domain names professor graham greenleaf and russell allen
TRANSCRIPT
Domain Names
Professor Graham Greenleaf and Russell Allen
Introduction
Why is this important?
Ubiquity of Domain Names
Predominant method of finding resources on the net (but google?)
My local pizza shop has a domain name No viable alternative
Value of Domain Names
Compaq buys altavista.com in 1998 for US$3.3m
eCompanies buys business.com in 1999 for US$7.5m
Tuvalu sold .tv domain to Idealab for US$50m/year til 2012
Domain Name System
A human readable addressing system which translates domain names into IP addresses
Allocation Pre-DNS
Single list of names, shared between all computers.
Didn’t scale New System was needed.
DNS
Heirachical names Heirachical mechanics Distributed Mechansim(P2P like) Cached system
DNS
A Protocol Implementation (BIND) An agreed root directory
Some Terms
TLD – Top Level Domain gTLDs - .com, .org etc ccTLDs - .au, .uk, .nu specialTLD - .arpa
gTLDs
In 1980s: .org .com .edu .gov .int .mil .net
Now: .aero .biz .coop .info .museum .name
.pro
ccTLDs
Countries or merely indicators? Over 240 countries Changes over time
ccTLDs as indicators
.nu for Niue (new) .tv for Tuvalu (television) .ws for Western Samoa (Web site) .tm for Turkmenistan (trade mark) .to for Tonga (go.to)
Governance and Ownership
Covers the governance and ownership of domain names, control of the DNS and the institutions involved
Control of domain names Allocation
In theory, a global hierarchical structure Crucial control is of Top Level Domains (TLDs) - both
generic (gTLDs) and by country (ccTLDs) ICANN controls .com and .org gTLDs, and creation
of new ones For ccTLDs, the control structure differs by country At every DNS level, someone has the right to
allocate new sub-domains DNS servers located throughout the Internet, keep at
least the addresses of the root servers for each TLD
Organisational Control
http://www.artslaw.com.au ICANN (.), delegates to: auDA (.au), delegates to: MelbourneIT et al (.com.au), delegates to: Arts Law Centre of Australia
(artslaw.com.au), delegates to: Itself! (www.artslaw.com.au)
Legal implications of domain names
Uniqueness gives commercial value How TLDs are managed is very political - it
controls who can be found on the net Eg China’s attempt to control Chinese character
names Eg attempts to create .sucks and .union TLDs
Threats and attempts to create alternative DNS systems result
Disputes within ICANN
DNS Universality Most disputes are about domain name
allocation We assume domain names will function
internationally once allocated - that DNS servers will resolve to the ‘correct’ IP
address What type of rule or ‘law’ is this?
Exceptions: China’s corruption of the DNS to make
<google.com> resolve to Chinese search engines
Are Domain Names Property? Domain names are merely contractual
arrangements. Maybe linked, however, to Trade Marks Network Solutions Inc v. Umbro Intl Inc. 529 SE
2d: Domain names cannot be garnished in bankruptcy
Zurakov v. Register.com (Unrep, Supreme Court of State of New York, Maskowitz J, 27 July 2001): Merely contractual
Can we avoid the entire system?
Alternate Roots are Technically Possible Alternate Roots have existed - .bix, .kids
etc …but, none has got critical mass to
interfere with ICANN policies.
Allocation Pre-ICANN
IANA, Jon Postel and NSI
The Creation of ICANN
Set up by US Department of Commerce in 1998
“non-profit corporation … formed to assume responsibility for … domain name system management … functions perfomed under US Government contract by IANA”
ICANN ccTLD Issues
Nuie Case Study .au Degation Changes Case Study
ICANN results and issues Dispute resolution policies (DRPs)
gTLD, .hk, .cn, .au
Criticisms of DRPs and their administration Decisions under DRPs - law or chaos? Chinese (and other) character domain names ICANN as a model of Internet governance?
