response to Metalitz

[Dan Krimm <dan@xxxxxxxxxxxxxxxx>]

Thanks to Mr. Metalitz for clarifying Mr. Chua's earlier comments.
Nevertheless, I see no reason why TLDs and 2LDs should be treated
substantively differently when it comes to ICANN jurisdiction over
trademark-related disputes.

I object to the provisions in the final draft report that apply such
jurisdiction to TLDs, and similarly I would object to an extension of such
jurisdiction to 2LDs, for essentially the same reasons: the "identifier"
capabilities of domain names (at any level) do not map properly onto
trademark regulatory regimes, and the claimed abuse (such as described in
the WIPO report cited, which appears to be at least 3 years old) relies
upon such claimed correspondence between these apples and oranges.

In short, domain names do not constitute "intellectual property" under
current IP legal regimes.  Therefore any claim of "collision" currently is
quite questionable in legal terms.  It is apparently being invented out of
thin air, without a sound legal basis.

To the extent that any national or international jurisdictions may be
ruling on such cases, it remains a matter of those well-defined public
jurisdictions to decide how those cases will be handled, and it is not a
matter for which ICANN has institutional capacity to usurp such
jurisdictions, unless it is to set up its own global legislation and
regulation, and its own court of law to adjudicate and enforce its
self-declared global law (this is essentially what an "expert panel" would
be, as described in the current draft report).  If ICANN were to attempt to
do this, it would be doing so without any just authority or public
accountability.  It would literally become an "outlaw."  (This is the basis
for the NCUC comment that such actions by ICANN would make it in liable
under U.S. laws governing freedom of expression, under the Joint Project
Agreement.)

ICANN simply does not (and should not) have jurisdiction to establish
preventive regulations applying trademark law in connection with any domain
names at any level.  As Prof. Mueller suggested, contention among
commercial applicants could be resolved simply using auctions, and
contention among noncommercial applicants could be resolved by lottery, in
neither case appealing at all to any sort of IP regulatory regimes.

Mr. Chua suggests that the UDRP is "potentially costly" yet the WIPO report
cited, for example, states:

"8.1 Curative Protection: the UDRP and New gTLDs

114. The strength of the UDRP lies in its proven efficiency as a means to
provide relief against the abusive registration of domain names that
correspond to trademarks. In addition, the UDRP takes account of the rights
or legitimate interests a holder may have in the disputed domain name. The
stable, and recently even increasing, number of cases under the UDRP
suggests, however, that it cannot completely exclude cybersquatting."

The WIPO report goes on to suggest that a simple amendment to the UDRP "to
require proof of registration or use in bad faith" could allow the UDRP to
address such disputes effectively.

If indeed there is to be any discussion about "preventive IP protection"
the first question is what jurisdiction should govern such regulations.
And the first answer is that ICANN has no authority or accountability on
its own merit to adjudicate IP regulations, especially because domain names
are not trademarks and cannot adhere to the pre-requisites of the
established trademark legal regime.

When there exists a global legal regime emerging from an accountable form
of public governance, then that world government can regulate ICANN
according to some global standard previously established under some
publicly accountable global policy-making process.  But for ICANN to
endeavor to do this on its own at this point would be to claim a global
governance authority that it does not have, and to usurp the legitimate
political fora that currently have such jurisdiction.