominet's policy is drafted in terms of the "abusive registration". This is not the same as the "bad faith" test found in the ICANN policy and hence the Nominet policy can possibly apply to cases other than straightforward domain name piracy or cybersquatting cases.
115. See paragraph 2(c) of the UKDRP. Unfortunately, a perusal of the link to "legal issues", for instance, is not particularly illuminating on the elements. Perhaps because of this, Nominet still recommends the use of registration agents. However, on the positive side, the decisions and appeals are published and publicly accessible.
116. The acceptable evidence is only of actions taken before the respondent becomes aware of the complainant's cause for complaint, presumably so that the respondent cannot and will not be in the position to deliberately take action that can support its case.
117. For a list of the countries that use the domain name dispute administration services of WIPO, see the WIPO Domain Name Dispute Resolution Service for ccTLDs web site at: http://arbiter.wipo.int/ domains/cctld/index.html.
118. Under this policy, parties must submit an appeal within five days after the decision has been rendered. Once an appeal has been submitted, a panel of three of Nominet's experts will rule on it as soon as possible. The appeals panel considers appeals on two grounds, either on the basis that a matter needs to be re-examined on the facts or that procedure has not been followed correctly. Appellate panel decisions are published, but they do not serve as binding precedent for future decisions and do not affect any decisions previously made under the Dispute Resolution Service. Experts are, however, allowed to consider the persuasive value of appellate rulings in making future decisions. During the appellate process, both parties remain free to submit their dispute to a court of competent jurisdiction. The primary advantage of this model is its focus on correcting wrong decisions and policy misinterpretations. However, it still does not seem to offer a solution to the problem of divergent precedents for similar cases that plague non-binding dispute resolution mechanisms. Under the Nominet dispute resolution model, even with the potential for appellate review, the absence of binding precedent would still allow panels to resolve similar cases in different ways. While the losing party in such cases could appeal the decision, there is also no guarantee that the appellate body itself would reach the same decision each time it hears an appeal on cases with the same facts and issues.
119. See the Australian Domain Name Registry at http://www.auda.org.au/ for all the relevant documents.
120. This position espoused by Australia and Ireland appear to be gaining support and is reflected in other NDRPs as well, including for example the United Arab Emirates' NDRP.
121. See the Irish Domain Name Registry: http://www.iedrie/ and http://www.domainregistry.ie for the text of the registration agreement and the dispute resolution policy.
122. In France, the registration or use of domain names infringing rights of which trademark rights is only one component may be challenged as well. See Règlement, article 1, definition of "Atteinte aux droits des tiers". See the French Domain Name Registry at: http://www.afnic.fr/ for the text of the registration agreement; and see the Centre de Médiation et d'arbitrage de Paris web site at: http://www.mediationetarbitrage.com for the dispute resolution policy and rules of procedure.
123. The Singapore Network Information Centre Pre. Ltd. (SGNIC) is the national Internet registry that, while offering other Internet-related information services, also administers the registration of .sg domain names. Domain name disputes are managed by the dispute resolution mechanism, which is the Singapore Domain Name Dispute Resolution Service (SDRP Service) run by the SDRP Secretariat and jointly operated by the Singapore Mediation Centre (SMC) and the Singapore International Arbitration Centre (SIAC). The framework for dispute resolution is the Singapore Domain Name Dispute Resolution Policy (SDRP). See the SGNIC web site at: http://www.nic.net.sg/index.html.
124. The relevant documentation can be found at the subdomains: http://www.nic.net_sg/sub_policies_agreement/index.html
125. and http://www.nic.net.sg/sub_domain_disputes/sdrp.html.
126. As noted, the SGNIC is the organization responsible for the registration and administration of the .sg domain names in Singapore., It is owned by the Infocomm Development Authority of Singapore (IDA), a government information .technology and telecom agency. For more information on its mission, see the subdomain: http://www.nic.net.sg/sub_about/ mission.html. The SGNIC functions through a list of accredited registrars under the Registrar Accreditation Scheme for the SLDs with the .sg ccTLD while maintaining contn4 of the central .sg registry.
127. See the subdomain: http://www.nic.net.sg/sub_domain_registrations/ introduction.html.
128. The SDRP and other relevant documents including the SDRP Rules and Supplemental Rules are available at the subdomain: http://www.nic.netsg/ sub_domain_disputes/sdrp.html. Like most registrars, SGNIC only checks for existing identical domain name registrations and does nt screen domain names applications against entries on the register of companies and businesses (managed by Accounting and Corporate Regulatory Authority (ACRA)) or the register of trademarks (kept by the Intellectual Property office of Singapore (IPOS)).
129. See also, Phang Hsiao Chung, Resolving Domain Name Disputes - A Singapore Perspective, 14 SAcLJ 85 (2002), where the author analyses the complications relating to domain name litigation.
130. For the experiences of some other South East Asian countries, see Areeya Ratanayu, Cybersquatting in Thailand: The Thai Trademark Act and the Uniform Domain Name Dispute, Resolution Policy, 1 Buff. Intell. Prop. LJ. 203 (2002)
131. and Adeline Wong and Wong Shou Sien, Electronic Commerce Law, 30 ABLR 37, 41 (2000). The registration of .my ccTLD is administered by the Malaysian Network Information Centre (MYNIC). MYNIC performs general checks on the domain name to ensure that it does not conflict with a prior registered domain name but does not investigate the bona fides of an application. There is also no crosschecking against the registries of companies and businesses or trademarks register. The MYDRP and other documents are available at the subdomain: http://www.mynic.net.my/. It is also to be noted that paragraph 4(c)(iii) does not appear in the Philippines' NDRP.
132. However, the inclusion of a "name right" is not followed by a concomitant adoption of publicity or personality rights under its common law.
133. The cases are available online Singapore Academy of Law web site at: http://www.disputemanager.com.sg/SDRP/what.htm.
134. The Hong Kong Domain Name Registration Company Limited (HKDNR) is a subsidiary of the Hong Kong Internet Registration Corporation (HKIRC) and it is responsible for the administration of Internet domain names with the .hk ccTLD. See the HKDNR web site at: http://www.hkdnr.hk/hkdnr/ index.jap.
135. The relevant documentation can be found at the subdomains: http://www.hkdnr.hk/eng/legal/registration_agreement.html,
136. http://www.hkdnr.hk/eng/legal/dispute_resolution_policy.html
137. and http://www.hkdnr.hk/eng/legal/rules_of_procedure.html.
138. See also the HK SAR Digital 21 Strategy site on e-commerce and Internet domain names and IP Addresses, which contains documents on the setting up of the DNS in HK for the .hk ccTLD at the government web site at: http://www.info.gov.hk/digital21/eng/itstructure/dnip_main.html.
139. Complainants are invited to consider settling dispute through mediation. If the parties do not agree to mediation or if mediation does not lead to a settlement of the dispute, then the Administrative Panel will decide the dispute. SGNIC will then implement the decision made by the Administrative Panel.
140. Appointed under paragraph 8 or 18 of the procedure. See also paragraph 5 of the policy read with paragraph 7 of the procedure. See further the subdomain: http://www.nic.uk/disputes/drs/mediation/. If mediation is not successful, then the parties will proceed to an expert determination (paragraph 7(a) of the policy) in accordance with the procedure.
141. For more on the procedure, see the Dispute Resolution Service Procedure available at the subdomain: http://www.nic.uk/.disputes/drs/procedure/.
142. See Xue Hong at Note 52, 34-50, for an overview of the domain name dispute process in China;
143. and M. Scott Donahey, The New Dispute Resolution Procedures for ".cn" are Far-Reaching, 7 Electronic Commerce & Law Reports (BNA) No. 47, 1204 (2002).
144. see Mo Zhang at Note 51, 67.
145. Recalibration will be affected by and based upon the weighing of these factors and how these countervailing interests should be equitably balanced.
146. Corporations and individuals seeking publicity will logically prefer domain names that correspond to their name or trademark, making it easier to attract traffic to their web site, for potential clients to find their web site and in order for their message to be communicated to the desired audience.
147. See also, Luke A. Walker, I. Intellectual Property: C. Trademark: 3. Domain Name: A) Dispute Resolution: ICANN's Uniform Domain Name Dispute Resolution Policy, 15 Berkel Tech. LJ. 289, 308-309 (2000). The author calls this category "nonconsumer users" and it is highlighted that sometimes inter-linkages can occur between categorizations such as consumer use cum informational exchange and entertainment portal (i.e. a web page can be used for more than one main purpose).
148. Alternatively described as "concurrent use", "coincidental use" and "peaceful coexistence". See Philip J. Greene, Questioning Faith - An Fxamination of the Fair Use Defense Within Internet Domain Name Disputes, and the Role of Good or Bad Faith, 4 Loy. Law & Tech. Ann. 45, 52 (2004).
