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The ICANN Uniform Domain Name Dispute Resolution Policy The UDRP in Perspective after Nearly Two Years of History

by Gervaise Davis

When Palo Alto, California, lawyer M. Scott Donahey decided the first ICANN Uniform Domain Name Dispute Policy decision, World Wrestling Federation Entertainment, Inc. v Michael Bosman, Case No. D99-0001, on 14 January 2000, few could have predicted that by mid-August 2001 there would be 4,241 ICANN proceedings-pending or decided-involving 7,432 domain names.1 Even fewer could have predicted that there would be 1,387,529,000 Web pages and 36,079,768 registered domain names, with 22,373,097 .com domains predominating.2 Where things will go now that there are another seven top-level domains (TLDs) authorized and starting up over the next six months is even less predictable.

The unparalleled growth of the Internet has generated a similar explosion in domain name litigation, which uses the unique ICANN UDRP (Uniform Domain Name Dispute Resolution Policy) arbitration process imposed on the Internet industry by the ICANN board in August 1999 and with the start of the first cases in December 1999.3 The Policy and the Rules accompanying it4 were adopted after a long and contentious discussion by industry groups that started on 5 June 1998, when the U.S. Department of Commerce first asked the World Intellectual Property Organization (WIPO) to study the trademark issues involving domain names. Few were satisfied with the Policy and Rules as adopted; they clearly represented a classic compromise that no one wanted. That condition probably still exists, judging from the literature and public comments by lawyers and industry representatives at public forums. Nonetheless, no changes have been made in the UDRP since its adoption, although there are many proposals to do so, and ICANN recently announced an inquiry into how the system is working, with reports on it due in November 2001.

Articles criticizing the process that led up to the adoption and criticizing the Policy and Rules themselves, have appeared with regularity. One of the most vociferous of those critics has been Prof. Milton Mueller of the Syracuse University School of Information, who has published a number of articles-including one in 20005-claiming that the process is unfairly biased in favor of trademark owners. WIPO assistant director Francis Gurry and others at ICANN and at the other resolution providers have defended the process from time to time.

More recently, while this article was in preparation, Prof. Michael Geist of the University of Ottawa Law School published a well-supported article suggesting that the World Intellectual Property Organization (WIPO) and NAF's method of selecting panelists is flawed and that for various reasons, decisions by three-member panels are more likely to favor the domain name owner.6 His study contends that it can be statistically shown that NAF selected only six panelists, for single panels, out of more than 130 persons available, and that it has decided more than 53 percent of all such cases. Significantly, the trademark owner won in 94 percent of those cases. On the other hand, at NAF, three-person panels have resulted in wins for the trademark owner only 52 percent of the time. The cause and possible solutions to this situation are discussed in detail later, as well as in the Geist article.

Genesis of the ICANN Policy

Disputes over the claims of trademark owners to be the exclusive registrant of domain names similar to their trademarks had become a major source of irritation to trademark owners starting in 1995 and particularly after the infamous Toeppen test cases in 1996, when Dennis Toeppen intentionally registered and attempted to sell the domains identical to the trademarks of a number of famous camera and electronics companies.7 Because there was no alternative to litigation in the U.S. federal courts under trademark and unfair competition law, at the time, the process was a long and costly one for trademark owners, with decidedly uncertain outcomes for both sides. Since the trademark laws of the world never contemplated the existence of the Internet and the worldwide use of Internet domain names as source identifiers on the Internet, there was a painfully obvious systemic problem. Because of that the courts and the legal profession had little guidance, and the whole process consisted of a painful and unsatisfactory method of resolving such disputes. The law with respect to domain names and trademarks is still in a state of flux and is decidedly not yet resolved-in spite of many court cases and some legislative efforts at resolution of the issues, such as the so-called anticybersquatting legislation adopted by the U.S. Congress in late 1999.8

I was involved in several of those early federal court domain name cases on behalf of individual or small business domain name registrants. The cases demonstrated both the complexity of the issues and the unfairness of full-blown federal litigation because of the extraordinary discovery and legal expenses involved for the little guy who did not have the resources that large trademark owners do.9 While both domain name owners prevailed in those two cases, the legal costs are often so prohibitive that it is usually not practical for an individual or small business to either defend or bring such federal cases because the legal fees can run in excess of $100,000 in even the simplest of such proceedings. Yet even today, the ICANN UDRP does not permit a domain name owner to bring an ICANN arbitration proceeding on his or her behalf when threatened by a trademark owner. All the domain name owner can do is wait to be sued in an ICANN proceeding or spend tens or hundreds of thousands of dollars filing a declaratory judgment action in federal court to protect the domain name.

