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Abstract
This article aims to discuss the issue of whether the Uniform Domain Name Dispute Resolution Policy (UDRP) endorsed by the Internet Corporation for Assigned Names and Numbers (ICANN) is an arbitral process, according to the principles of the 1958 New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards. For this purpose this article will first establish the true meaning of arbitration, moving on to illustrate how it has been incorporated with the introduction of the Internet and specifically the interaction between Online Dispute Resolution (ODR) and Alternative Dispute Resolution (ADR) mechanisms. Furthermore, this article will demonstrate how ICANN has used arbitration and ADR methods to deal with the conflict between trademarks and domain names; for this purpose, a short history of the UDRP will be mentioned and the Policy will be later compared to conventional arbitration in order to prove that UDRP is not an arbitral process, at least according to the way arbitration is conceived. Finally, this paper will illustrate that ICANN's Policy has created a whole new process for deciding domain name disputes that has a rather ambiguous nature.
Notes
1 Konstantinos Komaitis ‘Cruel intentions’ Intellectual Property Forum, March 2004, p 56.
2 AMF Inc. v Brunswick Corp., 621 F. Supp. 456, 460 (E.D.N.Y. 1985) Weinstein, J.
3 See ‘The Arbitration and Conciliation Act, 1996’, an Act to consolidate and amend the law relating to domestic arbitration, international commercial arbitration and enforcement of foreign arbitral awards as also to define the law relating to conciliation and for matters connected therewith or incidental thereto.
4 See Komaitis, ‘Cruel intentions’ Intellectual Property Forum, March 2004, p 56.
5 See Komaitis, ‘Cruel intentions’ Intellectual Property Forum, March 2004, p 56.
6 The New York Convention of 1958 ‘A basis for a supra-national code?, a reflection by Geoffrey Beresford Hartwell’ at http://www.hartwell.demon.co.uk/nyc_asa.htm, accessed 9 February 2004.
7 The New York Convention of 1958 ‘A basis for a supra-national code?, a reflection by Geoffrey Beresford Hartwell’ at http://www.hartwell.demon.co.uk/nyc_asa.htm, accessed 9 February 2004.
8 While there is no agreement as to what percentage of the dispute resolution must take place online, most agree that sending an e-mail instead of a fax to a client does not convert the service into ODR.
9 The Inter-Pacific Bar Association (‘IPBA’) is in the process of establishing a CyberArbitration centre.
10 The best examples of the high automation form are: clicknsettle, cybersettle, and settleon-line. Both cybersettle.com and clicknsettle.com are oriented towards insurance claims. Cybersettle.com claims to be used by over 475 insurance companies ‘either directly or through their third party administrators’. See http://www.cybersettle.com/about, accessed 10 February 2004.
11 The use of the electronic medium for arbitration and its effect on the requirement for a ‘writing’ in connection with the existing New York Convention on the Recognition and Enforcement of Foreign Arbitral Awards, as well as on the UNCITRAL Model Law on International Commercial Arbitration, has been studied recently by the UNCITRAL Working Group on Arbitration which has made some legislative and interpretative recommendations. See Report of the Working Group on Arbitration on the Work of its Thirty-Fourth Session, U.N. Doc. A/CN.9/487 (2001), http://www.uncitral.org/en-index.htm, accessed 10 February 2004.
12 These include the ICC and the American Arbitration Association.
13 For example, GeoTrust offers services to secure transactions, provide identity validation and authentication for Internet transactions. See http://www.Geotrust.com, accessed 11 February 2004.
14 One of the best examples of the trustmark system in connection with e-commerce is the seal program established by SquareTrade which specifically incorporates reliable and inexpensive online dispute resolution. SquareTrade lists the five most important considerations to buyers as including ‘seller's commitment to mediation’ and requires as part of the SquareTrade Seal that the seller is ‘committed to resolving disputes—including responding to disputes filed with SquareTrade within 2 business days’, SquareTrade, Seal Program, Learn More at https://www.squaretrade.com/sap/jsp/Inm/learn_seal.jsp;jsessio_nid=wmssaurev1?vhostid=tomcat2&stmp=squaretrade&c_ntid=81gjporef1&sapid=wmssaurev1, accessed 11 February 2004.
