Domain Name Dispute Research Articles

Online Dispute Resolution: The Emperor's New Clothes?

The question this paper addresses is how can information technology support the resolution of disputes through arbitration and mediation. The first and second parts will examine the benefits of online dispute resolution, some of the pitfalls it may present and how these can be avoided. The third part will then look at one of the more formidable obstacles--the issue of security of communications. The fourth part will examine the use of ODR in one particular sector, the traditional arbitral institutions. Much has been written about the application of ODR in areas other than commercial arbitration, such as consumer e-commerce and domain name disputes, where its use has been on the whole successful. Arbitration, being a fact-finding and decision-making process, seems ideally suited to IT. It is therefore interesting to see to what extent ODR is used in practice. The conclusion from this examination is that, although some IT is being used and increasingly so, this is still a developing field. This paper will conclude by discussing the reasons for this relatively slow take-up of ODR in the field of commercial arbitration and by speculating about future developments in this area.

Case report — Hong Kong: First decisions issued by the Hong Kong office of the Asian Domain Name Dispute Resolution Centre

The Asian Domain Name Dispute Resolution Centre (“ADNDRC”) is a joint undertaking between the China International Economic and Trade Arbitration Commission (“CIETAC”) and the Hong Kong International Arbitration Centre (“HKIAC”). Since it began accepting disputes on 28 February 2002, ADNDRC has considered cases through both its Chinese and Hong Kong offices and, as of the beginning of November 2002, ten decisions had been issued. The Hong Kong office of the ADNDRC has, so far, received eight complaints. Of these: three were withdrawn; two cases are pending; two domain names have been transferred; and one complaint has been rejected. The three decisions made so far by the Hong Kong office of ADNDRC are discussed below. All decisions were made by single panellists.

Virtual Countries: Internet Domain Names and Geographical Terms

This paper examines the dispute between the Seattle company Virtual Countries Inc. and the Republic of South Africa over the ownership of the domain name address southafrica.com . The first part of the paper deals with the pre-emptive litigation taken by Virtual Countries Inc. in a District Court of the United States. The second part considers the possible arbitration of the dispute under the Uniform Domain Name Dispute Resolution Process of the Internet Corporation for Assigned Names and Numbers (ICANN) and examines the wider implications of this dispute for the jurisdiction and the governance of ICANN. The final section of the paper evaluates the Final Report of the Second WIPO Internet Domain Name Process.

The New Hong Kong Domain Name Dispute Resolution Policy: A Comparative Analysis

On 24 April, 2001, Hong Kong adopted a new Domain Name Dispute Resolution Policy. This represents the efforts of Hong Kong to strengthen management of its domain name disputes, particularly for 'cybersquatting' cases. This article first analyses the salient features of the Policy, including grounds for complaints, rights of complainants, confusingly similar domain names, use of domain names, evidence of registration and use in bad faith, and legitimate interests of domain name owners. The article evaluates the merits of the Policy, including its flexibility, low cost and time-saving efficiency. It also evaluates its demerits, including its restrictive scope, bias toward trademark owners, inadequate coverage for 'reverse domain name hijacking', limited range of remedies, and possibilities for further court proceedings. The article then concludes that the Policy is laudable as it demonstrates the determination and intention of Hong Kong to observe the international standards and practice in its information technology laws.

Reflexive Transnational Law

Summary The author examines the emergence of a transnational private law in alternative dispute resolution bodies and private norm formulating agencies from a reflexive law perspective. After introducing the concept of reflexive law he applies the idea of law as a communicative system to the ongoing debate on the existence of a New Law Merchant or lex mercatoria. He then discusses some features of international commercial arbitration (e.g. the lack of transparency) which hinder self-reference (autopoiesis) and thus the production of legal certainty in lex mercatoria as an autonomous legal system. He then contrasts these findings with the Domain Name Dispute Resolution System, which as opposed to Lex Mercatoria was rationally planned and highly formally organised by WIPO and ICANN, and which is allowing for self-reference and thus is designed as an autopoietic legal system, albeit with a very limited scope, i.e. the interference of abusive domain name registrations with trademarks (cybersquatting). From the comparison of both examples the author derives some preliminary ideas regarding a theory of reflexive transnational law, suggesting that the established general trend of privatisation of civil law need to be accompanied by a civilisation of private law, i.e. the constitutionalization of transnational private regimes by embedding them into a procedural constitution of freedom.