Observations of a Participant

In this context, I was asked by the editors of this publication to write a short article chronicling my experiences and observations on the successes and failures of the ICANN UDRP after nearly two years of its operation. The reader should understand that the comments that follow are based solely on one person's fairly extensive experience working under the UDRP both as a panelist for the resolution providers and as an attorney representing both complainants and respondents in a number of such cases. The fact I have handled numerous domain name disputes in federal court and resolved many others in the course of advising clients may also add to that experience-and possibly to biases. The reader should also understand that I normally represent small businesses and individuals and therefore do not approach the issues as a big-company trademark lawyer, as might others. Efforts have been made, however, to take a balanced approach and to be as objective as possible.

Has the UDRP Met Its Objectives?
A qualified yes.

Objectives of the UDRP

Based on reports that accompanied adoption of the UDRP, the fundamental goal of everyone involved was to establish a fairly quick and reasonably inexpensive process whereby trademark owners and domain name registrants could resolve disputes over what were termed "abusive registrations"-those cases in which a trademark owner could readily establish that a domain name had been registered and was being used in "bad faith," to use the terminology of UDRP ¤4(a) (iii). The complaining trademark owner also has to demonstrate that the registrant has no legitimate interest in or right to use the domain name and that the domain name is substantially identical to the trademark of the complainant. "Bad faith" is measured by a series of possible tests, the gist of which is whether the domain name was registered to sell it to the trademark owner, to keep the owner from using it, or in some other manner that raises serious question as to the bona fides of the registrant's intended registration and use. The tests are not exclusive, and evidence in either direction is admissible by declarations either accompanying the complaint under the UDRP or in the response. There is, however, no court hearing with witnesses, and the rules severely limit the amount of written argument that can be presented.

By this standard, an objective observer would have to conclude that overall, the UDRP has accomplished the goal, with some significant exceptions and some glaring problems that remain unresolved. The fact that more than 4,000 cases have been brought and decided in this short time indicates that the objective of prompt decisions has been met. Given the reasonably low filing fees-ranging from $950 to $4,500-the cost of the proceedings also seems to meet the objectives. Those filing fees, however, do not take into consideration the legal fees that the complainant and the respondent incur, which are likely to amount to $25,000 in the aggregate, including investigative and briefing time.

There are problems with the way the system works, which we will discuss, and there are some existing issues that are perhaps irreconcilable given the state of international trademark laws and treaties and the lack of uniform jurisdictional rules in a world of areas separated by thousands of miles, but only by milliseconds on the World Wide Web.10

Listing Some of the Problems

My own experience and observations of the system as a participant lead me to conclude that the UDRP has worked remarkably well, considering the lack of guidance given to the resolution providers in how to conduct the arbitrations, and the lack of any rules on how panel members are to be selected. Furthermore, since the legal systems of at least the common law countries are based on precedent, the lack of precedent has been a serious impediment to consistent decisions under the UDRP. The issues I have with the present UDRP system can be classified into perhaps a list of six overlapping areas of concern, in approximately the following order of importance:

  • Lack of consistency and rules for the selection of panelists among the resolution providers
  • Lack of consistency in decisions from all resolution providers
  • Lack of a practical and timely appeal process under the UDRP
  • Lack of any guidance for dealing with international issues in trademarks, which is more of a future issue
  • Lack of a comprehensive search engine beyond the rudimentary ICANN facility and database
  • An overly detailed need for reciting procedural steps, which clutter the decisions and make them vary in length and detail

Addressing the Areas of Concern
The Selection of Panelists and the Appearance of Bias

Writing both from the perspective of an attorney practicing before ICANN panels and as a panelist on nearly 20 cases, I continue to have a concern, expressed by others, that the lack of consistency in the process by which panels are selected and the arbitrators for a single-person panel are appointed is a major problem that accounts for several weaknesses in the UDRP processes that are discussed later. If nothing else, that inconsistency presents to the very public-which was intended to believe this process was fair-an appearance of impropriety. This inconsistency results from several aspects of the process:

