I would, first, like to take this opportunity and thank ICANN for issuing its preliminary Issues Report on the Current State of the UDRP and allowing a period for public comments. Having spent more than ten years observing the UDRP as a litigious machine, I believe that it is a system that has failed to evolve organically and to reflect the true value and potential of domain names. The UDRP is stuck to a microscopic view that sees domain names mainly as tools of trademark infringement, without making room for other uses, related to and recognized by trademark law itself.
Everyone will agree that the Uniform Domain Name Dispute Resolution Policy (UDRP) is a true phenomenon. It is a process that started more than ten years ago as part of the US Government’s White Paper mandate and has developed into a process that so far has adjudicated more than 30000 domain name disputes. This is both good and bad. It is good because it demonstrates the ability of the UDRP to operate in a fair, timely and cheap manner that eliminates jurisdictional issues. It is bad, however, because it has provided UDRP panels the ability to act as international arbitrators assigning rights of international recognition; it has allowed precedent to become an integral part of its processes and its rules have acquired a normative connotation, sufficient to provide the UDRP with an unprecedented authority.
All this is quite alarming considering that the UDRP was never meant to either transform trademark law or acquire the status it currently enjoys. Because of its current authority to adjudicate the rights of trademark owners and domain name registrants, it is vital we discuss and investigate the true efficiency of the UDRP and its ability to produce decisions that can be celebrated for their fairness, reasonableness, balance and legality. Currently, these values are highly disputed in the context and content of UDRP decisions.
First, it is important we clarify a big misconception: Contrary to what the Issues Report suggests, the UDRP was never a consensus document. This has been well documented by those who participated in the UDRP process ten years ago (See, A. Michael Froomkin, A Catalog of Critical Process Failures; Progress on Substance; More Work Needed, available at http://www.law.miami.edu/~amf/-icann-udp.htm (Oct. 13, 1999). Now, however, ICANN is presented with a unique opportunity to achieve the consensus that failed to achieve some ten years ago; ICANN is provided with the right set of circumstances to involve all its stakeholders and continue to support its multistakeholder, bottom-up policy formation. The precedent established by the Special Trademark Issus Team (STI) recommendation proves that policy, based on multistakeholder participation is feasible and it can produce valuable conclusions.
The Issues Report further calls the UDRP a fair system. This is not entirely true and a close look at the UDRP and its rules clearly demonstrates the fundamental unfairness of the mechanism. Take a look, for example, at the lack of clear fair use provisions and safe harbors; calculate the unreasonably disproportionate deadlines that exist for the complainant and the respondent; pay close attention to the bias that takes place even at the time of the center selection; and, notice how the UDRP has failed to account for registrants and users located in countries, where Internet connectivity is still at its infancy.
It has been asserted during the UDRP Webinar that the UDRP has been fluid and flexible to deal with issues, not foreseen back in 1999 (pay per click, pshising, mousetrapping). This is true. But, at the same time, the UDRP has failed dramatically to account for the major changes in user participation and behaviour through domain names. Innovators, bloggers, entrepreneurs, new businesses and their domain names are not included in the UDRP of 2011. Actors administering and using the UDRP have only focused on those acts that affect trademark owners; they have completely disregarded those acts that can be harmed by the strong protection of trademarks. You only have to imagine the scenario of some trademark owner, somewhere in the world, contesting <facebook.com> and you will understand the narrow view the UDRP takes in the protection of domain names.
The Issues Report suggests that “many [of the issues of the UDRP] relate to process issues associated with the implementation of the UDRP, rather than the language of the policy itself”. This is an extremely narrow interpretation. It is very difficult (and would be naive) to divorce substance from process not just for the UDRP but for any system of adjudication. Rules that are clear and coherent allow for a more efficient procedural environment; when the substantive layer is concise, the procedural level operates smoothly – and visa versa.
Another issue that is presented as contributing to the success of the UDRP is its consistency. I personally find this consistency troubling, mainly for two reasons: first, because it is confused with the fairness or success of the UDRP. Consistency proves nothing, apart from a system that is trapped in its own discretionary interpretations. And, second, it is the wrong kind of consistency. It is consistency of decisions rather than of rules. For example, the UDRP should aim for consistency in the way its rules are interpreted or the way the supplemental rules of its accredited centers are enforced.