Dispute Resolution
Covers the gTLD and auTLD domain name dispute resolution process
gTLD Dispute resolution policies (ICANN’s UDRP) Substantive grounds - P4(a), (b) and (c)
Choice of law - no provision - R15(a)
1 or 3 member panel? - P4(d), R3(b)(iv), R5(b)(iv), P4(g) (fees) Complainant (TM owner) chooses if only 1 Both complainant and respondent can request 3 No appeal provisions (even if only 1 chosen)
Remedies limited to cancel/transfer (P3, 4(i))
gTLD Dispute resolution policies (ICANN’s UDRP)
Court proceedings Reg will obey order of a Court/Tribunal ‘of
competent jurisdiction’ (P3(b)) P4(k) - either party can submit to Court,
either before or after Panel decision (or 10 day stay)
R3(b)(xiii) - complainant agrees to submit to jur’n of Court in ‘Mutual jurisdiction’ (R1)
Criticisms of UDRP and its administration Dr Milton Mueller Rough Justice (2000)
Suspected incentive for providers to favour complainants to attract cases (they choose)
Proved substantial results bias of 2/3 providers in favour of TM owners
Prof Michael Geist Fair.com? (2001) Shows how the results bias occurs Non-decisive factors
• Price competition is very limited• Panelists of the 3 providers were very similar• Advertising and supplemental rules also minor
Geist’s Fair.com? criticisms Decisive factor is case outcomes - but
why are the outcomes biased? Allocation of panelists provides the answer Little known about allocation procedures However, study of 3,000 allocation outcomes
show the 2 pro-TM providers:• Allocate cases only to a handful of panelists• These result in 83% decisions pro-TM owner
For 3 member panels, % drops to 60%
Suggested UDRP reforms Geist’s Fair.com? suggests
Mandatory 3 member panels (complainant’s cost) Caseload maximum/minimum for all panelists Quality control reviews of panelists Better transparency through searching
Meuller’s Rough Justice suggest Random selection of panelists Appellate procedure Closer ties between registrars and providers
UDRP caselaw - Overview How do you find it? - implications Elements of a UDRP complaint
DN ‘identical or confusingly similar’ Registrant has no rights or legitimate interests Evidence of bad faith
Decisions under .cc DRPs DRP decisions challenged in Court Other Court decisions on domain names Are the UDRP and .ccDRPs successful?
Finding decisions - the problem Number of decisions to consider
Already 1,300+ gTLD decisions in 2002 Usually no system of appeals - single instance wilderness
Number of decision-makers gTLDs have 4 Most .ccTLDs have one or more Courts add to the numbers
Panelists must (and do) consider them No formal system of precent, just good practice and efficient to
consider expertise of others Unusual for arbitrators / mediator to have so many decisions by
their peers to consider Result is that secondary analyses are important
Existing search facilities Berkman Center‘s UDRP Opinions - search engine with
limited connectors etc ICANN UDRP search - uses Berkman Berkman Center‘s UDRPmate - hypertext linking
between decisions by cut’n’paste Umass UDRP seach engine - complex searches
possible UMass/Cornell LII UDRP Publishing Project - searching
based on detailed subject indexing See <http://lweb.law.harvard.edu/udrp/library.html>
Studies of UDRP decisions Early analysis by Cabell (Harvard) 2000 Kur UDRP, 2002, Max Planck Institute
analysis of over 3,000 decisions to mid-2001 No major flaws in principles applied (but considers
eResolution discrepancy needs addressing) Main problem is ‘confusingly similar’ cases (free
speech implications; issues of proof) - does/should UDRP require actual confusion?
Possible procedural reforms: defaults and appeals Mueller and Geist - more statistics than law
Limited role of UDRP decisions, and burden of proof UDRP limited to disputes with 3 elements
Disputes outside these elements must be resolved by Courts, not UDRP panels (‘deference’ by UDRP). This is crucial to proper interpretation.
cl 4 - burden on complainant to ‘prove’ all 3. But cl 4(c) seems to require respondent to
establish legitimate interest Kur: Complainant must establish prima facie case,
then burden shifts to respondent
Elements of a complaint
Complainant must prove all 3 (cl 4(a)): (i) domain name is ‘identical or
confusingly similar’ to complainant’s TM (ii) registrant has no rights or legitimate
interests in respect of the domain name; (iii) domain name has been registered
and is being used in bad faith.