Panelist backgrounds. First, WIPO initially chose to select, as its 180-some panelists for domain disputes, virtually all experienced trademark and intellectual property lawyers, judges, and academics from all over the world. Most of the commercially active nations have representation on the WIPO panel list, with the result that most of the commercial languages are also represented. NAF, on the other hand, has a list that consists almost entirely of retired U.S. judges, many of whom have no experience in intellectual property law. NAF's list is now being gradually expanded, but it is still U.S.-centric, and English-language-centric. This is not to suggest that NAF panelists are not competent or hardworking or good judges-only that the differences in the legal experience and backgrounds of arbitrators may make for demonstrable differences in the legal outcomes of certain fairly technical decisions, as can be shown statistically. Reference to those statistics in the Geist study mentioned earlier indicates that trademark owners prevail slightly more often before the NAF than at WIPO, but that adding panelists from the available lists of all four providers to make up a three-person panel dramatically increases the chance of the domain name owner's prevailing.11 The other two resolution providers have handled so few cases that their selection process probably makes less difference in this context.

Random versus selective appointment of panelists. Second, while none of the Resolution providers will publicly acknowledge it, the single panelist or the presiding panelist is apparently not selected randomly from the list of panel members, as one might expect. Under U.S. law, most judges appointed to sit on cases filed in a court are carefully selected randomly in order to preclude favoritism or the appearance of bias in favor of the plaintiff or defendant. This system also precludes one or more judges from being used predominantly in particular types of cases that would thereby allow that judge to become the only source of decision on such issues.

In fact, as Geist's study shows, counting up the cases handled by WIPO and NAF panels clearly indicates that each has a list of "preferred panelists," who are selected time and again to serve as the presiding panelist and as the sole panelist when the parties do not ask and pay for the three-person panel allowed by the UDRP. Adding panelists costs both parties more. Whether panelists are selected in this manner because of a particular predilection toward trademark owners or because they are "more reliable" is a carefully guarded secret that neither group will discuss. As the Geist study [FN 12] indicates, this has resulted in some NAF and WIPO panelists' being selected hundreds of times as the presiding panelist, and other panelists' never serving or being appointed by the resolution providers even though such panelists are often selected by a party for a three-person panel.12 Worst of all, those panelists have a statistical record in favor of the trademark owner that is as high as 96 percent, while the overall statistic for success is about 82 percent as between the various resolution providers.

As Geist shows, the end result of this process is statistically demonstrable, but even in principle, it does not seem like an unbiased process, and it is, in the author's judgment, not the best way to handle this situation. At the very least, WIPO and NAF should candidly tell the public how panelists are selected and why. One way of resolving the issue would be for ICANN to establish rules that require selection of single or presiding panelists by a rotating list based on the group of panelists who speak the language of the disputing parties. Another solution, recommended by Professor Geist, is to require that the registrar, rather than the resolution provider, appoint the presiding panelist and that the parties each appoint their own panelist. This becomes important when one notes, as does Geist, that before the NAF, the respondent has a 33 percent better chance of prevailing with a three-person panel. Geist's figures indicate that Complainants win 85.4 percent of the time with a single panelist and only 52 percent of the time in three-member panels at NAF.13 The figures show what can only be called a startlingly obvious problem if fairness and consistency are important objectives of the UDRP.

This leads one to ask why the discrepancy in results between single panels and three-person panels. One possible reason is that since resolution providers select the single panelist, they select a single panelist who is most likely to reach a quick and satisfactory result for the complainant. Another possibility is that a single panelist does not have the benefit of the collective judgment of three experienced persons, at least one of whom is likely to have significant experience in trademark and intellectual property law. Geist suggests that there is no real way to tell but that it provides a lesson for respondents: Always pick a three-person panel rather than letting one arbitrator make the decision. Because of observations similar to those of Prof. Geist, this author, out of personal experience in presenting more than 10 cases to NAF and WIPO panels, has consistently made that recommendation to clients and to other lawyers contemplating filing such cases. It would seem to evidence the principle that three heads are better than one-at least if you are the respondent domain name owner.