The ICANN Domain Name Dispute Resolution System as a Model for Resolving other Intellectual Property Disputes on the Internet*

This article provides a introductory consideration of the extent to which the domain name dispute resolution system of the Internet Corporation for Assigned Names and Numbers (ICANN) - which implements and enforces the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP) - provides a useful model for the resolution of other intellectual property disputes that arise through the use of the Internet. It starts with a brief description of the development and implementation of the UDRP, and of the experience since its adoption by ICANN. The article then proceeds to explain the reasons for the effectiveness of the ICANN domain name dispute resolution system, and the key actors and entities that comprise that system. The conceptual equivalent of those actors and entities in a generalized regulated technical infrastructure are then determined by extrapolation. The reasons for the effectiveness of the ICANN system - the uniform application of the UDRP to all potential transgressors, and the automatic execution of an effective remedy against proven transgressors - are discussed as well as how this remedy can have the secondary effect of the removal of the transgressor's presence on the Internet under the domain name in issue. There is no reason why, as a matter of practical necessity, the availability of this remedy need be limited to the type of conduct currently prohibited in the UDRP - i.e. bad faith registration and use of a domain name that is the same or confusingly similar to another person's trademark or service mark. It is conceivable that other conduct which infringes on the rights of an intellectual property owner could be treated as giving rise to such a remedy. Accordingly, the ICANN domain name dispute resolution system does, in theory at least, have the potential to provide a model for the resolution of disputes concerning misuse on the Internet of other intellectual property.

DOMAIN NAMES DRS — HONG KONG

The .hk domain name system was overhauled in 2001. A newly incorporated company, Hong Kong Domain Name Registration Company Limited (HKDNR) took over the administration of .hk domain names and dispute resolution procedures along the lines of the ICANN UDRP procedures were adopted. The administration of .hk domain names has recently been taken over by the Hong Kong Internet Registration Corporation Limited with HKDNR, its wholly owned subsidiary, continuing as its operating arm. In June 2001 the Hong Kong International Arbitration Centre was appointed as .hk dispute resolution provider and to-date remains the sole provider for such disputes. In September and October 2001 respectively, the Hong Kong International Arbitration Centre under the domain name dispute resolution procedures adopted in June 2001 made the first two disputes over .hk domain names. This article summarizes these two decisions and looks at the reasoning employed.

The Uniform Domain Name Dispute Resolution Process and the Appearance of Partiality Panelists Impaled on the Horns of a Dilemma

The Uniform Domain Name Dispute Resolution Process and the Appearance of Partiality <i>Panelists Impaled on the Horns of a Dilemma</i>

The National Arbitration Forum's Supplemental Rules to Icann's Uniform Domain Name Dispute Resolution Policy

The National Arbitration Forum's Supplemental Rules to Icann's Uniform Domain Name Dispute Resolution Policy

The Future of Domain Name Dispute Resolution: Crafting Practical International Legal Solutions from within the UDRP Framework

During the last twenty-five years, the Internet has evolved from a United States government research project into a prominent international medium of communication.' Throughout this evolution, the domain name system (DNS) has played a major role in the rise of the Internet's popularity by providing a human friendly method of Internet navigation,2 thus facilitating international commerce and a global exchange of knowledge. The rapid growth of the Internet and the development of the DNS, however, have come with a pricenamely, an immense strain on an international trademark law system ill equipped to deal with cyber-controversies.3 As the United States

Fair.com?: An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP

Fair.com? reviews all 3094 ICANN Uniform Domain Name Dispute Resolution Policy (UDRP) decided through July 7, 2001 finding that that the allocation of cases may be unfairly biased toward trademark holders. It arrives at that conclusion based on three key findings. First, forum shopping has become an integral part of the UDRP. ICANN delegates the administration of the UDRP to four dispute resolution providers. Each provider maintains a roster of panelists who serve as judges in deciding the disputes. Complainants, who are invariably trademark holders, have the right to select which provider will handle their case. Track records of the various providers are a matter of public record and show that 90% of complainants rationally choose the two providers who feature panelists that render the most pro-complainant decisions. Second, there is a correlation between the selection of panelists and case outcome. UDRP cases are decided by either single or three-member panels. Single member panels feature one judge chosen exclusively by the arbitration provider. Three-member panels contain three judges selected by both the complainant and the respondent. This is significant since data shows that when providers control who decides a case, complainants win just over 83 percent of the time. As provider influence over panelists diminishes, such as in three-member panel cases, the complainant winning percentage drops to 60 percent. In an attempt to explain this, the study arrives at the third key finding - the higher winning percentage in single member panel cases may stem from provider bias toward ensuring that pro-complainant panelists decide the majority of cases. Although the allocation of cases is supposed to be random, the study finds that this may not be the case. For example, the National Arbitration Forum, one of the larger dispute resolution providers, has 135 panelists. However, 53 percent of its single panel cases are decided by only six of them. Those six panelists rule in favour of complainants 94 percent of the time. The article concludes that the solution to the forum shopping issue, and with it the concerns about bias and inconsistency within the UDRP, is surprisingly simple -- all contested UDRP actions should involve three-member panels. Establishing the three-member panel as the default would remove most provider influence over panelist selection and ensure better quality decisions by forcing panelists to justify their reasoning to their colleagues on the panel. As with the current system, both parties would play a role in selecting one panelist, who may be part of any ICANN-accredited providers' roster, while the provider would select the third panelist from among a list that both parties have reviewed and accepted.