It is important to stop considering the UDRP as a business-making machine. The UDRP was created to provide relief and not to create an extremely profitable industry in the adjudication of domain names. Given that the Policy assigns and determines rights on the Internet, it should be clothed with solid checks and balances and depart from its current modus operandi, which focuses primarily on creating incentives and using the UDRP rules to satisfy certain interests than delivering justice.
Undeniably, a review of the UDRP will not be an easy task – with more than 30,000 domain name disputes, a huge volume of documented decisions, and a lot of academic writing, the body of the UDRP is colossal. However, this should not prevent the UDRP from being reviewed; on the contrary, it is should be the catalyst for its review. The UDRP will only get bigger and its case law will become more complex. ICANN is presented with a great opportunity to start discussions, deliberations and put in place mechanisms that will allow the UDRP to be properly analyzed. A good starting point would be the existing academic writings, which have produced valuable and objective considerations.
By suggesting that the UDRP should not be reviewed, the ICANN Staff is making a big mistake. We made this mistake back in 2003, when discussions for a potential review of the UDRP were cut abruptly short. We should not repeat the same mistake. We should not let the fear of what the review might do to the UDRP, take precedent over the real need to review a policy document that is very old, in many cases is out of touch with the way domain names are used nowadays and is not inclusive of emerging Internet economies.
It would be a shame, if we were to let this opportunity for a proper UDRP review pass us by. ICANN has a responsibility to make sure that the UDRP, like any of its policies, is fair and represents the needs of all the parties that participate and use it.
Dr. Konstantinos Komaitis
Over the past few months, there has been some buzz over the possibility of reviewing the Uniform Domain Name Dispute Resolution Policy (UDRP) – the oldest ICANN policy. On February 3, 2010, ICANN’s Generic Name Supporting Organization (GNSO) passed a resolution, requesting the ICANN staff to draft an Issues Report on the current state of the UDRP. According to the motion, this effort would focus on two issues:
· “How the UDRP has addressed the problem of cybersquatting to date, and any insufficiencies/inequalities associated with the process; and,
· Whether the definition of cybersquatting inherent within the existing UDRP language needs to be reviewed or updated. The Issue Report should include suggestions of how a possible PDP on this issue might be managed”.
This GNSO initiative back in February provided the excuse to all of us concerned with and researching the UDRP to start discussing possible ways for its review. And, its timing was perfect: the UDRP was celebrating just over ten years in the adjudication field of domain name disputes, discussions concerning the conflicting rights between trademark owners and domain name holders were fresh from the new gTLD process and ICANN had already made some movements towards a more efficient (electronic filling) and a more uniform (uniformity of supplemental rules across the providers) UDRP system.
The ICANN staff was directed to conduct a preliminary research on the status of the UDRP and submit its final recommendations to the GNSO. As it always happens with ICANN’s policies, the timeframe for this task was very short and, it looks like this short timeframe might have cost the UDRP a proper review. But, there were also other problems with this process: there was no clear methodology as to what this review should entail (aside from the two issues raised by the GNSO,) there was no clear direction what the aims of the review should be and, generally, there was a clear lack of understanding by the GNSO of what reviewing the UDRP entails, considering the massive body of case law that has been generated over the past ten years. So, it should really not come as a surprise that the ICANN staff found it impossible to deal in such a short time with the UDRP’s volume of cases, its substantial volume of documents (many of which go as far back as 1999) and, the great deal of academic (and not only) writing about the UDRP, its procedures and its substance. According to the ICANN staff: “Due to the tremendous volume of cases and materials available regarding the UDRP (including, over 300,000 hits on Google alone), it became clear that there was no effective way to evaluate these materials”.
Facing these difficulties, the ICANN staff – alongside the GNSO – opted for a ‘UDRP Webinar’ and a questionnaire that was sent to the various dispute resolution service providers. “The Webinar speakers were selected by the UDRP Drafting team based in part on recommendations from the UDRP providers. They reflected a broad cross-section of perspectives from various stakeholders with expertise in the UDRP and its administration, such as registrars, UDRP service providers, UDRP complainants and respondents, ICANN’s Contractual Compliance Department, and academics.”
As one of the academics invited to speak to this Webinar, I thought it was both successful and a great way to reach wide audiences. The Webinar attracted more than 100 participants and the chat application in the Adobe Connect room was flooded with ideas, questions and comments. The participants represented various interests and came from all sides of the spectrum: trademark owners, their lawyers, academics, civil society, domain name entrepreneurs, domain name businesses, etc. Each speaker was given 5-10 minutes to present their opinion, a very short but understandable timeframe, given the amount of speakers participating.
