IMPROVING ICANN IN TEN EASY STEPS: TEN SUGGESTIONS FOR ...illinoisjltp.com/journal/wp-content/uploads/2013/10/Badgley.pdf · ICANN TO IMPROVE ITS ANTI-CYBERSQUATTING ARBITRATION SYSTEM

IMPROVING ICANN IN TEN EASYSTEPS: TEN SUGGESTIONS FORICANN TO IMPROVE ITS ANTI-CYBERSQUATTING ARBITRATIONSYSTEM

Robert A. Badgley*

With the ICANN domain name dispute resolution regime inplace for just over a year, practitioner Robert Badgley critiques itsoperation and identifies a number of early problems which havepermitted different arbitration panels to reach contrary conclusionson the same issue. Badgley then offers ten steps that ICANN shouldundertake to cure these problems, with the overriding theme being toeliminate ambiguity and facilitate establishment of a uniform body ofICANN "precedent" for cybersquatting disputes.

Establishing the context for his analysis, the author firstexamines the ICANN "statute" governing cybersquatting disputesand the ICANN rules of procedure governing the arbitration system.The analysis defines "cybersquatting" and describes the power andfunction of ICANN arbitrators. Next, Badgley identifies andsuggests resolutions for five procedural problems involving issues,such as, what should be the consequence of the failure to respond to acomplaint, and what sanctions should be available for a complainantwho engages in reverse domain name highjacking. Finally, theauthor surveys substantive problems with the ICANN "statute. " Heidentifies and recommends solutions to problems, such as, the need toclarify the analysis of the "identical or confusingly similar" elementof an ICANN claim, how that analysis should be applied to "gripesites," and the inherent problem of proving a negative under the"rights or legitimate interests" element.

I. INTRODUCTION

The arbitration system for resolving domain-name cybersquattingcases, established by the Internet Corporation for Assigned Names and

* Robert A. Badgley ([email protected]) is a partner in the Chicago office of Lord,Bissell & Brook.

JOURNAL OF LAW, TECHNOLOGY & POLICY

Numbers ("ICANN"),' has been in force for about a year now. TheICANN arbitration system has been heavily criticized in many quarters,and ICANN's very legitimacy has been an ongoing debate. This Essaydiscusses certain substantive and procedural problems that have surfacedin connection with the ICANN arbitration system.

However, this Essay will not examine the questions surroundingICANN's legitimacy, or the legal effect of ICANN's purportedly bindingarbitration mechanism, or even the question of whether the ICANNarbitration regime is just or desirable. Rather, this Essay takes theICANN regime as it is and suggests ten steps ICANN should take toenhance the effectiveness and legitimacy of its domain-name arbitrationregime.

More than 1,000 decisions were handed down by ICANN arbitratorsin the first ten months of the ICANN regime. The great majority ofthese decisions reflect a faithful application of the ICANN "statute" andarbitration rules. However, there are a number of glaring exceptions,i.e., cases where the arbitration panel botched its analysis or oversteppedits "statutory" authority. Some of these bad rulings derive fromproblems with the ICANN "statute" and procedural rules. This Essaydiscusses a number of the early problems in the implementation ofICANN's arbitration regime and suggests ten measures which ICANNshould undertake to cure these problems.

The changes suggested herein should be considered with a viewtoward developing a coherent body of "precedents" for ICANNcybersquatting disputes. One of the stated goals of the ICANNarbitration regime was to develop a body of such "precedents"potentially applicable to subsequent ICANN cases.2 Several of thespecific suggestions in this Essay arise from the fact that ICANNarbitrators in some instances have reached contrary conclusions on aparticular issue. Any "legal system" hoping to draw legitimacy from theconsistency of its application should strive to minimize inconsistentoutcomes. The ten suggestions offered in this Essay are by no meansexhaustive; even the proponents of the ICANN arbitration regime wouldhave to agree that a fair measure of fine-tuning is in order. By way ofexample, this Essay will not address the criticism that ICANN plaintiffs

1. ICANN, a California non-profit corporation organized in 1998, has assumed responsibilityfor various administrative aspects of the Internet Domain Name System. One court has describedICANN as "a new, quasi-governmental internet-regulating body." Weber-Stephen Prods. Co. v.Armitage Hardware & Bldg. Supply, Inc., No. 00 C 1738, 2000 WL 562470 (N.D. Ill. May 3, 2000).

2. According to the April 30, 1999 "Final Report of the Internet Domain Name Process" issuedby the World Intellectual Property Organization ("WIPO Report"), "with experience and time,confidence will be built up in the credibility and consistency of decisions made under the [ICANNUniform Policy]." FINAL REPORT OF THE WIPO INTERNET DOMAIN NAME PROCESS para. 153 (Apr.30, 1999), at http://wipo2.wipo.int/processl/report/finalreport.html (emphasis added) (on file with theUniversity of Illinois Journal of Law, Technology & Policy).

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IMPROVING ICANN IN TEN EASY STEPS

may engage in "forum-shopping" because some ICANN arbitrationservice providers are more plaintiff-friendly than others.

II. THE ICANN "STATUTE" GOVERNING CYBERSQUATTING DISPUTES

Effective December 1, 1999, ICANN implemented the UniformDomain Name Dispute Resolution Policy ("Uniform Policy").' Domain-name registrars (such as Network Solutions, Inc. or Register.com)routinely incorporate the new Uniform Policy into their standarddomain-name registration contract with their registering customers.Hence, the ICANN Uniform Policy creates a purportedly bindingarbitration mechanism for cases falling within its scope.

