The Current State of Domain Name Regulation: Domain names as second-class citizens in a mark-dominated world.
Abstract from my book: "The Current State of Domain Name Regulation: domain names as second-class citizens in a mark-dominated world", available now by Routledge.
Questions concerning the legality of domain names have never received the kind of attention they deserved; in all truth, the attention has perpetually focused on the harm trademark owners are enduring through the use of domain names. Early domain name regulation indicates that Internet policies highlighted the threat – potential and actual – domain names were posing to trademarks and any amendments on such policies proceeded on the basis that trademark protection should be more robust and rigorous. The promulgation of ICANN’s UDRP is one such example; it was justified on the face of lack of trademark protection on the Internet and was substantiated on the way domain names impair the value of trademarks. To the present day, domain name policies and trademark regulations are still developed, structured and arranged using justifications of trademark protection. I strongly refute this assertion. Trademark protection on the Internet is vital; it is equally vital, however, to rationalize the pragmatic considerations of this protection. We have spent time and resources debating and streamlining on the impact of cybersquatting on trademark law, completely disregarding how trademark lobbying has manipulated the authority of Internet institutions (ICANN) and has pressured for policies (UDRP and IRT) seeking to expand the conceptual basis of trademark law. Ten years ago we missed the window of opportunity to formalize the legal nature of domain names and, consequently, strike a balance between the competing interests of trademark owners and domain name registrants.
My forthcoming book – “The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World” – re-opens the discussion on the state of domain name regulation, questioning the legitimacy of its intellectual, institutional and moral structure. The timing for this kind of discussion could not have been more appropriate as ICANN is venturing into new policy with the launch of its new gTLDs programme and intellectual property lobbying is – once again – seeking to direct policy-makers into areas that stretch the philosophical basis of trademark law. In the book I promote the thesis that the determination and recognition of domain names as autonomous, sui generis, rights is intellectually imperative, because it is through this intellectual conjecture that we will end in modifying the current status quo. Using the theory of property as my starting point, I discuss issues of ownership (dominium) and sovereignty (imperium). My argument centres on the concept of the ‘bundle of rights’ and how it has evolved to denote ownership over tangible and intangible assets; it does not seek to dispute the theory of the ‘bundle of rights’, rather I accept it as property’s contemporary variant.
For me, the metamorphosis of property law is occurring at regular intervals and, currently, it encompasses both tangible and intangible assets that can be associated with such a ‘bundle’. This description, however, can have a negative impact on property – the clearest example being trademark rights - one that Morris Cohen identified in his visionary 1927 article when discussing the dangers of the concepts of dominium and imperium being conceptually blurred. With this understanding of property in mind, I then proceed to display trademarks and domain names. I discuss the systematic effort of the trademark community to canonize trademark protection (Progressives movement) and demonstrate the importance of trademarks as property commodities. However, I also acknowledge that attributing property characteristics does not grant immunity to trademarks, the same way that property does not grant immunity to any right. Trademark law operates under limitations and restrictions (for instance, territoriality, genericness and free speech), which ensure the smooth function of the market and allow entrepreneurship to flourish. On the contrary, such needs are not preserved through the presence of trademarks on the Internet. There is a great amount of conceptual vagueness and legal presupposition on the kind of protection trademarks should receive in the domain name space. Such an attitude ignores emerging questions concerning the nature of domain names, their relationship with trademarks and their online importance. The truth is that these questions are so complex that American courts are split and seem unwilling to create a blanket rule on how law should treat domain names.
In such a vague environment, the UDRP plays a major role and contributes significantly to this legal cul de sac. Although politics within ICANN have compromised attempts to produce a fair process, the UDRP was meant to be a harmless policy, with a specific subject matter and limited to cover only a very small fraction of trademark infringement. At the time, no one anticipated the UDRP to transcend traditional trademark law and become an online establishment. Nowadays and with a massive body of case law, which shows signs of exponential growth, ICANN’s policy is considered as the dominant platform for trademark vs. domain name resolution. The UDRP, however, is far from an authoritative statute; its genesis was based on illegitimate grounds, its procedures are substantially flawed and unfair, it restricts the rights of domain name registrants and it is crowded with examples of inconsistent and biased decisions. Its subject matter has been extended to cover almost every trademark issue that occurs on the Internet, disrespecting the traditional and long-standing principles of trademark law, often granting unsanctioned international protection to trademark owners, suppressing free speech and disintegrating the legal rights of domain name registrants. in short, trademark interests have managed to excommunicate domain name registrants and entrepreneurs. This degree of substantial and procedural unfairness poses an ethical problem for domain name regulation. My thesis is to build a framework for domain names– the “domain name polis” as I call it – where fundamental principles of justice, like fairness, equality and lawfulness, hold a prominent position and direct any amendments on the Policy towards respecting and reflecting these ethical ideals. The latest proposal by ICANN’s Implementation Recommendation Team (IRT) makes the creation of this framework even more important. Suggesting policy that re-defines the conceptual parameters of trademark law, the IRT advocates the success of the UDRP, does not recognize any of the intellectual legal issues and consciously dismisses the unfairness that is taking place. It is, therefore, important for scholars and intellectuals to reopen the discussion on the conceptual boundaries of trademark law, revisit its limitations and parameters and refine the state of domain name regulation.