The Webinar gave all interested parties the opportunity to address their views on whether the UDRP should be reviewed. There was an overwhelming (and alarming my I add) majority of opinions against a review of the UDRP; some claimed that the timing was not right, others feared that a review would ‘break’ the UDRP whilst others felt that the mechanism, despite some flaws, is, generally, working well (for a more detailed account of these views see the ICANN Staff Preliminary GNSO Issue Report on the current state of the UDRP). On the downside, two hours proved not enough to even scratch the main problems with the UDRP; many questions by the participants were left unanswered and, to this end, ICANN could have sought ways to continue the discussions on the state of the UDRP and its potential review.
For reasons unknown, discussions on the state of the UDRP terminated after the Webinar and, on May 27, 2011, the ICANN Staff released its Preliminary Issues Report for consideration by the GNSO. The ICANN Staff report makes predominantly two mistakes: the first is that it considers the consistency and predictability of the UDRP as a good thing. To be sure, consistency and predictability can be considered positive elements in any system of adjudication as long as these are characteristics attributed to the procedural or institutional aspects of a system. But, in the case of the UDRP, predictability and consistency are connected with the winning rate of trademark owners. We all come to passively accept (how scary is that) that, depending on the provider, trademark owners will prevail in most of the cases. The second mistake is that we call the UDRP fair – I still don’t understand how we can reach such a conclusion without reviewing the UDRP and its case law to see how fair or unfair the system has been operating for the past ten years.
Unsurprisingly and disappointingly, the Preliminary Report recommends that “although properly within the scope of the GNSO’s mandate, a PDP on the UDRP not be initiated at this time”. The Report states that “after carefully evaluating the issues and concerns expressed by the ICANN community regarding the UDRP, Staff has concluded that many relate to process issues associated with the implementation of the UDRP, rather than the language of the policy itself”. This is partly true – indeed the majority of the issues identified have to do with the procedural aspects of the mechanism, but that doesn’t mean that these cannot be used as a justification for a review. At the same time though, the language issues of the UDRP – even the few ones if you wish – are very important and extremely necessary for the healthy existence and continuance of the UDRP (e.g. the lack of clear fair use provision is a language issue that needs to be addressed. Actually, the UDRP is one of the few such policies that has not made room for such language). Similarly, the argument that not many UDRP decisions have reached courts should not be used as a justification against its review. Let’s not forget that traditional trademark litigation is associated with huge costs. Nowadays, registering a domain name costs as little as $10 – how many registrants who own non-commercial domain names are willing to engage in lengthy and very expensive trademark litigation? Needless to say that in the majority of the court cases, the UDRP is not acknowledged as a system able to produce conclusions worthy of court consideration (see, for example, Parisi v. Netlearning, Inc., the Barcelona.com court cases, and Sallen v. Corinthians Licenciamentos Ltd.)
I have always advocated, and will continue to advocate, for a review of the UDRP. It is not only reasonable but necessary. The UDRP is more than ten years old. It started as a system that was meant to address the issue of cybersquatting and abusive domain name registrations and has expanded to the extent of addressing almost every contentious issue of trademark law in the online environment. That makes the UDRP some sort of an international trademark law statute, which has not been legitimised through the channels of public international law. And, this is not necessarily a bad thing, as long as we make sure that UDRP is a balanced system, respects equally both conflicting rights and their owners and is adjusted to take into consideration the changing use and purpose of domain names. At the very minimum, the UDRP should recognise domain names as articles of innovation, creativity, entrepreneurship and new business models; it also should recognise the limitations of trademark law, its boundaries and doctrines as well as its fundamental principles concerning the nexus between commercial and non-commercial speech. These are not just decorative adjustments that we can live without; these constitute essential components contributing to the legitimacy and health of the UDRP.
In my book, ‘The Current State of Domain Name Regulation: domain names as second-class citizens in a mark-dominated world’, I have identified some issues within the UDRP that contribute to its procedural unfairness. Here is a very quick breakdown:
· The UDRP fails to account for a process that consists of checks and balances and is not consistent with due process;
· The UDRP does not provide incentives, equal for both parties;
· The UDRP promotes forum shopping;
· The panellists associated with the UDRP have mainly a trademark law background;
· The number of default cases is worryingly high;
· The democratic fractions of the UDRP are weak and incapable to resist trademark penetration;
· The UDRP makes arbitrary use of precedent.
