Icann And U.S. Congress Tackle Internet Domain Name Abuses

Icann And U.S. Congress Tackle Internet Domain Name Abuses

Both ICANN (Internet Corporation for Assigned Names and Numbers), the agency now responsible for assignment of Internet domain names, and the U.S. Congress, which aims to have laws in place to regulate and control Internet domain name abuses, have been hard at work in their respective areas over the past several months working out details to prevent Internet domain name abuses that have created havoc – if not an Internet plague, ever since the Internet became available to personal and commercial users, and especially the development of the Internet’s World Wide Web.

“Cybersquatting” “Cyberpiracy” and

“Hijacking”

“Cybersquatting” refers to those who have registered one or many domain names in the hope that they will become a salable commodity (and indeed, in many such situations, they have reaped up to hundreds of thousands of dollars for a wanted name). … “Cyberpiracy” or “Hijacking” is basically the same practice, except that the registrant has used a well-known brand name, personal name (i.e. baseball player, movie star, etc.), or trademark with the purpose of holding the owner of the genuine brand, name, or trademark hostage unless they buy the name from them, or are using the domain name in hopes of confusing the Internet user with the same name product or service. … In many instances (such as McDonald’s), the domain name has been assigned to a disgruntled customer or person who has a gripe about the real business, name, or organization. (Even presidential election candidates have been vulnerable.) Historically, the problem with assignment of Internet domain names is that it has been “first come, first served” without regard to the real world. … Help is on the way.

ICANN Uniform Dispute Resolution Policy (UDRP)

At its recent Santiago, Chile meeting in August, ICANN adopted a Uniform Dispute Resolution Policy (UDRP) and directed ICANN’s president to convene a small drafting group to develop implementation language in a few specific areas, including the definition of “cybersquatting” and “reverse domain name hijacking”. The results of the group’s work was to be posted by September 20, and will be posted on ICANN’s Web site (http://www.icann.org) for public comment.

The ICANN dispute resolution policy is similar to that envisioned in the U.S. Government’s White Paper on “Management of Internet Names and Addresses”, which covers trademark/domain names disputes. Under the new policy, ICANN will take no action until they receive instructions from the domain name holder or an order of a court, arbitrator, or other neutral decision maker deciding the parties’s dispute.

However, there is an exception in the cases of domain names that have been registered that have been shown to have been registered in abusive attempts to profit from another’s trademark which allows for the complaining party to invoke a special administrative procedure to resolve the dispute. While most of the administrative procedure will be performed online, it is designed to take less than 45 days, and cost about $1,000 in fees paid to the entities providing neutral persons from panels selected for that purpose.

In 1997 and 1998, the U.S. Government in its Green Paper and White Paper on privatization of the Internet domain name system, received many comments concerning disputes among holders of domain names and holders of trademarks. The U.S. government invited WIPO (World Intellectual Property Organization) to conduct a study and make recommendations to ICANN. The study was completed after a 10-month process of public consultation, and WIPO presented its dispute policy recommendations to ICANN on April 30, 1999.

Not everyone is happy with ICANN’s formula for its Uniform Dispute Resolution Policy (UDRP). Among those most clearly critical is the Electronic Frontier Foundation (EFF), that contends that ICANN improperly is creating procedures for protecting trademark holders in the domain naming system while specifically excluding from those procedures disputes involving all other rights, with ICANN believing that trademark holder’s rights are superior to those of the public-at-large. EFF recommends “Let trademark courts resolve trademark disputes. “EFF also supports the addition of enough generic top level domains so that multiple people and companies can have the same name if they want it. EFF also points out that under trademark law, more than one entity can hold a trademark on the same word, name, or symbol provided that it is used in completely different business categories”. EFF also addresses the issues of “reverse domain name hijacking”. In addition, EFF also is concerned that under the current makeup of ICANN, commercial interests are disproportionately represented on the ICANN Council. The full text of EFF’s comments and recommendations to ICANN are available at: http://www.eff.org/icann_letter_82499.html and http://www.eff.org/icann_letter_81099.html

Anticybersquatting Consumer Protection Act

The U.S. Senate has recently passed [August 5, 1999] the Anticybersquatting Consumer Protection Act [S. 1225] which was introduced in the Senate earlier this summer. The bill will be introduced into the U.S. House soon. (Further progress on the bill can be obtained via the THOMAS Web site at http://thomas.loc.gov/home/thomas2.html)

Under the new law, if passed by Congress, it would define “The registration, trafficking in, or use of a domain name that is identical or confusingly similar to a trademark or service mark of another that is distinctive at the time of the registration of the domain name, or dilutive of a famous trademark or service mark of another that is famous at the time of the registration of the domain name, without regard to the goods or services of the parties, with the bad-faith intent to profit from the goodwill of another’s mark (commonly referred to as “cyberpiracy” and “cybersquatting”).

The new law would offer new legal remedies to owners of registered marks and provide for forfeiture or cancellation of the domain name under civil court action. Additionally, the new law would offer the plaintiff to elect the trial courts to recover, instead of actual damages and profits, statutory damages of not less than $1,000 and not more than $100,000 per domain name.

The new law [Act] will apply to all Internet domain names registered before, on, or after the Act is passed by Congress.

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