149. See Greene at Note 91, 52. The author examined select cases involving fair use and its inter-linkage with good or bad faith determination. The examples used illustrate how fair use can feature in a subjective determination on motive and intention in domain name disputes, just as the latter can feature in a fair use defence under trademark cases.
150. Utilized by the Beijing Higher People's Court in defence of a respondent's right to use a domain name disputed by a complainant. See Beijing Tide Elec. Group v. The Procter & Gamble Co., Gaozhi Zhongzi, No. 27 (Beijing Higher People's Court, 2001), cited in Mo Zhang at Note 51, 70-73.
151. The concepts of fair dealing or fair use under the DNS (as the case may be) should resemble that used under the intellectual property regime, for example, allowing for criticism, parody and satire. There have been criticisms that the scope of such protection or defence has been too narrowly applied or even ignored in domain name cases. See Blackman at Note 99, involving an examination of the conflict between tarnishment of trademark and free speech. This is another good reason in support of a comprehensive set of guidelines for determining legitimacy of interest and good or bad faith.
152. Some Internet users prefer to guess a web site's domain name by typing on the address bar rather than by using the services of a search engine. This could be directly and adversely affected by the increasing number of inapplicable search results from performing searches on search engines due to the increasingly sophisticated use by web site owners or content creators to overcome the search integrity or the accuracy of results from searches performed on search engines.
153. Concurrent user status can come under the 'defence' of legitimate interest and good faith, which overlap to many extent, although the former is the result of a more objective analysis while the latter involves a more subjective determination in terms of proof. Hence, is there a real need for the two distinct elements or can they possibly be folded into one?
154. One must not lose sight of the fact that the DNS debate is held against the backdrop of the Internet, which is essentially a network for global communications and a neutral medium (i.e. non-content or purpose specific) for informational flow. As much as it serves the purposes of trademark holders and business entities for advertisement and e-commerce, it serves a much larger purpose and a wider array of objectives including providing a platform for "individual citizens of limited means [to] speak to a worldwide audience on issues of concern to them." Am. Civil Liberties Union v. Reno, 929 F. Supp. 824, 881 (E.D. Pa. 1996), aff'd, 521 U.S. 844 (1997).
155. One should also take into consideration the many other 'privileges' that are already accorded to these traditional rights holders under the current DNS such as sunset clauses and so on when balancing interests.
156. However, see Daniel T. Janis, Internet Domain Names and the Lanham Act: Broadening Trademark Definitions and Their Implications for Speech on the Web, 25 Colum. J.L. & Arts 21 (2001).
157. The author highlighted the dangers of expanding trademark laws beyond its jurisprudential foundation and basis in the context of domain name protection (specifically relating to the erosion of free speech). This in turn supports the general arguments for clearly viewing and treating domain name rights as separate from intellectual property, particularly trademark, rights. Extensions of rights and rights owners of domain names for the purposes of registration and challenge (under the first element) should not stem from or affect trademark laws but rather be considered 'new rights' relevant and related only to the DNS. Hence, the suggestions in this paper to make consistent changes directly to the first element of a domain name challenge under the UDRP and NDRPs rather than to rely on merely extending the interpretation of its current wording to cover such rights and owners when the language do not support such interpretation.
158. See also Victoria Holstein-Childress, Lex Cyberus: The UDRP as a Gatekeeper to Judicial Resolution of Competing Rights to Domain Names 109 Penn St. L. Rev. 565 (2004). The author sounds the reminder for revisiting first principles of rights protection and warns of the "historic limitations on trademark rights" particularly when it is applied to the DNS. "Disputes between these groups over the right to use a particular domain name are nearly indistinguishable from traditional brick and mortar cases between trademark interests and consumer advocates".
159. Ibid. at 606.
160. For more, see Deanna L. Kendall, The Domain Name Game: Applying Trademark Law to an Internet Tug of War, Comp. L. Rev. & Tech. J. 1 (1999), an earlier article on the uneasy application of traditional trademark laws to DNS;
161. and Keith Blackman, The Uniform Domain Name Dispute Resolution Policy: A Cheaper Way to Hijack Domain Names and Suppress Critics, 15 Harv. J. Law & Tec 211 (2001), where the author argued that the UDRP favours trademark owners over legitimate domain name registrants by over-extending their rights and supporting reverse domain name hijacking.
162. In the dispute over the domain name of Jimi Hendrix, the respondent argued that "a word with a" .com" on the end was not identical to a word without .com on the end." However, the panel took the position that the suffix .com was only a mere description of the registry service. As such, it examined only the second level domain, "jimihendrix", to determine whether the domain name was identical or confusingly similar.
163. See Experience Hendrix, L.L.C. v. Hammerton and The Jimi Hendrix Fan Club, Case No. D2000-0364 (WIPO Administrative Panel Decision) at paragraph 7, available at: http://arbiter.wipo.int/domains/decisions/ html/2000/d2000-0364. html. Other panels have found that there were similarities between SLDs despite innovative attempts to make minor changes to a name such as including a common or generic term, adding or using different punctuation, typography or by misspellings.
164. See e.g. Reuters Ltd. v. Global Net 2000, Inc., Case No. D2000-0441 (WIPO Administrative Panel Decision) at paragraph 6.6, available at: http://arbiter.wipo.int/domains/decisions/html/2000/ d2000-0441.html (involving the domain name "reutersnews.com" and the Reuters trademark)
165. The Channel Tunnel Group, Ltd. v. Powell, Case No. D2000-0038 (WIPO Administrative Panel Decision) at paragraph 6.3, available at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0338.html (on the "euro-tunnel.com" domain name and the Eurotunnel trademark)
166. and Eddie Bauer, Inc. v. White, Case No. AF-0246 (EResolution, 1 August 2000) at paragraph 6.5, available at http://www.eresolution.ca/ services/dnd/decisions/0246.htm (a decision on the "eddiebower.com" domain name and the Eddie Bauer trademark).
167. E.g., a non-educational institution using the edu gTLD or a non-corporate entity using the .com gTLD.
168. Virtual property of this type involves no creativity or intellectual and commercial investment in order to exist. Rather, as noted before, it bases its existence on technological infrastructure that is already in place.
169. See the panel decision in the Springsteen case, below at Note 157. There is constant tension between domain name owners and Internet users and a 'race' to 'sophistication'.
170. Transfer or cancellation are currently the only two options. Is there a role for interim measures and other forms of remedies such as those available through the courts like damages, specific performance and injunctions?
171. E.g., to use international and arbitration law terminology, should the decision-maker be given the power to determine ex aequo et bono (judgment based on considerations of fairness) or intra legam (judgment made within the law on considerations of existing law)?
172. Additionally, other checks are also conducted but only relating to functional and procedural matters such as the length of domain names and the use of characters within the names as well as policy concerns such as for words that are restricted, prohibited or controlled by statutes within the jurisdiction concerned (e.g. obscene, offensive, vulgar or seditious words). Unlike intellectual property registrars, they do not conduct an examination of the word or scrutinize it against any set of criteria.
173. These representations are common and substantively the same through all NDRPs. See e.g. paragraphs 2 of the USDRP and the SGDRP.
174. See Karl M. Manheim and Lawrence B. Solum, An Economic Analysis of Domain Name Policy, 25 Hastings Comm. & Ent. L.J. 359 (2003), where the author advocated for gTLD auctions, viewing domain names as private goods that are "rivalrous and excludable".
175. See also, Gideon Parchomovsky, Intellectual Property Challenges in the Next Century: Article on Trademarks, Domain Names, and Internal Auctions, U. Ill. L. Rev. 211 (2001).
176. However, in order for this to succeed, the distinction must be enforced and not become merely illusory as has become the case for .com and .net, which are often not used for their intended purposes.
177. See Avery Dennison Corp. v. Sumpton, 189 F.3d 868, 881 (9th Cir. 1999), where the court noted that for the purposes of the case, the .com and .net distinction was "illusory". The TLD will most likely impact only on a secondary level and perhaps offer a compromise solution (under conditions of usage and apportionment) as the SLD will remain the most contested portion of domain names. There are also some ways to make distinctions at this level such as recognizing cyber griping web sites ending with "sucks" or beginning with "I hate".
178. See also Orion Armon, Is This as Good as It Gets? An Appraisal of ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) Three Years After Implementation, 22 Rev. Litig. 99, 114-115 (2003), on the significance of gTLDs to UDRP paragraph 4(a)(i) analysis.
179. E.g., in Japan, the JPRS will only approve one domain name per registrant.
180. See Yonehara at Note 49, 220. Perhaps one domain name is too limiting, but that depends on whether it encompasses variations of the same words or terms as well as registrations in different gSLDs or gTLDs, or if it really refers only to a single name in whatever permutation.
181. At the same time, however, they may also give rise to other problems. For example, the expansion of gTLDs contributes to domain name proliferation.
