Why ICANN's domain dispute rules are flawed: Part II

This is the second part of our in-depth rundown on why the Uniform Dispute Resolution Policy - the rules used by ICANN and WIPO to decide who should own a particular domain - are flawed and why a fast and effective overhaul is essential before it is taken as the de facto policy on domain disputes.

We covered the first five of the ten main points in the first part. Here are the remaining four and a short piece on the future of UDRP.

To remind you, there are the ten main points:

1. It does not spell out who the burden of proof falls on
   
2. It does not say what evidence is required to prove innocence or guilt
   
3. It imposes impossible time limits
   
4. A complainant does not need to contact a domain name owner before going to an arbitrator
   
5. The complainant decides which arbitrator to go to
   
6. There is no appeals process
   
7. Arbitrators (WIPO in particular) have extended their rulings into areas of law they have no right to enter
   
8. Arbitrators have ignored legitimate ownership of domains
   
9. The "bad faith" defence is a nonsense
   
10. No one is monitoring UDRP

In greater depth:

1. It does not spell out who the burden of proof falls on
   
2. It does not say what evidence is required to prove innocence or guilt
   
3. It imposes impossible time limits
   
4. A complainant does not need to contact a domain name owner before going to an arbitrator
   
5. The complainant decides which arbitrator to go to
   
   
6. There is no appeals process
   The idea of an appeals process was originally ruled out because companies worried that cybersquatters would simply postpone decisions by constantly filing spurious information.

   While removing any appeals process in a law-based system is hardly advisable, its absence has enabled arbitrators to chase business and extend their powers beyond what is acceptable without fear of retribution. In short, there is no safety mechanism or watchdog and the process has suffered because of it.

7. Arbitrators (WIPO in particular) have extended their rulings into areas of law they have no right to enter
   As noted at the top, UDRP made special mention that large sections of trademark law should not be decided upon since national laws vary widely. Once this was decided, clauses covering these aspects were not included.

   Despite this, WIPO judges have repeatedly strayed into banned territory and then used the resulting decisions to base future decisions on. Such large errors have now been hard-wired into the process.

   The first example for a famous person concerned Jeanette Winterson, a writer, and the domain jeanettewinterson.com. WIPO should immediately have passed over the case and insisted upon a court of law deciding.

   Instead, it decided that a trademark does not have to actually exist for a right to a trademark to exist. Since Ms Winterson made her career on her name, she has a right to trademark her name. The judges decided to completely overlook the UDRP's policy rules that only "abusive" registrations should be considered and that "registrations that violate trade names, geographical indications or personality rights would not be considered to fall with the definition of abusive registration". They awarded the domain to Ms Winterson and sparked a flood of other famous applicants - all of which gave heavy publicity to the person, WIPO and the process. To our mind, only singer Sting has failed in his bid because he is really called Gordon Sumner and "sting" is a very common word.

   Note the term "geographical indications" in the above sentence. This area was also overrun by another set of WIPO judges for Barcelona.com. This time they decided that the people running a Barcelona tourist site on Barcelona.com did not have the right to it. Instead, Barcelona City Council did. Well, it had more of a right to it. This is despite of the fact that there are nearly one thousand companies with the name "barcelona" in their trademarks (11 of them in the US).

   By making this decision, rather than allowing the first-come, first-served approach in domain registration to stand, WIPO introduced the concept of some people having "better rights" to some domains. Fine, you may say, until you realise that no proper law court in their right mind would have made a decision that give someone subjective "better rights" to something.

   These two cases opened the gates to hundreds of other flawed decisions. The entire problem stemmed from ICANN's failure to define the term "trademark" in UDRP - and, of course, WIPO judges' selectively blindness.

8. Arbitrators have ignored legitimate ownership of domains
   Arbitrators tend to be trademark lawyers and as such have a natural bias towards trademark arguments.

   There are three main aspects to UDRP that a trademark holder has to satisfy the judges have happened before a domain can be handed over. One of these is that the registrant "has no rights or legitimate interests" in the name. This can be down to using the site for "bona fide offering of goods and services", because he/she is know by that name or if they are using it for non-commercial or fair use.

   However, arbitrator bias has been shown in the numerous sucks.com cases, of the form [company]sucks.com. This, according to the rules, is a "fair use" of a domain. However, WIPO (again) decided that due to the criticism on such sites, it was therefore damaging the company and its trademark, so therefore it had a right to the domain. Which crazy doublethink George Orwell would be proud of.

   Trademark lawyers have also overlooked the centuries old defence of parody and criticism of those in public office or of large companies. This right has been used frequently over the years in both the UK and US (we don't know other countries well enough to be certain). Famously, this right (and of course the First Amendment) caused the US Supreme Court to rule in favour of the pornographer Larry Flynt.

   Possibly the most insane example ever comes into the next point:

9. The "bad faith" defence is a nonsense
   A huge number of decisions have been made against the defendant on the basis that that person registered the domain "in bad faith". This term though is effectively redundant due to the set-up of UDRP and the way in which "bad faith" has been understood.

   The bad faith argument is the third element that an arbitrator needs to be convinced of before a domain came be handed over. The first is that the domain is "identical or confusingly similar to an existing trademark". The second that the owner "has no rights or legitimate interests" in the domain (see the point above).