Similarly, the UDRP also promotes an inconsistent system, despite the fact that is meant to be uniform.
· The UDRP is based upon the illogical conclusion that all domain name registrations are potentially abusive and harmful and, occasionally, without any distinction or assessment between actual harm and the likelihood of such harm, it has normatively evolved into an inconsistent paradigm;
· The substantive provisions of the UDRP (paragraph 4a) are at best etymologically obscure;
· The bad faith element is open to wide and discretionary interpretations;
· There is no authority responsible for the decisions (good or bad) that come out of UDRP panels.
Given the fact that there is such speculation (more of a certainty for some, like myself) concerning the substantive and procedural deficiencies of the UDRP, many of these issues could have been addressed via a review process. At the same time, new additions in the UDRP could make this mechanism more efficient, more pragmatic and healthier; here are some recommending ideas:
· The UDRP could introduce a statute of limitations for domain name disputes, disallowing trademark owners from initiating complaints against gTLDs that have been registered more than one year previously;
· The UDRP could introduce a ‘Random Centre Generation’ system, so as to eliminate issues of forum shopping;
· The UDRP should re-evaluate the scope of the bad faith element;
· The UDRP should discourage panels from making use of precedent (at least under the current function of the UDRP);
· The UDRP should clarify and elucidate on the benchmarks domain name registrants would have to meet in order to convincingly demonstrate their rights and legitimate interests in a domain name;
· The UDRP should incorporate clear safe harbours, following other similar dispute resolution policies, such as NOMINETs’s or the URS;
· The UDRP should make room for an internal appeals process, which would cure much of the UDRP’s inconsistency, and correct bad decisions;
· The UDRP should insert a three-member blanket rule across all disputes;
· The UDRP should insert strict and specific penalties against trademark owners engaging in Reverse Domain Name Hijacking and trademark bullying.
· The UDRP should provide registrants with the possibility of initiating a UDRP dispute.
These are just some of the features that, if incorporated or – at the very minimum addressed – will assist in creating a system that is procedurally and substantively more fair and balanced. Let’s not forget that, contrary to what we now accept, back in 1999, the UDRP was not a consensus document. It was a policy, created by the trademark community, which, at the time, was given the right to design a mechanism for addressing cybersquatting; I don’t like placing bets personally, but I would bet that, in its current form and design and with the knowledge we now have, the UDRP would face strong opposition from the community, SMEs, entrepreneurs and innovators. And, let’s not kid ourselves: the UDRP was and is subject to trademark politics – a system that is initiated by the trademark community, is run by the trademark community and its future depends on the trademark community can only be based on trademark politics.
Before I close this blog post, I have to make one thing clear – I, and all the critics of the UDRP, are not against the concept of having the UDRP or against the protection and securitisation of trademarks both online and offline. Trademarks have to be protected against such issues as cybersquatting and the UDRP constitutes a vehicle towards achieving this goal. However, any protection of trademarks should not prohibit us from contemplating those provisions that are built around and within trademark law and ensure its adherence to concepts of legality and legitimacy. I am referring to issues of fair use, consumer protection and choice (the one based on allowing consumers the choice to determine whether they are confused and not the one directed by what the trademark community considers as confusion), freedom of speech and competition. The UDRP is not any system. Having spent the past ten years evolving and learning from its own processes and the cases that have appeared before its panels, the UDRP is a mechanism that can truly be inclusive. And, I don’t mean here to devalue courts and their procedures. But, the fact of the matter is that the UDRP is cheap, which makes it affordable for everyone, and it is fast, which ensures that in a fast-paced economic environment, like the Internet, is able to provide quick answers.
So, for better or worse, we are stuck with the UDRP. And, because we have to live with it, we also need to make sure that it is structured in such a way as to provide balance, fairness and due process. I am not sure we fully appreciate the power and strength of the UDRP and the implications this power has upon the commercial and non-commercial Internet. I am not sure we understand the limitations of the UDRP, the fact that this dispute resolution mechanism was never meant to replace the traditional strands of trademark law or to create new legal rules that will apply in the online environment. Here we are then, stuck with an amorphous system of rules that produces inconsistent decisions, a system of rules that institutionally does not adhere to any of the legitimate archetypes, be it arbitration or a ministerial system and one that has not followed any of the existing international law processes, despite the fact that its behaviour and status demonstrate signs similar to international law making.