The ICANN Uniform Policy governs cybersquatting5 disputesconcerning the ".com'", ''.org", and ".net" generic Top-Level Domains("gTLDs").6 By its terms, the Uniform Policy asserts subject-matterjurisdiction over only one type of dispute, often referred to in ICANNterminology as an "abusive registration" claim] Specifically, theUniform Policy defines its reach as follows:

a. Applicable Dispute. You [the domain-name owner] are requiredto submit to a mandatory administrative proceeding in the eventthat a third party (a "complainant") asserts to the applicableProvider, in compliance with the [ICANN] Rules of Procedure, that

i. your domain name is identical or confusingly similar to atrademark or service mark in which the complainant has rights;andii. you have no rights or legitimate interests in respect of thedomain name; andiii. your domain name has been registered and is being used inbad faith.8Some illustrations of what may constitute "rights or legitimate

interests" and "bad faith" are supplied in Uniform Policy Paragraphs

3. For a recent and thoughtful discussion of the "forum-shopping" phenomenon within theICANN arbitration regime, see Milton Mueller, Rough Justice: An Analysis of ICANN's UniformDispute Resolution Policy, at http://dcc.syr.edu/roughjustice.htm (last visited Jan. 14, 2001) (on filewith the University of Illinois Journal of Law, Technology & Policy). Dr. Mueller concludes that thereis a statistically significant correlation between an ICANN arbitration service provider's market shareand its ratio of prior rulings for the plaintiff versus the defendant. Id.

4. UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY, at http://www.icann.org/udrp/udrp-policy-24oct99.htm (Oct. 24, 1999) [hereinafter UNIFORM POLICY] (on file with theUniversity of Illinois Journal of Law, Technology & Policy).

5. ICANN has described "cybersquatting" as "'abusive registration' [of a domain name] madewith bad-faith intent to profit commercially from others' trademarks." See Second Staff Report onImplementation Documents for the Uniform Dispute Resolution Policy, para. 4(1)(c), athttp://www.icann.org/udrp-second-staff-report-24oct99.htm (Oct. 24, 1999) (on file with the Universityof Illinois Journal of Law, Technology & Policy).

6. See id.7. See id. at para. 1.8. UNIFORM POLICY, supra note 4, at para. 4(a).

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4(c) and 4(b), respectively.9 These illustrations are discussed in thecontext of various ICANN disputes later in this Essay.

III. THE ICANN RULES OF PROCEDURE

The Uniform Policy is implemented through arbitrations, which aregoverned by the ICANN Rules for Uniform Domain Name DisputeResolution Policy ("Uniform Rules").'0 These Uniform Rules aredesigned to achieve the overriding goal of the Uniform Policy, namely, toprovide a quick, streamlined, and inexpensive process for resolvingcybersquatting disputes.1

The only issue addressed by the ICANN arbitrators is whether theplaintiff ("complainant") is entitled to take the domain name away fromthe defendant ("respondent"). Other issues, such as traditionaltrademark infringement, and other remedies, such as damages, are leftfor the courts to decide.

In order to decide these cybersquatting "custody" disputes in aspeedy manner, ICANN's Uniform Rules impose short deadlines, whichthe ICANN panels often enforce to the letter, and severely limit thescope of evidence presented. 2 As a general matter, the pleadings arecomprised of a complaint and a response, no discovery is allowed, andthere is no hearing or trial.'3 A panel's ruling typically is handed downwithin three months of the filing of the complaint.14 If the panel ordersthe transfer of the domain name from the respondent to the complainant,that ruling is to be enforced by the registrar within ten days of the panel'sruling unless the registrar receives official documentation from therespondent indicating that he has filed a lawsuit against thecomplainant.'5

IV. TEN SUGGESTIONS FOR IMPROVING THE ICANN ARBITRATIONREGIME

As suggested above, ICANN's ambitious arbitration regime forcybersquatting disputes has been roundly criticized since its inception in1999. Much of the criticism focuses on the seemingly absurd orcontradictory rulings in a number of well-publicized cases. Somecriticism also focuses on the imprecise nature of the Uniform Policy and

9. Id. at para. 4(c), 4(b).10. RULES FOR UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY, at

http://www.icann.org/udrp/udrp-rules-24oct99.htm (Oct. 24, 1999) [hereinafter UNIFORM RULES] (onfile with the University of Illinois Journal of Law, Technology & Policy).

11. Id. at para. 1, 3,4(a), 10(a).12. UNIFORM RULES, supra note 10, at para. 4-6.13. Id.14. In truth, three months is probably too conservative a statement as the vast majority of

decisions are handed down within two months of the initial filing of the complaint.15. UNIFORM POLICY, supra note 4, at para. 4(k).

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Uniform Rules. The following ten steps should be undertaken byICANN in the near future. The first five steps concern procedural issueswhile the remaining five steps concern substantive issues under theICANN "statute."

A. Procedural Issues

Step 1. Clarify the Effect of a "Defaulting" Respondent

In an ICANN proceeding, a respondent who defaults does notautomatically lose the case. In Canhost Inc. v. Trillium Internet Service,6

the panel stated that a "default" in an ICANN proceeding is not thesame as a "default" in a court of law. 17 Rather, where the ICANNrespondent fails to file a response to the complaint, the panel decides thecase "based upon the complaint.' 8

The panel in Para-Flite, Inc. v. Little'9 interpreted the effect of adefaulting respondent as follows: "Respondent has not acknowledgedreceipt of the Complaint from eResolution (an ICANN arbitrationservice), nor from the Claimant.20 Respondent's position has thereforebeen construed to generally deny Claimant's assertions and the right toany remedy."' By contrast, the panel in Yahoo! Inc. v. Data Art Corp.22construed the respondent's failure to file a response as the respondent'sadmission of the complainant's allegations.23

If the Yahoo! interpretation rather than the Para-Flite inter-pretation is adopted, then a defaulting ICANN respondent is scarcely inbetter shape than a defaulting defendant in court. In any event, this splitof authority regarding the effect of a defaulting respondent should beresolved one way or the other, particularly in view of the frequency ofcases in which the respondent fails to file a response to the complaint. Ata minimum, a complainant should be required to make a prima facie casewith respect to the three elements, discussed supra in Section II, thatmust be proven. The complainant should not be allowed to recover adomain name merely because of bald, but unrebutted, allegations in theICANN complaint.

16. Case No. AF-0241 (DeC Aug. 5, 2000), at http://www.eresolution.ca/services/dnd/decisions/0241.htm (on file with the University of Illinois Journal of Law, Technology & Policy).

17. Id.18. UNIFORM RULES, supra note 10, at para. 5(e).19. Case No. AF-0272 (DeC Aug. 16, 2000), at http://www.eresolution.ca/sercives/dnd/decisions

/0272.htm (on file with the University of Illinois Journal of Law, Technology & Policy).20. Id.21. Id.22. Case No. D2000-0587 (WIPO Aug. 10, 2000), at http://www.eresolution.ca/services/dnd/

decisions/0272.htm (on file with the University of Illinois Journal of Law, Technology & Policy).23. Id.