182. It should just be a matter of administrative restructuring to make this work and in any case the administrative fees collected can be channeled to such an effort since most registries are either fully or quasi government-linked bodies.
183. ICANN will be the logical candidate given its experience and resources. This will be considered in more detail under Part 4.
184. A list method makes sense from an administrative point of view. It will greatly help in governance, regulation and enforcement. Among other things, it will help to screen out cybersquatting or other forms of domain name stockpiling, in preventing over-subscription and other potentially illegitimate uses, to encourage settlement through negotiation, conciliation or mediation (e.g. allowing concurrent use, compromises through variations made to a name, or voluntary withdrawal by the original or subsequent registrant), for statistical purposes and so on.
185. The list depository system is not new; for a example, see G. Peter Albert, Jr., Eminent Domain Names: The Struggle to Gain Control of the Internet Domain Name System, 16 J. Marshall J. Computer & Info. L. 781, 823-824 (1998). The author proposed a "master-list" system similar to that used for trademark application where domain name applicants submit a short description of general information and intended content, which can then be used to identify them and to distinguish their web site's content from others.
186. For more, see G. Peter Albert, Jr., Right on the Mark: Defining the Nexus Between Trademarks and Internet Domain Names, 15 J. Marshall J. Computer & Info. L. 277 (1997). A worldwide database may require more resources but it should not be an insurmountable task with modern technology and the cooperation of all registries. Currently the Whois database functions sort of like "white pages". It is a Transmission Control Protocol (TCP) based query/response protocol that is already widely used to identify the owner of a domain name as it maintains full records of the contact information of domain-name registrants.
187. Additionally, the HKDRP approach, which also includes as a basis for challenge the case where the domain name "does not meet the...registration requirement" (paragraph 4(a)(i) of the HKDRP), can be considered.
188. The benefit of maintaining an open list will also serve the purpose of notifying registrants of prior registrations and evidence intent, Which is relevant to a domain name challenge.
189. Because trademark law does not require uniqueness, two companies can share the same mark as long as there is no likelihood of confusion. See Carl Oppedahl, Remedies in Domain Name Lawsuits: How is a Domain Name Like a Cow?, 15 J. Marshall J. Computer & Info. L. 437, 462 (1997).
190. On the other hand, it has been noted that domain names must necessarily be unique due to its manifestation and presentation as well as to its function, which only allows routing to only one web site. See Leaffer at 143. However, this distinction may be overstated if one takes into consideration the many possible permutations that a word or term can take as a domain name by mixing and matching language, characters and symbols; including punctuations and typography; and through the use of different levels of domain and TLDs.
191. The complainant must prove that the registered domain name is either "identical" or "confusingly similar" to his protectable rights. Unlike for similar names which require the element of confusion, the "identical" requirement does not require proof of confusion because the inability to distinguish is inherent with regards to identical names. The same approach is taken in trademark laws.
192. A "trade mark" under trademark law means any sign capable of graphical representation and can consist of any one or combination of the following forms of "sign". It is sometimes defined as "any letter, word, name, signature, numeral, device, brand, heading, label, ticket, shape, colour, aspect of packaging or any combination thereof". See section 2 of the Singapore Trade Marks Law (Cap. 332).
193. The UDRP and most NDRPs require both identicalness and confusing similarity in the first element of a set of challenge conditions. However, it is of interest to note that paragraph 2a(i) of the UKDRP does not include the "confusion" prerequisite. However, it still appears to be an important consideration in determining whether an "abusive registration" was made.
194. The use of conditions is a suggestion in the latter part of this paper. See below.
195. See Graeme Philipson, Language Diversity to Continue Net's Rise as No. 1 Communication Medium, Sydney Morning Herald, 11 April 2006, available at: http://www.smh.com.au/news/perspectives/language- diversity-to-continue-riets-rise-as-no-1-communicationmedium/2006/04/10/ 1144521238556.html. In fact, ICANN has already announced plans for Chinese language domain names. The challenge is in integrative rather than divisive technology so as to ensure that the Internet remains a seamless and non-duplicitous source of information and media for communication. ICANN apparently plans to get around the problem by using a 'DNAME records' method that will use a domain alias by mapping new domain names, onto existing ones. It remains to be seen as to how this will work and whether it will succeed in retaining the 'one Internet, one community' project.
196. See also, Hong Xue at Note 49, 563-574, for more on the story of Chinese character domain names so far. The turf war over the management of Chinese character domain names was also examined in his article. This is merely a battle in the larger and ongoing war, over the, control of the DNS between the United Nations and the United States.
197. This is even more obvious when we consider the extension of domain name challenges that have already been made to (albeit famous) personal names by WIPO administrative panel decisions implementing the UDRP.
198. Hence the preferability of distinguishing domain name rights from intellectual property rights and not putting it under the intellectual property umbrella of rights. There is merely an overlapping of rights and interests.
199. The UK does extend current passing off laws for the protection of publicity rights. See below.
200. See Gary Soo at Note 49, 7-8.
201. Consider also the de-commoditization of information. Information can be bought and sold, but that may not necessarily be the case for all information and there may also be non-commercial value to 'non-information' or barriers to information, whether accurate or false, which is related to privacy and data protection rights.
202. For an analysis of the conflicts between trademarks law and domain names regime, see Susan Thomas Johnson, Internet Domain Name and Trademark Disputes: Shifting Paradigms in Intellectual Property, 43 Ariz. L. Rev. 465 (2001). The author notes that the primary reason trademarks and domain names come into conflict is that they are both used to identify individuals, companies, or other entities. Yet, while the trademarks regime is based on registration and the requirements of distinctiveness relating to goods or services, etc., domain name regime is on a free-for-all basis relegating trademark protection either to preemptive registration or challenges. Even then, there may not be comprehensive protection due to the potentially wide permutations of a trade name being used. It is thus somewhat ironic that trademarks law is still a primary requirement for a successful challenge to a domain name registration.
203. E.g., the UDRP currently makes a valid trademark an essential element of a complainant's case. This creates bad precedents. See Frank Wagner & Son, v. Cindy Mahan a/k/a Cindy Maham, an individual, Case No. D2000-0261 (WJPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0261.html.
204. It has been held in some decisions that a celebrity's name can serve as a trademark or service mark for the purposes of paragraph 4(a) if it is used to identify the celebrity's performance services See Kevin Spacey u Alberta Hot Rods, NAF Claim No. FA0205000114437;
205. cited in Carmen Electra, a/k/a Tara Leigh Patrick v. Network Operations Center, Case No. D2003-0852 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/ 2003/d2003-0852.html.
206. It is likely that the use of a name or other likeness by a celebrity to sell a movie or for other products as an indication of source, sponsorship and endorsement can be considered use in commerce. In Peter Frampton vs. Frampton Enterprises, Inc., Case No. D2002-0141 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2002/d2002-0141.html, the complain ant produced evidence that he used the name in connection with "the promotion and sale of videos, CD-ROMs, DVDs, concert tickets for live performances, advertising and promotion, clothing, including, but not limited to, t-shirts, baseball caps, as well as musical equipment, and other merchandise" for over thirty years worldwide.
207. See Tommy Lee v. Netico, Inc., Case No. D2005-0915 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/ domains/decisions/html/2005/d2005-W15.html, where the panel accepted that there was a common law trademark right from use of a professional name "in commerce", although it is not clear what that means, whether he in fact sold merchandise or provided services using his name (although it likely relates at the very least to concert sales) or merely used it in relation to his 'trade'. His trademark right was nevertheless accepted although described as "weak". In contrast, Pat Benetar proved "use in commerce" through registration.
208. See 2001 White Castle Way, Inc. v Glyn O. Jacobs, Case No. D2004-0001 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0001.html.
209. There is a distinction in what must be shown to establish that a domain name is identical to a complainant's mark and what is required to show that it is confusingly similar. The test for both is objective. To establish confusing similarity, actual confusion need not be established. Although Spike Lee appeared not to make that distinction, the panel in that decision still found that the subject's domain name was identical to his mark and was satisfied that he had met the requirements of paragraph 4(a) (i) of the UDRP.
210. See Shelton J. Lee (a.k.a. Spike Lee) v. Mercedita Kyamko, Case No. D2004-0483 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0483.html.
211. Famous people using their name in trade and commerce can have a common law trade mark in their public name. See e.g., Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (WIPO Administrative Panel Decision), available at http://arbiter.wipo.int/domains/decisions/html/ 2000/d2000-0210.html
212. Van Morrison and Exilee Productions Limited v. Unofficial Club de Van Morrison, Case No. D2002-0417 (WIPO Administr-ative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2002/ d2OO2-0417.html
213. Nicole Kidman v. John Zuccarini d/b/a Cupcake Party Case No D2000-1415 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1415.html
214. and Kellie Martin v. Domains, Best Domains, Case No. D2003-0043 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0043.html.
