ICANN Sticks Up for Trademark Holders

By Larry Seltzer  |  Posted 2005-05-05 Print this article Print

Opinion: Some people complain about systems designed to protect intellectual-property owners, but ICANN's dispute resolution seems well designed and beneficial.

Did you ever wonder what happens to those domains, like [BigCompanyname]sucks.com, that some guy registers to criticize BigCompany? Turns out theres a procedure for these things. Ive given ICANN (the Internet Corporation for Assigned Names and Numbers) a hard time in the past, but there are certainly positive aspects to its Uniform Domain-Name Dispute-Resolution Policy. Perhaps it wasnt designed for every problem involving domain names, but it deals effectively with the ones its designed for. The UDRP provides for an arbitration proceeding through which parties in dispute over a domain name can receive independent, expeditious and relatively inexpensive arbitration.
All registrars are required to require of their customers that they submit to arbitration in the event that a third party asserts that the domain name is identical or confusingly similar to its trademark, that the customer has no right to it or that it is being used in bad faith.
The "complainant" (the third party claiming that its name is infringed on by the domain name) picks one of four approved arbitration services known as "Dispute-Resolution Service Providers" (doesnt the computer industry have a way with words?) The arbitration panel can have a single panelist, in which case the complainant pays the fees to the arbitrator; or the respondent can opt for a three-member panel and share the costs. I spoke to trademark attorney Martin Schwimmer, who has represented trademark holders in these proceedings (and whose trademark blog is one of my current favorite reads). Schwimmer says he thinks that the UDRP is a success. Contrary to fears Ive heard from readers, there is no bottomless pit of fees involved, he says, and while trademark holders seem to win all the easy cases they bring, the deck isnt necessarily stacked against the little guy. Schwimmer represented Microsoft on one of those "easy cases," that of microsoftcustomerservice.com. Wayne Lybrand registered this domain without the permission of Microsoft and offered to sell it on eBay for $150,000, using the following sales pitch: "How many times a day do you think individuals and businesses access Microsofts [sic] websites. Right now there are 97,000.000 [sic] references and websites pertaining to Microsoft. Software, upgrades etc. Imagine how much business you will get..." When confronted by Microsofts counsel, Lybrand offered to sell the domain to Microsoft: "For the creativity of coming up with the Domain Name. I am willing to accept $1481.42 and a copy of Microsoft Office Full Version. I will remove the auction and transfer the name to Microsoft." Sweet. You may read the rest of the sordid details in the arbitrators report. Next page: The complaint procedure and outcome.

Larry Seltzer has been writing software for and English about computers ever since—,much to his own amazement—,he graduated from the University of Pennsylvania in 1983.

He was one of the authors of NPL and NPL-R, fourth-generation languages for microcomputers by the now-defunct DeskTop Software Corporation. (Larry is sad to find absolutely no hits on any of these +products on Google.) His work at Desktop Software included programming the UCSD p-System, a virtual machine-based operating system with portable binaries that pre-dated Java by more than 10 years.

For several years, he wrote corporate software for Mathematica Policy Research (they're still in business!) and Chase Econometrics (not so lucky) before being forcibly thrown into the consulting market. He bummed around the Philadelphia consulting and contract-programming scenes for a year or two before taking a job at NSTL (National Software Testing Labs) developing product tests and managing contract testing for the computer industry, governments and publication.

In 1991 Larry moved to Massachusetts to become Technical Director of PC Week Labs (now eWeek Labs). He moved within Ziff Davis to New York in 1994 to run testing at Windows Sources. In 1995, he became Technical Director for Internet product testing at PC Magazine and stayed there till 1998.

Since then, he has been writing for numerous other publications, including Fortune Small Business, Windows 2000 Magazine (now Windows and .NET Magazine), ZDNet and Sam Whitmore's Media Survey.

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