On May 25, 2018, the European General Data Protection Regulation (GDPR) came into effect, meaning that European data protection authorities (DPAs) can begin enforcing the regulation against non-compliant parties.

In preparation, the ICANN Board passed a Temporary Specification for gTLD Registration Data — essentially a temporary policy amendment to its registrar and registry contracts to facilitate GDPR compliance while also preserving certain aspects of the WHOIS system of domain name registration data. Unfortunately, the Temporary Specification permits registrars and registries to significantly reduce publicly-accessible WHOIS data, and does not include a mandatory minimum uniform mechanism for access to non-public WHOIS data for legitimate purposes (such as law enforcement, cybersecurity, or intellectual property rights protection).

The Temporary Specification merely states the following in connection with access to non-public data:

Contracted parties must provide reasonable access to personal data in registration data to third parties (1) on the basis of a legitimate interests pursued by the third party, except where such interests are overridden by the interests or fundamental rights and freedoms of the registrant; or (2) where the Article 29 Working Party/European Data Protection Board, court order of a relevant court of competent jurisdiction concerning the GDPR, applicable legislation or regulation has provided guidance that the provision of specified non-public elements of Registration Data to a specified class of third party for a specified purpose is lawful.

See ICANN, Temporary Specification for gTLD Registration Data, Appendix A, Section 4 (May 25, 2018) (the "Temporary Specification").

Reported Challenges

In light of the limited DPA or jurisprudential guidance concerning the legitimacy of providing any non-public WHOIS data to any class of third party, third parties are dependent on ad hoc determinations as to whether their legitimate interests are outweighed by privacy rights in any given case. While certain contracted parties appear to be providing limited guidance as to what information they require in order to respond favorably to a data access request (of course with no guarantee of success), the vast majority have not provided any such guidance, and all decisions are made on a case-by-case basis with no transparent or predictable criteria.

This problem is not limited to registration authorities based in Europe. It is already being observed throughout the world, including in the United States. In at least one case, a California-based registrar declined a data access request related to a specific intellectual property rights enforcement effort, stating that it "would provide no WHOIS data" at all while failing to provide any rationale for its decision. According to anecdotal reports, the same registrar also has refused to provide a mechanism for contacting their registrants in connection with legitimate purposes, including domain name acquisition inquiries, even though the Temporary Specification requires either an anonymized registrant email address or web form to facilitate registrant contact. See Temporary Specification, Appendix A, Section 2.5.1 ("Registrar MUST provide an email address or a web form to facilitate email communication with the relevant contact, but MUST NOT identify the contact email address or the contact itself.").

Further complexity has been added to this problem through an unclear and disparate delineation between registration data that is masked because of a proxy registration service, versus registration data made non-public in response to GDPR. Certain registrars have traditionally treated the former category of data as sacrosanct short of a subpoena or court order. To that end, another registrar reportedly declined to provide registrant contact information in response to a request precipitated by a phishing attack perpetrated using the relevant domain name. It is unclear on what basis the registrar declined to provide critical registration data in light of a well-founded and immediate need. Ironically, consumers are more exposed to theft of their personally identifiable information through domain-based phishing attacks that are now taking much longer to resolve.

Furthermore, it appears that some contracted parties are not even complying with the Temporary Specification, even where it mandates that certain registration data be provided in certain specific contexts. For example, anecdotal reports have already been made about a certain EU-based registrar that was asked by a UDRP provider to confirm the underlying registration data in connection with a UDRP proceeding, where the registrar refused to provide the full data, despite the applicable requirements in the UDRP (an ICANN Consensus Policy), UDRP Rules, and Temporary Specification and other relevant and binding provisions in the registrar's accreditation agreement with ICANN. See, e.g., Temporary Specification, Appendix E, Section 1.1 ("The Registrar MUST provide the UDRP provider with the full Registration Data for each of the specified domain names, upon the UDRP provider notifying the Registrar of the existence of a complaint, or participate in another mechanism to provide the full Registration Data to the Provider as specified by ICANN.").

At a higher level, at least one major global company has already estimated that its ability to effectively enforce their trademark rights against infringing domain names may drop by 24% in the wake of the GDPR effective date and adoption of ICANN's Temporary Specification.

Conclusion and Next Steps

Although it remains early days, the impact of GDPR on the WHOIS system is already being felt by legitimate parties who rely on WHOIS data to protect Internet users from harmful activity. Anecdotal reports are already starting to pour in identifying specific challenges presented by the current fragmented and unpredictable state of WHOIS services.

This is clearly unacceptable. ICANN has been entrusted with the oversight of the domain name system, and, specifically, preserving the security and stability of the Internet. By not including an accreditation model for legitimate purposes, ICANN has destabilized the industry and contributed to the ensuing chaos. ICANN must step in without further delay to lay down a harmonized framework for credentialed access to non-public WHOIS data for specific pre-determined legitimate purposes. ICANN must also bring the full contractual compliance weight, mediation, arbitration and even litigation to bear in order to enforce not only the Temporary Specification, but also the same harmonized framework. In the meantime, businesses, brand owners, cybersecurity professionals, law enforcement and government agents, and others who rely on WHOIS to conduct their vital anti-abuse and consumer protection activities in the public interest should continue to document the harms and challenges caused by the current state of the broken WHOIS system.

Written by Brian Winterfeldt, Founder and Principal at Winterfeldt IP Group

It is not uncommon for government agents to force technology companies to create or install malicious software in products in order to help them with surveillance. The American Civil Liberties Union (ACLU) has released a guide for developers that is intended to help preserve security and customers' privacy. ACLU says: "The likelihood that government actors may attempt to force software makers to push out software updates that include malware designed to obtain data from targeted devices grows as more companies secure their users' data with encryption. And, as companies close other technological loopholes, there will be increased pressure on law enforcement to find alternate vulnerabilities to exploit. ... You have the right to say no to requests that are not backed up by a court order. But by obtaining a court order demanding technical assistance, the government might try to compel you to install malware on a user's machine as a software update that appears to be entirely ordinary, and that comes directly from you. You have a right to challenge these orders in court."

The Federal Court has penalized two related companies, Domain Corp Pty Ltd and Domain Name Agency Pty Ltd, for tricking Australians out of a total of $2.3 million. Dan Pearce reporting in Lexology writes: "During a period spanning from November 2015 to April 2017, the Australian Competition and Consumer Commission (ACCC) had received a multitude of complaints against the two Domain Companies. During this period, over 300,000 unsolicited notices were sent to businesses requesting renewal of domain names. However, while these notices appeared to be renewal notices for existing domain names, they were actually notices for the registration of new domain names. This resulted in many businesses unwittingly signing up for a new domain name ending in a '.net.au' or a '.com' suffix that the business may not have needed or wanted."

The legal status of domain names is one of the most hotly debated topics with regards to evolving property rights and how they should be applied to technological and intellectual property 'innovations' in cyberspace. At present, there are two opposing factions on this topic: On one hand, there are those who maintain that domain names should be considered as contracts for services, which originate from the contractual agreement between the registrant and the registrar. On the other hand, we have the parties who contend that domain names are intangible property rights that reside with the domain name holder.

As the law has evolved, property has been defined as "an abstract right or legally constructed relationship among people with respect to things" or "a bundle of rights, powers, privileges and immunities that define one's relationship to a resource." These theories have been beneficial more so for normal property rights, but law courts have found it quite challenging when attempting to determine how these concepts apply to domain names.

In this theme report, I will discuss service contract rights and the 'bundle of rights' property theory, as well as examine case law in a number of jurisdictions, and present an argument for why domain names should be considered as 'property rights'.

Domain Names as Contracts for Service

A number of courts have categorized domain names as contracts for service. This in itself is not incorrect, as domain names are transferred to an individual through a contractual agreement between them and the domain name registrar. The role of the registrar is to provide a functional mapping and translation between the domain name and an IP address. The registrant maintains their right to the domain name as long as they pay the associated fee to the registrar and ensure that the domain name is not utilized in bad faith or infringes on the intellectual property of others.

An analogy has been made between domain names and telephone numbers, accompanied by an argument that both domain names and telephone numbers are allocated and ultimately managed by either a registrar or a telephone company, and as such should be recognized as a contract for use and services. Hence, a person who registers a domain name or is assigned a telephone number is simply the contractual holder of that resource and does not become its owner. Ownership remains with the registrar or phone company.

Dorer v. Arel was the first litmus test of the theory that domain names form contracts for service, and that owners have no property rights to them. The judge ruled in favour of the plaintiff, Rose Marie Dorer, finding that the defendant Brian Arel's domain name had infringed on the plaintiff's trademark. The court awarded the plaintiff damages of $5,000 and ordered the defendant to desist from infringing upon the plaintiff's trademark. However, the defendant failed to satisfy the judgment that was made against him. Subsequently, in an attempt to be creative, Rose Dorer filed a writ of execution to satisfy the judgment from the debtor's property. The plaintiff's desire was to have the court order the defendant's registrar to transfer the domain name to her. The court opined that domain names, which are not afforded protection under trademark law, are nothing more than contracts of services and cannot be freely traded on the open market. As such, "a judgment creditor may not levy upon and sell a judgment debtor's registered service mark or trademark."

This case did not ultimately answer the question whether domain names constitute property, specifically with regards to the writ of fieri facias. Instead, the court indicated that other options were available to the plaintiff, namely the registrar's policy or ICANN's UDRP process. Either option afforded Rose Dorer the chance of procuring a successful transfer of the domain name.

A similar view was held by the court in Network Solution Inc. v. Umbro International whereby it was reasoned that the act of registering a domain name does not entitle an individual to any rights enforceable against a third party (garnishment) aside from the right of the registrant to possessory interest during the contractual term with the registrar. The Supreme Court of Virginia, in reversing the judgment of the court of first instance, held that domain names cannot be abstracted from the contractual agreement with the registrar, and are inherently linked to the services provided by Network Solutions Inc.

Dr. Konstantinos Komaitis argues in his book 'The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World' that domain names should not be given protection on the sole basis of commercial use. Instead, he asserts that the value of a domain name is in the name itself. The potential value of domain names is contained in their popularity, memorability, and other key elements of value creation. Hence, confining the assessment of domain names to their relationship with trademarks ignores the evolution of the Internet and its true character of perpetual innovation.

Why Domain Names Should Be Viewed as Property Rights

The concept of property has been characterized by a number of conflicting philosophies and postulates before it attained a certain degree of harmonization among legal experts. However, it was Hohfeld and Honore that first articulated the 'bundle of rights' theory, which is widely accepted as one of the strongest definitions of property. The term 'property' is a multidimensional concept that incorporates a bundle of rights, immunities, privileges and powers that define the established situation of an individual, institution or government to a resource.

This includes the right to possess, to receive income from, to alienate, to exclude, to dispose or to recover title from whoever has illicitly obtained ownership of the resource. Property includes virtually every type of valuable rights and interests. Therefore, it can be argued that while the process/system of registering a domain name can be viewed as a contract for service, the value accrued and revenue derived from a domain name via legitimate contract rights means that it can be viewed as property. Consequently, domain names are being increasingly recognized as intangible property, subject to seizure or applicable as a source of in rem jurisdiction.

For example, in Commonwealth of Kentucky v. 141 Internet Domain Names, the court opined that since property is largely rationalized as a bundle of rights which is comprised of the right to ownership, controlling interests, the right to prohibit, the right to earn revenue, the right to transfer inter vivos and causa mortis, domain names should be recognized as a kind of property.

In another case, Kremen v. Network Solutions, Inc., the court held that a three-prong test should be adopted to establish whether domain names are property. There must be (1) an interest capable of precise definition, (2) it must be capable of exclusive control, and (3) the putative owner must have established a legitimate claim to exclusivity. The court found that domain names satisfied all the outlined criteria, and as such should be classified as property.

Referencing legal approaches to domain names in the United States, Britain, and India, the court ruled in Tucows.Com Co. v. Lojas Renner S.A. that domain names could be viewed as personal property. The ruling appeared to be an extension of jurisprudence that regards other types of intellectual property, such as patents, as property. The court also cited academic theory from Hohfeld by acknowledging that property is not a thing but rather a bundle of rights held by persons over physical things, particularly the right to exclude others.

The Anti-Cybersquatting Consumer Protection Act (ACPA) makes allowances for trademark owners to bring proceedings where the domain name registrar or registry is situated in the USA. This is particularly useful when the registrant is anonymous or cannot be located. Taking into consideration that in rem proceedings are commonly restricted to tangible property, one could argue that the ACPA is applying property rights to intangible items. A supporting viewpoint was tendered in Cable News Network v. cnnnews.com whereby the court ruled that domain names are properties that are located where they are created (where the registrar is domiciled).

