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