Inconsistency of Decisions Due to Lack of Guidance and Faulty Selection Procedures

Almost everyone who has sought to make sense of the growing body of ICANN decisions has commented on the incredible lack of consistency between them. For example, there are many cases, for example, that ignore the effect of a mark and the domain's being a generic or descriptive word and therefore not really distinctive enough to give rise to the assumption everyone would know it is a trademark, while others have turned on exactly that point. Similarly, some decisions are so brief and so utterly without explanation of the panelist's reasoning, that there is no way of ascertaining either what the reason for the opinion was or what facts bore on the decision. Whatever the failing of the decision, it is critical that future decisions be more consistent in both form and substance, so that the developing body of law can be used by the public and the legal profession.

One reason for this, from the author's studies of the thousands of decisions already rendered under the UDRP, may simply be the diversity of the panelists and the fact they come from different legal systems and have different perspectives. Given that we are dealing with nearly 300 possible arbitrators as panelists and who are from many countries and many different legal systems, it is perhaps not surprising that many decisions can be shown to be inconsistent with each other. However, clearly more could be done to correct that situation, since, if one looks at the facts, it is clear that even though there are 300 possible judges, in fact perhaps only less than a hundred have actually participated in more than one or two cases. Some arbitrators have served on more than a hundred cases, most of which were decided in favor of the complainant.14 Geist points out that before the NAF, more than 53 percent of the entire caseload has been decided by six panelists. On one hand, such as aggregation of decisions by a few judges would seem likely to provide consistency, but the problem is probably that those who are left to handle only one or two lack the experience needed to be more accurate in what they write-and especially if they did not serve on a three-person panel. Unfortunately, not everyone knows how to write well, and not all lawyers make good judges.

From personal experience, I know that my own view of a case as a panelist can sometimes be changed by the discussion that goes on between the members of the panel, since each brings a different perspective and often from a different country. I have often marveled at the unique way in which the ICANN UDRP has brought lawyers from various countries onto a panel to decide these issues. The world of the Internet has made it possible to have cases like one I was on in Monterey, California, where the presiding panelist was in Australia and the other panelist was in Europe. The benefit of this system of using three panelists is clear to me, and Geist's study makes it even more apparent. However, it is likely that a key reason the decisions are inconsistent is that the panels are given very little guidance in how far they are to go in applying the rules of the UDRP or whether they are "to do equity" and ignore the rules and the law. It is particularly unclear what is to be done when there are parties from different countries, with different laws and questions of constructive notice of marks in use elsewhere. All that the UDRP says is that the panel shall consider the UDRP rules and that "The Panel shall conduct the administrative proceeding in such manner as it considers appropriate in accordance with the Policy and these Rules."15 This is not a great deal of direction, and given the lack of precedent and the unique facts of these cases, it is often difficult to tell what is expected of the panel. Note that there is no personal appearance by the parties, and the pleadings are essentially limited to 10 pages plus what is often a huge pile of exhibits that may or may not add to the panel's understanding of the disputed facts. In the final analysis, many of these cases have to be decided based on the issue of whether the domain name owner acted in good faith in registering and using the domain name. This is often a close call because there is no practical way for the panel to see and observe the witnesses or to question them further.

For this reason, several of the decisions I have participated in, as well as some of my dissents in these cases, were the result of the panel's strong feelings-or my own-that the UDRP was intended as a unique means of resolving only a small class of trademark domain name disputes and that when there were very distinct and irreconcilable differences or substantial issues of law to be resolved, the arbitration system was not intended to deal with those cases. Those cases, in my opinion and that of certain other panelists, belong in the trial courts, where facts and legal issues can be sorted out in a more systematic fashion.16 The ICANN UDRP is not as clear as it should be on this issue, and panelists are divided on whether this is to be the rule. Unfortunately, my position of ruling for a respondent when it is not clear the UDRP was intended to apply to that respondent's case, has probably contributed to the idea that I favor respondents, which I do not. It is simply that although the conduct of a respondent may appear less than upright, it is likely the intention of the UDRP framers that close questions of fact or significant issues of law should not be decided in a summary arbitration proceeding. Such cases are better suited for the federal courts. This does not mean that the respondent would prevail in a court trial, only that the complainant chose the wrong forum to resolve the dispute: the case should have been brought in a court and not before an ICANN panel, which does not have the time or the resources to sort out disputed facts and convoluted legal issues. The UDRP was supposed to deal only with "abusive registrations" and situations in which many questions of law and fact are simply not fairly resolvable under the circumstance.