Conclusion

So why is it important for domain names to be categorized as property? For one, it permits owners to exploit its commercial value, especially with regards to acquiring financing. Additionally, property rights in a domain name provide legitimacy that enables domain name holders to robustly challenge the claims of trademark owners in court actions. The ability to develop a domain name to attract millions of visitors and potentially yield millions of dollars is where its value lies. However, to date, there is still insufficient case law to establish a strong precedent for legal proceedings that address domain names as property rights. Still, court decisions and legal opinions in the US, UK and EU are seemingly converging towards property rights and away for contracts of service.

Written by Niel Harper, Managing Director

My Comcast bill arrived today with a sneaky new $2.68 charge, $2.50 for leasing one (and only one) set-top box and $0.18 for the remote. This new billing line item, like the many others Comcast has introduced, adds to its bottom line with no additional capital expenditure. It shows how resisting the obligation to return to accepting set-top box free, "cable ready" sets was a smart strategy. Now Comcast can charge for a device rental that it used to provide free of charge (for the first one) because consumers cannot access its service without one.

Remarkably, the FCC never got around to replacing its CableCard "solution" with a viable, consumer-friendly update. For their part, cable operators never followed through on a "commitment" to offering "true two-way" consumer access using increasingly versatile and intelligent television sets to handle rather simple upstream commands to the cable operators' Headends.

Of course, Comcast subscribers now can use their own set-top boxes, such as a Roku, but the company has a perfect, profit-maximizing strategy for that as well: charge $9.50 a month and rebate $2.50 for "subscriber supplied equipment." Brilliant and incredibly greedy at the same time.

I am well overdue for a return to Over the Air Reception ("OTAR") of broadcast television even in my quite rural locale, centrally located in the middle of nowhere: State College, PA. Comcast all but wants me to do this, so it can concentrate on its transition to being a vertically integrated broadband venture combining its owned content and conduit. Besides, broadband has far greater profit margins, none of which have to be shared with content providers through retransmission consent. Actually, revenues flow the other way as when Netflix agreed to compensate Comcast for content carriage.

Subscribers of Comcast should revolt, but I suspect few will even notice the increase. What's a few dollars more, especially after Comcast's now $8.00 "Broadcast TV Fee," some of which flows to the company's NBC stations? Comcast also has a "technology fee" that most high definition television subscribers have to pay. I guess the company can justify this recurring line item as helping it recoup the costs for upgrading networks to handle high definition signals.

You really should examine the line items in cable television bills. Few companies can quantify and foist onto customers their estimate of having to comply with government regulations and pay local governments franchise fees. But my bills has line items entitled Franchise Fee and FCC Regulatory Fee. I call these costs overhead, but Comcast frames them as "fees" that they can pass through to customers.

Finally, I have reached the tipping point where gouging nudges — makes that pushes — me to old school technology. I expect Neighborhood Homeowners Association opposition to my outdoor antenna. Maybe I can assert a First Amendment right.

Written by Rob Frieden, Pioneers Chair and Professor of Telecommunications and Law

The lexicon of domain names consists of letters, words, numbers, dots, and dashes. When the characters correspond in whole (identical) or in part (confusingly similar) to trademarks or service marks and their registrations postdate the first use of marks in commerce registrants become challengeable under the Uniform Domain Name Dispute Resolution Policy (UDRP) as cybersquatters. Ninety-plus percent of challenged domain names correspond to marks with deep market penetration nationally and internationally that are well-known or famous, which makes denying knowledge implausible. Since these registrants have no defensible right or legitimate interest (the second limb requirement, but also a factor in assessing bad faith registration and use) they rarely appear to defend their registrations.

However, as a complainant's mark recognition descends to local, regional, or niche markets or its mark is more generic or common, the heavier the burden of proving cybersquatting. A smorgasbord of phrases recently under the microscope illustrates the point: "citify marketplace," "bank direct", "draft coin," "sail mate," "nutri home," "forest gate," "manor park," "nano dark," "chrome bones," and "snap chat." For different reasons, some of these combinations are infringing and others not. Words alone or combined into phrases and longer lexical units are, after all, coinages of everyday speech; equally capable of forming uncommon and distinctive phrases as stale and generic ones.

Understandably, mark owners can become overly heated by domain names containing similarities they believe violate their exclusive rights, but on this issue some are confusing and others not. Even where the domain is identical to the mark, there is no actionable claim if the registration predated the mark. This is the story in the "chrome bones" case (Complainant alleged but was unable to prove common law rights), Chrome Bones / CB Luxury Brands, LLC v. Laursen, Shawn / Shawn's pasta & bake shop, FA1805001787926 (Forum June 27, 2018) (<chromebones.com>. In other cases, Respondents have been found to have rights or legitimate interests in the domain names where they are able to establish rights under paragraph 4(c)(1). "Nutri home" and "sail mate" are in this group, whereas the facts in "draft coin" and "snap chat" supported Complainants' claims.

If a registrant is to be accused of cybersquatting, mark owner and domain name holder alike should be educated about the distinction (and the necessary facts to support) what is and what is not confusing, as a preliminary to proving or rebutting rights/legitimate interests (second limb) and cybersquatting (third limb of the UDRP). In Chrome Bones, the Panel was convinced Respondent was using the domain name in bad faith, but "that is immaterial because a complainant must prove both bad faith registration and bad faith use in order to prevail."

At the threshold, the complainant has to negotiate three elements: 1) the subject domain name is identical or confusingly similar to 2) a mark in which 3) it has a right. So, for example, there can be no right for a registration filed for an "intent to use" mark. Walker Edison Furniture Company LLC v. Manor Park (Guernsey) Ltd, FA180400 1784458 (Forum June 15, 2018) (<manorpark.com>).

There is also the issue of what is common, generic or ordinary as opposed to an unusual combination of words. To take as examples of this issue, consider "bank direct" and "direct banking." Why is one both confusing (under the first limb) as well as evidencing "likelihood of confusion" (third limb of the Policy)? The question has come up recently in a number of disputes, but particularly in Texas Capital Bank N.A. v. WhoisGuard, Inc. / Aleksandr Osipov, Private, D2018-1040 (WIPO June 19, 2018) (<bankdirect.online>) and "anciently" (for those who consider 16 years a lifetime) in Salem Five Cents Savings Bank v. Direct Federal Credit Union, FA0112000103058 (Forum February 15, 2002) (<directbanking.biz>).

In Texas Capital Bank, the Panel notes that although the "BANKDIRECT trademark comprises a combination of two ordinary English words, 'bank' and 'direct' [that] ... are individually descriptive ... in combination they form a term which the Panel considers is capable of being distinctive and which has been used by the Complainant for many years." Ordinarily, an answering respondent would attempt to rebut "distinctive" or offer evidence showing common use of the phrase by other banks but here

Respondent [has not] advanced a claim to having used them for their descriptive meaning ...[and] [t]hose facts are sufficient in the Panel's opinion to at least raise an inference that the Respondent knew of the Complainant and/or its BANKDIRECT trademark when registering the Disputed Domain Name and intended in some way to take improper advantage of the Complainant.

A Google search for "bank direct" brings up Texas Capital Bank on top while "direct banking" brings up many banks. There is a direct correlation: as the number of potential users increases the association of particular phrases with any one party claiming exclusive right becomes increasingly tenuous. The Panel in Salem Five Cents Savings Bank, found it

simply makes no sense to this Panel to preclude the Respondent from registering and using a domain name that accurately describes the type of banking services it offers. To do anything else would be to deny a domain name registrant, and correlatively the Internet community, if not the public at large, of the benefit of using a term, consistent with its common ordinary meaning that accurately describes that registrant's services; to do otherwise would unjustifiably withdraw such terms from the public lexicon. Furthermore, this view is particularly telling inasmuch as the Respondent (not the Complainant) is the party which first registered the name.

There is a similar result in Citigroup Inc. v. LYON LESHLEY, FA1805001788603 (Forum June 29, 2018) (<citifymarketplace.com>). Citigroup's CITI has no exclusive right to all "citi" formative phrases. For a start, "citify" is a dictionary word and "market place" a generic phrase.. Additionally, the parties operate in different markets: "Because Respondent's activities are sufficiently unrelated to those of Complainant, and because those activities amount to a legitimate offering of on-line marketing services and goods, Respondent has satisfied the requirements of Policy ¶ 4(c)(i).")

Equally tenuous as exclusive signs are "sailmate" and "nutrihome." In Myriel Aviation SA v. Olli Jokinen, D2018-0828 (WIPO May 28, 2018) the term "sailmate"

comprises two ordinary English words, "sail" and "mate". The Panel considers these could readily be independently derived by a person developing a software product associated with boating, particularly given that the word "sail" is commonly used in English (i) as a noun in relation to the fabric structure used to catch the wind in a wind-propelled boat (ii) as a verb (to sail) to refer to the act of travelling by boat; and the word "mate" is commonly used in English (i) as a noun which is a colloquial term for a friend or companion, and (ii) as a noun which is a position or rank occupied by an experienced seaman on a vessel who supervises the vessel's crew and reports to its more senior officers.

Similarly in Fresenius Kabi S.A. v. Domain Manager, EWEB Development, Inc., D2018-0491 (May 24, 2018) (<nutrihome> in which the Respondent was in the business of trading in domain names:

[It] claims to have registered the disputed domain name, combining the commonplace prefix "nutri-" with the dictionary word "home", as being of potential interest to customers wishing to offering nutrition-related services online. It provides evidence of other "nutri-" related domain names that it registered in the same year as the disputed domain name or in the preceding two years.

Thus,

Based on the parties' submissions in this case, the Panel can find no evidence upon which to conclude that the Respondent was aware of the Complainant's Argentinian trademark NUTRI-HOME at the date it registered the disputed domain name (being the Complainant's only registered trademark at that date) or that it registered the disputed domain name with the intention of taking unfair advantage of that trademark.

The "nutri" Complainant also "provided little or no evidence of its business activities and public profile in 2009 and (while there was a brief period prior to August 2009 during which its website at "www.nutrihome.com.ar" appears to have been active) it has adduced no evidence that the Respondent was, in fact, aware of its trademark, or identified circumstances from which to infer that it must have been so aware.

As evident from the above illustrations, one of the considerations is what respondents can demonstrate about themselves, their status and the commonness of their lexical choices. The Respondents in Myriel Aviation and Citigroup are using the domain names commercially, and prove it. In contrast, Respondent in BTCDRAFT INC. v. Brian Boyer, D2018-0613 (WIPO June 1, 2018) is an investor, which could also qualify as making a bona fide offer of goods or service, but fails because it lacks the kind of evidence marshaled by the "nutri" Respondent.

In BTCDraft, Respondent acquired the domain name to hold for resale. The Panel explained that "[w]hile the term 'Draftcoin' consists of two dictionary words, in the Panel's view the combination is not an obvious one." This is an important point that has been expressed by other Panels: some word combinations are surprising and not obvious, making it unlikely they could be independently thought of or invented. In any event, Respondent's credibility was also a factor because of its claimed intention for the website without offering any evidence of "demonstrable preparations."

The SNAP CHAT combination is also "not obvious." In Snap Inc. v. Ali Alshumrani/Ali Aleryani, FA180500 1788602 (Forum June 14, 2018) (<snaps.chat>, <snapkm.com>, <snapei.com>, and <snaprz.com>) Respondent attempted to circumvent the claim of bad faith by arguing he was using the domain name "in connection to [its] dictionary meaning in Arabic." Not a particularly persuasive when considered in the totality of circumstances: "[Although] Respondent's disputed domain names redirect to websites written in Arabic [they were] displaying logos identical or similar to Complainant's trademarked and copyrighted logos, as well as profiles of Complainant's Snapchat users and links to those profiles on Complainant's own website." Also, the "websites connected to the disputed domain names ... include[d] sponsored advertisements."

<Nanodark.com> illustrates a different, although frequently found situation that I have written about before. Colin LeMahieu v. NANO DARK, FA1805001786065 (Forum June 9,2018). Here, Respondent creates the combination by adding "dark" to the mark NANO. Complainant operates a digital currency business. Respondent registered the domain name a couple of months after the NANO registration. The Panel found that the domain name was registered with actual knowledge of Complainant's mark because it was attempting to "pass itself off as Complainant and divert Internet users to a website offering competing digital currency."

The strengths and weaknesses of claims and defenses rest on facts parties are able to prove. If they can, they prevail, while naked assertions fail.

Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

Domain Name Commission Limited ("DNCL"), New Zealand's overseer for the country's .NZ domain, has filed a lawsuit against the domain name service company DomainTools. According to the filing, DNCL states that "DomainTools's activities undermine the protections that DNCL promises to provide to .nz registrants and violate the TOU governing use of the .nz WHOIS service." It continues: "The products and services that DomainTools offers to its customers are built on practices that infringe .nz registrants' privacy rights and expectations by harvesting their registration information in bulk from the registry where it is maintained; using high-volume queries and technical measures designed to evade the restrictions that protect .nz WHOIS servers against that form of abuse; and storing and retaining registrant data, including detailed personal contact information, even after the registrant has chosen to withhold their data from the registry. These activities cause irreparable harm to DNCL's reputation and integrity, divert resources from DNCL's mission, interfere with its contractual relationships with .nz domain name registrars, and harm the goodwill DNCL receives from individual registrants of .nz domain names."