The book is now available at Amazon, Barnes and Noble, Play.com and major bookstores.
BOOK REVIEWS
‘This book is a must-read for any legal scholar or policymaker interested in understanding the international public policy objectives and political negotiations behind Internet domain name policy and trademark law policy. If you want to know how the intersection of trademark law and domain name policy has historically evolved, where it is right now, and where it is going, you have found the right book.' - Robin D. Gross, Imagine Law, San Francisco, Executive Director of IP Justice, and Chair of ICANN’s Noncommercial Users Constituency (NCUC).
‘Few academic studies are as timely and compelling as this book. Dr. Komaitis provides the first comprehensive analysis and history of the UDRP. Dr. Komaitis' questions, insights and reformulations stand to alter the way we understand domain names and their meanings. His answers to the key question: "How can we distance the domain names from the catalytic influence of trademark law" stand to pave a path to fairer and more neutral treatment of domain names for people around the world. This is an unprecedented book.' - Kathryn A. Kleiman, Esq., Senior Internet Law & Policy Attorney, Internet Matters, USA
‘As ICANN proceeds to expand generic top level domains, this timely and thorough critique of the legal regulation of the domain space provides a necessary analysis of the legal nature of domain names. Arguing that without sound ethical principles of equality, fairness and lawfulness underpinnings any regulation of the domain name space is flawed, Komaitis proffers well considered solutions for a just domain name polis firmly rooted in the experience of the first ten years of domain name dispute resolution.' - Catherine Colston, University of Strathclyde, Scotland
CONTENTS
1. Introduction: Taking on the sins of ICANN and the UDRP, PART I: INTELLECTUAL PROBLEM 2. Contextualising Property 3. Introducing Trademarks 4. Domain Names: Their Technological, Socio-Economic and Legal Status PART II: INSTITUTIONAL PROBLEM 5. History of Domain Name Institutionalization 6. "Lex Domainia" – The New Lex Mercatoria? 7. The UDRP and Arbitration 8. Issues of Procedural Unfairness 9. Free Speech in the context of the UDRP 10. Regulating Domain Names Nationally: The Case of the Anticybersquatting Consumer Protection Act (ACPA) 11. Applying the UDRP and ACPA in the Right Context PART III: ETHICAL PROBLEM 12. ‘Haves’ and ‘Have-nots’ PART IV: THEMES AND ISSUES 13. Forwards and Backwards 14. Repeating the same mistakes: New gTLDs and the IRT Recommendation Report
POST-PUBLICATION REVIEWS
Milton Mueller - originally posted on the Internet Governance website (http://blog.internetgovernance.org/blog/_archives/2010/8/12/4603084.html)
"A new book by Dr. Konstantinos Komaitis (Lecturer in Law at the University of Strathclyde) provides a passionate yet legalistic and well-researched overview of the legal, institutional and ethical problems caused by the clash between domain names and trademarks. This is really the first decent book-length treatment of what is now a decade and a half of legal and political conflict between domain name registrants and trademark holders. But this is more than a static compilation and description of the subject: Komaitis has an original and fundamentally important argument to make.
In his view, domain names are a form of property, and the property rights held by domain name registrants need to be recognized in law – independently of, and carefully distinguished from, the limited rights associated with trademark protection. Komaitis shows that under the institutional regime that has evolved since 1998 (in which ICANN and US law play leading roles), domain name registrants are not afforded normal property rights. Due to the political power of the trademark lobby, their rights are subordinated to trademark protection and their property rights recognized only insofar as they have no impact on trademarks. Hence the book’s subtitle: domain names are “second-class citizens in a mark-dominated world.” The author makes a convincing case that this is not the appropriate state of affairs, so we need to rethink the way we approach the laws and rights pertaining to domain names.