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Step 2. Clarify Whether the Panel Has the Discretion to AcceptUnsolicited Supplemental Pleadings

The basic pleadings contemplated by the Uniform Rules are acomplaint and a response. Under Uniform Rule Paragraph 12, "thePanel may request, in its sole discretion, further statements or documentsfrom either of the parties. ' '24 There has arisen, unfortunately, a split ofauthority on the question of whether a panel has the authority to allow asupplemental pleading that the panel had not specifically requested.

For example, the panel in Toyota Motor Corp. v. S & S Enterprises,Ltd.25 articulated a flexible attitude towards unsolicited supplementalpleadings by the parties:

[T]his panel does not interpret Rule 12 as precluding acceptance ofadditional uninvited submissions under the panel's general powersconferred by Rule 10, particularly having regard to the panel's dutyunder Rule 10(b) to ensure that each party is given a fairopportunity to present its case. If a respondent raises matter whichthe complainant could not have been expected to have addressed inits complaint, admission of an uninvited reply may be warranted inthe interests of fairness.... Accordingly, it is appropriate toconsider the circumstances of each case before deciding whether toadmit unsolicited additional submissions.26

Numerous other ICANN panels have allowed unsolicited supplementalpleadings without specifically addressing the question of whether theyhad the authority to do So.27

In contrast, another panel was quite literal in its interpretation ofRule 12.28 In Easyjet Airline Co. v. Steggles,29 the panel ruled that since ithad not requested the parties' supplemental pleadings, it could not acceptthem.30 In J.P. Morgan v. Resource Marketing, a different panel citedEasyjet for the proposition that unsolicited supplemental pleadings arenot allowed.3

In view of the reality, as reflected in the Toyota ruling, that arespondent occasionally may raise issues in his response which could notreasonably have been anticipated by the complainant at the time he

24. UNIFORM RULES, supra note 10, at para. 12.25. Case No. D2000-0802 (WIPO Sept. 9, 2000), at http://arbiter.wipo.int/domains/decisions/html

/d2000-0802.html (on file with the University of Illinois Journal of Law, Technology & Policy).26. Id.27. See, e.g., Soci6t6 Slumberland France v. Socit6 Dotcomway, Case No. D2000-0803 (WIPO

Oct. 5, 2000), at http://arbiter.wipo.int/domains/decisions/html/d2000-0803.html (on file with theUniversity of Illinois Journal of Law, Technology & Policy).

28. Easyjet Airline Co. v. Steggles, Case No. D2000-0024 (WIPO Mar. 17, 2000), athttp://arbiter.wipo.int/domains/decisions/htmnl/d2000-0024.html (on file with the University of IllinoisJournal of Law, Technology & Policy).

29. Id.30. Id.31. See Case No. D2000-0035 (WIPO Mar. 23, 2000), at http://arbiter.wipo.int/domains/decisions

/html/d2000-0035.htm (on file with the University of Illinois Journal of Law, Technology & Policy).

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submitted his complaint, and given the panel's duty under Rule 10(b) 2 toensure that each party is given a fair opportunity to present his case, thecategorical bar on unsolicited supplemental pleadings articulated in theEasyjet and J.P. Morgan decisions would seem unduly stingy." Itbespeaks arrogance to suggest that only the panel and not the actualparties (who, after all, are the ones with something to gain or lose in thecase) is capable of identifying situations that call for further elaborationor additional evidence. In addition, due to the page or word limitationsimposed by three of the four ICANN arbitration services, such a postureborders on the silly.

It is recommended that panels retain the discretion to accept ordecline supplemental pleadings, but the Easyjet and J.P. Morgan positionon this matter should be expressly disavowed. There is no justifiablereason for a categorical bar against unsolicited pleadings.

Step 3. Extend the Time for Enforcement of a Panel's Transfer Order

As noted above, in the event the panel orders that the domain namebe transferred to the complainant, the registrar is required to transfer thedomain name ten days after receiving the panel's decision unless theregistrar receives official documentation from the respondent indicatingthat he has filed a lawsuit against the complainant.34

Given the international scope of the Uniform Policy (it applies to all".com", ".org", and ".net" domain names, whether the parties live in thesame town or in different hemispheres), the ten-day enforcement ruleshould be relaxed a bit. The laws of trademark differ from country tocountry, as do the laws concerning the grounds on which an arbitrationdecision may be challenged. Indeed, it is conceivable that some nations'laws might not even allow the purportedly binding ICANN arbitrationrequirements to be enforced. Ten days is a remarkably short time inwhich to sort out these issues and decide whether to file a court action.

It would not severely undermine ICANN's goal of celerity toestablish the following deadlines for enforcement of a panel's transferorder: (1) the respondent has ten days after the panel's ruling in which toadvise the registrar that he is considering the filing of a court action; and(2) the respondent has thirty days after the panel's ruling to file such acourt action and provide a copy of the filing to the registrar. This

32. Uniform Rules Paragraph 10(b) provides that "the Panel shall ensure that the Parties aretreated with equality and that each Party is given a fair opportunity to present its case." UNIFORMRULES, supra note 10, at para. 10(b).

33. Even if a panel felt duty-bound to adhere to the interpretation of Rule 12 adopted in theEasyjet and J.P. Morgan cases, there seems to be no reason why a panel could not simply "request" asubmission retroactively, i.e., after it is submitted, if the proper adjudication of the merits of the casewould benefit from the additional submission.

34. UNIFORM POLICY, supra note 4, at para. 4(k).

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additional breathing space may also allow the parties to work out asettlement and thereby obviate the need to run into court.

Step 4. Abrogate the Manchester Airport Statement Regarding SettlementCommunications

During the course of any litigated or arbitrated dispute, it iscommonplace that the parties may attempt to reach a settlement.Litigants are unceasingly reminded of this possibility by the tribunals,particularly by judges who are trying to clear their overcrowded dockets.There is no reason why ICANN proceedings should be any different.And yet, they might be if the comment by one ICANN panel is taken toheart.