DN ‘identical or confusingly similar’ to TM UDRP 4(a)(i) Few cases - usually identical The ‘sucks’ cases
Lockheed Martin v Paresi [2000] Vivendi v Sallen [2001]
Two views of the UDRP? (see Kur 3.2.1): (I) actual confusion not necessary (‘misappropriation’),
but lack of bad faith may excuse (separate ground) (ii) actual confusion is necessary - leave other
variations to the Courts to decide (‘deference’)
DN ‘identical or confusingly similar’ to TM
‘Mass registration cases’ Eg 38 variations of <yahoo!> all found
confusingly similar (Kur) Fan sites and sales sites may be
confusingly similar but not in bad faith
Bad faith - Registration and use
UDRP requires DN 'has been registered and is being used in bad faith' (cl 4(a)(iii))
Requirement of ‘use’ has been weakened: Offer to sell considered to be use Passive holding (’inactive use’) included
• Telstra Case
Evidence of bad faith UDRP 4(a(iii) and 4(b)(i), (ii), (iii) or (iv) Importance of prior knowledge of TM (i) Registration for gain from TM
owner/competitor (ii) Pattern of hoarding names (iii) Intent to disrupt business of competitor (iv) Intent to divert users to website by
confusion Other evidence of bad faith
Prior knowledge of TM
‘The most essential aspect … is not even mentioned expressly in the Policy’ - whether respondent was aware or had reason to be aware of conflicting TM (Kur 3.2.2.1) Usually prima facie sufficient for bad faith
Respondent then has 2 options: Refute claim of knowledge by showing DN chosen
for credible independent reasons (no bad faith) Show positive prior legitimate interest in the DN, so
issue of knowledge becomes irrelevant
Bad faith - (I) intent to sell to TM owner / competitor
Registration with intent to profit from TM owner/competitor (cl 4(b)(i))
Intent to sell to others irrelevant Must be intent to sell to a complainant
with a reputation in the name
Bad faith - (II) Pattern of conduct of hoarding names
Registering name to prevent TM owner, if part of a pattern of hoarding names (cl 4(b)(ii))
Only names relevant are those in which there is a prior reputation
Avoids need to show intent to sell, if hoarding can be shown
Bad faith - (III) Intent to disrupt competitor’s business Registration with intent to disrupt
competitor’s business (cl 4 b(iii) Examples:
Diversion of DN to an undesirable site Diversion of DN to any other website to
cause confusion ‘Typo’ diversions - obtaining a (similar) DN to
attract ‘typo error users’ to your site or another
Bad faith - (iv) Diversion to your own site, by creating confusion
Using DN to intentionally divert users to your site for commercial gain, by creating confusion with complainant’s TM (cl 4(b)(iv))
Eg Reed Executive v Reed Business Information (UK HC, 2002) - use of metatag ‘Reed’ (same as TM of other party) was a breach of TM - implications for UDRP, as metatag could increase confusion caused by a similar domain name
Bad faith - (I) Other indicators
UDRP cl 4 - factors not exhaustive Panels have inferred bad faith from failure
to respond and little else
Registrant has no rights or legitimate interests
Default advantage of 1st registration Holder should win if has legitimate interest UDRP 4(a)(ii) and 4(c)(i), (ii) or (iii)
Use re bona fide goods/services (I) Distributors, licencees and resellers
Use of own name (ii) Honest concurrent use (iii)
Legitimate use - for marketing Sale/advertising of domain name itself can satisfy
this (if before notice of TM) Distributors, licencees and resellers
have legitimate uses of TMs to advertise the goods/services provided
They have notice of mark, not of dispute ‘bona fide offering’ must not extend to pretending to be
the TM owner• Protection against similar names only
Descriptive /geographical/ generic names More likely to succeed the more generic is the TM
Legitimate use - Honest concurrent use
First to register DN of honest concurrent users should be able to retain name Any further disputes must be left to Courts
Examples: Fuji Film v Fuji Publishing -
Legitimate use - Own name
Examples: Penguin v Katz - nickname ‘Penguin’ was
enough to retain DN Change of name to ‘Mr Oxford University’
was not enough to retain DN
Legitimate use - other
Cl 4 c (iii) allows ‘legitimate noncommercial or fair use’, not to ‘mislead consumers’ or tarnish the TM
UDRP decisions in Court Sources of decisions
WIPO Selection of UDRP-related Court Cases - 16 to Oct 02
Jones UDRP "Appeals" in Court (on UDRP.net) - 61 to Oct 02
Types of analysis Patrick Gunning - do Courts decide differently from
UDRP panels? David Sorkin - what ‘deference’ do and should US
courts show to UDRP panels?
UDRP - Do Courts decide differently? Decisions same as UDRP panel
Strick Corporation v Strickland (US Dist Ct) Victoria’s Cyber Secret (US Dist Ct) Barcelona.com Inc (US Dist Ct)
Decisions contrary to UDRP panel Storey v Cello (US Dist Ct) - procedural issue
Gunning’s conclusion - too early to say: Few decisions ‘appealed’, and Court usually reached
same conclusion as UDRP panel But this could also reflect cost of litigation and .com
downturn
UDRP - What ‘deference’ should Courts give it?
Sorkin: US Courts ‘normally apply an extremely deferential standard of review to arbitration decisions’
Reviews 5 UDRP decisions before US federal courts - UDRP decisions ignored or briefly mentioned; some Court said that decision would be de novo
UDRP - What ‘deference’ should Courts give it? Sorkin concludes review should be de novo:
UDRP excludes ‘legitimate’ disputes (anational) UDRPolicy ≠ trademark law Procedural reasons are even stronger
• Parties expectations (and intent of UDRP)• Streamlined UDRP procedures do not allow testing of
evidence• Disparity in appeal requirements deny due process
Conclusion: de novo review is consistent with UDRP and required for fairness
Court Resolution
Covers court cases on domain names, and the integration between the domain name system and trademarks