browse comments: Comments to WIPO RFC 3

Comments to WIPO RFC 3
Kurt Opsahl (kopsahl@sims.berkeley.edu)
Fri, 12 Mar 1999 12:01:43 -0800

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WIPO Internet Domain Name Process
World Intellectual Property Organization
34 chemin des Colombettes
P.O. Box 18
1211 Geneva 20
Switzerland

Re: WIPO’s RFC 3

WIPO Internet Domain Name Process Panel:

The interim report of the WIPO Internet Domain Name Process, produced on
December 23, 1998, proposes a number of policies, which, if implemented,
could be severely detrimental to development of the Internet as a
commercial, social and expressive medium. In an effort to assuage the
overstated fears expressed by trademark holders at the WIPO hearings, the
interim report proposes to throw the baby out with the bath water.

Rather than critique each of the myriad proposals contained within the just
shy of one hundred page report, this letter will focus on the areas which
are most alarming: the threats to privacy and freedom of expression and the
creation of a one sided arbitration proceeding.

Privacy

It is surprising that WIPO’s interim report proposes so few protections for
the privacy of domain name registrants, given the national and
international respect for privacy, as outlined in the OECD Guidelines of
the Protection of Privacy and Transborder Flows of Personal Data, the
European Community Directive on Data Protection and Article 17 of the
International Covenant on Civil and Political Rights.

The WIPO interim report proposes that the domain name registration
agreement require that the domain name applicant provide accurate and
reliable contact details. (WIPO Interim Report §50) No concrete proposal is
enunciated to allow for anonymous domain registrations, nor for the
creation of a trusted third-party who could hold contact information for a
registrant who did not wish private information to be made public. The
domain name process should explicitly allow for a domain name holder to
remain anonymous, or at the very least, allow for pseudonymous registration
with accurate contact details in the hands of the trusted third party.

The interim report’s recommendation provides that the data only be used for
legitimate purposes. (Report §55) However, the report also proposes an open
world-readable database that will contain all the domain name registrants’
personal information. (Report §88) Such a database is fundamentally
incompatible with privacy and could have a chilling effect on the freedom
of expression.

The domain name system must respect personal privacy and ensure that (a)
anonymous speech remains possible and (b) contact information is only used
for legitimate purposes. The data collected should be held under the most
rigorous international standards for data protection and only provided
under certain carefully delineated circumstances. The filtered access
option detailed in paragraph 87 of the report is insufficient, since it
provides too few safeguards for data protection. (Report §87, 89)

Free Expression

The right to freedom of expression is respected in a number of national and
international conventions, including Article 10 of the European Convention
for the Protection of Human Rights and Article 19 of the International
Covenant on Civil and Political Rights. Yet, the WIPO interim report’s
proposal endangers free expression by (a) conflating the commercial and
non-commercial use of a trademark and thereby stifling potential fair uses
(See e.g., Report § 53); (b) proposing to drag registrants into an
expensive legal proceeding in what may well be a distant jurisdiction
(Report §§119, 145); and (c) enabling a process by which companies and
governments could track those critical of them. (Report §§ 50, 88, 92) The
choice of a domain name facilitates the expression contained on the site
pages, and may itself be an expressive act. (E.g., the domain
ihatemicrosoft.com" expresses a protected opinion about Microsoft, but may
interfere with their trademark.)

Under U.S. trademark law, there are limitations on the exclusivity of the
mark. Generally, infringement requires commercial use, and sometimes it
requires consumer confusion. Depending on the type of business and the
geographical region, two or more entities might have a right to use the
same mark. By conflating the notions of trademark and domain name
registration, the interim report creates a quasi-intellectual property
right in domain names that goes beyond the scope of trademark law.

The interim report fails to distinguish between commercial and
non-commercial use, and thereby quashes any number of possible
non-infringing uses that might be valid and fair expressions. Indeed, the
interim report’s scope is so broad as to encompass domain names which
"interfere with or infringe the intellectual property rights of another
party." (Report §53(i)) The report should limit itself to the infringement
of established trademark rights, and exclude other intellectual property
rights and the concept of interference. (E.g, does Southwest Airlines’ use
of "southwest.com" interfere with the Southwest Water Company’s trademark?)
The broader the scope of the rights envisioned, the more likely that
protected speech will be shut out.

