Attempts to Solve the UDRP’s Trademark Holder Bias: A Problem that Remains Unsolved Despite the Introduction of New Top Level Domain Names

By: Pamela Segal*

Volume 3.1

Table of Contents

Introduction [3]

I. History of the Internet and the Inception of ICANN [6]

A. Background [6]

B. Urgency for Change: The Development of ICANN and the UDRP [7]

II. The Tale of the New TLDs [11]

A. Domain Names and the Cybersquatter [12]

B. The Trademark Holder Versus the Registrant: The Trademark Holders’ Demands [13]

C. ICANN’s Constituencies & the Domain Name Supporting Organization [14]

D. Outstanding Issues Faced by ICANN Prior to the Selection of New TLDs [16]

E. The New TLD Application Process and the Selection of Seven New TLDs [18]

III. The UDRP and its Implications [23]

A. UDRP Basics [23]

B. UDRP Dispute Resolution Service Providers [25]

C. UDRP Implications [26]

D. Famous Names [27]

IV. How The UDRP Trademark Holder Bias Ties into the New TLD Application Process [29]

A. Problems with the Application Process[29]

B. Effects of the Application Process[31]

C. UDRP Shortcomings[35]

[*2]

V. Possible Solutions [40]

A. Randomizing Selection of Dispute Resolution Providers[41]

B. Appeals Process[43]

C. Registrar Selection[43]

D. Revamping Dispute Resolution Service Provider Qualifications[44]

VI. Conclusion[46]

[*3] INTRODUCTION

The Internet has innate value as a resource, since it has the potential to affect the lives of average citizens as much as the telephone did in the early 20th century and the television in the 1950s and 1960s.[1] Anyone who has access to an Internet connection can post information to a web site a piece of property in cyberspace.[2] Every day, individuals, start-ups, and corporations are designing web sites,[3] making the boundless reaches of cyberspace all the more expansive.[4]

At its most basic level, cyberspace is arranged into “domains.” The domain name system (“DNS”) is a system of electronic protocols which allows individuals to access web sites on the Internet.[5] A domain name serves the same purpose as a postal address.[6] A web address consists of three parts. The first part of the address is the host name[7] (the “www”). The last part, found at the end of a web address, is the “top level domain” (“TLD”), which is the most general level of organization. Among others, TLDsinclude dot-com, dot-edu and dot-gov.[8] One can register [*4] a domain name within any of the TLDs it just has to be unique within that specific TLD.[9] The middle part preceding the TLD is called the “second level domain” (“SLD”), which determines the location of a web site within its TLD.[10]

The Internet Corporation for Assigned Names and Numbers (“ICANN”) is the not-for-profit, quasi-governmental organization contracted by the US Department of Commerce to oversee the commercialization of the DNS.[11] The organization oversees policy and technical decisions for the distribution of new web site and e-mail addresses. It also directs arbitration of domain name disputes.[12]

In October 1999, ICANN adopted a mandatory uniform dispute resolution process (“UDRP”)[13] which required every registrant in dot-com, dot-org and dot-net to submit to arbitration before ICANN-selected arbitration providers.[14] The prototypical arbitration example is when the trademark holder complains that someone has registered a term similar to its trademark. When trademark holders discover that a domain name, which contains their trademark, has been registered by someone else even if there is no likelihood of consumer confusion they feel that their property has been intruded upon.[15]

The UDRP permits trademark holders, and not domain owners, to select from a list of [*5] dispute resolution service providers (“RSPs”) to decide their cases.[16] This is where the trademark holder bias comes into play. Allowing the complainant to choose the RSP has led to “forum shopping.” As explored in this paper, the UDRP, in its current form, gives trademark owners significant advantages over domain name holders.

A possible solution to this problem was ICANN’s decision to add new TLDs to compete with dot-com, as it would free up space and increase competition on many different fronts. However, following the selection of new TLDs, criticism of ICANN’s selection process was rampant. ICANN was accused of making arbitrary, undemocratic, and unfair decisions, which critics hypothesized would actually impede, rather than promote competition.

The UDRP’s inherent bias against domain name registrants became even more evident during the new TLD application process. UDRP critics argue that in light of this trademark holder bias, it is necessary to revisit the policy. Possible solutions to this dilemma would be to: randomize the selection of dispute resolution providers – instead of allowing the complainant to choose; implement an appeals process; and allow for registrar selection of the RSP.

Section I of this note will trace the history of the Internet as well as the development of ICANN and the UDRP. Section II will provide an in depth discussion of ICANN’s process in selecting the new top level domain names. Section III will furnish a general overview of ICANN’s Uniform Dispute Resolution Policy and its implications. Section IV will specifically examine the effects of the new TLD application process in light of the UDRP’s trademark holder bias. Finally, in Section V it is suggested that it is necessary to revise the UDRP through [*6] implementing one of the proposed solutions. Additionally, the TLD selection process should be reformed, instituting more objective criteria in making decisions.

I. HISTORY OF THE INTERNET AND THE INCEPTION OF ICANN

By 2006, it is conceivable that the Internet will exceed the size of the global telephone network.[17] For what was once only of interest to a handful of researchers, it has evolved at an astounding pace. Through its rapid expansion, the Internet reflects all that we have accomplished as a society.[18] It is a repository for society’s strengths and weaknesses as it cradles our political ideals, our values, and our technological advances. The Internet exists as a forum for information exchange, discussion, commentary, andcommerce.[19]

The history proves a firm starting point for examining current domain name issues. In assessing ICANN’s current state and the problems that have recently arisen, it is important to keep two points in mind: (1) the original intentions and philosophies involved in the Internet’s development and (2) the fundamental purposes for creating an organization such as ICANN.

A. Background

Over twenty-five years ago, the U.S. Government started funding research projects in order to develop communications networks.[20] Until the early eighties, the Internet was used [*7] mainly for research purposes and was managed by the Defense’s Advanced Research Projects Agency (“DARPA”).[21] The Internet is not a single entity, but rather a “network of networks,” where individual communication networks are linked with one another.[22] DARPA funded this “network of networks” project, which eventually became known as the Internet. Because the Internet is so vast, a means of navigation is necessary. Each web site on the Internet has been assigned an “Internet Protocol” (“IP”) address that permits the networks to intercommunicate.[23]

Part of the development work was contracted to the University of California at Los Angeles (“UCLA”).[24] Dr. John Postel began keeping a list of host names and addresses as well as a set of documents prepared by researchers called Requests for Comments.[25] When Postel relocated to University of Southern California’s Information Sciences Institute, he continued maintaining the list under a contract with DARPA.[26] Postel also published a list of technical criteria that had been assigned for use by protocol developers. The functions collectively became known as the Internet Assigned Numbers Authority (“IANA”).[27] The DNS was later created to improve the process.[28]

B. Urgency for Change: The Development of ICANN and the UDRP

The National Science Foundation (“NSF”) was the government entity that funded and coordinated the military portion of theInternet.[29] Until 1993, NSF prohibited anyone from [*8] making commercial use of the Internet.[30] Nonetheless, the Internet was rapidly developing into a global medium for commerce, education, and communication. Pressure for change had been coming from different directions.[31] However, the entire network community was dissatisfied with the lack of competition in domain name registration.[32]

Furthermore, commercial entities whose futures depended on the successful growth of the Internet were demanding a more formal and sturdy management structure. As the Internet was becoming more commercial, it was less and less suitable for the U.S. government to be the sole entity in charge of directing and funding Internet functions.[33] NSF also recognized the growing demand for commercial domain names in the dot-com TLD. Thus, in 1991, NSF subcontracted the job of registering dot-com domain names to a company called Network Solutions Inc. (“NSI”).[34] Its functions included registering domain names in the TLDs on a first come-first serve basis and managing a directory connecting domain names with IP numbers of domain name servers.[35] NSI also administered the official database of Internet registrations.[36]

The Internet community had been arduously debating DNS management policy for a number of years. In 1996, Dr. Postel proposed the development of multiple, exclusive, competing TLD registries.[37] After some revisions, the plan was endorsed by the Internet [*9] Society’s (“ISOC”) board of trustees.[38] When a consensus had not been reached, IANA and ISOC coordinated the International Ad Hoc Committee (“IAHC”).[39] IAHC’s final report presented a memorandum of understanding which received tremendous criticism from the Internet community for its enterprising technology development strategy.[40] Consequently, in January 1998, the U.S. Government issued the Green Paper, seeking public comment on the direction of U.S. policy with respect to the DNS.[41]

The Green Paper proposed the creation of a new corporation that would be dedicated to furthering four key principles geared toward piloting the evolution of the DNS: (1) preserving operational stability of the Internet; (2) promoting competition; (3) achieving broad representation of global Internet communities; and (4) developing policy through private sector, bottom-up, consensus-based means.[42]

On June 3, 1998, after two rounds of public comments, the Clinton administration released the White Paper its final plan.[43] The White Paper proposed a method of privatizing the name and address space that relied on “private sector leadership.”[44] It asserted that the private sector itself had to establish a new non-profit corporation to maintain the Internet’s name and address space.[45] Consequently, in October of 1998, ICANN was created, assuming responsibility for functions previously maintained by the U.S. Government.[46] It is a non-profit [*10] corporation that coordinates the assignment of Internet domain names, IP address numbers, and protocol parameter and port numbers. Officially, ICANN is considered to be part of the private sector, even though the U.S. government designed its structure, selected its board members, and is responsible for overseeing how it funds its activities.[47] The White House decided that ICANN’s particular structure should not resemble that of an administrative agency. Since it is not part of the government, it is not subject to such stringent review.[48]

One of the main concerns expressed by the Internet community was opening the domain name registration to competition. In order to do this, a test bed was created in April 1999 and domain names in dot-com, dot-org, and dot-net were then able to be registered via registrars. Since ICANN is responsible for invoking policies concerning TLDs, it administers authority over these registrars.[49]

Another significant part of ICANN’s role was to implement a dispute resolution policy; hence, the UDRP was instituted. The UDRP has since been adopted by all accredited domain name registrars for those domain names ending in dot-com, dot-net, and dot-org, as well as by individual managers of country-code TLDs. The UDRP provides an alternative to litigation for resolving domain name disputes.[50] It aims to substitute uniform global rules for what at one time was a property-based system of rights and dispute resolution.[51] Still, the UDRP is regarded as a novel experiment in the globalization and privatization of intellectual propertyprotection.[52]

[*11] II. THE TALE OF THE NEW TLDs

A. Domain Names and the Cybersquatter

With the globalization and commercialization of the Internet, domain names have become more significant in a variety of facets, namely as business identifiers. Domain names, such as “cardozo.yu.edu,” provide a familiar and mnemonic way of locating specific computers on the Internet by acting as signs, identifiers, and messages.[53] In order to provide information, goods, or services on the Web, it is necessary for an individual or company to have a web site or a homepage presence, which of course includes a domain name.[54] Until November 2000, the Internet had a limited number of TLD suffixes that included dot-com, dot-mil, dot-int, dot-gov, dot-org, and dot-net.

Before ICANN and before Internet commercialization, nobody dreamed that the Internet would become the next information superhighway. Individuals registered domain names in dot-com for many reasons.[55] Companies registered their names because they sought to do business over the Internet. Fans registered names of their favorite singers, actors, products, etc.[56] Domain name speculators registered domain names because they thought that domain names would one day be hot commodities.[57]

[*12] These domain name speculators were cybersquatters[58] or business investors.[59] Some of these individuals lacked good intentions. They were essentially planning on snatching up unclaimed but commercially valuable domain names, to sell at a sizable markup to those companies who they believed were likely to desire such names.[60] Yet, others sought to offer legitimate services, such as web-hosting, to companies without an Internet presence. The registration of potential customers’ marks as domain names served as the first step in their business strategy.[61] Whatever the motivation, during the time between NSI’s registration of dot-com names and the business world’s realization that domain names based on their trademarks were valuable, a large number of domain names had been seized.[62]

Companies the trademark holders who are attempting to do business on the Internet face a serious predicament. Because it is important to have a unique and memorable domain name, it is only natural that a company with a well-known trademark would want to use that mark as its domain name.[63] Understanding this, and acting out of greed, hostility, or mischief [*13] in bad faith unauthorized individuals (who could be cybersquatters with mischievous intentions) have registered many famous trademarks as domain names.[64]

B. The Trademark Holder Versus the Registrant: The Trademark Holders’ Demands

In general, trademark holders have demanded that the domain name system permit them to accomplish two things: (1) to oust non-trademark owners of domain names incorporating their marks, and (2) to prevent subsequent registration of any domain name incorporating their marks in any top level domain.[65] The UDRP is used as a weapon that makes it easier for trademark holders to take domain names away from those who have registered them.[66] This has lead some to speculate that the domain name space should be and will continue to become an extension of trademark space.[67]

One of ICANN’s original goals was to open up the monopoly on registering domain names. The decision to add new TLDs to compete with dot-com was a possible solution to this problem. According to advocates of the decision, the virtual real estate of the Internet was practically screaming for expansion.[68] Dot-com was an overcrowded TLD and, for the most part, had been used up.[69] Since then, other domains such as dot-org and dot-net were created to [*14] differentiate web sites, but the distinctions largely dissipated as groups have possessively hung their shingles on property in cyberspace.