Designing Non-National Systems: The Case of the Uniform Domain Name Dispute Resolution Policy

The article critically assesses the Uniform Domain Name Dispute Resolution Policy (UDRP) as a potential model for solving the immense legal challenges presented by transborder activity. Inaugurated in late 1999 by the Internet Corporation for Assigned Names and Numbers (ICANN), the UDRP creates a fast, inexpensive online mechanism for trademark owners to recapture domain names held by persons who, in bad faith, register and use domain names that are confusingly similar to those marks. At present, the UDRP applies only to a narrow segment of disputes between trademark owners and domain name registrants. But the UDRP has been heralded by some as the model for a new non-national approach to lawmaking and dispute settlement applicable to a broader set of legal issues that transcend national borders. In this article, we describe the conditions that led to the UDRP's formation and consider whether the UDRP can and should be replicated elsewhere. The process by which the UDRP was created, and the way in which it is structured, departs significantly from preexisting approaches to international lawmaking and dispute settlement. The UDRP is the product not of national legislation nor an international treaty, but rather of a web of contractual obligations imposed by a private, non-profit corporation with a monopoly over a valuable resource. Through its agreements with the U.S. Department of Commerce, ICANN serves as the gatekeeper for anyone seeking to acquire the most commercially valuable internet addresses. Exclusive control of access to the root server enables ICANN to dictate the terms and conditions for domain name ownership. This technological control also facilitates enforcement of UDRP panel decisions compelling domain name registrars to cancel ownership of contested domain names or transfer them from registrants to trademark owners. The UDRP deviates from preexisting lawmaking and dispute settlement paradigms in other ways that make its advantages considerable (and which may make it attractive for replication). For example, the UDRP is a hybrid dispute settlement system. It contains an amalgam of elements from three distinct decision making paradigms - judicial, arbitral and ministerial - and it draws inspiration from international, supranational, and national legal systems. The UDRP thus reveals how dispute settlement structures can be tailored to the needs of new technologies and new types of legal conflicts. The UDRP is also non-national. Neither its substantive content nor its prescriptive force necessarily depends upon the laws, institutions, and enforcement mechanisms of any single nation-state or treaty regime. It thus suggests ways to bypass the often slow and cumbersome mechanisms of national and international lawmaking and to fulfil the demand for effective dispute settlement mechanisms that, like so much current social activity, transcend national borders. Even assuming the UDRP can be applied to other situations where the conditions of monopolistic technological control do not subsist, however, we do not believe that it should be uncritically extended to other contexts without first questioning how non-national systems ought to be structured. In particular, while we applaud the effort to construct a non-national model that draws upon but is not constrained by existing paradigms, the current iteration of that model fails to incorporate appropriate checking mechanisms to control the scope and pace of lawmaking and the limited powers granted to dispute settlement decisionmakers. Moreover, the tensions between national and non-national values may be more difficult to reconcile in other settings; cybersquatting, in contrast, was universally condemned, and thus competing national values were less frequently implicated. We seek to identify these and other variables that should guide the authors of new checking mechanisms for new non-national structures.