215. But again, what form that "commerce" took was not further elucidated in those cases although it appeared to encompass use in relation to their line of work.
216. See Robert Downey Jr. v. Mercedita Kyamko, Case No. D2004-0895 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2004/d2004-0895.html.
217. Hence, the question involves extending protection beyond publicity and personality rights at both the registration as well as the challenge stage such that the integrity of one's name should be protectable, even though one may not be defamed or suffer any tangible detriment or pecuniary damage front is use. For example, Angelina Jolie may not intend to set up a personal web site or to use her name online for profit, but she may not want others to use it either, perhaps because it may detract from her credibility as a humanitarian and her humanitarian efforts on behalf of the United Nations and the UN High Commissioner for Refugees (UNHCR). In fact, it has been widely reported that she has registered the name of her baby with Brad Pitt, Shiloh, in order to preempt cybersquatting of the name.
218. The right of publicity is entirely a state law claim in the United States. See Haelan v. Topps Chewing Gum, 202 F.2d 66 (2nd Cir. 1953).
219. Most states have varying statutory and common law schemes but they vary significantly in terms of coverage. Publicity rights as an economic, and not a personal, right have expanded considerably since its inception beyond name and likeness to every indicia of identity including objects, nicknames, catch phrases, distinctive voice and pose, sports techniques, and so on. Its counterbalance are the exemptions and exceptions arising from the First Amendment.
220. See Joshua Beser, False Endorsement or First Amendment? An Analysis of Celebrity Trademark Rights and Artistic Expression, 41 San Diego L. Rev. 1787, 1793 (2004).
221. The right of privacy is based upon the right of an individual to be left alone, while the tight of publicity protects an individual's name or likeness from commercial exploitation by someone other than himself (if he chooses to do so). Although the author contrasts the right of publicity and the right to privacy, they appear to be two sides of the same coin just like the right to privacy and data protection. This is both qualitative and quantitative. It is qualitative because they relate to personhood which should be within die purview of the individual (in this case, the celebrity) and where the fundamental determinant relates very much to consent and control (which also feature in privacy and data protection laws). It is quantitative because it relates to the amount and the nature of the subject matter.
222. See also Stacey L. Dogan and Mark A. Lemley, What the Right of Publicity Can Learn from Trademark Law, 58 Stan. L. Rev. 1161 (2006). The authors argue for the complete assimilation of trademark principles into publicity law. Some trademark laws and principles are already very relevant to the domain name context such as those relating to confusion, dilution and merchandising rights.
223. E.g., the natural or moral right of control over a person's identity or aspects of that identity such as likeness and name or persona. A person's identity is further tied to the information put forth by or relating to that person, including association such as lifestyle and endorsement. Hence the importance of consent and control over the delivery and the type of information. For more, see Eric H. Reiter, Personality and Patrimony: Comparative Perspectives on the Right to One's Image, 76 Tul. L. Rev. 673 (2002), where the author gives an overview of the history of personality rights and its development in civil and common law jurisdictions.
224. See also the case of John Doe a.k.a. Tony Twist v. TCI Cablevision 110 S.W.3d 363 (8th Cir. 2003). The right of publicity (protection of a person from loss of benefit of his work in creating a publicly recognizable persona) is related to the tort of misappropriation of name (protection of a person's identity for his own exclusive use and benefit), which in turn is based upon privacy rights. The elements of the torts are the same except for the commercial aspect of publicity rights. In this case, Twist, a famous hockey player sued TCI on its use of his name for a mafia character in a comic book to capitalize on his aggressive sporting reputation, but in a negative light. Twist presented sufficient evidence to prove that his name was used as a symbol of his identity and it was used for commercial advantage (i.e. to attract consumer attention to the comic book).
225. See Alice Haemmerli, Whose Who? The Case for a Kantian Right of Publicity, 49 Duke L.J. 383 (1999). The author argues the case for the expansion of the right of publicity from "a solely pecuniary interest in the exploitation of identity" to one that is "an autonomy-based property right" using idealist philosophical justification of the right of publicity based on human autonomy and a first-occupancy property right in objectified identity and a Kantian analysis.
226. See also, Jay P. Kesan and Thomas S. Ulen, Intellectual Property Challenges in the Next Century, U. Ill. L. Rev. 57, 60 (2000). The author asserts that "digital technology is threatening intellectual property and personhood rights associated with creators of art and entertainment... These practices, and others to come, raise serious and troubling questions about individuals' privacy and publicity rights in the digital age."
227. See further Leah Phillips Falzone, Playing the Hollywood Name Game in Cybercourt: The Battle Over Domain Names in the Age of Celebrity-Squatting, 21 Loy. L.A. Ent. L. Rev. 289 (2001). The author gave examples of legitimate non-commercial uses of personal domain names (e.g. charitable and religious causes, news and fan-related matters, etc.) and argued the case for their protection by the dispute resolution processes of the DNS.
228. It also makes sense to extend the same rights to registrants as to their challengers as has already been noted. This will also counter the criticism that the DNS system is biased in favour of trademark owners. See Patrick D. Kelley, I. Intellectual Property: C. Trademark: 1. Domain Name: B) Arbitration: Emerging Patterns in Arbitration Under the Uniform Domain-Name Dispute-Resolution Policy, 17 Berkeley Tech. L.J. 181, 186-190 (2002)
229. and Lisa M. Sharrock, The Future of Domain Name Dispute Resolution: Crafting Practical International Legal Solutions From Within the UDRP Framework, 51 Duke L.J. 817, 837-839 (2001) (citing a "pro-corporation [and trademark holder] bias").
230. Will it be expanding the rights too much if we extend it beyond famous names to ordinary names? Not really, if we consider that the other two elements are still required to be proven for a successful challenge. Moreover, the lack of 'defences' such as the "fair use" or "fair dealing" defence supports a more expansive set of protectable rights. However, it could also be argued that such defence is in fact accounted for under the legitimate interest and bad faith analyses, although that may mean the use of some type of interest balancing test.
231. See Greene at Note 91, 58 ("ICANN Uniform Domain Name Dispute Resolution Policy - Faith Comes into Question, and Fair Use is allowed as a Defense"). In fact, one of the factors under legitimate interest refers to "fair use".
232. See paragraph 4(c)(iii) of the UDRP.
233. For more, see Adam Goldstein, ICANNSucks.biz (And Why You Can't Say That): How Fair Use of Trademarks in Domain Names is Being Restrained 12 Fordham Intell. Prop. Media & Ent. L.J. 1151 (2002). The author submitted that fair use of trademarks in domain names is under-protected under the current DNS regime.
234. See further, Wayde Brooks, Current Public Law and Policy Issues in ADR: Wrestling Over the World Wide Web: ICANN's Uniform Dispute Resolution Policy for Domain Name Disputes, 22 Hamline J. Pub. L. & Pol'y 297, 327 (2001).
235. "For all the reasons set out above, the users of the internet do not expect all sites bearing the name of celebrities or famous historical figures or politicians, to be authorised or in some way connected with the figure themselves. The internet is an instrument for purveying information, comment, and opinion on a wide range of issues and topics. It is a valuable source of information in many fields, and any attempt to curtail its use should be strongly discouraged. Users fully expect domain names incorporating the names of well known figures in any walk of life to exist independently of any connection with the figure themselves, but having been placed there by admirers or critics as the case may be."
236. See the Springsteen case at Note 153, second last paragraph of part 6.
237. E.g. the name "Laura Branigan" in Other Half Entertainment v. Jason Fiore aka One Stor, Case No. D2005-1156 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2005/d2005-1156.html. The complainant made a prima facie showing that Laura Branigan, the individual artist, established a common law trademark rights in her name based upon a successful recording career prior to her death. The respondent did not disputed that Laura Branigan, as an individual, acquired such common law trademark rights and the Panel assumed, without feeling the need to decide, that Laura Branigan as an individual artist acquired common law trademark rights in her name prior to her death.
238. In the UK, the right of publicity to control the commercial use of one's identity is not recognized. However, unfair competition law in the form of the common law action in passing off is a possible cause of action. A similar course is taken by some Commonwealth countries such as Australia and Canada. In contrast, some form of the right exists in some other European countries such as France (related to privacy rights), Italy ("right of image") and Germany ("Allgemeines Pers nlichkeitsrecht"). In the UK, other forms of action may also give rise to similar rights such as an action for breach of confidence.