Obviously, other panelists view the situation differently and may feel it is their obligation to stop things they believe are wrong-regardless of whether they feel the parties have proved their case. For example, Geist cites a case in which the panelist admitted that the complainant had not proved the case under the UDRP rules, yet ordered the name transferred.17 Other cases, especially the earlier ones, have provided little or no explanation of the reasoning or legal basis for the decision. That kind of case is the basis for the argument that if we are to use a single-person-panel decision-making process, there should at least be a three-person-panel review of the decisions available to the parties, since it would force the single-member panelist to state his or her reasons more clearly. It is not in the interest of anyone-either trademark owner or domain name owner-to have decisions that do not clearly state why the parties prevailed or lost. Consistency in the form and substance of the decisions is important, but it is more importance that the public understand why the panelist found for a particular party.

Finally, as noted at the outset, there is a significant area of discrepancy in decisions involving generic or descriptive words used as trademarks, in which the trademark owner claims that it should be entitled per se to the equivalent domain name. The early cases ignored this well-established trademark principle and generally awarded the domain to the trademark owner upon that owner's complaint. Somehow, consideration of general trademark principles needs to be built into the law governing these cases, since the reason that courts and the trademark laws make these exceptions to trademark protection applies with equal force to domain names. Just because there is a trademark on the word ustravelagency, for example, does not mean that other persons cannot use similar domains. Lack of consideration of these principles has resulted in a number of cases that this author feels are inconsistent with trademark law and are simply wrong. How to resolve this beyond creation of an appeals process is not clear.

Lack of an Appeal Process Leads to Inconsistency

The apparent reason the ICANN UDRP system has no appeal process is that this added step might unduly delay the decision-making process and add to the cost and time of a final decision for both parties. The UDRP expressly leaves the appeal from these cases to an action in the appropriate federal court (in the case of the United States and its equivalent in other countries). The UDRP decision-reporting database makes clear that these cases may not be final if the parties elect to take the dispute further in a court. There are, however, no rules on how this is to be done; nor are there any fixed time limits.

This was probably a good decision initially-in order to get the process going-but as M. Scott Donahey and others of like mind have pointed out in thoughtful articles, there really should be some form of summary appeal process within the UDRP, which would help with the problem of lack of consistency of decisions.18 Especially in light of Geist's statistical study showing the drastic difference in outcomes with a three-person panel, one could argue that either all decisions should be made by a three-judge panel from the outset, with no appeal, or there should be an appeals panel, randomly drawn from the different resolution providers. This appeals panel would consist of three arbitrators who could review the decision, with minimal additional briefing by the parties, and render a decision that would either affirm it or send it back with suggestions that the original panel reconsider the decision in light of the comments of the appeal panel.

Careful thought, however, must be given to the composition of the appeals panel, lest it, too, create further biases toward one or the other side of the issues. The emphasis should be on trying to develop consistency in the legal principles behind the cases rather than worrying about disputed factual issues, much as the U.S. Supreme Court is rarely interested in disputed facts, instead concerning itself with resolution of conflicts between the law as developed in the trial and the appellate courts.

Given the large number of UDRP cases already decided and the even larger number sure to come, there is simply no way to work toward more consistency in decisions without some appeal process. ICANN should establish such a procedure and make it applicable to all decisions under the UDRP, but require that the appeal take place within a short period after the decision. There are also issues in regard to the cost and timing of the appeal process. Perhaps one rule might be that the cost of such an appeal be borne by the appealing party regardless of the outcome, just as the single-person panel or three-person panel cost is borne by the complainant unless the respondent is the one asking for a three-person panel. These mechanics, however, are matters that should be resolvable by discussion and reference to other types of arbitration and alternative resolution.

International Trademark Issues: A Looming Problem

To date, the U.S.-centric nature of the Internet has allowed most of the decisions under the UDRP to ignore the fact that the trademark laws of the world are not uniform and that at present there is no such thing as a universal trademark that is valid and enforceable in every country. I have a concern that this situation will not long prevail in a world in which more and more business is done over the Internet between residents of different countries and even different continents. It might seem that consideration of how to deal with this issue is initially beyond the scope of the UDRP and the participants, but it is a future issue that will not go away in the area of domain name disputes. It is something that should be considered, along with the current disputes over international jurisdiction over users of the Internet and Web-site owners.