In Manchester Airport PLC v. Club Club Ltd.,35 the complainantsent the respondent a letter containing a "without prejudice" offer tosettle their ICANN dispute. 6 The letter was not copied to the panel butwas brought to the panel's attention when the respondent copied thepanel on his response to the complainant's settlement-offer letter.37 Thepanel observed that, "in corresponding unilaterally with the respondent,the complainant was in breach of Rule 2(h)(iii)."'38 That provision states,"Any communication by... a Party shall be copied to the other Party,the panel and the Provider, as the case may be."3 9 It would appear thatthe overriding purpose of Rule 2(h)(iii) is to prevent a party fromsending ex parte communications to the panel, to which the other partyhas no opportunity to respond. It seems highly unlikely that the rule wasdesigned to foreclose settlement discussions between the parties once anICANN proceeding had commenced.

Fortunately, the panel in Manchester Airport did not take any actionspecifically directed at the complainant's breach. However, it issubmitted that the panel should never have made the statement that a"without prejudice" settlement letter was a breach of the Uniform Rules.Once an ICANN proceeding is underway, the parties may now fear thatan out-of-court settlement discussion is out of bounds unless the panel ispart of the settlement discussion! The absurdity of such a state of affairsdemands no elaboration.

There can be little doubt that parties to ICANN proceedingsregularly engage in settlement discussions while the ICANN case ispending. In one case, the panel even took note of the fact that the

35. Case No. D2000-0638 (WIPO Aug. 22, 2000), at http://arbiter.wipo.int/domains/decisions/word/d2000-0638.doc (on file with the University of Illinois Journal of Law, Technology & Policy).

36. Id.37. Id.38. Id.39. UNIFORM RULES, supra note 10, at para. 2(h)(iii).

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parties had been discussing settlement.4 0 The next time ICANN getsaround to revising its rules, the anti-settlement dictum of ManchesterAirport should be specifically rejected.

Step 5. Penalize Bad-Faith Complaints

In the event an ICANN panel finds that the complaint was broughtin bad faith, i.e., "Reverse Domain Name Highjacking,' or was brought"primarily to harass the domain-name holder," then the panel is requiredto "declare in its decision that the complaint was brought in bad faith andconstitutes an abuse of the administrative proceeding. 4 2 Within theICANN regime itself, however, such a declaration by the panel has noapparent legal consequence.

A complainant who files a frivolous ICANN complaint should notbe let off the hook so easily. Although the ICANN proceedings arequick and relatively inexpensive, they impose a burden on therespondent. Time is wasted and money is spent defending against whatturns out to be a groundless claim. There should be some mechanismwhereby the ICANN panel that makes a Rule 15(e) finding can awardthe respondent his reasonable legal fees and expenses. A complainantwho fails to reimburse such fees within sixty days could either have oneof his own domain names suspended, or be placed on a list of personsforbidden to file future ICANN complaints, or both.

One of the most recurring criticisms of the ICANN Uniform Policyduring its first year is that the results are tilted in favor of thecomplainants and, more pointedly, in favor of big businesses.43 ICANNcould alleviate some of these concerns by putting some teeth into Rule15(e), thereby deterring frivolous complaints.

B. Substantive Issues

Step 6. Clarify the Analysis Required to Establish "Identity or ConfusingSimilarity"

The first element of an ICANN claim is that the respondent'sdomain name is "identical or confusingly similar to a trademark or

40. See Planned Parenthood Federation of Am., Inc. v. Constituent Service, Inc., Case No.D2000-0296 (WIPO July 7, 2000), at http://arbiter.wipo.int/domains/decisions/word/d2000-296.doc (onfile with the University of Illinois Journal of Law, Technology & Policy).

41. Jason M. Osborn, Effective and Complementary Solutions to Domain Name Disputes:

ICANN's Uniform Domain Name Dispute Resolution Policy and the Federal AnticybersquattingConsumer Protection Act of 1999,76 NOTRE DAME L. REV. 209, 242-45 (2000).

42. UNIFORM RULES, supra note 10, at para. 15(e).43. Oscar S. Cisneros, ICANN't Believe That Domain Name, at http://www.wired.com/news/

politics/0,1283,37801,00.html (July 27, 2000) (on file with the University of Illinois Journal of Law,Technology & Policy).

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service mark in which the complainant has rights."" A number ofICANN panels have expressly held that this element may be satisfied ifthe trademark and the domain name are identical, even if there is nolikelihood of confusion. As one panel stated, "[m]ere identicality of adomain name with a registered trademark is sufficient to meet the firstelement of the test, even if there is no likelihood of confusionwhatsoever. 4 5 Another panel said:

[t]o determine whether a [domain] name is identical or confusinglysimilar to a mark [under the ICANN Uniform Policy], the panelmerely compares the mark in question to the domain name at issue,regardless of the various lines of business in which each is used or ofthe geographic areas in which each party conducts business.46

As these rulings suggest, the "identity or confusing similarity" issuein the ICANN context may be analyzed by a mere comparison of thedomain name and the trademark. In other words, so long as the disputeddomain name and the trademark are found to be identical or confusinglysimilar, a deeper analysis of likely consumer confusion regarding theorigin of the goods or services offered, which lies at the heart oftraditional trademark infringement analysis,47 may not be required inmany ICANN cases.

However, one ICANN panel has analyzed the "identity or confusingsimilarity" element by employing a traditional trademark infringementanalysis. In Newport News, Inc. v. VCV Internet,4 the panel observedthat "newportnews.com" was "for all intents and purposes,... identical"to the complainant's trademark "NEWPORT NEWS. '49 Whereasninety-nine percent of other ICANN panels would have stopped rightthere and moved on to the second and third elements of the ICANN"abusive registration" claim, the Newport News panel said that "thissimilarity alone, contrary to the complainant's view, is insufficient tosupport any finding of trademark infringement. "50 The panel then wenton to conduct a classic trademark analysis of "likelihood of confusion"

44. UNIFORM POLICY, supra note 4, at para. 4(a)(i); UNIFORM RULES, supra note 10, at para.3(b)(ix)(l).

45. Shirmax Retail Ltd. v. CES Marketing Group Inc., Case No. AF-0104 (DeC Mar. 20, 2000),at http://www.eresolution.ca/services/dnd/decisions/0104.htm (on file with the University of IllinoisJournal of Law, Technology & Policy).

