FALL 2010
Cyberlaw
Course No.: 9200-710 (& 810)-001
Course ID:  85723 & 85725
Time: M, W 4:45-6:15 p.m.
Room TBD
Professor Jay Dratler, Jr.
Across from Room 231D (IP Alcove)
Home: 330-835-4537
Copyright © 2000, 2001, 2002, 2003, 2004, 2005, 2006, 2008, 2010  Jay Dratler, Jr.  
For permission, see CMI.

Questions and Notes on ICANN Arbitration Cases

 

1.  How do you explain the result of the arbitration in Infospace?  What element(s) of the "offense" of cybersquatting defined in ¶ 4(a) of the ICANN Policy were missing?  what elements were present?  Why did the arbitrator credit the reponsdent's allegations of good-faith adoption of a similar domain name?  Would you have credited those allegations on the same facts?

Was the arbitrator perhaps compelled to accept those allegations by the nature of the evidence?  Note that ICANN arbitration is designed for written submissions, preferably in electronic form, and not for live testimony with cross-examination.  See ICANN UDRP Rules, ¶¶ 2, 13.  Might a different result have occurred in litigation, with full evidentiary hearings and cross-examination?

2.  Allocation Network GmbH is an interesting case.  If you credit the respondent's claims of lack of knowledge of the complainant's trademark and registration, did the respondent there act just like Toeppen?

Recall that Toeppen had a roster of domain-name registrations including such famous trademarks as "Delta Airlines" and "Neiman Marcus."  Did Steve Gregory do the same, or is there a difference?

Domain-name registration obeys a "prior appropriation" scheme of property rights.  If conflicting trademark-related rights are ignored, a person who first registers a domain name has near-absolute rights in it.  Are there any disadvantages to such a regime?  Might a person with an irrational or sentimental attachment to a domain name hold on to it and refuse to sell it to a person who could use it for a much more valuable purpose?

If so, could an "arbitrageur" like Steve Gregory serve a useful economic purpose?  Since all he wants to do is make money, won't he sell his common-English-word domain names to the highest bidder?  Won't that result in their achieving the highest and best use?  Does this reasoning help explain why the arbitration reached the result it did?

3.  In recent years, the courts have enforced the Federal Arbitration Act vigorously, both to hold parties to their agreements to arbitrate and to reduce the volume of disputes that the courts must handle.  Is Parisi an exception to that trend, or does Parisi depend on the absence of an agreement or intent to arbitrate, to the exclusion of litigation?  What specific parts of the ICANN UDRP and Rules suggest that ICANN's domain-name arbitration regime was never intended to be the exclusive means of resolving domain-name disputes?  Does anything in the Policy or Rules suggest the contrary?  In any event, could ICANN's domain-name arbitration regime ever bind a trademark owner who had never registered a domain name herself but was aggrieved by someone else's registering her trademark as a domain name?  Would the contracts between the domain-name registrant and the registrar, or between the registrar and ICANN, bind her?

4.  ICANN domain-name arbitration is, by and large, a speedy, simple, and inexpensive procedure.  What other advantages, if any, does it have?  What disadvantages does it have as compared to litigation?  If a client came to you complaining that "someone has registered my longstanding trademark as a domain name" what would you recommend?  commencing an ICANN arbitration?  filing suit under Lanham Act § 43(d)? under Lanham Act § 43(c)?  Would the answer depend upon the circumstances?  If so, what circumstances?

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