Both at the UDRP Webinar and the ICANN staff report, it appears that one of the main fears against initiating a UDRP review seems to concern the fragility of the UDRP and the possibility of the UDRP collapsing if we proceed to its review. This is an artificial fear. We should really consider the possibility of how the UDRP might collapse as a system if it is not reviewed.
Leaders of ICANN NonCommercial Users Constituency write Sen Leahy about harmful impact of COICA Internet censorship bill
Senator Patrick Leahy
Chairman, US Senate Judiciary Committee
November 17, 2010
Dear Senator Leahy and Members of the US Senate Judiciary Committee,
We know that you are advocates for freedom of speech around the world, and supporters of a free and open Internet. So groups around the world are writing to you with the deepest of concerns regarding a bill you have introduced, S.3804, Combating Online Infringement and Counterfeits Act. The undersigned global public interest groups, all of whom are active in the ICANN Generic Names Supporting Organization, urge you to delay passage of the Bill pending consideration of the following international concerns.
We believe that COICA will pose challenges and create problems not only within the United States but also at an international level. There is no doubt that copyright infringement and the sale of counterfeit goods constitute a major challenge on the Internet. The promotion of fake goods, the availability of illegal, and often dangerous, pharmaceutical products and the use of the Internet to infringe copyrighted material place in danger not only users, businesses and intellectual property owners but also undermine the Internet as a social and commercial space. This, however, does not excuse the implementation and enforcement of national legislation that seeks to impose its rules extra-territorially and pave the way for the creation of a dangerous precedent.
We believe that S. 3804 hurts freedom of speech globally, sets a precedent for absence of due process around the world and, last but not least, sets a roadmap for all governments to seize control of speech and limit Internet freedoms, just as we are opening up new Top-Level Domain Names.
A. The Impact upon international Registrants and Free Speech
S. 3804 fails to bargain for due process and freedom of speech. On many occasions, the United States’ approaches to freedom of expression and due process have provided guidance to the international community regarding their ability to strike a balance between commercial interests and constitutional rights. This is, in particular, evident within intellectual property laws where free speech and fair use provisions have been ‘internalized’ within copyright and trademark statutes, providing safeguards against unfair and abusive intellectual property claims. For example, copyright’s ‘fair use’ doctrine contains built-in First Amendment accommodations”.
Unfortunately, S. 3804 fails dramatically to address these intrinsic and quintessential free speech concerns. Depending on whether jurisdiction can be sustained, the Bill suggests an indiscriminate takedown or blocking of domain names that facilitate copyright infringement without paying regard to potentially protected content. The Bill does not allow a substantive evaluation of the content of the domain name in an effort to distinguish protected from unprotected speech. This will have a severe impact upon the legitimate rights of users and, more importantly, will ‘upset’ the existing legal balance between free speech and intellectual property rights - a balance that is recognized and supported by judicial opinion and reasoning.
B. Imposition of US law globally
Within the context of international law, the only instance that could justify the application of any national law and its imposition on foreign conduct is the jurisdiction to prescribe. As classically defined, jurisdiction to prescribe refers to the manner in which the international community makes “its laws applicable to the activities, relations, or status of persons, or the interests of persons in things […]”.
At the outset, it appears that S. 3804 provisions on domain name takedowns and domain name blocking is in line with the ‘nationality principle’ and the ‘effect principle’ respectively. However and especially in relation to the ‘effect principle’ the situation is highly controversial. As one expert wrote, “once we move out of the sphere of direct physical consequences, however, to employ the formula of “effects” is to enter upon a very slippery slope; for here the effects within the territory may be no more than an element of alleged consequential damage which may be more or less remote […]. To extent the notion of effects, without qualification, from the simple cases of direct physical injury to cases such as defamation, sedition and the like is to introduce a dangerous ambiguity into the basis of the doctrine. If indeed it were permissible to find objective territorial jurisdiction upon the territoriality of more or less remote repercussions of an act wholly performed in another territory, then there were virtually no limits to a State’s territorial jurisdiction”.