46. Plan Express Inc. v. Pan Express, Case No. D2000-0565 (WIPO July 17, 2000), athttp://arbiter.wipo.int/domains/decisions/html/d2000-0565.html (on file the University of IllinoisJournal of Law, Technology & Policy).

47. "The touchstone of liability [under Lanham Act, 15 U.S.C. § 1114] is whether the defendant'suse of the disputed mark is likely to cause confusion among consumers regarding the origin of thegoods offered by the parties." PACCAR v. Telescan Technologies, No. 99-76199, 2000 WL 1246431,at *3 (E.D. Mich. Aug. 25,2000) (involving domain names).

48. Case No. AF-0238 (DeC July 18, 2000), at http://www.eresolution.ca/services/dnd/decisions/0238.htm (on file with the University of Illinois Journal of Law, Technology & Policy).

49. Id.50. Id.

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and ultimately concluded that the complainant had not met its burdenunder the "identity or confusing similarity" standard."

It is submitted that the Newport News panel misunderstood theessence of the ICANN "abusive registration" claim and confused it witha trademark infringement claim. In any event, since this has happened atleast once already, ICANN should clarify the Uniform Policy to confirmthat the ICANN "identity or confusing similarity" standard is notcoextensive with the traditional trademark analysis of "likelihood ofconfusion."

Step 7. Confirm That a "Sucks.com" Domain Name is not "Identical orConfusingly Similar" to the Complainant's Trademark

Many domain names are registered and used for the expresspurpose of criticizing a business. To illustrate, someone who has had abad experience with Acme Insurance Company may register"acmesucks.com" and provide a web site forum at which disgruntledAcme policyholders can vent their spleen. Given the limited scope of the"abusive registration" claim recognized in the ICANN regime, it is hardto see how the complainant trademark owner could ever win these casesin an ICANN proceeding where the domain name contains pejorativelanguage such as "sucks." Even so, there is a split of authority in these"gripe site" ICANN cases.

52In CompUSA Management Co. v. Customized Computer Training,the panel refused to cancel the domain name "stopcompusa.com".53 Thepanel ruled emphatically that the respondent's free-speech right to use adomain name and the corresponding web site to criticize thecomplainant's goods and services was "as legitimate as any commercialactivity.,14 The panel even called the complainant a "cyber-bully" whoimproperly used the ICANN process to stifle criticism of its goods and

55services.The Comp USA panel also reached the obvious conclusion that there

was absolutely no confusing similarity between the trademark"CompUSA" and the domain name "stopcompusa.com".56 This pointshould be dispositive in any ICANN proceeding where the domain name• • • ,, ,,57

is something like "acmesucks.com". No trademark owner can plausiblyargue that the public is likely to be confused by a domain name that addsthe word "sucks" or some similarly pejorative word to the trademark.

51. Id.52. Case No. FA95082 (NAF Aug. 17, 2000), at http://www.arbforum.com/domains/

decisions/95082.htm (on file with the University of Illinois Journal of Law, Technology & Policy).53. Id.54. Id.55. Id.56. Id.57. Id.

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Nevertheless, a number of ICANN panels have ruled that registrants of"sucks.com" domain names had to surrender their domain names to thecomplainants. In these cases, the panels held that the domain names"dixonssucks.com",. "natwestsucks.com", 9 and "standardcharteredsucks.com"6

0 were confusingly similar to the trademarks "Dixons, '6 1

"Natwest," 62 and "Standard Chartered,"63 respectively.In Wal-Mart Stores, Inc. v. Walsucks,64 the panel ordered the

respondent-owner of "walmartcanadasucks.com" to transfer that domainname to retail giant Wal-Mart." Unlike the respondent in CompUSA,the respondent in Wal-Mart bore all the attributes of an extortionist, nota disgruntled consumer exercising free-speech rights. The panel in theWal-Mart case evidently could not bring itself to let this unsavoryrespondent off the hook. In its analysis of the first prong of the "abusiveregistration" claim, the panel made the following remarks about"confusing similarity":

Internet users with search engine results listing respondent'sdomains are likely to be puzzled or surprised by the coupling ofcomplainant's mark with the pejorative verb "sucks." Such users,including potential customers of complainant, are not likely toconclude that complainant is the sponsor of the identified websites. 66

The panel should have stopped right there and dismissed the complaint.Having rightly observed that an Internet user (however "puzzled orsurprised") is not likely to confuse the "sucks.com" domain name withWal-Mart, the panel should have held that the first element of theICANN claim had failed.

Unfortunately, the panel added the following paternalistic rationalefor holding that the "confusingly similar" standard had been met:"However, it is likely (given the relative ease by which websites can beentered) that such users will choose to visit the ['sucks.com'] sites, if only

58. Dixons Group PLC v. Purge I.T., Case No. D2000-0584 (WIPO Aug. 13, 2000), athttp://arbiter.wipo.int/domains/decisions/htmi/d2000-O584.html (on file with the University of IllinoisJournal of Law, Technology & Policy).

59. National Westminster Bank PLC v. Purge I.T., Case No. D2000-0636 (WIPO Aug. 13,2000),at http://arbiter.wipo.int/domains/decisions/html/d2000-0636.html (on file with the University ofIllinois Journal of Law, Technology & Policy).

60. Standard Chartered PLC v. Purge I.T., Case No. D2000-0681 (WIPO Aug. 13, 2000), athttp://arbiter.wipo.int/domains/decisions/html/d2000-0681.html (on file with the University of IllinoisJournal of Law, Technology & Policy).

61. Dixons Group, Case No. D2000-0584, at http://arbiter.wipo.int/domains/decisions/html/d2000-0584.html (on file with the University of Illinois Journal of Law, Technology & Policy).

62. National Westminster Bank, Case No. D2000-0636, at http://arbiter.wipo.int/domains/decisions/html/d2000-0636.html (on file with the University of Illinois Journal of Law, Technology &Policy).

63. Standard Chartered, Case No. D2000-0681, at http://arbiter.wipo.int/domains/decisions/html/d2000-0681.htmI (on file with the University of Illinois Journal of Law, Technology & Policy).

64. Case No. D2000-0477 (WIPO July 20, 2000), at http://arbiter.wipo.int/domains/decisions/html/d2000-0477.html (on file with the University of Illinois Journal of Law, Technology & Policy).