239. See Irvine v. Talksport Ltd. [2003] EWCA Civ. 423, [2003] EMLR 26 (protecting against false representation of endorsement by photographs)
240. Campbell v. MGN Ltd. [2004] UKHL 2 (protecting against misuse of private information including photographs in accordance with the Human Rights Act of 1998 and the European Convention on Human Rights); [2004] 2 AC 457
241. Douglas v. Hello! Ltd. [2005] EWCA Civ., [2005] 3 WLR 881 (protecting a celebrity's commercial interest in private information including photographs by treating it analogously to trade secret)
242. McKennitt v. Ash [2005] EWHC 3003 (QB), [2006] EMLR 178 (protection against the misuse of private information in a tell-all book)
243. and HRH Prince of Wales v. Associated Newspapers Ltd. [2006] EWHC 522 (Ch) (protection against the misuse of private information through the publication of private journal entries). Other courses of action that may be useful include the torts of defamation, malicious falsehood and trespass and the laws on intellectual property (e.g. copyright), harassment, privacy and data protection.
244. In the US, publicity rights enjoy protection under State law, either through legislation or under common law. See J. Thomas McCarthy and Paul M. Anderson, Protection of the Athlete's Identity: The Right of Publicity, Endorsements and Domain Names, 11 Marq. Sports L. Rev. 195 (2001). The author examined the state of the law on the right of publicity in the context of athlete's right to identity. The test of infringement or trespass on the right of publicity is "identifiability" ("commercial use" infringement as opposed to "communicative use") and "protects everyone - both celebrities and non-celebrities."
245. Ibid. at 200 and 202.
246. The use of a domain name in connection with a bona fide offering of goods or services and use of a domain name that is the common personal name of the user are absolute defenses under the UDRP, but are still potential bases for liability under the ACPA. It is to be noted that some individuals may already have trademark rights in their personal names. Although personal names are generally not eligible for trademark protection, a personal name with secondary meaning has attached may be registered under the Lanham Act, in which case it will be treated like any other trademark right under the USDRP.
247. Non-domain name treatment as alternative legal recourses to individuals in the United States include civil rights law, the right of publicity, the law on defamation and state specific anticybersquatting laws that extends protection to the individual on more expansive grounds. See Belczyk at Note 47, 515-518.
248. On 29 November 1999, President Clinton signed the ACPA into law by amending the Lanham Act, providing a civil cause of action for the unauthorized commercial use of the registered or common law trademark of another, "if such use is likely to cause confusion, or to cause mistake, or to deceive" (15 U.S.C. §1114(1)(a), 1125(a)(1)(A) . Note that even the ACPA, which is specific to domain names, constitutes a part of the US Federal Trademark Act rather than a separate category of law.
249. UDRP-approved dispute resolution panels have been willing to find rights in a personal name even in the absence of registered trademark rights. However, they tend to be famous names belonging to celebrities, which can probably find a non-registered trademark right.
250. See also Ian L. Stewart, The Best Laid Plans: How Unrestrained Arbitration Decisions Have Corrupted the Uniform Domain Name Dispute Resolution Policy, 53 Fed. Comm. L.J. 509 (2001). The author took the position that WIPO panel decisions have deviated from the wording and intentions behind the UDRP. These include the "overbroad definition of trademark", the "narrowing definition of legitimate interests" and a "circular definition of bad faith". The author suggested that "appropriate cases" be left to the courts. But this does not address the bigger question of jurisdictional problems (and forum shopping) as well as worldwide inconsistency of treatment of domain names by national courts. On the other hand, it could be argued that the reason arbitration decisions (and even some court decisions) have strained the interpretation and scope of the UDRP is that the UDRP requires an overhaul, which is long overdue, to incorporate new considerations, policies and changes since its inception. If that is the case, then an update of the UDRP as proposed will accurately reflect and adopt the changes that have been made to the regime.
251. When ICANN adopted the UDRP, it actually eliminated certain provisions relating to celebrity rights or personality rights, which meant that celebrities were not specifically protected. In July 2000, WIPO began a second study (the Second WIPO Internet Domain Name Process) to address the provisions not included in the UDRP as it then stood and in the process reconsidered the issue of the inclusion of personality rights. The Recognition of Rights and the Use of Names in the Internet Domain Name System was published on 3 September 2001. See Report of the Second WIPO Internet Domain Name Process, available at: http://wipo2.wipo.int./ process2/report/pdf/annex4.pdf. It recognized the diverse and varied legal principles and policies that could be used to protect personal names in different jurisdictions. It also noted that it had a selection of approaches to consider when deciding the issue of personal names if the parties were from different countries.
252. Ibid. at 173. The Report also acknowledged that "many decisions under the UDRP have determined that common law or unregistered trademark rights may be asserted by a complainant" and seemed to give tacit approval to the trend as it had not been criticized.
253. Ibid. at 182. It further stated that "a significant number of commentators favored broadening the scope of the UDRP for purposes of protecting personal names".
254. Ibid. at 191. However, one of the main problems with extending the UDRP protection to personality rights was that it did not serve to promote internationally harmonized norms.
255. Ibid. at 195. Due to a difference of opinions among the commentators, eventually no modifications were made to the UDRP to accommodate a broader protection for personal names.
256. Ibid. at 202.
257. See Georgette H. Tarnow, WWW.YOURNAME.COM: How Useful is the Uniform Domain Name Dispute Resolution Policy ("UDRP") in Protecting Personal Names from Cybersquatters?, 22 J. Marshall J. Computer & Info. L. 535 (2004). The author largely confined her analysis to the existing regime and did not consider the potential protection of personal names of ordinary people. The author canvassed the panel decisions until 2004 and concluded that "[g]enerally, under the UDRP, Complainants prevail if they can prove common law trademark rights in the name at issue. The greater the renown of the personal name, the greater the chances of success of the complaint. The more closely this celebrity is related to some commercial exploitation of the name, the more likely the Complainant is to succeed."
258. Ibid, at 552. This in itself was not remarkable. But more interestingly, does it mean that there must still be a trademark-related right (i.e. an expanded right under common law) rather than a 'new right' to personal name (as the author seemed to imply), and how will future panels treat names of non-celebrities if such a case ever goes before the panel (as there does not seem to be any requirement for filing a complaint and having it heard)? Generally, domestic laws have only expanded trademark rights to the extent of giving publicity rights to famous individuals, particularly celebrities.
259. See Beser at Note 133.
260. These cases involve the .com gTLD which is considered the most valuable gTLD. They also share the distinction of containing only the names of the celebrity as opposed to a name coupled with a product or service description such as marthastewartsignature.com (WIPO Case No. D2006-0216), marthastewartfoundation.com and .org (WIPO Case No. D2005-1109), marthastewartbaby.com (WIPO Case No. D2004-0609), marthastewartkids.com (WIPO Case No. D2003-0944), and elizabethtaylorperfume.com (WIPO Case No. D2006-0800). Hence they involve solely the use of the name which gives rise to registrable and non-registered trade or service mark issues.
261. See paragraph 4(a)(i) of the UDRP. The first element of the UDRP as applied to celebrities has primarily focused on whether the celebrity has achieved a substantial amount of fame with a distinctive name. Whether the domain name mirrors the celebrity's name has not proven significant in a majority of decisions because the domain name and the celebrity's name are usually identical.
262. See the Sting case at Note 159, paragraphs 6.2 and 6.10.
263. Stewart at Note 145, 518-522. Like personality rights, geographic indications were explicitly excluded from the scope of the UDRP, and, just as in the case of personality rights, WIPO arbitrators have attempted to circumvent this restriction.
264. Ibid. at 522-524.
265. See also Janine Turner v. Mercedita Kyamko, Case No. D2004-1036 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2004/d2004-1036.html. This panel supported the more stringent positions taken by the earlier panels in the Springsteen and Sting decisions (at Notes 153 and 159 respectively) by stating emphatically that "[t]he UDRP should not be, and indeed has not been, extended to all personal names regardless of their degree of celebrity or fame, which, in any event, is highly subjective."
266. It also referred to the decision in the case of Israel Harold Asper v. Communication X Inc, Case No. D2001-0540 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/
267. See the Sting decision at Note 159, paragraph 6.4.
268. See Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, Case No. D2000-1532 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1532.html;
269. and Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/ domains/decisions/html/2000/d2000-0210.html, where the panel curiously cited English law in finding that common law trademark rights existed in an author's name under the common law trademark action for passing off as developed under English law (but not necessarily in other jurisdictions).
270. See also, Jeanette Winterson v. Mark Hogarth, Case No. D2000-0235 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0235.html, where the panel expanded the UDRP's protection to include common law trademark-like rights in a personal name.
271. The question whether they are de jure registrable is a different matter. In certain circumstances such as the use of a name in trade in services or goods, the name can acquire trademark rights for registration. It is also noted that the right of publicity law and the prohibition of the unauthorized use of a famous name or likeness in a commercial context also exists in the US and some other jurisdictions although its relevance to a WIPO decision is questionable at best.
272. I.e. that permutations permitting, thousands of web sites can use a famous name within their SLDs, hence diluting the "customer diversion" consideration under the legitimate interest element under paragraph 4(a)(ii) of the UDRP.
