Domain Arbitration Already Drawing Critics

Is Michael Robertson, MP3.com CEO, a cybersquatter? Yes, according to a
ruling last month by the World Intellectual Property Organization, in one of
the first of what may be a series of controversial rulings under ICANN’s new
Uniform Dispute Resolution
Policy.


The panel from WIPO, one of three organizations authorized by ICANN to
arbitrate domain name disputes, ruled that Robertson registered the domain name talk-city.com back in 1997 for
the purpose of re-directing Internet users to his company’s site at MP3.com.


The case was submitted for arbitration by Talk City Inc. which operates a popular
virtual community at talkcity.com. As evidence that Robertson registered
talk-city.com in bad faith, arbitrators noted that MP3.com’s CEO also
registered domains including meta-crawler.com, meta-crawler.net, win-zip.com
and four-11.com — all presumably with the intention of grabbing traffic
from people who mistype the address of popular Internet sites. The WIPO
panel, which was headed by Debevoise & Plimpton partner David H. Bernstein,
ordered Feb. 29 that the registration of the domain name talk-city.com
be transferred to Talk City Inc.


MP3.com officials did not respond to requests for comment.


The ruling by the WIPO panel was among the first to break loose from a
logjam of domain cases pending before arbitrators. Later this month, dozens
of decisions will come down as arbitrators hew to the 60-day expedited
process established under ICANN’s UDRP.


The vast majority of disputes are being
adjudicated by arbitrators from WIPO, or by the National Arbitration Forum, the
Minnesota-based international network of former judges, attorneys, and law
professors. A third approved provider, Montreal-based eResolution, has been selected to
arbitrate only a handful of the more than 100 pending cases — despite its
stellar
list of arbitrators, who include leading Internet scholars and lawyers.


According to Michael Froomkin, a professor of law at the University of Miami
and one of the co-founders of eResolution, ICANN erred in setting up the
arbitration process by allowing the complainants, which are usually
trademark holders trying to get control of a domain, to select which of the
three arbitrators to use.


“On paper this process should be fair, but I foresee a serious danger. Since
plaintiffs get to choose the arbitration provider, this creates an economic
incentive for companies to compete on being pro-plaintiff if they want
business,” said Froomkin.


Froomkin believes that accredited registrars should select which arbitrator
will handle cases involving their domain customers. He has co-authored a letter
to ICANN’s board of directors last month, asking the organization to take up
the issue at its next board meeting. However, the matter did not make it
onto the agenda for the ICANN meeting underway now in Cairo.


Ed Anderson, NAF managing director, said Wednesday that “forum shopping” is
standard practice among litigators, who seek to determine which court would
be most favorable to their claims. But Anderson defended the NAF’s
decisions.


“All of our arbitrators are independent former judges and are above
reproach,” said Anderson.


However, if the initial decisions by the WIPO and NAF arbitrators are any
indication, the new domain dispute process is tilted toward trademark
holders, according to Russ Smith, a domain speculator who holds hundreds of
domain registrations. Smith said the WIPO and NAF arbitra

tion panels have
ruled, for example, that a domain holder was acting in bad faith simply by
putting up a domain for sale — an act which Smith says is not prohibited
under ICANN’s policies.


“They’re digging for reasons to support the trademark holders, because
that’s what they are — trademark lawyers. Instead, they should be balanced
toward domain holders in general,” said Smith.


But Ethan Katsh, an eResolution co-founder and professor in the legal
studies department at the University of Massachusetts, said that it’s too
soon to tell whether arbitrators are misconstruing the domain rules in favor
of trademark holders.


“It’s appropriate to be concerned but it’s a little early to be worried. One
decision by one arbitrator isn’t going to control what other arbitrators on
other panels are going to do,” Katsh said.

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