The general argument among trademark owners is that trademarks should receive special protection within the new domains. Following demands, ICANN introduced seven new TLDs in November 2000 which marked the largest structural change to the Internet since the late 1980s, when the last TLDs were issued. Adding new TLDs was primarily meant to spark competition on two different fronts: (1) for the past five years, there has been a struggle to alleviate the lack of desirable names in dot-com and (2) until ICANN was created, NSI, the government-established monopoly, dominated the registry of dot-com addresses. With other registries in the picture, NSI would now also face competition.

C. ICANN’s Constituencies & the Domain Name Supporting Organization

In view of the increased adoption of the World Wide Web, the trademark holders were not the only group who spurred the introduction of new TLDs. Many members of the Internet community proposed that new TLDs be introduced to allow broader use of domain names. ICANN is comprised of various constituencies, divided according to the role of the at-large membership.

The Commercial and Business Constituencies represent over 28,000 large and small businesses.[70] This group’s main concern was that each new TLD keep full records of the contact information (Whois data) of domain-name registrants.[71] Additionally, it wanted a mandatory domain-name arbitration system that would apply to any new TLDs.[72] The Top Level Domain [*15] Constituency, comprised only of VeriSign Global Registry Services,[73] asserted that the primary focus should be placed on preserving the integrity of the Internet.[74] The Internet Service Provider Constituency made DNS stability a chief objective.[75] The Registrars Constituency, made up of companies that sell domains, supported the addition of new top level domains.[76] They also recommended that a standard-based approach to registrar and registry communications be instituted.[77] Finally, the Intellectual Property Constituency favored a “sunrise” provision where trademark owners would be allowed to pre-register their marks with the creation of new top level domains.[78] It also demanded that the UDRP be used to resolve domain name disputes.[79]

ICANN requested that the Domain Name Supporting Organization (“DNSO”)[80] evaluate the issues and develop recommendations regarding ICANN’s approach to the introduction of [*16] new TLDs.[81] The DNSO submitted seven proposals which conflicted in their overall objectives.[82]

D. Outstanding Issues Faced by ICANN Prior to the Selection of New TLDs

ICANN held a board meeting in Cairo, Egypt in March 2000[83] and discussed possible procedures regarding the introduction of new TLDs.[84] By this time, John Postel had already proposed 150 new TLDs. Subsequently, there was much debate over what kind, how many, and for what purposes these TLDs would be implemented.[85] These were points that had to be smoothed out before ICANN could establish application procedures for entities which sought to become registries.

In preparation for its July 2000 meeting in Yokohama, Japan, the Names Council recommended that the ICANN Board adopt a policy for the introduction of new TLDs.[86] One of the issues addressed was the importance of maintaining Internet stability.[87] When new TLDs were introduced, the DNS would inevitably undergo major changes. Therefore, the Names Council warned that a land rush’ phenomenon was bound to occur due to the upsurge of query and transaction loads during the first few days of registration.[88] There would also be a strong [*17] possibility that many domain name disputes would be created as a result of the introduction.[89] Second, the Names Council proposed a small-scale introduction, where a small number of TLDs would be introduced at the outset.[90] Third, it proposed that selecting the types of TLDs to initially be introduced should reflect the general purposes for adding new TLDs.[91]

ICANN also took proposals from companies, would-be registrars, who planned to sell and register the new TLDs.[92] ICANN vowed that it would introduce new domain names carefully, “in a manner which does not endanger stability” of the Internet’s DNS,[93] since registrars would inevitably face a substantial increase in trademark infringement claims.[94]

Regarding famous marks, there was much concern that there should not be new TLDs without sufficient trademark protection.[95] It was suggested that TLDs would have to be differentiated through principles of honesty and certainty. For example, how would the system aid people in locating Coke as a beverage and coke as a power supply?[96] The Lanham Act states that “[F]air use of a famous mark by another person in comparative commercial advertising or promotion to identify the competing goods or services of the owner of the famous mark [or] [N]on-commercial use of a Mark” are not actionable under this section.[97] This inevitably led to the concern over attempts to register well-known names by companies not connected with the [*18] organization known by that name. Would ownership of a dot-com address give the owner rights over a dot-something-else address? All those with a particular dot-com address would want the corresponding Second Level Domain in the new TLD. Many participants asserted that new TLDs would likely cause confusion for this reason, along with a multitude of other reasons.[98] Registrars would have to make their screening process rigorously clear to ICANN in their proposals.[99]

E. The New TLD Application Process and the Selection of Seven New TLDs

The application deadline for those seeking to sponsor or operate new TLDs (called registrars) ended on October 2, 2000.[100] Each potential registrar submitted a proposal for its new TLD(s) along with explanations of how it would screen and register those seeking to own web sites with the new suffixes.[101] Applicants were to address the following central concepts in their proposals: (1) the need to maintain the Internet’s stability and especially the protection of domain name holders from the effects of registry or registration-system failure; (2) the enhancement of competition for registration services at the registry and registrar level; (3) the enhancement of the utility of the DNS; (4) the extent to which the proposal would meet previously unmet needs; and (5) the importance of appropriate protection of rights of others, including intellectual property [*19] rights in connection with the operation of the TLD, especially during start-up phases.[102] Each applicant paid $50,000 in order to be considered.[103]

A total of forty-seven companies and organizations applied to operate several hundred new Internet domains ranging from dot-africa, dot-travel, dot-xxx (for x-rated sites), and dot-kids (for safe-for-the-kids sites).[104]

ICANN’s November 2000 week-long meeting in Marina Del Rey, California[105] marked the approval of the first new global Internet domain names.[106] A diverse range of interest groups attended the meeting to express their views concerning the vote on the new TLDs. The two main competing entities were the large corporate applicants that would manage the new TLDs and the consumer watchdog groups.[107] The attorneys representing the large corporations argued that trademarks should receive special protection within the new domains.[108] The consumer watchdog groups argued the First Amendment, urging the Board not to neglect individual web users or the free speech doctrine.[109]

On November 16, ICANN’s Board of Directors voted to add the following seven generic top level domains to the root server: dot-biz, dot-info, dot-name, dot-pro, dot-museum, dot-air, [*20] and dot-coop.[110] Generally, the Internet’s landscape was predicted to change tremendously within the next year. As discussed, this was due to an increase in the amount of name space as well as to competitors controlling basic Internet functions that were previously controlled by monopolies.[111] Competition was expected largely to come from the Internet’s name space.[112] The new TLDs were meant to serve as alternatives to dot-com for individuals and organizations trying to create an identity online.[113] Additionally, they were meant to introduce new competition to the Internet name business by making way for other companies, aside from Network Solutions, to operate a domain directory.[114]

The Delaware-based firm NeuLevel, Inc.,[115] was chosen as the domain registry for dot-biz.[116] ICANN found NeuLevel’s proposal the strongest of the many proposals for the TLD.[117] Dot-biz is meant to compete with the dot-com TLD by offering extra space as well as additional prestige.[118] It costs $2,000 to register a dot-biz TLD and then an additional $150 for maintenance.[119] Dot-biz domain names are restricted, solely for business and commercial use, to [*21] any organization or individual that seeks to advertise their business and/or conduct commercial activity on the Internet.[120]

Dot-pro, dot-museum, dot-air, and dot-coop are also restricted top level domains. Dot-pro will be operated by RegistryPro, Ltd,[121] situated in Ireland, which specializes in branding and trademark protection services. Dot-pro will be reserved exclusively for professional individuals, namely doctors, lawyers, accountants, their associations, and other professional commercial and non-commercial entities.[122] RegistryPro emphasizes that where the dot-com TLD restricts professionals from distinguishing themselves, dot-pro is meant to aid particular professionals.[123] Individuals would be required to prove their professional status; existing dot-com, dot-net, and dot-org addresses do not have this requirement.[124]

The winning registry of dot-museum[125] was the Museum Domain Management Association (MuseDoma), which supports accredited museums worldwide.[126] Dot-air’s registry [*22] is the Soci t Internationale de T l communications A ronautiques SC (“SITA”),[127] an airline telecommunications company located in Belgium.[128] Dot-air is restricted because it will only be allocated to those organizations that belong to the air transport industry.[129] Dot-coop’s winning registry was Poptel,[130] which seeks a special designation for business cooperatives, like credit unions and rural electric cooperatives.[131]

Dot-name, sponsored by the Global Name Registry,[132] is intended for individuals who wish to reserve second level domain names, such as surnames (e.g., smith.name).[133] Joe Smith could register joe.smith.name.[134] It is unclear how the company would handle multiple individuals named Joe Smith.[135] [*23] Afilias, LLC was selected to be the registry for dot-info.[136] Afilias is an international consortium of eighteen major domain name registrars.[137] Dot-info is the first new unrestricted TLD since dot-com.[138]

III. THE UDRP AND ITS IMPLICATIONS

A. UDRP Basics

ICANN’s UDRP was primarily designed to provide an inexpensive and fast way to resolve the easiest domain name dispute cases.[139] Every person or company who buys a domain name consents to the terms of the UDRP as part of their registration agreement.[140] At the UDRP’s inception, ICANN had three main objectives it sought to achieve. The first goal was to create global uniformity. An example of this would be to eliminate competition among the jurisdictions forum shopping and rules that are applied to domain name and trademark disputes.[141] The second goal was to reduce the cost of resolving disputes.[142] Finally, the UDRP was intended to be heavily restricted in its applicability.[143] It was supposed to be geared toward the most flagrant types of cybersquatting, while other disputes would be left to the courts. [144] ICANN attempted to leverage the centralized and monopolistic nature of access to the domain [*24] name root so it could lower transaction costs and attain uniformity.[145] Businesses may not sell registrations in the dot-com, net, and org domains without first being accredited by ICANN.[146]

All dot-com, net, and org registrars are required to adopt the UDRP as their dispute resolution procedure before ICANN will accredit them.[147] Under the UDRP, the registrant[148] is required to comply with mandatory arbitration, in the event that a third party files a complaint with an accredited administrative dispute resolution service provider.[149] The complainant must assert that (i) the registrant’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in respect to the domain name; and (iii) the registrant’s domain name has been registered and is being used in bad faith.[150] The remedies available to the complainant pursuant to any proceeding are limited to requiring the cancellation of registrant’s domain name or to the transfer of registrant’s domain name to the complainant.[151]

Paragraph 4(b) of the UDRP sets forth circumstances that demonstrate evidence of bad faith:[152] (i) circumstances indicating registrant has registered or acquired the domain name for the purpose of selling, renting, or transferring the domain name registration to the complainant who is the owner of the trademark or to a competitor of that complainant, for valuable consideration; or (ii) registrant has registered the domain name so as to prevent the owner of the trademark from reflecting the mark in a corresponding domain name; or (iii) registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor; [*25] or (iv) by using the domain name, registrant has intentionally attempted to attract, for commercial gain, Internet users to registrant’s web site by creating a likelihood of confusion with the complainant’s mark as to the source of registrant’s web site.[153]

The mandatory administrative proceeding does not prevent the complainant or registrant from filing a complaint for independent resolution prior to or after it is concluded.[154] The UDRP is purposely constructed for most domain name disputes to be resolved by the courts. Yet, the administrative dispute resolution proceedings aim to provide a “streamlined, economical resolution of disputes arising from alleged abusive registrations'”[155] for those disputes that are resolved through the UDRP. If the mandatory administrative panel holds that the registrant’s domain name should be cancelled or transferred, ICANN waits for ten days before it actually implements the decision.[156]

B. UDRP Dispute Resolution Service Providers

ICANN’s accreditation program for dispute resolution service providers is currently rather informal.[157] When reviewing the applications of potential service providers, ICANN is interested in ensuring that the applicant adhere to two main requirements: (a) the applicant should have a track record in competently handling the clerical aspects of ADR proceedings,[158] and (b) the applicant should propose a list of at least twenty highly qualified neutrals to serve as [*26] panelists. The applicant is responsible for thoroughly training the neutrals in policies, uniform rules, technology of domain names, and essential legal principles relevant to domain name disputes.[159] Since panelists are expected to undergo rigorous training, ICANN discourages the applicant from proposing excessively long lists of neutrals.[160]

C. UDRP Implications

In general, resolving domain name dispute cases through an administrative proceeding does have practical advantages. Ellenbogen v. Pearson,[161] the first case to be filed after the UDRP took effect, is an example of how the UDRP was intended to operate. In this case, a New York retailer won the cyberspace rights to his trademark.[162] WIPO’s panelist decided that the three requirements in 4(a) of the UDRP had been met.