273. Under paragraph 4(a)(iii) of the UDRP.
274. "The relevance of this is that it is relatively unlikely that any user would seek to go straight to the internet and open the site brucespringsteen.com in the optimistic hope of reaching the official Bruce Springsteen website. If anyone sufficiently sophisticated in the use of the internet were to do that, they would very soon realise that the site they reached was not the official site, and consequently would move on, probably to conduct a fuller search... The internet is an instrument for purveying information, comment, and opinion on a wide range of issues and topics. It is a valuable source of information in many fields, and any attempt to curtail its use should be strongly discouraged." See the Springsteen decision at Note 153 (under part 6).
275. On the other hand, the "sophisticated registrant" was alluded to in Career Guidance Foundation v. Ultimate Search, Case No. D2003-0323 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2003/d2003-0323.html (at paragraph 5.9).
276. "Sting" is a common word in the English language, with a number of different dictionary meanings. "Madonna" is arguably most famously associated with the Virgin Mary and is so defined in most dictionaries. Others have also used it as a trademark, trade name and personal name. The only difference, and one which is probably not very relevant, is that the former can be a verb or a noun while the latter is only a noun. Perhaps it can be argued that it is more difficult to acquire a secondary meaning for a verb than a noun? Also, "Sting" is an entirely made-up stage name while "Madonna" is actually the first name of the singer.
277. See Gordon Sumner, p/k/a Sting v. Michael Urvan, Case No. D2000-0596 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0596.html
278. and Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com" Case No. D2000-0847 (WIPO Administrative Panel Decision), available at: http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0847.html.
279. It referred to the Report of the WIPO Internet Domain Name Process of 30 April 1999, on which ICANN based the UDRP, at paragraphs 165-168. See the Sting decision at Note 159, paragraphs 6.3-6.5. Although the panel in the Sting case found it doubtful whether the UDRP was applicable, it still proceeded to decide the case according to the established procedure. It is worth nothing that the panel in the Sting case appeared to wrongly place the burden on the respondent to prove legitimate interest.
280. See Tarnow at Note 147, 539-552 for a summary of these cases and others.
281. See Falzone at Note 135, 305-306.
282. Well-known sportspersons may achieve common law trademark rights arising out of their fame as can be seen in a series of cases since the year 2000, culled from the WIPO UDRP Domain Name Cases database relating to gTLDs, available at: http://arbiter.wipo.int/domains/cases/all.html.
283. See Belczyk at Note 47, 514-5. The author cautioned against confusing the application of standards for the protection of personal names such as the conflation of two of the ACPA categories of protectable marks (i.e.distinctive marks and famous marks) by some ICANN panels in order to contribute to the increased protection of personal names, which she argues can have the adverse effect of jeopardizing the legitimate use of such names and of hampering free speech.
284. On 10 July 2000, WIPO commenced the Second WIPO Internet Domain Name Process in order to address some outstanding issues involving the recognition of rights and the use of names in the DNS where uncertainty and concern remained. Among the issues that WIPO thought important to clarify was the use of personal names as domain names. This was one of the outcomes of that exercise. See Belczyk at Note 47, 487.
285. See also Pamela Segal, Attempts to Solve the UDRP's Trademark Holder Bias: A Problem that Remains Unsolved Despite the Introduction of New Top Level Domain Names, 3 Cardozo Online J. Confl. Resol. 2 (2001), where the author took the position that the introduction of new TLDs was not sufficient to address the imbalance favouring trademark owners.
286. See the Global Name Registry (GNR) web site at: http://www.nic.name/.
287. The ERDRP allows complains based upon a failure of the "eligibility requirement". Note that this new TLD does not address the problem of individuals with the same personal name. Moreover, it also gave trademark holders a "sunrise" period, allowing them the first opportunity to register marks. Individuals may also continue to be victims of reverse cybersquatting by more powerful individuals and corporations. Thus, with the .name TLD, as with the original TLDs, the problems are still not fully well resolved for individuals. See also Segal at Note 165.
288. One need only refer back to the comparison of the WIPO cases such as the Springsteen and Roberts panel decisions and the Sting and Madonna cases to see how different panels can diverge even in cases involving similar sets of circumstances and the same policy (which in these cases was the UDRP). In fact, the bases for some panel opinions also appear arbitrary, such as the reference to English law in the Roberts case. A fortiori, the confusion and unpredictability of panel decisions relying on different sets of facts, policies and that consists of different sets of panelists.
289. It is to be noted that illegitimacy of interest and bad faith can often be found from the same facts and hence they are not mutually exclusive when it comes to any case analysis.
290. E.g. the Ireland NDRP includes additional examples of registration or use in bad faith such as the likelihood of diluting the reputation of a trade or service mark (paragraph 2.1.5) and the intentional filing of misleading or false information when applying for the domain name registration (paragraph 2.1.6).
291. See the International Bar Association (IBA) web site at: http://www.ibanet.org/legalpractice/Arbitration.cfm, where the Guideline can be downloaded.
292. For a commentary, see Tanner De Witt, The IBA Guidelines on Conflicts of Interest in International Arbitration, available at: http://www.tannerdewitt.com/media/publications/
293. Scott Hejnyn Marshall Leaffer, Opening the Door to Contmversy: How Recent ICANN Decisions Have Muddied the Waters of Domain Name Dispute Resolution, 6 Ind. J. Global Legal Stud., 38 Hous. L. Rev. 1037, 1064 (2001). The author noted that if ICANN wants to provide arbitration rulings "that establish res judicatasque precedent", then there must be some form "agreement or guideline that eliminates the possibility of "venue-shopping" of all arbitration forums" that will bind (or at least be highly persuasive).
294. See Sharrock at Note 136, 831-837. The author noted the problem with inconsistent decisions citing examples such as those determined under the UDRP arbitration relating to domain name speculation. The problem is that the UDRP alone lacks specificity and even the lists under paragraph 4(b) and (c) are briefand have not been amended since their inception to take into account new situations unforeseen at the time of its drafting (hence it is necessarily non-exclusive); and together with the fact that the decisions by the dispute resolution providers do not enjoy precedential value, uncertainty and diverging results can and do occur.
295. The policy provides that "the Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy," and allows individual arbitrators to exercise their own judgment as to the admissibility of evidence submitted. See Rule 10(a) under the ICANN Rules for Uniform Domain Name Dispute Resolution Policy, available at http://www.icann.org/udrp/udrp-rules-24oct99.htm. In addition, because the UDRP is not officially affiliated with the law of any particular country and arbitrators are not bound by previous decisions, precedent do not serve the harmonizing function it serves in judicially-based legal systems. Although the policy does not explicitly prohibit reference to national law, most cases are decided exclusively by reference to the UDRP rules. Similarly, panels generally do not consider international treaty standards in UDRP proceedings. Because international treaty standards and national laws exert only an abstract influence, and the UDRP itself articulates very general standards, arbitrators essentially exercise unfettered discretion in each case. There are very few safeguards against egregious misuse of this discretion or against incongruous decisions. This circumstance, coupled with a lack of specificity in the policy itself, is largely to blame for the contradictory outcomes. Sharrock at Note 136, 837. It has been noted that the current UDRP procedural framework "fails to provide a mechanism through which arbitrators can refine the meaning of the UDRP overtime. Asa result, it is difficult to ensure that the UDRP si, applied consistently, fairly, and accurately for all of the parties who invoke it,"
296. See Armon at Note 109, 119.
297. The use of conditions has, for example, been used in the common law countries' conflict of laws .doctrine in the determination of forum non conveniens. See Gary Born, International Civil Litigation in United States Courts (Kluwer Law International, 1996) at 343 (Conditions on Dismissals).
298. Linguaphone Institute Limited and Another v. Cambridge Information Technology and Another [2005] SDRP 2. The Sales Agency Agreement clearly defined the authority given by the complainant to the respondent to use the word "Linguaphone" to expire upon the termination of the contract, but the respondent continued to use it in its domain name even after the business relationship with Linguaphone was over.
299. These can form a part of the Traffic Light System of guidelines.
300. Counterbalancing cybersquatting and domain name hijacking by concurrent or 'bigger' users. Walker at Note 90, 310.
301. For some United States case analyses on the subject, see Carl Oppedahl, Recent Trademark Cases Examine Reverse Domain Name Hijacking, 21 Hastings Comm. & Ent. LJ. 535 (1999)
302. and William G. Barber, Recent Developments in Trademark Law: Reverse Domain Name Hijacking Mutant Copyrights, and Other Mysterious Creatures of the Trademark World, 12 Tex. Intell. Prop. L.J. 361, 378-383 (2004).
303. Kevin Eng, Breaking Through the Looking Glass: An Analysis of Trademark Rights in Domain Names Across Top Level Domains, 6 B.UJ. Sci. & Tech. L. 7, 16 (2000), where the author cited UK as a country that has recognized such a tort through statute and common law.