65. Id.66. Id.

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to satisfy their curiosity. 67 In its zeal to do justice instead of apply theICANN Uniform Policy, the Wal-Mart panel got it wrong.68

It is submitted that the absolute lack of confusion between atrademark and a "sucks.com" domain name suggests that ICANN panelsshould never decide these "sucks.com" cases in favor of the complainant.Panels who do so are overreaching and misapplying the Uniform Policy.Trademark owners who fear criticism of their products or services shouldspend the thirty-five dollars to register the dreaded "sucks.com" domainname themselves.

Step 8. Clarify the Relationship Between Free-Speech Rights andTrademark Rights in the Context of "Gripe Web Sites"

Not all "gripe sites" have a pejorative term like "sucks" in thedomain name itself. Those situations call for a somewhat differentanalysis. The chief controversy in the ICANN context has been whetherfree-speech rights prevail over trademark rights." The results have beenmixed. For instance, in Mission KwaSizabantu v. Rost,70 the complainantwas found to have a common-law trademark in "KwaSizabantu" inconnection with its religious and spiritual activities. 71 The respondent, adissenter from the KwaSizabantu tenets and practices, registered"kwasizabantu.com", "kwasizabantu.org", and "kwasizabantu.net" andestablished web sites critical of the complainant.7 ' The panel inKwaSizabantu held that the respondent lacked a legitimate interest inthese domain names.73 The panel specifically analyzed Uniform PolicyParagraph 4(c)(iii), which provides that the respondent has a legitimateinterest in the domain name where the respondent is "making alegitimate non-commercial or fair use of the domain name, withoutintent for commercial gain to misleadingly divert consumers or to tarnishthe trademark or service mark at issue. 7 4 The panel concluded that therespondent had used the domain names for a web site that "include[d]

67. Id.68. The Wal-Mart panel went out of its way to dismiss the only judicial precedents which might

illuminate the "sucks.com" question. Admittedly, the Wal-Mart panel was technically correct in itsobservation that both Lucent Technologies v. Lucentsucks.com, 95 F. Supp. 2d 528 (E.D. Va. 2000)("Defendant argues persuasively that the average consumer would not confuse 'lucentsucks.com' witha website sponsored by plaintiff."), and Bally Total Fitness v. Faber, 29 F. Supp. 2d 1161 (C.D. Cal.1998), were distinguishable. (The Lucent court's statement was dictum, and Bally involved a web sitewhich featured the "Bally sucks" theme rather than a domain name "ballysucks.com"). Still, thesecourt decisions should not have been so easily dismissed.

69. Wal-Mart Stores, Inc., Case No. D2000-0477, at http://arbiter.wipo.int/domains/decisions/html/d2000-0477.html (on file with the University of Illinois Journal of Law, Technology &Policy).

70. Case No. D2000-0279 (WIPO June 7, 2000), at http://arbiter.wipo.int/domains/decisions/html/d2000-0279.html (on file with the University of Illinois Journal of Law, Technology & Policy).

71. Id.72. Id.73. Id.74. Id.

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alternative views and indeed critical views concerning the complainantand its activities., 75 In the panel's view, this amounted to "tarnishing theactivities associated with the trademark or service mark'KwaSizabantu'," and hence, the respondent lacked a legitimate interest

76in the domain name.This ruling that criticism of the complainant's activities is

tarnishment is highly suspect. Trademark tarnishment is not easy todefine, but it typically encompasses situations where the defendant isusing the plaintiff's trademark in such a way as to create an associationbetween the trademark and goods or services of an inferior quality, or anassociation between the trademark and an unsavory or unwholesomeactivity or idea. For instance, in Hasbro, Inc. v. Internet EntertainmentGroup, Ltd. , tarnishment was found where the defendant owner of"candyland.com" pointed that domain name to a pornographic web site.78

The plaintiff manufacturer of the children's game "Candyland"successfully argued that the defendant was tarnishing (and therebydiluting) the plaintiff's trademark. This is a far cry from theKwaSizabantu case where the respondent was simply criticizing thecomplainant's activities.79

In Estee Lauder, Inc. v. estelauder.com,88 the respondent owner ofthe domain names "estelauder.com" and "estelauder.net" (note theslight misspelling of the trademark "Est6e Lauder") used its web sites tosolicit complaints about Est6e Lauder, the famous perfume andcosmetics manufacturer.8' The respondent, a personal injury law firm,indicated on the web sites that it was exercising its free-speech rightsunder the First Amendment to the U.S. Constitution.82

The Estee Lauder panel ordered that the domain names betransferred to the complainant.83 With respect to the second prong of theICANN "abusive registration" claim, the panel observed that the testunder Uniform Policy Paragraph 4(a)(ii) was whether the respondenthad any "rights or legitimate interests in respect of the domain name."'4

Addressing the respondent's free-speech argument, the panel said: "It isnot for this Panel to determine whether Respondent has a legitimate or

75. Id.76. Mission KwaSizabantu, Case No. D2000-0279, at http://aribter.wipo.int/domains/decisions

/html/d2000-0279.html (on file with the University of Illinois Journal of Law, Technology & Policy).77. No. C96-13OWD, 1996 WL 84853 (W.D. Wash. Feb. 9, 1996).78. Id.79. Mission KwaSizabantu, Case No. D2000-0279, at http://arbiter.wipo.int/domains

/decisions/html/d2000-0279.htm (on file with the University of Illinois Journal of Law, Technology &Policy).

80. Case No. D2000-0869 (WIPO Sept. 25, 2000), at http://arbiter.wipo.int/domains/decisions/html/d2000-0869/html (on file with the University of Illinois Journal of Law, Technology &Policy).