This argument is carried out very systematically. Komaitis starts at the beginning, taking up the theory of property and reviewing the legal debate over whether domain names are property or “service contracts.” He then proceeds to discuss the history, legal basis, procedural aspects and performance of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP). There is an interesting discussion of the differences between what we normally think of as arbitration and the UDRP, which poses as an arbitral process. As one might expect, most of the differences have the effect of weakening the rights of registrants, binding them to a procedure and rules while allowing the complainant more choice and options. He goes on to critique the procedural justness of the UDRP and the contradictions of the U.S. Anticybersquatting Consumer Protection Act (ACPA), with its in rem jurisdiction that erases the territoriality of trademark protection. There is a chapter on the interaction between domain name regulation and freedom of expression rights. He concludes by showing how “the same mistakes” are being repeated and even reinforced by a trademark interest-dominated “implementation review team” (IRT) which developed in reaction to ICANN’s new top level domains initiative.
Komaitis’s take on domain name regulation is definitely worth reading. On the downside, the writing style of this non-native English speaker is a bit complex at times (although, oddly, it improves in later chapters). One can only wonder whether the Routledge series that published the volume gave it the editorial attention it clearly deserved. There are also some minor mistakes in the author’s understanding of DNS technology; several times the author says that ICANN enforces domain name judgments by “altering the registrant’s information on the ‘A’ root,” which is not how it works (actions deleting or reassigning second-level domains are taken at the TLD registry, not at the root zone file). But this has no impact on the legal argumentation."
SCRIPTed, A Journal of Law, Technology and Society, University of Edinburgh, (2010) 7:3, 421-588:
"It was once said that “attending a conference is a professionally rewarding experience”. This is certainly true in the case of this book, as the author, Konstantinos Komaitis, only became interested in the scope of domain names as a result of his attendance at a conference. Ten years later, he produced this remarkable piece of work, described as a “story of [his] experience”.
The full text of the review is available here: http://www.law.ed.ac.uk/ahrc/script-ed/vol7-3/asy_review.pdf
Questions concerning the legality of domain names have never received the kind of attention they deserved; in all truth, the attention has perpetually focused on the harm trademark owners are enduring through the use of domain names. Early domain name regulation indicates that Internet policies highlighted the threat – potential and actual – domain names were posing to trademarks and any amendments on such policies proceeded on the basis that trademark protection should be more robust and rigorous. The promulgation of ICANN’s UDRP is one such example; it was justified on the face of lack of trademark protection on the Internet and was substantiated on the way domain names impair the value of trademarks. To the present day, domain name policies and trademark regulations are still developed, structured and arranged using justifications of trademark protection. I strongly refute this assertion. Trademark protection on the Internet is vital; it is equally vital, however, to rationalize the pragmatic considerations of this protection. We have spent time and resources debating and streamlining on the impact of cybersquatting on trademark law, completely disregarding how trademark lobbying has manipulated the authority of Internet institutions (ICANN) and has pressured for policies (UDRP and IRT) seeking to expand the conceptual basis of trademark law. Ten years ago we missed the window of opportunity to formalize the legal nature of domain names and, consequently, strike a balance between the competing interests of trademark owners and domain name registrants.
My forthcoming book – “The Current State of Domain Name Regulation: Domain Names as Second Class Citizens in a Mark-Dominated World” – re-opens the discussion on the state of domain name regulation, questioning the legitimacy of its intellectual, institutional and moral structure. The timing for this kind of discussion could not have been more appropriate as ICANN is venturing into new policy with the launch of its new gTLDs programme and intellectual property lobbying is – once again – seeking to direct policy-makers into areas that stretch the philosophical basis of trademark law. In the book I promote the thesis that the determination and recognition of domain names as autonomous, sui generis, rights is intellectually imperative, because it is through this intellectual conjecture that we will end in modifying the current status quo. Using the theory of property as my starting point, I discuss issues of ownership (dominium) and sovereignty (imperium). My argument centres on the concept of the ‘bundle of rights’ and how it has evolved to denote ownership over tangible and intangible assets; it does not seek to dispute the theory of the ‘bundle of rights’, rather I accept it as property’s contemporary variant.