The report recommends that the domain name registrant submit to the
jurisdiction of particular courts and the arbitration procedure designed by
WIPO. (Report § 119) This procedure will likely be expensive and the
registrar’s jurisdiction could easily be far from the home jurisdiction of
the registrant. The uncertainty and costs of this procedure could easily
chill potential speakers from entering the marketplace of ideas. For
example, "pokey.org" was subjected to a trademark suit, though the
registrant was ultimately successful. If the "pokey.org" registrant was
located in Transylvania instead of Pennsylvania, it would have been more
difficult to defend the suit in the United States, the jurisdiction of the
registrar. In such a case, someone might make the economic choice to drop
their claim on the domain rather than pay for the airfare, local counsel,
translation services and other legal costs.

As noted above, the lack of privacy accorded to domain registrants can and
will chill speech from those who need to speak anonymously or who fear
harassment for their ideas. For example, if a domain registrant
contemplates a web site critical of an authoritarian regime, this
expression may be effectively stopped if the regime could easily locate the
registrant.

The international domain name system should only permit trademark holders
to contest uses of a domain name which infringe upon their existing
trademark rights. The arbitration procedure outlined in the report should
be made optional, and registrants should not have to provide jurisdiction
in anywhere beyond their home jurisdiction. WIPO should enable a process by
which registrants may use a trusted third party to complete a pseudonymous
registration that will preserve their identity, with strong standards to
ensure that the pseudonym is not revealed without just cause.

One Sided Arbitration

If a trademark holder loses the domain name arbitration, all options that
were previously available remain available. (Report §115) There is no
penalty for the trademark holder and a host of remedies become available
upon success. (Report §158) Yet, if a registrant loses, the domain is
quickly revoked, and the putative domain name holder must pursue the action
against the trademark holder. Because of this de facto effect, the
ostensibly non-binding arbitration becomes effectively one way arbitration.
This effect is magnified when there is a substantial disparity in the
sophistication and the resources of the parties.

Even if the registrant could afford to pursue the action against the
victorious trademark holder, it is not clear that the registrant can
reverse an erroneous arbitration decision. If, for example, a purported
trademark holder is able to use the arbitration procedure to transfer the
domain name to itself with a defective claim of trademark, the losing
registrant now needs to go to court and reverse this error. But on what
grounds? If the original registrant does not have a trademark itself,
courts will be reluctant to review the administrative decision of the
arbitrators absent a claim of tort or breach of contract.

In addition, the proposed arbitration procedure seems to drum up
substantial business for WIPO’s dispute resolution procedure without
corresponding benefits. Before such a provision can be effectively
commented upon, we must know how much such a procedure would cost and how
long it might take.

Conclusion

As written, the interim report of the WIPO Internet Domain Name Process
envisions a system containing the potential for some very troubling
consequences. Given this potential, we would advocate for a go-slow
approach to changing the domain name process, with careful thought given to
addressing privacy, free expression and the potential for inequity in the
arbitration process.

Respectfully yours,

Pamela Samuelson,
Professor of Law, University of California at Berkeley,
Co-Director of the Berkeley Center for Law & Technology

Neil Netanel
Professor, University of Texas School of Law
Visiting Professor, University of Haifa Faculty of Law

Margaret Jane Radin
William Benjamin Scott & Luna M. Scott Professor of Law
Co-Director, Program in Law, Science & Technology
Stanford Law School, Stanford University

Joel R. Reidenberg
Professor of Law
Director, Graduate Program Academic Affairs
Fordham University School of Law

Peter D. Junger
Professor of Law, Case Western Reserve University
Cleveland, OH 44106

Thomas G. Field, Jr.
Professor of Law, Graduate Research Advisor
Franklin Pierce Law Center

Robert L. Dunne
Co-Director, Center for Internet Studies
Yale University

Laurence R. Helfer
Associate Professor of Law, Loyola Law School
Los Angeles, CA 90015