The Ellenbogen panel thoroughly analyzed the correspondence between the facts of the case and the bad faith requirements set forth in 4(b). The Ellenbogen panel noted that the domain name must not only be registered in bad faith, but it must also be used in bad faith.[163] In its “use” inquiry, the panel concluded that there was insufficient evidence to support the assumption that respondent was using musicweb.com as a web site or as a domain name address.[164] [*27] However, there was evidence that the respondent was using the domain name to harm the complainant because it was listed on the GreatDomains.com web site as a domain name for sale.[165] Additionally, the legislative history of 4(b)(i) supports the bad faith allegation.[166] Prior to implementing the UDRP, ICANN endorsed a comment during its final comment period suggesting that to be indicative of bad faith, a request for payment shall be in an amount above the registrant’s out-of-pocket costs.[167] In this case, the respondent did not limit his request for payment to his out-of-pocket expenses. Rather, he sought any payment for the transfer of the domain name by soliciting offers through a domain name brokerage site.[168] The above allegations support the panel’s finding of bad faith pursuant to 4(b)(i) of the UDRP.[169] The administrative proceeding lasted for a few weeks. The case would have been costly and time-consuming to litigate in court as a trademark infringement claim.[170]

D. Famous Names

Since registering domain names is a relatively inexpensive process, cybersquatters are encouraged to register famous names (e.g. names of actors, entertainers, and sports figures), with the intent to sell the names to those celebrities who may want them.[171] In Madonna v. Parisi and “Madonna.com,”[172] Madonna, the internationally-known entertainer, filed a complaint with the [*28] WIPO on grounds that Parisi’s domain name, Madonna.com was identical to the registered and common law trademark “Madonna” in which she owns rights.[173] Parisi, an adult entertainment web site developer, had been operating Madonna.com, which featured sexually explicit photographs and text.[174] His argument was two-fold: (1) he possessed a bona fide trademark in the word “Madonna” and (2) his intended purpose was bona fide and non-commercial. He claimed he was going to donate the domain name to the Madonna Rehabilitation Hospital.[175] However, the panel ruled in favor of the complainant, finding that the requirements in 4(a) of the UDRP were satisfied.[176] Mainly, evidence showed a deliberate attempt by Parisi to exploit the complainant’s fame for commercial purposes.[177]

However, arbitration panels have ruled against the entertainer-complainant in cases where the respondent has provided a plausible explanation for adopting a domain name that corresponds to the name of the entertainer. In Sting v. Michael Urvan,[178] the singer Sting was denied transfer of the name sting.com on the grounds that it was not his real name and that [*29] “sting” was a common word in the English language.[179] Additionally, the prerequisites under 4 were not satisfied. There was evidence that the respondent had made bona fide use of the name “Sting” prior to registering the domain name, and there was no indication that the respondent was trading on Sting’s goodwill.[180]

IV. HOW THE UDRP TRADEMARK HOLDER BIAS TIES INTO THE NEW TLD APPLICATION PROCESS

A. Problems with the Application Process

During the months following the introduction of new top level domain names, there were several reports that the application process ICANN used actually impeded competition in the registration and assignment of Internet domain names.[181] Thus, instead of fostering competition, critics predicted that the opposite effect would ensue.[182] Companies whose applications were turned down, as well as lawmakers, criticized the process as expensive, undemocratic, and arbitrary.[183] Since the decision was subject to the US Department of Commerce approval, The Committee on Energy and Commerce called a number of meetings in order to hear the different opinions on the decision.[184] One of the biggest complaints was that ICANN charged each [*30] applicant the $50,000 application fee just to be considered for selection.[185] Both Republican and Democratic members of The Subcommittee on Telecommunications and the Internet recommended that before ICANN selects additional TLDs, that it establish a more fair and more open selection process.[186]

ICANN used nine general criteria for assessing TLD proposals:[187] (1) portrayal of specific plans, backed by firm resources, to operate in a matter that preserves the Internet’s stability;[188] (2) the extent to which selection of the proposal would lead to an effective “proof of concept”[189] regarding the introduction of new TLDs in the future; (3) the enhancement of competition for registration services;[190] (4) the enhancement of the utility of the DNS; (5) the extent to which the proposal would meet previously unmet types of needs; (6) the degree to which the proposal would enhance the diversity of the DNS and of registration services in general; (7) the evaluation of delegation of policy-formulation functions for special-purpose TLDs to appropriate organizations; (8) suitable protections of rights of others in connection with the operation of the TLD; and (9) the completeness of the proposals submitted and the extent to [*31] which they illustrate realistic business, financial, technical, and operational plans and reasonable analysis of market needs.[191]

B. Effects of the Application Process

The arbitrariness of ICANN’s decision hurt competition and could potentially impair the future of e-commerce. For example, as previously discussed, some registrars of the new TLDs implemented a sunrise period, or pre-registration period, where only trademark owners would be able to register domains.[192] The decision to restrict new TLDs to a small number of arbitrary selections hurts competition in three markets: “the market for registry services, the market for registrar services and the market for second-level domains.”[193] Perhaps most significantly, the new TLD application process reflects the disconcerting reality that ICANN is not representative of the Internet community, which therefore justifies immediate government intervention.[194] The U.S. government has an interest in ensuring that ICANN is protecting the needs of its Internet users and businesses during the selection process.

[*32] However, Internet users and non-commercial organizations argue that ICANN has not recognized their needs.[195] Soon after the decision, some of the companies who were denied the opportunity to sponsor the new top level domains urged Congress to intervene.[196] If the U.S. Department of Commerce defers to ICANN and approves the suffix release, ICANN will be faced with a compelling task. There will likely be an increase in domain name disputes because with the addition of more domain names, there will be a greater chance for cybersquatting.[197] Contracts between ICANN and the registries will either extend the UDRP and/or provide additional preemptive rights to trademark holders or holders of existing domain names at the expense of the Internet community.[198]

Gross discrepancies exist between ICANN’s original objectives and how it handled the application process. ICANN completely sidestepped what otherwise might have been a technically and economically sound business plan.[199] In a joint letter to the Department of Commerce, a coalition of cyber-rights groups requested hearings and additional public [*33] commentary before the Department acted on the domain name decisions.[200] The letter emphasized the inadequacy of ICANN’s new TLD selection process, the group of TLDs chosen, and the conditions that will be imposed on users of the new TLDs.[201]

ICANN’s decision-making process was depicted by many arbitrary decisions, process failures, and mistakes of fact.[202] First, the application process was only open to organizations who could afford the $50,000 application fee. Second, the selection process was disorganized: “the timetable for applications was rushed, deadlines for public comment were missed and the period for public input was small.”[203] This is ironic, since ICANN was so well funded, due to the application fees of forty-seven applicants.

The Staff Report was the central document on which the Board was to base its decisions. However, the report contained erroneous statements regarding the applicants and also discriminated against certain applications by providing only limited review.[204] Additionally, the report was posted online only a few days before the ICANN board meeting, when the new TLDs were to be chosen. In effect, this made informed public comment impossible, because many participants were already on their way to California by the time the report became available,.[205] The applicants themselves were even restricted to three-minute comment periods before the Board.[206]

The ACLU letter points out the discrepancies in the actual decision-making process. First, it was not a standard-making process. Instead of contemplating technical standards issues, [*34] it concentrated on questions of allocation, such as: which social policies it would further by providing a TLD; which applicants were worthy to manage the TLDs; which business plans impressed the Board as best-financed, and which names the Board thought were most appealing.[207]

New TLD decisions will have a strong impact on the First Amendment right to freedom of speech.[208] ICANN was created to resemble a non-governmental technical standards body. However, to critics’ chagrin, it has tottered into the realm of policymaking, as reflected by the issues it considered during the process.[209] Although the federal government oversees ICANN’s operations, it is not accountable under federal rules to any federal oversight body, including Congress.[210] The ACLU letter to Congress states that “[a]ny attempt by the U.S. Government or its agents to decide such an important matter of public policy without adherence to principles of notice and public participation, embodied in the APA [Administrative Procedures Act] would be wrong as a matter of principle, and indeed illegal not to mention potentially unconstitutional.”[211]

First, in choosing the seven TLDs, ICANN was not acting as a standards body allocating a controversial and valuable resource to certain claimants over others cannot be defined as standard-setting.[212] Second, when agencies adopt the decisions of outside standards bodies, it is the norm to do so pursuant to legislation that sets forth the procedures by which the [*35] standards become federal policy.[213] Legislation did not exist in this case.[214] The cyber-rights groups argued that ICANN is a state actor[215] and should therefore be subject to the APA, since its authority is completely derivative of its contract with the Department of Commerce. The APA sets forth procedures that all administrative agencies must follow. Additionally, its funding exists from the power that the government has given it. Since ICANN is a state actor, its decisions should therefore be susceptible to challenge as violating statutory requirements and as abusing due process.[216] In sum, if a governmental agency acted as the ICANN Board did, its decisions would not even comply with cursory judicial review. If ICANN’s role continues to harbor on policymaking, its potential and original purpose will be compromised. [217]

C. UDRP Shortcomings

While the UDRP is designed to administer simple domain name dispute controversies, it fails in many respects. The policy that allows the plaintiff complainant to choose the arbitration provider has been heavily critiqued because it panders to plaintiffs.[218] When new TLD registrars [*36] are required to adopt the UDRP, the UDRP’s shortcomings will become more apparent. ICANN critics believe that because the UDRP possesses so many flaws, the introduction of new TLDs is sure to create an influx of problems for ICANN.

First, the UDRP does not define what evidence is required to prove innocence or guilt.[219] Without a system on how the rules can be proven, decisions made by judges will most likely vary to such a degree that the creation of consistent case law will be impossible.[220]

Second, the UDRP has been heavily criticized for imposing impractical time limits.[221] The UDRP was meant to expedite the process for resolving disputes.[222] The registrant has a twenty-day reply period in which to submit a response to the Resolution Service Provider.[223] There is great pressure on the domain name holder since the twenty-day countdown begins as soon as the arbitrator hears of the complaint.[224] Whereas the trademark holder will have months to prepare its case, the registrant might only have a few days to prepare upon notification by the Provider.[225]

Third, and most importantly, the UDRP has been criticized because it promotes forum shopping.[226] The Internet has been compared to the “wild, wild west, a place where justice can [*37] be bought and sold.”[227] The contention is that the UDRP possesses a built-in bias against domain name registrants.[228] The UDRP is a non-regulated, non-accountable arbitration process without an appeals procedure.[229] Since there is no appeals process, panelists’ biases are infiltrated into the UDRP proceeding.[230] This is because the dispute resolution system frequently favors the trademark holder over the registrant, the alleged cybersquatter.[231] The procedure allows the trademark holders, and not the domain name holders, to choose from the list of the UDRP’s dispute resolution service providers.[232]

Three of the four approved dispute resolution service providers (“RSPs”) listed in the UDRP are: The World Intellectual Property Organization (“WIPO”); The National Arbitration Forum (“NAF”); and Disputes.org/eResolution Consortium (“DeC”).[233] WIPO and NAF are known as the most complainant-friendly providers and eResolutions as the most defendant-friendly.[234] As a result, WIPO and NAF receive a large proportion of all cases.[235] While these organizations tend to interpret the UDRP in ways that favor the trademark holders over other Internet users, eResolutions tends to decide cases in accordance with the strict language of the UDRP.[236] RSPs are not aware of how their panelists will rule in a specific case.[237] Rather, they influence outcomes indirectly, through their selection of panelists and procedures, and in the way [*38] cases are assigned to the panelists.[238] For example, WIPO tends to assign panelists who have the same language, culture or nationality as the complainant.[239]

There is statistical evidence that when dispute resolution service providers are selected by challengers, forum shopping results, which biases the outcomes. [240] For example, Mueller’s study[241] illustrates that WIPO and NAF award challenged names to the trademark holder approximately 80% of the time when a decision is rendered. However, complainants who bring their cases to eResolutions lose almost 40% of the time.[242]

Arbitration has become an incredibly big business.[243] As domain names have become valuable assets, the biases have had a commercial impact upon innocent domain name holders.[244] One possible reason for the trademark bias is that the complainants are the “economic drivers” of the marketplace.[245] This means that they are in the position to forum shop for the dispute resolution service provider they feel will be the most sympathetic to their claim.[246] Corporations are therefore using the UDRP as an inexpensive tool to purchase a domain name without [*39] compensating theregistrant.[247] It follows that more corporations will commence UDRP proceedings when such an evident trademark holder bias exists amongst the panelists. Arbitration panels are paid on a per case basis, therefore, there is no incentive to address the UDRP’s imbalance, as it would decrease the incomes of arbitration organizations.[248] In a market of only four arbitrators, the lead arbitrator for Internet domain names enjoys a fair amount of power and publicity.[249] This has and will continue to provide arbitrators with an incentive to rule in favor of complainants.

