Trademark Disputes under the UDRP and Further Globalization of the World Wide Web.

ICANN, short for the “Internet Corporation for Assigned Names and Numbers,” has always been an organization tasked with international cooperation, but recently, ICANN has announced policies suggesting that the internet will become even more global than before—and it appears to been ceding some of its authority over the internet to interests of “multistakeholders” outside the United States.

By way of background, ICANN is actually a Los Angeles-based California nonprofit under § 501 (c)(3) of the Internal Revenue Code.  The company was formed in California in 1998.  Since that time, it has operated under a 1998 contract with the U.S. government, specifically the U.S. Department of Commerce’s National Telecommunications and Information Administration (“NTIA”).  ICANN was charged by the U.S. Government with the contractual responsibility of taking over the U.S. Government’s job of coordinating the Internet Assigned Numbers Authority (“IANA”) functions, which are services related to the Internet’s address book—the Domain Name System (“DNS”).  In simpler terms, ICANN is responsible for managing the vast array of IP addresses, domain names, and ensuring the global interoperability of the internet.

ICANN is also a primary authority for resolving domain name disputes involving trademarks.  All domain name registrars must follow the Uniform Domain-Name Dispute-Resolution Policy, referred to as the “UDRP.”  The UDRP was set up by ICANN and was adopted based on a 1999 report by the United Nations World Intellectual Property Organization (“WIPO”) to address the problems with conflicting domain names and trademark rights.  Trademark disputes and domain contests are often filed with ICANN approved dispute resolution service providers.  However, in the event of an unsuccessful domain dispute challenge, under the UDRP, to stop transfer of a domain name and challenge the ruling, a common course of action in the United States is to file a federal lawsuit challenging the decision under the Anticybersquatting Consumer Protection Act.  15 U.S.C. § 1125(d).

Signaling change, on March 14, 2014, ICANN and its President and C.E.O. since 2012, Fadi Chehadé, discussed action by the U.S. government that it characterized to be a “historic announcement…that it is ready to transfer its stewardship of the important Internet technical functions to the global Internet community.”  It is not clear exactly what the motivation would be to make the transfer(s), since ICANN has been the U.S. government’s controlling chaperone since 1998, but ICANN further indicated on its website that it was “maturing” into a “an effective multistakeholder organization” and that it would “convene the global community to develop the transition process from of the U.S. stewardship to a global community consensus-driven mechanism.”  Id.  What this means precisely is murky, but the sentiment is one of globalization and increasing multi-national control of the internet.  The “transition process” will be the subject of topics discussed at the “first community-wide dialogue about the development of the transitional process” set to begin March 23-27 during ICANN’s 49th Public Meeting, in Singapore in 2014.  The current U.S. government contract with the California Company, ICANN, expires in September 2015.

As of yet, it is unclear whether this “transfer of stewardship” to some variety of “multistakeholder organization” will have an impact on the UDRP rules that have governed trademark disputes thus far on the internet, but trademark holders and domain holders should pay close attention to any changes that may affect litigation of those disputes and dealing with cybersquatters.

John Buche is a shareholder at Buche & Associates, P.C., a law firm specializing in trademark disputes, including cybersquatting issues.

By John Buche, © 2014.