FALL 2007

Computer Law

Course No.  9200 711 001
Th 6:30 - 9:30 p.m.
Room W-214
Professor Jay Dratler, Jr.
Room 231D (IP Alcove)
(330) 972-7972
dratler@uakron.edu, dratler@neo.rr.com
Copyright © 2000, 2001, 2002, 2004, 2007   Jay Dratler, Jr.   For permission, see CMI.

Notes and Questions on ICANN Regime for Arbitrating Cybersquatting Disputes

1.  Late in 1999, the Internet community created its own answer to cybersquatting.  That answer is entirely a matter of private arbitration under private contract.  Yet it has helped resolve many cybersquatting disputes quickly and without litigation.  For more on this fascinating story, see Jay Dratler, Jr. and Stephen McJohn, Intellectual Property Law: Commercial, Creative, and Industrial Property § 9.01[7][b] (Law Journal Press 1991 & Supps.), available on WESTLAW as described on my website.

2. A private corporation called the Internet Corporation for Assigned Names and Numbers, or ICANN, promulgated the rules of the game.  This corporation was set up to take over management of the Internet's Domain Name System (DNS) from the National Science Foundation and its exclusive private franchisee, Network Solutions, Inc. (NSI), after a political decision in the United States to broaden commercial participation in the Internet.  (Many private parties wanted a piece of the action after NSI sold early in 2000 for $17 billion.)

Although ICANN is a California nonprofit corporation, its members come, and its directors are elected, from all over the world.  It is supposed to run the DNS in the best interests of Internet users worldwide.  Its Website, from which it controls its far-flung empire, is located at www.icann.org.

3.  Two documents govern ICANN's private arbitration regime for cybersquatting.  Both have contractual force by virtue of their incorporation by reference into contracts for registering domain names.

The two documents are known as the Uniform Dispute Resolution Policy and the Uniform Dispute Resolution Rules.  These titles are a bit misleading.  The "Policy" prescribes the substantive rules and how they work.  Among other things, it defines the "offense" of "cybersquatting" for purposes of ICANN arbitration.  The "Rules" are really procedural rules, not substantive rules; they prescribe how the arbitration should proceed.  Among other things, they favor entirely documentary arbitrations, so that disputes can be resolved quickly by electronic communication.

4.  Both the Policy and the Rules are required to be incorporated by reference into every contract for registering a domain name issued by any domain-name registrar, including NSI (which is still in business as a subsidiary of Verisign, although now with competition).  Both documents are also incorporated by reference into the contracts that ICANN has with the various domain-name registrars, from which the registrars derive their authority to register and manage domain names.  Thus the Policy and Rules take effect by virtue of private contract and by virtue of the various registrars' power and contractual obligation to cancel or transfer domain-name registrations in accordance with the terms of their agreements with ICANN and with domain-name registrants.  Although the Policy and Rules are matters of neither national nor international law, do they have the same effect?

5.  A question that arises repeatedly in practice is "which approach to cybersquatting is better, a lawsuit under the ACPA or an artibration under the UDRP?"  Answering that question requires, among other things, comparing the elements of proof required under each approach.  How does the Policy define cybersquatting?  What elements and factors, if any, does its definition have in common with the definition of cybersquatting under Lanham Act § 43(d)?  What elements and factors are different?  What relief is available to the cybersquatting plaintiff or complainant under each regime?  On the same facts, would you rather be a plaintiff in a federal cybersquatting case under Lanham Act § 43(d) or a complainant in a domain-name arbitration under ICANN's Policy and Rules?  a defendant?  why, and under what circumstances?

6 .  The Policy and the Rules allow any organization of arbitrators that complies with them to arbitrate domain-name disputes.  One of the private dispute-resolution services that arbitrates domain-name disputes is the World Intellectual Property Organization WIPO (www.wipo.org).  This is the same organization that administers many, but not all, of the multilateral treaties and international agreements regarding intellectual property.  WIPO also has a website indexing and providing the full text of decisions of arbitrators operating under its supplemental rules.  The index appears at the following Web address:


The WIPO Website also helps answer the question "who usually wins domain-name arbitrations?"  Its Cumulative Case Statistics provide a useful resource with which to advise clients.  

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