In today’s global Internet economy, the ‘effect principles’ permits almost limitless legislative jurisdiction with S. 3804 being a true manifestation of this. The Bill also sends a dangerous message to the rest of the world as it sets a rather treacherous precedent. Nothing can stop other sovereign nations from proceeding to similar legislation and use the ‘effects principle’ in an effort to either impose their own interests or prevent the imposition of American law within their territory. A scenario like this will create many new legal conflicts that could undermine the value of the Internet as a global medium.
C. The Impact of the Bill to the Internet
Last but not least, in its current form this Bill can have a severe impact upon the Internet’s global governance. Given the considerable attempts to moderate the United States’ overall authority over the Domain Name System, S. 3804 reintroduces the debate on the potentially abusive role of the United States Government upon the DNS.
Over the past few years, Internet Governance participants have tried hard to justify the relationship between the US Government and the DNS as one based on issues of practicality rather on abuse. In this context, it has been suggested that the US control over the DNS should be seen by the international community as contributing to the security, stability and evolution of the DNS and not as a way through which the US Government seeks to impose its will on the Internet.
It is important for the US to be seen as protecting the global DNS and not as taking advantage of it to pursue narrow national interests. Unfortunately, S. 3804 suggests the willingness of Congress to exploit the DNS to its advantage, an issue which can have detrimental effects upon the efforts of the international community to promote a global and inclusive Internet.
Dr. Konstantinos Komaitis
Chairman-Elect of ICANN's Noncommercial Users Constituency,
University of Strathclyde, UK
Professor Milton Mueller,
Internet Governance Project and Founding Member of ICANN’s Noncommercial Users Constituency
Robin Gross, Esq.
Chairman of ICANN's Noncommercial Users Constituency
Professor Andrew A. Adams
Professor of Information Ethics, Meiji University
ICANN Generic Names Supporting Organization Councillor
Kim G. von Arx
Member of ICANN’s Noncommercial Users Constituency
Assistant Professor of Communication Studies, College of Mount St. Joseph, Member of Noncommercial Users Constituency
Internet Governance Project and Executive Committee Member, ICANN's Noncommercial User Constituency
Africa Representative, ICANN's NCUC – Executive Committee
Chairman, ICT Consumers Association of Kenya
Manager of International Parents network (http://www.internationalparents.net)
Member of ICANN’s Noncommercial Users Constituency,
Aix en Provence, France
 Eldred v. Ashcroft, 537 U.S. 186, 219-21 (2003)
 Freecycle Network, Inc. V. Oey, 505 F. 3d. 898 (9th Cir.2007); Twin Peaks Prods. Inc. V. Publ’ns Int’l Ltd, 996 F. 2d. 1366 (2nd Cir. 1993)
 Restatement (Third) of Foreign Relations Law of the Untied States, 101 cmt. E, 402 (1986)
 The Restatement of Foreign Relations Law in the U.S. identifies two potential situations where jurisdiction to prescribe might be apposite – the ‘effect principle’ and the ‘nationality principle’. Under the ‘effect principle’ extraterritorial exercise of US law is allowed if the conduct abroad influences substantially trade in the US. Under the ‘nationality principle’, jurisdiction is permitted when the activities and interests of foreign nationals have an impact upon the activities and interests of US citizens. These two principles are internationally recognised and under international law all countries have them at their disposal.
 Jennings, Extraterritorial Jurisdiction and the United States Antitrust Laws,  Brit. Y.B. Int’l L. 146, p.159
The amended version of Senate Bill S.3804, released in response to global criticism on the Bill's effect, continues to pose serious dangers in the freedom of expression on the Internet. The amended version of S. 3804 (as it is also known) sees the removal of the original black listing of infringing domain names. This amendment is certainly welcoming, but the Bill continues to be far from perfect. Two issues are of imminent importance: first, the imposition of US law to the rest of the world through the 'abuse' of the DNS and, second, the threats to freedom of expression, which are yet to be addressed through this Bill.
In a previous post, I mentioned how the Bill (in its original form) will threaten freedom of speech and the problems with US Congress using the in rem jurisdiction - a device that has already manifested its problems within the Anticybersquatting Consumer Protection Act (ACPA). Ideally, I would like to see this Bill getting rejecting; but, we are far from ideal at this stage. The following constitute some proposals/comments that I see relevant and can potentially assist in making this Bill more equitable, fair and in line with due process.
Here is a breakdown under three prongs: scope, due process and remedies.
Purpose: the Bill seeks to takedown, suspend or block those domain names, dedicated to infringing activities.
