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Conflicts: Foreign Objects

The global top level domains aren't all that exist -- there are the two-letter country code domains too. They have a variety of ways of resolving disputes; some of them use the ICANN procedure, while others have a different procedure of their own. Some at ICANN would like their rules to be forced on everybody, and the recent bidding proposal to manage and expand the use of the .us domain explicitly requires that it be brought under the ICANN dispute policy.

Country Code Disputes Under ICANN Policy

In some country code domains, the authorities over that country's domain agreed to subject it to the same ICANN policies (including UDRP) as the global TLDs. This can be a treacherous situation, since the original purpose for having country code domains in the first place was to provide each country with a namespace that was solely subject to that country's laws, not a policy imposed by people outside the country. The degree of protection a particular trademark has can vary greatly from country to country, based on the laws of the different countries and the extent to which the trademark owner conducts business in a particular place. Different people can own the rights to the same name in different countries. One size definitely doesn't fit all in judging these disputes. But that seems to be what's happening in some of the cases. Look at the yahoo.ph case, in the Philippine country code, for instance. Yahoo is a globally famous trademark on the Internet, but Yahoo, Inc. doesn't have any specific presence in the Philippines. The respondent in this case is a company named Yahoo Computer Services, who has a company registration in that name with Philippine authorities, and is performing computer-related services for a local clientele. These services do not include running a search engine or directory of the Internet like Yahoo does. Maybe "Yahoo Computer Services" is a poor choice of name given the pre-existence of a more famous global entity, and maybe a Philippine court would force them to change their name if sued by Yahoo, but this would depend on Philippine law and the strength of Yahoo's trademark in the Philippines, something an outsider can't really judge.

The ICANN policy is, by its own language, not intended to settle all possible cases involving conflicting claims to a name. It's only intended for a limited subset of disputes, those which fall under the name of "cybersquatting" -- the cases where one party has trademark rights to a name, and a second party, having no rights whatsoever to the name, has registered it as a domain for bad-faith, exploitative purposes. The policy is not intended to decide who has "greater rights" to a name in cases where both parties have some claim to rights -- that's for a real court to decide. The ICANN policy is merely a faster, less expensive mechanism of resolving a narrow category of "easy cases". Unfortunately, some of the panelists seem incapable of reading and understanding the policy, and do regard their job as to weigh contending rights and decide whose are greater, often using a standard based on the interests of multinational corporations rather than the local standards of the place where the domain owner is located. The Philippine Yahoo case is such a case. The issue of whether a company has the right to conduct computer-related business in the Philippines using a name that is similar to the global Yahoo company is one which should be decided by Philippine courts, not an ICANN panel. The panelists should have limited their purview to determining whether the respondent was commonly known, in the Philippines, by the name "Yahoo", and whether they were conducting bona fide business under that name. Looking at their website (online at ycs.com.ph even if yahoo.ph has been transferred away by now) makes it clear that they are; the site looks to me like a legitimate business site, not something cobbled together to justify cybersquatting, or something designed to fool consumers into thinking it's the global Yahoo site or a Philippine affiliate of it. The panel had no business under the policy ordering this domain transferred, but they did anyway.

The panel's decision said: "There is no evidence that registration of a business name with the Department of Trade and Industry provides the registrant with any exclusive rights with respect to the business name." This is true, but beside the point. It is not necessary under the ICANN policy for the respondent to demonstrate exclusive rights to the name in question. They have only to demonstrate that they have some rights to the name, by any of several criteria including being commonly known by that name or having conducted business under it. The rights needn't be very strong, and they needn't even be necessarily able to hold up in court against stronger rights owned by the complainant, but the existence of any rights at all are sufficient, in the wording of the policy, to prevent transfer of a domain. If only the panelists would actually follow the policy...

Country Code Disputes Under Different Policies

Some country-code domains are not under the ICANN policy, but have their own dispute policy. One of them is the .uk domain of the United Kingdom, which has a dispute procedure that consists of a mediation phase where an attempt is made to reach a mutually acceptable resolution, followed by arbitration (apparently conducted similarly to the ICANN panels) if no resolution is arrived at voluntarily.

One company that was dragged through this procedure is Findlay Steele Associates, who registered the domain fsa.co.uk in good faith as a logical address for their small consulting company. A few months later, however, the British government announced the creation of the Financial Services Authority, a large agency that regulates finanical markets in the U.K., which took the domain fsa.gov.uk. Some of their own attorneys, however, seem to have trouble remembering that address, and have repeatedly mistyped it as fsa.co.uk. Due to this, the agency alleged that the earlier registrant was violating the trademark law of "passing off" and causing confusion, and should be forced to give up their domain on this account despite the fact that the agency didn't exist yet when they registered it.

A dispute panel was convened, but the agency threatened to sue over the issue if they lost. However, the panel surprisingly decided in favor of the government agency despite finding no evidence of bad faith in the domain's registration or use. The British panels operate on different rules from ICANN's UDRP, which is often a good thing, but sometimes not so good, as in this case. However, unlike the UDRP, there is an appeal procedure, and the "little guys" took it, so the game wasn't over yet. After the domain owner agreed to configure their setup to reject email to addresses they are not using (instead of having a "wildcard" configuration that accepted mail to any address in that domain), the appeals panel regarded this as satisfactory and allowed the consulting company to keep their domain. However, the possibility still exists of the government agency taking the issue to court. If the domain gets suspended or transferred, you can find the original site at www.f-s-a.co.uk.

Incidentally, fsa.org.uk belongs to the Football Supporters Association, and as far as I know they're not getting challenged or sued over it. Also, fsa.com, fsa.org, and fsa.net all belong to different entities, none of which are, as far as I know, connected with the Financial Services Authority, even though fsa.com seems to be the site of a financial company with operations in the U.K.

The above case was one of the last to be decided under an older version of the U.K. policy; a new policy has begun since that, and was regarded by observers as being likely to be more fair than the UDRP (and perhaps more fair than the previous U.K. policy, as well), though the decisions so far have been overwhelmingly in the complainants' favor.

Unfortunately, this new policy is responsible for what seems to be one of the most wrongheaded domain dispute decisions ever, in early 2005: the decision to force the transfer of game.co.uk from its rightful owner (since 1995) to a retailer of games that is generically named "Game". Anybody who would enforce trademark rights over such a generic word, used to sell products for which it is generic, is downright evil in my book. The decision was subject to appeal, but does not seem to have been appealed. It now goes to a game store; I'm not sure if it's the one operated by the complainant in this case, since the corporate name seems slightly different.

More discussion of this case.

Canada has adopted a new policy, the CDRP, that's believed to be fairer than UDRP.

The .us domain has a policy (USDRP) which seems to be pretty similar to the UDRP.

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This page was first created 16 Aug 2001, and was last modified 04 Jun 2006.
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