There are already a number of cases in which the argument is made by the complainant that a resident of one country registering a domain name has an obligation to be aware of trademarks in use in other countries. Some complainants even take the position that everyone, everywhere, is on constructive notice of trademarks in use elsewhere in the world and is therefore presumed to be acting in bad faith when the registering a domain name that conflicts with a trademark in another country. For example, in an early ICANN case involving tonsil.com, a California woman was held accountable for registering this generic word, which is utterly unlikely to ever be a trademark in the United States, yet she was charged by the German panelist with knowledge that a German company making fertilizer products under that mark had a registered mark on it. Similarly, disputes often arise over U.S. domain name owners' use of common foreign surnames or words.19

Worse yet, as I pointed out in one of my dissents involving the word e-beanie, it is possible to register a trademark in one country that does not consider the mark generic, since it is another language, and then enforce that mark against a domain name owner in the home country of both the mark owner and the domain name owner, where the mark could not have been registered at all because of its generic nature.20 This simply does not seem fair and can lead to forum shopping for a place to register a mark so it can be used against residents of another country. I predict that this will become a problem in the future in more cases.

Perhaps ICANN cannot deal with such cases by rule, but just as ICANN will eventually have to deal with arguments over the use of city, county, country, and national names as domain names, these matters would seem a serious problem for future cases. The concern is that the more the Internet is used by residents of other countries, the more this will become an issue in the future. There really is no way to have constructive notice of foreign trademarks without doing worldwide searches, which are expensive and time-consuming.

The Inability to Search Effectively for Precedent

Given the large volume of cases being handled within the UDRP system, another simple but real problem that may contribute to the inconsistency of decisions is that the present search engines found on the ICANN site and the various resolution providers' sites are less than adequate when compared with the LEXIS and Westlaw search engines, which lawyers and judges are accustomed to using for their research.

To remedy this, I have been told that ICANN has arranged to have commercial databases like Westlaw and Butterworths (a division of LEXIS) develop and make available search engines for the case database using the more effective and established legal research systems of those companies. I do not know when these will be available, but it is hoped that such databases and search engines will be online in the near future, because the number of decisions increases day by day, making searches more difficult and frustrating. This and the final comment that follows-concerning the format of the decisions-are not key issues, but they do hinder the UDRP process at this time and should be resolved quickly.

The Required Format for Decisions

A relatively minor but time-consuming and annoying feature of ICANN decisions is the apparent requirement that each decision recite in exquisite detail the dates and steps leading to the decision. This practice seems to me to be something that could easily be simplified by adoption of the practice of most courts. Recently, ICANN and the resolution providers mandated that this detail be part of each decision in order to be certain that all procedural issues are complied with. Surely, it would seem that encouraging a more detailed statement of relevant facts and the reasoning behind the decision is a more critical part of the process than listing, item by item, how the case came to be brought to the panel for decision, along with the dates of each step. If the parties contest these steps, one would presume they would say so in their briefs, or the panel would point out discrepancies from its own review of the record.

As a practical matter, one would think that the decisions could do as most courts do: merely state that the procedural steps have been complied with, and then proceed to discuss the facts and the legal issues followed by findings as to the facts and details of the reasoning behind the legal conclusions of the panelist or panelists.

With the volume of decisions likely over the next few years, this would shorten unnecessary portions of the cases, make panels spend their time on the decision and its reasoning, and make searching for and reading cases more expeditious. This could be accomplished by fiat from ICANN to the resolution providers, which could include an example decision template, such as lawyers use in many instances for court filings.

CONCLUSIONS

The process of resolving abusive domain name registrations under the UDRP has been remarkably successful, but it could be far more effective and fair to all concerned by means of a few key changes in the procedural requirements and by means of some more detailed direction to the panels that are charged with deciding these important cases. The key recommendation related to how the panels are selected and the arbitrators nominated should be given immediate attention, since it is obvious that forum shopping and bias, perhaps unintended but nonetheless real, are built into the present system.

