[process2-comments] RFC-1

 Name: Chris McDonald, Sr. Organization: McDonald and Assoc. Position: Attorney - Trademark and Copyright Re ICANN's National Arbitration Forum's Domain Dispute Resolution Process: A summer intern in our office undertook the defense of a small business client's domain registration in a dispute before the ICANN Arbitration Forum ('the Forum'). A complainant who had used the text string registered by our client as a trademark in an unrelated industry submitted 700 dollars to ICANN and set in motion a process that threatened to strip our client of her valuable business asset in 21 days. Our client had made no offer to sell the domain to the complainant, yet found herself facing our legal bills as well as a 95 percent chance of failure as an ICANN 'defendant.' Having read the bulk of the arbitration decisions as background, it was clear to us that the Forum was aggressively responding to the corporate and congressional demand to strip specious registrations ('SandalsResortHotels.com,' and similar). However, due to this outside pressure, or due to the fact that one finds that the decisions are not written by career practitioners of trademark law, but in large part by retirees from non-TM fields, the decisions showed a routinely cursory address of the rights of the registrants. In the overwhelming majority of the decisions, one will find no discussion of the TM law relevant to the rights of the domain holder whatsoever. Two years ago, one regularly read stories of small businesses made to pay 3000 dollars to own the intuitive domain scooped up the year before by an exploitive teenager. (We learn recently that the WIPO produces much of the publicity on such cases of abuse.) However, 'good cases make bad laws.' There are millions of registered federal marks in the US alone, and there is the expanse of global commerce to take into account. ICANN must not be the practitioner of uninformed endruns around the foundation of trademark law--the actual consumer confusion of two commercial enterprises. In our intellectual property practice, one finds english words supporting over 500 federal registrations (in the US alone). Further, hundreds of businesses operate in the US unregistered, in the same trades, under the same names, many just a small geographical distance apart. The Forum has a responsibility to operate in the knowledge that innumerable parties will, or will soon, use unusual as well as common text strings in innumerable trades. The Forum cannot hope to broach the intricacies of TM law in a one-page decision. Trademarks protect the labor and financial investments of mark builders, but the law is in place to serve economic growth by providing incentives to these mark builders. Trademark thus must strike a balance with economic growth or it fails its purpose. Clearly, the Forum would not presume to strip the domain registrations of 499 of 500 mark holders. Nor would they allege a right to close down the thousand more businesses operating under such a name without a federal trademark registration. Nor would they claim the right to forbid any company to come into being after November 1999 (enactment date of the Anti-Cybersquatting Consumer Protection Act, 'the ACPA'). Nonetheless, the bulk of the Forum's decisions drive towards such myopic, and US-centric, ends. It is serious error, with effects that extend beyond the asset-stripping of a few hundred individuals. It affects the global economy, as well as the standard of living in communities not supported by AOL or Amazon, but! supported by small business. It is clear that the Forum desperately needs a 'bright line rule,' particularly given the limited review the arbitration process provides. The scope of the Forum's power should be strictly limited as a constitutional protection. This is necessary given the lack of legal representation common to the defending individuals, and given the 'streamlined nature' of what must be respected as a constitutionally-required fair hearing. I believe that those attorneys and legal scholars familiar with this issue would align themselves with the following opinion: Where a complainant cannot give evidence that a domain holder has knowingly offered to sell a domain to a trademark owner who has made his or her status as a trademark owner known to that domain holder, the arbitration forum should find a failure to present a prima facie case and dismiss the dispute in deference to the courts. As it stands, the vast majority of the Forum's decisions favor the complainant. There must be more protection for the domain holder who simply uses the same english word, or wishes to use it, or even wishes to let it appreciate with intent to sell it to a party who has not built any mark rights in that word. In the July 2000 case of 'Corinthians.com,' a WIPO judge and ICANN used the Forum's procedures to strip the domain of an operating religious site in favor of a commercial soccer team. The domain holder had made no attempt or offer to sell the domain to the soccer team. The small enterprise will likely fold rather than fund a costly civil suit to regain their location. This is not an unusual decision. To those unfamiliar with the Forum's record, it is yet another wakeup call and evidence that ICANN's process is doing harm that cannot be ignored. The ACPA has been publicized, it more than serves its purpose, and the abusive registrations are in check. It is time for accountability and restraint on the part of the Forum. I submit that in light of the diminished abuse effected by the ACPA, the Forum should put in place the requirement that there be 'proof of an effort to knowingly sell the domain to a mark holder' as an element of a prima facie case. This bright-line rule cuts the problematic registrants off at the heels and fully answers the public need. One must remember, this showing of an attempt to profit from the efforts of the TM holder is the sole justification for the controversial stretch of TM law by the Anti-Cybersquatting Consumer Protection Act (ACPA). A review of the latest posted decisions shows that the Forum seems to be maturing in this direction. Nonetheless, departures from a bright-line rule result in unfairness given that the Forum fails to offer the informed protections of a court. Forum panelists routinely strip registrations based solely on the fact that the domain holder possesses numerous domains. This is an unsophisticated presumption in favor of the complainant given that it has been unwavering corporate marketing practice for several years now to amass domains. Internet companies survive on web visits to these locations, and many companies own well over a hundred domain names--About.com alone holds over 4,000. The Forum in its work to date has done many TM holders a just service. Nonetheless, the Lanham Act would have fully protected the rights and labors of a large percentage of those mark holders against any confusing trade use of the domains at issue. Regrettably, many of the domains stripped by the Forum would have been used or sold to build new and unrelated businesses. These business locations have unfortunately been 'monopolized.' A domain registrant without legal funding can be divested of a property worth more than their home by a one-page, bold-type, unsigned decision from a tax court retiree. This is inappropriate. The losses borne by these domain registrants are startling given the continuing exponential growth in the value of brandable .com domain names. Prior to the enactment of the ACPA, the threat of an onslaught of domain disputes in US courts may have legitimized the expeditious stripping of registrations by Network Solutions and ICANN. That threat is gone and the crisis has passed. With the profit motive removed by the ACPA, domain abuses will continue to dwindle. There are grey area infringement cases that would never get past a motion for summary dismissal in court, but these complainants leave ICANN's Forum with a million-dollar asset in hand. Their attorneys know by now that legal counsel is rarely an option for domain holders. Trademark law has survived radio and television and a hundred years of social change. The consumer confusion issue which is the core rubric of the law will readily weather the addition of yet another marketing medium, the internet. Where there is no proof of consumer confusion, there is no infringement under the Lanham Act, and where there is no proof of an attempted sale to a mark holder, there is no infringement under the ACPA. Any grey areas belong before the courts, not before an underfunded panel of moonlighting retirees. There are millions of dollars in assets at stake in these cases. Sadly, the domain holders may not be aware of the extent of their losses until long after their rights are extinguished. The novelty of the law and the silence of the domain registrants does not discharge the constitutional and ethical responsibilities before the ICANN Forum. There is no legitimate reason for ICANN to abridge the Constitution and perform endruns on the Lanham Act merely to enable a paying complainant to subsume what is effectively just one additional billboard, one more contact number. A bright-line rule demanding a 'knowing offer to sell to a mark holder' as an element of a prima facie case will give web publishers some protection against the proverbial 'bigger lawyer.'