81. Id.82. Id.83. Id.84. Id.

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protected interest in the contents of its websites .... Here also adistinction must be drawn between the domain name itself and thecontents of the site which is reached through the domain name."85 Thepanel concluded that the respondent had no right to use a domain name

16that was confusingly similar to the complainant's trademark.In yet another "gripe site" case, CSA International v. Shannon,7 the

respondent equipment manufacturer was in an ongoing dispute with thecomplainant, Canadian Standards Association ("CSA"), about thelatter's failure to certify the former's generator machine. Therespondent registered the domain names "csa-canada.com" and "csa-international.net", sites at which the respondent criticized thecomplainant.89 The panel in CSA found these domain names to beconfusingly similar to the complainant's CSA marks.90 The panel alsorejected the respondent's free-speech argument as the basis for alegitimate interest in the domain names by observing that the right tofree speech "does not require the use of complainant's trade marks in thedomain name for that purpose." 91

By contrast, from the perspective of free-speech advocates, the best"gripe site" decision to come down so far is Bridgestone Firestone, Inc. v.Myers.92 In that case, the respondent, a former employee of thecomplainant, registered the domain name "bridgestone-firestone.net" foruse as a complaint site to publicize his pension dispute with thecomplainant.93 The Bridgestone Firestone panel did not draw the samedistinction as was drawn in the Este Lauder and CSA cases, viz., thatfree speech is fine on the web site itself but does not permit therespondent to create consumer confusion with respect to the domainname itself.94 As a practical matter, the view taken by the BridgestoneFirestone panel is, at a minimum, defensible; the domain name and theweb site's home page are only a mouse-click apart. Assuming the website's home page makes it immediately clear that it is a "protest" site, the

85. Id.86. Est& Lauder, Case No. D2000-0869, at http://arbiter.wipo.int/domains/decisions/html/d2000-

0869/html (on file with the University of Illinois Journal of Law, Technology & Policy).87. Case No. D2000-0071 (WIPO Mar. 24, 2000), at http://arbiter.wipo.int/domains/decisions

/html/d2000-0071.html (on file with the University of Illinois Journal of Law, Technology & Policy).88. Id.89. Id.90. Id.91. Id.92. Case No. D2000-0190 (WIPO July 6, 2000), at http://arbiter.wipo.int/domains/decisions

/html/d2000-0190.html (on file with the University of Illinois Journal of Law, Technology & Policy).93. Id.94. Id.

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short-lived consumer confusion is quickly cured by a click on the "back"button.9

In any event, the Bridgestone Firestone panel issued a highlysignificant declaration, namely:

Although free speech is not listed as one of the [Uniform] Policy'sexamples of a right or legitimate interest in a domain name, the list[in Paragraph 4(c)] is not exclusive, and the Panel concludes thatthe exercise of free speech for criticism and commentary alsodemonstrates a right or legitimate interest in the domain nameunder Paragraph 4(c)(iii). The Internet is above all a frameworkfor global communication, and the right to free speech should beone of the foundations of Internet law.

The Bridgestone Firestone decision articulates a rational basis fordefending "gripe sites" against trademark claims. However, theforegoing declaration by the Bridgestone Firestone panel could beexploited as a gaping loophole by cybersquatters. On the strength of theBridgestone Firestone panel's free-speech discussion, cybersquattersmight hope to keep their best domain names (or at least stave offICANN arbitration challenges) by setting up a "gripe site" against thetrademark owner in question. With the Bridgestone Firestone"precedent" out there, cybersquatters may argue that it is impossible tofind them in bad faith when they are using a domain name for a purposeexpressly recognized as legitimate by an ICANN panel.

The question whether free-speech rights should extend to thedomain name itself (as opposed to the content of the web site) is adifficult one, as the mixed results in ICANN cases to date demonstrate.There are legitimate arguments on both sides, and the issue of initialinterest confusion is not easy. In any event, this uncertainty should beaddressed by ICANN.

Unless and until the Uniform Policy is clarified with respect to the"free speech versus trademark rights" issue, it is submitted that free-speech considerations generally ought to prevail. The Uniform Policy, aspresentlyX worded, allows for noncommercial or fair use as a legitimateinterest. 7 As such, where the respondent has constructed an expressiveweb site with no advertisements or other revenue-generating features,and the web site makes it immediately clear to the visitor that therespondent's web site is not affiliated with or sponsored by the

95. This point was recognized by the panel in Mission KwaSizabantu v. Rost. The panelobserved: "The domain names of the Respondent can be characterised [sic] as creating initial interestconfusion even though closer inspection of the website will result in such initial confusion beingdisplaced and deception avoided. However, such initial confusion is not enough for a complainant tojustify remedy under the [Uniform] Policy." Mission KwaSizabantu v. Rost, Case No. D2000-0279(WIPO June 7, 2000), at http://arbiter.wipo.int/domains/decisions/html/d2000-0279.html (on file withthe University of Illinois Journal of Law, Technology & Policy).

96. Bridgestone Firestone, Case No. D2000-0190, at http://arbiter.wipo.int/domains/decisions/html/d2000-0190.html (on file with the University of Illinois Journal of Law, Technology & Policy).

97. UNIFORM POLICY, supra note 4, at para. 4(c)(iii).

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complainant or its trademarks, a finding of legitimacy would seemappropriate in most cases.

Step 9. Clarify the Definition of "Competitors"

Bad faith may be found under the ICANN regime where therespondent has registered the domain name "primarily for the purpose ofdisrupting the business of a competitor." 98 On its face, this provisionappears to discriminate between two types of domain name owners, viz.,those who are in competition with the complainant trademark owner andthose who are not. Applying Paragraph 4(b)(iii), one ICANN panelobserved:

With respect to Section 4(b)(iii), there is no evidence of directcompetition, and the only inference of wrongful purpose comesfrom registration of the Domain Name itself. Were Section 4(b)(iii)to be interpreted to permit an inference or presumption of wrongfulmotive from registration of a domain name that is similar oridentical to a mark, it would swallow up the other sub-parts ofSection 4(b). 99 [Emphasis added.]

Similarly, the panel in CSA International v. Shannon1°° suggested inpassing that Paragraph 4(b)(iii) applies only to "competitors in thebusiness sense." 101

Despite what would seem to be the common-sense interpretation of"disrupting the business of a competitor," namely, that the complainantand the respondent are the "competitors," some ICANN panels haveapplied Paragraph 4(b)(iii) in cases where the parties were notcompetitors. For instance, in Easyjet Airline Co. v. Steggles,1 °2 the panelfound bad faith on the ground that the respondent's web site directedvisitors to the competitors of the complainant airline.' (There wereother reasons to find that the respondent was in bad faith so it cannot besaid that the result in the Easyjet case was wrong).