304. Passive holding can constitute "used in bad faith" depending on motive. See Susan Thomas Johnson at Note 128, 476-483, where the author classified cybersquatters into four categories according to their motives: (a) The "DisOarager": one who registers a domain name using the same or a very similar version of another entity's name to harass or criticize that entity; (b) the "Extortionist": One who intentionally appropriates a famous trademark or trade name as a domain name for financial gain; (c) the "Free Rider": One who uses another company's trademark to gain that company's goodwill for its own commercial advantage; and (d) the "Innocent": One who just happens to register a domain name that turns out to be very similar to a famous registered mark. Perhaps it can also constitute a rebuttable presumption of bad faith (unless the registration included an upfront justification for non-use).
305. John G. White, Intellectual Property: C. Trademark: 2. Domain Name: B) Arbitration: ICANN's Uniform Domain Name Dispute Resolution Policy in Action, 16 Borkeley Tech. L.J. 229, 240-249 (2001) ("passive warehousing"). The inconsistent application of the "inaction doctrine" prompted the author to suggest formal guidance from ICANN. It may be noted that some NDRPs do provide for time limitation. For example, domain names in Japan must be used within a year from registration. This also supports the proposal under this paper for supplementary guidelines to the existing ones under the UDRP and NDRPs.
306. Other more procedural aspects of the dispute resolution regime will not be examined in detail in this paper. They include matters such as procedural processes (including that relating to submissions and hearing), confidentiality, liability and remedies.
307. In contrast, domain name registries currently perform more of a passive function due to the hand-off approach to registration.
308. "Strengths of the UDRP" over the court system are similar to that afforded by other forms of arbitration. Falzone at Note 135, 320-322. But contra, "Weaknesses of the UDRP".
309. Ibid, at 322 to 324. While the process should not be cost prohibitive and remain comprehensive, however, it should also contain safeguards against abuse (e.g. the reverse domain name hijacking regime).
310. The benefits of arbitration over litigation that are most often cited to explain this preference include flexibility of procedure and choice of substantive law, cost effectiveness, neutrality of the decision-maker, enforceability, and convenience.
311. Contra. e.g., paragraph 4(1) of the SGDRP which explicitly states that "administrative proceeding is not an arbitration", and that submission to such proceedings is not a submission to arbitration. The rules and procedures of the SGDRP are not arbitration-related. Other NDRPs do not even refer to the process as an arbitration at all.
312. These advantages include choice ofcounsel or representative, expert arbitrators, and worldwide recognition and enforcement of decisions under the New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards of 1958. Moreover, under the ICANN policy, any country submitting to the New York Convention must enforce the ICANN decision regardless of its laws. See Christopher S. Lee, The Development of Arbitration in the Resolution of Internet Domain Name Disputes, 7 Rich. J.L. & Tech. 2 (2000), available at http://www.richmond.edu/jolt/v6i3/article2.html.
313. See also, Falzone at Note 135, 320-324, on the advantages and disadvantages of the UDRP and ICANN's dispute resolution system over traditional court system.
314. See WIPO Arbitration and Mediation Center, WIPO Domain Name Panelists, available at http://arbiter.wipo.int/domains/panel/panelists.html.
315. The WIPO Domain Name Dispute Resolution Service web site is at: http.://arbiter.wipo.int/domains/index.html.
316. The four approved dispute resolution service providers under the UDRP are the World Intellectual Property Organization (WIPO), National Arbitration Forum (NAF), CPR Institute, and the Asian Domain Name Dispute Resolution Centre. See Sue Ann Mota, Internet Domain Name Disputes: Working Toward a Global Solution, 7 Comp. L. Rev. & Tech. J. 213, 216-218 (2004).
317. Lack of such empowerment and support can only weaken the system. See Katherine Meyers, Domain Name Dispute Resolution in U.S. Courts: Should ICANN be Given Deference?, 43 B.C.L.Rev. 1177 (2002). The author argued that given the similarities between ICANN's dispute resolution proceedings and process under the UDRP with administrative regulation and adjudication, courts should grant UDRP decisions the same deference granted to other administrative agencies.
318. See also, Emerson at Note 13, where the author argued that the UDRP was ineffective for several reasons including the lack of judicial deference from US courts, its inability to assert and maintain effective jurisdiction over participants to a UDRP action, and its initial decision to permit an unlimited number of pleadings and filings in each action. The flaws may be overstated and remedies can be made to the system with political will. Hence, it should be noted that the author himselfdid not seem to abandon the system as a lost cause, suggesting two solutions: First, by restructuring UDRP Proceedings as binding arbitrations subject to Arbitral laws and regime; and second, by eliminating or significantly reducing the number and length of permitted supplemental pleadings.
319. Ibid. at 196-197.
320. Contra. paragraph 10(d) of the UKDRP which states that "[t]he operation of the Dispute Resolution Service will not prevent either the Complainant or the Respondent from submitting the dispute to a court of competent jurisdiction." Similarly the paragraph 4(k) of the USDRP states that "[t]he mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the Complainant from submitting the dispute to a court of competent jurisdiction in the United States for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded." Also, paragraph 4(k) of the SGDRP states that the mandatory administrative proceedings requirement "shall not prevent either [party] from submitting the dispute to a Singapore curt for independent resolution. However, the Registrant and the Complainant shall not commence any court proceedings in respect of the registrant's domain name while an administrative proceeding is pending in respect of that domain name." Under article 15 of the CNDRP, there is a right to bring an action before the courts only before and after a dispute resolution proceeding is in operation but not during. It states that: "Before a Complaint is filed pursuant to this policy, or during the dispute resolution proceedings, or after the expert Panel has rendered its decision, either party may institute an action concerning the same dispute with the Chinese court at the place where CNNIC's office is located or subject to the agreement between the parties, submit the dispute to a Chinese arbitration institution for arbitration."
321. Perhaps one way to do all these without enacting new legislation is to recognize it or deem it as an arbitration process, and a decision as an arbitration award, with all the privileges which that entails.
322. This could be made a requirement for a complaint to be entertained, in which case it is similar in nature to a pre-dispute arbitration agreement. One of the criticisms of the DNS dispute model under the UDRP is forum shopping by the complainants through selection of dispute resolution service providers listed under the policy at subdomain: http://www.icann.org/dndr/udrp/approved-providers.htm. There are ways to ensure fairness and to encourage mutuality that can be adopted. Inspiration can be drawn from the rules of arbitration relating to the selection of arbitrators in the event of a lack of consensus in the selection by parties such as a neutral third party appointment (e.g. the registrar's office) in the event of a deadlock. Another option is the randomizing of selection.
323. Currently, the UDRP is a non-regulated, non-accountable arbitration process without an appeals procedure. There is also a selection of dispute resolution service providers without linkages which, together with the dispute resolution bodies for ccTLDs, can give rise to diverse outcomes (although references to other decisions on similar cases should be instructive and persuasive). The lack of any cohesive database for the collection of written panel decisions, data and statistics is also a concern. The UKDRP offers an appeals process under paragraph 10 but there is no appeals process in the USDRP, the CNDRP and the SGDRP.
324. See Kelley at Note 136. The author proposed the implementation of a UDRP-based appellate process to provide a mechanism for challenging UDRP decisions without having to resort to the court system.
325. Ibid. at 190-193. Examples were given of NDRP dispute resolution policies that have handled the implementation of an appellate process.
326. Ibid. at 190-199. The author also gave detailed proposals for revising UDRP procedures to provide for the majority of UDRP disputes to be heard by three-member panels.
327. It has been observed that the UDRP policy itself is well defined. Unfortunately, it appears that complainant selection of the dispute providers has a tendency to reward providers who deliver name transfers. After only one year of operation, there is a statistically significant correlation between market share and the tendency to take away domain names from respondents. It has been suggested that perhaps registrar selection of dispute providers may solve the problem. See Milton Mueller, An Analysis of ICANN's Uniform Dispute Resolution Policy, Convergence Center, Syracuse University School of Information Studies, available at: http://dcc.syr.edu/miscarticles/ roughjustice.pdf#search='Rough%20Justice%20%20An%20Analysis %20of%20ICANN%27s%20Uniform%20Dispute%20Resolution%20Policy'. The author presented data showing complainant bias in the UDRP.
328. Ibid at 14-19.
329. See also, Michael Geist, Fair.com?: An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP, 18 August 2001, available at http://aix1.uottawa. ca/~geist/geistudrp.pdf, where the author supports Mueller's position.
330. See Mueller at Note 196, section 4.
331. See A. Michael Froomkin, Comments on ICANN Uniform Dispute Policy, available at: http://www.law.miami.edu/amf/icann-udp.htm, on the "Parity of Appeal".
332. E.g. the UKDRP, which uses expert determination by only one dispute resolution service provider; the SGDRP and the CNDRP. Contra. the USDRP which offers administrative panel determinations through a selection of Dispute Resolution Service Providers by the complainant (see paragraph 4(d) of the USDRP).