   The first two points are fairly easily provable. However, the bad faith argument allows for a completely innocent domain registrant, who had no idea of conflicting trademarks when he bought the domain, to retain the domain. Or, as was the clause's original aim - to prevent two trademark holders from battling over the same domain.

   The wording for bad faith in UDRP makes this defence paper-thin however. First, it lists four situations in which bad faith can be found. Run as a list, with "or" after each point, it is clearly written to allow for other aspects to be tacked on the end as and when ICANN deems it necessary.

   The four currently are:

   • An offer to sell the domain to the trademark owner or a competitor of the trademark owner
     
   • An attempt to make money off the site by confusing it with the trademark holder's site or services
     
   • Registering the domain in order to prevent a trademark holder from getting it, or if you are someone that has repeatedly registered domains that you don't have trademarks for (basically a clause for serial cybersquatters).
     
   • Its registration was in order to disrupt the business of a competitor

   Unfortunately, WIPO views the bad faith section about "confusing the site with the trademark holder's" as the exact equivalent to the one of the other two main pieces of evidence: that it is "identical or confusingly similar to an existing trademark".

   As such, the bad faith element is made completely redundant. The most worrying aspect of this is that UDRP's limited rules are reduced further while its scope it increased.

   [Before this incredible piece of logic, many companies simply relied upon people accepting to sell their domain names to them. Then they would do them for bad faith. Note UDRP does not specify who has to contact whom first.]

   The finest and maddest example of this - possibly in the short history of domain disputes - was the case of www.bodacious-tatas.com. The Tata Sons company went to WIPO complaining that the site - which contained pornographic images of women - was running on top of its good name and was damaging its business.

   Now, put all the information listed above into a blender and you come up with WIPO's decision that, indeed, Bodacious-Tatas should be handed over to the Indian company. Despite the company name being just "Tata" with no "s", it was decided that seeing as the company has several interests, they are referred to as "Tatas".

   "Bodacious", although slang, has a similar meaning to "high quality" - which is, of course, what Mr Tata and his sons pride themselves on. The hyphen is irrelevant. Thus there could be no other ruling except that bodacious-tatas.com was using the company's name to try and sell porn.

   Of course, what completely eluded the entire "court" was that "tatas" is on an equal par of slang to "bodacious" and means "tits". And so "bodacious-tatas" to anyone except Mr Tata and WIPO means "great tits". And that is precisely what the site contained.

10. No one is monitoring UDRP
    The uniform dispute resolution policy has been running for nearly two years. In that time it has brought nothing but scorn from independent observers. Even the EU is saying that it is hoping to go with a revised or updated approach to domain disputes - and they are possible the most bureaucratic politicians on the face of the Earth.

    UDRP is simply not being discussed. Why is there no mechanism in place to update the policy? It was thrust out into the Internet in far quieter days and of course some aspects would not be 100 per cent correct first time. So why no review?

    ICANN itself has consistently managed to get UDRP off the agenda at its meetings, despite the efforts of a few. It is very hard to imagine why this would the case unless ICANN and the arbitrators had something to gain from doing so. All the mistakes and errors in UDRP and made by arbitrators have, without exception, favoured trademark holders. And these holders are big corporations and famous people.

    If ICANN doesn't wish to be seen as little more than a front for big business, you'd think it would do something about the situation. The fact that the organisation is increasingly run on money donated by the very same big players doesn't help matters.

    In short, UDRP has been allowed to grow rotten. However, with pressure for it to be fed into all new TLDs and even existing ccTLDs, it has never been more important to review this policy.

THE FUTURE OF UDRP

Far from people openly discussing UDRP with the aim of improving it, the opposite appears to be happening. ICANN has consistently avoided debate on the topic.

As has often been the case with the organisation running the Internet names, opinion is rarely sort and, if given, is rarely listened to. With UDRP becoming the de facto resolution policy, it is imperative that we get it right now and not later.

A worse aspect is that WIPO is now growing close to producing a second version of UDRP that will include personal names, place names, names of pharmaceutical drugs and government organisations. The appalling irony that it has been the infringement into these areas of law by arbitrators that have caused many of the problems over the last two years.

And with decisions already made under the previous UDRP regarding these names, will ICANN simply sweep away all the cases that disagree with the new policy or will the new policy take as a foundation decisions that should never have been made?

Alternatively, seeing as arbitrators have clearly proved their inability to behave responsibly within the framework, we would very much like to see UDRP version two put on hold. An arbitrator watchdog with real powers should be appointed; UDRP reduced back to its original areas and cases wrongly decided upon should be run through the law courts (fortunately we are talking just hundreds rather than thousands or hundreds of thousands).

If countries then decide a dispute policy would be more useful than law courts when dealing with Internet domain names, a wider policy should be written up through the main political network of the world, with ICANN and WIPO acting as advisers rather than decision makers.

Then, perhaps, we might end up with a just system. The Internet is here to stay and it's about time we got it right first time. ®

Although not endorsed by him, special thanks goes to Michael Froomkin, who teaches at law at the University of Miami and runs ICANNwatch, for his help and the supply of an as-yet unpublished document on UDRP

Related Story

Part I of the UDRP review