For me, the metamorphosis of property law is occurring at regular intervals and, currently, it encompasses both tangible and intangible assets that can be associated with such a ‘bundle’. This description, however, can have a negative impact on property – the clearest example being trademark rights - one that Morris Cohen identified in his visionary 1927 article when discussing the dangers of the concepts of dominium and imperium being conceptually blurred. With this understanding of property in mind, I then proceed to display trademarks and domain names. I discuss the systematic effort of the trademark community to canonize trademark protection (Progressives movement) and demonstrate the importance of trademarks as property commodities. However, I also acknowledge that attributing property characteristics does not grant immunity to trademarks, the same way that property does not grant immunity to any right. Trademark law operates under limitations and restrictions (for instance, territoriality, genericness and free speech), which ensure the smooth function of the market and allow entrepreneurship to flourish. On the contrary, such needs are not preserved through the presence of trademarks on the Internet. There is a great amount of conceptual vagueness and legal presupposition on the kind of protection trademarks should receive in the domain name space. Such an attitude ignores emerging questions concerning the nature of domain names, their relationship with trademarks and their online importance. The truth is that these questions are so complex that American courts are split and seem unwilling to create a blanket rule on how law should treat domain names.
In such a vague environment, the UDRP plays a major role and contributes significantly to this legal cul de sac. Although politics within ICANN have compromised attempts to produce a fair process, the UDRP was meant to be a harmless policy, with a specific subject matter and limited to cover only a very small fraction of trademark infringement. At the time, no one anticipated the UDRP to transcend traditional trademark law and become an online establishment. Nowadays and with a massive body of case law, which shows signs of exponential growth, ICANN’s policy is considered as the dominant platform for trademark vs. domain name resolution. The UDRP, however, is far from an authoritative statute; its genesis was based on illegitimate grounds, its procedures are substantially flawed and unfair, it restricts the rights of domain name registrants and it is crowded with examples of inconsistent and biased decisions. Its subject matter has been extended to cover almost every trademark issue that occurs on the Internet, disrespecting the traditional and long-standing principles of trademark law, often granting unsanctioned international protection to trademark owners, suppressing free speech and disintegrating the legal rights of domain name registrants. in short, trademark interests have managed to excommunicate domain name registrants and entrepreneurs. This degree of substantial and procedural unfairness poses an ethical problem for domain name regulation. My thesis is to build a framework for domain names– the “domain name polis” as I call it – where fundamental principles of justice, like fairness, equality and lawfulness, hold a prominent position and direct any amendments on the Policy towards respecting and reflecting these ethical ideals. The latest proposal by ICANN’s Implementation Recommendation Team (IRT) makes the creation of this framework even more important. Suggesting policy that re-defines the conceptual parameters of trademark law, the IRT advocates the success of the UDRP, does not recognize any of the intellectual legal issues and consciously dismisses the unfairness that is taking place. It is, therefore, important for scholars and intellectuals to reopen the discussion on the conceptual boundaries of trademark law, revisit its limitations and parameters and refine the state of domain name regulation.
The book is now available at Amazon, Barnes and Noble, Play.com and major bookstores.
BOOK REVIEWS
‘This book is a must-read for any legal scholar or policymaker interested in understanding the international public policy objectives and political negotiations behind Internet domain name policy and trademark law policy. If you want to know how the intersection of trademark law and domain name policy has historically evolved, where it is right now, and where it is going, you have found the right book.' - Robin D. Gross, Imagine Law, San Francisco, Executive Director of IP Justice, and Chair of ICANN’s Noncommercial Users Constituency (NCUC).