General thoughts: Senate bill S. 3804 is overly expansive and goes a step beyond other regulatory attempts around the world seeking to address the same issue (counterfeit goods and copyright infringement). The difference between this Bill and other regulatory attempts is both one of degree and substance. S. 3804 attempts, on the one hand, to regulate behaviour extra-territorially and, on the other, fails to take into consideration the ‘internal’ provisions of fair use and free speech/freedom of expression within U.S. copyright and trademark law.
In both France and the United Kingdom, for instance, similar concerns have been addressed through the passage of laws, known as the ‘3 strikes copyright laws’. Despite the fact that both these pieces of legislation have been controversial and have been hastily passed without debate or consultation, still they only address issues of national interests. On the contrary, S. 3804 seeks to regulate online behaviour outside the United States and, by doing so it will be setting a very dangerous precedent to the rest of the world. COICA is taking advantage of the US’s control over the Domain Name System (DNS) and, despite the systematic efforts of the international community over the past few years to the contrary, it clearly demonstrates that the US still claims ownership over the DNS. The DNS belongs to all Internet users; it belongs to the Internet.
Issues with the Bill:
Ø Sec. 2, (a) (2)(A)(i) – it talks about the entire title 17 (Copyright provisions) – this is way too broad, with no explicit mention to the copyright’s provisions on fair use or free speech or freedom of expression. This section needs to eliminated. What S. 3804 is telling us is that prior to any notice to the registrant and prior to any response, the domain name will be taken down. There is no scope within this section for any political speech or any other form of free speech to proliferate.
Ø According to A & M Records, Inc. vs. Napster, Inc., 239 F.3d 1004, 1013 (Ninth Cir. 2001), the copyright holder must prove that s/he owns the infringed copyright and the accused infringer violated one [emphasis added] of the copyright’s exclusive rights. S. 3804 does not make such a distinction. By taking down or blocking the whole domain name with its full content, COICA will potentially be removing protected speech. There is no provision within section 3804 that considers the possibility that the site might contain speech that falls within the freedom of speech parameters. In essence, S. 3804 re-interprets the boundaries and scope of traditional copyright law as well as eliminating fair use and free speech defenses.
Is this, the DMCA on steroids?
B. In Rem –
1. This whole section is far too broad. It is much wider than the in rem provision within ACPA (in ACPA in rem is used when all other jurisdictional options have been exhausted).
According to ACPA:
(2)(A) The owner of a mark may file an in rem civil action against a domain name in the judicial district in which the domain name registrar, domain name registry, or other domain name authority that registered or assigned the domain name is located if--
(i) the domain name violates any right of the owner of a mark registered in the Patent and Trademark Office, or protected under subsection (a) or (c) of this section; and
(ii) the court finds that the owner--
(I) is not able to obtain in personam jurisdiction over a person who would have been a defendant in a civil action under paragraph (1); or
(II) through due diligence was not able to find a person who would have been a defendant in a civil action under paragraph (1) by--
(aa) sending a notice of the alleged violation and intent to proceed under this paragraph to the registrant of the domain name at the postal and e-mail address provided by the registrant to the registrar; and
(bb) publishing notice of the action as the court may direct promptly after filing the action.
2. “District of Columbia” – why this choice of forum? Within ACPA, situs is clearly defined and certain criteria need to apply: “In an in rem action under this paragraph, a domain name shall be deemed to have its situs in the judicial district in which--
(i) the domain name registrar, registry, or other domain name authority that registered or assigned the domain name is located; or
(ii) documents sufficient to establish control and authority regarding the disposition of the registration and use of the domain name are deposited with the court.”
This provision facilitates to the creation of an international tribunal within the United States, allowed to adjudicate the rights of foreign registrants.
B. DUE PROCESS
1. “…in which the domain name registrar or domain name registry for at least 1 such domain name is located …”: this part needs to be removed. It provides for an unprecedented ‘jurisdictional discretion’ allowing the removal of all domain names affiliated with one registrant – and is technological unfeasible. Is our reading here correct: can the in rem jurisdiction over one domain name of one foreign registrant really be extended to all domain names of that registrant? How is a registrar to handle such a court order to domain names over which they have no contractual relation or responsibility? A registry?. There is no justification for this and it is totally against due process and justice.