15 See for example, http://BBBOnline.org, accessed 22 July 2004.
16 Louise Ellen Teitz ‘Providing legal services for the middle class in cyberspace: the promise and challenge of on-line dispute resolution’ Fordham Law Review Vol 70, 2001, p 985.
17 See Hague Conference on Private International Law, Jurisdiction and Foreign Judgments in Civil and Commercial Matters, Interim Text (2001), http://www.hcch.net/e/workprog/jdgm.html, accessed 22 July 2004.
18 See for example, Council Regulation 44/2001 of 22 December 2000 on Jurisdiction, Recognition and Enforcement of Judgments in Civil and Commercial Matters, 2001 O.J. (L 12), http://europa.eu.int/scadplus/leg/en/lvb/133054.htm, entered into force on the 1 March 2002.
19 See for example, Directive 97/7/EC of the European Parliament and of the Council of 20 May 1997 on the ‘Protection of consumers in respect of distance contracts, 1997 O.J. (L144) 19’ http://europa/eu.int/eur-lex/en/lif/dat/1997/en_397/0007.html, accessed 23 July 2004.
20 See for example, Press Release, Federal Trade Commission (FTC) ‘Commerce to host public workshop to explore online dispute resolution’, 9 February 2000, at http://www.ftc.gov/opa/2000/oz/adrrev.htm, accessed 23 July 2004.
21 See for example, ‘Electronic data interchange, internet and electronic commerce’ Hague Conference on ‘Private International Law’, Prel. Doc. No. 7, April 2000; EC Joint Research Centre EC DG Information Society, Workshop on ‘Out of Court Dispute Settlement in Trans-Border Electronic Commerce’, 21 March 2001, http://dsaisis.jrc.it/ADR/workshop.html, accessed 23 July 2004.
22 See Teitz, ‘Providing legal services for the middle class in cyberspace: the promise and challenge of on-line dispute resolution’ Fordham Law Review Vol 70, 2001, p 985.
23 The Internet Corporation for Assigned Names and Numbers (ICANN) on the Uniform Domain Name Dispute Resolution Policy (UDRP), 24 October 1999, found at http://www.icann.org/dndr/udrp/policy.htm, accessed 21 February 2004.
24 Richard Keyt ‘ICANN's Uniform Domain Name Dispute Resolution Policy, Keyt Law (2001)’, found at http://www.keytlaw.com/urls/udrp.htm?source=Overture, accessed 21 February 2004.
25 For more information please see http://www.icann.org/udrp/proceedings-stat.htm, accessed 8 March 2004.
26 Management of Internet Names and Addresses, 63 Fed. Reg. 31,741 (1998) [hereinafter White Paper] also available in http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm.
27 Michael A Froomkin ‘ICANN's Uniform Dispute Resolution Policy—causes and (partial) cures’ Brooklyn Law Review Vol 67, No 3, 2002, p 625.
28 Motives for registering these ‘oops’ names and creating websites appeared to vary.
29 Another problem that came up during the session was that trademark holders accused a lot of companies of warehousing domain names in order to sell them later on.
30 See Froomkin, Council Regulation 44/2001 of 22 December 2000 on Jurisdiction, Recognition and Enforcement of Judgments in Civil and Commercial Matters, 2001 O.J. (L 12), http://europa.eu.int/scadplus/leg/en/lvb/133054.htm, entered into force on the 1 March 2002.
31 World Intellectual Property Organisation ‘The management of Internet names and addresses: intellectual property issues—final report of the WIPO Internet Domain Name Process’ http://wipo2.wipo.int/process1/finalreport.html.
32 World Intellectual Property Organisation ‘The management of Internet names and addresses: intellectual property issues—final report of the WIPO Internet Domain Name Process’ http://wipo2.wipo.int/process1/finalreport.html.
33 See Froomkin, Council Regulation 44/2001 of 22 December 2000 on Jurisdiction, Recognition and Enforcement of Judgments in Civil and Commercial Matters, 2001 O.J. (L 12), http://europa.eu.int/scadplus/leg/en/lvb/133054.htm, entered into force on the 1 March 2002.
34 See Froomkin, Council Regulation 44/2001 of 22 December 2000 on Jurisdiction, Recognition and Enforcement of Judgments in Civil and Commercial Matters, 2001 O.J. (L 12), http://europa.eu.int/scadplus/leg/en/lvb/133054.htm, entered into force on the 1 March 2002.