‘Few academic studies are as timely and compelling as this book. Dr. Komaitis provides the first comprehensive analysis and history of the UDRP. Dr. Komaitis' questions, insights and reformulations stand to alter the way we understand domain names and their meanings. His answers to the key question: "How can we distance the domain names from the catalytic influence of trademark law" stand to pave a path to fairer and more neutral treatment of domain names for people around the world. This is an unprecedented book.' - Kathryn A. Kleiman, Esq., Senior Internet Law & Policy Attorney, Internet Matters, USA
‘As ICANN proceeds to expand generic top level domains, this timely and thorough critique of the legal regulation of the domain space provides a necessary analysis of the legal nature of domain names. Arguing that without sound ethical principles of equality, fairness and lawfulness underpinnings any regulation of the domain name space is flawed, Komaitis proffers well considered solutions for a just domain name polis firmly rooted in the experience of the first ten years of domain name dispute resolution.' - Catherine Colston, University of Strathclyde, Scotland
CONTENTS
1. Introduction: Taking on the sins of ICANN and the UDRP, PART I: INTELLECTUAL PROBLEM 2. Contextualising Property 3. Introducing Trademarks 4. Domain Names: Their Technological, Socio-Economic and Legal Status PART II: INSTITUTIONAL PROBLEM 5. History of Domain Name Institutionalization 6. "Lex Domainia" – The New Lex Mercatoria? 7. The UDRP and Arbitration 8. Issues of Procedural Unfairness 9. Free Speech in the context of the UDRP 10. Regulating Domain Names Nationally: The Case of the Anticybersquatting Consumer Protection Act (ACPA) 11. Applying the UDRP and ACPA in the Right Context PART III: ETHICAL PROBLEM 12. ‘Haves’ and ‘Have-nots’ PART IV: THEMES AND ISSUES 13. Forwards and Backwards 14. Repeating the same mistakes: New gTLDs and the IRT Recommendation Report
POST-PUBLICATION REVIEWS
Milton Mueller - originally posted on the Internet Governance website (http://blog.internetgovernance.org/blog/_archives/2010/8/12/4603084.html)
"A new book by Dr. Konstantinos Komaitis (Lecturer in Law at the University of Strathclyde) provides a passionate yet legalistic and well-researched overview of the legal, institutional and ethical problems caused by the clash between domain names and trademarks. This is really the first decent book-length treatment of what is now a decade and a half of legal and political conflict between domain name registrants and trademark holders. But this is more than a static compilation and description of the subject: Komaitis has an original and fundamentally important argument to make.
In his view, domain names are a form of property, and the property rights held by domain name registrants need to be recognized in law – independently of, and carefully distinguished from, the limited rights associated with trademark protection. Komaitis shows that under the institutional regime that has evolved since 1998 (in which ICANN and US law play leading roles), domain name registrants are not afforded normal property rights. Due to the political power of the trademark lobby, their rights are subordinated to trademark protection and their property rights recognized only insofar as they have no impact on trademarks. Hence the book’s subtitle: domain names are “second-class citizens in a mark-dominated world.” The author makes a convincing case that this is not the appropriate state of affairs, so we need to rethink the way we approach the laws and rights pertaining to domain names.
This argument is carried out very systematically. Komaitis starts at the beginning, taking up the theory of property and reviewing the legal debate over whether domain names are property or “service contracts.” He then proceeds to discuss the history, legal basis, procedural aspects and performance of ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP). There is an interesting discussion of the differences between what we normally think of as arbitration and the UDRP, which poses as an arbitral process. As one might expect, most of the differences have the effect of weakening the rights of registrants, binding them to a procedure and rules while allowing the complainant more choice and options. He goes on to critique the procedural justness of the UDRP and the contradictions of the U.S. Anticybersquatting Consumer Protection Act (ACPA), with its in rem jurisdiction that erases the territoriality of trademark protection. There is a chapter on the interaction between domain name regulation and freedom of expression rights. He concludes by showing how “the same mistakes” are being repeated and even reinforced by a trademark interest-dominated “implementation review team” (IRT) which developed in reaction to ICANN’s new top level domains initiative.
Komaitis’s take on domain name regulation is definitely worth reading. On the downside, the writing style of this non-native English speaker is a bit complex at times (although, oddly, it improves in later chapters). One can only wonder whether the Routledge series that published the volume gave it the editorial attention it clearly deserved. There are also some minor mistakes in the author’s understanding of DNS technology; several times the author says that ICANN enforces domain name judgments by “altering the registrant’s information on the ‘A’ root,” which is not how it works (actions deleting or reassigning second-level domains are taken at the TLD registry, not at the root zone file). But this has no impact on the legal argumentation."
SCRIPTed, A Journal of Law, Technology and Society, University of Edinburgh, (2010) 7:3, 421-588:
"It was once said that “attending a conference is a professionally rewarding experience”. This is certainly true in the case of this book, as the author, Konstantinos Komaitis, only became interested in the scope of domain names as a result of his attendance at a conference. Ten years later, he produced this remarkable piece of work, described as a “story of [his] experience”.
The full text of the review is available here: http://www.law.ed.ac.uk/ahrc/script-ed/vol7-3/asy_review.pdf