2. Section (c) (1) (B) (i and ii) – the Registrant is not provided with the opportunity of a prompt response. COICA only allows the registrant to react “after the action is filed” which does not serve due process.
3. Section 3 – required actions by AG: This warrants expansion as it fails to consider the Registrants and the individual users. More precisely:
a. The Attorney General (AG) shall also publish procedures developed in consultation with the International and National Registrant Community and with the public.
b. The AG shall also provide guidelines to registrants about what safe harbor and protection mechanisms are in place.
c. The AG shall also provide guidance to registrants concerning their fair use, free speech and freedom of expression rights and ways in which they can legitimately, fully and timely respond to the accusations against their domain names, webpages and speech.
d. The AG shall also authorise the creation of entities that seek to support and advise registrants. (A similar concept exists within the European Union for consumers. Consumer protection regional offices exist throughout the countries of the EU).
4. Situs: Section (2) (d) (2) – Domains for which the Registry or Registrar is not located domestically: This whole section sounds as if the US is imposing its laws unilaterally around the world and the international registrant community, setting a very bad precedent. The language is so broad that in any given situation, section 2(d)(2)(A)(i) and (ii) will apply. The US is claiming ownership upon all domain name registrations.
5. Publication of Orders: Section (2)(f) does not provide the Registrant with the opportunity of a response. The Registrant should be allowed to respond prior to publication of the order.
1. Section 2(a)(2)(A)(i) and (ii) does not include a fair use, free speech provision. A number (iii) should be added along the following lines: (iii) the Attorney General, before issuing the order, shall exempt from consideration the internalised fair use and freedom of speech provisions of copyright and trademark law.
2. Service of Court Order:
a. Section 2(e)(2)(B)(i) - This is a blocking provision. Considering the implications and effects of blocking, this provision opens a Pandora’s box. It paves the way for the possible and arbitrary blocking of other websites and the enforcement of other content restrictions.
b. Section (2)(e)(2)(B)(i) currently reads: “a service provider, as that term is defined in section 512(k)(1) of title 17, United States Code, or any other operator of a nonauthoritative [emphasis added] domain name system server …”. What does ‘nonauthoritative’ mean? It is technically ambiguous. The definitions of a ‘service provider’ and ‘nonauthoritative domain name system server’ should be clear and unambiguous.
3. Communication with users: Section (2)(e)(3): It provides wide discretion at the expense of users. Communication to users should be prompt and clear.
4. Immunity. Section (2)(e)(5)(A) is too broad. Under this section the entities doing the blocking and takedowns are completely immune. This type of absolute immunity can be twisted and abused by ISP, for example, which will proceed in controlling Internet content.
5. Voluntary Actions. Section (2)(e)(5)(A) gives carte blance to providers to control determine which content is permissible.
6. Section on Modification or Vacation of Orders: the existing Defense clauses in this section are limited and should be expanded to include fair use, free speech and freedom of speech as exist within copyright and trademark statutes.
Discussion on In Rem Jurisdictional Provision
There are 3 types:
Ø true in rem (property rights constitute the subject of the dispute
Ø quasi in rem I (property rights directly relate to a specific individual
Ø quasi in rem II (property rights are related to a specific person, yet the underlying claim is unrelated to the res that justifies jurisdiction.
So, in rem is an already wide provision. COICA is making use of all these types of in rem.
1. True in Rem: COICA will apply it in cases where the domain names are registered and hosted domestically.
2. Quasi in rem I: COICA will apply it when the registrant is a US citizen
3. Quasi in rem II: this is the provision to catch Registrants and speech located outside the US. This is also the most problematic. For quasi in rem II to exist, one needs to prove that some minimum contacts exist (International Shoe and Shaffer). The existence of minimum contacts and the requirements is not happening in this Bill.
Traditionally, this requirement meant that contacts should be consistent, systematic and continuous. This sets of requirements is anathema to the new in rem jurisdiction defined in this Bill for domain names. ACPA started the slippery slope, transferring domain names arbitrarily (Cable News Network vs. cnnews.com). Applying the in rem in ACPA has been proven problematic.
The traditional minimum contacts requirement standard cannot apply in the case of domain names. In order for the minimum contacts requirement to make sense in domain names we need to re-evaluate the criteria. For example, we have to determine that the standard is not only minimum contacts but also that these contacts have to be perpetual and substantial and clearly directed to the forum, claiming jurisdiction.
Views are my own and my own only!