The European Data Protection Board certainly has been keeping its records straight. Its 27 May statement starts with the following:

"WP29 has been offering guidance to ICANN on how to bring WHOIS in compliance with European data protection law since 2003."

All internet users have dealings with the Internet Corporation for Assigned Names and Numbers, yet the vast majority have never heard of ICANN. Responsible for deciding how the Domain Name System (DNS) is run, ICANN may be a technical standard-setting body, but its policies and activities acquire political nuances more often than not. At its core, there is a distinction between ICANN the organisation, incorporated in California, and the ICANN community, a multistakeholder group of volunteers who develop the policies that are subsequently implemented by the organisation.

Fifteen years ago, and only a few years after ICANN was established, European data protection regulators had already spotted the flaws with ICANN's WHOIS service, a public database of registrants' contact details. At the end of 2017, mere months before European General Data Protection Regulation (GDPR) came into effect, ICANN had yet to devise a plan to make its WHOIS registrant database compliant. However, this is no longer the era of paltry fines for violating data protection laws, when compliance was at best facultative.

Data protection as a human right

Here it's important to recall the diverse origins of data protection law. At the EU level, the 1995 Data Protection Directive aimed to harmonize the regulation of automated data processing in order to fulfill the EU's goal of free movement of goods and services (see recitals 7 and 8). In parallel, data protection began to be conceived as a human right, a notion that reached a more concrete with the Treaty of Lisbon and the 2009 European Union Charter of Fundamental Rights. Today's GDPR, which replaces the old directive, explicitly relies on the EU's human rights framework for its rationale (see recital 1 and following).

Unlike traditional human rights legislation, the GDPR contains concrete provisions for direct enforcement. That is, it grants entitlements to individuals against other legal persons beyond the state, i.e. companies. In addition, the contemplation of hefty fines for violation (up to 4% of global annual turnover for business entities), which is not an enforcement mechanism usually associated with human rights. This stick is what triggered the compliance rush witnessed over the past year, and the numerous subscription confirmation emails received from organisations long forgotten.

The GDPR is also interesting in that it creates an extremely specific and detailed bundle of rights to the benefit of EU citizens and residents against any data controller and processor, wherever they may be located. The EU thus acted according to a highly pragmatic conceptualisation of "online jurisdiction" similar to that of the Canadian courts in the 2017 Equustek case. In this high-profile copyright infringement case, the Canadian Supreme Court ruled that Google had to delist the incriminated website from its search results on a worldwide basis, not only under the google.ca subdomain. If a full de-listing meant applying Canadian law beyond its borders, so be it (it is worth noting the order failed at the enforcement level in the US.) With the GDPR, the EU adopts a similar perspective: individuals must be protected, even if it means potentially reaching out to every single data controller and processor in the world.

Extraterritoriality in cyberspace?

The application of laws based on residency, citizenship, or other non-territorial bases isn't new. Tax law, notably from the US, is often applied in a similar way. The internet makes such an application of law even more salient, as individuals create and manage legal relationships across territories at an unprecedented scale. This can be unsettling for the "territorial" states, hence the observed trend toward extraterritoriality. States seek to have their laws apply to individuals irrespective of their physical location, particularly when dealing with internet-related issues, as a means of obtaining immediate legal effectivity. Regardless of whether GDPR's alleged extraterritoriality is good or bad, it can be said that states, the EU, and courts will most likely favour an interpretation of "online jurisdiction" which maximizes their power and their perceived efficiency at enforcing their own laws.

An overly cynical (and factually wrong) conclusion would be that ICANN, as a non-profit California corporation, is not subject to human rights law, as they only create legal relations between governments and individuals. This would stem from an understanding of human rights law as a solely vertical arrangement between states and individuals, which disregards how an entity like ICANN can interfere with "horizontal" human rights entitlements, like those put into place by the GDPR. Recent events show that enforcing corporate respect for human rights is not some civil society pipe dream: a German court already ruled that ICANN's last-minute GDPR compliance plan is not quite compliant.

Human rights at ICANN, beyond the Bylaw

ICANN has found itself in a double bind: on one side, an expansive understanding of jurisdiction is gaining ground around the world; on the other, a set of human rights norms, previously constrained to treaties and the often staid world of public international law, is finding a new horizontality. The standard for personal data protection has been decidedly raised, prompting us to rethink what human rights compliance means. ICANN's global mission is tied to the functioning of internet, but its operations can severely interfere with individuals' exercise of human rights, as well as the commitments of governments to uphold these rights.

Developing a high-level commitment, as ICANN did with its 2017 Human Rights Bylaw, is a first step. However, viable solutions must, at the same time, go deeper. Indeed, the operationalisation of ICANN's human rights bylaw must pass through a refocusing of the lens, away from international treaties and into the low-level application of human rights norms at the transnational and national level. Rather than biding time before fines mandate action, the ICANN community should carry out sustained research and documentation of ICANN's concrete interference with human rights, both existent and potential. The multistakeholder community should also put in place the necessary efforts to go beyond the mere human rights bylaw and into real compliance assessment, an ever-evolving activity that requires constant attention and monitoring.

In a 17 May letter, European commissioners asked ICANN, through its CEO, to "show leadership and demonstrate that the multi-stakeholder model actually delivers." Be it taunting or encouraging, this challenge underscores the current need for intentional, proactive leadership from both the ICANN organisation and its community. Beyond enhancing its accountability, proactively identifying and preventing human rights violations might just prevent further debacles the next time a human rights law (not so) suddenly becomes applicable to ICANN. As California adopts its own improved data protection law, that time may come sooner than expected.

Special thanks to Collin Kurre from Article19 for her thoughtful suggestions

Written by Raphaël Beauregard-Lacroix

Bitcoin's unreal hype has obscured that it is mostly used to facilitate drug deals, ransomware, tax evasion, and even the occasional murder for hire. After the 60% price drop, demand for bitcoin mining gear has fallen so much TSMC has to lower sales estimates for 2018. (That's good news for telecom. Qualcomm and probably others are close to going into production on 5G chips at TSMC. But Apple has bought up so much of TSMC's 7 nm capacity that chip quantities could be severely limited until well into 2019 unless TSMC demand drops.)

Now, Austrian Ambassador in Tehran Stefan Scholz has suggested it could be a powerful boost to the European intent to bypass the U.S. economic blockade. That could provide demand for $billions of bitcoins.

Financial Express quotes Scholz, "One of the ways for safeguarding European interests in Iran is to tap the digital payment methods and cryptocurrency channels." He added, ”unorthodox and innovative measures" were being considered to allow banking transactions to continue. We are all in this together, since the EU is facing a net loss of 10 billion euros ($11.7 billion) in lost trade with Iran next year."

Blockchain is potentially good stuff, routing around institutions in a sometimes useful way.

The illustration from Vint Cerf is right that few if any need blockchain when a database suffices. However, Jonathan Askin is persuasive that blockchain makes interesting disintermediation practical, maybe even community alternatives to Facebook/Google. Bitcoin fools distract from real uses.

Several Nobel Laureates think Bitcoin is a scam and Ponzi scheme. I'm pretty sure they are 90% but not 100% correct.

From Baidu, some of what they are doing with Blockchain. (Source: https://xchain.baidu.com/introduce)

Super Chain Product Introduction

What is a super chain?

The Super Chain is a blockchain 3.0 solution that Baidu plans to open source with powerful network throughput and high concurrency for general smart contract processing. Based on the pluggable consensus mechanism, DAG parallel computing network and stereo network, it truly breaks through the technical bottleneck of the current blockchain and paves the way for the wide application of blockchain. In addition, XuperChain's maximum compatibility with Bitcoin and Ethereum is friendly to blockchain developers and has a low migration threshold. The global deployment of XuperChain is the foundation of XuperChain's credibility. Supernodes with powerful performance participate in the competition of accounting rights to ensure the efficiency of the whole network operation; while other lightweight nodes act as supervisory nodes, monitoring supernodes to perform their duties, thus forming a more credible autonomous blockchain operation. system.

Product operation

The Superchain is a blockchain operating system that supports the operation of a large number of parallel blockchains. Each blockchain supports intra-chain concurrent and sidechain technologies. Analogous to the traditional operating system has processes and threads, then in the definition of the super chain, the parallel chain is the process, the side chain is the thread.

The superchain proposes the concept of supercomputing nodes, using supercomputers and distributed architectures to solve blockchain network computing power and storage problems. At the same time, the DAG network is combined with the side chain and parallel chain technology to realize the core technology that makes maximum use of parallel computing power. The network form of the entire superchain is as follows:

How to use

The superchain manages the entire superchain network through a root chain. The root chain can be upgraded to any consensus mechanism through voting mechanisms, including but not limited to POW, POS, etc.

The functions of the super chain mainly include: creating parallel chain and super chain network management. Anyone wants to use the superchain network, it just needs to call the interface of the root chain and create a block of its own. When creating, you can specify a consensus mechanism. Any call to the Root API interface and functionality requires fuel consumption. When creating a blockchain, you can specify the Genesis block parameters to determine the creation rules.

User-created blockchain capabilities

1. Each application has an independent chain instead of sharing a chain like the application on the Ethereum

2. Has a complete blockchain computing power, do not need to share computing power with others (there is no such an application service coexisting soaring, resulting in the entire super-chain network 瘫痪 situation)

3 Can develop their own consensus mechanism and mining incentive strategy

4. Can write their own smart contracts and have independent resources to run

Developer ecology

We will open up the superchain ecosystem to help developers quickly create blockchain applications. The Superchain will provide the underlying support and developer tools that enable enterprise and individual developers to focus on application innovation and feature development, making it easy to get the business up. A series of support plans will be launched to promote the block-level application of the blockchain, and work together with developers to create a super-chain application ecosystem.

Open source plan

In July 2018, Baidu's internal open source

2, 2019, Q1 open source to the whole society

Written by Dave Burstein, Editor, DSL Prime

In the rather unique world of public international law for cybersecurity, the treaty provisions of the International Telecommunication Union (ITU) stand alone. They form the multilateral basis for the existence of all communication networks, internets, and services worldwide and have obtained the assent by every nation in the world. They also contain the only meaningful multilateral cybersecurity provisions that have endured over a century and a half through all manner of technological change. Indeed, it was radio internets a hundred years ago that gave rise to the greatest cybersecurity challenges.

So when all the nations of the world meet every four years at ITU Plenipotentiary Conferences to review these treaty provisions, the activity is eagerly watched by the small group of international cybersecurity law historians for potential changes to respond to new developments. The 2018 Plenipotentiary Conference (PP-18) is coming up in about three months — meeting at Dubai, 29 Oct to 16 Nov. Today, watching these treaty conferences is easier with all the documents available online in multiple languages shortly after being received. Indeed, almost the entire history of materials is available on-line going back to 1865.

The documents for the period from 1850 to 1865 reside in the Austria State Archives in Vienna, and for the period between 1917-1922, in the U.S. National Archives. The United States played the leading role in forming the modern day ITU treaty provisions, including key cybersecurity norms, in a series of conferences at the end of the First World War, including a long seminal treaty drafting conference in Washington in 1920 and in Paris in 1921 to add global radio internet provisions.

Most of the cybersecurity treaty making proposals to the ITU instruments in recent years have been relatively unimpressive — largely dealing with the enormous major issues today by adopting or altering conference resolutions rather than changing organic law found in the provisions. For a stable body of public international law that has formed the basis for all global telecommunication and cybersecurity over a century and a half, the basics remain fairly constant. Instantiating and protecting communication capabilities across the borders of national sovereigns fundamentally remain the same. It is an arena where Bully Bilateralism fails spectacularly.

Thusfar, the PP-18 input proposals are not particularly notable - primarily directed at getting national candidate officials elected to ITU positions in its multiple component bodies and slots on its continuing management mechanism, the Council. As perhaps the first evidence of the adverse effects of the current U.S. Administration, the candidacy of a highly-regarded U.S. expert was withdrawn for re-election to the Radio Regulations Board on which she already sits. Thus, the U.S. will have no representative on this key international quasi-judicial body overseeing radio spectrum use which the U.S. itself created seventy years ago, and has had a presence over many decades, including a continuing one since 1999. Notwithstanding the widely divergent views about the ITU in domestic Washington politics over the decades, one consistency has been the support for significant involvement in the Radiocommunication Sector since 1904 except for a brief period under Harding.