333. E.g. the UKDRP provides for appointment on rotational basis from list of experts by Nominet. Under paragraph 6 of the USDRP rules, administrative panel appointment is made by the Dispute Resolution Service Provider if parties fail to elect. Under paragraph 6(e) of the rules, it is an explicit requirement that the appointment "reasonably balances the preferences of both parties". See also, paragraph 6 and Chapter V of the CNDRP, and paragraph 6 and 6(e) of the SGDRP respectively, which provides likewise.
334. See Kelley at Note 136, 190-193;
335. and Falzone at Note 135, 323. Paragraph 10(c) of the UKDRP explicitly states that the expert determinations have no precedent value.
336. Although there is generally no use of precedents in arbitration, there are distinctions between the nature of domain name dispute policies and other disputes submitted to arbitration through the usual process that may support a form of precedent to be adopted or at least considered for domain name arbitration. Arbitrations are pursuant to both party agreement and relates to specific contractual disputes whereas the DNS is a party-to-registrar contract that can be changed through requiring something like an arbitration agreement between the parties before a challenge can be instituted by the complainant. Domain name disputes all relates to the same subject matter of dispute anywhere in the world (i.e. the rights to a domain name). Hence the nature of domain name arbitration will be different from that of other subject matter arbitration and may be susceptible to a fixed set of substantive norms.
337. E.g., it should clearly state that the burden of proof falls on the complainant and the sort of evidence that he is required to prove. It should also set realistic time limits. Perhaps it may be helpful to require a complainant to contact a domain name owner before making a complaint. In such a way, it encourages amicable settlement through negotiations or even mediation before resort to arbitration.
338. See Henry H. Perrit, Jr., Dispute Resolution in Cyberspace: Demand for New Forms of ADR, 15 Ohio St. J. on Disp. Resol. 675 (2000). Consider the role of mediation in some the NDRPs like the UKDRP, CNDRP, HKDRP and the SGDRP.
339. See David Romero, A Worldwide Problem: Domain Names Disputes in Cyberspace Who is in Control?, 9 Currents Int'l Trade L.J. 69 (2000), supporting a worldwide solution to a global problem such as by the creation of an international registrar and contractual dispute settlement body.
340. See also Myer at Note 65, 434, proposing the synchronization of the international body administering the generic top-level domains and an international agreement between nations to recognize each other's trademarks as well as the creation of a central comprehensive database of trademarks held internationally under the Madrid Agreement and registered nationally within each country of the system. The problem here is the intricate linkage of the proposed global DNS system to the trademark regime, which will not be workable if non-intellectual property related rights are to be recognized as well, which is proposed in this paper.
341. For more, see Christopher P. Rains, A Domain by Any Other Name: Forging International Solutions for the Governance of Internet Domain Names, 14 Emory Int'l L. Rev. 355 (2000).
342. See Sharrock at Note 136, 840-844. The divergences between domestic laws are even more pronounced. Hence, the reason why advancing the current UDRP and NDRP framework, which already have many similarities, for harmonization is preferable to an attempt to harmonize domestic laws on the international plane. The same reasoning will apply to the argument for taking dispute resolution of domain name disputes, which involves what is essentially an administrative function, out of the court system except for limited instances of review (cf. the arbitration regime).
343. See Sharrock at Note 136, 845. Under the WIPO Best Practices statement issued in June 2001, all ccTLD domain name registrants would also be required to provide contact information and submit to mandatory arbitration, like those in the other ICANN-approved TLDs. The author also supports the "ideal of consistency" advocated by the WIPO guidelines as "the best approach for the international Internet community." This would require a strong ICANN policy shift and political will amongst governments in order to achieve harmonization of policies, rules, procedures, and practices generally by bringing all TLDs without exception into the scope of such a regime. Non-approved TLDs should also not be allowed as they would lead to a proliferation of domain names outside the DNS, which would defeat the purpose and objective of consistency.
344. Graeme W. Austin, Symposium on Constructing International Intellectual Property Law: The Role of National Courts: Valuing "Domestic Self-Determination" in International Intellectual Property Jurisprudence, 77 Chi.-Kent. L. Rev. 1155, 1173-1174 (2002). The author noted that under the 2001 WIPO report on The Recognition of Rights and the Use of Names in the Internet Domain Name System, promulgated as part of the Second Internet Domain Name Process, WIPO considered a range of responses to identifiers other than trademarks but appeared most reticent in areas in which it could not identify an international consensus as to the levels of protection for these identifiers so as to make firm recommendations as to their treatment within the UDRP system. The author also noted that such work by international agencies are drawing attention to gaps in current domestic responses to protection of such identifiers, which would hopefully be the impetus for action at the domestic level while "enhancing the possibility for supranational solutions". Perhaps, unlike other intellectual property regimes which require registration, a multi-registration system may be avoided if a well constructed global system is instituted.
345. Zohar Efroni, A Barcelona.com Analysis: Toward a Better Model for Adjudication of International Domain Name Disputes, 14 Fordham Intell. Prop. Media & Ent. L.J. 29, 91-117 (2003). The author highlighted the inadequacies and complications of unilateral country-by-country approach to domain name regulation and adjudication taking the Barcelona case as a case study. He also proposed an International Cybersquatting Treaty to deal with international cybersquatting disputes. However, this is still not fully satisfactory as the entire domain regime should be streamlined because the same problems, particularly relating to jurisdiction and enforcement as well as certainty and predictability, extend to every area of the DNS from registration to dispute resolution (both substantive and procedural).
346. Where it overlaps, the area that also falls under intellectual property law, namely trademark law, can still be brought to the courts on the basis of trademark law and its precedents, as opposed to information technology law relating to domain names. The areas of law can coexist inasmuch as other laws can concurrently apply to the same set of facts and subject matter, both within the areas of civil and criminal law.
347. The UDRP holds the promise of "supranational laws and supranational adjudication". See Graeme B. Dinwoodie, (National) Trademark Laws and the (Non-National) Domain Name System, 21 U. Pa. J. Int'l Econ. L. 495, 521 (2000).
348. See Robert A. Badgley, Internet Domain Names and ICANN Arbitration: The Emerging "Law" of Domain Name Custody Disputes, 5 Tex. Rev. Law & Pol. 343, 391-392 (2001). ICANN need not go so far as to establish an appellate process within its arbitral regime. Rather, ICANN could establish a distinguished panel of individuals into a "decision review panel" whose task is to review controversial ICANN rulings and situations where ICANN panels have reached conflicting results on the exact same issue. It can do so by, for instance, appointing a standing committee to perform this function with oversight by ICANN (perhaps through periodic reporting from the committee of its work and recommendations. Such a review panel could consider the doctrine, interpretation, or principles that emerged from a case under review and determine whether it should or should not be followed in future cases.
349. For more criticisms of the current rules, see Kieren McCarthy, Why ICANN's domain dispute rules are flawed, The Registrar, 11 July 2002, available at: http://www.theregister.co.uk/2001/07/11/ why_icanns_domain_dispute_rules/.
350. Moreover, it has other features which recommend it for the role. First, the UDRP has discretion in choice of law (see paragraph 15(a) of the UDRP); and second, it offers the major advantage of eliminating the often sticky jurisdictional issues that arise in Internet-related disputes. This paper will not be examining the jurisdictional and conflicts of law issues in detail but only as incidental in support of the proposition for change within the ICANN/UDRP framework. Suffice it to state that many jurisdictional problems will be removed by referring disputes to an administrative forum and by stipulating or selecting a forum for dispute resolution ab initio.
351. Peter Chan, The Uniform Domain Name Dispute Resolution Policy as an Alternative to Litigation, E-Law Murdoch University Electronic Journal of Law Vol. 9 No. 2 (2002), available at: http://www.murdoch.edu. au/elaw/issues/v9n2/chan92.html. The author supports the UDRP as a quicker and less expensive alternative to litigation but reserves complicated cases for the latter (e.g. cases involving "multiple legitimate claimants").
352. As described above; e.g., see Note 203.
353. See also, Armon at Note 109, 122-139.
354. For more reform suggestions, see Holstein-Childress at Note 99,
355. For one, the creation of domain names are more a result of the technological infrastructure of the WWW than an intellectual and financial creation of the individual, although for other reasons they are as susceptible to proprietary claims as traditional forms of intellectual property. See Holstein-Childress at Note 99, 569-572 (2004). The author examined the functional divergences, non-confluence and dissimilarities between domain names and trademarks.
356. In language alone, the multiplication of potential domain name can be staggering. For instance, the Chinese language alone can constitute several versions including the use of characters and "han yu pin yin" (i.e. the system of romanizing standard Mandarin by phonetically transciption).
357. Only the format is suggested. The content will require a more in depth analysis and an ambitious study of a cross-section of decisions and policies worldwide, which is beyond the scope of this paper.