A further concern is that trademark holders are using the UDRP to challenge domains that have been registered and in use for a long time.[250] One of ICANN’s core objectives is to promote Internet stability.[251] It is especially disconcerting because this directive is being compromised a trademark holder is being permitted to challenge domain names that predate their own trademark use or registration.[252] It is a threat to Internet stability to encourage challenges to long-held and long-used domain names.[253]

There will be an influx of domain name disputes with the introduction of new TLDs. Before ICANN even approved the TLDs, competing companies had already been staking their [*40] claims over future TLDs.[254] For example, Economic Solutions, Inc. (“ESI”) asserted ownership over dot-biz and claimed it had the exclusive right to market domains under dot-bz, the country-code top level domain assigned to Belize.[255] ESI reasoned that its consumers could become confused because dot-bz sounds similar to dot-biz and other proposed TLDs when pronounced aloud.[256] Counsel for ESI argued that if ICANN approved dot-biz or dot-ebiz, substantial damage would be caused to ESI’s goodwill and trademark rights.[257] ICANN responded that there could be no trademark rights over domains (dot-biz or dot-ebiz) based on the provision of registration services within a different TLD (dot-bz).[258] With the filing of more complaints, it will be necessary to have a sound policy in place for arbitrators to follow. As of yet, the UDRP has been criticized for possessing so many flaws that the introduction of new TLDs is sure to create a multitude of problems for ICANN.

V. POSSIBLE SOLUTIONS

It will be exceedingly difficult for ICANN to meet its initial objectives with the introduction of new top level domain names:[259] (1) preserving operational stability of the Internet; (2) promoting competition; (3) achieving broad representation of global Internet communities; and (4) developing policy through private sector, bottom-up means.[260] Additionally, the UDRP was intended to eliminate competition, to reduce the cost of dispute [*41] resolution, and to be restricted in its applicability.[261] The UDRP’s trademark holder bias could have been remedied by implementing new TLDs. It is clear that the process for selecting new TLDs must be revised. More significantly, with the influx of more disputes certain to arise, UDRP critics recommend that it is time to revisit the policy, especially in light of the trademark owner bias.[262]

A. Randomizing Selection of Dispute Resolution Providers

One way to alleviate the problem is for cases to be assigned to RSPs randomly.[263] This would partially eliminate the bias because a complainant would not be able to choose an RSP solely because he or she knows it tends to favor complainants. It is true that this system would take away the complainant’s right to decide which RSP to use. However, it is important to keep the “big picture” in mind. In the long run, revamping the system will result in a fairer allotting of cases. As previously discussed,[264] it has been proven that there is a trademark holder bias among certain RSPs, which results in those RSPs having greater case loads. Hence, other RSPs, where case outcomes are less illustrative of such a bias, are taking in fewer disputes. For example, according to Mueller’s study, during the given time period, WIPO took in a total of 493 cases, NAF took in 355 cases, and eResolutions only took in 86 cases.[265]

[*42] While cybersquatting remains a massive problem, there are registrants who have not acted in bad faith and who do have a legitimate interest in a particular domain name.[266] The key question the RSP considers when resolving a dispute is whether or not a registrant has a justifiable interest in a domain name. Many cases often turn on this issue. An RSP can either interpret this question narrowly or more broadly. The RSP who interprets the question narrowly, is more likely to rule for the complainant – there would have to be a very strong connection between the registrant’s interest and the domain name for a contrary ruling. On the other hand, the RSP who assesses the question broadly will not pose as stringent a requirement on the registrant. As long as she possesses a “legitimate” interest in the domain name, she can continue to remain in possession. The trademark owner bias exists partially because RSPs are interpreting this question differently. Therefore, to mitigate the bias, cases should be randomly assigned to RSPs.

However, if selection were to be randomized, it would be necessary for ICANN to replace economic incentives with an alternative incentives program, in order to effectively promote competition. Otherwise, an RSP could render decisions inefficiently and slowly, while still receiving the same amount of cases.[267] Competition would cease to exist: RSPs would have the same case load but would not have any incentive to fix competitive prices or to perform effectively.[268] ICANN’s additional duties would include creating a pricing scheme and setting standards for performance.[269] RSPs would need to resolve a certain number of cases in an allotted time period. To foster competition, every six months or every year, ICANN could offer a monetary award to the RSP who comes closest to meeting the specific threshold. ICANN [*43] could also publish these results periodically. If an RSP fell beneath a certain level, its accreditation could be withdrawn.

B. Appeals Process

There have been some proposals to establish an RSP appeals process.[270] If parties were permitted to appeal RSP decisions, registrants would have a second chance to assert their interests to a panel. The trademark bias might decrease, but probably not substantially. Generally, an appeals system would pose problems.[271] First, forum shopping would not be resolved complainants would still be the party choosing the RSP.[272] Second, the basic themes behind the UDRP would be compromised. As discussed in Part III, the UDRP is meant to establish a fast, inexpensive means of alternative dispute resolution.[273] Instituting an appeals process would contribute to the expense and the delay of resolving disputes through the UDRP.[274] This would in turn transform the UDRP into an implement of global law, rather than alternative dispute resolution.[275]

C. Registrar Selection

Dr. Mueller advocates having domain name registrars[276] choose the RSP who would arbitrate disputes over the domain names they register.[277] Under the current system, complainant selection magnifies the differences in outcome among RSPs.[278] Registrars already play a part in the dispute process; they provide necessary information regarding the registration and are also [*44] responsible for canceling or transferring a registration when there is a ruling for a complainant.[279] Mueller proposes that “[r]egistrars would contract with any accredited RSP or multiple providers – to handle the disputes raised by their registrations.”[280]

Significantly, registrars possess more balanced incentives than complainants. Registrars do not want to cancel or transfer registrations without just cause because they are in the business of registering names.[281] This solution gives customers who have an interest in domain name disputes a choice.[282] Mueller emphasizes that ICANN would still be setting the basic guidelines of fairness through its accreditation process, but the registrar’s choice of RSP would allow at least some variation within this framework. If a customer was unhappy with the registrar’s choice of RSP, he could port his domain name to a different registrar. This alternative seems to reinforce the “self-regulatory, private-sector model” of Internet governance[283] since it does not eliminate the customer’s power of choice.

D. Revamping Dispute Resolution Service Provider Qualifications

Additionally, a more formal program for RSPs should be implemented. In a dispute resolution proceeding, the UDRP Rules provide the panel with five main responsibilities:[284] (a) to conduct the UDRP proceeding in accordance with the Policy and the UDRP Rules; (b) to ensure that it treats both parties equally and that each party is given a fair opportunity to present its case; (c) to guarantee that the UDRP proceeding occurs expeditiously;[285] (d) to determine the [*45] “admissibility, relevance, materiality and weight of the evidence”;[286] and (e) to decide requests from parties to consolidate multiple domain name disputes pursuant to the UDRP and the UDRP Rules.”[287]

Due to the increase in the number of complaints, it is questionable whether a panel will be able to effectively manage its responsibilities in deciding disputes. Therefore, this obligation is sure to be compromised unless ICANN reforms the qualifications for dispute resolution service providers. As described previously,[288] a service provider applicant needs to propose a list of at least twenty highly qualified neutrals to serve as panelists.[289] Applicants are expected to train neutrals in a variety of areas, including the UDRP, the UDRP Rules, the technology of domain names, and the fundamental principles applicable to domain name disputes.[290]

With an increase in the number of disputes, ICANN will be faced with the decision of either increasing the amount of neutrals a service provider is permitted to use or decreasing the rigorousness of the neutrals’ training. Presumably, if an applicant’s list of neutrals is too long, the training would be more difficult to administer because the applicant would be expending more of its resources. If ICANN chooses to keep the minimum amount of neutrals as is, it is possible that providers will not be able to handle the influx of disputes. More complainants would be inclined to take their disputes to court right from the start, because the administrative proceeding would take too long. The entire purpose of the UDRP would be undermined.

[*46] Clearly, it is important that the neutrals receive meticulous training. Therefore, ICANN should increase the amount of neutrals that RSPs must use as panelists. RSP applicants would have to show that they are economically sound to handle training requirements for the increased list of neutrals. Depending on the number of disputes that arise pursuant to the introduction of new TLDs, ICANN should intermittently increase the minimum number of RSPs’ neutrals.

VI. CONCLUSION

The Internet is a truly remarkable invention, providing an unparalleled merging of information. All kinds of people log on to the Web every day children, parents, students, professors, small businesses, large corporations, to name a few. It is therefore necessary for Internet governance to represent the interests of its entire community. This has proved difficult, especially with the UDRP’s trademark holder bias and the mischievous doings of cybersquatters. Furthermore, as the Internet was being stifled by dot-com, the TLD was crowded and people found themselves being shut out. Adding new TLDs to compete with dot-com was a possible answer to this problem it would free up space. More TLDs would allow members of the Internet community to use recognizable channels with less fear of trampling on the intellectual property rights of others.[291] Nevertheless, ICANN made decisions based on criteria which seem to go well beyond technical issues. The UDRP’s built-in bias became more evident during the new TLD application process. The suggested solutions could prove effective, to different degrees, in alleviating the trademark holder bias. ICANN could randomize RSP selection, establish an appeals process, or create a system of registrar selection. It could also increase the minimum number of neutrals RSPs should train as panelists in order to handle the rush of domain name disputes, which are sure to ensue in the near future. No doubt, these possible [*47] answers are merely diminutive steps in a much larger, quite complex labyrinth of issues. However, ICANN is still a young organization and as is the case with all organizations in their early stages, the kinks need to be worked out. It has failed at accomplishing its intended purposes. It is therefore essential to start small, by revisiting its dispute resolution policy.[292]

* Senior Articles Editor, The Cardozo Online Journal of Conflict Resolution. J.D. Candidate (June, 2002). The author would like to thank Professor Barton Beebe for his guidance and helpful feedback on drafts of this Note. She would also like to thank the members of the Cardozo Online Journal of Conflict Resolution, namely Steven Serna and his staff for their invaluable work during production, Cynthia Devasia, Editor-in-Chief, and Steven Coffey, Executive Editor.

[1] See Robert Kraut, et al., Internet Paradox: A Social Technology that Reduces Social Involvement and Psychological Well-Being?, 53 Am. Psychol., No. 9, 1017 (1998), available at http://www.apa.org/journals/amp/amp5391017.html (last visited Aug. 24, 2001). In the early 1980s, computers were mostly used in the fields of science, engineering and business. By 1998, approximately 40% of all U.S. households owned a personal computer and about one third of these homes had Internet access. Id. See also Sam Vaknin,Ph.D., Internet: A Medium or a Message, at http://www.geocities.com/vaksam/internet.html (last visited Aug. 24, 2001). By the end of 1999 there were 130 million registered Internet users. (although they were not necessarily active Internet users) Id.

[2] See, e.g., Reno v. ACLU, 521 U.S. 844, 853 (1997).

[3] See Network Solutions Registers 2 Millionth Domain Name, at http://corporate.verisign.com/news/1998/apr_19980518.html (last visited Sept. 23, 2001).

[4] See Kevin Eng, Note, Breaking Through the Looking Glass: An Analysis of Trademark Rights in Domain Names Across Top Level Domains, 6 B.U. J. Sci. & Tech. L. *1 (2000), at http://www.bu.edu/law/scitech/volume6/Eng.htm.

[5] See note 23, infra and accompanying text.

[6] Cf. Jessica Litman, The DNS Wars: Trademarks and the Internet Domain Name System, 4 J. Small & Emerging Bus. L. 149 (Spring 2000). Litman states that computers need unique addresses even more than people do because there isn’t any judgement involved. Id.

[7] See Intermatic Inc. v. Toeppen, 947 F. Supp. 1227, 1231 (N.D. Ill. 1996), available at http://cyber.law.harvard.edu/metaschool/fisher/domain/dncases/interma.htm.

[8] Top level domains are generally of two categories. One of these is the country code TLD (“ccTLD”), the territorial domain of a country, which is composed of a two-letter abbreviation. (For example, .us for the United States, .ca for Canada, .uk for Britain, .fr for France, and .au for Australia.) See also The Associated Press, Web Regulators Mull New Addresses, N.Y. Times, July 13, 2000, available at http://www.nytimes.com/library/tech/00/07/biztech/articles/14japan.html. The second category, which is the focus of this paper, is the global or generic TLD (“gTLD”). See Catherine Kessedjian & Sandrine Cahn, Dispute Resolution On-Line, 32 Int’l Law. 977, 982 (Winter 1998). See also gTLD-MoU Frequently Asked Questions, at http://www.gtld-mou.org/docs/faq.html (last modified June 1, 1998).

[9] Litman, supra note 6. For example, Pamela Segal in New York can register psegal.net, Paul Sanger in Texas can register psegal.com, etc.

[10] See id.