One of the significant PP-18 bellwethers among the input materials is a report on potentially holding a treaty conference to amend the International Telecommunication Regulations (ITR) that exist as an independent instrument. The principal purpose of the current ITR provisions adopted in 1988 was legalizing public internets globally and providing for related cybersecurity

An ill-advised subsequent attempt by Russia to amend the provisions in 2012 resulted in half the world rejecting the provisions. However, there are certainly ample reasons to amend and evolve the 1988 treaty given the plain need for a multilateral instrument directed at instantiating extraterritorial NFV-SDN-5G capabilities and OTT services. U.S. Cloud Service providers have also been actively seeking treaty provisions.

The only sage input into the meeting dealing with the subject matter occurred earlier this year — notably from China speaking for the first time on the subject — which took the strategic global leadership view that such provisions were essential for the global economy and would eventually be adopted.

For the present, it appears as if the U.S. Administration is content with trashing multilateral obligations and institutions, and moving back to a world of national insularity — forcing U.S. companies to locate their facilities and services abroad in multiple jurisdictions with long-term adverse effects. How it will prevent network products and services from entering the U.S. from abroad seems best described as a fool's errand. What the unfolding U.S. calamity does provide, however, is to give other nations — especially China — the opportunity to forge the necessary multilateral arrangements to pursue emerging markets and larger global market shares. China is today by far, the largest-scale participant in all manner of industry standards bodies in the telecommunication sector, including cybersecurity-related activities. It is a role once played by the U.S. government and industry.

So from a cybersecurity legal historian's perspective, events at the PP-18 remain a kind of fascinating crystal ball for looking into a future where the U.S. has clearly lost its leadership at best, and viability in the worlds of spectrum management and global information economy at worst. ...to be continued.

Written by Anthony Rutkowski, Principal, Netmagic Associates LLC

What is the intrinsic (as opposed to trademark) value of short string domain names? It depends, of course. Rights holders have been willing to challenge domain name registrants even if they have no actionable claim for cybersquatting. Delbert R. Terrill Jr. v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org), FA1803001775784 (Forum April 2, 2018) (<snn.com>). UDRP Panels have over the years, and in many cases, affirmed that short strings are "inherently valuable in themselves precisely because they are (a) short and (b) can reflect a wide range of different uses." Dynamic Visual Technologies (Pty) Ltd v. Direct Privacy, Savvy Investments, LLC Privacy ID# 14448338, D2018-0738 (WIPO June 6, 2018) (<dvt.com>).

This does not mean it is open season against rights holders for short strings, but it does mean the facts and proof of cybersquatting must be in proper alignment, and this calls for some sober thinking about the evidentiary demands of the Uniform Domain Name Dispute Resolution Policy (UDRP). So, in terms of preparing the complaint, failure to anticipate proof of reputation when the domain name was registered and present and active use of short strings by others as evidence there is a market for them having no association with rights holders will doom claims of cybersquatting.

While consumers instantly recognize the letters "I," "B," and "M" are not arbitrary, they will not be faulted for failing to associate "D," "V," and "T" with Dynamic Visual Technologies. This issue of acronyms and arbitrary letters has a long history under the UDRP. A non-exhaustive list of short strings (some of which are infringing, others not) includes "adm," "agcs," "aro," "ash," "bper," "clh," "daf," "dll," "dkb," "fxcm," "jdm," "ifo," "irjll," "iyzi," "paa," "snn," "sog," "ssx," "usu," "xrprf," and more. In some instances, it is surprising that respondents default in appearance so the record is silent when conceivably there could have been an exonerative explanation. dm-drogerie markt GmbH & Co. KG v. Whois Agent, Domain Protection Services, Inc. / Iouane Severins, D2018-1149 (WIPO July 18, 2018) (<dm-de.net>).

But, respondents give themselves away when they use domain names with content that clearly misleads the public and capitalizes on corresponding marks. An example is American Society of Hematology v. Maneet Tikku, D2018-1209 (WIPO July 16, 2018) (<ashmeeting.com>, (combining two dictionary words but the first is also an acronym) in which the Panel found that the domain name "collects names, emails, telephone numbers, countries and special requirements information for registration for the 2018 ASH Annual Meeting and related housing." Clearly, a phishing expedition.

The ultimate question is whether any three, four, or five letter string has become so exclusively associated with the complaining rights holders that knowledge can be inferred. Except where strings of letters are provable acronyms having independent existences as indicators of source (that is, are found to be functioning as marks if they are not registered), strings of letters are generally regarded as random and generic.

However, where strings of letters have become interchangeable with full word marks; where they have acquired an independent status in the marketplace separate from and parallel to the word marks (registered or not), complainants have the stronger hand ("fxcm," "xrprf," "jll" are examples). But, where the letters are not interchangeable with the words comprising them and the strings if used have never functioned as marks and are equally attractive to others for their own purposes, it tips in respondent's favor ("clh," "iyzi," and "aex" are examples).

Even if the short string is a registered mark complainant will fail if the "three-letter string is not especially distinctive" and particularly so if unregistered. Euronext N.V. v. Huang tian wei, D2018-0348 (WIPO April 12, 2018):

The Complainant suggests that the Respondent was aware of the Complainant's AEX mark and, being in a "similar" business, sought to create confusion and "subvert" the Complainant's business. The argument is not persuasive. The three-letter string is not especially distinctive. "EX" is used as an abbreviation for a financial "exchange" in many contexts, as in "AMEX" for the American Stock Exchange and "FOREX" for foreign exchange. "AEX" could indeed be suggestive of an automated exchange, as the Respondent claims. The Complainant asserts that the color scheme of the Respondent's website is similar to its own, but there is no obvious similarity between the two websites in color, design, or content. The Complainant's website provides information about traditional capital markets and stock exchanges, while the Respondent's website is a trading platform for nontraditional cryptocurrencies such as Bitcoin and Ether.

Which side of the caption prevails, then, depends largely on a number of factors such as whether the letters are registered (as is ASH and JLL (Jones Lang LaSalle, discussed below)) or functioning as marks prior to respondents acquiring the accused domain names. Priority and use are critical, but so too is reputation: not as it exists presently, but as it existed when the domain name was registered. There are certainly businesses with long names that have become known over time by their acronyms, but if the domain names were registered prior to consumers associating the short strings with particular businesses, industries, or trades, respondents must prevail. Where short strings are truly arbitrary, generic and common or used (or capable of being used) by many other parties, mark owners will need particularly persuasive facts accompanied by documentary evidence to overcome the weakness of their contentions.

To take some examples. Compañía Logística de Hidrocarburos CLH, S.A. tried in two different disputes to get and , against DropCatcher.Info / Badminton, Inc., D2018-0793 (WIPO June 14, 2018) for the dot-com and Privacy Administrator, Anonymize, Inc. / Sam Dennis, Investments.org Inc, D2018-0973 (WIPO June 25, 2018) for the dot info. Both Respondents are investor-resellers. Complainant failed on the first dispute to rebut proof of evidence of ubiquity of the 3-letter string and on the second because it lacked proof of its reputation when the domain name was registered. It barely avoided reverse domain name hijacking in both (in the second case, the concurring opinion recommended the sanction). In the dot-com case, the Panel explained that,

there would be many parties, who either used CLH as a trademark or an acronym in some other context, who might be interested in purchasing the disputed domain name; as the Respondent admits, that was the reason it registered the disputed domain name. However, there is nothing to suggest that the Respondent had any awareness of the Complainant or its business at the time of registration.

Similarly, Allianz SE v. Domain Admin, Whois protection / Domain Administrator, Radio plus, spol.s r.o., D2017-2277 (WIPO March 7, 2018) in which Complainant "claims rights in AGCS on the basis that Complainant has used AGCS as an acronym for its wholly-owned subsidiary Allianz Global Corporate & Specialty SE and that AGCS is now recognized in the financial world as standing for Allianz Global Corporate & Specialty SE" but,

failed to meet its burden as it has provided no evidence supporting, for example, its contentions that AGCS is well-known in the financial world or that AGCS has come to be known by consumers as identifying Complainant's wholly-owned subsidiary Allianz Global Corporate & Specialty SE. At best, Complainant has merely established that it is using AGCS as a mark in late 2017.

Although Respondents defaulted, Complainants in Ripple Labs Inc. v. Jessie McKoy / Ripple Reserve Fund, FA1806001790949 (Forum July 8, 2018) (<xrprf.com>) and FXCM Global Services LLC v. WhoisGuard Protected, Whoisguard Inc. / Jenny Sohia, D2018-1111 (WIPO July 12, 2018) (<fxcm.press>) avoided the evidentiary infirmities in Allianz SE. because the domain names are being used for passing off in the first (pretending to be Complainant) or redirected in the second: Complainants prevail not because Respondents defaulted but for proved infringement. In FXCM Global Services the evidence supported Complainant's contention that "Respondent uses the disputed domain name to promote and advertise its own services under the guise that it is Complainant or affiliated with Complainant."

Two other recent decisions are worth noting, SAP SE v. Moritz Honig, VCSB Ltd., D2018-1346 (WIPO July 13, 2018) (<sap.app>) (Respondent appeared and argued) and Jones Lang LaSalle IP, Inc. v. Virginia Wheeler, D2018-1269 (WIPO July 18, 2018) (<irjll.com>) (Respondent defaulted). In the first, the Panel accepted "Complainant's submissions to the effect that its trademark SAP has been used for many years and is widely known in commerce" but rejected Respondent's rebuttal that it had rights or legitimate interests:

[T]he Panel draws the inference that the Respondent, a software developer, registered the disputed domain name in the knowledge of the Complainant's trademark SAP and more likely than not with the intention of taking unfair advantage of that mark by, for example, implying an association between the disputed domain name and the Complainant's trademark and/or by preventing the Complainant from reflecting its trademark in the gTLD ".app".

The Panel applied the principle established in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2018), namely "it is not possible to conceive of any plausible actual or contemplated active use of the domain name by the Respondent that would not be illegitimate." The same principle was applied in Jones Lang LaSalle: "It is indeed, on the facts above, difficult or impossible to find a good faith explanation of how the Respondent might use the disputed domain name."

I mention the Telstra principle for passive holding last for how highly authoritative it is when Panels are ultimately assessing the totality of facts or circumstances and drawing inferences of good or bad faith. Both parties have to pay close attention to this principle and draft their pleadings to cover the "why was this domain name registered when it appears that any use will be infringing" question.

Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

The two major providers of arbitration services for adjudicating cybersquatting complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP), the World Intellectual Property Organization (WIPO) and Forum, issue daily lists of decisions. In approximately 90% of those disputes, the registrations cannot be described as anything less than mischievous in acquiring second level domains incorporating well-known or famous marks. Rights holders generally prevail for good evidentiary reasons; they also lose for failing to prove their claims. Domain name holders prevail when they either have rights or legitimate interests (which is for them to prove) or the evidence is lacking that they registered and are using the domain names in bad faith. UDRP jurisprudence does not play favorites.

I thought it instructive to select a handful of decisions from the first days of August, without any ulterior purpose than examining some ordinary days' catches. For August 1 WIPO had 9 decisions comprising 8 transfers (including <aeg.life> and <jcrewsaleoutlet.com> and 1 denied (<intra-lock.nl>, not in English, not read). The Forum had 5 decisions comprising 4 transfers (including <skechersoutlets.us.com> and <two-guess.com> and 1 denied <nutek international.com>. For August 2 WIPO had 15 decisions comprising13 transfers (one in Chinese, not read) (including <carefusion.net>, <papajohns.eu>, and <cheapstylight.com>) and 2 denied (<shoredigital.com> and <reglit.com>. The Forum had 7 decisions all transfers (including a complaint of 25 "USPS" domain names (the U.S. Post Office is a frequent target), <shopular.app>, and <lyft.taxi>). For August 3 WIPO had 8 decisions comprising 7 transfers (including <gaychatroulette.com>, <insideadvantagegeorgia.com> and <easyflowers.com> and 1 denied with sanctions for reverse domain name hijacking (<fertiplus.com>). The Forum had 5 decisions all transfers (including <nestleusa.us> and <wordpresssupport.online>. Score: 49 transfers, 5 domain names remain with respondents (a hairsbreadth under 90%).

All the transferred domain names on these three days' lists incorporate marks generally recognized by ordinary consumers as sources of goods or services associated with complainants even if some of the marks hardly ascend to the "famous" rank. Except for <easyflowers.com> (vigorous defense but losing argument) 48 of the respondents defaulted. Respondents also defaulted in two of the denied cases, <shoredigital.com> and (<nutekinternational.com>, but nonetheless prevailed (despite their silence) because the record contradicted Complainants' contentions of cybersquatting, for the unassailable reason that the domain name registrations predated Complainants' acquisitions of their marks. While complainants whose marks postdate domain name registrations have standing to maintain a UDRP they have no actionable claim (intentionally emphasized).

