I have always been impressed with how proactive the US legislature is in addressing issues pertaining to the Internet. So, you can understand my excitement when a copy of the "Online Infringement and Counterfeits Act" fell on my hands. I have to admit that after reading it, I am not impressed at all.
The Act seeks to do exactly what it promises - try to combat infringement in the online environment and to eliminate the dissemination of counterfeit goods via the Internet. I, for one, am very much in favor of such an initiative, as long as it strikes a balance between the various conflicting rights and does not seek to address one harm by creating a new one. And, this Act does exactly this.
The Act gives the Attorney General carte blance to stigmatize any domain name that enables or facilitates infringement or the promotion of counterfeit goods "including by offering or providing access to, without the authorization of the copyright owner or otherwise by operation of law, copies of, or pubic performance or display of, works protected [...], in complete or substantially complete form, by any means, including by means of download, transmission, or otherwise, including the provision of a link or aggregated links to other sites or Internet resources for obtaining such copies for accessing such performance or displays".
But, perhaps the worst attribute of the Act has to be the insertion of the ill-conceived (at least for trademark law) in rem jurisdictional provision. Through this provision, the Act legitimizes the take down or blacklisting (or whatever else) of domain names both within the United States and around the world. And although the United States as a sovereign state may suggest any legislation with any content its sees necessary for the protection of its national interests, things get more problematic when American legislation affects the rights of individuals of other countries.
This is not the first time that the in rem provision makes its way within a statute dedicated to domain names. The same in rem provision can be seen in the context of the Anticybersquatting Consumer Protection Act (ACPA) and has been misused to enforce judgements on foreign nationals. Under the ACPA, a trademark owner can invoke the in rem provision either when she fails to identify the domain name registrant or when the registrant falls outside the jurisdiction of the court, which applies to many domain name holders residing out of the United States. On the issue of the 'minimum contacts' requirement, relevant to the application of the in rem jurisdiction, the Act provides a rather simplistic way of circumventing the high standards set by International Shoe and Shaffer.
Moreover, and for reasons beyond my understanding, the courts of the District of Columbia are being established as the new cyber default courts, a characterization previously held by the courts in Virginia, which held this title by virtue of sharing the same location with Network Solution, the sole Registry for the <dotcoms>.
And, just like other intellectual property statutes that have emerged since the commercialization of the Internet, this Act fails to take into account the rights of domain name holders and respect free speech. Nowhere in the current version of the document, do we come across the possibility for the registrant to explain the use of the domain name. On the contrary, the Attorney General will only ask trademark owners information that are relevant to making her determinations without consulting domain name holders. As if they don't exist or their rights are not as important as those of the trademark community. Free speech or even the possibility of redemption is not part of this Act. The Attorney General cannot only blacklist domain names but also to "include additional domain names that are used in substantially the same manner as the Internet site against which the action was brought". No inquiry into the nature of the domain name, no effort to understand its use and distinguish it from purely illegal uses.
Despite the ability of domain name holders to file a petition and ask the domain name to be removed from the 'black list', the Act still fails to secure the interests of legitimate registrants and repeats the mistake of ACTA, by putting all eggs into the same basket. Because the way I see it, the harm is already done. By the time the domain name holder is heard, it is too late into the process, the domain name has been stigmatized and the reputation of the domain name registrant has been tainted.
To me this Act is nothing more than another way for domain name take downs without proper justification; it is another way to expand and give trademark owners more rights in the naming and addressing space; it is a way for big American rights holders to instill their rights globally.
And, remember, I am all in favor of protecting intellectual property rights on and off the Internet. I just feel that this is not the way we are supposed to do it.
In its August Board Meeting, ICANN indicated its willingness to proceed to a more streamlined process regarding the supplemental rules that are in place by the various UDRP dispute resolution providers. This is great news and, if ICANN approaches this issue with the willingness to monitor the way UDRP providers offer their services, we might actually be in the process of fixing one of the main flaws of the UDRP.
Within the UDRP framework, “Supplemental Rules” refer to the ability of dispute resolution providers to structure certain aspects of the UDRP’s procedural process independently of ICANN and one another and to design procedures that allow a more competitive dispute resolution regime. Historically, ICANN has only insisted that the centres follow the same rules for the resolution of domain name disputes – the Uniform Domain Name Dispute Resolution Policy and especially its paragraph 4 – as well as some default guidelines that deal with the general structure of the system, e.g. composition of panels, deadlines, language of the proceedings, etc. At the outset, this provided UDRP centres with a certain degree of freedom and flexibility and was intended to provide incentives for both parties, flourishing competition, whilst allowing UDRP providers to distinguish themselves from one another.
However, a lack of proper monitoring on behalf of ICANN combined with the business and financial aspirations of these centres has resulted in centres putting in place and enforcing supplemental rules that have contributed greatly to forum shopping, aiming to please only one of the parties to the detriment of procedural justice.
In my book, “The Current State of Domain Name Regulation: domain names as second-class citizens in a mark-dominated world”, I have argued that the way Supplemental Rules have been integrated within the UDRP system have resulted in a great amount of inconsistency, especially when the UDRP model is meant to be uniform. This is highly problematic as UDRP centres use their supplemental rules to provide false incentives and take advantage of the limited rights the UDRP affords the Respondent. For example, various centers have realized the tight deadlines respondents have to answer to the complaint and have addressed it in a way that places them in an even more obvious disadvantage. The NAF Supplemental Rules, for instance, allow respondents to submit their response after the required twenty days deadline, only if the latter request so in writing and pay a $100 fee, within, however, the twenty day deadline. (Extension for Filing a Response: (a) Paragraph 5(d) of the Rules provides that the Respondent may request additional time to submit a Response, or may be given additional time if the parties stipulate to an extension and NAF approves. Any request by the Respondent for an extension or any joint request by the parties for an extension shall: […](v) be accompanied by an extension fee of $100.)
On another level, this inconsistency in the Supplemental Rules of UDRP providers has an impact on how centers interpret issues concerning the impartiality and independence of their panelists. Each of the centers is allowed to produce its own rules and set its own individual parameters of panelist independence. For instance, WIPO has not produced any substantive rules for party challenges; NAF accepts challenges only after the panelist has been appointed and only within a small time frame; The Asian Domain Name Dispute Resolution Centre allows challenges any time during the procedure but before the rendering of the decision, whilst the newly appointed Czech Arbitration Court does not provide to the parties any guidelines concerning the challenge of panels.
These are just two manifestations of the detrimental effect Supplemental Rules have upon the UDRP. We need to accept that affording the UDRP providers such amount of freedom has produced problematic results and has contributed to the general procedural unfairness the UDRP is currently facing. So, it is indeed a welcoming step to see that the ICANN Board is willing to discuss the role of Supplemental Rules in the UDRP and to see the ICANN staff wanting to impose tighter controls over these rules and their presence in the UDRP.
I can only hope that this is the first step towards slowing down the freedom of the UDRP providers, addressing the issues of inconsistency, eliminating forum shopping and opening the road for a substantive review of the UDRP.
Views are my own and my own only!