[11] See ICANN’s homepage at http://www.icann.org (last visited Nov. 11, 2001).

[12] See id.

[13] See ICANN, Uniform Domain Name Dispute Resolution Policy, at http://www.icann.org/udrp/udrp-policy-24oct99.htm (last visited Nov. 11, 2001) [hereinafter ICANN, UDRP].

[14] See id. at 4.

[15] Litman, supra note 6.

[16] See ICANN, Approved Providers for Uniform Domain Name Dispute Resolution Policy, at http://www.icann.org/udrp/approved-providers.htm (last visited Nov. 11, 2001) [hereinafter ICANN, Approved Providers]. There are currently four approved dispute resolution service providers: CPR Institute for Dispute Resolution

[CPR]; Disputes.org/eResolution Consortium

[DeC]; The National Arbitration Forum

[NAF]; and World Intellectual Property Organization

[WIPO]. Id.

[17] See Cook Report, ICANN Emerges as IBM US Government Brokered Internet Equivalent of WTO Lessig Shows Internet as Potential Victim of Public Private Manipulation, available at http://www.cookreport.com/08.11.shtml (last visited Mar. 1, 2001).

[18] See id.

[19] See Dr. Milton Mueller, Rough Justice: An Analysis of ICANN’s Uniform Dispute Resolution Policy, available at http://dcc.syr.edu/roughjustice.htm (last visited Aug. 25, 2001). Mueller’s paper is the product of an ongoing database development project that records objective information regarding the UDRP cases so as to facilitate empirical social-scientific analysis. The database is a project of the Syracuse University School of Information Studies’ Convergence Center which Dr. Mueller directs. Dr. Mueller’s report provides an extensive range of descriptive statistical data about the results of UDRP implementation. Id.

[20] Management of Internet Names and Addresses, 63 Fed. Reg. 31 (1998), available at http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns.htm

[hereinafter White Paper]. The White Paper is a statement of policy that concerns the management of the Internet Domain Name System. It was carried out by the National Telecommunications and Information Administration Agency. Id.

[21] See id. at *3.

[22] Id.

[23] Id. See J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition 25:72, at 25-143. An IP address consists of a string of numbers. Each number is between 0 and 255 and the numbers are separated by periods. Because these strings of numbers would be confusing for people to remember, a protocol using letters and words was developed. This protocol is the DNS which is illustrated as a “series of databases” that translates a unique textual address (the domain name) into its corresponding IP address. Id.

[24] See White Paper, supra note 20, at *3.

[25] Id. SRI International published this information for the network community. Id.

[26] See id. at *3.

[27] See id.

[28] See id.

[29] See id.

[30] See Litman, supra note 6, at *1.

[31] See White Paper, supra note 20, at *5.

[32] See id.

[33] See id.

[34] Id. See Network Solutions home page, Domain Name Registration Services from the dot-com People, at http://www.netsol.com/en_US (last visited Nov. 11, 2001).

[35] Id. See also Network Solutions Registers 2 Millionth Domain Name, at http://corporate.verisign.com/news/1998/apr_19980518.html (last visited Nov. 11, 2001). The number of domain names registered through NSI reached 2 million as of May, 1998. Id. See also Network Solutions Registers Record Number of Web Addresses in 1998, at http://corporate.verisign.com/news/1999/pr_19990112b.html (last visited Nov. 11, 2001). In 1998, the total number of new domain names that NSI registered was 1,911,000 a figure nearly twice that number registered in 1997. Id.

[36] White Paper, supra note 20, at *5.

[37] See id. at *6.

[38] See id.

[39] See id.

[40] See id.

[41] See id. at *6-*7.

[42] Id. at *7. See also Reuters, .Name Game Takes Time, Net Official Tells Congress, Feb. 7, 2001, available at http://www0.mercurycenter.c /news/breaking/internet/docs/8248161.htm (last visited Feb. 23, 2001) [hereinafter Reuters, .Name Game]. Vinton Cerf, ICANN’s current Chairman recently pinpointed the organization’s main goals: “Like location in real estate, the three most important goals of ICANN are stability, stability and stability.” Id.

[43] See Milton Mueller, Technology and Institutional Innovation: Internet Domain Names, 5 Int’l J. Comm. L. & Pol’y (Summer 2000), at http://www.ijclp.org/5_2000/pdf/ijclp_webdoc_1_5_2000.pdf.

[44] See id. at *24.

[45] Id.

[46] See ICANN homepage, supra note 11. See also Mueller, supra note 43. ICANN is a California non-profit organization governed by 18 volunteer Directors and a salaried CEO. Id.

[47] Litman, supra note 6.

[48] See id. Unlike an administrative agency, ICANN does not have to concern itself with notice and comment. Additionally, Litman argues ICANN is free to be arbitrary and capricious. See also Lawrence Lessig, Governance, Keynote: CPSR Conference on Internet Governance (Oct. 10, 1998), available at http://cyber.law.harvard.edu/works/lessig/cpsr.pdf.

[49] See id.

[50] See ICANN, UDRP, supra note 13.

[51] Mueller, supra note 19, at *4.

[52] I at *4.

[53] Mueller, supra note 19, at *18. See also Sharie Mendrey, Domain Names and Trademarks, at http://eon.law.harvard.edu/h2o/property/domain/main.html (last modified Mar. 5, 2000). See also The Cyberspace Association, Aspects of Domain Names, at http://www.democracy.org.nz/idno/domainnames.htm (last visited Oct. 28, 2001). Like book titles and file names, domain names are semantically meaningful pointers to information.

[54] Olivia Maria Baratta & Dana L. Hanaman, A Global Update on the Domain Name System and the Law: Alternative Dispute Resolution for Increasing Internet Competition Oh, the Times They are a-Changin’!, Tul. J. Int’l & Comp. L. 325, 330 (Spring 2000), available at http://www.law.tulane.edu/resources/journals/jicl/Current_Issue/current_issue.html.

[55] Litman, supra note 6. See e.g., Panavision Int’l, L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).

[56] See Part III, infra.

[57] Litman, supra note 6, at *2. The domain name speculators registered a slew of domain names they thought someone would someday pay money to own. Id.

[58] Mendrey, supra note 53. There is no clear definition of cybersquatting. An activity has been viewed as cybersquatting if someone who lacks a legitimate claim registers a domain name with the intent to (a) sell the name, (b) prevent the trademark holder from gaining access to the name, or (c) divert traffic. See e.g., WIPO, Final (WIPO Publication No. 92-805-0779-6, Apr. 30, 1999), at http://wipo2.wipo.int/process1/report/finalreport.html. The World Intellectual Property Organization (“WIPO”) defines cybersquatting to be the “abusive registration of a domain name.” WIPO’s definition is as follows: The registration of a domain name shall be considered to be abusive when all of the following conditions are met: 1. The domain name is identical or misleadingly similar to a trade or service mark in which the complainant has rights; and 2. The holder of the domain name has no rights or legitimate interest in respect of the domain name; and 3. The domain name has been registered and is used in bad faith. Id.

[59] Litman, supra note 6, at *2.

[60] See id. Speculators were also registering massive amounts of common surnames in the dot-com and dot-org domains based on the theory that one could sell them to people who wanted domains named after their own surnames. Id.

[61] Litman, supra note 6, at *2.

[62] See id.

[63] Baratta & Hanaman, supra note 54, at 330.

[64] See generally Andrew Baum & Mark Epstein, New Dilution Act Used to Evict Cybersquatters’, Nat’l L. J., Jan. 27, 1997.

[65] Litman, supra note 6, at *1.

[66] See id. See also International Trademark Association, Anticybersquatting Act and the ICANN UDRP, at http://www.inta.org/news/compchart.shtml (last visited Mar. 5, 2001) (providing an informative chart which sets forth the trademark owner’s two weapons in the “war against Internet domain name cybersquatting:” the U.S. Anticybersquatting Consumer Protection Act (ACPA) and ICANN’s UDRP).

[67] Litman, supra note 6, at *1. In her essay, Litman states that this assumption is both unwarranted and unwise. “It also brings us perilously close to conceding that ownership of a trademark gives one the exclusive right to use the word on the Internet.” Id.

[68] Chris Gaither, 7 Domains to Compete With .Com, N.Y. Times, Nov. 17, 2000, available at http://www.nytimes.com/2000/11/17/technology/17DOMA.html (last visited Dec. 2, 2000).

[69] According to registrar NetNames, more than 60 percent of the 32.3 million domain names registered worldwide have a dot-com suffix. See Joanna Glasner, Do we Really Need New Domains?, Wired News, Nov. 17, 2000, at http://www.wired.com/news/business/0,1367,40242,00.html (last visited Jan. 9, 2001).

[70] Oscar S. Cisneros, ICANN Down to Discussing Dots, Wired News, Nov. 15, 2000, at http://www.wired.com/news/print/0,1294,40211,00.html (last visited Jan. 8, 2001) [hereinafter Cisneros, Discussing Dots].

[71] See id.

[72] See id.

[73] See generally Patricia Jacobus, Net Name Body Oks Seven New Domains, CNET News.com, Nov. 16, 2000, at http://news.cnet.com/news/0-1005-200-3730464.html (last visited Jan. 9, 2001). Network Solutions, Inc. holds an exclusive government contract to register domain names and control the database where the addresses are stored. Two years ago, ICANN opened competition in the registry market. However, NSI continues to control the database, and charges registrars $6 per domain name. NSI was bought by VeriSign in March 2000 for approximately $20 billion. Id.

[74] Cisneros, Discussing Dots, supra note 70. Roger Cochetti, of VeriSign, stated that promoting DNS growth and expansion should be the second priority, next to upholding integrity. Id.

[75] See id.

[76] See id.

[77] See id.

[78] See Oscar S. Cisneros, TLDs Need Some TLC, Wired News, Nov. 15, 2000, at http://www.wired.com/news/print/0,1294,40202,00.html (last visited Jan. 8, 2001). J. Scott Evans, executive vice-president of ICANN’s Intellectual Property Constituency, stated that IPC members met with about 24 individual TLD applicants concerning the policies that they would like to see instituted. Among their requests was implementing the “sunrise period.” Id.

[79] Id. Evans, of the IPC, states that ” the UDRP should apply in all top level domains. Our constituency wants a mechanism in place.” Id. The IPC also stated that it wants to see policies that call for cancellation of domain names if registrants supply false contact information or violate the TLD’s policies in some other way. Id.

[80] Mueller, supra note 43, at *25. The ICANN Bylaws originally called for three Supporting Organizations: one regarding domain names (the Domain Name Supporting Organization or DNSO), one regarding IP address management (the Address Supporting Organization or ASO) and the third concerned with protocol parameter assignment (the Protocol Supporting Organization or PSO). The DNSO was the most difficult to form because of the continuous power struggles over domain name policies. It is made up of a Names Council, a General Assembly, and various Constituency Groups representing DNS-related interests. Each of the seven constituencies elects three members of the DNSO Names Council which is supposed to administer the DNSO’s consensus building process and communicate recommendations about the DNS policy to the ICANN Board of Directors. Id. at *25 *26.

[81] Mendrey, supra note 53, at http://eon.law.harvard.edu/h2o/property/domain/main.html.

[82] See id. at *5. One proposal, supported by the Internet community, suggested the addition of 500 new TLDs within three years. A second proposal, embraced by the trademark community, recommended that ICANN “go slow” in the introduction process. It would be necessary for appropriate safeguards to be in place first. Some examples of these safeguards are refined domain registration procedures, effective uniform dispute resolution processes, and adoption of a system of famous and popular trademarks across all TLDs. Id.

[83] See Scribe’s Notes: ICANN Public Forum, Mar. 9, 2000, Cairo, Egypt, available at http://cyber.law.harvard.edu/icann/cairo/archive/scribe-icann-030900.html (last visited Nov. 11, 2001) [hereinafter Scribe’s Notes, Egypt].

[84] See id. at *7 – *9.

[85] See id. at *7. Additionally, the WIPO report proposed that new TLDs should be introduced in a controlled manner if particular requirements were meant to protect intellectual property owners. Id.

[86] See ICANN, Yokohama Meeting Topic: Scribe’s Notes Names Council, Jul. 14, 2000, available at http://cyber.law.harvard.edu/icann/yokohama/archive/scribe-icann-071500.html (last visited Oct. 28, 2001) [hereinafter Yokohama Meeting Topic].

[87] See id. at *1. Thus, it would be necessary for new TLDs to be introduced in a measured and responsible manner.’ Id.

[88] See id.

[89] See id. Introducing new TLDs would not be easily reversible because eliminating a new TLD, once it has been created, could lead to further difficulties. Id.

[90] See id. at *9. This first group would act as a proof of concept,’ so ICANN would be able to gauge the utility of a diverse range of TLDs. Id.