With constructive suggestions like those of Geist, Donahey, and others, it would seem this process of improving what was once a very contentious set of Policies and Rules, could be accomplished in a short period of time. Then, careful consideration should be given to how the UDRP will work in a truly international world of trademarks, where there is no universal registry of marks and where there is no reasonable expectation that a registrant is on constructive notice of foreign marks. More thought should also be given to protection of geographic names, protection of personal names, and less protection for what are clearly generic and descriptive marks that should be available to everyone for use as a domain name. The latter has been studied by WIPO, but no action has yet been taken by ICANN.

Nothing has been said here about the continuing battle over whether the trademark owner is entitled to all top-level domains using that owner's trademark. This is perhaps beyond the ability of ICANN to deal with, but it too will have to be dealt with as we move into a world with seven more TLDs. Does Disney really need to own and control, for example, Disney.com, .org, .net, .biz, .info, ad infinitum? These types of policy decisions will never be satisfactorily resolved in the context of the ICANN UDRP, but they will be the source of unending cases until someone or some authority establishes a rule of reason. We have enough UDRP cases now; let's not encourage more.

REFERENCES
1. Source:
http://www.icann.org/udrp/proceedings-stat.htm, August 16, 2001.
2. Source: http://www.domainstats.com/ and http://www.google.com/, August 16, 2001.
3. See http://www.icann.org/udrp/udrp-policy-24oct99.htm
4. See http://www.icann.org/udrp/udrp-rules-24oct99.htm
5. See News Release on Mueller Article at http://dcc.syr.edu/udrpnews.htm.
6. Michael Geist, "Fair.com?: An Examination of the Allegations of Systemic Unfairness in the ICANN UDRP, found at http://aix1.uottawa.ca/~geist/frameset.html, August 20, 2001.
7. See, for example Panavision Int'l. LP v. Toeppen, 938 F. Supp. 616 (CD Cal. 1996) and a series of other cases involving Toeppen that have continued over the years.
8. 15 U.S.C. ¤1125(d).
9. For example, see Giacalone v. Ty, Inc., 1996 U.S. Dist. LEXIS 20807, and Avery Dennison v. Sumpton, 189 F.3d 868; 1999 U.S. App. LEXIS 19954 (9th Cir. 1999), two early litigated cases on these issues.
10. Other observers have recently suggested the need to change the system. See Jo Saxe Levy, "Precedent and Other Problems with ICANN's UDRP Procedure," 6 Cyberspace Lawyer, No. 2, April 2001, which suggests that the UDRP inevitably will expand and that the expansion will force ICANN to standardize procedural rules and provide some form of appellate oversight and control.
11. See Michael Geist, "Fair.com?: An Examination of the Allegation of Systemic Unfairness in the ICANN UDRP," found at http://aix1.uottawa.ca/~geist/frameset.html. See also an article on this study, reported in the August 20, 2001, edition of The Wall Street Journal, "Do Cyberspace Court Panels Favor Trademark Holders?".
12. Disclosure: This author notes that Geist mentions this author by name as not having been selected by a provider, even though he has served on many panels because of selection by a party. The author has no problem with this fact, although it clearly indicates the selection of presiding or single panelists is not random or sequential, as would be the case in any court system.
13. Geist, supra, PP. 18-19.
14. Geist, supra, pp. 23-26.
15. UDRP Rule 10(a).
16. See, for example, Crew Int'l., Inc. v. crew.com, WIPO Case No. D2000-0054, April 20, 2000, and Superstation, Inc. v. Dinner&aMovie, NAF Case No. FA0106000097635, August 14, 2001.
17. Geist, supra, FN 86, p. 21.
18. M. Scott Donahey, "Adding Appeals Procedure to Dispute Resolution Might Satisfy ICANN Critics," in Vol. 6, No. 2, Electronic Commerce & Law Report, p. 33 (January 10, 2001).
19. See SŸd-Chemie AG v. tonsil.com, WIPO Case No. D2000-0376, July 30, 2000; and another example of international assumptions of knowledge of foreign marks, JosŽ de Jesœs Vel‡zquez JimŽnez v. Mailbank.com Inc. Case No. D2001-0341, June 10, 2001, in which the complainant argued that a Canadian company was supposed to be constructively aware of a small, local Mexican company holding a trademark registration on the common Spanish name Velazquez.
20. Ty Inc. v. Joseph Parvin d/b/a Domains for Sale, WIPO Case No. D2000-0688, November 2000.
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