International Dispute Settlement at the Trademark-Domain Name Interface

This essay identifies some of the emerging legal issues relating to the Uniform Domain Name Dispute Resolution Policy (UDRP), a new anational online dispute settlement system established by a private, non-profit corporation, the Internet Corporation for Assigned Names and Numbers in late 1999. The UDRP creates a fast and inexpensive mechanism for trademark owners to recapture domain names held by persons who, in bad faith, register and use domain names that are confusingly similar to those marks.The UDRP is worthy of serious study for at least two reasons. First and foremost, the process by which the UDRP was created, and the way in which it is structured, departs significantly from preexisting approaches to international dispute settlement, not only for intellectual property rights but also for international law generally. These differences in creation and structure raise questions about the UDRP's legitimacy and thus the legitimacy of the case law it is producing.Second, UDRP is already being heralded by national and international lawmakers as a model for resolving a much broader set of transborder legal problems. Although certain aspects of the UDRP may be worthy of emulation, this essay asks some hard questions about how anational dispute settlement systems ought to be structured. It focuses in particular on the mechanisms used to control the limited powers granted to dispute settlement decisionmakers such as UDRP panels. And it proposes several steps that ICANN should take to bolster the legitimacy of this new dispute settlement system.

How the Domain Name Scruffles are Rocking the Foundations of Trade Mark law

The central proposition of this paper is that it is no longer valid to assert that the only and proper function of the trade is to denote the source of the product to which it is affixed. Trade marks are being employed in many diverse ways. In the age of mass media, trade marks may provide the key to marketing successfully. The dilution doctrine has developed in recognition of the potential value of a trade mark to tis owner. Anti-dilution provisions, as far as they go, do provide a useful tool in protecting the trade mark itself. However, as technology continues to advance, so does the trade mark function. The so-called domain name disputes, primarily in the United States are evidence of this claim. Not only have the decisions in these cases furthered the development of the trade mark legislation, they have demonstrated the inadequacies of the current trade mark legislation and the desperate need for reform. These inadequacies are examined and reform is proposed. Finally, the paper assesses the desirability of allowing the further expansion of the trade mark. It is submitted that the proper expansion of the trade mark should not be resisted.

From International Treaties to Internet Norms: The Evolution of International Trademark Disputes in the Internet Age

In today's dynamic, digital economy, there is a global clash between geographically bounded intellectual property rights and the limitless reach of the Internet. Traditionally, discrepancies in international intellectual property rights, such as trademark disputes, have been resolved through time-consuming, multilateral state-to-state treaty negotiations that have global harmonization as the primary goal. With the explosion of e-commerce and the birth of a New Economy, however, such a traditional process is no longer economically viable. Instead, a new approach towards international intellectual property is fast emerging - one that rests not on treaties between multiple states, but on the private contracting of individuals and the social norms of the cyberspace community. This article explores how this new approach of private ordering and Internet social norms operates in the arena of international trademark disputes. The Uniform Domain Name Dispute Resolution Policy recently established by the Internet Corporation for Assigned Names and Numbers provides an example of how private contracts have come to replace the sovereignty of nation-states in the resolution of international trademark disputes. Analyzing this new policy in detail, this article concludes that international trademarks are just one aspect of a greater trend - fostered by the Internet - away from top-down administration and towards a more democratic, and perhaps even populist, mode of decision making.

A Proposal for an Appellate Panel for the Uniform Domain Name Dispute Resolution Policy

A Proposal for an Appellate Panel for the Uniform Domain Name Dispute Resolution Policy

IMPROVING ICANN IN TEN EASY STEPS: TEN SUGGESTIONS FOR ICANN TO IMPROVE ITS ANTI-CYBERSQUATTING ARBITRATION SYSTEM

With the ICANN domain name dispute resolution regime in place for just over a year, practitioner Robert Badgley critiques its operation and identifies a number of early problems which have permitted different arbitration panels to reach contrary conclusions on the same issue. Badgley then offers ten steps that ICANN should undertake to cure these problems, with the overriding theme being to eliminate ambiguity and facilitate establishment of a uniform body of ICANN "precedent" for cybersquatting disputes. Establishing the context for his analysis, the author first examines the ICANN "statute" governing cybersquatting disputes and the ICANN rules of procedure governing the arbitration system. The analysis defines "cybersquatting" and describes the power and function of ICANN arbitrators. Next, Badgley identifies and suggests resolutions for five procedural problems involving issues, such as, what should be the consequence of the failure to respond to a complaint, and what sanctions should be available for a complainant who engages in reverse domain name highjacking. Finally, the author surveys substantive problems with the ICANN "statute. " He identifies and recommends solutions to problems, such as, the need to clarify the analysis of the "identical or confusingly similar" element of an ICANN claim, how that analysis should be applied to "gripe sites," and the inherent problem of proving a negative under the "rights or legitimate interests" element.