[91] See id. at *10. In general, advantages of adding new TLDs were: (1) enhancement of competition in the provision of registration services; (2) improvement of the utility of the DNS; and (3) enhancement of the available number of domain names. In reference to the first enhancement of competition even though competition had increased in the past year at the registrar level, the registry for all three open TLDs (dot-com, dot-net, and dot-org) was still being operated by NSI. This was a problem because it limited overall competition and it also led to concerns over the Internet community’s lack of vendor diversity. Id.

[92] See id.

[93] Wired News Report, Net Body Opens ICANN of Worms, Wired Digital Inc., Jun. 15, 2000, at http://www.wired.com/news/politics/0,1283,37023,00.html (last visited Jan. 8, 2001).

[94] See id.

[95] Scribe’s Notes, Egypt, supra note 83, at *8, available at http://cyber.law.harvard.edu/icann/cairo/archive/scribe-icann-030900.html.

[96] See id.

[97] 15 U.S.C. 1125 (c)(4)(A) (B), available at http://www.bitlaw.com/source/15usc/1125.html.

[98] Yokohama Meeting Topic, supra note 86, at *9, available at http://cyber.law.harvard.edu/icann/yokohama/archive/scribe-icann-071500.html. For example, the official site for the Whitehouse is http://www.whitehouse.gov/. However, if an Internet user clicked on http://www.whitehouse.com/, they would find a site under the heading, “Whitehouse.com: Where Sex and Politics Meet.” Judging from the banner on the site reading, “Entrance to the Adult Website,” this site is not an official Whitehouse site, rather, it is a link to pornographic pictures. On Oct. 28, 2001, the site had been visited 4,717,212 times in the last 30 days. Obviously, this creates confusion among Internet users who are unaware that the TLD for the official Whitehouse site is dot-gov.

[99] See generally Reed Stevenson, ICANN OK’s New Internet Names, Reuters, July 16, 2000, at http://www.zdnet.com/zdnn/stories/news/0,4586,2604183,00.html (last visited Sept. 15, 2000). Additionally, there was the possibility that once ICANN approved an entity as a registry, the registry could possibly go out of business. ICANN’s interim chairman at the time, Esther Dyson, pointed out that it would be necessary that the board consider possible consequences of the different means of assigning registries (e.g., one year, in perpetuity, etc.). Id.

[100] See ICANN, TLD Application Review Update (Oct. 5, 2000), at http://www.icann.org/tlds/tld-review-update-05oct00.htm (last visited Nov. 11, 2001).

[101] Stevenson, supra note 99, at http://www.zdnet.com/zdnn/stories/news/0,4586,2604183,00.html.

[102] See ICANN, Criteria for Assessing TLD Proposals (Aug. 15, 2000), at http://www.icann.org/tlds/tld-criteria-15aug00.htm (last visited Nov. 11, 2001).

[103] See ICANN, TLD Applications (Aug. 15, 2000), at http://www.icann.org/tlds/tld-applications-15aug00.htm (last visited Nov. 11, 2001).

[104] See id.

[105] See ICANN, LA 2000 Public Meeting Archive, at http://cyber.law.harvard.edu/icann/la2000/archive/ (last visited Jan. 9, 2000). The meeting lasted Nov. 13 through Nov. 16. This page has links to each day’s agenda: Nov. 14 DNSO General Assembly and DNSO Names Council; Nov. 15 Public Forum; Nov. 16 Board meeting. Id.

[106] David McGuire, ICANN Approves .Biz, .Pro, .Name’ and Others, Newsbytes, Nov. 16, 2000, at http://newsbytes.com/news/00/158278.html (last visited Jan. 9, 2001).

[107] Chris Gaither, Agency to Vote on Web Domain Names, N.Y. Times, Nov. 16, 2000, available at http://www.nytimes.com/2000/11/16/technology/16DOMA.html (last visited Jan. 9, 2001).

[108] See id.

[109] See id. The groups expressed their views to the Board on the evening before the vote. Many interest groups sought to benefit from the registration rush that was expected to follow the new top level domain release. Id.

[110] See ICANN, New TLD Program, at http://www.icann.org/tlds.htm (last visited Aug. 24, 2001). See also ICANN, Selection of New TLD Proposals for Negotiation: ICANN Board Meeting November 16, 2000 Los Angeles, California, at http://cyber.law.harvard.edu/icann/la2000/archive/new-tld-res.html (last visited Jan. 9, 2001).

[111] Oscar S. Cisneros, ICANN Gets Down to Dot-Biz(ness), Wired News, Nov. 17, 2000, at http://wired.com/news/print/0,1294,40270,00.html (last visited Jan. 8, 2001) [hereinafter Cisneros, Dot-Biz(ness)].

[112] See id.

[113] Jacobus, supra note 73.

[114] See id.

[115] Oscar S. Cisneros, ICANN: The Winners Are , Wired News, Nov. 16, 2000, at http://www.wired.com/news/print/0,1294,40228,00.html (last visited Jan. 9, 2001) [hereinafter Cisneros, Winners]. NeuLevel is composed of Neustar, Inc. and Melbourne IT, Ltd. Id. See also .Biz Homepage, at http://www.nic.biz (last visited August 24, 2001).

[116] See ICANN, Melbourne Meeting Topic: New TLD Agreements, Feb. 26, 2001, at http://www.icann.org/melbourne/new-tld-agreements-topic.htm (last visited Feb. 28, 2001). Dot-biz, along with dot-info, dot-name, and dot-pro are for relatively large, unsponsored TLDs. An “unsponsored” TLD operates under policies established by the global Internet community directly through the ICANN process. Id.

[117] See id. The first top level domain to be approved was “.biz.” Esther Dyson, ICANN’s chair, stated that JVTeam was “a strong candidate” and seemed “like the clearest established player” according to interviews based on an online transcript of the board meeting. Id.

[118] See Cisneros, Dot-Biz(ness), supra note 111, at http://wired.com/news/print/0,1294,40270,00.html.

[119] Id.

[120] See id. JVTeam, Application/New TLD Policy Proposal, at http://www.icann.org/tlds/biz4/TLDPolicyPropbiz.htm (last modified Aug. 15, 2000). Additionally, NeuLevel is offering the option for these businesses to register certain information with a participating ICANN-accredited registrar so registrars can create business directories for consumers to more easily locate the registrant on the Internet. Id. See e.g., Cisneros, Winners, note 115, at http://www.wired.com/news/print/0,1294,40228,00.html. A dot-com domain might range from a successful, highly funded e-tailer to a 13-year-old’s page devoted to model airplanes. In sharp contrast, dot-biz domains are strictly for business. Id. See generally .Biz, About Us, at http://www.nic.biz/aboutnl/index.html (last visited Aug. 24, 2001).

[121] Cisneros, Winners, supra note 115, at http://www.wired.com/news/print/0,1294,40228,00.html. RegistryPro is comprised of register.com, Virtual Internet and Baltimore Tech. Id. Dot-pro would allow Joyce Farrel, a doctor, to register as joycefarrel.med.pro. If Joyce were an attorney, she could register as joycefarrel.law.pro. Id. See also Kate Marquess, Yes, ICANN Turn .Pro, 87 A.B.A. J. 24, Feb. 2001, available athttp://www.abanet.org/journal/feb01/nican.html (last visited Nov. 7, 2001). As part of its bid to run the dot-pro site, RegistryPro proposed an advisory board of professional associations to establish criteria for domain name applicants. Id.

[122] See ICANN, Questions to and Answers from Applicant for .pro, at http://www.icann.org/tlds/pro2/qa.html (last visited Nov. 11, 2001).

[123] See id. at *2. RegistryPro focused on individual rather than institutional registrations. In its preliminary research, it concluded that market penetration would average 26% of the worldwide individual professionals. Id.

[124] Cisneros, Winners, supra note 115, at http://www.wired.com/news/print/0,1294,40228,00.html.

[125] See ICANN, Melbourne Meeting Topic: New TLD Agreements, at http://www.icann.org/melbourne/new-tld-agreements-topic.htm (posted Feb. 26, 2001). Dot-museum, along with dot-aero and dot-coop are “sponsored” TLDs. A sponsored TLD is a specialized TLD that has a sponsoring organization representing the narrower community that is most affected by the TLD. The sponsoring organization is in charge of policy-formulation responsibilities over TLD matters. Id. See generally ICANN, New TLD Program, supra note 110, at http://www.icann.org/tlds.htm. The extent to which policy-formulation responsibilities are appropriately delegated to a sponsor depends on the characteristics of the organization that may make such delegation appropriate. The sponsored TLD must be operated in a fashion that is in accord with ICANN-developed requirements regarding interoperability, availability of registration data, and that which is intended to ensure that the interests of the Internet as a whole are addressed. Id.

[126] See .Museum homepage, at http://www.musedoma.org. See also Jacobus, supra note 73, at http://news.cnet.com/news/0-1005-200-3730464.html. The MDMA is a newly formed nonprofit organization and its founding members are the International Counsel of Museums and the J. Paul Getty Trust. Id.

[127] See ICANN, “.air” Top Level Domain Application: Executive Summary and Conclusions, Sept. 29, 2000, at http://www.icann.org/tlds/air1/Executive Summary and Conclusions.htm (last visited Feb. 28, 2001).

[128] See id. at *1 – *2. SITA is a cooperative, non-profit organization fully owned by its members. SITA serves over 725 members that belong to every sector of air transport: airlines, airports, air freight, computerized reservation systems, aircraft manufacturing, air traffic control, civil aviation, and airport services. SITA also provides IT solutions and telecommunications services on a worldwide basis. Id.

[129] See id. at *4.

[130] Cisneros, Winners, supra note 115, at http://www.wired.com/news/print/0,1294,40228,00.html. SeeICANN, Poptel Ltd.: Registry Operator’s Proposal, at http://www.icann.org/tlds/co-op1/Main%20copy%20-%20co-op%20-%20web.htm (last visited Feb. 28, 2001). Poptel is a long-standing, England-based Internet company that provides high quality services mainly to organizations in the social economy and social enterprise sectors. Poptel’s sponsor is the National Cooperative Business Association (NCBA). Id. See also NCBA homepage, at http://www.ncba.org.

[131] ICANN, supra note 130, at 2.2.1.1, at http://www.icann.org/tlds/co-op1/Main%20copy%20-%20co-op%20-%20web.htm. Poptel’s Profile of a target customer’ section lists different types of cooperative businesses such as: consumer cooperatives in the retail sector, agricultural cooperatives, banking and insurance cooperatives, etc. Id. See generally The International Cooperative Alliance Statement on the Cooperative Identity, at http://www.umich.edu/~nasco/principles.html (last visited Nov 7. 2001).

[132] ICANN, Global Name Registry Application to ICANN, at http://www.icann.org/tlds/name1/index1.html (last visited Oct. 28, 2001).

[133] See generally ICANN, Questions to and Answers from Applicant for .name, .nom, and others, at http://www.icann.org/tlds/name1/qa.html (last visited Feb. 28, 2001).

[134] Cisneros, Winners, supra note 115, at http://www.wired.com/news/print/0,1294,40228,00.html.

[135] See id.

[136] See generally ICANN, Questions to and Answers from Applicant for .info, .site, and .web, at http://www.icann.org/tlds/info1/qa.html (last visited Feb. 28, 2001).

[137] Jacobus, supra note 73. Some of these domain name registrars include VeriSign, which acquired Network Solutions; Register.com; and Tucows. Id.

[138] See .Info, About Afilias, at http://www.afilias.info/about_afilias (last visited Aug. 24, 2001). Afilias’ mission is “to expand the Internet as a global resource that fosters communication, commerce, and community for the people of the world.” Id. See also Cisneros, Winners, note 115, at http://www.wired.com/news/print/0,1294,40228,00.html.

[139] Mueller, supra note 19.

[140] Oscar S. Cisneros, What to do with Domain Disputes?, Wired News, Nov. 13, 2000, at http://www.wired.com/news/print/0,1294,39992,00.html (last visited Jan. 8, 2001).

[141] Mueller, supra note 19, at *4.

[142] See id. at *4. Mueller states that illegitimate cybersquatting was so inexpensive to initiate, that much of it went unchallenged. Also, many legitimate registrants, if challenged in the courts, could not afford to defend their interests. Id.

[143] See id. Replacing national laws with global law is a highly sensitive issue. Id.

[144] See id.

[145] See id.

[146] See id.

[147] See id.

[148] Registrants are clients who contract with a registrar (a firm), who in turn collects payments and compiles the registrant’s information into a database that contains all domain names registered in a TLD. The database is maintained by a registry. Registries are the firms that proposed to administer the new TLDs.

[149] See ICANN, UDRP, supra note 13, at 4, at http://www.icann.org/udrp/udrp-policy-24oct99.htm.

[150] See id. at 4(a)(i)-(iii).

[151] Id. at 4(i).

[152] Id. at 4(b)(i)-(iii).

[153] See id.

[154] See id. at 4(k).