As a reminder of the architecture of the UDRP process. Complainants have the burden of proving each of the three requirements. Bauglasindustrie GmbH v. Easyspace Privacy / Pietro Guarino, Glass Block Technology, D2018 -0899 (WIPO July 24, 2018) (<reglit.com>. Respondent appeared, complaint dismissed):

The Panel notes at the outset, for the benefit of those intending to pursue a case under the Policy, that Complainant asserted in its Complaint that "Respondent's lack of rights or legitimate interests in the use of the Domain Name renders the issue of a bad faith acquisition unnecessary to be considered." That statement is incorrect. (Emphasis added).

Similarly, Janice G. Montanus v. Douglas Moxley, FA1806001792832 (Forum July 31, 2018) (<nutekinternational.com>. Respondent did not appear but complaint dismissed):

The Panel observes a general view of the UDRP panels that although a trademark can form a basis for a UDRP action under the first element irrespective of its date, when a domain name is registered by the respondent before the complainant's relied-upon trademark right is shown to have been first established, the registration of the domain name would not have been in bad faith because the registrant could not have contemplated the complainant's then non-existent right.

For parties either asserting cybersquatting or defending against such claims it is important they have a grasp both of the process of decision-making and the analytical tools panelists use in excavating intention (cybersquatting in an intentional tort). Decision making proceeds in stages. Complainants either have rights or they do not. (For unregistered marks complainants have the extra burden of proving secondary meaning. No examples in these 3 days' lists). Only if rights holders survive the first test can they proceed to the second, namely proving that respondents lack rights or legitimate interests in the subject domain names. Then, and only then, if complainants pass the second test can they proceed to the ultimate step of proving registration and use in bad faith.

At the outset, Panels receive packages of facts that are well or poorly assembled and other times presented with contentions that lack support of direct evidence. Decisions are based on the record; not on unproven assertions; and it is from the record that Panels draw positive or negative inferences. Consider "silence" as a factor in determining rights. There are two kinds: failure to appear for respondents and failure of proof for complainants. Silence has consequences.

In the <aeg.life> dispute, for example, AB Electrolux v. Kirill Urusov, D2018-1275 (WIPO July 25, 2018) (default in appearance), it is possible (admittedly implausible, but nevertheless an argument) that an appearing respondent could have argued that "aeg" is a random string of letters; and, since the top-level domain "life" has no particular relationship to Complainant's business that the domain name was acquired in good faith for a variety of possible buyers in diverse trades. Without such an argument supported by appropriate proof, the Panel found cybersquatting. I mention this because there have been three-letter domain names undefended where an appearance and explanation could have resulted in a different decision (, for example, Irving Materials, Inc. v. Black, Jeff / PartnerVision Ventures, FA1710001753342 (Forum November 7, 2017) (Domain name registered March 15, 1994).

The underlying principle follows, namely that failure to explain motivation (rebutting intention to infringe) supports an inference that there is no explanation to give. In AB Electrolux while Respondent's silence by default is not dispositive it left a noisy footprint in the record:

In this case, the disputed domain name was resolving to a website featuring the Complainant's trademark and falsely pretended to be official Complainant's local website to intentionally attract Internet users by creating a likelihood of confusion with the Complainant's trademark as to the source of the website and its products.

What is true for the respondent is equally true for complainant. Failure of proof is another kind of silence. When a complainant alleges a domain name is registered in bad faith, it must follow through with evidence that proves it to be so. Panels expect a follow-through of proof and when there is none it supports a negative inference. The absence of proof is like a negative or absent fact: it applies to complainants when they fail to provide evidence.

An example is Ferm-O-Feed B.V. v. Domain Manager, eWeb Development Inc., D2018-1112 (WIPO July 30, 2018) (<fertiplus.com>). The decision essentially turns on Complainant's failure of proof. Given the facts, Complainant should have known that it could not succeed:

First, the Complaint provides virtually no information about the nature or extent of the Complainant's business. The Complainant's Annex 7 is said to evidence "worldwide use" of the Complainant's trade mark, but this exhibit in fact consists of a hotchpotch of unexplained documents, most of which are undated and many of which are untranslated. For example, there are photos of stands at exhibitions, but with no indication of where or when they were taken and what they are supposed to demonstrate. To the Panel, this exhibit is largely incomprehensible; certainly, it falls well short of establishing an extensive worldwide reputation, even in its specialised industry, at the time the disputed domain name was registered in 2013, or indeed at any other time.

Sometimes passive holding (inactive use) is found to support bad faith Ebates Performance Marketing, Inc. v. Eric Ye / Eric, FA1806001794302 (Forum July 31, 2018) (<shopular.app> and at other times it does not as noted in <fertiplus.com>. It all depends on proved (as opposed to contended but unsupported) facts.

The most complex case on the three-days' lists is Hebe.com.au Pty Ltd v. WHOIS AGENT / DOMAIN ADMIN / READY FLOWERS LIMITED, D2018-1028 (WIPO July 30, 2018) (Respondent vigorously defended its right to <easyflowers.com>, but the decision did not turn on the dictionary words. Rather, it turned on Respondent's credibility in that it is in the same industry. Its defense depended on showing that its purpose was not to trespass on its competitor's market. Resellers of common phrase-domain names which I take "easy flowers" to be would have to frame their explanations differently:

Whether the Respondent is commonly known as "Ready Flowers Limited" is irrelevant. Whether the "easyflowers" brand is "commonly known" is the relevant issue. [That "easyflowers" is a brand by which Respondent is known] is a conclusory assertion unsupported by any evidence of any kind. Given the relevant background (above) and the lack of candour in the correspondence that took place (see above), and the Respondent's absolute silence on all of the matters raised by the Complainant, the Panel attaches no weight to such an unsupported statement and does not accept it." (emphasis added).

Why write about mundane, quotidian decisions? The answer is they are artifacts in the cultures of cybersquatting and overreaching of rights, thus valuable specimens in providing markers of good and bad faith registration. Respondents lose because there is no genuine issue of material fact to rebut abusive registration, and in the best reasoned of these decisions Panels explain the proof, and in closer cases why the evidence favors the prevailing party. Commentators generally focus (too narrowly) on respondents' wins and losses. <Fertiplus.com> makes more of a splash than <lyft.taxi> ("Here, Complainant argues Respondent relied on the LYFT mark when registering the disputed domain name, adding a gTLD that explicitly reflects Complainant's industry. This is evidence that Respondent registered and uses the disputed domain name in bad faith under Policy ¶ 4(a)(iii).")

Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

Challenging UDRP awards in actions under the Anticybersquatting Consumer Protection Act (ACPA) is infrequent though steady. There are currently a number of court filings in U.S. district courts that are in the early stages, most notably the ADO.com case reported on in an earlier essay and several others have either been referred to mediation (the IMI.case) or settled or discontinued. Federal decisions adjudicating trademark infringement under the Trademark Act of 1946 (as amended), the Lanham Act where the marks postdate domain name registrations are more of a rarity, but there is one to report. Whether by trial, summary judgment, Consent, or Default Judgment the results are instructive in two ways: first, in understanding the principles and factors panelists and judges apply in determining parties' rights to domain names; and second, in educating parties about their evidentiary burdens in both fora. I have dealt with some of these issues previously in Post-UDRP, ACPA Actions Challenging Awards.

Here, I will report briefly on three recent outcomes, one by the rights holder for trademark infringement instead of cybersquatting, Dealerx v. Kahlon, 2:17-cv-1444 (E.D. Cal., November 22, 2017) challenging the award in DealerX v. Gurri Kahlon, ROiQ.com, D2017-0488 (WIPO May 4,2017) (<roiq.com>); and two by domain name holders for declarations that their registrations were not unlawful: Kyle Burns v. Connecting Open Time, LLC, 17-cv-00840 (D. Arizona, July 27, 2018) challenging the award in Connecting Open Time, LLC v. Domains By Proxy, LLC / Kyle Burns, D2016-2328 (WIPO February 27, 2017) (<opentime.com>), and Direct Niche, LLC v. Via Varejo S/A, 15-cv-62344 (S.D. Fla., August 10, 2017), affirmed (11^th Circuit August 3, 2018) challenging the award in VIA VAREJO S/A, v. Domain Admin, D2015-1304 (WIPO October 17, 2015) (<casa bahia.com>).

The Court noted in Dealerx that while "it does not have to credit the findings of the UDRP decision, [it] is in agreement that the facts do not support a finding of bad faith in relation to defendant's initial acquisition of the 'roiq' domain name." Bad faith registration would have been impossible to prove because the domain name registration predated the mark. Rights holders of marks postdating registration of domain names have no actionable claim under the UDRP and lack standing to maintain an ACPA action, thus their only recourse (if they have one at all) is to state and prove a claim for trademark infringement.

Ironically, Dealerx prevailed in federal court because the domain name holder created the circumstances that led to its losing the domain name. (In fact, defendant must have realized it had no defense to trademark infringement and saw no point in making an appearance. The judgment was entered on default). If only the defendant had continued using the domain name as it had before it learned of Dealerx there could not have been a claim for trademark infringement. The self-destruct happened this way: "upon learning of plaintiff's mark" it attempted "to improperly extract profit from plaintiff." Dealerx proved its case by

submission of an e-mail chain between plaintiff and defendant showing defendant attempting to extract a high price from the plaintiff for purchase of the domain name… Defendant further demonstrated bad faith by asserting that he tried to create consumer confusion by placing content on the website associated with his infringing domain that mirrored the plaintiff's business model… Defendant's actions after being made aware of his infringement are relevant to the bad faith analysis.

The takeaway here rights holders' alternative to taking possession of an infringing domain name. Holders can be dispossessed under the Lanham Act (rather than the ACPA) if the domain names can be shown to be infringing mark owners' statutory trademark rights. In Dealerx, the Court granted a permanent injunction, transfer of the domain name, and attorney's fees.

The other two cases were adjudicated under the ACPA. First, Connecting Open Time. In that case, the parties agreed to a Consent Judgment as follows:

Defendant [the prevailing party in the UDRP proceeding] admits that (1) Plaintiff's registration and use of the domain name "opentime.com" is not unlawful under the ACPA, 15 U.S.C. §1124(d); and (2) Plaintiff's registration and use of the domain name "opentime.com" does not constitute a bad faith intent to profit from any mark alleged to be owned by Defendant under the ACPA, 15 U.S.C. §1124(d); and 3. Plaintiff is not required to transfer to Defendant the registration for the domain name "opentime.com."

While it is not possible to know the reasons for settling, when the prevailing party in a UDRP is willing to concede to a declaration of lawful registration it is not unreasonable to infer it has assessed the risk of defendING the ACPA action — the risk being damages (up to $100,000) and attorney's fees. Hidden from view in Connecting Open Time is Defendant's counsel's calculation of the merits of its client's superior right to <opentime.com>. (While settlements add nothing to the jurisprudence, the terms agreed upon can be instructive to parties similarly situated).

When parties agree in a Consent Judgment to, in essence, annulment of the UDRP award, a question could be asked whether the UDRP Panel was "wrong" in its assessment of rights. An award that favors the mark owner which is thereafter reversed or canceled is not "wrong" unless the record was crystal clear in Respondent's favor. The problem sometimes, and certainly in the <opentime.com> dispute, is the state of the record. If respondent's representative does less than a stellar job in presenting a defense, as appears to be the case in this dispute, the balance will shift in complainant's favor. In <opentime.com> the Panel noted

Given the misrepresentations, conflicting and unsubstantiated statements, and lack of explanations by Respondent, this Panel based on the evidentiary record place before it, has doubts about the credibility of Respondent's claim of prior use of OPEN TIME and thus concludes that Complainant has prior and superior rights in OPENTIME.

This is a cautionary reminder to defense counsel to pay attention to and learn from such admonitions what is expected of them in so far as mounting a defense. Credibility can be a significant factor in determining rights. In the ACPA lawsuit, Kyle Burns was represented by competent counsel; and to its credit, so was the Defendant.

In Via Varejo Respondent in the UDRP proceeding and defendant in the ACPA action also lost on a record. It was simply unable to rebut the facts of infringement or articulate a legal theory supporting its defense. The district court in Direct Niche, LLC held that "t is clear to the Court that Direct Niche intended to profit from prospective Via Varejo customers who are unaware that Via Varejo's Casas Bahia website is found, not at casasbahia.com, but at casasbahia.com.br”). The factual question is, how does a Brazilian company have rights in an unregistered mark in the U.S.? The Court of Appeals for the Eleventh Circuit explained that it was because

Via Varejo used the Casas Bahia service mark in commerce in the United States [thus satisfying the requirement that it prove secondary meaning]. The [district] court based its finding on evidence that Via Varejo contracts with U.S. companies to provide advertising of their goods on the Casas Bahia Website, both through preferred product placement and the banner ad program. These advertising services are rendered on the Casas Bahia Website in conjunction with the Casas Bahia mark. Moreover, Via Varejo's marketing director testified to his personal knowledge that the Casas Bahia Website receives millions of visits every year from IP addresses located in the United States. The district court's conclusion that this evidence demonstrates sufficient public use in commerce to establish ownership of the mark is not clearly erroneous. Accordingly, we affirm.