An even more bizarre interpretation of "competitors" was adoptedin Este Lauder, Inc. v. estelauder.com.'0 As discussed above, therespondent law firm that had set up a web site for consumer complaintsabout the complainant's perfume and cosmetic products was held to be a

98. Id. at para 4(b)(iii).99. See Camco, Inc. v. Pawnbrokers Super-Store, Case No. FA94189 (NAF Apr. 6, 2000), at

http://www.arbforum.com/domains/decisions/94189html (on file with the University of Illinois Journalof Law, Technology & Policy).

100. Case No. D2000-0071 (WIPO Mar. 24, 2000), at http://arbiter.wipo.int/domains/decisions/htnl.d2000-0071.html (on file with the University of Illinois Journal of Law, Technology & Policy).

101. Id.102. Case No. D2000-0024 (WIPO Mar. 17, 2000), at http://arbiter.wipo.int/domains/decisions

/html/d2000-0024.html (on file with the University of Illinois Journal of Law, Technology & Policy).103. Id.104. Case No. D2000-0869 (WIPO Sept. 25, 2000), at http://arbiter.wipo.int/domains/decisions

/html/d2000-0869.html (on file with the University of Illinois Journal of Law, Technology & Policy).

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competitor of the complainant. 5 Applying Paragraph 4(b)(iii) of theUniform Policy, the panel acknowledged that Est6e Lauder and therespondent law firm were not "competitors" in the strict sense. 16

However, the panel adopted a broader definition of "competitor" forpurposes of the ICANN Uniform Policy, viz., "one who acts inopposition to another," even if the respondent competitor is notmotivated by commercial gain. 10 7

It is submitted that the Estge Lauder panel's holding that a law firmwas a competitor of a perfume manufacturer was wrong. It was aninstance of a tribunal straining to reach a just result through impropermeans. Rather than allow its arbitrators to stretch words beyond theirreasonable meaning, ICANN should simply amend the Uniform Policy ifit truly desires results like the one reached in the Est~e Lauder case. Asit stands now, the hyperbolic definition of "competitor" adopted in theEste Lauder case may be exploited by future ICANN panels to reachbad-faith findings under Paragraph 4(b)(iii) in cases where there is nohint of competition between the parties. Hence, ICANN shouldabrogate the Est~e Lauder interpretation of the word "competitor" underParagraph 4(b)(iii).

Step 10. Clarify the Burden of Proof on the "Rights or LegitimateInterests" Element

The burden of proof rests with the ICANN complainant to showthat the respondent lacks any "rights or legitimate interests" in thedomain name.' °8 However, some ICANN panels have acknowledged thatthere is the inherent problem of "proving a negative" with respect to thisaspect of the "abusive registration" claim. 0 9 Accordingly, some panelshave effectively shifted the burden onto the respondent to demonstratethat he has some right or legitimate interest in the domain name. Forexample, the panel in Dow Jones & Co., Inc. v. Hephzibah Intro-NetProject Ltd." ° stated, "[w]hilst the onus of proof in these proceedingsrests with complainant the evidentiary burden in relation to therespondent's rights and interests must shift to respondent once a primafacie case has been raised by complainant since the establishment of suchrights lies primarily within the knowledge of Respondent.'' 1 In IPF

105. Id.106. Id.107. Id.108. UNIFORM RULES, supra note 10, at para. 3(ix)(2).109. See, e.g., Dow Jones & Co., Inc. v. Hephzibah Intro-Net Project Ltd., Case No. D2000-0704

(WIPO Sept. 4, 2000), at http://arbiter.wipo.int/domains/decisionshtml/d2000-0704.html (on file withthe University of Illinois Journal of Law, Technology & Policy).

110. Id.111. Id.

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Online Ltd. v. Applying Thought.com,112 the panel suggested (in dictum)that the "no rights or legitimate interests" burden of proof should notshift to the respondent merely because the complainant asserts that therespondent lacks rights or legitimate interests."3 As the IPF panel put it,"[i]t is admittedly difficult to prove a negative.... but a complainant canat a minimum allege that the respondent is not a subsidiary or affiliateand has not been licensed to use the trademark., 114

In one case, however, the panel held that the complainant couldshift the "legitimate interest" burden of proof to the respondent simplyby alleging that "Respondent has no rights or legitimate interests to thedomain name being the subject of this dispute."'15 If, however, therespondent was able to provide evidence of its legitimate interest inresponse to the complainant's bald allegation, then the "Panel maydeclare that the complaint was brought in bad faith according to Article15(e) of the Rules., 116 This does not appear to be a satisfactoryallocation of the burden of proof, particularly in view of the toothlessnature of a Rule 15(e) declaration that the complaint was brought in badfaith.

In view of these inconsistent approaches to the burden of proofissue, ICANN should articulate what is required for a complainant tomake a prima facie showing that the respondent lacks any rights orlegitimate interests in the domain name, upon which showing therespondent would bear a burden to rebut the complainant. This is anadmittedly difficult proposition in the abstract, and perhaps even moreunwieldy in its concrete application to unique facts. Some attempt atguidance and clarification, though, would be helpful.

V. CONCLUSION

As suggested earlier, an impressive percentage of ICANNarbitration rulings handed down thus far reflect a faithful application ofthe ICANN Uniform Policy and Uniform Rules. Whether the UniformPolicy and Uniform Rules themselves are legitimate and just is not underdiscussion here.

112. Case No. AF-0198 (DeC July 7, 2000), at http://www.eresolution.ca/services/dnd/0198.htm(on file with the University of Illinois Journal of Law, Technology & Policy).

113. Id.114. Id.115. See Spincycle Inc. v. Spin Cycle, Case No. AF-0176 (DeC May 29, 2000), at http://www.

eresolution.ca/services/dnd/0176.htm (on file with the University of Illinois Journal of Law,Technology & Policy).

116. Id.

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128 JOURNAL OF LAW, TECHNOLOGY & POLICY [Vol. 2001

Some of the notoriously poor decisions rendered to date may beattributed not so much to unwise arbitrators as to unclear provisions inthe Uniform Policy and Uniform Rules. It is hoped that the foregoingten suggested steps, if enacted, will help to prevent some futuremisunderstandings and unhappy rulings in ICANN cases, which in turnwould enhance the reputation ICANN seeks as a legitimate entityengaged in a legitimate endeavor.