[155] See ICANN, Information Concerning Approval Process for Dispute-Resolution Service Providers, at http://www.icann.org/udrp/udrp-provider-approval-process.htm (last visited Nov. 11, 2001) [hereinafter ICANN, RSP Approval Process].

[156] See ICANN, UDRP, supra note 13, at 4(k), at http://www.icann.org/udrp/udrp-policy-24oct99.htm. This section states that if an administrative panel decides that the registrant’s domain name registration should be canceled or transferred, ICANN will wait ten business days after it is informed by the provider of the administrative panel’s decision before actually implementing the decision. ICANN will defer to the decision unless it has received official documentation from the registrant that it has commenced a lawsuit against the complainant. Accordingly, the decision will not be implemented and no further action will be taken if documentation is received. Id.

[157] See ICANN, RSP Approval Process, supra note 155, at http://www.icann.org/udrp/udrp-provider-approval-process.htm. ICANN proposes that sometime in the future, it will institute a more formal accreditation program.

[158] See id. at A.

[159] See id. at B.

[160] See id.

[161] Ellenbogen v. Pearson, Case No. D00-0001, at *1 (WIPO, Feb. 17, 2000) (ruling that pursuant to Paragraph 4(i) of the UDRP, the complainant is to be transferred the rights to his web-based music business, musicweb.com).

[162] John Caher, New Domain Arbitration Rules Get Results, N.Y. L.J., Mar. 14, 2000, available at http://www.nylj.com/stories/00/03/031400a2.htm.

[163] Ellenbogen, Case No. D00-0001, at *5 (WIPO, Feb. 17, 2000) (citing WorldWrestling Federation Ent. v. Bossman, Case No. 99-0001 (The WorldWrestling panel found it clear from the legislative history that ICANN intended the complainant to establish bad faith registration as well as bad faith use)). See also ICANN, Second , Oct. 25, 1999, Paragraph 4.5(a),a at http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm (last visited Oct. 1128, 20002001)

[hereinafter ICANN, Second Staff Report]. It based its finding on staff reports regarding the Policy and its considerations of comments received on the draft Policy at that time. The comments pointed out that cybersquatters frequently register names in bulk, without necessarily using all of the names immediately. The WIPO report, the DNSO recommendation, and the registrars group recommendation all required both registration as well as use in bad faith before the UDRP could be invoked. The Staff Report ultimately recommends that this requirement not be changed without study and recommendation by the DNSO. Id.

[164] Ellenbogen, Case No. D00-0001, at *6 (WIPO, Feb. 17, 2000).

[165] See id.

[166] See id.

[167] ICANN, Second , supra note 163, at 4.4, at http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm.

[168] EllenbogenCase No. D00-0001, at *7 (WIPO, Feb. 17, 2000).

[169] The panel’s conclusion is consistent with a United States District Court decision, Intermatic Inc. v. Toeppen, 947 F. Supp. 1227 (N.D. Ill. 1996) (holding that an intent by the domain name registrant to sell a domain name constitutes a commercial use’ under U.S. anti-dilution law, 15 U.S.C. 1125(c)).

[170] Caher, supra note 162, at 1.

[171] Associated Press, Madonna Wins Internet Dispute, N.Y. Times, Oct. 16, 2000, available at http://www.sonicnet.com/news/story.jhtml?genreNameForDisplay=Pop&genreDirectoryName=pop&id=1124134 (last visited Nov. 6, 2001).

[172] Madonna Ciccone, p/k/a Madonna v. Dan Parisi and “Madonna.com,” Case No. D2000-0847, at *1 (WIPO Oct. 12, 2000); see e.g., Julia Fiona Roberts v. Russell Boyd, Case No. D2000-0210 (WIPO May 29, 2000) (ruling that the domain name juliaroberts.com be transferred to complainant-actress Julia Roberts), available at http://arbiter.wipo.int/domains/decisions/html/d2000-0210.html; s, CMG Worldwide, Inc. v. James Dean Internet Club, Forum File 0002000094187 (NAF Apr. 11, 2000), available at http://www.arbforum.com/domains/decisions/94187.htm (ruling that the Jamesdean.net domain name should be transferred to the complainant, the exclusive worldwide agent for James Dean, Inc., the legal entity formed by the heirs of the late James Dean). See also Steven Bonisteel, Kidman Wins Nude-Domain Dispute; Tennis Stars Ace Theirs, Newsbytes.com, Feb. 5, 2001, at http://www.newsbytes.com/news/01/161519.html (last visited Oct. 28, 2001). Tennis stars Venus and Serena Williams and actress Nicole Kidman have also won cases against cybersquatters. Id.

[173] Madonna, Case No. D2000-0847, at *2 (WIPO Oct. 12, 2000).

[174] See id.

[175] See id.

[176] See id. at *5.

[177] See id.

[178] Gordon Sumner p/k/a Sting v. Michael Urvan, Case No. 2000-0596 (WIPO Jul. 24, 2000). See also Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, Case No. D2000-1532 (WIPO Jan. 25, 2001) . The three-member panel ruled that Jeff Burgar and the Bruce Springsteen Club had not violated the musician’s rights by registering the web site brucespringsteen.com. The Panel decided that although the domain name is identical to Bruce Springsteen’s common law trademark, Jeff Burgar demonstrated that he has legitimate interests or some rights in the domain name. Complainant failed to show that the domain name was registered and had been used in bad faith. Id. See also Reuters, Rock Star Springsteen Loses Cybersquatting Case, Feb. 7, 2001, at http://www.infowar.com/law/01/law_020801a_j.shtml (last visited Nov. 7, 2001). As of yet, Sting and Bruce Springsteen are the only “famous stars” to have been denied transfer of their common law trademark names. Id.

[179] Sting, Case No. 2000-0596 (WIPO Jul. 24, 2000).

[180] See id.

[181] See Margret Johnston, ICANN Domain Name Process Under Fire, CNN.com, Feb. 8, 2001, at http://www5.cnn.com/2001/TECH/internet/02/08/icann.under.fire.idg/index.html (last visited Oct. 28, 2001); see Ariana Eunjung Cha, Web Naming Group Hit From Within, Wash. Post, Feb. 15, 2001, available at http://www.washingtonpost.com/ac2/wp-dyn?pagename=article&node=&contentId=A7107-2001Feb14; see Elise Ackerman, Domain Name List to Expand by 7, SiliconValley.com, Nov. 16, 2000, at http://www0.mercurycenter.com/svtech/news/indepth/docs/icann111700.htm (last visited Oct. 28, 2001).

[182] Declan McCullaugh & Ryan Sager, Getting to Domain Argument, Wired News, Feb. 8, 2001, at http://www.wired.com/news/print/0,1294,41683,00.html (last visited Feb. 23, 2001).

[183] See id. Reuters, .Name Game, supra note 42.

[184] McCullaugh & Sager, supra note 182. See also David Curle, Making Matters Worse: What Problem is ICANN Trying to Solve?, Ubiquity, Nov. 27, 2000, at http://www.acm.org/ubiquity/views/d_curle_1.html (last visited Jan. 8, 2001). Curle, director and lead analyst at information industry research and advisory firm Outsell, Inc., states that the solution to add these particular TLDs does not seem to solve the main problem that it was intended to address: domain name disputes. “Each of the new domains is created and sponsored by companies that will own the registration process for that domain, after paying some hefty fees for a shot at winning the rights to registration fees in a specific domain. That’s no way to run a classification system If we are going to add more top-level domains, let ICANN consult a few librarians on some basic principles of classification before we muddy the waters unnecessarily.” Id.

[185] See Reuters, .Name Game, supra note 42. ICANN Chairman Vinton Cerf justifies the application fee, claiming it was necessary to fund ICANN and to make sure that companies submitting proposals were large enough to administer their chosen domain sufficiently. The companies, in effect, will make money by charging fees to register the domain as part of specific web addresses or universal resource locators. Id.

[186] Carolyn Duffy Marsan, ICANN Under Attack, The Standard, Feb. 8, 2001, at http://www.thestandard.net/article/display/0,1151,22068,00.html (last visited Feb. 23, 2001). LawProfessor Michael Froomkin recommended that ICANN select all applicants for new top-level domains who can show technical competency. Id.

[187] ICANN, Criteria for Assessing TLD Proposals, supra note 102.

[188] See id. at 1 (a) (g) (stating the specific aspects of Internet stability ICANN chose to consider).

[189] Proof of concept refers to “applications that clearly articulate what concept or proposition the proposal would test, how the results of that test should be evaluated, and how the results of the evaluation would assist in the long-range management of the DNS.” Id. at 2.

[190] See id. at 3 (a) (g) (setting forth examples of competitive issues that were to be considered in evaluating proposals).

[191] See id.

[192] See ICANN, Proposed Unsponsored TLD Agreement: Appendix J (.info), at http://www.icann.org/tlds/agreements/info/registry-agmt-appj-02mar01.htm (last visited Mar. 5, 2001); ICANN, Proposed Unsponsored TLD Agreement: Appendix J (.biz), at http://www.icann.org/tlds/agreements/biz/registry-agmt-appj-05mar01.htm (last visited Mar. 5, 2001); see also ICANN, Advisory Concerning Unqualified .info “Sunrise” Registrations, at http://www.icann.org/announcements/icann-pr14aug01.htm (last modified Aug. 14, 2001). Requirements state that ”

[t]o qualify for a sunrise registration, the applicant for a domain name must have a registered trademark of national effect that was issued before

[October 2, 2000], and the trademarked word(s) must exactly match the domain name.” Id. See generally Marquess, Yes, ICANN Turn .Pro, supra note 121, at 24-25. RegistryPro’s proposal included three key provisions recommended by ICANN’s Intellectual Property Constituency to protect trademark rights: (1) the domain will offer a sunrise period for trademark holders, giving them first dibs on names; (2)contact information on registrants will be put in a searchable database of domain names, making it easier to track down trademark infringers; and (3) it agreed to abide by the UDRP. The trademark community strongly supports RegistryPro’s provisions. Id. at 24-25. See generally Aparna Kumar, Is It Too Late for Sex.Coop?, Wired News, Feb. 8, 2001, at http://www.wired.com/news/print/0,1294,41609,00.html (last visited Feb. 23, 2001); Stewart Taggart, ICANN Readies for Land’ Rush, Wired News, Mar. 12, 2001, at http://wired.com/news/print/0,1294,42363,00.html (last visited Mar. 13, 2001).

[193] Professor A. Michael Froomkin, Prepared Statement Before U.S. House of Representatives, Committee on Energy and Commerce, Subcommittee on Telecommunications, Is ICANN’s New Generation of Internet Domain Name Selection Process Thwarting Competition?, Feb. 8, 2001, available at http://www.law.miami.edu/~froomkin/articles/commerce8Jan2001.htm (last visited Mar. 5, 2001).

[194] See id. Alan Davidson, who is the deputy director of the Center for Democracy and Technology has adopted this criticism. He also stated that “While we do not believe the Commerce Department and Congress should intervene in the initial selection decision, they have a role in this reform.” Id.

[195] David McGuire, ACLU Fires Shot Across ICANN’s Bow, Newsbytes, Jan. 18, 2001, at http://www.nbnn.com/news/01/160718.html (last visited Jan. 19, 2001).

[196] Dina ElBoghdady, Domain Losers Take Fight to Congress, Wash. Post, Jan. 12, 2001, available at http://www.washingtonpost.com/wp-dyn/articles/A49159-2001Jan11.html.

[197] Jacobus, supra note 73 (citing Karen Marie Kitterman, an attorney with Palo Alto, California-based Fenwick and West).

[198] Letter from American Civil Liberties Union and Cyber-rights Groups to Commerce Department Regarding New Domain Names, Jan. 16, 2001 (on file with the ACLU), available at http://www.aclu.org/congress/l011601a.html (last visited Jan. 19, 2001)

[hereinafter ACLU Letter]. The following groups and individuals took part in writing the letter: Barry Steinhardt, Associate Director and Laura W. Murphy, Washington National Office Director of the American Civil Liberties Union; Barbara Simons, Past-President of the Association for Computing Machinery; Hans Klein, Chair of the Computer Professionals for Social Responsibility; Andrew Shen, Policy Analyst of the Electronic Privacy Information Center; and A. Michael Froomkin, Professor at the University of Miami School of Law. Id. at *5 – *6. “It would be a violation of federal law and of due process for NTIA

[National Telecommunications and Information Administration] to consent to any plan that required individuals to consent to the UDRP as a condition of enjoying a government benefit such as registration in a new gTLD.” Id. at *2. See also ACLU Press Release, Citing Free Speech Concerns, Cyber-Rights Groups Call for Hearings on Internet Domain Name Decisions, The American Civil Liberties Union, Jan. 17, 2001, available at http://www.aclu.org/news/2001/n011701a.html (last visited Feb. 4, 2001).