Peter L. Fitzgerald
Assistant Professor
Stetson University College of Law

Thomas F. Blackwell
Visiting Assistant Professor
Chicago-Kent College of Law

Paul Schwartz
Professor of Law
Brooklyn Law School

David A. Rice
Professor of Law
Roger Williams University School of Law

Yochai Benkler,
Associate Professor of Law, New York University,
Director, Information Law Institute at NYU

Dan L. Burk
Assocaite Professor of Law
Seton Hall University

Christopher T. Marsden
Lecturer in European Law,
University of Warwick

David E. Sorkin
Assistant Professor of Law
Associate Director, Center for Information Technology & Privacy Law
The John Marshall Law School, Chicago, Illinois

J. Bradford DeLong
Professor of Economics, U.C. Berkeley
Research Associate, National Bureau of Economic Research
Co-editor, Journal of Economic Perspectives

Mark Gould
Lecturer in Law, University of Bristol
http://info.bris.ac.uk/~lwmdcg/

Stephanie C. Haun
Visiting Assistant Professor of Law
University of Miami School of Law
Adjunct professor, Music Business and
Entertainment Industries, University of Miami
School of Music

David Bozak, Ph.D.
Associate Professor of Computer Science and Psychology
Associate Dean, Art & Sciences
SUNY Oswego, Oswego, NY 13126

Peter R. Rony
Professor of Chemical Engineering at Virginia Tech
co-author of "The Domain Name Handbook: High Stakes and Strategies in
Cyberspace"
rony@usit.net

Maurizio Oliva
Director, Multimedia Language Learning Center
Denison University

James E. Leinweber jiml@slh.wisc.edu
Information Systems Specialist
State Laboratory of Hygiene
University of Wisconsin - Madison

Gabriel Wachob
Findlaw, http://www.findlaw.com/

Laurel Jamtgaard, Esq.,
Fenwick & West LLP
Palo Alto, California, 94306 U.S.A.

Greg Broiles, Esq.
Oakland, California, http://www.parrhesia.com

Tova L. Zeff, Esq.
Brooke Oliver & Associates
Professor of Law
Oakland College of Law
Oakland, CA

Timothy J. Walton, Esq.
Internet Attorney, http://www.netatty.com/

Donald Weightman, Esq.
Law Office of Donald Weightman

Kathryn Vestal, Esq.
Retired Federal Attorney

Sandy English
Sandy's Typing Crisis Clinic

Mary L McIntosh
Southwest Texas State University
Custom Publishing and Copyright Research

Lee Tien, Esq.
Berkeley, CA

Gordon Cook
Editor and Publisher of The COOK Report on Internet
http://www.cookreport.com

Ray King
President
Wired Solutions Inc.

Hans Opsahl
President, Etheria Web Presence & Design
http://www.etheria.com/

Kathleen Webb
President, CRS Technology Corp.

Merv Matson
Chairman, VP Development, TragoeS Inc.
http://www.TragoeS.com/

Dan Steinberg
President, SYNTHESIS:Law & Technology
35, du Ravin, Box 532, RR1, Chelsea, Quebec

Patricia Juvonen
Juvonen & Assoc., Denver, CO USA

Bret A. Fausett
Fausett, Gaeta & Lund, LLP
21 School Street, Third Floor
Boston, Massachusetts 02108

Mike Oliver. Esq.
Computer & Trademark Lawyer
Bowie & Jensen, LLC, http://www.bowie-jensen.com/

Karl Auerbach, Esq.
Former Co-Chair of the IETF Working Group on Procedures and Policies
(POISED)
http://www.cavebear.com/

Kalama Lui-Kwan
Student, University of California at Berkeley School of Law

Christopher K. Ridder
Student, University of California at Berkeley School of Law

Paul Gowder
Student, Harvard Law School

Benet J. O'Reilly
Student, New York University School of Law

James G. Dunn
Student, University of California at Berkeley,
School of Information Management & Systems

Mark Giordano
Student, University of California at Berkeley,
School of Information Management & Systems

Rachna Dhamija
Student and Graduate Research Assistant,
School of Information Management & Systems

R. Anthony Reese
Research Fellow
Program in Law, Science, and Technology
Stanford Law School

Kurt B. Opsahl, Esq.
Research Fellow, School of Information Management & Systems
University of California at Berkeley