The ICANNblog

S. 2661, A Fox in Sheep’s Clothing?

April 14th, 2008

By Chuck Kisselburg

In the March 28 issue of the New York Times there was an article titled, “Domain-Name Complaints Rise To a High Over Cybersquatting”. The story pointed out that complaints of cybersquatting were up to 2,156 in 2007; an increase of 18%.

To me, that was a large figure. However, it left me with the question of does that figure represent the whole industry or just WIPO? To confirm this I contacted WIPO to learn that the 2,156 figure quoted in the article represents the complaints being handled only by WIPO. So this tells me the number is actually higher.

When looking at ICANN’s UDRP (Uniform Domain-Name Dispute-Resolution Policy) there is a list of “Approved Dispute-Resolution Service Providers”. In my conversation with WIPO I learned that of the approved dispute-resolution service providers, WIPO handles about 50% - 60% of the cases being disputed. So that means of the 2,156 complaints being handled in 2007, the real number of UDRP cases is slightly less than double, or around 4,000 complaints in 2007 alone! What this means is the approximate 4,000 complaints are the complaints being handled by ICANN’s “Approved Dispute-Resolution Service Providers”. Then we need to think about other complaints that may not be going through any of ICANN’s service providers. Anyway, for me, the number is high and signifies this is a definite issue.

This also lets me know, however, that procedures DO exist to handle such complaints; and such procedures are being exercised.

In earlier posts (“Skipping Through the Senate Bill 2661 Mine Field” and “The Opportunity Surrounding Senate Bill 2661”) I discussed, or questioned the need for the Anti-Phishing Consumer Protection Act of 2008 (APCPA), introduced by Senator Snowe, other wise known as S. 2661. The bill’s title leads one to see that the bill’s title indicates the bill is geared around anti-phishing. I am all for this. In fact I received a phishing e-mail today. However, I objected, or more accurately, could not find the need to include a rather large section that addressed domain names. To me the bill feels like a fox in sheep’s clothing as the bill’s name suggests a bill against anti-phishing. Instead the bill not only discusses anti-phishing but seems to be based around the use, or misuse of domain names. What I objected to most was what I consider to be the vaguely-worded definition of what constitutes abuse. To be specific:

Section 3. Phishing; Related Deceptive Practices, (b), (2), (H).
…acquisition of multiple domain names which the person knows are identical or is confusingly similar to the name or brand name of a government office, nonprofit organization, business, or other entity…

So I started researching and found current procedures and laws in place today that rely on similar verbiage.

The Lanham act first enacted in 1947, says:

Title 15, Chapter 22, Subchapter 1, 1051, Section A-3-D.
“…to the best of the verifier’s knowledge and belief, no other person has the right to use such mark in commerce either in the identical form thereof or in such near resemblance thereto as to be likely, when used on or in connection with the goods of such other person, to cause confusion, or to cause mistake, or to deceive, except that, in the case of every application claiming concurrent use…”

The Anticybersquatting Consumer Protection Act in 2000 (ACPA) amended the Lanham Act by adding Section 43(d). The amended language includes the following verbiage:

Section 3002, (a), (d)(1), (ii), (I)
“in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;”

ICANN’s UDRP includes:
Section 4, “a”, (i)
“your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights…”

I see the term, “confusingly similar” has been used over the decades when referring to potential trademark infringement. So I humbly eat crow. Hmmmmm…. (Add a little habanero sauce and not bad! But I digress….)

When looking at the various bills and procedures I find the following:

UDRP: If awarded to the complainant, the domain name(s) in question are transferred to the complainant. No other fines are incurred.

With the revised Anticybersquatting Consumer Protection Act (ACPA) the fines are a minimum of $1,000 with a maximum fine of $100,000.

With the Anti-Phishing Consumer Protection Act (or S. 2661) the fines are $250 per violation with a maximum of $2,000,000. The courts would have the discretion to increase the maximum to $6,000,000.

So if I am a person who finds someone with a domain name that is “confusingly similar” to my trademarked name, I can go through the UDRP process, or some other non-ICANN approved UDRP process to have the domain name handed over to me. Once I have the domain name can I then take the former domain owner to court under the ACPA for purposes of cybersquatting to get damages up to $100,000? Once awarded my $100,000, could I then take the same former domain owner to court again under phishing abuse to go after another $2,000,000? Or would the ACPA trump the APCPA, or vise-versa?

This all seems rather inefficient and uncoordinated to me.

Through this process I have also been hearing CADNA (The Coalition Against Domain Name Abuse). While I see they are all against cybersquattting, domain tasting and domain kiting, (which I am too) CADNA states its approach as follows:

“CADNA will work to educate the public, lobby the relevant agencies of jurisdiction in the United States government, and actively communicate with members of Congress. Through these activities CADNA aims to effectively exert pressure on ICANN, propose draft legislation to increase the statutory damages set forth in the Anti-Cybersquatting Consumer Protection Act (ACPA) to take decisive action on abuses by domain name registrars and registrants, and work with the World Intellectual Property Organization (WIPO) to introduce an international anti-cybersquatting treaty.”

Hmmmmmmm…. So while I see a button on CADNA’s home page supporting Snowe’s Anti-Phishing Consumer Protection Act (S. 2661), why are we not seeing a similar button regarding efforts on amending Anticybersquatting Consumer Protection Act, or ACPA? When I look at what all CADNA stands for and I read Snowe’s S. 2661, I see what CADNA is all about in S. 2661. Personally I believe it is clever that CADNA’s charter is basically spelled out in a single Federal bill.

So while cybersquatting complaints are up, while there are several avenues for complainants to pursue their case, of which most are won by the complainant, and while there is a law in place for the complainant to recover any damages, I still feel S. 2661 is a fox in sheep’s clothing.

Call a bill what the bill is about! If we need an anti-phishing bill (ooops, received another e-mail!) then let’s have a bill that addresses anti-phishing. If we need to have damages increased due to cybersquatting, then let’s amend the Anticybersquatting Consumer Protection Act (ACPA) to reflect the increase in damages that can be collected. It has been done once with the ACPA amending the Lanham Act so you know it can be done again. As mentioned in previous posts, I personally do not own any domain names so can not be classified as a “Domainer” – in the best or worst sense of the word. I do, however know “Domainers” who work to ensure their domain names are not infringing upon any trademarks. I know Domainers who are working to develop their domains as unique business units. I do know the Executive Director of the Internet Commerce Association who is working to ensure a code of ethics among domainers and, through experience, have noticed first hand his even-keel approach.

Bottom line? Revise S. 2661 to focus on what the bill’s title indicates; that dealing with phishing. For issues regarding domain names, continue working through established UDRP processes and, if necessary, make the appropriate modifications to the current ACPA. The number of UDRP cases handled by WIPO in 2007 alone indicated procedures are in place and being exercised.

If someone can tell me why we need another bill, such as 2661, that also covers issues regarding domain name dispute resolution when we already have established UDRP procedures as well as the ACPA, please reply to this post as I am interested in understanding the need.

Entry Filed under: Site News, domaining, Community, ICANN Community, Legislative