In contrast to Dealerx whose mark postdated the registration of the domain name, Via Varejo proved it had standing under the ACPA because its unregistered mark predated the registration of the infringing domain name. The Court found the evidence copious in plaintiff's favor.

Domain name holders should take note, they are vulnerable to losing their domain names if sufficient and unrebuttable evidence is marshaled to prove a case of abusive registration (UDRP) or bad faith use (ACPA)

Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

Special interests who oppose privacy are circulating draft legislation to cut short ICANN's Whois policy process, warns Milton Mueller in a post published today in Internet Governance Project. He writes: "They want to substitute U.S. law for the ICANN process. We have a draft of the proposed law available here. The people pushing this legislation are the same folks who are always trying to regulate and control the Internet. Copyright maximalists, big pharma, and the like. Economic interests are also at play. To companies like Domain Tools, Whois data is raw material for commercial services that they offer to brand protection firms and others. By negating domain registrants' privacy rights, they are able to monetize the sale of their personal information — and unlike Google, Facebook and others who monetize personal information, there is no service offered in exchange, no contract, no ability to opt out."

Panels appointed to adjudicate domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) have written in the region of 50,000 decisions involving over 75,000 domain names (minuscule of course when measured against the number of registered domain names). What may surprise some parties, their representatives, and counsel is that these publicly accessible decisions have fueled the emergence and development of a jurisprudence of domain names.

On many issues and factual circumstances, those for which Panels have reached consensus on the law are regarded as authority. What should not be surprising (but to some it clearly is) is that the jurisprudence is comprehensive and complex. This has fueled the rise of a domain name bar of counsel with deep knowledge of its minutiae. Parties and counsel are expected to know the law, and when they do not they are chastised. Panels look for proof of parties' contentions; if the party with the burden lacks proof it loses.

Two representative cases are The Procter & Gamble Company v. Marchex Sales, Inc, D2012-2179 (WIPO February 22, 2013) (<swash.com>. "Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International registration and the substantial sales volumes claimed for the brand, would have found in favor of the Complainant. This Complaint fell very far short of what the Panel was entitled to expect from a Complainant of this stature” (emphasis added); and Patricks Universal Export Pty Ltd. v. David Greenblatt, D2016-0653 (WIPO June 21, 2016 (<patricks.com>) in which the Panel stated that "Professional representatives of parties in UDRP proceedings are expected to be aware of or at least familiarize themselves with the Policy and Policy precedent, and to abide by the Policy and Rules."

In a recent blog post on Domain Name Wire, Andrew Allemann reflected on the advantage of hiring a specialist lawyer for domain name disputes. The immediate stimulus for this suggestion was Geo Global Partners, LLC v. Ruby Administrator / Ruby Advertising, FA1807001797850 (Forum August 29, 2018) (<gardenique.com>), although he also reported on Pilot Fitness, LLC v. Max Wettstein / Max Wettstein Fitness, FA1808001799942 (Forum August 30, 2018) (<pilotfitness.net). Both complaints were denied; neither Complainant exhibited the expected familiarity with the Policy and Policy precedent.

Mr. Allemann suggested that the result in Geo Global could possibly have been different if Complainant had counsel knowledgeable about the evidentiary demands of the UDRP. The failure (and here I quote Mr. Allemann because he deserves credit in noticing what counsel appears to have overlooked):

The case mostly hinged on dates. The domain was registered in 1996. Geo Global Partners' attorney tried to argue common law rights but did not make arguments sufficient enough to qualify in a UDRP case. Furthermore, even the common law rights claimed were after 1996.

Here's the thing [though]: based on historical Whois records at DomainTools, it appears the current owner of the domain acquired it in late 2016 or early 2017. That changes things.

It certainly does change things! If the facts are what Mr. Allemann's research discovered Complainant lost an opportunity, but being a cautious observer and not wanting to be categorical he also notes, "Perhaps the Complainant still would have lost for other reasons." Whether that is true cannot be tested in a new UDRP proceeding because parties get only one shot to make their case.

The Geo Global Complainant was fortunate in not being sanctioned for reverse domain name hijacking, unlike Complainant in Pilot Fitness who was. Complainant in Pilot Fitness was represented by counsel, likely not a "specialist" because in the Panel's view the complaint should never have been brought since the domain name registration predated Complainant's use of the trademark in commerce. Mr. Allemann again

There's a lot of nuance to UDRP, and if you hire someone who's not an expert in cybersquatting, your results will vary. You'll also likely pay that person to research stuff that other lawyers already know.

What Geo Global and Pilot Fitness have in common, and several others under review, is a failure to understand the unusual nature of the UDRP. While a judicial complaint is intended solely to give a defendant notice of the asserted claim and the requested relief, a UDRP complaint is intended to combine notice with probative proof of complainant's contentions. In other words, a UDRP complaint is not simply a complaint but a complaint plus a motion for the equivalent of summary judgment.

Parties cannot prevail on motions for summary judgment unless they submit evidence establishing that there are no genuine issues of material fact or dispute. If there is uncertainty, or in UDRP terms, there is insufficient proof, the complaint must be dismissed. The point that needs emphasizing is that it is not good enough to allege contentions if parties or their representatives are unable to provide sufficient evidence to back them up, as in Geo Global.

This evidentiary demand is not one-sided. Defendants (or respondents) also have a burden, which is to demonstrate they either have rights or legitimate interests or complainant has insufficient proof of bad faith (either of registration or use). I have in mind such cases as Commonwealth Bank of Australia v. Registration Private, Domains By Proxy, LLC / Ravindra Patel, gbe, D2017-0807 (WIPO July 6, 2017) (<bankwest.com>. Registered in 1995) and Irving Materials, Inc. v. Black, Jeff / PartnerVision Ventures, FA1710001753342 (Forum November 7, 2017) registered in 1994). Both had significant delays in commencing proceedings. In Commonwealth Bank Respondent could possibly have presented a better case; and in Irving Materials, Respondent did not appear (in an ACPA challenge it alleges it did not receive notice and its registration was lawful).

The question is, what must a party do? In Pilot Fitness Respondent alleged and proved that it had priority of right. Except under a limited number of circumstances, trademarks acquired after the registration of corresponding domain names have no actionable claim and are sanctionable as reverse domain name hijackers.

What if a respondent who lacks priority fails to create a record of any right? Silence (either by failing to appear or failing to marshal evidence if it does) will most likely be conclusive against respondent. Several cases can be cited in which non-appearing or appearing but offering insufficient proof has resulted in respondents losing their domain names. Two Playboy cases were filed in August, D2018-1455 (<playboycenterfolds.com>, terminated) and Playboy Enterprises International, Inc. v. Alano Fernandez, E-Magine, D2018-1457 (WIPO August 21,2018) (<centerfolds.com>, default and transferred).

Combining "Playboy" with "centerfolds" is obviously infringing and Respondent (recognizing it had no chance of success and probably having an incentive not to be labeled a cybersquatter) settled the claim, but is "centerfolds" standing alone obviously infringing? Could an argument not have been made? The oldest extant registrations for CENTERFOLD alone date from November 1996, but the defaulting Respondent registered the domain name on April 25, 1995 (24 years ago!). The Panel must evidently have been persuaded that Complainant invented the term "centerfolds" or by 1995 it was already so well-known or famous as an unregistered mark and awarded it the domain name. However, since the domain name had never resolved to a website there was no direct evidence of bad faith use. So, how does a Panel get from passive holding to registration and use in bad faith?

This is a puzzling problem. While it makes sense to infer bad faith registration from bad faith use it doesn't work in reverse. If there is no proof of bad faith use (if the domain name is passively held), the complaint should be denied; at least that would seem to follow the logic. The problem was solved by the Panel in the third decided UDRP case, Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The Panel explained that passive holding can be regarded as "use" when "it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by respondent that would not be illegitimate."

But, whereas TELSTRA is a well-known mark, can it truly be said that CENTERFOLD was in the same category in 1995? True, it undoubtedly had its prelapsarian aficionados but was it really "not possible to conceive of any plausible actual or completed active use"? However, the Respondent did not appear, there was no explanation for the registration, and silence spoke powerfully in Complainant's favor. The Panel in Playboy observed that

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

In based its inference on finding that it was "highly unlikely" that

Respondent was not aware of the Complainant's (or its predecessor in title's) adoption and use of "Centerfold" when he or it registered the disputed domain name in 1994 (assuming the Respondent was the original registrant of the disputed domain name). By that stage, the Complainant had been using and promoting the term for almost 20 years all round the world [although not as a trademark]. The Respondent has not denied the Complainant's allegations in that respect [because it defaulted in appearance].

The same can be said about "Centerfolds" here that Mr. Allermann's stated about the Geo Global decision: "Perhaps the [Respondent had it appeared] still would have lost for other reasons."

Panels draw their conclusions from the record and if the only record is that which is marshaled by complainant and respondent is silent complainant will prevail. Since it is incumbent on respondents to explain their acquisitions for domain names that incorporate well-known marks, when they do not or cannot, they will lose. However, when there is explanation, as there was in Aurelon B.V. v. AbdulBasit Makrani, D2017-1679 (WIPO October 30, 2017) (<printfactory.com>) respondents will most likely prevail:

The Complainant may have erroneously believed that the use of the Disputed Domain Name for a PPC website was an unconditionally strong argument in support of bad faith together with the fact that the Respondent acts as a domainer [but that is not the law].

In Mister Auto SAS v. Wharton Lyon & Lyon, D2018-1330 (WIPO August 3, 2018) (<mister auto.com>) the Panel held that the Complainant commenced the UDRP proceeding "out of desperation as its prior attempt to contact the Respondent went unanswered (and the webpage did not resolve — revealing no clues as to the Respondent's possible motives) but without a reasonable chance of success and as such in the circumstances constitutes an abuse of the Administrative Proceeding." Although Respondent defaulted, the record included the Whois information (a required Annex) that Complainant's right postdated the registration of the domain name.

Finally, Panels assess facts for credibility and probative proof of rights by applying a palette of factors. Priority is a principal factor; others include passive holding (Aurelon), content of the website (however weak a mark, if links are to websites offering competing goods or services, complainant prevails), locations of the parties, relationship of the parties (whether they are strangers or connected through contract (The Engineering and Development Group Limited v. Domain Privacy Service FBO Registrant, Domain Privacy Service FBO Registrant / Tamara Masri, D2018-1438 (WIPO August 28, 2018) (<edgogroup.com>) apparently a family squabble, outside the scope of the UDRP), complainant's reputation (Mister Auto), and length of time complainants have waited to commence proceedings (Playboy Enterprises, BankWest, and Irving Materials), As I mentioned in an earlier essay, laches is not generally recognized as a defense although there could be adverse consequences particularly with weak marks unable to prove reputation when the domain name was registered.

Anyone who thinks that asserting and defending disputes in an administrative proceeding is less demanding than litigating in federal court should be on notice. Disputants who do not know or understand the evidentiary requirements or the demands of the UDRP are at a disadvantage as illustrated by Mr. Allemann's observations.

Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP

In the case of Avon Products, Inc. v. Jenika Mukoro, Heirs Holdings, a 3-member WIPO Panel denied the Complainant's efforts to have the domain name <avonhealthcare.com> transferred because the Complainant failed to sustain its burden of establishing that the Respondent had no rights or legitimate interests in the disputed domain name.

The Panel found that the Complainant proved that its trademark AVON (which has been in use since 1929) is well-known in the field of cosmetics and has been used also in connection with the sales of vitamins and supplements as well as to support breast cancer campaigns. The Panel also found that it was clear that there is no relationship between the Complainant and the Respondent and that the Complainant has not authorized the Respondent's use of its trademark AVON or the registration and use of the disputed domain name.

But the Respondent provided convincing evidence to demonstrate that it was using the disputed domain name to promote a genuine business in the field of healthcare services and that it had been using the name AVON in connection with the health and medical services provided through its subsidiaries in Nigeria since as early as 2008. The Respondent submitted certificates of incorporation for Avon Healthcare Limited (dating back to 2010) and for other companies belonging to the Respondent's "Avon group" which were incorporated between 2008 and 2009. In addition, the Respondent provided copies of company reports audited by Ernst & Young for the years 2013 and 2015, certificates of accreditation of Avon Healthcare Limited issued by the Nigerian health insurance controller, and printouts of online websites referring to the activities of the Respondent's Avon group. Moreover, the Respondent also provided a plausible explanation as to the reason why the name "Avon" was selected for such activities, being the initials of the founder's name.