35 Wayde Brooks ‘Wrestling over the World Wide Web: ICANN's Uniform Domain Name Dispute Resolution Policy for domain name disputes’ (Alternative Dispute Resolution Symposium on ‘Current Public Law and Policy Issues in ADR’) Hamline Journal of Public Law and Policy Vol 22, pp 297, 298–299, 2001.
36 Wayde Brooks ‘Wrestling over the World Wide Web: ICANN's Uniform Domain Name Dispute Resolution Policy for domain name disputes’ (Alternative Dispute Resolution Symposium on ‘Current Public Law and Policy Issues in ADR’) Hamline Journal of Public Law and Policy Vol 22, p 317, 2001.
37 Patrick D Kelley ‘Intellectual property: emerging patterns in arbitration under the Uniform Domain-Name Dispute Resolution Policy’ Berkeley Technology Law Journal Vol 17, p 181, 2002.
38 See Keyt, ‘ICANN's Uniform Domain Name Dispute Resolution Policy, Keyt Law (2001)’, found at http://www.keytlaw.com/urls/udrp.htm?source=Overture, accessed 21 February 2004.
39 For more information please see http://www.cpradr.org/ICANN_Menu.htm, accessed 8 March 2004.
40 For more information please see http://www.adndrc.org/adndrc/index.html, accessed 8 March 2004.
41 For more information please see http://www.arbforum.com/domains/, accessed 8 March 2004.
42 For more information please see http://arbiter.wipo.int/domains/, accessed 8 March 2004.
43 See Keyt, ‘ICANN's Uniform Domain Name Dispute Resolution Policy, Keyt Law (2001)’, found at http://www.keytlaw.com/urls/udrp.htm?source=Overture, accessed 21 February 2004.
44 See Keyt, ‘ICANN's Uniform Domain Name Dispute Resolution Policy, Keyt Law (2001)’, found at http://www.keytlaw.com/urls/udrp.htm?source=Overture, accessed 21 February 2004.
45 See ICANN Rules, paragraph 3 (b) (iv), at http://www.icann.org/dndr/udrp/uniform-rules.htm, accessed 8 March 2004.
46 See Keyt, ‘ICANN's Uniform Domain Name Dispute Resolution Policy, Keyt Law (2001)’, found at http://www.keytlaw.com/urls/udrp.htm?source=Overture, accessed 21 February 2004.
47 See ICANN Rules, paragraph 5 (b) (iv), at http://www.icann.org/dndr/udrp/uniform-rules.htm, accessed 8 March 2004.
48 See ICANN Rules, paragraph 5 (b) (iv), at http://www.icann.org/dndr/udrp/uniform-rules.htm, accessed 8 March 2004.
49 See Keyt, ‘ICANN's Uniform Domain Name Dispute Resolution Policy, Keyt Law (2001)’, found at http://www.keytlaw.com/urls/udrp.htm?source=Overture, accessed 21 February 2004.
50 See the UDRP Rules, paragraph 4(a)(i, ii, iii).
51 See the UDRP Rules, paragraph 4(b).
52 See the UDRP Policy, paragraph 4(i).
53 See Keyt, ‘ICANN's Uniform Domain Name Dispute Resolution Policy, Keyt Law (2001)’, found at http://www.keytlaw.com/urls/udrp.htm?source=Overture, accessed 21 February 2004.
54 See ICANN Policy, paragraph 4 k, at http://www.icann.org/dndr/udrp/policy.htm, accessed 8 March 2004.
55 See ICANN Policy, paragraph 4 k, at http://www.icann.org/dndr/udrp/policy.htm, accessed 8 March 2004.
56 For more information see http://www.icann.org/dndr/udrp/policy.htm, accessed 21 July 2004.
57 See Komaitis, ‘Cruel intentions’ Intellectual Property Forum, March 2004, p 56.
58 Article 2 of the New York Convention 1958 on the Enforcement and Recognition of Foreign Arbitral Awards.
59 See ICANN Rules, Definitions found at http://www.icann.org/dndr/udrp/uniform-rules.htm, accessed 1 March 2004.
60 See ICANN Rules, Definitions found at http://www.icann.org/dndr/udrp/uniform-rules.htm, accessed 1 March 2004.
61 See Komaitis, ‘Cruel intentions’ Intellectual Property Forum, March 2004, p 56.
62 Article 5, paragraph 1, of the New York Convention 1958 on the Enforcement and Recognition of Foreign Arbitral Awards.