[199] Brock N. Meeks, Domain Name Selection Process Under Fire, MSNBC, Feb. 8, 2001, at http://www.msnbc.com/news/528384.asp (last visited Feb. 23, 2001).

[200] ACLU Letter, supra note 198, at *1.

[201] See id. The letter urges that ICANN’s recommendations of new TLDs not be approved until the selection process undergoes additional scrutiny. Id.

[202] See id. at *3.

[203] See id.

[204] See id. When the Board did seek more information concerning these applications, the staff could not provide it, since it lacked a sufficient record on which to base its decisions. Id.

[205] See id.

[206] See id.

[207] See id. For example, the Letter states that “ICANN rejected the .union’ proposal based on an unfounded speculation that the international labor organizations that proposed the gTLD were somehow undemocratic. The procedures being used gave the proponents no opportunity to reply to this unfounded accusation.” Also, dot-iii was rejected due to worries that the name would be hard to pronounce, despite the fact that the ability to pronounce a TLD had never been used as a decision factor. Id. at *4. For more details regarding the petitions for reconsideration filed by participants post-Board meeting, visit http://www.icann.org/committees/reconsideration/.

[208] ACLU Letter, supra note 198, at *1. The letter states that the Administrative Procedure Act applies to any decision by the Department of Commerce, or any agency or agent of the U.S. Government, to establish a new TLD outside the previously existing procedures described in the relevant Internet Requests forComments (RFCs). Id.

[209] See id at *4.

[210] See id.

[211] See id. at *1.

[212] See id. at *4.

[213] See id. at *4. Furthermore, before adopting the standards, these procedures require that the adopting agency engage in a process of independent deliberation, which normally includes public notice and comment. Id.

[214] See id.

[215] See generally Interview by Kathleen E. Fuller with Michael Froomkin, 2001 Duke L. & Tech. Rev. 0001, Feb. 28, 2001, at http://www.law.duke.edu/journals/dltr/ARTICLES/2001dltr0001.html (last visited Mar. 5, 2001). Froomkin states that “if [ICANN] is a state actor, then the Department of Commerce may not use it to avoid the rulemaking requirements of the APA If it is private, then the Department of Commerce’s delegation of policymaking powers to a private group is too broad here to be constitutional.” Id. at *1.

[216] See ACLU Letter, supra note 198, at *5. See also Professor A. Michael Froomkin, Prepared Statement Before the Senate Commerce, Science and Transportation Committee Communications Subcommittee, ICANN Governance, Feb. 14, 2001, available at http://www.personal.law.miami.edu/~froomkin/articles/senate-feb14-2001.html (last visited Mar. 5, 2001). The Department of Commerce asserts that its relationship with ICANN is not subject to the APA. The cyber-rights groups do not agree with this characterization. However, they argue that even if the Department does not accept that the APA applies here, the fundamental requirements of fairness, due process and the need to make reasonable decisions dictate that it is in the Department’s favor to comply with the APA’s basic requirements. Id. at *8.

[217] Id. ICANN was meant to be organized as a standards body. It creates a problem when ICANN acts as a policy-making body instead of as a standard-making organization; “its decisions do not carry any presumption of regularity or correctness and the US Government cannot rubber-stamp its decisions without additional independent fact-finding and deliberation.” Id. at *1. S Interview by Cedar Pruitt, The Filter, with Karl Auerbach and Diane Cabell, Issues Surrounding gTLD Selection, Jan. 31, 2001, at http://cyber.law.harvard.edu/filter/coalition2.html (last visited Feb. 23, 2001).

[218] Cisneros, What to do with Domain Name Disputes?, supra note 140, at http://www.wired.com/news/print/0,1294,39992,00.html. See also Kieren McCarthy, Why ICANN’s Domain Dispute Rules Are Flawed: Part I, The Register, Jul. 11, 2001, at http://www.theregister.co.uk/content/6/20304.html (last visited Aug. 24, 2001).

[219] Kieren McCarthy, Why ICANN’s Domain Dispute Rules Are Flawed: Part I, The Register, Jul. 11, 2001, at *4, at http://www.theregister.co.uk/content/6/20304.html (last visited Aug. 24, 2001).

[220] See id. This lack of a clear definition makes it more difficult for a registrant to provide an effective response to a challenge. Id.

[221] See id. at *3.

[222] See ICANN, RSP Approval Process, supra note 155, at *1.

[223] ICANN, Rules for Uniform Domain Name Dispute Resolution Policy, Oct. 24, 1999, at 5(a), at http://www.icann.org/udrp/udrp-rules-24oct99.htm (last visited Sept. 1, 2000) [hereinafter ICANN, Rules for UDRP]. See also Section III(B), supra.

[224] McCarthy, supra note 219, at http://www.theregister.co.uk/content/6/20304.html.

[225] See id. For example, if the registrant has not checked his e-mail for a few days, he might only have a brief time to appoint a lawyer, write and submit a defense, and collect all the pertinent evidence and documents. Id.

[226] Cisneros, What to do with Domain Disputes?, note 140, at http://www.wired.com/news/print/0,1294,39992,00.html.

[227]See id. ICANN’s general counsel, Louis Touton, even agreed that the issue of forum shopping was a main concern in drafting the UDRP. Id.

[228] Id.

[229] DomainShame.com, at http://www.domainshame.com.

[230] See id.

[231] Id.

[232] See ICANN, Approved Providers, supra note 16, at http://www.icann.org/udrp/approved-providers.htm.

[233] See id.

[234] See Mueller, supra note 19, at *2. Mueller states that ” [d]ispute resolution providers who frequently find for trademark holders also happen to get the lion’s share of UDRP casesfiled.” Id. Mueller also presents statistical evidence that WIPO and NAF attract the largest number of dispute resolution customers 61 percent and 31 percent respectively and eResolutions only attracts 7 percent of cases. Id.

[235] See id.

[236] See id. One way the UDRP attempts to compensate for the forum shopping problem is by allowing defendants the option of paying cash to go to a three-member arbitration panel. Then, the defendants and the trademark holder can choose individual panelists from any accredited dispute resolution service provider. Id.

[237] See id at *9.

[238] See id.

[239] See id.

[240] See id. In Mueller’s UDRP study, the results clearly exemplify this point. For example, WIPO ruled in favor of the complainant 67.5% of the time, and the respondent 16.6% of the time, while 15.8% of cases were terminated or settled. NAF outcomes came out for the complainant 71.5%, and the respondent 17.5% of the time, and were terminated or settled 11% of the time. eResolutions, however, illustrated more of a split, ruling for the complainant 44.2%, and respondent 41.9% of the time, and cases were terminated or settled 14% of the time. Id.

[241] See id. at *2. The study is based on the first 500 cases decided under the UDRP and partial information about the first 1200 cases.

[242] Id. at *9.

[243] McCarthy, supra note 219, at http://www.theregister.co.uk/content/6/20304.html.

[244] Domainshame.com, supra note 229.

[245] Mueller, supra note 19, at *11.

[246] See id. In this section of Mueller’s paper, he provides a study that he performed to determine whether the ability of complainants to choose RSPs biases outcomes. He uses data from the first 621 cases with decisions from December 1999 to June 2000 and analyzes the market share of the first three RSPs to see whether it correlates with outcome. He concludes that the differences in market share (WIPO dominates the service, taking in about 61% of the cases, while eResolution’s share has always been the smallest.) does relate to outcome. Four factors that might explain the difference in RSP market share are (1) price of the service one would expect lower-priced providers to have a larger market share which is not the case; (2) the complainant loss rate; (3) the international reputation of the RSP and/or the arbitrators in their pool; and (4) the speed with which the service providers make decisions. Id. at 12-13. In sum, the second factor, complainant loss rate, is very significant when correlated with choice of provider. Also, price does impact the RSP selection, so it is interesting that eResolutions has one of the lowest prices, but the lowest market share. Id. at *15.

[247] Domainshame.com, supra note 229.

[248] See id. DomainShame.com compares the dictionary definition of “arbitration” to ICANN’s use of “arbitration.” According to http://www.dictionary.com, “arbitration” is the “process by which the parties to a dispute submit their differences to the judgment of an impartial person or group appointed by mutual consent or statutory provision.” However, the UDRP is “mandatory for all domain name holders as it is a compulsory requirement of all ICANN accredited registrars to include this in the registration agreement, the arbitration panels are chosen by the complainant not by mutual consent and, as the evidence shows, the panels are not impartial.” Id.

[249] Id.

[250] See id. E.g., The domain name magic.com, which was registered in 1989, was recently challenged by a company whose trademark was not registered until years later. Id.

[251] White Paper, supra, note 20, at *20.

[252] Mueller, supra note 19.

[253] See id. at *11. Mueller further states that any application of the UDRP that unnecessarily poses a threat to stability of legitimate name ownership should be strongly discouraged because there are large switching costs involved in changing domain names. Id.

[254] Oscar S. Cisneros, Domain Fights Could Get Nasty, Wired News, Nov. 13, 2000, at http://www.wired.com/news/politics/0,1283,40129,00.html (last visited Oct. 28, 2001).

[255] See id.

[256] See id.

[257] See id.

[258] Id.at *1. ICANN’s vice president and general counsel makes this deduction based on the fact that there are no trademark rights in a TLD (dot-web for example) based on provision of registration services in that same TLD. Id. Trademark disputes are only one example of the kinds of disputes that ICANN is expected to face now that the top level domains have been introduced. In the patent realm, a company named “e2P limited” has claimed undisclosed patent rights to a particular technology it claims “makes every word or letter available as a new TLD.” Id. at *2.

[259] See Marquess, Yes, ICANN Turn .Pro, supra note 121, at 25. Steve Metalitz, president of the Intellectual Property Constituency states, “We have concerns over the open domains,” referring to dot-biz, dot-info and dot-name. He also states that “[u]nrestricted domains could cause a land rush for names followed by a new rash

[sic] of cybersquatting suits.” Id. at 25.

[260] White Paper, supra note 20, at *7.

[261] See notes 141-143, supra.

[262] See Jeri Clausing, In New Forum for Domain Name Disputes, Trademark Holders Dominate, N.Y. Times, May 19, 2000, at *4, available at http://www.nytimes.com/library//tech/00/05/cyber/cyberlaw/19law.html. Toren, an attorney with Sidley Austin Brown & Wood in New York, has represented both sides in the ICANN dispute resolution process. Although he advises clients to reap the benefits of the relatively new system, he still finds aspects of the process quite disconcerting: “I don’t think it’s a fair process. I don’t think it’s well organized. I think it’s entirely stacked in favor of trademark holders I think it’s great if you can get a quick decision. But this is not justice.” Id. at *4.

[263] Mueller, supra note 19, at *15.

[264] See Part IV, infra.

[265] Mueller, supra note 19, at *9.

[266] See Litman, supra note 6, at *2.

[267] Mueller, supra note 19, at *15.

[268] See id. at *15.

[269] ICANN was established as a standards body, therefore, these duties would naturally fall within the organization’s purview.

[270] Mueller, supra note 19, at *15.

[271] Id. at *15.

[272] Id. at *15.

[273] Id. at *4. See generally ICANN, UDRP, supra note 13, at 4(k). Complainants can always bring action against registrants in court, either before or after a UDRP case. Id.

[274] Mueller, supra note 19, at *15.

[275] See id.

[276] Mueller, supra note 19, at *15. Registrars are the companies that provide retail account maintenance and registration services for domain names. Id.

[277] See id.

[278] See id.

[279] See id.

[280] See id. Mueller stresses that ICANN would still need to accredit RSPs to ensure that they were impartial. Id.

[281] See id.

[282] See id.

[283] See id. at *15.

[284] See ICANN, Rules for UDRP, supra note 223, at 10, at http://www.icann.org/udrp/udrp-rules-24oct99.htm (last visited Oct. 28, 2001).

[285] “It may, at the request of a party or on its own motion, extend, in exceptional cases, a period of time fixed by these Rules or by the Panel.” See id. at (c).

[286] See id. at (d).

[287] See id. at (a) (e).

[288] Section III (C), UDRP Implications, .

[289] See ICANN, Information concerning Approval Process for Dispute-Resolution Service Providers, (a) (j), at http://www.icann.org/udrp/udrp-provider-approval-process.htm (last visited Sept. 1, 2000). Applications must contain: (1) an overview of the applicant’s capabilities and background in providing ADR services; (2) a list of the names and qualifications of the panelists and a description of the screening requirements the applicant has used in selecting panelists to be included on its list; (3) a description of training and educational measures the applicant proposes to use for listed panelists with respect to domain name disputes, the UDRP Policy and the UDRP Rules; (4) a copy of applicant’s proposed supplemental rules; (5) a description of how the applicant proposes to administer proceedings; and (6) a description of how the applicant intends to publish decisions of panels in proceedings it administers. Id.

[290] Id.

[291] ACLU Letter, supra note 198. McDonalds.com can easily coexist with McDonalds.farm. Id. at *2.