So the Panel found that, on balance of probabilities, the Respondent registered and used the disputed domain name to promote its own business without intending to trade off or exploit the Complainant's trademark, which appears to be well-known in a different sector. The Panel also gave attention to the list of 106 occurrences submitted by the Respondent of the term "Avon" to be in wide use, and corresponding to the name of several rivers, towns and communities, as well as businesses and brands which do not operate in the same field of activity of the Complainant.

In view of the above, and noting some limited online research to verify certain aspects of the Response, the Panel found that the Respondent had proven that it had been using the disputed domain name in connection with a bona fide offering of goods or services before receiving notice of the present dispute. Moreover, based on the evidence submitted by the Respondent, the Panel also found that the Respondent had demonstrated that the entity which actually uses the disputed domain name, i.e., Avon Healthcare Limited, has been commonly known by the disputed domain name.

Written by Evan D. Brown, Attorney

12 SEPTEMBER 2018, on the occasion of his State of the Union Address, President Jean-Claude Juncker

European authorities proposed new laws today subjecting internet companies like Google, Twitter and Facebook to big fines if the extremist content is not taken down within one hour. From the official press release: "The new rules are being presented one week ahead of the Informal Meeting in Salzburg where EU Leaders are expected to discuss security. Every internet platform that wants to offer its services in the European Union will be subject to clear rules to prevent their services from being misused to disseminate terrorist content. Strong safeguards will also be introduced to protect freedom of speech on the internet and ensure only terrorist content is targeted." Why one hour: "Terrorist content is most harmful in the first hours after it appears online because of the speed at which it spreads. This is why the Commission is proposing a legally binding one-hour deadline for content to be removed following a removal order from national competent authorities." Companies that fail to comply could face fines of up to 4 percent of their annual global turnover.

New Zealand's Domain Name Commission today won a motion for preliminary injunction in a US lawsuit against the company DomainTools. Plaintiff argued that DomainTools breached the Commission's terms of use and exposed details of domain name holders who choose to have their details kept private. Domain Name Commissioner, Brent Carey, in a release today said: "We look forward to presenting our full case to the Court, as we seek to permanently prevent DomainTools from ever building a secondary .nz database offshore and outside the control of the Domain Name Commission."

DomainTools argued that this lawsuit may cause an avalanche of litigation as a result of other registries also attempting to protect the privacy of their registrants to which Judge Lasnik responded they may be correct.

The court paper here.

Neustar, the registry operator of the .US domain and NTIA have reversed course, allowing the inclusion of previously restricted "seven dirty words" from future .US domain name registrations. The decision came after EFF and the Cyberlaw Clinic at Harvard Law School intervened in the cancelation of a domain name containing a restricted word. The domain name registered by Mr. Rubin was suspended by Neustar calling it a violation of an NTIA "seven dirty words" policy — "a phrase with particular First Amendment significance," said EFF.

Cyberlaw Clinic explains in a blog post the significance of the case: "As a general rule, First Amendment law makes clear that the government cannot impose content-based restrictions on speech. The well-known case, Federal Communications Commission v. Pacifica Foundation, 438 U.S. 726 (1978), held that the Federal Communications Commission ('FCC') may regulate over-the-air broadcasts of the so-called 'seven dirty words' comedic bit made famous by George Carlin. But, that ruling is limited to broadcasts over public airwaves and is inapplicable to other forms of media distribution. It thus surprised [us] to learn that NTIA and Neustar had a policy of using the Pacifica list of seven words to police domain name registrations. NTIA and Neustar saw fit to cancel [Mr. Rubin's] registration in accordance with that policy upon noting that it incorporated the 'f-word.'"

I. Introduction: Claims in Search of a Remedy

One of the fallouts of disruptive inventions is the need for new laws to counter their unexpected consequences. As it concerned the Internet, these consequences included a new tort of registering domain names identical or confusingly similar to trademarks and service marks with the intention of taking unlawful advantage of rights owners. Prior to 2000 the only civil remedy for "cybersquatting" or "cyber piracy" was expensive and time-consuming plenary actions in courts of competent jurisdiction under national trademark laws. A stab at providing a simpler and quicker alternative for alleged cybersquatting had been implemented in 1995 by the then sole registry/registrar of domain names, Network Solutions Inc. (NSI).^[1]

NSI's solution, which was heavily criticized by both rights holders and domain name registrants,^[2] was to provide mark owners with a form of injunctive relief by suspending the domain name, arguably at the expense of domain name holders who were deprived of their "property" without due process. However, because only a court could determine the ultimate question of rights, NSI's limited solution garnered dismal ratings by rights holders. Before 2000, there had been a handful of Lanham Act cases in the United States, for trademark infringement, dilution, and unfair competition, in which courts began grappling with the new tort, distinguishing it from trademark infringement and beginning the task of identifying applicable principles and factors that would justify divesting registrants of their domain names.^[3]

These disputes and the rising incidence of cybesquatting energized governments and intellectual property interests — working through the World Intellectual Property Organization (WIPO) in 1998-1999 — to cooperate in establishing a mechanism for combatting the new tort. WIPO's Final Report, published in April 1999 (WIPO Final Report) sets out in great detail a series of recommendations for a supra-national online arbitral mechanism.^[4] These recommendations were quickly transformed by the Internet Corporation for Assigned Names and Numbers' (ICANN) (created in 1998) into the Uniform Domain Name Dispute Resolution Policy (UDRP), which it implemented in October 1999.^[5] Upon implementation of the UDRP, the NSI Policy instantly became history. Also in 1999, Congress enacted an amendment to the Lanham Act, the Anticybersquatting Consumer Protection Act (ACPA).^[6]

It is important to underscore that an online dispute resolution proceeding under the UDRP is not a court case even though rights holders are granted affirmative relief against adjudicated cybersquatters. The UDRP is an even more powerful tool because domain name registrations are cancelled or transferred to rights holders without court intervention or a right to appeal beyond the right to contest awards in courts of competent jurisdiction, which in the United States would be an action under the ACPA.

This article focuses on the emergence and development of a jurisprudence of domain names under the UDRP; point out some of the core principles; and discuss the factors applied in distinguishing lawful from unlawful registration of domain names corresponding to trademarks.

II. Basic Ingredients of the Arbitral Process

Although rights holders were privileged in being granted a speedy and cost-effective means of adjudicating their domain name disputes, the WIPO Final Report put them on notice that their rights were no greater than what is granted under statutory law. It stated that the purpose of the proposed arbitral process "was not to create new rights of intellectual property, nor to accord greater protection to intellectual property in cyberspace than that which exists elsewhere."^[7] Rather,

the goal is to give proper and adequate expression to the existing, multilaterally agreed standards of intellectual property protection in the context of the new, multijurisdictional and vitally important medium of the Internet...

Not only that, but it was

not intended that the means of according proper and adequate protection to agreed standards of intellectual property should result in a diminution in, or otherwise adversely affect, the enjoyment of other agreed rights...

And, finally, the scope of the procedure was limited so that it was available

only in respect of deliberate, bad faith, abusive, domain name registrations or "cybersquatting" and [was] not applicable to disputes between parties with competing rights acting in good faith.

There were two fundamental drivers for the emergence of a domain name jurisprudence. The first was the policy consensus described above: "[no] new rights [were created]"; the proposed arbitral regime was "not intended ... [to] result in a diminution in, or otherwise adversely affect, the enjoyment of other agreed rights"; and it was "available only in respect to deliberate, bad faith, abusive, domain name registrations."

The second driver, also established in the WIPO Final Report, was that "[t]he decisions taken under the procedure would be made available publicly."^[8] ICANN expressly directs providers servicing the arbitrations to publish decisions. This official requirement enables parties and panelists to access an accumulating database of reasoned decisions, not unlike the databases of common and statutory law decisions parties rely on in framing arguments in the courts. I will return to this in a moment, but the point to be emphasized is that the availability of easily accessible databases of rulings encourages reliance on past decisions as precedent, and as the reliance grows, so does the jurisprudence.

When it came to transforming the WIPO proposals into the UDRP, the contending stakeholders submitted further comments aimed at influencing ICANN's final language in their favor: trademark owners "suggested that the definition should be expanded to include cases of either registration or use in bad faith, rather than both registration and use in bad faith," while individual and non-commercial interests "suggested changes in language that would narrow the scope of the definition of abusive registrations." They "sought to restrict the scope of the examples of bad-faith practices in paragraph 4(b) and . . . to expand the scope of the 'legitimate use' safe harbors in paragraph 4(c)."

ICANN Staff rejected both positions. To trademark owners, it pointed out that [the] WIPO report, the DNSO recommendation, and the registrars-group recommendation "all required both registration and use in bad faith before the streamlined procedure would be invoked." In rejecting the individual and non-commercial interest, ICANN Staff explained that "[e]ven if none of the three circumstances [in paragraph 4(c) were] present, the administrative procedure would still not apply to a dispute where the domain -name holder can show its activities are otherwise legitimate."

Both WIPO in its Final Report and ICANN in its Second Staff Report (which implemented the UDRP) believed that decision-making under the proposed arbitral process "should lead to the construction of a body of consistent principles that may provide guidance for the future."^[9] Whether or not "the construction of a body of consistent principles" was initially thought capable of leading to a jurisprudence, there has, in fact, emerged a "body of consistent principles [that is] provid[ing] guidance" for balancing the rights of disputants involved in cybersquatting claims. Emblematic of this emergence is WIPO's publication of an Overview of the law as it has developed, now in its third edition (2017) which it has appropriately denominated a "Jurisprudential Overview."^[10]

Implicitly, the WIPO consensus accepted a proposition endorsed by ICANN that the later produced Jurisprudential Overview accepts expressly, namely, that domain names can be identical or confusingly similar to trademarks yet lawfully registered as long as they are not targeting complainants' marks.

III. Establishing Metes and Bounds of Parties' Rights

As part of the implementation process for the UDRP, ICANN entered into agreements authorizing service providers to appoint panelists to hear and decide complaints of cybersquatting (or "abusive registration of domain names" in WIPO's terminology).^[11] Until panelists began filing their decisions, there was no detailed body of law addressing the issue of abusive registration apart from court decisions adjudicating trademark disputes. Panelists (principally drawn from litigation and trademark bars) were invited to establish one.

Panelists are authorized under Rule 15(a) to "decide a complaint on the basis not only of the statements and documents submitted and in accordance with the Policy [and] these Rules" but also of "any rules and principles law that [they] deem[] applicable" (emphasis added). They also had for guidance the WIPO Final Report, which emphasized that the proposed arbitral regime was not intended to suppress legitimate competition or to restrain commerce.

Panelists began with the tablets of general principles handed down from ICANN in the form of a minimalist Policy and set of procedural Rules the meaning of which they were expected to unpack and elaborate upon in reasoned, publicly accessible decisions. It should surprise no one that once the process of construction got underway, other panelists began accepting, rejecting, adopting, refining, modifying, and citing as authority what they received and in so doing identified the principles, fleshed out the evidentiary demands, and compiled the factors for proving or rebutting cybersquatting.

There is never certainty that when a new legal process is set in motion that it will result in the emergence of a set of consistent principles and thence into a jurisprudence. To be successful, the process had to be at once predictable and consistent. The hope was that "with experience and time, confidence will be built up in the credibility and consistency of decisions made under the procedure so that the parties would resort less and less to litigation."^[12] This is precisely what has happened. In the words of one Panel, the principles laid down by earlier Panels and the factors applied in assessing parties' rights are "worthy of some deference."^[13]

Whether "some deference" comes under the rubric of consensus or precedent is not without controversy. Another panelist believes that "despite the undoubted value of prior decisions, it should not be forgotten that panelists are bound by the UDRP and the Rules made under the UDRP which requires a panel to make its decision in accordance with 'the Policy, these Rules and any rules and principles of law that it deems applicable.'"^[14] This view notwithstanding, consensus and precedent have merged into a single concept. It is rare for Panels not to cite earlier decisions supporting their reasoning.

The point can be illustrated by examining five decisions filed within the first year of the UDRP. This is not to suggest that the jurisprudence stopped growing. Later decisions could as equally be cited for clarifying principles already identified, accepting them with tweaks, or creating new core principles to address different factual circumstances.

The first decided case in January 2000 involved <worldwrestlingfederation.com>.^[15] The respondent defaulted but had contacted the complainant by e-mail three days after registering the domain name and "notified complainant of the registration and stated that his primary purpose in registering the domain name was to sell, rent or otherwise transfer it to complainant for a valuable consideration in excess of respondent's out-of-pocket expenses." His offer to sell the domain name to the rights holder — the first of the four circumstances of bad faith under paragraph 4(b) of the Policy — is a classic example of bad faith registration. However, as the Panel further noted, it was "clear from the legislative history that ICANN intended that the complainant must establish not only bad faith registration, but also bad faith use." Thus the follow-up question: if the domain name is passively held, can there be bad faith use? The Panel's not entirely satisfactory answer was that the respondent "'used' the domain name as [that term is] defined in the Policy."