Legal aspects of electronic commerce and their implications for the accounting profession

The electronic commerce (e-commerce) revolution is changing the business processes dramatically. It permits new kinds of interactions among business firms, their customers and suppliers, as well as internally within the firms. E-commerce is shaking the foundations of many industries and is leading to new types of e-business models. The vast potential of this exciting way of doing business has led many universities to offer courses, options, majors, and even degrees in e-commerce. The objectives of this paper are to describe some of the legal issues that impact e-commerce activities and to explore their implications for the accounting profession. While both business-to-business e-commerce and business-to-consumer e-commerce are expanding at a brisk pace, laws dealing with e-commerce are lagging behind. This paper provides a brief overview of several legal issues that have emerged in the arena of e-commerce including the following: jurisdictional issues, web linking practices, intellectual property and copyrights, libel laws, sales and use tax issues, encryption regulation, privacy rights, domain name disputes, electronic agreements, and digital signatures. Implications of e-commerce related legal issues for the accounting profession and accounting students are also discussed.

Wrong Turn in Cyberspace: Using ICANN to Route around the APA and the Constitution

The Internet relies on an underlying centralized hierarchy built into the domain name system (DNS) to control the routing for the vast majority of Internet traffic. At its heart is a single data file, known as the “root.” Control of the root provides singular power in cyberspace. This Article first describes how the United States government found itself in control of the root. It then describes how, in an attempt Copyright © 2000 by A. Michael Froomkin. † Professor, University of Miami School of Law. E-mail: froomkin@law.tm. Research and writing of this Article was supported by a Summer Grant from the University of Miami School of Law. Thank you to Karl Auerbach and Richard Sexton for technical information, to Tony Rutkowski for help with DNS history, to Jonathan Weinberg for a number of very helpful conversations, to all the members of the BWG+ mailing list for an education, to James Boyle for including me in this symposium, to Julie Dixson for research assistance, and especially to Caroline Bradley. Kind readers who helped me correct and improve drafts included Alan Davidson, John Hart Ely, Bret A. Fausett, Patrick Gudridge, David Johnson, David Post, Ellen Rony, Tony Rutkowski, Joe Sims, and Jonathan Weinberg. Remaining errors are my own unintentional contribution to further obfuscating ICANN’s history. Readers have a right to know that I participate in activities that touch on the subject of this Article. I served as a member of the so-called Panel of Experts that advised the World Intellectual Property Organization on its Domain Name Process. See infra note 13. Currently, I am a director of disputes.org, which, in partnership with eResolution.ca, is one of the dispute resolution providers accredited by ICANN. See Approved Providers for Uniform Domain Name Dispute Resolution Policy, at http://www.icann.org/udrp/approved-providers.htm (last visited Sept. 21, 2000) (providing a link to the eResolution website) (on file with the Duke Law Journal). I am also a co-founder of ICANNWatch.org, a group founded to increase awareness of ICANN’s activities. The views expressed in this article are my own and should not be attributed to either disputes.org or ICANNWatch.org. An earlier version of this paper was delivered in Durham, N.C., on March 3, 2000. Unless otherwise noted, this Article aims to reflect technical and legal developments as of October 1, 2000. FROOMKIN.DOC 10/30/00 8:47 AM 18 DUKE LAW JOURNAL [Vol. 50:17 to meet concerns that the United States could so dominate an Internet chokepoint, the U.S. Department of Commerce (DoC) summoned into being the Internet Corporation for Assigned Names and Numbers (ICANN), a formally private nonprofit California corporation. DoC then signed contracts with ICANN in order to clothe it with most of the U.S. government’s power over the DNS, and convinced other parties to recognize ICANN’s authority. ICANN then took regulatory actions that the U.S. Department of Commerce was unable or unwilling to make itself, including the imposition on all registrants of Internet addresses of an idiosyncratic set of arbitration rules and procedures that benefit third-party trademark holders. Professor Froomkin then argues that the use of ICANN to regulate in the stead of an executive agency violates fundamental values and policies designed to ensure democratic control over the use of government power, and sets a precedent that risks being expanded into other regulatory activities. He argues that DoC’s use of ICANN to make rules either violates the APA’s requirement for notice and comment in rulemaking and judicial review, or it violates the Constitution’s nondelegation doctrine. Professor Froomkin reviews possible alternatives to ICANN, and ultimately proposes a decentralized structure in which the namespace of the DNS is spread out over a transnational group of “policy partners” with DoC.

Internet Corporation for Assigned Names and Numbers (ICANN): Rules for Uniform Domain Name Dispute Resolution Policy

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