63 For more information please look at 2nd WIPO Report, at http://wipo2.wipo.int/process2/report/html/report.html, accessed 1 March 2004.
64 Among the most illustrative are the Barcelona.com and the Jeannete Winterson cases.
65 See Barcelona.com, Inc. v Excelentisimo Ayuntamiento de Barcelona, 00–1412-A (E.D. Va. 22 February 2002). Registrants filed their Notice of Appeal on 22 March 2002, so the case now heads to the Fourth Circuit Court of Appeals. Barcelona.com, Inc. v Excelentisimo Ayuntamiento de Barcelona, 02–1396 (4th Cir. filed 16 April 2002).
66 See Komaitis, ‘Cruel intentions’ Intellectual Property Forum, March 2004, p 56.
67 See Komaitis, ‘Cruel intentions’ Intellectual Property Forum, March 2004, p 56.
68 See Komaitis, ‘Cruel intentions’ Intellectual Property Forum, March 2004, p 56.
69 See Uniform Domain Name Dispute Resolution Policy, paragraph 4(d) available at http://www.icann.org/dndr/udrp/policy.htm, accessed 1 March 2004.
70 See Komaitis, ‘Cruel intentions’ Intellectual Property Forum, March 2004, p 56.
71 Elizabeth Thornburg ‘Fast, cheap and out of control: lessons from the ICANN Dispute Resolution Process’ Journal of Small and Emerging Business Law Vol 6, 2001, 191.
72 David McGuire ‘US must demand strong dispute framework-industry’, Newsbytes, 29 June 2000, found at http://www.newybytes.com/pubNews/00/151438.html, accessed 2 March 2004.
73 See Hickman v Taylor, 329 U.S. 495 (1947) (discussing value and purpose of discovery in a case).
74 Elizabeth G Thornburg ‘Sanctifying secrecy: the mythology of the corporate attorney–client privilege’ Notre Dame Law Review Vol 69, pp 157, 203, 1993.
75 Bryant G Garth ‘Privatisation and the new market disputes: a framework for analysis and a preliminary assessment’ in Susan S Silbey and Austin Sarat (eds) 12 Studies in Law Politics and Society, 1992, pp 367, 382, JAI Press.
76 See Thornburg, ‘Fast, cheap and out of control: lessons from the ICANN Dispute Resolution Process’ Journal of Small and Emerging Business Law Vol 6, 2001, 191.
77 Timothy J. Heinsz ‘The revised Uniform Arbitration Act: modernising, revising, and clarifying arbitration law’ Journal of Dispute Resolution Vol 1, pp 46–50, 2001.
78 See Thornburg, ‘Fast, cheap and out of control: lessons from the ICANN Dispute Resolution Process’ Journal of Small and Emerging Business Law Vol 6, 2001, 191.
79 ICANN Rules, §§ 3(b)(xiv) and 5(b)(viii)
80 ICANN Rules, section 13
81 WIPO, 2nd Report, at http://wipo2.wipo.int/process2/report/html/report.html, accessed 1 March 2004.
82 See Thornburg, ‘Fast, cheap and out of control: lessons from the ICANN Dispute Resolution Process’ Journal of Small and Emerging Business Law Vol 6, 2001, 191.
83 Council of Better Business Bureaus/BBBOnline ‘Protecting consumers in cross-border transactions: a comprehensive model for alternative dispute resolution (2000)’ found at http://www.bbbonline.org/about/press/whitepaper.doc, accessed 2 March 2004.
84 Council of Better Business Bureaus/BBBOnline ‘Protecting consumers in cross-border transactions: a comprehensive model for alternative dispute resolution (2000)’ found at http://www.bbbonline.org/about/press/whitepaper.doc, accessed 2 March 2004.
85 Document Tech. Inc. v Internat'l Elec. Communications, Inc., D2000–0270, also refusing to consider complainant's supplemental filing, at http://arbiter.wipo.int/decisions/html/d2000–0270.html. In that situation, the panel correctly ruled that the complainant had not met its burden of proof. The complainant also remains free to file an action under the ACPA (Anti-cybersquatting Consumer Protection Act) in federal court, once again attempting to acquire the domain name. However, the same problem could arise in cases in which respondents challenge the credibility of complainant's assertions. If arbitrators nevertheless take the assertions on face value and find that complainants have met their burden of proof, the respondent will have been harmed through deprivation of an important process right; it will have lost the domain name through the UDRP without the chance to test the credibility of the complainant's assertions.
86 See Thornburg, ‘Fast, cheap and out of control: lessons from the ICANN Dispute Resolution Process’ Journal of Small and Emerging Business Law Vol 6, 2001, 191.
87 Frank A Cona ‘Focus on cyberlaw: application of online systems in alternative dispute resolution’ Buffalo Law Review Vol 45, pp 972, 992, 1997.
88 See Thornburg, ‘Fast, cheap and out of control: lessons from the ICANN Dispute Resolution Process’ Journal of Small and Emerging Business Law Vol 6, 2001, 191.
89 Colin Rule ‘New mediator capabilities in online dispute resolution’ found at http://www.mediate.com/articles/rule.cfm, accessed 3 March 2004.
90 See Thornburg, ‘Fast, cheap and out of control: lessons from the ICANN Dispute Resolution Process’ Journal of Small and Emerging Business Law Vol 6, 2001, 191.
91 Michael Froomkin ‘Comments on ICANN Uniform Dispute Policy’ 13 October 1999, found at http://www.law.miami.edu/∼amf/icann-udp.htm, accessed 3 March 2004.
92 See Thornburg, ‘Fast, cheap and out of control: lessons from the ICANN Dispute Resolution Process’ Journal of Small and Emerging Business Law Vol 6, 2001, 191.
93 NAF Supplemental Rules, paragraph 6 (a) (v), found at http://www.arbforum.com/domains/UDRP/rules.asp, accessed 8 March 2004.
94 Until 15 October 2001, NAF also had a supplemental rule regarding replies that could be used to respondent's disadvantage. Both parties were allowed to file a request for permission to file a reply containing new matter (and pay US $250 just to file the request), and both replies are given the same deadline (five days from when the response was due or submitted, whichever is earlier). If the complainant submitted this supplemental filling on the last possible day, the respondent had no opportunity to respond to these new allegations or documents. Under the revised rule, however, parties have an additional five days to respond to their opponents’ replies. Ibid, §7
95 Parisi v Netlearning, Inc., 139 F. Supp. 2d. 745, 752 (E.D. Va. 2001).
96 Parisi v Netlearning, Inc., 139 F. Supp. 2d. 745,
97 Parisi v Netlearning, Inc., 139 F. Supp. 2d. 748.
98 Parisi v Netlearning, Inc., 139 F. Supp. 2d. 748.
99 Parisi v Netlearning, Inc., 139 F. Supp. 2d. 748.
100 Parisi v Netlearning, Inc., 139 F. Supp. 2d. 748.
101 Specifically, he sought a declaration of lawful use under the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. 1114 (2) (D) (2000), as well as a declaration of non-infringement under the Lanham Act, 15 U.S.C. 1125 (a) (2000).
102 Parisi v Netlearning, Inc., 139 F. Supp. 2d., 749.
103 Parisi v Netlearning, Inc., 139 F. Supp. 2d., 750.
104 Parisi v Netlearning, Inc., 139 F. Supp. 2d., 750, note 10
105 Parisi v Netlearning, Inc., 139 F. Supp. 2d., 750, note 12 (citing FAA 10).
106 See Convention on the Recognition and Enforcement of Foreign Arbitral Awards, 10 June 1958, articles 3 & 5, 330 U.N.T.S. 3, 40, 21 U.S.T. 2517.
107 Parisi v Netlearning, Inc., 139 F. Supp. 2d., at 752.
108 Stephen J Ware `Domain Name Arbitration in the Arbitration-Law Context: Consent-to, and Fairness in, the UDRP' Journal of Emerging Business Law, Vol 6, p 157, 2002. There are different processes operating under the name arbitration. There are very different bodies of law governing these different types of arbitration, and there are good policy reasons why different types of arbitration should be also treated differently by law.
109 Richard E Speidel ‘ICANN Domain Name Dispute Resolution, the revised Uniform Arbitration Act, and the limitations of modern arbitration law’ Journal of Small and Emerging Business Law Vol 6, p 167, 2002.