A better answer came a month later in the second decided case (2000-03) involving <telstra.org>.^[16] The Panel explained that passive holding of a domain name can support a finding of abusive registration because "the concept of a domain name 'being used in bad faith' is not limited to positive action; inaction is within the concept." It explained that "[o]ccupying an entry in the DNS is 'use' . . . [because] it has a blocking function." While mere failure to maintain an active website does not automatically result in a finding of bad faith use, the stronger the mark the less credibility a respondent has in claiming good faith. (The reverse is also true: the weaker the mark the more persuasive must be the evidence for cybersquatting). The Panel concluded that "[g]iven the Complainant's numerous trademark registrations for, and its wide reputation in, the word <TELSTRA> ... it is not possible to conceive of a plausible circumstance in which the Respondent could legitimately use the domain name <telstra.org>" (emphasis added).

The third case, also decided March, involved <telaxis.com> and <telaxis.net>.^[17] Since the domain name registration predated the trademark there could not, by definition, have been a registration in bad faith. In other words, rights holders of a post-acquired mark have no actionable claim for cybersquatting. At best the dispute involves "the competing rights and legitimate interests of two parties in the domain names." The Panel added that "[g]iven the nature of this dispute it is properly solved by ... by litigation in a forum of competent jurisdiction."

The fourth case, number 16 to be decided (also March 2000) involved a dictionary word domain name, <allocation.com>.^[18] The Panel determined that even if a domain name is identical to a trademark, the complainant still has to prove it was registered and is being used in bad faith. The Allocation case is particularly important in establishing investor rights to their domain names. Respondent-resellers prevail when they acquire domain names for their semantic rather than their trademark values. As the Panel aptly noted:

The difficulty lies in the fact that the domain name allocation.com, although descriptive or generic in relation to certain services or goods, may be a valid trademark for others. This difficulty is expounded by the fact that, while 'Allocation' may be considered a common word in English speaking countries, this may not be the case in other countries, such as Germany.

Nevertheless, the complainant failed to prove bad-faith registration. The Panel held that the complainant failed to demonstrate the respondent "at the time of registration of the domain name allocation.com knew or should have known of the existence of the German trademark Allocation” and that there was "no evidence suggesting that the domain name allocation.com ha[d] been chosen by Respondent with the intent to profit or otherwise abuse Complainant's trademark rights."

In the fifth case, involving the descriptive phrase "smart design" (number 993 to be decided, October 2000), the Panel found the complainant at fault for overreaching its statutory rights and sanctioned it for "reverse domain name hijacking"^[19] (RDNH). The question, in this case, was whether renewal of registration amounted to a new registration; if it did it could then be argued that the domain name postdated the mark. However, the facts supported the respondent's showing that it had rights or legitimate interests in the domain name and thus had not acted in bad faith. The Panel issued a scathing assessment of the complainant's claim that has been cited in many subsequent RDNH decisions:

The Panel is unable to assess the Complainant's state of mind when the Complaint was launched, but in the view of the Panel the Complaint should never have been launched. Had the Complainant sat back and reflected upon what it was proposing to argue, it would have seen that its claims could not conceivably succeed. Even assuming that its potpourri of constructive and quasi-constructive bad faith arguments were valid, they all start from the renewal, the renewal being treated for these purposes as a re-registration.

These decisions established the following core principles: (1) the complainant must prove its claim with evidence that the respondent both registered and is using the domain name in bad faith; (2) such proof can be direct, circumstantial, or inferential based on the totality of evidence offered; (3) passive holding of well-known or famous marks is inferentially bad faith unless rebutted with a persuasive explanation; (4) marks composed of common terms and descriptive phrases demand more persuasive evidence from the complainant that the respondent it them "in mind" when registering the domain name; (5) rights holders of marks acquired after registration of corresponding domain names have no actionable claims under the UDRP; (6) renewal of registration is a continuation of registration rather than a new event that restarts the clock for measuring bad faith; and (7) overreaching rights will incur the sanction of reverse domain name highjacking.

So established are these core principles that it is unusual for panelists to depart from them.

IV. Emergence of a "Common Law" Jurisprudence

As these five early cases illustrate, UDRP jurisprudence emerged incrementally through acceptance and refinement of the initial core principles, flexible enough to be applied to both commonly encountered as well as new factual circumstances. A month after the Allocation case was decided, for example, in a case involving <eautoparts.com>^[20] the Panel found that

The weakness of the EAUTO trademark makes it difficult for Complainant to argue that Respondent lacks a legitimate interest in the domain name eautoparts.com. That is because this domain name eautoparts.com is descriptive of a business that offers, through the Internet, information about or sales of automobile parts, and it is inappropriate to give Complainant a wide monopoly over all domain names, even descriptive ones, that incorporate the mark EAUTO.

Over the years, this line of reasoning has been followed in numerous decisions. Eauto, LLC has been cited as authority in dozens of cases (as have, incidentally, the Telstra and Allocation cases).

Similarly, in holding complainants accountable for abuse of the UDRP, once a clearly articulated analysis was presented, RDNH became a more common response to complainant overreaching. A three-member Panel in case number 2000-1151 (2001) cited Smart Design approvingly as well as noting an earlier case in the no sanction was imposed because "the Policy was so new."^[21]

Nevertheless, nine years after the Panel in first held that complainants had the burden of proving conjunctive bad faith, it had second thoughts.^[22] In renouncing its earlier construction of the Policy, the Panel reasoned that his colleagues "seem to have largely overlooked the language of the Policy regarding the respondent's representations and warranties." The Policy creators (the Panel believed) never intended a result that allows registrants who have registered disputed domain names in good faith to take advantage of and prosper from complainants' emergent reputations.

Instead of the traditional approach interpreting the representations provision (Paragraph 2 of the UDRP) as applying to the date of the registration of the domain name, the new construction proposed imposing on respondent a continuing obligation of lawful use. The Panel rested its new construction on the proposition that for certain kinds of opportunism, registrants should forfeit their registrations for disputed domain names regardless of whether they were registered in good faith. The theory is referred to as "retroactive bad faith registration."

Retroactive bad faith was immediately attacked as undermining predictability and consistency, and (although it took several years of decisions) it has become a dead end. The concern for preserving these twin principles was expressed by many Panels even before retroactive bad faith became an issue. In this regard, two decisions were important markers in the history of the jurisprudence: Time, Inc. (2001)^[23] and PAA Laboratories (2004)^[24]

In Time, the majority held that a decision "should consist of more than, '[i]t depends [on] what panelist you draw.'" In PAA Laboratories, the Panel (sympathetic to the concept of retroactive bad faith even before it was announced but resistant to accepting it) stated that "the Panel wishes to clarify that its decision under this element is based on the need for consistency and comity in domain name dispute 'jurisprudence'. Were it not for the persuasive force of the cited decisions, this Panel would have expressed the view that paragraph 2 of the Policy demonstrates that references to "registration" in the Policy were probably intended to be references to 'registration or renewal of registration.'"

As a later Panel put it in 2016: "If a consensus developed that a line of prior decisions had reached the wrong result, and if panels generally adopted a new approach on an issue, this Panel also would be open to considering whether a new approach was appropriate, both substantively under the Policy and in order to promote consistency." The Panel's emphasis on consistency is a significant factor in its arguing against changing current law, which construes "'evidence of the registration and use of a domain name in bad faith' . . . merely [as] an evidentiary presumption which may be rebutted on a full consideration of all the circumstances of the case."^[25]

V. Conclusion

The cases cited above illustrate that the emergence and growth of a domain name jurisprudence came about, and is still evolving, in a manner similar to the common law through a deliberative process that includes parties and representatives in their pleadings and arguments (to which only decision-makers have access) and that is most clearly apparent in Panel decisions as they approve, comment on, criticize, or cite earlier decisions for their own conclusions.

As domain name jurisprudence has grown in depth and complexity, it has subsumed the Policy and Rules. What this means in a practical sense is that parties and their representatives must first look at the jurisprudence to understand the current state of the law and only secondarily at the language of the Policy and Rules. It is the ongoing construction of the Policy and Rules that ultimately settles whether a party's submission succeeds or fails in a UDRP proceeding.

[1] Network Solutions’ Domain Name Dispute Policy Statement Revision 02 (last modified Sept. 9, 1996. The Policy is no longer available online but a copy is attached as an Appendix to Steven A. McAuley, The Federal Government Giveth and Taketh Away: How NSI's Domain Name Dispute Policy (Revision 02) Usurps a Domain Name Owner's Fifth Amendment Procedural Due Process, 15 J. Marshall J. Computer & Info. L. 547 (1997).

[2] Its shortcomings are described in Carl Oppedahl, Analysis and Suggestions Regarding NSI Domain Name Trademark Dispute Policy, Vol. 7, Issue 1, Article 7 (1996); and the Steven A. McAuley article, supra note 1.

[3] Hasbro, Inc. v. Internet Entertainment Group, Ltd., 40 U.S.P.Q. 2d 1479 (W.D. Wash. 1996) (adult entertainment site at domain name candyland.com is tarnishment of CANDYLAND trademark for children's games; motion for preliminary injunction granted); Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996) (The court characterized the defendant as a “spoiler” who prevented the trademark holder from doing business on the Internet under its trademark name unless it paid the Respondent’s fee); Panavision International v. Toeppen, 141 F.3d 1316, 46 U.S.P.Q. 2d 1511 (9th Cir. 1998) (“Toeppen's intention to arbitrage the ‘intermatic.com’ domain name constitutes a commercial use”)

[4] The Management of Internet Names and Addresses:  Intellectual Property Issues, Final Report of the World Intellectual Property Organization Internet Domain Name Process (April 30, 1999) (hereafter, “Final Report”).

[5] ICANN Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, Paragraph 4.1(c): The Current Question Is the Form of the Implementation Documents, not the Nature of the Policy Itself. In Santiago, the Board adopted a Uniform Dispute Resolution Policy based on the final report of WIPO, the consensus recommendation of the DNSO, the recommendation of the group of approximately twenty registrars that had prepared implementation documents for a voluntary policy, and a significant number of written and oral comments.

[6] 15 U.S.C. §1125(d) (Cyberpiracy Prevention).

[7] Id., Paragraph 34.

[8] WIPO Final Report, Paragraph 153.

[9] Id., Paragraph 149(v).

[10]WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Jurisprudential Overview 3.0”), http://www.wipo.int/amc/en/domains/search/overview3.0/.

[11] WIPO Final Report,¶ 170.

[12] Id. ¶153.

[13] Nikon, Inc. v. Technilab. Inc., D2000-1774 (WIPO Feb. 26, 2001).

[14] Private conversation with panelist Neil A. Brown, QC, referring to Rule 15(a).

[15] World Wrestling Federation Entertainment, Inc. v. Michael Bosman, D99-0001 (WIPO Jan. 14, 2000).

[16] Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) (an inference will be drawn from respondent’s choice of name when “it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by respondent that would not be illegitimate.”)

[17] Telaxis Communications Corp. v. William E. Minkle, D2000-0005 (WIPO Mar. 5, 2000).

[18] Allocation Network GmbH v. Steve Gregory, D2000-0016 (WIPO Mar. 24, 2000).

[19] Smart Design LLC v. Hughes, D2000-0993 (WIPO Oct. 18, 2000).

[20] EAuto, L.L.C. v. EAuto Parts, D2000-0096 (WIPO Apr. 9, 2000).

[21] Goldline International, Inc. v. Gold Line, D2000-1151 (WIPO January 4, 2001) (<goldline.com>) citing Smart Design, supra. and Loblaws, Inc. v. Presidentchoice.inc/Presidentchoice.com, AF-0170a to 0170c (eResolution, June 7, 2000).

[22] City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, D2009-0643 (WIPO July 3, 2009) (<mummygold.com>). The new construction was announced in this case, although the Panel denied the complaint. The same Panel later applied his new construction to grant the complaint in Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO Aug. 19, 2009).

[23] Time Inc. v. Chip Cooper, D2000-1342 (WIPO Feb. 13, 2001) (<lifemagazine.com>).

[24] PAA Laboratories GmbH v. Printing Arts America, D2004-0338 (WIPO July 13, 2004).

[25] Kids & Us English, S.L. v. Target Success.Com, Incorporated, D2016-0356 (WIPO Apr. 8, 2016) (<kidsandus.com>) responding to the argument that the traditional “approach can lead to outcomes which some WIPO panels have considered unjust.” It would only be “unjust” if an owner of a later acquired mark were entitled to a domain name corresponding to its mark, but that is not the law and to assert it would give the mark owner more rights than the law grants.

Published with permission of the New York State Bar Association. Originally published in Vol. 27, No. 2 of Bright Ideas (Fall 2018), a publication of the Intellectual Property Law Section.

Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP