Stanford/Yale Junior Faculty Forum
Research Paper 01-05
2001
Name Dispute Resolution Policy
Laurence R. Helfer
Loyola Law School, Los Angeles
This paper can be downloaded without charge from the
Social Science Research Network Electronic Paper Collection:
http://ssrn.com/abstract=275468
The Case of the Uniform Domain
Designing Non-National Systems:
Graeme B. Dinwoodie
Chicago-Kent College of Law
* Larry Helfer is Professor of Law at Loyola Law School, Los Angeles, and Graeme
Dinwoodie is Professor of Law at the Chicago-Kent College of Law. Copyright 2001, Laurence
R. Helfer and Graeme B. Dinwoodie. Thanks to Robert Mnookin, Judith Resnik, Hal Krent,
Michael Van Alstine, Brian Havel, Paul Stephan, and Roger Alford for reviewing early drafts
of this Article or discussing aspects of these fascinating issues with us. We also benefitted
greatly from presentation of the ideas contained herein in a variety of fora, including the
Stanford-Yale Junior Faculty Forum, the Ninth Annual Fordham Law School Conference on
International Intellectual Property Law and Policy, the Chicago-Kent College of Law Faculty
Mini-Roundtable, the Forum on Private International Law organized by the World
Intellectual Property Organization, and the International Law Weekend West Conference at
Pepperdine University School of Law. Work on this Article was supported by fellowships from
Chicago-Kent College of Law and Loyola Law School, Los Angeles.
141
DESIGNING NON-NATIONAL SYSTEMS: THE CASE OF THE
UNIFORM DOMAIN NAME DISPUTE RESOLUTION POLICY
LAURENCE R. HELFER & GRAEME B. DINWOODIE*
TABLE OF CONTENTS
INTRODUCTION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
I. HYBRID NON-NATIONAL SYSTEMS:
THE EXAMPLE OF THE UDRP . . . . . . . . . . . . . . . . . . . . . . . . . . .
A. Framing Trademark-Domain Name Conflicts . . . . . . . . . . . .
B. The Evolution of Non-National Dispute
Settlement for Cybersquatting . . . . . . . . . . . . . . . . . . . . . . . . .
1. The gTLD-MoU’s Administrative Challenge
Panels (ACPs) . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
a. The gTLD-MoU’s Authority for Creating the ACPs . . . . .
b. The Hybrid Nature of ACP Dispute Settlement . . . . . . . .
c. Narrowing the Scope of Eligible Disputes . . . . . . . . . . . .
2. The WIPO Domain Name Consultative Process . . . . . . . . . .
a. Authority for WIPO Consultations and Proposals . . . . . .
b. The Scope and Hybrid Nature of Dispute
Settlement Under WIPO’s Proposals . . . . . . . . . . . . . . . .
(1) WIPO’s Interim Report . . . . . . . . . . . . . . . . . . . . . . . . .
(2) WIPO’s Final Report . . . . . . . . . . . . . . . . . . . . . . . . . .
c. Assessment of the WIPO Process . . . . . . . . . . . . . . . . . . .
3. ICANN’s Review and Implementation of the UDRP . . . . . .
142 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
a. Expedited Implementation Timetable . . . . . . . . . . . . . . .
b. ICANN’s Authority for Creating the UDRP . . . . . . . . . . .
c. Narrowing the Scope of Eligible Disputes While
Maintaining a Hybrid Dispute Settlement Model . . . . . .
4. The UDRP in Practice . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
II. CHECKING FUNCTIONS IN THE UDRP . . . . . . . . . . . . . . . . . . . . . .
A. The Values of Hybridization in Non-National Systems . . . . .
B. Checking Functions in International Arbitration and
in the UDRP . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
1. Checking Functions in International Arbitration . . . . . . . .
2. Misplaced and Inadequate Arbitral
Checking Functions in the UDRP . . . . . . . . . . . . . . . . . . . . .
a. Creational Checking Functions . . . . . . . . . . . . . . . . . . . .
b. External Checking Functions . . . . . . . . . . . . . . . . . . . . . .
c. Internal Checking Functions . . . . . . . . . . . . . . . . . . . . . . .
C. Checking Functions in Ministerial Decision-Making
Systems and in the UDRP . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
1. Checking Functions in Ministerial Decision-Making
Systems . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
2. Misplaced and Inadequate Ministerial
Checking Functions in the UDRP . . . . . . . . . . . . . . . . . . . . .
D. Checking Functions in International Adjudication
and in the UDRP . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
1. Checking Functions in International Adjudication . . . . . . .
2. Misplaced and Inadequate Adjudicatory Checking
Functions in the UDRP . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
a. Creational Checking Functions . . . . . . . . . . . . . . . . . . . .
b. External Checking Functions . . . . . . . . . . . . . . . . . . . . . .
c. Internal Checking Functions . . . . . . . . . . . . . . . . . . . . . . .
III. EXTENDING THE NON-NATIONAL MODEL OF
LAWMAKING AND DISPUTE SETTLEMENT . . . . . . . . . . . . . . . . . .
A. Replicating the UDRP: Are Technological
Monopolies Essential? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
B. Designing Checking Functions for
Non-National Systems . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
1. The Importance of Legitimacy . . . . . . . . . . . . . . . . . . . . . . .
2. Deliberative Construction in a Non-National Era:
The Case for Speed . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
2001] DESIGNING NON-NATIONAL SYSTEMS 143
3. Institutional Reform:
Refurbishing Non-National Lawmaking . . . . . . . . . . . . . . .
4. Horizontal Non-National Relations:
Competitive Federalism . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
5. Vertical Non-National Relations:
A UDRP Appellate Body? . . . . . . . . . . . . . . . . . . . . . . . . . . .
6. Relations Between Non-National and National Systems . .
a. Subsidiarity and Deference . . . . . . . . . . . . . . . . . . . . . . . .
b. Choice of Law in Non-National Systems . . . . . . . . . . . . .
c. Relative Influence of Different National
Legal Systems . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
7. Relations Between Non-National and International
Systems . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
CONCLUSION . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . .
144 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
1. See ALAN REDFERN & MARTIN HUNTER, LAW AND PRACTICE OF INTERNATIONAL
COMMERCIAL ARBITRATION 44-58 (1999) (discussing profusion of venues for institutional and
ad hoc arbitration); Jonathan I. Charney, Is International Law Threatened by Multiple
International Tribunals?, 271 RECUEIL DES COURS 101, 121-23 [COLLECTED COURSES OF THE
HAGUE ACADEMY OF INTERNATIONAL LAW] (1999) (discussing recent growth in number of
international courts and tribunals); Laurence R. Helfer, Forum Shopping for Human Rights,
148 U. PA. L. REV. 285, 298-99 (1999) [hereinafter Helfer, Forum Shopping] (discussing
expansion of fora in which international human rights claims can be reviewed).
2. Dispute settlement institutions created by governments include permanent juridical
bodies expressly empowered to hear claims concerning violations of treaties and more
informal quasi-judicial tribunals or review bodies, whose interpretive and remedial powers
are more ambiguous. Compare, e.g., Statute of the International Court of Justice, Oct. 24,
1945, 59 Stat. 1055 (establishing International Court of Justice), and Understanding on Rules
and Procedures Governing the Settlement of Disputes, Apr. 15, 1994, [hereinafter DSU], and
Marrakesh Agreement Establishing the World Trade Organization [hereinafter WTO
Agreement]; and Legal Instruments—Results of the Uruguay Round, Annex 2, LEGAL
INSTRUMENTS—RESULTSOFTHEURUGUAYROUND, 31, 33 I.L.M. 112 (1994) (establishing WTO
dispute settlement panels and Appellate Body), and Convention for the Protection of Human
Rights and Fundamental Freedoms as amended by Protocol No. 11, Eur. T.S. No. 155
(establishing permanent European Court of Human Rights), with, e.g., Optional Protocol to
the International Covenant on Civil and Political Rights, adopted Dec. 16, 1966, G.A. Res.
2200, 21 U.N. GAOR, Supp. No. 16, at 52, 59, U.N. Doc. A/6316, 999 U.N.T.S. 171 (entered
INTRODUCTION
The rapid development of digital technologies is profoundly
altering the means by which transborder disputes are settled and,
in turn, how rules governing transborder activity are developed. A
defining characteristic of digital technologies is their ability to
transcend territorial boundaries, thereby challenging the unfettered
jurisdiction of any single nation-state and complicating the application
and enforcement of existing legal rules. Disputes implicating
such technologies account for an increasingly significant portion of
commercial litigation, and digital commerce has become a central
feature of contemporary economic activity. National governments
and private parties have thus come under pressure to find new ways
to cut through the complex, cross-border disputes of the type that
digital technologies engender.
Can existing lawmaking and dispute settlement mechanisms
handle these growing pressures? The number of institutions
operating outside the confines of national borders have become
more numerous and heterogeneous in the last decades of the
twentieth century. Indeed, their growth appears ex-ponential.1
Whether created by governments2
or by private parties,3
however,
2001] DESIGNING NON-NATIONAL SYSTEMS 145
into force Mar. 23, 1976) (establishing U.N. Human Rights Committee), and International
Convention on the Elimination of All Forms of Racial Discrimination, opened for signature
Mar. 7, 1966, 660 U.N.T.S. 195, 212-38 (entered into force Jan. 4, 1969) (establishing the
Committee on the Elimination of Racial Discrimination).
3. Institutional and ad hoc arbitration are the principal mechanisms by which private
parties settle their differences internationally. See, e.g., the International Chamber of
Commerce (ICC), at http://www.iccwbo.org (last visited Oct. 2, 2001); the London Court of
International Arbitration (LCIA), at http://www.lcia-arbitration.com/lcia (last modified May
24, 2001); the International Centre for Settlement of Investment Disputes (ICSID), at
http://www.worldbank.org/icsid (last visited Oct. 2, 2001). For a complete list of institutional
and ad hoc arbitration options, see http://www.internationaladr.com/coordina.htm (last visited
Oct. 2, 2001). For a discussion of how international arbitration operates, see infra Part II.B.
4. The term “international” generally refers to the classic public international law
paradigm that conceives of international law and its institutions as exclusively affecting
nation-states. See IANBROWNLIE,PRINCIPLESOFPUBLICINTERNATIONALLAW 59 (4th ed. 1990)
(“It is states and organizations (if appropriate conditions exist) which represent the normal
types of legal person on the international plane.”).
5. The term “supranational” is “typically used to identify a particular type of
international organization that is empowered to exercise directly some of the functions
otherwise reserved to states.” Laurence R. Helfer & Anne-Marie Slaughter, Toward a Theory
of Effective Supranational Adjudication, 107 YALE L.J. 273, 287 (1997). These functions are
exercised in part by forming linkages with private parties, including individuals, groups,
corporations, and voluntary organizations. Supranational adjudication, therefore, has been
defined as
adjudication by a tribunal that was established by a group of states or the entire
international community and that exercises jurisdiction over cases directly
involving private parties—whether between a private party and a foreign
government, a private party and her own government, private parties
themselves, or, in the criminal context, a private party and a prosecutor’s office.
Id. at 289.
6. The term “anational” has frequently been used to describe efforts to “de-localize”
commercial arbitration between private parties in different jurisdictions and to reduce the
control that national legal systems exercise over such arbitration. Hans Smit, A-National
Arbitration, 63 TUL. L. REV. 629, 631 (1989). From a broader perspective, two features have
historically distinguished anational laws and institutions from international and
supranational ones. First, anational institutions (including their dispute settlement
mechanisms) are created principally by private parties with no or only limited assistance from
states. Second, anational laws are not always an autonomous body of rules distinct from
national law; rather they often incorporate or draw upon one or more national law sources.
Id. at 632-33.
inter-national dispute settlement mechanisms (broadly construed
as encompassing classical international,4
supranational,5
and
anational6
mechanisms) share a common characteristic, one that
might be termed “deliberative construction.” International dispute
settlement mechanisms do not spring up overnight. Instead, they
are carefully built, often with agonizing slowness, through a process
of give-and-take among negotiators wrangling over the subject
146 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
7. Henry H. Perritt, Jr., The Internet is Changing the Public International Legal System,
88 KY. L.J. 885, 896 (2000) (“The actual process of treaty negotiation begins with months or
even years of preparatory work.”); Kal Raustiala, Democracy, Sovereignty, and the Slow Pace
of International Negotiations, 8 INT’L ENVTL. AFF. 3 (1996) (noting the slow pace of
international negotiation and lawmaking).
8. See Graeme B. Dinwoodie, A New Copyright Order: Why National Courts Should
Create Global Norms, 149 U. PA. L. REV. 469, 503-15 (2000) [hereinafter Dinwoodie, A New
Copyright Order].
9. See, e.g., YVES DEZALAY & BRYANT G. GARTH, DEALING IN VIRTUE: INTERNATIONAL
COMMERCIAL ARBITRATION AND THE CONSTRUCTION OF A TRANSNATIONAL LEGAL ORDER 7
(1996) (noting the “competition” among different arbitral centers); Andrea Kupfer Schneider,
Getting Along: The Evolution of Dispute Resolution Regimes in International Trade
Organizations, 20 MICH. J. INT’L L. 697, 770 (1999) (noting that states that are parties to the
NAFTA and the WTO Agreement may choose the dispute settlement mechanism of either
body as a forum in which to commence proceedings).
10. See infra Part III.B.1. (discussing the importance of legitimacy to international
dispute settlement).
matter of disputes, the procedures for adjudicating them, the
identity of parties who can bring claims, and the authority of the
decision makers who will rule on those claims.7
Deliberative construction also allows governments and private
parties the time to create checking mechanisms to control the power
of international dispute settlement decision makers and to maintain
the fidelity of those decision makers to the goals of the institution’s
founders. These checking mechanisms, in turn, prompt decision
makers to adopt methodologies that internalize those goals.
Deliberate speed thus serves to legitimize international institutions,
which lack the intrinsic authority of national insti-tutions of
democratic states.8
Yet even when slowly and carefully built, international dispute
settlement structures still intrude on national sovereignty by
supplanting (or rivaling) the role of national courts or the use of
national laws as rules of decision. And parties to international
disputes often have a choice of venues where their controversy
might be decided.9
As a result, international institutions exert only
a tenuous hold on actors, and maintaining legitimacy and the
appearance of legitimacy is crucial to their success.10
The jurists,
arbitrators, and experts who serve on international dispute settlement
bodies are aware of these concerns and respond to them by
adopting incrementalist decision-making strategies. That is, they
typically seek to build their authority slowly by paying careful
2001] DESIGNING NON-NATIONAL SYSTEMS 147
11. For recent examples, see Waste Mgmt., Inc. v. United Mexican States ICSID (W. Bank)
No. ARB(AF)/98/2 ¶¶ 8-9 (June 2, 2000) (strictly interpreting conditions precedent to NAFTA
chapter 11 dispute settlement and dismissing claim where claimant had not fully complied
with those conditions); Southern Bluefin Tuna Case (Austl. and N.Z. v. Japan), Award on
Jurisdiction and Admissibility, Aug. 4, 2000 (ICSID panel refusing to exercise jurisdiction
over claims based on overlapping fisheries conservation treaties where one treaty arguably
required consent of all contesting parties); Robert Azinian v. United Mexican States ICSID (W.
Bank), No. ARB(AF)/97/2 (Nov. 1, 1999) (first NAFTA chapter 11 dispute settlement decision,
construing expropriation narrowly and refusing to exercise jurisdiction over breaches of
concession agreements); United States--Import Prohibition of Certain Shrimp and Shrimp
Products, WT/DS58/AB/R ¶¶ 151-56 (Oct. 12, 1998) (WTO Appellate Body crafting a balancing
test between the right of WTO members to preserve exhaustible natural resources and the
duty to respect the trade rights of other members); India—Patent Protection for
Pharmaceutical and Agricultural Chemical Products, WT/DS50/AB/R (WTO Appellate Body,
Dec. 19, 1997) (WTO Appellate Body reminding the first WTO TRIPS dispute settlement
panel that the agreement of the parties as expressed in the treaty is paramount in
interpreting the TRIPS agreement).
12. See REDFERN & HUNTER, supra note 1, at 50 & n.76 (noting that as of 1996,
International Chamber of Commerce handled 9000 arbitration cases since its founding in
1923, of which more than 5000 were filed after 1980); Philip Alston, Effective Function of
Bodies Established Pursuant to United Nations Human Rights Instruments: Final Report on
Enhancing the Long-Term Effectiveness of the United Nations Human Rights Treaty System,
U.N. ESCOR, 53d Sess., Agenda Item 15 ¶ 7, U.N. Doc. E/CN.4/1997/74 (1996) (noting recent
increases in the number of communications being processed under the various United Nations
human rights complaints procedures); Robert Y. Jennings, The International Court of Justice
after Fifty Years, 89 AM. J. INT’L L. 493, 497-505 (1995) (noting recent growth in the docket
of the International Court of Justice and discussing proposals to alleviate it); The European
Court of Human Rights: Historical background, organisation and procedure ¶¶ 6-7 at
http://www.echr.coe.int/eng/EDocs/InfodocRevised2.htm (last visited Oct. 2, 2001) (discussing
large increase in Court’s case law in 1980s after Court’s founding in 1950s). See generally
Katrina C. Szakal, Book Annotation: Manual on International Courts and Tribunals, 32
N.Y.U. J. INT’L L. & POL. 829, 858 (2000) (“International judicial institutions, some in place
since the end of World War II, have seen their dockets expand greatly, and new courts and
tribunals have been created to address specific aspects of international law and to hear cases
arising under various international conventions and treaties.”). One exception to this trend
occurs in special-purpose tribunals and claims commissions, which receive an initial flurry
of claims and then spend years adjudicating them and issuing only a select number of
decisions on the merits. REDFERN & HUNTER, supra note 1, at 59 & nn. 17-18 (discussing the
Iran-United States Claims Tribunal and the United Nations Compensation Commission).
attention to the written agreements that created them and by
adhering closely to the mandates given by those who constructed the
institution.11
In addition, it often takes years for a functioning
dispute settlement institution to reach maturity, attracting a steady
diet of cases and developing a reputation as a place where
controversies can be handled fairly and effectively.12
For social activity such as digital commerce that reinvents itself
on a daily basis, however, reliance on leisurely processes to address
148 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
13. The Internet almost necessitates a non-national mindset. However, although digital
activities have been a precipitating factor in the recent development of non-national
lawmaking, we do not restrict our analysis to laws affecting on-line activities. Many
transborder events or disputes implicate normative and pragmatic issues that are similar to
those that Internet-based disputes have forced us to consider. Indeed, an undernoted service
of the Internet may have been to cast light on the false premises of existing analyses of the
off-line world. Cf. André Lucas, Aspects de Droit International Privé de la Protection d’Oeuvres
de Droits Connexes Transmis Par Réseaux Numériques Mondiaux [Private International Law
Aspects of the Protection of Works and Objects of Related Rights Transmitted Through Digital
Networks], WIPO Doc. No. GCPIC/1, ¶ 8 (Nov. 25, 1998) (“It is indeed the great achievement
of [the] Internet, after satellites, to have created an obligation to rediscover the international
aspects of this discipline, too long masked, by overshooting the timid territorialism ....”).
14. In this Article, we use the term “non-national” to refer to lawmaking and dispute
settlement structures that arise outside the sphere in which the nation state operates (both
internally and in its relations with other states). Non-national lawmaking, like national
lawmaking, has several institutional components. Here, we focus primarily on the dispute
settlement mechanisms of non-national systems. These mechanisms themselves possess the
capacity to make law through the generative power of adjudication. And by their reflection
on (and of) the process by which they were created, they influence and offer insights into the
broader lawmaking process. For a discussion of the diverse elements that comprise nonnational
systems, see infra Part II.A. and III.A. (discussing hybridization of non-national
rules and their enforcement through private technologies).
15. Cf. Council for Trade-Related Aspects of Intellectual Prop. Rights, WTO, Electronic
Commerce Work Programme: Submission from Australia, Doc. No. IP/C/W/233, ¶ 44 (Dec. 7,
transborder issues is particularly inapt and inept. Yet any attempt
to establish too swiftly an institution to resolve such conflicts, or the
too rapid enhancement by such an institution of its powers to deal
with the new issues raised by digital activity, would clash with the
deliberative construction and incrementalist decision-making
qualities that have historically characterized international dispute
settlement. Far more ominously, such efforts also may subvert both
the legitimacy of international systems and the ability to create
checking mechanisms that constrain the authority of dispute settlement
decision makers.
In this Article, we address the challenge confronting private
parties and governments seeking to resolve the problems of inherently
transborder activity such as that generated by digital
technologies.13
We explore and critically assess the rapid growth of
a new form of lawmaking, which we call “non-national,”14
that has
developed contrary to the traditional premises of deliberative construction
and incrementalist decision making and that, in less than
two years, has established itself as the leading exemplar for
resolution of transborder problems.15
The Uniform Domain Name
2001] DESIGNING NON-NATIONAL SYSTEMS 149
2000) [hereinafter Electronic Commerce Work Programme] (suggesting that the UDRP has
“arguably become a de facto international standard” for the resolution of cybersquatting
disputes), available at http://docsonline.wto.org/DDFDocuments/t/IP/C/W233.doc; WIPO.
16. ICANN is a not-for-profit corporation that was created by the U.S. government to
operate the domain name system, among other things, in accordance with parameters set by
the Commerce Department. Management of Internet Names and Addresses, 63 Fed. Reg.
31,741 (1998). As explained more fully below, it authorizes individual registrars to issue
domain names in the generic top level domain names, and the administration of country code
top level domains is delegated by ICANN (formerly by the Internet Assigned Numbers
Authority) to authorities (“managers”) in the relevant country. See infra Part I.B.3.
17. Uniform Domain Name Dispute Resolution Policy (Oct. 24, 1999), at http://www.
icann.org/udrp/udrp-policy-24oct99.htm [hereinafter Policy]; Rules for Uniform Domain Name
Dispute Resolution Policy (Oct. 24, 1999), at http://www.icann.org/udrp/udrp-rules-
24oct99.htm [hereinafter UDRP Rules].
18. See Torsten Bettinger & Dorothee Thum, Territorial Trademark Rights in the Global
Village – International Jurisdiction, Choice of Law and Substantive Law for Trademark
Disputes on the Internet (Part One), 31 I.I.C. 162, 163 (2000) (“Hitherto, the most frequent
cause of legal disputes on the internet has been the infringement of trademark rights.”).
19. See WORKING GROUP ON INTELLECTUAL PROPERTY RIGHTS, INFORMATION
INFRASTRUCTURE TASK FORCE, INTELLECTUAL PROPERTY AND THE NATIONAL INFORMATION
INFRASTRUCTURE (1995); LAWRENCE LESSIG, CODE, AND OTHER LAWS OF CYBERSPACE (1999);
Graeme B. Dinwoodie, The Death of Ontology: A Teleological Approach to Trademark Law,
Dispute Resolution Policy (UDRP or the Policy) was promulgated by
the Internet Corporation for Assigned Names and Numbers
(ICANN)16
in late 1999 to govern a narrow class of conflicts between
domain name registrants and trademark owners.17
The UDRP is a
new legal creature unlike any of its international dispute settlement
antecedents. It is a hybrid system containing an amalgam of
elements from three decision-making models—judicial, arbitral, and
ministerial—and it draws inspiration from international and
national legal systems. However, neither the UDRP’s substantive
content nor its prescriptive force necessarily depend upon the laws,
institutions, or enforcement mechanisms of any single nation-state
or treaty regime.
It should come as no surprise that intellectual property law is
providing the paradigm for new legal regulation of the transborder
issues raised by digital technologies. Nowhere is the pressure to
devise new lawmaking and dispute settlement mechanisms more
keenly felt than in intellectual property law.18
Intellectual property
rights are at the heart of cyberspace: they protect the computer code
that forms the architecture of cyberspace, the text, images, and
sounds that comprise the bulk of on-line content, and the symbols
that guide consumers through the maze of e-businesses.19
However,
150 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
84 IOWA L. REV. 611 (1999) (discussing effect of technological advances on trademark law);
Sabra Chartrand, Trademarks Gain Attention as Passports to the Internet and for a Critical
Vote Ahead in Congress, N.Y. TIMES, Sept. 25, 2000, at C8 (noting the increasingly important
role of trademarks to Internet commerce because of the effect that trademark ownership has
on the ability to obtain corresponding domain names).
20. The “inspiration” came in the form of substantive minimum standards of protection
embodied in the treaties. See generally Dinwoodie, A New Copyright Order, supra note 8;
Laurence R. Helfer, Adjudicating Copyright Claims Under the TRIP Agreement: The Case for
a European Human Rights Analogy, 39 HARV. INT’L L.J. 357, 367 (1998) [hereinafter Helfer,
Adjudicating Copyright Claims]. Adherent states are, however, free to provide protection in
excess of the minimum standards. Agreement on Trade-Related Aspects of Intellectual
Property Rights, Apr. 15, 1994, WTO Agreement, supra note 2, Annex 1C; LEGAL
INSTRUMENTS–RESULTS OF THE URUGUAY ROUND, vol. 31, 33 I.L.M. 81 (1994), art. 1(1).
21. See WTO Agreement, supra note 2. Leading pre-TRIPS international intellectual
property agreements permitted a claim for violation of the treaty to be referred to the
International Court of Justice. Berne Convention for the Protection of Literary and Artistic
Works (1971 Paris text), 1161 U.N.T.S. 3, art. 33; Paris Convention for the Protection of
Industrial Property, Mar. 20, 1883, as last revised at Stockholm, July 14, 1967, art. 28, 21
U.S.T. 1583, 828 U.N.T.S. 305. However, because of a lack of effective enforcement
mechanisms, no state invoked the dispute settlement provisions. J.H. Reichman, Enforcing
the Enforcement Procedures of the TRIPS Agreement, 37 VA. J. INT’L L. 335, 339 n.17 (1997).
the very same technologies that make intellectual property rights
an increasingly pervasive part of a digitally networked world also
enable infringements of those rights on a massive scale, generating
new tensions between intellectual property owners and users over
the allocation of legal entitlements and the proper definition of
legitimate, noninfringing on-line activities.
Yettheinternationalintellectual property system has historically,
and paradoxically, been territorial in nature. Rather than developing
a worldwide dispute resolution mechanism or a globally
uniform intellectual property code, states that are parties to the
major intellectual property treaties adopted a more decentralized
approach during more than a century of incremental treaty
revisions. They consigned the day-to-day enforcement of intellectual
property rights to private party actions before national courts
applying treaty-inspired domestic intellectual property laws and
conflicts rules.20
Serious and systemic treaty breaches were reserved
for state-to-state dispute settlement mechanisms, such as the one
now operated under the auspices of the World Trade Organization.21
Such a system may function effectively when the key acts relating
to intellectual property ownership and infringe-ment can be
localized within a particular national jurisdiction, but it is ill-suited
2001] DESIGNING NON-NATIONAL SYSTEMS 151
22. For a recent discussion, see American Bar Association Global Cyberspace Jurisdiction
Project, Achieving Legal and Business Order in Cyberspace: A Report on Global Jurisdiction
Issues Created by the Internet 120-31 (July 11, 2000), reprinted at 55 BUS. LAW. 1801 (2000)
[hereinafter Cyberspace Jurisdiction Project]; Dinwoodie, A New Copyright Order, supra note
8, at 483-85 (discussing the need for dynamism in international copyright law); id. at 490-94
(discussing the limits of the classical model of public international copyright law).
To some extent, developments in EU intellectual property demonstrate that public
international lawmaking can respond effectively to the demands of digital technologies. But
intellectual property lawmaking in the EU is markedly different in character from the
classical form of international intellectual property lawmaking law found at the global level.
Id. at 495-97. To replicate the EU developments globally would require structural political
reforms, including the transfer of sovereignty and the establishment of standing institutions,
which almost no country would currently contemplate. And there would be no guarantee that
what has worked well in a relatively homogenous region such as the EU could do so in a more
diverse global setting. See generally THE EU, THE WTO AND THE NAFTA: TOWARD A COMMON
LAW OF INTERNATIONAL TRADE (J.H. Weiler ed., 2000).
23. See, e.g., Susan Carpenter, Who Owns Your Name? Usually, It’s Whoever Registered
It First, NEWSDAY, Sept. 27, 2000, at C14; Jeri Clausing, In New Forum for Domain Name
Disputes, Trademark Holders Dominate, N.Y. TIMES, CyberLaw Journal, May 19, 2000,
available at http://www.nytimes.com/library/tech/00/05/cyber/cyberlaw/19law.html; Orrie
Dinstein & Elisabeth Cappuyns, Pitfalls in ICANN’s Domain Name Dispute Policy, N.Y.L.J.,
Sept. 19, 2000, at 1; ICANN Call It What I Want, THE ECONOMIST, Sept. 9, 2000, available at
2000 WL 8143536; Clive Mathieson, Easy Group plays down domain name setback, THETIMES
OF LONDON, Sept. 21, 2000, at 33; Jon Swartz, Profiteers Get Squat for Web Names:
Cybersquatters Lose Intellectual Property Rulings, USA TODAY, Aug. 25, 2000, at 1B; Wall
Street Journal wins domain name case, THE TORONTO GLOBE & MAIL, Sept. 21, 2000, at T2.
24. See, e.g., Victoria Carrington, Internet needs fast, fair dispute resolution process, THE
LAWYERS WEEKLY, Nov. 17, 2000 (asking “whether the UDRP system that is now confined to
bad faith registrations ought to be and/or is capable of being expanded to include a broader
range of intellectual property disputes that take place on the Internet”).
25. Some have suggested that a system modeled on the UDRP would supplement or even
supplant national court adjudication of the copyright infringement issues raised by the “notice
and takedown” rules imposed upon Internet Service Providers in the United States and
to address the kinds of fast-developing, multi-jurisdictional conflicts
that digital technologies can engender.22
Indeed, the speed with
which transborder conflicts now arise, both in the intellectual
property context and elsewhere, suggests that a leisurely pace of
lawmaking and institution building may simply be inadequate to
the challenges at hand.
Precisely because of its departure from preexisting (and slower)
models of lawmaking, the UDRP has received widespread press
coverage and public scrutiny.23
It has already been touted by
scholars and policy makers as a model for settling cyberspace
intellectual property disputes generally24
(including digital copy-
right),25
and even for all Internet-related disputes.26
Demand to
152 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
Europe. For further discussion, see infra Part III.A.
26. See Cyberspace Jurisdiction Project, supra note 22, ¶ 1.4.7 (describing UDRP as a
“promising example” for creating “new forms of dispute resolution” by private parties and
governmental bodies for Internet disputes that cross national borders). See also Hearings
Before the Subcomm. on Telecommunications of the House Comm. on Energy and Commerce,
107th Cong. (2000) (testimony of D. Vinto G. Cerf, Chairman of ICANN) (referring favorably
to unnamed commentator who labeled the UDRP as “‘widely viewed as a model of dispute
resolution for the 21st Century’”); Hearings Before the Subcomm. on Courts and Intellectual
Property of the House Comm. on the Judiciary, 106th Cong. (2000) (statement of Mark A.
Thurman of the American Intellectual Property Law Association) (“The UDRP is a good
example of an administrative procedure specifically developed for the Internet context. The
efficacy of this administrative procedure suggests that similar procedures might be effective
in resolving other types of Internet disputes.”); A. Michael Froomkin, Wrong Turn in
Cyberspace: Using ICANN to Route Around the APA and the Constitution, 50 DUKE L.J. 17
(2000) [hereinafter Froomkin, Wrong Turn in Cyberspace] (suggesting both extended and
novel applications of ICANN’s private lawmaking model); House Subcommittee Explores
Internet Jurisdiction Issues, 1 INTERNET L. & BUS. 822, 824 (2000) (reporting testimony of
government officials concerning development of “private sector codes of conduct” for on-line
consumer transactions enforced through alternative dispute resolution mechanisms); Tim
Cole, ICANN Domain Name Dispute Policy - Year One, METRO. CORP. COUNS. 31 (2001)
(Assistant Director of Arbitration for National Arbitration Forum heralding UDRP “as a
model of dispute resolution for the 21st Century: a system specifically designed to serve
specific parties with specific issues”).
27. Within six months of the commencement of proceedings under the UDRP, the World
Intellectual Property Organization (WIPO) announced that it was undertaking a study of the
proposed expansion of the Policy at the behest of a number of countries. WIPO has just issued
its final report recommending some expansion of the UDRP. See WIPO, The Recognition of
Rights and the Use of Names in the Internet Domain Name Process, Report of the Second
WIPO Internet Domain Name Process (Sept. 3, 2001) [hereinafter Final Report, Second WIPO
Internet Domain Name Process], available at http://wipo2.wipo.int/process2/ report/pdf. For
further discussion of WIPO’s lawmaking role with respect to the domain name system, see
infra Part I.B.3.
28. Digital filing of pleadings and e-mail communication between the dispute settlement
panel and the parties is the norm. The cost of initiating the proceeding ranges from $750 and
$2000 per challenged domain name for a one-person panel and $2200 to $4500 for a threeperson
panel. Procedural rules and timetables are strictly enforced, with most decisions
issued within 45 days of the filing of a complaint. For details concerning each of the four
UDRP dispute settlement providers, see http://www.arbforum.com/domains/domainrules020101.asp
(last visited Oct. 3, 2001); http://arbiter.wipo.int/domains/rules/
supplemental.html (last visited Oct. 3, 2001); http://www.cpradr.org/ICANN_RulesAndFees.
extend the UDRP is likely only to increase as the pressures of
globalization and the digital economy render traditional forms of
lawmaking less practical and less normatively compelling.
At present,27
however, the UDRP covers only a narrow segment
of the myriad of intellectual property disputes currently percolating
in cyberspace. In essence, the UDRP establishes fast and inexpensive
on-line procedures28
that allow trademark owners to
2001] DESIGNING NON-NATIONAL SYSTEMS 153
htm (last visited Oct. 3, 2001); and http://www.eresolution.ca/services/dnd/p_r/supprules.htm
(last modified Sept. 23, 2001).
29. The UDRP rests upon several central concepts defined in the Policy, principally “bad
faith” registration and “use” by persons who have no “rights or legitimate interests” in a
domain name. For a discussion of these terms, see infra Part I.B.3.
30. Cf. Paul B. Stephan, The Futility of Unification and Harmonization in International
Commercial Law, 39 VA. J. INT’L L. 743, 796 (1999) (attempting to “shift the focus of private
international law scholarship from substantive law to the lawmaking process”).
recapture domain names held by persons who register and use
domain names containing those marks in bad faith.29
Although the substantive content of the UDRP raises important
issues of intellectual property law, we are concerned primarily with
the process by which the UDRP was created, the way in which it is
operating, and the conditions necessary for its replication.30
Therefore, while recognizing the important interconnections
between substance and process, Part I provides an historical
overview of the UDRP’s genesis: from the initial proposal by a
consortium of Internet stakeholders, to its advocacy by the United
States government, to its study by the World Intellectual Property
Organization (WIPO), and the final revisions and implementation
by ICANN. We also explain in Part I how the UDRP evolved from
three different decision making models: adjudication, arbitration,
and ministerial decision making. Although the drafters of the UDRP
chose this hybrid structure to suit the needs of its inherently
transborder setting, they did not foresee that the blending of these
three systems would produce a confused mandate for UDRP panels.
Part II builds upon this insight by explaining the problematic
nature of the checking functions within the UDRP. It contrasts the
new hybrid dispute settlement system with its separate arbitral,
ministerial, and judicial antecedents, noting in each case the
inadequate or skewed checking functions established to control
UDRP panels. We contend that the conceptual blurring of checking
mechanisms created strong incentives for panelists to eschew
incrementalist decision-making methods and inevitably gave
momentum to the development of the Policy beyond its purportedly
limited scope.
In Part III, we first address whether the UDRP can be applied in
the absence of exclusive technological control of the type that
ICANN now exercises over the domain name system. We conclude
154 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
31. Dan L. Burk, Trademarks Along the Infobahn: A First Look at the Emerging Law of
Cybermarks, 1 RICH. J.L. & TECH. 1, ¶ 30 (Spring 1995), at http://www.richmond.
edu/JOLT/v1i1/burk.html (“Domain names ... appear to be both names and addresses; they
both locate and identify Internet resources.”); Marshall Leaffer, Domain Names, Globalization
that such technological control is a sufficient but not a necessary
condition for replicating the UDRP. But such replication should not
occur without first questioning how a non-national paradigm ought
to be structured. In particular, we identify the conceptual variables
that will affect the viability of all non-national structures. These
variables primarily flow from our analysis of the UDRP, but they
have relevance far beyond that context. Indeed, legitimate and
effective non-national structures cannot be developed without first
giving careful attention to the parameters within which such
structures operate, and to their relationship with national, international,
and supranational institutions that until now have been
the sole mechanisms for regulating transborder conduct.
I. HYBRID NON-NATIONAL SYSTEMS: THE EXAMPLE OF THE UDRP
In this Part, we present a historical overview of the UDRP’s
formation. In particular, we focus on how its progenitors came to
establish a hybrid decision-making structure that draws on
elements found in arbitration, adjudication, and ministerial
decision-making systems. We also illustrate the complex interplay
between government and private lawmaking bodies that characterized
the UDRP’s evolution. In doing so, we contrast the drafters’
official history, which emphasizes the openness of the lawmaking
process that created the UDRP, with the views of critics who
challenge its legitimacy. Before turning to these narratives, we first
explain the context in which trademark-domain name disputes
arise.
A. Framing Trademark-Domain Name Conflicts
The need for domestic and international laws to regulate the
interface between trademarks and domain names arises from the
complex nature of domain names. Domain names designate Internet
Protocol addresses used by computers linked to the Internet, and
they may also act as source-identifiers (i.e. as trademarks).31
Indeed,
2001] DESIGNING NON-NATIONAL SYSTEMS 155
and Internet Governance, 6 IND. J. GLOBAL LEGAL STUD. 139, 145 (1998) (domain names both
designate where information is to be sent on the Internet and they often “indicate origin”).
32. See generally Graeme B. Dinwoodie, (National) Trademark Laws and the (NonNational)
Domain Name System, 21 U. PA. J. INT’L ECON. L. 495 (2000) [hereinafter
Dinwoodie, National/Non-National].
33. Registration by individuals or corporations occurs with respect to the second level
domain names, that is, the part of the domain name appearing before the top level domain
name. For example, in the domain name coke.com, “coke” is the second level domain name
and .com is the generic top level domain. No single individual owns the top level domains.
34. The present generic top level domain names include .edu, .com, .gov, .org, .net, .int,
and .mil, although ICANN has approved the creation of a variety of new top level domain
names. In addition to the generic top level domains, domain names can be registered in
country code top level domains (ccTLDs). The administration of ccTLDs is delegated by
ICANN (formerly by the Internet Assigned Numbers Authority) to authorities in the relevant
country. See generally Diane Cabell, Foreign Domain Name Disputes 2000, 17 COMPUTER &
INTERNET LAW. 5 (Oct. 2000).
35. Even within the United States, which has the most developed body of case law
concerning domain name conflicts, courts have struggled to adapt traditional trademark
doctrines such as likelihood of confusion, dilution, and trademark fair use to the domain name
system. See Jessica Litman, The DNS Wars: Trademarks and the Internet Domain Name
System, 4 J. SMALL & EMERGING BUS. L. 149, 151, 154 (2000) (noting the mixed success by
U.S. trademark owners seeking to use “the trademark law already on the books” to challenge
ownership of domain names assigned under the first-come-first-served policy).
36. See WIPO Joint Resolution on Well-Known Marks, Joint Resolution Concerning
Provisions on the Protection of Well-Known Marks, General Report of the Assemblies of the
Member States of WIPO, 34th Annual Meeting, Doc. A/34/16 ¶¶ 171-83 (Sept. 1999) (adopting
provisions on the use of well-known marks in domain names).
existing trademarks can be registered as domain names.32
However,
various aspects of the domain name system pit that system against
basic principles of trademark law. The low cost of domain name
registration relative to the costs of building goodwill in a trademark,
the uniqueness of each string of alphanumeric characters as an
Internet address, and the global Internet presence that each
address establishes, have spawned repeated conflicts between the
owners of trademarks and domain name registrants. It is, however,
the first-come-first-served regis-tration policy for second level
domain names33
in the three principal Generic Top Level Domains
(gTLDs)34
that is the primary cause of conflict. This policy permits
ownership of a domain name incor-porating a trademarked term to
reside in someone other than the relevant mark owner.
Reconciling the competing interests of trademark owners and
domain name registrants has not proved an easy task, either
nationally,35
or internationally.36
The territorial nature of trademark
rights, the lack of a single body of rules governing trademark-
156 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
37. In its narrowest incarnation, cybersquatting is the act of registering a second level
domain name that utilizes a preexisting trademark for the exclusive purpose of selling that
domain name to the trademark owner for a profit. J. THOMAS MCCARTHY, TRADEMARKS AND
UNFAIR COMPETITION §§ 25.69.1, 25.77 (1999). In courts, legislatures, and commentaries,
cybersquatting has provoked an almost moral outrage and is often labeled as a form of
blackmail, ransom, or piracy that is a clear abuse of the domain name system. See id. § 25.77
(characterizing cybersquatting as “ransoming [a domain name] back to the legitimate owner”);
Litman, supra note 35, at 155 (noting that “domain name speculators struck courts as
profoundly offensive”).
38. E.g., Anticybersquatting Consumer Protection Act, Pub. L. No. 106-113, 113 Stat.
1536 (codified at 15 U.S.C. § 1125(d) (Supp. V 1999)).
39. Dinwoodie, National/Non-National, supra note 32, at 508 n.43 (citing cases from
China, France, Germany, India, and the United Kingdom). See also Domain Name
Cybersquatter Loses in Groundbreaking Japanese Litigation, 15 WIPO REP. 7 (2001) (same
under Japanese Unfair Competition Law); Seoul District Court Enjoins Use of Mastercard
Domain Name, 14 WIPO REP. 394 (2000) (reporting the use of Korean unfair competition law
against cybersquatting of registrations in the Korean country code domain).
40. For example, U.S. courts may not exercise personal jurisdiction over foreign
registrants merely because they have registered a domain name with a registrar based in the
United States. See Heathmount A.E. v. Technodome.com, 106 F. Supp. 2d 860 (E.D. Va. 2000).
For this reason, among others, Congress extended the basic cause of action available under
the ACPA to such registrations based upon the attachment jurisdiction of the courts. See 15
U.S.C. § 1125(d) (1994 & Supp. V 1999). But even that cause of action cannot enable U.S.
courts to reach foreign domain name registrants who register domain names with a foreign
registrar. The value of this in rem provision to trademark owners is seen in the concern
expressed by the International Trademark Association that provisions in the draft Hague
Convention on Jurisdiction and Recognition of Judgments, see infra Part III.B.7., might
require the United States to repeal the provision. See International Trademark Association,
Comments on the Preliminary Draft Convention on Jurisdiction and the Recognition of
J u d g m e n t s ( D e c . 1 , 2 0 0 0 ) a v a i l a b l e a t
domain name disputes, the difficulty of locating registrants, and the
possibility that different domain name registrants own multiple
iterations of a preexisting mark all make the prospect of litigating
before national courts protracted, expensive, and perhaps even
futile. Not surprisingly, trademark owners have expressed interest
in streamlined and inexpensive non-national dispute settlement
alternatives, particularly for disputes with a class of domain name
registrants known as cybersquatters.37
This demand for non-national cybersquatting dispute resolution
has persisted even as national legislatures have enacted new
statutes specifically to combat cybersquatting,38
and national courts
have applied existing unfair competition laws against it.39
Two
reasons in particular explain this continued pressure. First, the
ability of national law to reach domain name registrants located in
foreign jurisdictions is unsettled and controversial.40
Second,
2001] DESIGNING NON-NATIONAL SYSTEMS 157
http://www.uspto.gov/web/offices/dcom/olia/tmcybpiracy/haguecomments.pdf.
41. Between 1995 and November 1999, Network Solutions, Inc. (NSI) sought to implement
a series of nondiscretionary rules to regulate conflicts between trademark owners and domain
name registrants. Briefly stated, that policy used temporal priority to establish rights to
second level domain names that were identical to registered trademarks. If the trademark
owner’s registration predated the registrant’s purchase of the domain name, and if the
registrant could not establish its own superior trademark rights, then NSI put the contested
domain name on hold. The parties were then forced to initiate judicial proceedings to
determine ownership of the domain name, with NSI maintaining the status quo pending a
court order concerning ownership. For a useful review, see Milton Mueller, Technology and
Institutional Innovations: Internet Domain Names, 5 INT’L J. COMM. L. & POL. 1, 7-8 (2000)
[hereinafter Mueller, Technology and Institutional Innovations], available at
http://www.ijclp.org/5_2000/pdf.ijclp_webdoc._1_5_2000.pdf. The NSI policy was roundly
condemned from all sides, and all but ignored in subsequent proposals for domain name
dispute settlement.
42. The Internet Society is a nongovernmental international organization for global
cooperation and coordination for the Internet and its internetworking technologies and
applications. All About the Internet Society, at http://www.isoc.org/isoc/ (last visited Oct. 8,
litigating even easy cases under national laws in national courts
imposes significant costs, creating incentives for trademark owners
to pay the ransom cybersquatters demand rather than litigate.
Inexpensive, non-national dispute settlement could resolve both of
these concerns, eliminating the uncertainty of applying national
laws extraterritorially and placing a cap on the price a squatter
could extract from the mark owner. But whether a non-national
dispute settlement system in fact achieves these results depends
entirely on its structure, a subject to which we now turn.
B. The Evolution of Non-National Dispute Settlement for
Cybersquatting
Although the earliest conflicts between trademark owners and
domain name registrants date back to the opening of the Internet
to commerce in the early 1990s, proposals to develop non-national
mechanisms to resolve these conflicts are of a far more recent
vintage.41
1. The gTLD-MoU’s Administrative Challenge Panels (ACPs)
In 1996, the Internet Assigned Numbers Authority (IANA) and
the Internet Society42
organized the Internet Ad Hoc Committee
158 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
2001). The Internet Assigned Numbers Authority (IANA) is the central coordinator for the
assignment of unique parameter values for Internet protocols. See Robert Shaw, Internet
Domain Names: Whose Domain Is This?, at http://people.itu.int/~shaw/docs/dns.html (last
visited Oct. 3, 2001).
43. IAHC was comprised of an unusual consortium of international organizations,
domestic governmental bodies, and private entities, including the Internet Architecture
Board, the IANA, the Internet Society, the International Telecommunications Union, the
International Trademark Association, the National Science Foundation, and WIPO. IAHC
was dissolved on May 1, 1997. See http://www.iahc.org (last visited Oct. 3, 2001).
44. Internet Ad Hoc Committee, Internet Assigned Numbers Authority, Establishment
of a Memorandum of Understanding on the Generic Top Level Domain Name Space of the
Internet Domain Name System (gTLD-MoU) (Feb. 28, 1997) [hereinafter gTLD-MoU],
available at http://www.gtld-mou.org/gTLD-MoU.html.
45. See id. § 2(d); Developments in the Law—The Law of Cyberspace, 112 HARV. L. REV.
1574, 1666-67 (1999).
46. gTLD-MoU, supra note 44, §§ 2(f), 8.
(IAHC) to revise the increasingly outdated structure of the Internet
domain-name system.43
In February 1997, IAHC published a
document known as the Generic Top Level Domain Memorandum
of Understanding (gTLD-MoU or the Memorandum).44
The gTLDMoU’s
principal objective was to establish a self-regulating, marketoriented
mechanism for governing the domain name system. It
advocated the creation of several new generic top level domains to
be operated by a consortium of private, geographically-dispersed
domain-name registrars operating under a common registration
policy.45
A key component of that policy was an expedited, on-line dispute
settlement system applicable to all registrars operating within the
new gTLDs. As discussed in greater detail below, the center-piece
of this system was the Administrative Domain Name Challenge
Panels (ACPs) to be located within WIPO’s Arbitration and
Mediation Center. The ACPs were to receive complaints by certain
intellectual property owners concerning second level domain names
registered in these gTLDs.46
a. The gTLD-MoU’s Authority for Creating the ACPs
The authority of IAHC to establish the ACPs was somewhat
uncertain. On the one hand, the Memorandum contemplated that
the International Telecommunications Union would act as a public
depository for signatories to the gTLD-MoU, much in the way a
2001] DESIGNING NON-NATIONAL SYSTEMS 159
47. Id. pmbl. The International Telecommunications Union is a specialized agency of the
United Nations. See also Mueller, Technology and Institutional Innovations, supra note 41,
at 17 (noting that the drafters of gTLD-MoU “organized an official signing ceremony in
Geneva in an attempt to assume all of the trappings of an international treaty agreement”).
48. [Revised] Substantive Guidelines ConcerningAdministrative DomainName Challenge
Panels, at 3 (May 23, 1997), at http://www.gtld-mou.org/docs/racps.htm [hereinafter Revised
Substantive Guidelines] (“the establishment of this procedure is not in any way the creation
of an international law”). See also Vienna Convention on the Law of Treaties, art. 2(1), opened
for signature May 23, 1969, 1155 U.N.T.S. 331, 341 [hereinafter Vienna Convention] (defining
a “treaty” as an international agreement concluded between States), available at
http://www.sils.org/Docs-Text-VCT.htm.
49. See infra Part III.B.1. (discussing sources of legitimacy for non-national Internet
regulation); see also Joseph P. Liu, Legitimacy and Authority in Internet Coordination: A
Domain Name Case Study, 74 IND. L.J. 587, 603 (1999) (arguing that informal and
participatory consensus model used to adopt the Internet’s technical standards is ill-suited
to public policy questions such as the structure and ownership of the domain name system).
50. Domain name registrars who joined a Council of Registrars (CORE) contemplated that
the Memorandum would bind them to implement ACP decisions. Individual registrants, in
turn, would submit themselves to the jurisdiction of the ACPs when applying to register a
domain name with any such registrar. Memorandum of Understanding for the Internet
Council of Registrars arts. 7(b), 7(c) (May 1, 1997), available at http://www.gtld-
mou.org/docs/core-mou.htm.
51. Jonathan Zittrain, ICANN: Between the Public and the Private, 14 BERKELEY TECH.
L.J. 1071, 1081 (1999). See also A. Michael Froomkin, Semi-Private International Rulemaking:
Lessons Learned from the WIPO Domain Name Process, at 10 (Aug. 26, 1999) [hereinafter
Froomkin, Semi-Private Rulemaking] (“Critics of the gTLD-MoU charged that its author and
proponents were over-solicitous of trademark interests”), available at
http://www.law.miami.edu~froomkin/articles/tprc99.pdf (draft on file with authors); Mueller,
Technology and Institutional Innovations, supra note 47, at 16 (gTLD-MoU contained
“concessions to trademark owners” which gave them “extraordinary power over domain name
registrations”).
treaty would be administered.47
Yet the drafters of the
Memorandum expressly disclaimed its status as a source of public
international law, an entirely sensible position given the nongovernmental
character of some of its proposed signatories.48
In the absence of any clear legal antecedents, the true source of
legitimacy for this novel dispute settlement system was to be found,
if at all, in the sovereignty of netizens in matters of the Internet.49
More practically, if a broad consensus on the content of the dispute
settlement policy could be achieved, the policy could then be
enforced through a web of nominally consensual contractual
relationships between domain name registrants and registrars.50
Yet the gTLD-MoU did not attract a broad spectrum of adherents.
National governments declined to support the plan, and some
critics claimed it was unduly beholden to trademark interests.51
160 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
52. Developments in the Law, supra note 45, at 1666. See also Heather N. Mewes,
Memorandum of Understanding on the Generic Top-Level Domain Name Space of the Internet
Domain Name System, 13 BERKELEY TECH. L.J. 235, 242 (1998) (characterizing gTLD-MoU’s
as a “self-appointed, unaccountable, and illegitimate decision-making body” based in part on
its failure to include national governments in the decision-making process and the
participation of United Nations specialized agencies).
53. Developments in the Law, supra note 45, at 1666. The United States government
exercised de facto veto power over the domain name system as a result of its control over the
domain name root server. See Milton Mueller, ICANN and internet governance: sorting
through the debris of ‘self-regulation,’ 1 INFO 497, 498 (Dec. 1999) [hereinafter Mueller,
ICANN and internet governance].
54. Third Revised Draft, Substantive Guidelines Concerning Administrative Domain
Name Challenge Panels (Jan. 16, 1998) at 2 [hereinafter Third Revised Draft], available at
http://www.gtld-mou.org/docs/tracps.htm.
Others challenged the new system’s accountability, asserting that
the proposal “would tighten control of the Internet by IANA and the
engineering community, thereby leaving a group of academics in
charge of an increasingly commercial Internet.”52
As a result, the
gTLD-MoU failed to achieve a critical mass of support and was soon
short-circuited by the United States government’s plan to privatize
key aspects of the domain name system.53
b. The Hybrid Nature of ACP Dispute Settlement
Notwithstanding the failure of the gTLD-MoU to achieve
widespread acceptance, the ACP proposal is worthy of analysis, both
because of the difficulty of situating it within any preexisting model
of dispute settlement and as an antecedent to similar conceptual
ambiguities found in the later-adopted UDRP. In particular, the
ACP proposal would have created a new dispute settlement creature
that blended public and private elements and that was not wholly
ministerial, judicial, or arbitral in nature.
Throughout the public comment and revision period, the ACP
guidelines sought to downplay the power and authority of dispute
settlement panels. The guidelines stated that ACPs would perform
solely “an administrative function” in deciding disputes between
intellectual property right owners and domain name registrants.54
They rejected the contention that the ACPs constituted “an
international court” or even “a legal authority,” and renounced any
2001] DESIGNING NON-NATIONAL SYSTEMS 161
55. Revised Substantive Guidelines, supra note 48, at 3(c). The gTLD-MoU sought to
justify this narrow interpretation of the ACP powers by emphasizing that panels would in no
way “inhibit, affect or prevent the power of the appropriate national or regional courts to hear
cases interpreting and enforcing intellectual property rights that fall within their
jurisdiction.” gTLD-MoU, supra note 44, § 8(c); see also Third Revised Draft, supra note 54,
at 2 (parties to ACP proceedings not precluded from filing complaints before national courts
or initiating other forms of dispute settlement).
56. For a definition of “ministerial” in this context, see infra notes 244-46 and
accompanying text.
57. Revised Substantive Guidelines, supra note 48, § IV ¶ 2.
58. Id. §§ IV, IV(A). The decision as to whether a registration relates to the same goods
or services is not necessarily a nondiscretionary one, however. For example, United States
trademark registrations may, because of their limitation to the goods upon which the mark
has been used, contain quite different descriptions of goods and services than those found
elsewhere. Thus, would registration in the same international class be sufficient to constitute
the same goods or services, or would the standard require a complete identity of description?
59. gTLD-MoU Policy Oversight Committee, Request for Comments, at 2 (Jan. 16, 1988),
available at http://www.gtld-mou.org/docs/notice-98-01.html.
“jurisdiction over persons, or over the interpretation and enforcement
of national or regional intellectual property laws.”55
In a limited way, this nondiscretionary “administrative” vision
(approximating ministerial decision making) was accurate.56
The
guidelines for the first iteration of the proposal set forth “objective
standards and criteria” to be applied by the ACPs. Those criteria
preceded by the word “shall” were deemed to be conclusive, such
that “if met, they automatically result in fulfillment of the
standard.”57
For example, under the first iteration of the policy, if a
complaining party could show thirty-five or more trademark
registrations for the same goods or services in at least four
geographical locations, the panel would be required to conclude that
its mark was “internationally known” and thus eligible for
protection under the policy.58
Yet numerous other provisions of the proposal belie the claim that
the ACPs were merely performing a ministerial function. For
example, in its final request for comments, the gTLD-MoU’s Policy
Oversight Committee asserted that the ACPs would “solv[e] difficult
international jurisdictional and choice of law issues,” would
“efficiently deal with the problem of domain name trafficking,” and
would “uniquely, take into account the interests of legitimate
domain name users as well as trademark owners.”59
No administrative
body with purely ministerial powers could solve such
162 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
60. For a more detailed discussion of the scope of ACPs’ substance and powers, see G.
Peter Albert, Jr., Eminent Domain Names: The Struggle to Gain Control of the Internet
Domain Name System, 16 J. MARSHALL J. COMPUTER & INFO. L. 781, 795-814 (1998).
61. See Third Revised Draft, supra note 54, § V; IAHC, Final Report of the International
Ad Hoc Committee: Recommendations for Administration and Management of gTLDs, § 7.1.2
(Feb. 4, 1997), available at http://www.gtld-mou.org/draft-iahc-recommend-00.html.
62. Revised Substantive Guidelines, supra note 48, §§ IV, IV(A).
63. Third Revised Draft, supra note 54, § III(A).
64. Id. § VII. The Appeal Panel’s discretionary authority emanated from its power to
“summarily dismiss the appeal if it is apparent that the determination made no such mistake
or was not manifestly unreasonable.” Id.
intractable problems or engage in such delicate balancing of
competing policies.
How, then, would the ACPs achieve these ambitious goals? As
even a cursory review of the ACP guidelines makes clear, the ACPs
were also granted broad powers that were decidedly judicial in
nature.60
The panels were to apply numerous sets of “criteria” and
“factors” to decide questions such as the nature and scope of the
claimant’s intellectual property rights, the countervailing rights of
the respondent domain-name owner, and the interests of third
parties, including governmental or regional authorities.61
Above all,
panels were to balance all the relevant circumstances and the
competing rights of all parties involved.62
The broad and discretionary scope of remedies available to panels
was equally suggestive of a judicial procedure. Panels could
provisionally suspend or permanently exclude any second level
domain name from use by the registrant or anyone other than the
complainant. In exceptional cases, ACPs could even proactively
exclude a second level domain name from use throughout the gTLD
system by anyone other than the intellectual property owner.
Finally, subject to the agreement of both parties, panels could
modify the domain name, for example by reassigning it to a different
gTLD, or by indexing or web site linking.63
ACP decisions, including
an apportionment or award of costs, were to be published on WIPO’s
web site. Affected parties dissatisfied with a decision could appeal
it to a three-member ACP Appeal Panel, which would have
possessed discretionary jurisdiction to decide whether the panel
made “an obvious and material mistake of fact or was manifestly
unreasonable.”64
The ACPs judicial functions on matters of substance, however,
were situated within a broader framework of international
2001] DESIGNING NON-NATIONAL SYSTEMS 163
65. See WIPO Arbitration Rules (effective Oct. 1, 1994) (on file with authors).
66. See Tricia A. Hoefling, The (Draft) WIPO Arbitration Rules for Administrative
Challenge Panel Procedures Concerning Internet Domain Names, 8 AM. REV. INT’L ARB. 173
(1997). The WIPO ACP Arbitration Rules themselves are reproduced in Stuart Levi et al., The
Domain Name System & Trademarks, 520 PLI/Pat 9, 93 (1998).
Other traditional features of international arbitration were wholly absent from the ACP
proposal. These included the voluntary decision by both parties to submit to arbitration in the
first instance; the choice of substantive and procedural rules and participation in appointing
the panel; and the nonfinality of any award for purposes of subsequent review by national
courts. The existence of an appeal panel also departed from the traditional arbitral model. See
Hoefling, supra note 66, at 178 n.15, 184-85; Revised Substantive Guidelines, supra note 48,
§ V(A).
67. This narrowing of the scope of the proposal was offset, to some extent, by changing the
entities eligible to file ACP complaints. The initial proposal allowed complainants to file a
claim with the ACP only if its trademark was “internationally known.” Revised Substantive
Guidelines, supra note 48, § II (characterizing international knowledge of trademark as the
“entry standard” for ACP proceedings). This hurdle was abandoned in subsequent proposals
to allow all trademark owners to submit complaints to the ACPs. It would be consistent with
international (and most national) trademark law to accord owners of well-known marks
greater protection than owners of marks generally. See Graeme B. Dinwoodie, Federalized
Functionalism: The Future of Design Protection in the European Union, 24 AM. INTELL. PROP.
L. ASS’N Q.J. 611, 655 n.123 (1996) (discussing the linkage in intellectual property law
between thresholds for protection and the scope of protection).
arbitration. The gTLD-MoU proposal required WIPO’s Arbitration
and Mediation Center to draft a comprehensive set of procedural
rules for ACPs. The rules, which on the whole paralleled those of
established centers of international commercial arbitration,
including those of the WIPO Center,65
addressed such traditional
arbitral concerns as the selection, composition, and qualifications of
the panelists, and the conduct of the proceedings. They also
conferred upon the WIPO Center certain oversight functions,
including the consolidation of claims, the appointment of the panel
from its roster of decision makers, and review of party challenges to
individual arbitrators.66
c. Narrowing the Scope of Eligible Disputes
Perhaps as a result of the ACPs’ novel features, the stakeholders
to be affected by ACP rulings sought to narrow the scope of
registrant conduct eligible for mandatory panel review. Thus, the
revised versions of the proposal introduced a screening device67
that
permitted panels to hear a complaint against a domain name owner
only if that person had “manifestly acted in bad faith” or if there
164 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
68. Third Revised Draft, supra note 54, § V(B). This screening requirement, however, did
not apply to the separate proposal to allow trademark owners proactively to exclude on an ex
parte basis domain name ownership by anyone other than themselves.
69. Id. The policy stated:
The ACP may make a determination in favor of a Party when it finds that
the other Party has engaged in trafficking (cybersquatting, cyberjesting
or warehousing), through the deliberate registration of an SLD [second
level domain name] without relevant rights, on account of the SLD being
identical or confusingly similar to the alphanumeric string that is the
subject of the Claimant’s intellectual property right, in order to hoard or
to resell the domain name, or for other cognate purposes.
Id.
70. Id.
71. Improvement of Technical Management of Internet Names and Addresses, 63 Fed.
Reg. 8826 (Feb. 20, 1998); Management of Internet Names and Addresses, 63 Fed. Reg.
31,741 (June 10, 1998) [hereinafter White Paper].
was a “[m]anifest [i]mbalance [b]etween the [r]ights and [i]nterests
of the [p]arties.”68
The policy listed domain name “trafficking” as the
only concrete example of conduct falling within these juris-dictional
limits, although it gave that term a rather broad and open-ended
interpretation.69
For other types of cases, such as those involving
“conflicting but evenly balanced intellectual property rights,” the
policy required the panel to find that the case was not appropriate
for the ACP and permitted it to recommend other forms of dispute
resolution.70
2. The WIPO Domain Name Consultative Process
Each of these three attributes of the failed ACP proposal—the
questioning of its authority and legitimacy, the hybrid nature of its
dispute settlement architecture, and a narrowing of the subject
matter of disputes eligible for review—was to be repeated as the
focus of policymaking shifted in 1998 to the United States
government and then back to WIPO. Initially, it was the U.S.
Department of Commerce that intervened in the debate over the
structure of the domain name system. In its February 1998 Green
Paper and its June 1998 White Paper, the Department proposed a
plan to transfer control of the domain name system to a private,
nonprofit corporation.71
In addition to addressing larger questions of Internet governance,
the White Paper also considered how trademark-domain name
2001] DESIGNING NON-NATIONAL SYSTEMS 165
72. The White Paper’s core recommendation provided:
The U.S. Government will seek international support to call upon the
World Intellectual Property Organization (WIPO) to initiate a balanced
and transparent process, which includes the participation of trademark
holders and members of the Internet community who are not trademark
holders, to (1) develop recommendations for a uniform approach to
resolving trademark/domain name disputes involving cyberpiracy (as
opposed to conflicts between trademark holders with legitimate
competing rights), (2) recommend a process for protecting famous
trademarks in the generic top level domains, and (3) evaluate the effects
. . . of adding new gTLDs and related dispute resolution procedures on
trademark and intellectual property holders. These findings and
recommendations could be submitted to the board of the new corporation
for its consideration in conjunction with its development of registry and
registrar policy and the creation and introduction of new gTLDs.
White Paper, supra note 71, at 31,747.
73. Id.
controversies should be resolved. Responding to public comments
suggesting the need for an on-line dispute resolution mechanism to
provide inexpensive and efficient alternatives to litigation, the
White Paper proposed a process of international consultations
conducted under the auspices of WIPO. These discussions were to
culminate in a proposal to the new corporation concerning three
issues: (1) a uniform dispute settlement system, (2) protection of
famous trademarks, and (3) the effect of creating new gTLDs on
intellectual property rights.72
The White Paper acknowledged that
these issues were highly controversial. For this reason, it urged that
the jurisdiction of any new dispute settlement body be limited to
instances of “cybersquatting and cyberpiracy,” leaving to national
courts cases in which “legitimate competing rights” are concerned.73
a. Authority for WIPO Consultations and Proposals
Before turning to the substance of the proposals WIPO generated
in response to the White Paper, it is necessary to address the source
of WIPO’s authority (upon the request of the United States
government) to engage in these consultations and to publish its
166 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
74. Convention Establishing the World Intellectual Property Organization, July 14, 1967
(as amended on Sept. 28, 1979), art. 3(i) [hereinafter WIPO Convention], available at
http://www.wipo.int/members/convention/Con1.htm. As of January 1, 2000, 171 membercountries
belonged to WIPO.
75. WIPO, General Information, at http://www.wipo.int/about-wipo/cn/gib.htm (last
modified June 2000).
76. WIPO, RFC-3, Interim Report of the WIPO Internet Domain Name Process (Dec. 23,
1 9 9 8 ) , ¶ 2 5 [ h e r e i n a f t e r I n t e r i m R e p o r t ] , a v a i l a b l e a t
http://wipo2.wipo.int/process1/rfc/3/index.html (last visited Sept. 7, 2001).
77. Interim Report, supra note 76.
78. WIPO, Final Report of the WIPO Internet Domain Name Process (Apr. 30, 1999)
[hereinafter Final Report], available at http://wipo2.wipo.int/process1/report/finalreport.html.
See also Harald Tveit Alvestrand, My comments to the WIPO process and its result, at
http://www.alvestrand.no/ietf/wiponote.html (last visited Oct. 3, 2001) (member of panel of
experts referring to final stages of WIPO consultative process as a “fast and furious
proposals. As we indicate below, there is a significant debate over
that issue.
From one perspective, WIPO’s consultative process was a natural
and unobjectionable outgrowth of its functions as a specialized
agency of the United Nations charged with “promot[ing] the
protection of intellectual property throughout the world.”74
As part
of this treaty-based mandate, WIPO administers the major
intellectual property conventions, provides legal and technical
assistance to national governments, organizes international
conferences, creates expert commissions and standing committees,
prepares studies on intellectual property issues, and holds
conferences at which new international intellectual property
agreements are negotiated. According to the WIPO secretariat, the
two hallmarks that characterize all of these activities are
“communication and international cooperation.”75
True to this tradition, WIPO initiated a multi-staged and broadbased
consultative process to consider the issues raised in the White
Paper. In July 1998, it issued an initial Request for Comments to
“obtain[] consensus on the issues to be addressed,” followed by a
period during which it solicited comments and held consultations
with interested parties.76
WIPO also convened a geographically and
ideologically balanced panel of experts to advise it on drafting
recommendations. It published an interim report in late December
1998,77
invited a further round of comments and consultations, and
then drafted a detailed and comprehensive final report on April 30,
1999, nine months after initiating the process.78
2001] DESIGNING NON-NATIONAL SYSTEMS 167
endgame”).
79. Interim Report, supra note 76, ¶¶ 24-29; Final Report, supra note 78, ¶¶ 26-31 &
Annexes II & III.
80. Professor Michael Froomkin has referred to this collaboration as an act of “semiprivate
rulemaking.” Froomkin, Semi-Private Rulemaking, supra note 51, at 2.
81. WIPO does on occasion advise and provide technical assistance to single governments
on the development of intellectual property laws. However, the laws that result from this
advice are typically national in nature, and directly affect only the country that is seeking
advice and guidance.
82. WIPO, General Report adopted by the Assemblies of the Member States, Item 14 of the
Throughout this period, WIPO solicited input from a wide
spectrum of interested parties, including national governments,
intergovernmental organizations, professional associations, and
private corporations and individuals. It also used four distinct
modalities to maximize that input: (1) a trilingual web site for
publication of information, documents, and commentary; (2) an
open, unmoderated listserve discussion forum; (3) the mailing of
hard copies of the requests for comments to the governments and
industrial property officers of each of its more than 170 member
states and to each nongovernmental organization accredited as a
WIPO observer; and (4) a series of open consultation meetings held
in the major regions of the world.79
Notwithstanding these multifarious efforts to promote public
awareness and input, the WIPO process merits careful scrutiny.
First, WIPO was engaged in an act of collaboration between public
and private entities quite unlike its historical role.80
It acted upon
a request from a single national government (the United States) to
convene a study that would ultimately be submitted for consideration
not by other national governments, or by a conference of
governmental representatives negotiating a new treaty, but rather
by a private corporation that was not even in existence at the time
the WIPO study commenced. This private corporation had the
power, through its control over the domain name system and its
relationship with the United States government, to implement the
WIPO proposals without further consultation with or approval by
any of the many affected national governments.81
To be sure, WIPO’s legislative body, the General Assembly,
authorized the WIPO Secretariat to conduct the process and later
approved the final report (five months after the Secretariat had
submitted it to ICANN).82
These endorsements, however, do not
168 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
Consolidated Agenda: Intellectual Property and the Electronic Commerce ¶ 156 (Sept. 15,
1998) (approving of Secretariat’s undertaking of consultative process), available at
http://www.wipo.org/eng/document/govbody/wo_gb_ab/a33_8-14.htm#643_157650; WIPO
General Assembly, Twenty-Fourth (14th Ordinary) Session, Report adopted by the General
Assembly, WIPO Doc. No. WO/GA/24/12 ¶ 13 (Sept. 29, 1999) (approving of results of
consultative process and submission of final report to ICANN), available at http://wipo.
org/cng/document/govbody/wo_gb_ga/ga24_12.htm.
83. WIPO is engaging in a variety of new soft-law initiatives that are more removed from
these typical roles. See, e.g., WIPO, Assemblies of the Member States of WIPO, Thirty-Fourth
Series of Meetings (Sept. 1999), Joint Resolution Concerning Provisions on the Protection of
Well-Known Marks, WIPO Doc. No. A/34/13 ¶ 9, at 3 (Aug. 4, 1999) (“[T]his creates no legal
obligation for any country, but following such a recommendation would produce practical
benefits.”), available at http://www.wipo.int/eng/document/govbody/wo_gb_ab/pdf/a34_13.pdf;
WIPO General Assembly, General Assembly, Twenty-Third (10th Extraordinary) Session,
Activities of the Standing Committee on the Law of Patents (SCP), the Standing Committee on
the Law of Trademarks, Industrial Designs and Geographical Indications (SCT) and the
Standing Committee on Information Technologies (SCIT), WIPO Doc. No. WO/GA/23/1 (Sept.
4, 1998) (noting the establishment of standing committees and discussing their activities),
available at http://www.wipo.org/eng/document/govbody/wo_gb_ga/ga23_l.htm. Some of these
are attracting scholarly criticism. See William R. Cornish, Genevan Bootstraps, 19 EUR.
INTELL. PROP. REV. 336 (1997) (complaining that WIPO’s publication of Notes on the Model
Provisions on Unfair Competition was an attempt to promote a particular, expansive
interpretation of international treaty obligations).
alter the fact that the consultative process sharply diverged from
traditional forms of WIPO contributions to rulemaking, such as the
drafting of model national laws or expert reports to support
multilateral treaty negotiations.83
In the latter instances, WIPO’s
proposals—no matter how expertly researched or enriched by input
from affected constituencies—are filtered through one or often
several layers of additional review as individual national governments
decide whether (and with what modifications) to enact the
model law or ratify the treaty. In contrast, these traditional
democratic checks on WIPO’s powers were wholly absent from the
domain name process.
If WIPO’s consultations were truly broad-based and transparent,
much of the force of this legitimacy critique might be blunted.
Filtering proposals through national governmental processes serves
as a democratic check on lawmaking because those processes
provide a vehicle for airing a range of views held by interested
actors. But if Internet participants can contribute directly to the
process of creating the norms that govern their on-line conduct, why
settle for an indirect, second-best alternative?
2001] DESIGNING NON-NATIONAL SYSTEMS 169
84. E.g., Neil Weinstock Netanel, Cyberspace Self-Governance: A Skeptical View From
Liberal Democratic Theory, 88 CAL. L. REV. 395 (2000) (critiquing claim that a self-governing
cyberspace would more fully realize liberal democratic ideals).
85. A. Michael Froomkin, Of Governments and Governance, 14 BERKLEY TECH. L.J. 617
(1999) [hereinafter Froomkin, Governance]; Froomkin, Semi-Private Rulemaking, supra note
51; A. Michael Froomkin, A Commentary on WIPO’s The Management of Internet Names and
Addresses: Intellectual Property Issues (May 19, 1999) [hereinafter Froomkin, WIPO
Commentary], available at http://www.law.miami.edu/~amf/commentary.htm.
86. Froomkin, Semi-Private Rulemaking, supra note 51, at 2.
87. Froomkin, WIPO Commentary, supra note 85, ¶¶ N-17.
88. Froomkin, Semi-Private Rulemaking, supra note 51, at 4. Among WIPO’s
accomplishments, in Froomkin’s view, was its willingness to make substantial albeit
insufficient changes to the interim report, and its clear definition of cybersquatting (which
was superior to definitions that preceded it). Id. at 17, 20.
Theoretically, two rejoinders apply. First, direct participation via
active Internet communities has been subjected to persuasive
critiques by those who doubt its efficacy as a tool of representational
lawmaking.84
Second, states may have interests apart from
the citizens who participate directly in Internet activities because
states represent the interests of many who, although uninvolved in
the construction of the Internet, are affected by it.
Yet even assuming these theoretical challenges can be overcome,
practical difficulties of ensuring an open and representative lawmaking
process remain. As U.S. law professor and WIPO expert
panelist Michael Froomkin has argued in articles and position
papers published during and after the WIPO consultations,85
formal
transparency in theory cannot ensure broad-based participation in
fact. From Froomkin’s perspective as a critical insider, the consultative
process was “not well understood by the public or even key
participants”86
and suffered from a number of flaws, including an
unduly rushed timetable for review and comments, domination of
meetings by commercial and intellectual property interests, and the
addition of new information by WIPO staff after the close of the
public comment period and with insufficient input from the panel of
experts.87
These critical observations by a key participant do not negate
WIPO’s significant accomplishments, but they clearly affect the
“perceptions of fair and encompassing process” upon which the
political legitimacy of this novel lawmaking exercise depended.88
They also made WIPO more vulnerable to the charges of its critics
that it was acting as an advocate for one view of intellectual
170 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
89. See id. at 10 (noting public perception that WIPO was beholden to trademark
interests); Mueller, Technology and Institutional Innovation, supra note 41, at 21-22
(characterizing WIPO’s “constituency” as “the major multinational intellectual property
holders”).
90. See Froomkin, Semi-Private Rulemaking, supra note 51, at 10 (“[m]any of those who
opposed the gTLD-MoU decided WIPO was in cahoots with those who sought to expand the
rights of existing trademark holders to additional world-wide rights online.”); see also supra
notes 51-53 and accompanying text (discussing public perceptions and criticisms of gTLD-
MoU).
91. See supra Part I.B.1.
92. See Julia A. Martin, Arbitrating in the Alps Rather Than Litigating in Los Angeles:
The Advantages of International Intellectual Property-Specific Alternative Dispute Resolution,
49 Stan. L. Rev. 917, 965-66 (1997); see also RONALD BERNSTEIN ET AL., HANDBOOK OF
ARBITRATION PRACTICE § 10-49 at 547 (3d ed. 1998) (questioning whether it was “necessary
or useful to create the WIPO Center” if it merely siphoned cases away from other arbitral
institutions).
93. The discussion that follows provides an overview of the WIPO proposals from the
perspective of the themes raised in this Article. Readers interested in a more extended
discussion of the WIPO proposals should consult the interim and final reports and Professor
Froomkin’s detailed critiques of them.
property protection rather than as a neutral exponent of a more
balanced policy.89
WIPO’s past participation in the failed gTLD-MoU regime, which
some observers viewed as unduly pro-trademark, also fueled this
perception of bias.90
Recall that the gTLD-MoU proposal for ACPs
would have set up WIPO’s Mediation and Arbitration Center as the
sole arbitral body to hear intellectual property complaints against
domain name owners.91
The Center opened in 1994 but had been
only sporadically used by private parties to resolve intellectual
property controversies.92
The failure of the gTLD-MoU meant that
the WIPO Center would continue to function on the margins of
international arbitration. With intellectual property dispute settlement
again on the table during the consultative process, WIPO
stood to benefit both financially and in terms of prestige from
recommending a dispute settlement system in which its Center
would likely play an active and prominent role.
b. The Scope and Hybrid Nature of Dispute Settlement Under
WIPO’s Proposals93
In considering the shape of a domain name dispute settlement
system, WIPO revived two core features of the ACP proposal: (1)
2001] DESIGNING NON-NATIONAL SYSTEMS 171
94. In theory, WIPO’s proposal for a mandatory uniform dispute settlement system was
more far-reaching than the ACP proposal, the acceptance of which was contingent on a
registrar who voluntarily joined the Council of Registrars within the gTLD-MoU. In practice,
however, the gTLD-MoU’s drafts anticipated that all registrars would eventually accept the
ACP dispute settlement policy. See Mueller, Technology and Institutional Innovations, supra
note 41, at 16.
95. Interim Report, supra note 76, ¶¶ 139-40. These arbitral “advantages” included the
creation of a procedure in which the parties would participate in choosing a neutral decision
maker to hear their dispute in a neutral venue subject to procedural rules that reflected
various legal traditions, and that would lead to a binding, enforceable decision on the merits.
See id. ¶ 140.
96. Id. ¶ 156.
97. Id. ¶ 170; see also id. ¶¶ 148(iii), 170 (“Cases involving instances of alleged abusive
registration of domain names would not be likely to involve burdensome and complex factual
and evidentiary investigations” and thus “should be resolved within a matter of days or
weeks.”) (emphasis added).
modifying domain-name registration contracts to require all registrants
to submit to a uniform dispute settlement system, and (2)
endowing that system with an amalgam of ministerial, judicial, and
arbitral attributes.94
However, the WIPO proposal also differed with
respect to the subject matter of the controversies falling within the
new system and the discretionary authority given to panelists to
decide cases. As to these two issues, WIPO significantly narrowed
its preliminary recommendations to accommodate concerns raised
by nontrademark interests.
(1) WIPO’s Interim Report
Like the ACPs before it, the proposed dispute settlement system
that emerged from the WIPO consultative process was a conscious
hybrid. The interim report characterized the proposal as designed
to harness the advantages of arbitration while modifying and
simplifying those advantages to account for the nondiscretionary
administrative functions to be performed by the panels.95
In fact,
however, with the exception of (1) restricting the available remedies
to complaining parties to the cancellation or transfer of contested
domain names,96
and (2) routinizing and expediting review of
“typical cases of clear abuse,”97
the interim report would have
conferred powers on panelists that were far more judicial than
ministerial in nature.
172 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
98. The interim report did, however, attempt to define acts by a domain name registrant
that would qualify as abusive. It stated that the complaining intellectual property owner
would need to demonstrate
that the registration or use of the domain name by the domain name
holder is without relevant rights or interests and unfairly: (i) capitalizes
on the goodwill associated with the complainant’s legitimate rights,
whether by way of trademarks, personality rights, geographical
indications or otherwise, or (ii) frustrates the complainant’s desire to
reflect its rights in a domain name.
Id. ¶ 244. The Report then listed five “circumstances” for panels to consider in determining
whether abuse existed. For a detailed criticism of this approach as overbroad and
insufficiently protective of free expression values, see A. Michael Froomkin, A Critique of
WIPO’s RFC 3 ¶¶ 162-65 (Mar. 14, 1999) [hereinafter Froomkin, RFC 3 Critique], available
at http://www.law.miami.edu/~amf (on file with the William and Mary Law Review).
99. Interim Report, supra note 76, ¶ 150 (emphasis added).
100. Id. ¶ 198. These seven principles were: (1) “The rights and interests of the parties;”
(2) “The use of the domain name;” (3) “The length of time of registration;” (4) “The nature of
the top-level domain in which the domain name is registered;” (5) “Abusive Registration of the
Domain Name;” (6) “Identical or confusingly similar;” (7) “First-come, first-served principle.”
Id. ¶ 199.
101. Id. ¶¶ 196, 197-98; see Froomkin, RFC 3 Critique, supra note 98, ¶¶ 22, 155, 155-59
(criticizing the interim report for adopting a “smorgasbord approach” to governing law and
for setting out “guiding principles” not found in their entirety in national law). Many legal
texts that seek to bring together disparate constituent approaches ultimately articulate a
composite approach found in no single constituent law. Indeed, such a nonconflictual approach
to multistate lawmaking may be precisely the type of approach needed in the non-national
setting, although the application of a national rule rather than a composite non-national rule
may be appropriate where national interests predominate. We discuss this issue further in
Part III.B.6.
For example, notwithstanding the White Paper’s recommendation
that dispute settlement should apply solely to cases of
“abusive registrations,”98
WIPO advocated instead that panels
should be empowered to hear “any disputes concerning the alleged
violation of intellectual property rights through a domain name
registration.”99
As for the legal rules applicable to this broad
category of controversies, panels were given the discretion to choose
from among “the laws that, in the light of all the circumstances of
the case, are applicable,” and “a set of [seven] guiding principles.”100
According to WIPO, these principles “represented a distillation of
the dominant approaches that have been adopted by national
courts,” but which, in fact, could not be found in any single national
jurisdiction.101
A chief feature of these principles was the discretion
they conferred on panels to balance the rights and interests of
2001] DESIGNING NON-NATIONAL SYSTEMS 173
102. Interim Report, supra note 76, ¶ 199(ii).
103. Cf. Dinwoodie, A New Copyright Order, supra note 8, at 524-25 (noting the relevance
of publication of decisions to the development of norms by arbitral panels).
104. Interim Report, supra note 76, ¶¶ 186, 133.
105. Id. ¶ 140. But see Froomkin, RFC 3 Critique, supra note 98, ¶¶ 118-24 (noting that the
system proposed by WIPO would severely disadvantage domain-name registrants who would
often have no practicable forum in which to bring suit or no substantive cause of action upon
which to base a challenge to a panel ruling ordering cancellation or transfer of a domain
name).
106. Interim Report, supra note 76, ¶ 140.
intellectual property owners against those of domain name
registrants.102
That WIPO intended panels to engage in the court-like function
of developing a non-national trademark-domain name jurisprudence
is shown by the interim report’s recommendation that panel
decisions be published whenever possible.103
Not only would the
publication of panel decisions develop “a body of persuasive
precedents” to “enhance the predictability of the dispute-resolution
system and contribute to the development of a coherent framework
for domain names,” it would also entice complaining parties away
from litigating their claims in national courts.104
Under WIPO’s
proposal, domain-name registrants were required to submit to the
administrative procedure; but both parties were free to initiate
national court litigation before, during, or after the procedure had
been commenced.105
The new system would thus need to
demonstrate its comparative advantages in time, cost, and predictability
to attract cases away from national courts (and national
laws). Developing an autonomous non-national domain name
jurisprudence applicable without regard to national borders or
conflicting national interests would engender confidence in the
“credibility and consistency of decisions” and achieve precisely this
result.106
(2)WIPO’s Final Report
Domain name registrars, individual registrants, organizations
representing the Internet’s technical community, and certain
members of the panel of experts widely criticized WIPO’s interim
report as unduly favoring intellectual property owners and granting
them rights in excess of those that existed in any single national
174 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
107. See, e.g., Froomkin, RFC 3 Critique, supra note 98; Mueller, Technology and
Institutional Innovations, supra note 41, at 22 & n.22.
108. Final Report, supra note 78, ¶ 135(i). As we discuss below, the topic of competing
trademark rights on the Internet has since been taken up by the WIPO Standing Committee
on Trademarks. See infra Part III.B.7. (discussing the relations between non-national and
international systems). But the distinction between abusive registrations and competing
rights cases is less concrete than this institutional allocation might suggest. If “competing
rights” are conceived more broadly than competing exclusive trademark rights (for example,
if the phrase is thought to include the nonexclusive right to use a mark that is descriptive or
to use a mark in a particular way such as parody or criticism), then a delineation of the
contours of cybersquatting will inevitably implicate the question of what are “competing
rights.” See Graeme B. Dinwoodie, Private International Aspects of the Protection of
Trademarks, WIPO Doc. No. WIPO/PIL/01/4 ¶ 82 n.200, (Jan. 2001) [hereinafter Dinwoodie,
Private International Aspects], available at http://www.wipo.org/pil-forum/en/documents/
pdf/pil_01_4.pdf. This dilemma is being considered by the Standing Committee at present in
finalizing its proposals and also has infused panel determinations under the UDRP. See infra
Part III.B.7.
109. Final Report, supra note 78, ¶ 135(ii).
110. Id. ¶ 168 (“We are persuaded by the wisdom of proceeding firmly but cautiously and
of tackling, at the first stage, problems which all agree require a solution.”).
111. Id. ¶ 133.
112. Difficult private international issues will occur with frequency when national laws are
not entirely harmonized, or choice-of-law principles do not invariably lead to the application
of the law of a single jurisdiction. But these issues arise even in the wake of harmonization
of laws, because harmonization remains largely premised upon notions of national sovereignty
and upon the sanctity of national institutions in applying harmonized rules. This adherence
to national lawmaking models can (sometimes appropriately) undermine the objectives of
harmonization. See Graeme B. Dinwoodie, The Integration of Domestic and International
Intellectual Property Lawmaking, 24 COLUM.-VLA J.L. & ARTS. 307 (2000) (discussing the
jurisdiction.107
In response to these criticisms, WIPO narrowed its
proposal for a dispute settlement system in two critical ways. First,
it limited the system to “deliberate, bad faith, abusive, domain name
registrations or ‘cybersquatting’” and excised from the panels’
jurisdiction “disputes between parties with competing rights acting
in good faith.”108
Second, it restricted the class of eligible complaints
to trademark owners and excluded other intellectual property
rightholders from the system.109
WIPO’s rationale for narrowing the proposal in this fashion was
expressly premised on the need for an incrementalist approach.110
Consistent with that tradition, participants in the consultative
process had expressed profound unease about granting expansive
powers to a new and untested dispute settlement system that had
“the capacity to affect valued rights.”111
Given this climate of
reticence, and given the nonharmonization112
of national laws
2001] DESIGNING NON-NATIONAL SYSTEMS 175
limits of harmonization of national laws); Dinwoodie, Private International Aspects, supra
note 108, ¶¶ 86-90 (discussing choice of law problems in the context of public international
trademark law).
113. Indeed, one could argue that the lack of equivalent rights under any national law
should not, in this instance, have precluded the recognition of non-national rights for
trademark owners. After all, national systems were only beginning to grapple with these
issues, and the lack of developed national solutions should hardly be surprising. In fact, those
national solutions that have since developed have also proven favorable to trademark owners.
See e.g., Referee Enter., Inc. v. Planet Ref, Inc., No. 00-C-1391 (E.D. Wis. Jan. 24, 2001)
(granting a preliminary injunction under the ACPA to the owner of Referee Magazine,
previously denied relief under the UDRP, against defendant’s registration of domain names
“including the term ‘referee’ in any form”), available at http://www.loundy.com/CASES/
Referee_Ent_v_Planet_Ref.html. The argument for incrementalism thus derives as much from
the need to establish the legitimacy of the new non-national system as from any substantive
objection to the rights that would have been conferred on trademark owners. Although much
criticism was leveled at the interim report on the latter ground, our focus is on the systemic
development of non-national models.
114. Final Report, supra note 78, Executive Summary ¶ V.
115. Id. ¶ 171. These conditions were:
(1) ... (i) the domain name is identical or misleadingly similar to a trade
or service mark in which the complainant has rights; and (ii) the holder
of the domain name has no rights or legitimate interests in respect of the
domain name; and (iii) the domain name has been registered and is used
in bad faith.
Id.
The final report then set out four specific examples which panels could treat as
“evidence of the registration and use of a domain name in bad faith”:
(2) ... (a) an offer to sell, rent or otherwise transfer the domain name to the
owner of the trade or service mark, or to a competitor of the owner of the trade
or service mark, for valuable consideration; or
(b) an attempt to attract, for financial gain, Internet users to the domain name
holder’s website or other on-line location, by creating confusion with the trade
or service mark of the complainant; or
(c) the registration of the domain name in order to prevent the owner of the
trade or service mark from reflecting the mark in a corresponding domain name,
provided that a pattern of such conduct has been established on the part of the
addressing trademark-domain name disputes,113
WIPO saw virtue
in focusing, at the outset, on behavior that “was universally
condemned throughout the WIPO process as an indefensible activity
that should be suppressed.”114
To this end, WIPO sought to draft a definition of disputes that
would sweep within its purview only egregious violations of
trademark owners’ rights. Eschewing the term “cybersquatting” as
insufficiently precise, WIPO adopted the phrase “abusive registrations”
and defined it as existing only when three defined
conditions were met.115
176 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
domain name holder; or
(d) the registration of the domain name in order to disrupt the business of a
competitor.
Id. With respect to nonabusive registrations, the Report was somewhat less exact. It did,
however, state that good faith registrations, registrations for legitimate noncommercial or
expressive purposes, and claims between competing rights owners should not be grounds for
transferring or canceling a domain name. Id. ¶ 172.
116. Id. ¶ 177(ii) (recommending that “in applying the definition of abusive registration,
the panel of decision-makers shall, to the extent necessary, apply the law or rules of law that
it determines to be appropriate in view of all the circumstances of the case”). Given this tepid
endorsement of a traditional, conflictual approach to choice of law, it seems incorrect to
characterize WIPO’s actions as rejecting “any attempt to create a lex mercatoria or a freestanding
trans-national law of domain names.” Froomkin, WIPO Commentary, supra note 85,
¶ 72.
117. Final Report, supra note 78, ¶ 176:
For example, if the parties to the procedure were resident in one country, the
domain name was registered through a registrar in that country and the
evidence of the bad faith registration and use of the domain name related to
activity in the same country, it would be appropriate for the decision-maker to
refer to the law of the country concerned in applying the definition [of abusive
registration].
Id.
118. Id. ¶ 207.
119. Id. ¶ 209.
120. Id. ¶ 203.
121. Id. ¶ 222.
122. Id. Annex V.
Given this narrowing of the dispute settlement policy, WIPO was
also able to eliminate some of the ambiguity concerning the rules
that panels were to apply. In particular, WIPO jettisoned the
reference to the seven autonomous guiding principles advocated in
its interim report. In its place, WIPO adopted a choice-of-law
provision which would permit—but by no means compel116
—
panelists to apply the laws of the national jurisdiction with the most
substantial connections to the parties and their dispute.117
Finally, WIPO made a variety of other modifications to its
preliminary proposals. It recommended the use of three-person
rather than single-member panels.118
These panels were to be
appointed by accredited dispute resolution service providers with no
input from the parties.119
Cases were to be decided by panels within
forty-five days of the filing of a complaint.120
WIPO also rejected the
need for a body to hear appeals from panel decisions,121
and it
drafted a detailed and comprehensive set of model procedural rules
to be used by service providers.122
In all other respects, however,
2001] DESIGNING NON-NATIONAL SYSTEMS 177
123. In both its preliminary and final reports, WIPO recommended that owners of wellknown
trademarks be allowed to block issuance of domain names containing those marks or
their near equivalents. Id. ¶¶ 245-91. That proposal has not yet been acted upon by ICANN,
although so-called “sunrise” mechanisms have been used in the recent development of new
generic top level domains such .info and .biz. See ICANN Approves Seven Top-Level Domains;
Winners Continue to Negotiate the Fine Print, 5 ELEC. COMM. & L. REP. 1139 (Nov. 22, 2000)
[hereinafter ICANN Approves Seven Top-Level Domains] (discussing ICANN’s approval of new
gTLDs, including their dispute settlement and intellectual property protection provisions).
124. WG-A Final Report to the ICANN Board (Aug. 3, 1999) [hereinafter WG-A Final
Report] (noting that, according to the provisional Names Council charged with reviewing
dispute settlement policy for ICANN Board, “[t]he WIPO Final Report may be considered to
represent a consensus of most interested stakeholders”), available at
http://www.dnso.org/dnso/notes/19990804.NCwga-to-ICANN.html (on file with the William
and Mary Law Review); see also Posting of Kathryn Kleiman, KathrynKL@aol.com, to
comment-udrp@icann.org, Concerns about ICANN Uniform Dispute Resolution Policy (Aug.
24, 1999) (characterizing ICANN’s treatment of WIPO report as “far too deferential”),
available at http://www.icann.org/comments-mail/comment-udrp/current/msg00012.html (on
file with the William and Mary Law Review).
WIPO’s final report preserved the hybrid nature of the new dispute
settlement system.123
c. Assessment of the WIPO Process
Although WIPO’s narrowing of the scope of dispute settlement in
the final report resolved some of the controversies between
intellectual property owners and other Internet stakeholders, it did
not lay to rest the doubts expressed by some observers concerning
the organization’s capacity to engage in a balanced consultative
process. By reviving the core features of the gTLD-MoU
Administrative Challenge Panels, WIPO resuscitated a proposal of
dubious political pedigree. Moreover, because of the expedited
nature of the subsequent ICANN review process, WIPO’s own
revisions of that proposal were quickly entrenched.
Nominally, WIPO’s recommendations were only advisory and
were intended to be submitted to ICANN for further review. In fact,
however, the recommendations were given a presumption of validity
by participants in the ICANN drafting process.124
As we explain
below, that presumption allowed the hybrid nature of the dispute
settlement proposal to go unexamined, setting the stage for the
conflict of institutional mission that was to plague the UDRP’s
decision makers.
178 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
125. The DNSO is composed of a General Assembly and a Names Council. Seven
Constituency Groups, representing a different domain-name stakeholder perspective, each
elect three members of the Names Council, which considers substantive domain-name policies
on a “community consensus” basis and forwards its recommendations to the ICANN Board.
Domain Name Supporting Organization of ICANN, at http://www.dnso.org/dnso/
aboutdnso.html (last visited Oct. 3, 2001) (on file with the William and Mary Law Review).
126. ICANN, Minutes of Meeting, Res. 99.45, 99.46 & 99.47 (May 27, 1999), available at
http://www.icann.org/minutes/minutes-27may99.htm (on file with the William and Mary Law
Review); see also ICANN, Timeline for the Formulation and Implementation of the Uniform
Domain-Name Dispute-Resolution Policy [hereinafter Timeline], available at
http://www.icann.org/udrp/udrp-schedule.htm (last updated Oct. 17, 2000) (on file with the
William and Mary Law Review).
127. See supra note 125 (explaining Names Council).
3. ICANN’s Review and Implementation of the UDRP
Within weeks after WIPO submitted its report on April 30, 1999,
ICANN began an expedited process to study and implement WIPO’s
recommendations. Recognizing that ICANN’s organizational structure
is both Byzantine and likely to be unfamiliar to many readers,
we briefly outline that structure below. We then highlight the
critiques of ICANN made by various observers, focusing on the
organization’s authority to adopt a mandatory dispute settlement
policy. Finally, we explore the ways in which ICANN narrowed
WIPO’s recommendations prior to adopting them as the UDRP
while maintaining the hybrid character of the new dispute
settlement system.
a. Expedited Implementation Timetable
On May 27, 1999, ICANN’s Interim Board referred the dispute
settlement proposals in WIPO’s final report to the ICANN Domain
Name Supporting Organization (DNSO), one of the three supporting
organizations established under ICANN’s bylaws to develop
and recommend substantive policies to the Board.125
The Interim
Board asked the DNSO to submit its recommendations by July 31,
1999, and it invited interested persons to comment by August 20,
1999, prior to its next meeting in late August.126
In mid-June, the
DNSO’s Names Council127
formed a working group to study the
WIPO recommendations. The working group submitted its report at
the end of July, which the Names Council adopted with minor
2001] DESIGNING NON-NATIONAL SYSTEMS 179
128. Timeline, supra note 126.
129. Id.
130. ICANN, ICANN Staff Report: Uniform Dispute Resolution Policy for gTLD Registrars,
(Aug. 24, 1999), available at http://www.icann.org/santiago/udrp-staff-report.htm (on file with
the William and Mary Law Review). The report noted that eleven written comments on the
proposals had been submitted by the August 22 deadline. Id.
131. Timeline, supra note 126.
132. Id.
133. Id.; see supra note 17.
134. For articles identifying these challenges, see Liu, supra note 49; Mueller, ICANN and
internet governance, supra note 53, at 497; Zittrain, supra note 51.
modifications and submitted to the Board as a consensus recommendation
in early August.128
Later that month, a group of
accredited domain-name registrars also submitted to the Board a
proposal for a voluntary dispute resolution policy.129
On August 24, 1999, ICANN staff submitted to the Board a report
on the Names Council and registrar proposals and posted it on
ICANN’s web site.130
Only two days later, the Board accepted the
DNSO’s recommendations and instructed the staff to convene a
small drafting committee composed of representatives of different
Internet stakeholder groups to prepare implementing documents
using the registrar’s model policy as a starting point.131
On
September 29, the staff posted a report on those documents and
invited public comment during the next two weeks on a few
remaining open issues.132
Finally, on October 24, 1999, the ICANN
Board approved the final version of the implementing documents
—the “Uniform Domain Name Dispute Resolution Policy” and the
“Rules for Uniform Domain Name Dispute Resolution Policy”—as
revised in light of a second staff report.133
b. ICANN’s Authority for Creating the UDRP
The current challenges to ICANN’s authority over the domainname
system are considerable and beyond the scope of this
Article.134
Even accepting for purposes of argument the legitimacy
of a private, nonprofit corporation engaging in domain-name
policymaking, three more particularized attacks against ICANN are
relevant to the UDRP approval process. These include challenges to
the structure and composition of ICANN’s Board of Directors, the
180 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
135. See Mueller, ICANN and internet governance, supra note 53, at 507.
136. Id. at 508.
137. Id. at 509.
138. Internet Democracy Project, Yokohama Statement on Civil Society and ICANN
Elections, ¶¶ 1, 4 (June 27, 2000) (draft), available at http://www.icannwatch.org/archives/
civil_society_and_icann_elections.htm (on file with the William and Mary Law Review).
139. In total, ICANN received just over 100 e-mail comments, not all of them substantive
in nature. See http://www.icann.org/comments-mail/comment-udrp/current/maillist.html (last
visited Oct. 3, 2001).
140. See, e.g., WG-A Final Report, supra note 124 (questioning whether recommendation
to adopt UDRP represented a genuine consensus of the DNSO given the “shortness of time
available to WG-A to solicit input from the DNSO constituencies”); Posting of A. Michael
Froomkin, froomkin@law.tm, to comment-udrp@icann.org, A Catalog of Critical Process
Failures; Progress on Substance; More Work Needed (Oct. 13, 1999) [hereinafter Froomkin,
Catalog] (criticizing the fourteen-day comment period as “the only opportunity that most nonregistrar
stakeholders have ever had to comment on the major features of” the UDRP), at
http://www.icann.org/comments-mail/comment-udrp/current/msg00101.html (on file with the
William and Mary Law Review); Posting of David Post, Postd@erols.com, to commentudrp@icann.org,
Comment (Oct. 10, 1999) (urging ICANN Board to give affected parties
unduly accelerated pace of the proceedings, and review procedures
which limited participation by all affected constituencies.
First, the accountability of ICANN’s interim Board is questionable.
During the five months when the dispute settlement
proposal was being considered, the Board consisted solely of nine
members appointed by the IANA.135
It was not yet composed in the
manner set out in ICANN’s articles and bylaws, which require nine
directors appointed by the three Support Organizations and an
additional nine directors elected from ICANN’s “at large”
membership.136
According to some observers, ICANN’s decision to
press forward with highly contested domain-name policies such as
the UDRP while its interim board lacked accountability or
representational diversity fatally tainted its decisions.137
Several
critics have even gone so far as to urge that all of the Interim
Board’s decisions, including its approval of the UDRP, be subject to
a reauthorization vote once the new Board has been elected.138
A second challenge to ICANN’s authority concerned the extremely
expedited nature of the UDRP approval process and the limited
number of comments received.139
Both the bodies within ICANN
considering the dispute settlement proposals and the individuals
drafting and reviewing those proposals repeatedly expressed
dissatisfaction with the time allotted for reflection and comment by
interested observers and the public.140
This limited timeframe also
2001] DESIGNING NON-NATIONAL SYSTEMS 181
additional opportunities to comment on UDRP proposals prior to adopting them), at
http://www.icann.org/comments-mail/comment-udrp/current/msg00067.html.
141. See supra notes 75-78 and accompanying text.
142. WG-A Final Report, supra note 124, at 2.
143. See id.; Kleiman, supra note 124; Posting of Association for Computing Machinery’s
Internet Governance Committee, to comment-udrp@icann.org, ACM-IGC Petition for
Reconsideration on Cybersquatting (Aug. 16, 1999), available at http://www.icann.org/
comments-mail/comment-udrp/current/msg.
144. See Froomkin, Catalog, supra note 140; Mueller, ICANN and internet governance,
supra note 53, at 519; Posting of Carl Oppedahl, carl@oppedahl.com, to commentudrp@icann.org
Comments [R]egarding UD[R]P (Oct. 13, 1999) (“The process was skewed
from its beginning to favor the interests of the trademark lobby and gave no meaningful voice
to the domain name owners of the Internet.”), available at http:// www.icann.org/commentsmail/comment-udrp/current/msg00105.html
(on file with the William and Mary Law Review).
gave a patina of legitimacy to the results of the WIPO consultative
process, which appeared languorous and thoughtful by
comparison.141
The third critique of ICANN’s procedures concerned the lack of
adequate participation by stakeholders who favored a narrow
dispute settlement policy. For example, the Provisional Names
Council of the DNSO and the working group charged with
considering WIPO’s recommendations did not contain the proper
complement of members required by ICANN’s rules.142
The missing
entity was the Non-Commercial Domain Name Holders
Constituency, which represented the views of a diverse group of
noncommercial organizations concerned with freedom of
expression.143
Some participants also claimed that the manner in
which documents were drafted and the procedures used to review
them privileged trademark owners’ interests and failed to forge a
consensus among all affected stakeholders.144
As we explain below,
however, much of this criticism was alleviated by the final stages of
the UDRP review process in which ICANN narrowed WIPO’s
dispute settlement recommendations.
c. Narrowing the Scope of Eligible Disputes While Maintaining
a Hybrid Dispute Settlement Model
Using the WIPO final report and a draft policy and rules authored
by a consortium of registrars as a template, ICANN’s Board
instructed its staff to make three modifications to those documents.
First, it identified three factual situations which suggested that a
182 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
145. ICANN, Resolutions Approved by the Board, Santiago Meeting, Res. 99.83.4 (Aug. 26,
1999), available at http://www.icann.org/santiago/santiago-resolutions.htm.
146. Id. Res. 99.83.5.
147. The three “factors” to be considered in determining bad faith registration of a domain
name were:
(a) Whether the domain name holder is making a legitimate noncommercial or
fair use of the mark, without intent to misleadingly divert consumers for
commercial gain or to tarnish the mark
(b) Whether the domain name holder (including individuals, businesses, and
other organizations) is commonly known by the domain name, even if the holder
has acquired no trademark or service mark rights; and
(c) whether, in seeking payment for transfer of the domain name, the domain
name holder has limited its request for payment to its out-of-pocket costs.
Id. Res. 99.83.3.
148. ICANN, Uniform Domain Name Dispute Resolution Policy, Draft Policy Prepared by
ICANN Staff and Counsel and Posted for Public Review and Comment, ¶ 4(c) (Sept. 29, 1999)
[hereinafter Draft Policy], available at http://www.icann.org/udrp/udrp-policy-29sept99.htm
(on file with the William and Mary Law Review).
149. ICANN, Rules for Uniform Domain Name Dispute Resolution Policy, Draft Rules
Prepared by ICANN Staff and Counsel and Posted for Public Review and Comment (Sept. 29,
1999) (defining “mutual jurisdiction”), available at http://www.icann.org/udrp/udrp-rules-
29sept99.htm (on file with the William and Mary Law Review). The two jurisdictions were
either: (1) the nation in which the Registrar had its principal office, provided that the domainname
holder had submitted in its Registration Agreement to jurisdiction in that nation, or (2)
in all other cases, “at the location of the domain name holder’s address as shown for the
registration of the domain name in Registrar’s Whois database at the time of the complaint.”
Over time, this jurisdictional alternative would favor jurisdiction at the location of the
registrar, since registrants purchasing domain names through ICANN-accredited registrars
domain name registrant would not be regarded as having acted in
bad faith;145
second, it specified the need for parity of “appeal” rights
for complainants and respondents;146
and third, it requested a
definition of and measures to minimize “reverse domain name
hijacking.”147
Each of these revisions bolstered the rights of domainname
owners and narrowed the range of conduct giving rise to relief
under the Policy.
In a revised draft of the Policy and Rules, the ICANN staff
implemented the Board’s three recommendations in the following
ways. First, it drafted a new paragraph of the Policy embodying the
three circumstances where a domain-name registrant would be
treated as having legitimate interests in its domain name.148
Second,
in an attempt to ensure that both parties would have equal
“appeal” rights, the staff modified the Policy to require complainants
to submit to the jurisdiction of national courts in one of two
locations.149
Concomitantly, it revised the Policy to stay
2001] DESIGNING NON-NATIONAL SYSTEMS 183
would all be required to submit to jurisdiction in that location. See ICANN, Second Staff
Report on Implementation Documents for the Uniform Dispute Resolution Policy, ¶ 4.9, (Oct.
24, 1999) [hereinafter Second Staff Report] (noting that jurisdiction where respondent was
located would only apply to “some legacy registrants” who had not registered domain names
through accredited registrars), available at http://www.icann.org/udrp/udrp-second-staffreport-24oct99.htm
(on file with the William and Mary Law Review).
150. Draft Policy, supra note 148, ¶ 4(k).
151. ICANN, Staff Report on Implementation Documents for the Uniform Dispute
Resolution Policy, 4 (Sept. 29, 1999) [hereinafter Staff Report], available at http://www.
icann.org/udrp/staff-report-29sept99.htm (on file with the William and Mary Law Review).
For the first panel decision to make a finding of reverse domain name hijacking, see K2r
Produkte AG v. Jeremie Trigano, WIPO Case No. D2000-0622 (Aug. 23, 2000), available at
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0622.html.
152. Staff Report, supra note 151, at 4. Although the ICANN Staff sought to limit public
comments to issues concerning the length and content of pleadings and decisions and the
mechanics for selecting dispute settlement providers and panelists, public comments were
directed to all aspects of its proposal. See Second Staff Report, supra note 149, ¶ 3.1
(cataloging titles of e-mail comments). This was hardly surprising given the Staff’s attempt
to foreclose public comment on the modifications that it had proposed.
153. See Second Staff Report, supra note 149.
154. Id. ¶ 1.6.
155. Id.
automatically for ten business days a panel’s order to cancel or
transfer a registration if the respondent filed a complaint in such a
court.150
Finally, the staff included a definition of “reverse domain
name hijacking,” and it sought to minimize its occurrence by
ensuring more effective notice to respondents of a complaint filed
against them, by clarifying that complaining trademark owners bear
the burden of proof, and by authorizing panels to make a finding
that a complaint was brought in bad faith.151
After a second round of public comments nominally limited to the
few “implementation issues left open in the draft documents,”152
the
ICANN Staff published a Second Staff Report containing a more
fully articulated defense of the draft policy and rules it had
proposed.153
This report, while acknowledging that both trademark
owners and domain-name registrants had submitted meritorious
proposals for modifying the proposed UDRP, concluded that the
Policy was “balanced, workable, and fair” in its current form.154
It
stated that any future modifications should be referred to the DNSO
for further review “with the benefit of experience with the realworld
operation of the policy.”155
The Second Staff Report also strongly reaffirmed ICANN’s intent
that UDRP dispute settlement be exceedingly narrow in scope and
184 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
156. Id. ¶ 4.1(c).
157. Id.
158. See supra text accompanying note 115 (setting elements of cause of action proposed
by WIPO). Paragraph 4(a) of the Policy states:
You are required to submit to a mandatory administrative proceeding in the
event that a third party (a “complainant”) asserts to the applicable Provider, in
compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or
service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain
name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these
three elements are present.
Policy, supra note 17, ¶ 4(a).
159. Paragraph 4(b) of the Policy provides:
For the purposes of Paragraph 4(a)(iii), the following circumstances, in
particular but without limitation, if found by the Panel to be present, shall be
evidence of the registration and use of a domain name in bad faith:
(i) circumstances indicating that you have registered or you have acquired
the domain name primarily for the purpose of selling, renting, or otherwise
transferring the domain name registration to the complainant who is the
owner of the trademark or service mark or to a competitor of that
complainant, for valuable consideration in excess of your documented outof-pocket
costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of
the trademark or service mark from reflecting the mark in a corresponding
domain name, provided that you have engaged in a pattern of such conduct;
or
(iii) you have registered the domain name primarily for the purpose of
limited to “cases involving ‘abusive registrations’ made with badfaith
intent to profit commercially from others’ trademarks (e.g.,
cybersquatting and cyberpiracy).”156
The Report stressed that “the
fact that the policy’s administrative dispute-resolution procedure
does not extend to cases where a registered domain name is subject
to a legitimate dispute (and may ultimately be found to violate the
challenger’s trademark) is a feature of the policy, not a flaw.”157
In the text of the Policy itself, this desire to limit the UDRP’s
scope found its expression in paragraph 4, which set forth the
elements of a trademark owner’s cause of action. Paragraph 4(a)
required all complainants to prove essentially the same three
elements recommended in WIPO’s final report.158
Paragraphs 4(b)
and 4(c) then enumerated specific examples of, on the one hand, a
respondent’s bad faith registration and use of a domain name,159
and
2001] DESIGNING NON-NATIONAL SYSTEMS 185
disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract,
for commercial gain, Internet users to your web site or other on-line
location, by creating a likelihood of confusion with the complainant’s mark
as to the source, sponsorship, affiliation, or endorsement of your web site
or location or of a product or service on your web site or location.
Id. ¶ 4(b).
160. Paragraph 4(c) of the Policy provides:
Any of the following circumstances, in particular but without limitation, if found
by the Panel to be proved based on its evaluation of all evidence presented, shall
demonstrate your rights or legitimate interests to the domain name for purposes
of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your use of, or demonstrable
preparations to use, the domain name or a name corresponding to the
domain name in connection with a bona fide offering of goods or services;
or
(ii) you (as an individual, business, or other organization) have been
commonly known by the domain name, even if you have acquired no
trademark or service mark rights; or
(iii) you are making a legitimate noncommercial or fair use of the domain
name, without intent for commercial gain to misleadingly divert consumers
or to tarnish the trademark or service mark at issue.
Id. ¶ 4(c).
161. Second Staff Report, supra note 149, § 4.5(b). The commentary in the staff report is
reflected in the “in particular but without limitation” language in paragraphs 4(b) and 4(c)
of the Policy. For a discussion of the effects of these two clauses on decision making by UDRP
panels, see infra Part II.C.
on the other, the rights or legitimate interests that a respon-dent
might have in that domain name.160
This structure also reinforced
a ministerial role for UDRP panels, first by limiting their authority
to open-and-shut cases of domain name abuses, and second by
indicating that more complex disputes involving discretionary
judgments were suitable only for national court adjudication.
Yet in response to proposals by trademark owners that the Policy
as drafted was too narrow (and to address opposing proposals by
noncommercial interests that the Policy was too broad), the Second
Staff Report blurred this narrow, ministerial vision of the UDRP
with more expansive judicial functions. Pressed by both interest
groups, the report stated that the specific examples provided in
Paragraphs 4(b) and 4(c) were “not intended to be exhaustive” and
that additional evidence and arguments could be considered by
UDRP panels as a basis for ruling in favor of trademark owners or
domain-name registrants.161
Although the staff’s comment and its
corresponding language in the UDRP may have been intended to
186 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
162. Second Staff Report, supra note 149, at 10-11.
163. Id.
164. See Policy, supra note 17, ¶ g.
165. See id. ¶¶ 4(d), 4(f), 3(b)(iv), 5(b)(iv)-(v); see also Second Staff Report, supra note 149,
§ 4.15.
mollify criticisms of its proposal from both sets of interest groups,
its effect was to grant panels substantial adjudicatory authority to
reconcile the competing interests at stake in trademark domainname
disputes.
Finally, the Second Staff Report reaffirmed the arbitral roots of
UDRP dispute settlement by providing for post-dispute review in
national courts of so-called “mutual jurisdiction.”162
These courts
would be located either where the registrar was located or at the
location of the domain-name holder as shown in the registrar’s
Whois data. When filing a UDRP complaint, a trademark owner
would choose one of these two counties and submit itself to the
jurisdiction of the courts in that country for purposes of reviewing
a UDRP panel decision. A respondent who filed a complaint with a
court in such a country within ten business days of the panel’s
decision would receive an automatic stay of the panel’s order
transferring or canceling the contested domain name.163
The report also specified the method for the parties to select
dispute settlement providers and panels. The provider for each
dispute would be selected by the complainant, who would also have
the initial option to choose whether the case would be heard by a
one-person or a three-member panel. In either case, the complainant
would pay all of the panel’s fees.164
Only if the respondent
chose to have the case heard by a three-member panel in cases
where the complainant had chosen a one-member panel would the
parties split the cost of the proceedings. And only in three-member
panel cases would the parties have input into the selection of the
decision makers; in all other cases the dispute settlement provider
would choose the sole panelist to hear the complaint.165
4. The UDRP in Practice
Just over one month after the Second Staff Report was published,
ICANN selected WIPO as the UDRP’s first dispute settlement
2001] DESIGNING NON-NATIONAL SYSTEMS 187
166. ICANN approved a fourth dispute settlement provider, the CPR Institute for Dispute
Resolution, on May 22, 2000. See Timeline, supra note 126, at 2.
167. See id.; World Wrestling Fed’n Entm’t, Inc. v. Michael Bosman, WIPO Case No. D99-
0001 (Jan. 14, 2000).
168. ICANN, Statistical Summary of Proceedings Under UDRP (Oct. 2, 2001), at
http://www.icann.org/udrp/proceedings-stat.htm. The number of complaints filed under the
United States’ recently enacted ACPA is also quite high. See Darryl Van Duch, Cybersquatter
Litigation Boom: Statute prompts 700 federal suits over Web domain names, NAT’L L.J. (Feb.
26, 2001).
169. See Statistical Summary of Proceedings Under UDRP, supra note 168. The
percentages vary significantly for different dispute settlement providers, a fact that may have
important implications for reform. See Michael Geist, Fair.com?: An Examination of the
Allegations of Systemic Unfairness in the ICANN UDRP, at 6 (providing statistical summary
through July 7, 2001), available at http://aix1.uottawa.ca/~geist/geistudrp.pdf (last visited
Sept. 8, 2001); Milton Mueller, Rough Justice: An Analysis of ICANN’s Uniform Dispute
Resolution Policy [hereinafter Mueller, Rough Justice] (providing statistical summary through
Nov. 2000), available at http://dcc.syr.edu/roughjustice.pdf (last visited Jan. 9, 2001).
170. See, e.g., Bruce Springsteen v. Jeff Burgar & Bruce Springsteen Club, WIPO Case No.
D2000-1532 (Jan. 25, 2001) (protection of personal names); Wal-Mart Stores, Inc. v.
wallmartcanadasucks.com, WIPO Case No. D2000-1104, at 9 (Nov. 23, 2000) (.sucks domain
names); Lockheed Martin Corp. v. Parisi, WIPO Case No. D2000-1015, at 4 (Jan. 26, 2001)
(same).
provider. It accredited two other providers, the National Arbitration
Forum and eResolution, approximately one month later.166
On
December 9, 1999, a trademark owner filed the first UDRP complaint
and the one-member panel chosen to hear the case issued its
decision on January 14, 2000.167
In practice as well as in construction, the UDRP has proven to be
a remarkable development in the history of international dispute
settlement. Even had trademark owners filed only a handful of
complaints with panels and even had those complaints concerned
only core domain-name abuses, the system would be worthy of
serious scrutiny. But precisely the opposite trend has occurred.
In the first twenty-one months of the UDRP’s existence, panels
operating under the auspices of ICANN-approved dispute
settlement providers have been inundated with cases. As of
September 2001, filed complaints numbered over 4300.168
UDRP
panels have issued over 3500 published decisions, with more than
three-quarters of these decisions ordering domain names
transferred to the complaining trademark owners.169
Although
domain name registrants have achieved a few sporadic (but
important) victories during the last few months,170
beginning in the
earliest days of the UDRP panels interpreted the Policy and Rules
188 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
171. See Bruce M. McDonald, Intellectual Property Rights and Electronic Commerce, 1
INTERNET L. & BUS. 483, 492 (May 2000) (“Early decisions indicate that [the UDRP is] being
interpreted expansively in favor of trademark owners.”); Mueller, Rough Justice, supra note
169.
172. See Final Report, Second WIPO Domain Name Process, supra note 27, ¶ 20 (noting
that twenty-two ccTLDs have adopted the UDRP); id. ¶ 33 (discussing use of UDRP by new
gtlds); World Intellectual Property Organization, Second Internet Domain Name Process,
Request for Comments 1: Request for Comments on Terms of Reference, Procedures and
Timetable for the Second WIPO Internet Domain Name Process (July 10, 2000) (requesting
public comments for developing recommendations on certain intellectual property domain
n a m e i s s u e s n o t i n c l u d e d w i t h i n U D R P ) , a v a i l a b l e a t
http://wipo2.wipo.int/process2/rfc/rfcl/index.html; WIPO Conference on Intellectual Property
Questions Relating to the ccTLDs (Feb 20, 2001) (noting WIPO conference discussing
importance of applying dispute settlement rules to ccTLDs), available at
http://ecommerce.wipo.int/meetings/2001/cctlds/.
expansively in ways that generally favored intellectual property
owners over domain name registrants.171
These rulings occurred
notwithstanding the clear intent of the UDRP drafters to limit the
panels’ authority to core cases of domain-name abuse, and at a time
when both ICANN and WIPO were considering their own expansion
of the UDRP to new gTLDs and existing country code domain names
(ccTLDs) as well as to names and identifiers not covered by the
present Policy.172
Therefore, just as the creation of the UDRP did not adhere to a
process of deliberative construction followed by prior international
lawmakers, so too many UDRP panels have jettisoned the
incrementalist decision-making methodology that other
international dispute settlement bodies have adopted.
II. CHECKING FUNCTIONS IN THE UDRP
The previous section demonstrated the ways in which the UDRP
is composed of elements found in judicial, arbitral, and ministerial
decision-making systems. In this section, we analyze the
consequences of this hybrid structure. We begin with a discussion
of the values of hybridization, identifying the advantages that flow
from amalgamating the features of different decision-making
paradigms. But hybridization has risks as well as benefits. Those
risks relate to the mechanisms used to control the power granted to
individual decision makers.
2001] DESIGNING NON-NATIONAL SYSTEMS 189
173. Creational checking functions arise when a decision-making body is established. They
are designed to impose checks ex ante by anticipating the different kinds of excesses that
decision makers may engage in and by adopting procedures to prevent them. External
checking functions, in contrast, operate ex post in response to perceived errors or excesses of
authority by decision makers in a specific case. Either the participants in a dispute or
interested third parties may seek to initiate these external checking functions, selecting one
or more mechanisms from the range of control devices put into place when the decisionmaking
body was first established. Internal checking functions are internally generated forces
within each system that operate upon judicial, arbitral, or ministerial decision makers to
correct errors or check abuses of authority.
Although this working typology is useful in highlighting the different ways in which
decision makers can be controlled, the classifications are not always distinct. For a related
discussion of internal and external controls in international and arbitral decision-making
systems, see W. MICHAEL REISMAN, SYSTEMS OF CONTROL IN INTERNATIONAL ADJUDICATION
AND ARBITRATION 1-7 (1992).
174. See Daniel Bodansky, The Legitimacy of International Governance: A Coming
Challenge for International Environmental Law?, 93 AM. J. INT’L L. 596, 600 (defining
legitimacy as “a quality that leads people (or states) to accept authority—independent of
coercion, self-interest, or rational persuasion—because of a general sense that the authority
is justified” and citing numerous other definitions from domestic and international law,
political theory, and philosophy); see also William W. Park, Duty and Discretion in
International Arbitration, 93 AM.J.INT’L L. 805, 817 & n.94 (1999) (noting that most national
laws permit challenges to arbitral awards in which arbitrators “exceed[ed] their authority”
or “overreach[ed] their mandates”).
175. In the judicial context, examples include the ECHR deciding cases involving massive
violations of human rights, see Menno T. Kamminga, Is the European Convention on Human
Rights Sufficiently Equipped to Cope with Gross and Systematic Violations?, 12 NETH.H.R.Q.
153 (1994), or the ECJ or the WTO’s Appellate Body making “political judgments” that they
are ill-equipped to make, see George A. Bermann, Taking Subsidiarity Seriously: Federalism
in the European Community and the United States, 94 COLUM. L. REV. 331, 391 (1994); Ravi
Kanth, WTO General Council Chair Warns of Peril to Dispute Settlement System, 17 INT’L
TRADE REP. (BNA) 1157 (July 27, 2000). In the arbitration context, examples include arbitral
panels deciding cases involving domestic public laws rather than private contractual
agreements. See RESTATEMENT (THIRD) OF FOREIGN RELATIONS LAW OF THE UNITED STATES
§ 488 cmt. a (1987) (“The law of most states regards certain kinds of issues as not subject to
arbitration, typically agreements not of a commercial character or not between merchants,
and public law issues ....”). In the ministerial context, the issue can arise when an agency
Within any single judicial, arbitral, or ministerial decisionmaking
system, a variety of checking mechanisms constrain the
power of decision makers. As a working typology, we divide these
mechanisms into three distinct categories, which we refer to as
creational, external, and internal checking functions.173
These
checking mechanisms serve several important objectives. They
bolster the legitimacy of decision-making outcomes and the
accountability of decision makers,174
they confine decision making
within the bounds of a system’s institutional capacity,175
they correct
190 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
exercises its authority over novel subject matters without first acquiring the necessary
technical expertise to address them. See James Gleick, Patently Absurd, N.Y.TIMES , Mar. 12,
2000 (Magazine), at 47 (questioning U.S. Patent Office’s competence to handle e-commerce
and software patents).
176. See Robert M. Cover & T. Alexander Aleinikoff, Dialectical Federalism: Habeas Corpus
and the Court, 86 YALE. L. J. 1035 (1977) (discussing the merits of redundant litigation to
correct errors); cf. Helfer, Forum Shopping, supra note 1, at 293 (noting that successive
review of same petition by multiple human rights tribunals serves error correcting functions).
177. It is worth noting at the outset, however, that the hybrid nature of the UDRP is not
confined to a blending of features from adjudicative, arbitral, and ministerial prototypes. The
UDRP system is a hybrid also of national, international, and anational structures and
influences. In Part III, we will return in more detail to the conjoining of these features. The
UDRP might also be viewed as a hybridization of private and public regulation. See Henry H.
Perritt, Jr., Defining the Hybrid in Hybrid Regulation, 2001 U. Chi. Legal. F. (forthcoming
errors, and they ensure consistent outcomes in factually and legally
comparable cases.176
When elements from different decision-making systems are
combined, however, the checking mechanisms that operate in any
one system cannot automatically be imported into the new hybrid
system. In the case of the UDRP, checking devices found in one or
another of the adjudicatory, arbitral, and ministerial models are
insufficient in themselves to constrain UDRP panel decision
making; oftentimes, they are simply inappropriate. Moreover,
ambiguities and contradictions as to the source and content of the
UDRP’s checking functions send conflicting messages to panels and
create incentives for them to act in ways the UDRP’s drafters did
not intend. We contend that the failure to grapple with the hybrid
conceptual identity of the UDRP system and, more importantly, to
develop autonomous checking functions that reflect the distinctive
nature of the UDRP, is the most significant casualty of jettisoning
a deliberative pace of lawmaking.
A. The Values of Hybridization in Non-National Systems
In describing the UDRP’s decision-making structure as a nonnational
hybrid, we focus on the features typically found in distinct
arbitral, ministerial and adjudicative models. As we explain in
detail in Part III, we cautiously support the use of hybrid
mechanisms that consciously draw upon the characteristics of these
different antecedents to fashion a new institutional device suited for
transborder problems.177
2001] DESIGNING NON-NATIONAL SYSTEMS 191
2001) (on file with authors).
178. See supra notes 6 and 14.
As a preliminary matter, however, one might ask why such
hybridization is useful in a non-national setting? To be sure, the
conflict between the non-national nature of the domain-name
system and the national nature of the trademark system alone
explains the need to blend non-national and national influences. But
why also pursue a hybrid of adjudicatory, arbitral, and ministerial
models?
In part, the non-national nature of the domain-name system, like
the contexts to which the UDRP might be extended, demands such
hybridization in seeking an optimal form of dispute settlement.
Non-national-like dispute settlement has occurred heretofore only
in the arbitral context.178
Arbitration might then appear a good
starting point from which to develop a model for non-national
dispute settlement. Indeed, the streamlined proceedings typically
identified as an advantage of arbitration would also appear to
further one of the objectives underlying all proposals to address the
trademark-domain name conflict.
The arbitral model, however, would not be appropriate for nonnational
dispute settlement if adopted without modification. The
success of arbitration—its speed, its decision making tailored more
closely to parties’ intent than to default principles of law, and its
finality ensured by less intrusive external review by courts—is
premised upon two important characteristics not present here.
First, the parties in arbitration have consented to these reduced
forms of external checks, and second, the decision of the arbitrator
affects only the parties and has limited if any value in articulating
broader norms or rules. Neither the parties (by virtue of their
consent) nor society (because the arbitration affects only the
disputants) can therefore object to the truncated external checking
mechanisms that are found in the arbitral model.
By contrast, parties to non-national UDRP proceedings are
strangers and have not, other than formally, consented to the
arbitral procedures thereunder, and the process by which the UDRP
was created cannot serve as a genuine proxy for their consent. And
if UDRP decision making is to effect the creation of norms, as we
(and the proponents of the UDRP) intend and as the publication of
192 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
decisions makes inevitable, then some of the control features found
in a traditional adjudicatory model must be incorporated.
This does not mean that we should simply adopt an adjudicatory
template, however. Courts remain predominantly national in
nature, and court proceedings remain slow and expensive. So the
wholesale adoption of the adjudicatory model is not attractive as a
solution to a non-national problem. Instead, only selective
incorporation of some of the checking features of that model is
advisable.
Adoption of adjudicatory features, of course, will slow down the
decision-making process, and thus, one might wish to reinject speed.
Here, the ministerial model has a role to play. Ministerial decision
making has the advantage of speed but it is restricted to cases
where the application of the relevant rules is routinized. Much of
the non-national decision making that occurs in the UDRP is not so
routine. Consequently, although we might wish to incorporate
aspects of the ministerial model, we cannot rely wholly on it as an
antecedent because the functions it delegates to decision makers
assume a far less discretionary form of decision making than we
contemplate here. It would appear then that the non-national model
could benefit from some—but not all—aspects of this pre-existing
model.
B. Checking Functions in International Arbitration and in the
UDRP
As explained in Part I, much of the UDRP was built in part upon
an arbitral model of decision making. The resolution of disputes
between private parties pursuant to what are nominally contractual
obligations; the use of lawyers, academics, and retired judges as
decision makers; the creation of multiple, independent dispute
settlement centers; and the role of the parties in choosing the panel
all reflect arbitral antecedents. With respect to the mechanisms
used to control excesses of authority and correct errors, however,
there are critical distinctions between the checking functions of
international arbitration and those found in the UDRP. We address
those differences below.
2001] DESIGNING NON-NATIONAL SYSTEMS 193
179. For working descriptions of these types of checking mechanisms, see supra note 173.
180. REDFERN & HUNTER, supra note 1, at 278 (party autonomy is the “guiding principle
in determining the procedure to be followed”). See also Hans Smit, The Future of International
Commercial Arbitration: A Single Transnational Institution?, 25 COLUM. J. TRANSNAT’L L. 9,
14 (1986) (noting that “virtually all of the advantages to be gained from institutional
arbitration can be gained by making appropriate contractual provisions at the time of making
the arbitration agreement”).
181. In ad hoc arbitration, by contrast, the parties create individualized substantive and
procedural rules for arbitrating their dispute.
182. Smit, supra note 6, at 634-43; Smit, supra note 180, at 14.
1. Checking Functions in International Arbitration
In international arbitration, the most important constraints on
decision makers are ex ante creational checks rather than ex post
external or internal checks.179
Consider first creational checking
mechanisms, which arise from negotiations between the contracting
parties superimposed upon a backdrop of arbitration-related
national laws and treaties. Under the paramount arbitral principle
of party autonomy, the parties have virtually unfettered discretion
to choose the structure and rules under which their disputes will be
decided.180
Three of their ex ante choices, however, are the most
significant for purposes of checking the power of arbitral panels: (1)
deciding between ad hoc and institutional arbitration, (2) agreeing
upon the place where the arbitration will be conducted, and (3)
selecting the composition of the panel.
The virtue of institutional arbitration is that it allows the
contracting parties to select a suite of predrafted, time-tested
procedural rules superintended by an established center of
international arbitration.181
Included among these rules are a host
of mechanisms for supervising the arbitral process, ranging from
assisting in the selection of the panel, to entertaining challenges to
the impartiality or qualifications of individual panelists, to
reviewing the content of draft awards.182
However, because each
institution exercises these supervisory functions in different ways,
the parties’ choice of a particular institution determines the scope
of the checking functions applicable to the arbitrators.
The composition of the panel of arbitrators is also a significant
creational control mechanism. In international commercial
arbitration, use of a three-member panel is the accepted norm, and
often a default rule if the parties fail to specify a different selection
194 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
183. REDFERN & HUNTER, supra note 1, at 193, 378; see UNCITRAL Model Law on
International Commercial Arbitration, art. 11(3) (1985) [hereinafter UNCITRAL Model Law]
(specifying tripartite arbitration as default rule for panel composition), available at
http://www.uncitral.org/english/texts/arbitration/ml-arb.htm.
184. Alan Scott Rau, Integrity in Private Judging, 38 S. TEX. L. REV. 485, 506 & nn. 85-86
(1997).
185. REDFERN & HUNTER, supra note 1, at 193-94 (indicating three-member panels are
most effective for international commercial arbitration because parties are more likely to have
confidence in their decisions); Rau, supra note 184, at 527 (noting the “widely-shared
conviction that the ability to participate in the selection of arbitrators is critical to fairness
in dispute resolution”).
186. See generally William W. Park, The Lex Loci Arbitri and International Commercial
Arbitration, 32 INT’L & COMP. L.Q. 21 (1983). Disputes over issues such as the validity and
scope of an agreement to arbitrate, the need for provisional relief, or the use of judicial
measures in aid of arbitration are often resolved by national courts. See Smit, supra note 6,
at 631-39.
187. See Park, supra note 174, at 809-10, 815.
188. See UNCITRAL Model Law, supra note 183, art. 34 (setting forth limited grounds
upon which international arbitral awards may be set aside); Convention on the Recognition
method.183
Use of a tripartite panel typically allows each party to
choose one arbitrator (so-called “party arbitrators”), providing
confidence that at least one member of the panel will share that
party’s views of the case and, more broadly, the same language,
legal culture and philosophical approach.184
Three-member panels
also promote confidence in the arbitral process and thus generate
fewer challenges to the panel’s final decision.185
Choosing the location of the arbitration also implicates creational
checking functions. International arbitration is not wholly detached
from the physical place in which the arbitration occurs. Location
determines the national law governing disputes over the conduct of
proceedings and the enforcement of awards, thereby allowing
nations to monitor and control arbitrations conducted within their
borders.186
However, because different national laws exhibit
different degrees of solicitude toward arbitration, the choice of a
particular venue necessarily implicates the scope of the checking
functions that national courts will exercise over arbitral
proceedings.187
For example, parties choosing a host state whose
national arbitration law is modeled on the UNCITRAL Model Law
or the New York Convention have implicitly agreed ex ante to limit
the scope of judicial review to issues of basic procedural fairness and
violations of the forum’s public policies, rather than to correcting
errors of law.188
2001] DESIGNING NON-NATIONAL SYSTEMS 195
and Enforcement of Foreign Arbitral Awards, June 10, 1958, 21 U.S.T. 2517, 330 U.N.T.S. 38
[hereinafter New York Convention]. Ratified by more than 120 nations, the New York
Convention mandates enforcement of foreign arbitral awards subject to a limited set of
defenses that include invalid arbitration agreements, lack of due process, excess of authority,
irregular composition of the tribunal, or a violation of the public policy of the enforcing state.
See id. art. V. Review of an arbitrator’s legal errors is not permitted. Most but not all national
arbitration laws track these limited review standards. See Park, supra note 174, at 815-17.
189. Indeed, so pervasive is the deference granted to arbitral decisions that one
commentator has stated that “an agreement to arbitrate is, in effect, an agreement to comply
with the arbitrator’s decision whether or not the arbitrator applies the law.” Stephen J. Ware,
Default Rules from Mandatory Rules: Privatizing Law Through Arbitration, 83 MINN.L.REV.
703, 712 (1999).
190. Prior to the constitution of the arbitral panel, challenges to the agreement to arbitrate
or to the impartiality of particular arbitrators are subject to established review procedures
and receive a fair measure of solicitude by the outsiders asked to consider them. Challenges
later in the process are less well-received, and postaward challenges, although quite common,
are treated with the least solicitude. See GARY B. BORN, INTERNATIONAL COMMERCIAL
ARBITRATION IN THE UNITED STATES 67-69 (1994) (discussing procedures for parties to
challenge arbitrators appointed to panel); Sir Michael Kerr, Concord and Conflict in
International Arbitration, 13 ARBITRATION INT’L 121, 134-41 (1997) (discussing a variety of
“interventions by national courts”); Rau, supra note 184, at 491 (discussing UNCITRAL Model
Law which “create[s] a mechanism for pre-hearing judicial challenges to arbitrators based on
required disclosures”). The New York Convention’s exceptionally narrow grounds for
contesting the enforcement of arbitral awards is perhaps the most obvious manifestation of
this practice. Tellingly absent from the Convention is any provision allowing a losing party
to challenge an award on the basis of legal errors committed by the arbitrator, even where
those errors are quite flagrant. See BORN, supra, at 506 (noting that U.S. courts have
repeatedly interpreted the New York Convention “as foreclosing virtually all judicial review
of the merits of arbitral awards”); REISMAN, supra note 173, at 109-20 (analyzing the control
scheme of the New York Convention).
Turning from creational to external checking functions, the
parties’ opportunity to control arbitral decision makers becomes
significantly more attenuated. Indeed, an essential feature of the
system of private ordering that arbitration makes possible is the
deference national legislatures, national courts, and even
arbitration centers show to the arbitral process and to the finality
of decisions and awards.189
As a general rule, successful challenges
become increasingly more difficult as the arbitration proceeds.190
Knowing the broad deference given to the international arbitral
process in general, and panel decisions in particular, the parties are
free to bargain for more extensive challenge and review procedures.
Most do not make such choices, however, because of the additional
uncertainty, delays, and costs such procedures would add.
Nevertheless, it is the knowledge that the parties could have
196 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
191. As Professor Rau has written:
[A]rbitration should be understood through the lenses of contract rather than
of adjudication: With respect to the neutrality of the arbitrators, just as with
respect to other questions—for example, the extent of their “jurisdiction” or the
finality of their award—the only serious inquiry ought to be one into the
understanding and underlying assumptions of the contracting parties.
Rau, supra note 184, at 487; see also REISMAN, supra note 173, at 5-6; Park, supra note 174,
at 814-15.
192. REISMAN, supra note 173, at 6 (noting absence in international arbitration, as
compared to domestic arbitration, of the “hierarchical control system equipped with an
effective compulsory jurisdiction to review allegations of excessive jurisdiction and to decide
impartially the alleged nullity of the award”).
193. See DEZALAY & GARTH, supra note 9, at 7.
bargained to include these elements in their dispute settlement
arrangements ex ante that legitimizes the system of deference given
to an arbitrator’s conclusions ex post.
How do the constraints on challenging arbitral decisions affect the
incentives of arbitrators to limit their own authority? Arbitral
panels are traditionally concerned not with articulating governing
legal norms but with resolving private disputes within the
constraints imposed by the parties’ contract. Fealty to the parties’
intent, therefore, is the benchmark against which arbitral
accountability is measured.191
The degree to which this benchmark
has been internalized is more difficult to assess. For, if external
checking functions are deliberately structured to be narrow,
arbitrators may experience only weak incentives to behave in ways
that are faithful to the parties’ intent.192
Even if formalized mechanisms of external control are scant in
any individual case, however, certain features of the arbitral system
tend over time to internalize core notions of accountability to
parties. The simple fact that arbitration is consensual serves to
internalize accountability norms. Arbitrators know that the parties
enjoy significant latitude in deciding where and how to resolve their
disputes.193
Thus, even if the prospects of a particular panel award
being overturned by a national court are slim, the cumulative effect
of exceeding authority across a number of cases is likely to press
arbitrators to internalize certain limiting principles. This effect is
particularly pronounced where the arbitrators regularly resolve
disputes in a specific industry or for a particular center, or hope to
2001] DESIGNING NON-NATIONAL SYSTEMS 197
194. See G. Richard Shell, Res Judicata and Collateral Estoppel Effects of Commercial
Arbitration, 35 UCLA L. REV. 623, 634 (1988). Shell states:
Arbitrators, unlike judges, often have an incentive to make disputants equally
happy or unhappy because they are paid by the parties rather than by the state.
Since risk averse parties are more likely to agree on an arbitrator who has a
reputation for moderate decisions ... arbitrators who want to encourage repeat
business will seek a reputation for moderation rather than extremism in their
decision making.
Id. See also Rau, supra note 184, at 521 (discussing arbitrators’ “self-interest in trying to
secure and expand prospects of future arbitral appointments”).
195. See, e.g, Arbitration Rules of the United Nations Commission on International Trade
Law, UNCITRAL art. 32(2), G.A. Res. 31/98, Dec. 15, 1976 (noting that “the arbitral tribunal
shall state the reasons upon which the award is based, unless the parties have agreed that
no reasons are to be given”); Rules of Arbitration of the International Chamber of Commerce,
1 Jan. 1998, R.25(2) (“The Award shall state the reasons upon which it is based.”), available
at http://www.iccwbo.org/court/english/arbitration/rules.asp; London Court of International
Arbitration, Arbitration Rules, Recommended Clauses & Costs, art. 26.1 (“The Arbitral
Tribunal shall make its award in writing and, unless all parties agree in writing otherwise,
shall state the reasons upon which its award is based.”), available at www.lciaarbitration.com/rulecost/english.htm
(last visited Oct. 2, 2001).
196. See Abul F.M. Maniruzzaman, The Lex Mercatoria and International Contracts: A
Challenge for International Commercial Arbitration?, 14 AM. U. INT’L L. REV. 657, 716-21
(1999) (criticizing arbitral awards as insufficiently reasoned and often based on “contextual
justice” rather than careful legal analysis); Rau, supra note 184, at 523, 534 (indicating
arbitration, unlike adjudication, creates “a tendency to look for intermediate solutions ...
responsive to the uniqueness of each dispute” that often takes the form of “compromise
awards”); see also REISMAN, supra note 173, at 95 (identifying structural incentives for threeperson
arbitrations to produce compromise awards).
This approach to decision making is especially prevalent where awards must be issued
entice parties to appoint them to the financially remunerative task
of serving on future panels.194
Consider the effect of these internalized checking functions on the
content of arbitral awards. Nearly all international arbitration
systems require that arbitrators give reasons for their decisions.195
These reasons are not reviewed, however, with anywhere near the
scrutiny of domestic and international judicial appeals, and even the
deliberate disregard of controlling legal precepts is often an
insufficient basis upon which to vacate an award. To the extent that
external control mechanisms do exist, they are directed primarily to
curbing excesses of authority rather than to correcting legal errors.
In any single dispute, therefore, an arbitrator’s incentive to engage
in rigorous legal analysis often will be outweighed by her incentive
to reach a conclusion that is faithful to the arbitration agreement
and is acceptable, or at least tolerable, to both contesting parties.196
198 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
within a short period of time, whether because of contractual or institutionally imposed
deadlines or workload constraints. Cf. Ted L. Stein, Remarks, Decisions of the Iran-United
States Claims Tribunal, 78 AM.SOC’YINT’LL.PROC. 221, 228-29 (1984) (stating that tribunal’s
heavy caseload tends to suppress extended legal reasoning).
197. See Maniruzzaman, supra note 196, at 721 (“In arbitral practice it seems to be a
striking feature that in many cases arbitrators leave out the analysis or any discussion while
applying any principle of law.”); see also Rt. Hon. Lord Justice Bingham, Reasons and Reasons
for Reasons: Differences Between a Court Judgment and an Arbitration Award, 4 INT’L ARB.
141, 154 (1988) (“An arbitrator is not called upon to make detailed analysis of the legal
principles canvassed before him or to review in any detail the legal authorities cited.”).
198. One exception to this is the ICSID annulment procedure. See REISMAN, supra note
173, at 46-106. Although the ICC does contain a court, it does not review arbitration decisions
on matters of substance. See REDFERN & HUNTER, supra note 1, at 51.
199. See Maniruzzaman, supra note 196, at 717-32 (discussing impediments to formation
of lex mercatoria); see also KLAUS PETER BERGER, THE CREEPING CODIFICATION OF THE LEX
MERCATORIA xiii (1999) (suggesting reforms of international arbitration practice designed to
make the lex mercatoria “a self-contained legal system” rather than “a method of
decisionmaking”). For competing views, see LEXMERCATORIAANDARBITRATION:ADISCUSSION
OF THE NEW LAW MERCHANT (Thomas E. Carbonneau ed., 1998).
Nor are arbitrators likely to be especially concerned with the
effects of their reasoning on third parties. First, arbitral decisions
are free from the constraining effects of precedent, a necessity given
that parties regularly require decisions to remain unpublished or
crucial passages excised to preserve confidentiality. Where decisions
are published, they often contain desultory reasoning or fail to
maintain decisional harmony with prior published cases addressing
analogous legal issues.197
These decisional ambiguities and conflicts
often remain unresolved due to the paucity of institutionalized
appellate processes to clarify or reconcile them.198
Indeed, without
a system of internal and external checks to support the production
of carefully reasoned awards, commentators have questioned
whether the international arbitration system is capable of
developing a distinct body of rules and norms.199
2. Misplaced and Inadequate Arbitral Checking Functions in
the UDRP
When viewed in the aggregate, the most important constraints on
arbitral decision makers are ex ante creational checks rather than
ex post external or internal checks. The parties’ ultimate control
over an arbitrator’s power flows from their virtually unfettered right
to choose the substantive and procedural rules according to which
2001] DESIGNING NON-NATIONAL SYSTEMS 199
200. For this reason, inter alia, the scope of the Federal Arbitration Act, which sanctions
arbitration of contractual disputes, is stated to be inapplicable to contracts of employment of
any “class of workers engaged in foreign or interstate commerce.” 9 U.S.C. § 1 (2000). The
Supreme Court, however, has emphasized the federal policy favoring arbitration when in
interpreting the scope of the arbitration statute. See Circuit City Stores. Inc. v. Adams, 532
U.S. 105 (2001) (upholding pre-dispute arbitration clauses in employment contracts); see also
Louise Weinberg, Of Sovereignty and Union: The Legends of Alden, 76 NOTRE DAME L. REV.
1113, 1163 & n.246 (2001) (citing Circuit City and referring to the Court’s “iron enforcement
of the Federal Arbitration Act”).
201. Thus, while much of the criticism of the ICANN process has focused on questions of
“voice,” the questions of “exit” are also important. See Dan L. Burk, Virtual Exit in the Global
Information Economy, 73 CHI.-KENT L. REV. 943 (1998).
202. See Froomkin, Wrong Turn in Cyberspace, supra note 26, at 98-99. A domain name
registrant’s control over the mechanisms of dispute settlement is limited from the perspective
of the three creational checking functions identified above. First, she cannot specify in
advance which of the ICANN-accredited dispute settlement providers will hear her case.
UDRP Rules, supra note 17, Rule 3(a). This omission is significant given the diversity of
approaches among providers to handling challenges to a panel member’s independence or
impartiality, a subject we address below.
Second, although she can define the courts of mutual jurisdiction by her residence and
the arbitral panel will decide their dispute. For this reason,
negotiating the terms of the agreement to arbitrate is perhaps the
most effective means of preserving accountability, preventing errors
and controlling excesses of arbitral power.200
a. Creational Checking Functions
Consider the implications of this balance of arbitral checking
functions for the UDRP. By imposing uniform, mandatory dispute
settlement rules upon all domain-name registrants, ICANN
eliminated the ability of registrants to opt out of UDRP dispute
settlement proceedings or to tailor the system to their needs.201
When an individual registers a domain name with any registrar of
names in the three unrestricted generic top level domains anywhere
in the world, she confronts a non-negotiable contract of adhesion.
She cannot specify the subject matter of the disputes upon which
the panel is empowered to rule or the procedures that it will follow,
and she has (consistent with the inapt analogy to arbitral models)
only limited control (via her selection of registrar, and hence the
courts of mutual jurisdiction from which to seek redress) over the
mechanisms by which panel excesses or errors may be challenged or
reviewed.202
200 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
place of registration, she is unable to negotiate the background rules of national law against
which the panel’s performance will be measured. This is so because there is no clear “seat”
of arbitration in cyberspace and determining that seat will be crucial to determining the law
to be applied by the court of mutual jurisdiction.
Third, although a registrant may participate in the panel selection process by electing to
have her dispute heard by a three-member panel, such participation comes at the expense of
splitting the cost of the proceedings with the complainant unless the trademark owner has
already chosen a three-member panel to hear its complaint. The complainant’s incentive to
select a three-person panel is also limited by the increased costs associated with this method
of proceeding under the UDRP. See infra note 236 (citing cost data).
203. In the case of tortious acts between strangers (such as cybersquatting or trademark
infringement), it has been argued that the absence of a “preexisting voluntary relationship
between the parties” precludes use of arbitration as a method of dispute settlement. William
M. Landes & Richard A. Posner, Adjudication as a Private Good, 8 J. LEGAL STUD. 235, 237
(1979). In fact, arbitration is possible whenever the parties can be “contractually-linked
through intermediaries.” Ware, supra note 189, at 752. See also Gilmer v. Interstate/Johnson
Lane Corp., 500 U.S. 20 (1991) (permitting arbitration of age discrimination claims because
of arbitration clause in securities registration application form). In the context of
cybersquatting, therefore, some form of proxy system is essential to replace direct
negotiations over the terms of the agreement to arbitrate.
The “bargain” in the UDRP system is completed when trademark owners agree to certain
ground rules as a condition of filing a UDRP complaint. See, e.g., UDRP Rules, supra note 17,
Rule 3(b)(xiii) & (xiv) (complainant must agree to submit to jurisdiction of a court in at least
one specified “mutual jurisdiction” with respect to “challenges to a decision canceling or
transferring the domain name” and must waive all claims against, inter alia, registrar and
ICANN arising out of the registration of the domain name or any dispute relating to it). This
bargain, however, appears largely to benefit a third party, ICANN, rather than provide
benefits to the other party to the agreement, namely, the domain-name registrant. Indeed,
submission of the trademark owner to one “mutual jurisdiction” for purposes only of
adjudicating the appropriateness of an order canceling the domain-name registration is a
rather small “contractual” return for the domain-name registrant. (It is not clear, for example,
that the trademark owner is to be treated as having submitted to the jurisdiction of these
courts for related purposes, such as to determine whether a cause of action may arise out of
a finding of reverse domain-name hijacking.)
In effect, all of the key substantive and procedural terms of the
UDRP “arbitration” agreement are prenegotiated by ICANN, which
merely heightens the importance of the content of the UDRP’s two
foundational documents and the legitimacy of the process by which
they were drafted. If these foundational documents fairly balance
the substantive interests of trademark owners and domain-name
registrants and if they contain equivalent procedural rights for both
parties, then using ICANN as a proxy for individualized negotiation
of a dispute settlement agreement may well be an acceptable and
efficient alternative.203
If, by contrast, these foundational documents
are substantively or procedurally skewed, or if the process by which
2001] DESIGNING NON-NATIONAL SYSTEMS 201
204. Of course, the existence of de novo review by national courts mitigates any structural
imbalances in the non-national system. As we explain immediately below, however, the
prospects for meaningful national court review of UDRP panel decisions are uncertain at best.
205. Cf. supra note 173 (discussing blending of creational and external checking functions).
206. See WIPO, Supplemental Rules for Uniform Domain Name Dispute Resolution Policy,
Rule 8 Annex C (Dec. 1, 1999) (containing no provision for party challenges to panelist’s
independent or impartiality, but stating that WIPO Arbitration Center itself checks “whether
there are any facts or circumstances, past or present, or that could arise in the foreseeable
future, that might call in to question that person’s independence in the eyes of one or both of
the parties”), available at http://arbiter.wipo.int/domains/rules/supplemental.html.
207. See National Arbitration Forum, Dispute Resolution for Domain Names, Supp. Rule
10(d) (Feb. 1, 2001) [hereinafter Dispute Resolution for Domain Names], available at
http://www.arbforum.com/domains/domain-rules020101.asp.
they were created is open to challenge on legitimacy and
accountability grounds, then the arbitral “bargain” struck by
ICANN is itself called into question and a decisive check on the
authority of UDRP panels has been cast into doubt.204
b. External Checking Functions
These concerns over the UDRP’s creational checking functions are
further exacerbated by the fact that external checks are even more
attenuated in the UDRP context than they are for international
arbitration, both with respect to institutional controls and controls
by national courts. Consider first the external checks imposed by the
four dispute settlement providers and ICANN itself. Under many
systems of institutional arbitration (including the aborted WIPO
ACP procedure), arbitral centers retain the authority to enforce each
panelist’s obligation to be both independent and impartial, first by
requiring panelists to disclose any circumstances giving rise to
doubts over those two attributes, and second by entertaining
challenges from the parties to a particular panelist.
The system of neutrality enforcement contemplated under the
UDRP is substantially more attenuated. Although the UDRP Rules
do impose a duty on all panelists to be impartial and independent,
the means by which that duty is enforced differ according to dispute
settlement provider and thus vary from case to case.205
One provider
gives no specific provision for party challenges;206
another allows
challenges only within a fixed period of time after the initial
appointment of a panelist;207
whereas a third (and perhaps a fourth)
202 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
208. See eResolution, eResolution Supp. Rule, Supp. Rule 10(a), available at
http://www.eresolution.ca/services/dnd/p_r/supprules.htm (last visited Oct. 3, 2001). The CPR
Institute for Dispute Resolution’s rules concerning challenges state only that “[c]hallenges to
the impartiality, integrity or independence of a Panelist shall be determined by an officer of
CPR.” CPR Inst. for Dispute Resolution, CPR’s Supplemental Rules and Fees Schedule, Supp.
Rule 9, available at http://www.cpradr.org/ICANN_RulesAndFees.htm (last visited Oct. 3,
2001).
209. Compare Dispute Resolution for Domain Names, supra note 207, Supp. Rule 10(b)
(setting forth specific grounds for disqualification, including direct financial interest and prior
representation of party), with eResolution, supra note 208, Supp. Rule 10(a) (allowing panelist
recusal “if there are circumstances which raise serious doubts about his or her impartiality
or independence”).
210. See infra Part II.B.2.c. ICANN’s power to approve and monitor dispute settlement
providers will likely serve as a check on any provider that habitually permits biased or partial
panelists to decide UDRP cases. Cases of less than systemic bias may be difficult to monitor,
however, particularly given that the parties will have limited information and incentives to
bring such challenges to ICANN’s attention.
211. See Policy, supra note 17, ¶ 4(k) (parties to UDRP dispute are not precluded “from
submitting the dispute to a court of competent jurisdiction for independent resolution before
such mandatory administrative proceeding is commenced or after such proceeding is
concluded”); see also Referee Enterprises, Inc. v. Planet Ref, Inc., No. 00-C-1391 (E.D. Wis.
Jan. 24, 2001) (federal court issued injunction in case directly at odds with prior UDRP
decision), available at http://www.Loundy.com/CASES/Referee_Ent_v_Planet_Ref.html.
permits challenges at any time during the proceedings if doubts
about a particular panelist arise.208
In addition, the grounds upon
which challenges will be recognized vary widely.209
The fact that
ICANN permits dispute settlement providers to adopt different
standards of review of a panelist’s independence and impartiality
suggests that providers may compete with one another over the
substantive and procedural bases for panelist challenges. Whether
such competition is likely to lead to more or less stringent panelist
review is uncertain, however, and turns in part on the decisionmaking
incentives created by the UDRP’s panel selection rules, an
issue we address in the next subsection.210
The absence of meaningful external controls by national courts
over UDRP proceedings is even more striking. As an initial matter,
however, the claim that external checking functions are more
limited for the UDRP than for international arbitration seems
contrary to the plain terms of the Policy. After all, the drafters
expressly designed the UDRP as a soft-law system that supplements
but does not supplant national court adjudication of domain name
disputes.211
If de novo review by a national court is possible, then it
would seem that the UDRP’s external checking functions are far
2001] DESIGNING NON-NATIONAL SYSTEMS 203
212. This was the rationale adopted in a recent district court decision that refused to apply
the deferential review standards of the U.S. Federal Arbitration Act to UDRP panel decisions.
Parisi v. Netlearning, Inc., 139 F. Supp. 2d 745, 752 (E.D. Va. 2001) (concluding that either
trademark owner or domain name registrant may “seek a de novo review of a dispute that has
been the subject of the [UDRP’s] administrative procedure”).
213. See Second Staff Report, supra note 149, § 4.7. Such a proceeding differs from the
conventional understanding of an appeal. To be sure, the level of review undertaken by courts
of mutual jurisdiction (de novo review) comports with the standard of scrutiny typically
applied by appellate courts to questions of law with which they are presented. Other aspects
of the process, however, set it apart from traditional appeals and affect its role as an effective
checking mechanism. In particular, appellate courts typically are reluctant (or unable) to
disturb factual findings of lower courts absent egregious error. Cf. FED.R.CIV.P. 50 (applying
the “clearly erroneous” standard to review of factual findings of a judge sitting as a fact
finder). This would suggest perhaps, once more, that proceedings in courts of mutual
jurisdiction would serve as a greater external check than normally served by the appellate
system. However, reliance on a developed factual record by the appellate court also serves to
expedite (and render less costly) the conduct of an appeal. The high cost of proceeding before
a national court, one of the reasons for the development of the UDRP, is cemented in place
by the lack of a portable factual record. The de novo factual inquiry, therefore, may
paradoxically exacerbate (or perpetuate) the cost concern of national court proceedings
discussed above, creating a disincentive to “appeal” and hence further weaken the external
check served by “appeals” to national courts.
214. Although the UDRP requires a stay of a panel order where an action is filed by the
domain name registrant in a court of mutual jurisdiction, there is nothing that prevents a
domain name owner from proceeding in another court (perhaps closer to home) that might be
willing to assume jurisdiction over the dispute. See UDRP Rules, supra note 17, Rule 4(k).
While this would not necessarily have the automatic stay effect of proceedings in a court of
stronger than the extremely limited national court checking
mechanisms at work in arbitration.212
Several features of the UDRP
significantly undermine this argument, however, particularly with
respect to external checking functions affecting domain name
registrants. These features suggest that the UDRP may be soft law
in theory, but much harder law in practice.
Consider first the filing of a complaint by a respondent in a court
of so-called “mutual jurisdiction” to challenge a UDRP panel
decision ordering her domain name to be canceled or transferred
(described somewhat loosely as an “appeal” in the preparatory
documents).213
The extremely short ten-day window within which
respondents must file such a proceeding is likely to exert a
significant deterrent effect on national court review. Initiating
litigation is often a time-consuming and complex process,
particularly for individuals and businesses with limited financial
resources who may be forced to find an attorney to litigate in a
foreign jurisdiction.214
Of course, nothing precludes a respondent
204 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
mutual jurisdiction, it is unclear how a domain name registrar would deal with conflicting
national court determinations and/or orders. Cf. id., Rule 3(b) (noting that changes will be
made to domain name registration if an order is received from a court of “competent
jurisdiction”). It is for this reason, among many others, as we discuss in Part III, that a
jurisprudence of national-non-national relations must be developed.
215. Patrick L. Jones, UDRP Appeals in Court [hereinafter UDRP Appeals in Court], at
http://www.udrplaw.net/UDRPappeals.htm (last visited Oct. 3, 2001). See also Cerf, supra
note 26, at C2 (“Even though the UDRP is non-binding ... it appears that [the challenge to
panelists’ decisions] has happened in only a few dozen out of over 2,000 decisions to date.”).
But see infra note 217 (referencing specific appeals).
216. Froomkin, WIPO Commentary, supra note 85, ¶¶ 124-27.
217. See Virtuality L.L.C. v. Bata Ltd., No. H-00-3054 (D. Md. Apr. 2, 2001) (dismissing
registrant’s state law claims but retaining jurisdiction of federal claims), available at
http://www.mdd.uscourts.gov/Opinions/PDF/2001/April/bata.pdf; Famology.com, Inc. v. Perot
Systems Corp., No. 00-2363 (E.D. Pa. June 19, 2001) (dismissing registrant’s conversion claim
from filing national court proceedings after the ten-day window has
expired. The registrant’s incentives to do so once a domain name has
been canceled or transferred will be substantially diminished,
however, particularly when the removal of the domain name
disrupts her established or planned business operations. From a
cost-benefit perspective, it may be preferable to transfer operations
to a different domain name or even to abandon a start-up enterprise
altogether. Empirical evidence on this point is anecdotal, but the
most comprehensive database of national court challenges to UDRP
rulings lists only twenty-five cases in federal district court and one
foreign case out of the more than 3500 UDRP panel decisions to
date.215
Second, it is unclear whether respondents who do muster the
resources to appeal panel decisions in fact possess a cause of action
against a trademark owner under national laws seeking retention
of the domain name. Michael Froomkin in particular has raised this
as a weakness of the UDRP system.216
If this criticism is wellfounded,
even where a dispute between the parties would have been
decided in the respondent’s favor had it been litigated under a
particular national trademark or cybersquatting law, domain name
registrants may not be able to reverse a panel decision where a
transfer is already a fait accompli.
Whether the criticism is well-founded, however, is not so clear (at
least under U.S. law). A small number of cases have been filed by
aggrieved domain name registrants raising a smorgasbord of causes
of action.217
And the Anti-Cybersquatting Consumer Protection Act
2001] DESIGNING NON-NATIONAL SYSTEMS 205
against trademark owner but refusing to dismiss tortious interference with contract and
abuses of process claims), available at http://www.udrplaw.net/UDRPappeals.htm. For a
different complaint filed in a U.S. district court seeking to reverse a panel ruling, see
Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, No. 00-CV-141L (filed Aug.
17, 2000) (alleging causes of action for fraud and unfair competition, tortious interference
with prospective economic advantage and a declaratory judgment of no trademark
infringement), available at http://www.domainbattles.com/lawsuit3.htm.
218. Pub. L. No. 106-113, 113 Stat. 1536 (codified at 15 U.S.C. § 1125(d) (Supp. V 1999)).
219. 15 U.S.C. § 1114(2)(D)(v) (1994). The statute also provided a cause of action for owners
of trademarks—both registered and unregistered—against cybersquatters. 15 U.S.C. §
1125(d). In contrast to section 1114(2)(D)(v), the provision, this part of the statute has been
used heavily by trademark owners. See, e.g., Sporty’s Farm L.L.C. v. Sportsman’s Market,
Inc., 202 F.3d 489, 495 (2d Cir. 2000), cert. denied, 530 U.S. 1262 (2000).
220. 15 U.S.C. § 1114(2)(D)(v). Although at least one complaint has been filed in a U.S.
district court seeking to challenge a panel ruling under this provision, there have been no
reported decisions interpreting it. Barcelona.com, (http://www.domainbattles.com/
lawsuit3.htm.).
It is unclear whether section 1114(2)(D)(v) was thought necessary to remedy jurisdictional,
substantive, or remedial failings. A declaratory judgment action for nonviolation of the
Lanham Act surely existed—subject to the thresholds required for such actions
generally—even without section 1114(2)(D)(v). But the relief provided in the statute suggests
that this might be a useful means of checking UDRP excesses. This provision raises a variety
of issues in addition to its intended application. For example, to work fully, the domain name
registrant may have to join the domain-name registrar as a defendant in the action.
(ACPA),218
enacted in the United States in late 1999, permits
domain-name registrants whose domain name has been canceled or
transferred pursuant to the UDRP (or a similar policy) to file a civil
action in U.S. federal court against the prevailing party in order to
establish that the registration and use of the domain name was
lawful under the Lanham Act.219
If the domain-name registrant is
successful, the court may “grant injunctive relief to the domain
name registrant, including the reactivation of the domain name or
transfer of the domain name to the domain name registrant.”220
To
our knowledge, no other national law provides such a cause of
action.
Third, respondents who frame their claims not as an appeal of the
merits of a UDRP ruling but rather as a challenge to excesses of
panel power are equally unlikely to prevail. In traditional
international arbitral proceedings, nation-states have enacted
detailed statutory regimes to allow losing parties to challenge
awards, albeit on very limited grounds. But it is doubtful that
hybrid UDRP decisions qualify as arbitral awards under these
statutes, particularly given the de novo national court review
206 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
221. Many national arbitration statutes are based on the UNCITRAL Model Law, supra
note 183, whose applicability to UDRP proceedings is highly questionable. Most importantly,
the model law permits the parties to have recourse to a national court to “set aside” an
arbitral award only on exceedingly narrow grounds, such as incapacity of a party; invalidity
of the arbitration agreement; lack of proper notice of the arbitral proceedings; failure to follow
the agreed panel appointments process; awards dealing with disputes or matters beyond the
scope of the submission to arbitration; disputes not capable of settlement by arbitration under
national law; or awards in conflict with the public policy of the State. See id. art. 34. These
narrow grounds are directly at odds with a system in which the parties may seek de novo
review of the award by a national court.
222. See Parisi v. Netlearning, Inc., 139 F. Supp. 2d 745, 752 (E.D. Va. 2001) (rejecting
claim of trademark owner that UDRP decisions were arbitral awards entitled to the
deferential review and enforcement standards of the Federal Arbitration Act, 9 U.S.C. § 10
(2000); see also Weber-Stephen Prods. Co. v. Armitage Hardware & Bldg. Supply, Inc., 54
U.S.P.Q.2d (BNA) 1766 (N.D. Ill. 2000); BroadBridge Media, L.L.C. v. Hypercd.com, 55
U.S.P.Q.2d (BNA) 1426 (S.D.N.Y. 2000).
223. See supra text accompanying notes 213-22.
224. See supra note 188 (discussing UNCITRAL model law).
contemplated by the Policy.221
Courts in the United States, at least,
have indicated that they would not be bound by panel findings,
which suggests a clear intent not to treat panel decisions as arbitral
awards.222
For this reason, it is doubtful that national courts possess
any grant of power to review UDRP panel abuses as such.
As to this third weakness of national court proceedings as an
external check on UDRP decision making, one might respond that
the lack of a check on panel excesses is somewhat untroubling given
courts’ power of de novo review on the merits. Nevertheless, even if
national proceedings on the merits develop in ways that obviate the
problems discussed above,223
limited judicial review of panel
excesses would serve an independent checking role of significant
value. Such “quasi-procedural” reviews224
contribute to checking in
ways that even the ostensibly stronger de novo merits assessment
cannot achieve. The articulation of procedural and structural
standards across the board (e.g., regarding the impartiality of
arbitrators) may be of greater long-term consequence than an
unbiased court simply reaching a different conclusion on the merits.
The latter review ensures a proper result in a single case, but does
nothing to develop appropriate systemic checks on excess at the
level of UDRP panel decision making. Indeed, the legitimacy of the
UDRP system depends on the exposure of such conduct as
unacceptable, even where the outcome of the case on the merits
2001] DESIGNING NON-NATIONAL SYSTEMS 207
225. Attention to these dual concerns of individual justice and systemic monitoring is
achieved in national court systems by doctrines of “harmless error.”
226. This assumes, of course, that national courts will even consider a prior UDRP panel
decision as relevant to their own analysis of the dispute between the parties. See Referee
Enterprises, Inc. v. Planet Ref, Inc., No. 00-C-1391 (E.D. Wis. Jan. 24, 2001) (failing even to
refer to prior UDRP decision between the same parties), available at
http://www.Loundy.com/CASES/Referee_Ent_v_Planet_Ref.html.
227. In addition, depending upon the scope of issues for which merits review by courts of
mutual jurisdiction is available, a procedural checking mechanism may be used by courts
strategically to indicate to panels the parameters of acceptable decision making on
substantive issues. National appellate courts frequently use similar national mechanisms of
judicial review to provide lower courts with guidance on the margins of the substantive law
even where appellate or review jurisdiction over the merits does not exist. See, e.g., In re
Rhone-Poulenc Rorer, Inc., 51 F.3d 1293 (7th Cir. 1995) (using mandamus procedure to review
class action certification where direct appeal unavailable). Indeed, the use (or abuse) of such
appellate procedures for these purposes may force legislators to recognize the need for more
expanded direct review. See FED. R. CIV. P. 23(f) (creating broader appeal possibilities in
context of class certification addressed by mandamus in Rhone-Poulenc); see also Michael E.
Solimine & Christine Oliver Hines, Deciding to Decide: Class Action Certification and
Interlocutory Review by the U.S. Courts of Appeals Under Rule 23(f), 41 WM. & MARY L. REV.
1531 (2000) (discussing genesis of Rule 23(f)).
228. E.g., Banco Inverlat, S.A. v. www.inverlat.com, 112 F. Supp. 2d 521 (E.D. Va. 2000);
Caesars World Inc., v. Caesars-Palace.com, 112 F. Supp. 2d 502 (E.D. Va. 2000).
would be unaffected.225
De novo merits review by national courts
will fail to highlight these excesses, whether courts reach the same
or a different result, thus preventing the internalization of
systemically appropriate standards by UDRP panelists.226
This is
especially so where, for reasons discussed above, other aspects of the
system discourage domain-name respondents from seeking national
court review in individual cases.227
Uncertainty over the location of national court review and the
substantive law to be applied raises a fourth doubt regarding
national courts’ ability to provide adequate external checks on
UDRP panel abuses. Initially, one would expect that, as a result of
the mutual jurisdiction provision in the UDRP, courts in
jurisdictions where registrars are based might develop an expertise
and interest in reviewing UDRP panel decisions. For example, the
Eastern District of Virginia (by virtue of being the home to NSI, the
original exclusive registrar for domain names in the leading generic
top level domains) has thus far dealt with a significant number of
trademark-domain-name disputes.228
But the mutual jurisdiction
provision is unlikely over time to centralize such expertise. Even
assuming that trademark owners will select the domicile of the
208 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
229. Policy, supra note 17, ¶ 3(b). Such courts may include, in some nations, not only
national courts but local courts as well. See David McGuire, California Passes Sweeping AntiCybersquatting
Law, NEWSBYTES, Aug. 23, 2000, 2000 WL 21181749 (discussing California’s
new state cause of action against cybersquatting in domain names that are identical or
confusingly similar to the “real names of other people, living or dead”).
230. See Weber-Stephen Prods. Co. v. Armitage Hardware & Bldg. Supply, Inc., 54
U.S.P.Q.2d (BNA) 1766 (N.D. Ill. 2000); BroadBridge Media, L.L.C. v. Hypercd.com, 55
U.S.P.Q.2d (BNA) 1426 (S.D.N.Y. 2000).
231. See infra notes 365-66 (discussing why a multiplicity of venues might serve a useful
check on UDRP panels and enhance the legitimacy of the lawmaking and adjudicative
process).
232. Cf. Burk, supra note 201 (discussing jurisdictional competition over legal norms
regulating cyberspace); DAN L. BURK, The Market for Digital Piracy, in BORDERS IN
CYBERSPACE 205 (Brian Kahin & Charles Nesson eds., 1997) (discussing danger of “race to
the bottom” in jurisdictional competition over rules of copyright protection).
233. One of us has written elsewhere of the value of “weak” international lawmaking,
facilitated by the wide dispersal of decision makers. See Dinwoodie, A New Copyright Order,
supra note 8, at 570-71 (discussing value of international copyright lawmaking being
conducted by varied national courts). However, there is an important difference between
weakening national courts that create international law through adjudication (which lends
registrar as the court of mutual jurisdiction rather than the domicile
of the domain-name registrant, the geographic location of registrars
is slowly diversifying under ICANN’s competitive registration
policy. As the backlog of disputes regarding NSI-registered domain
names is cleared, a similar disaggregation of national judicial
decision making can be expected. Moreover, respondents are not
restricted to so-called “appeals” and may bring proceedings in any
court of competent jurisdiction.229
At least in the short term, these diverse national courts are likely
to differ widely over the extent of review they grant to UDRP
rulings,230
and over conflict-of-laws methodologies they apply to
determine the applicable substantive rules. Taken together, the
potential for multiple national review venues and the lack of
discernible review standards thus may diminish further the
capacity of national courts to serve as external checks. As a
theoretical matter, multiple venues might generate competition
among legal systems and thus stimulate active national court
review.231
This free market approach to the development of legal
rights certainly undergirds the current domain-name registration
system.232
However, it may not cut as strongly in favor of efficient,
appropriate lawmaking in the context of external checking
mechanisms.233
Dispersing the checking function through
2001] DESIGNING NON-NATIONAL SYSTEMS 209
legitimacy to such lawmaking) and weakening national courts that serve as checks on the
excesses of potentially too powerful non-national lawmakers (which reduces the legitimacy
of the lawmaking endeavor).
234. See Mitsubishi Motors Corp. v. Soler Chrysler-Plymouth, Inc., 473 U.S. 614, 638
(1985) (emphasizing review of arbitral awards at the enforcement stage to ensure compliance
with forum’s public policy).
decentralized review may simply dilute that function, sending the
wrong message to UDRP panelists.
Contrast this state of affairs with international arbitration, in
which review of an award may occur in multiple jurisdictions, but
the nature of that review—challenges under the national laws of the
seat of arbitration, and challenges elsewhere under the strictures of
the New York Convention—is fixed and known in advance to both
the parties and the decision makers prior to the proceedings. Under
this set of external constraints, the award review, however limited,
either at the arbitral situs or during enforcement proceedings, is
likely to—in most cases—identify fairly quickly those arbitrators
who regularly exceed the powers arbitration agreements grant them
or make other egregious errors. The knowledge of such review is
also likely to exert its own constraining effect on arbitrators,
deterring them from making challengeable errors in the first
instance.
Finally, the attenuation of national courts’ external checking
function is manifested by the automatic nature of UDRP
enforcement. Unlike international arbitrations subject to the New
York Convention, there is no requirement that prevailing UDRP
complainants institute separate national court proceedings to
enforce their awards—a crucial check on arbitral power. Instead,
enforcement of UDRP awards in favor of trademark owners are
automatic unless the respondent takes steps to appeal. This shift of
the burden of enforcement removes any opportunity for a “second
look” at the arbitral award,234
thereby destabilizing one of the
features that makes the strong presumption favoring enforcement
of arbitral awards acceptable in the first place.
c. Internal Checking Functions
For the foregoing reasons, national courts are unlikely to exercise
significant de facto external checks on abuses of authority by UDRP
210 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
235. See Shell, supra note 194, at 634.
236. Fees for a single-member panel run between $750 and $1000 (U.S. dollars) for a single
domain name. Fees for a three-member panel run between $2200 and $2500 (U.S. dollars) for
a single domain name. For a comparison of fee schedules and other cost data among the first
three UDRP dispute settlement providers, see Berkman Ctr. For Internet & Soc., Harv. Law
Sch., Choosing a Provider, at http://eon.law.harvard.edu/udrp/process .html (last visited Oct.
3, 2001). Respondents who elect a three-member panel must split the cost of the panel’s fees
with the complainant.
237. Of the first 273 decisions issued by UDRP panels, only nineteen were decided by
three-member panels. See M. Scott Donahey, The ICANN Cybersquatting Decisions # 3: April
7, 2000 through May 5, 2000 [hereinafter Cybersquatting Decisions 3], available at
http://eon.law.harvard.edu/udrp/decisions/2000-3.html (last visited Oct. 3, 2001); M. Scott
Donahey, The ICANN Cybersquatting Decisions # 2: March 2, 2000 through April 6, 2000
[hereinafter Cybersquatting Decisions 2], available at http://eon.law.harvard.edu/udrp/
decisions/2000-2.html (last visited Oct. 3, 2001); M. Scott Donahey, The ICANN
Cybersquatting Decisions # 1: January 14, 2000 through March 9, 2000 [hereinafter
Cybersquatting Decisions 1], available at http://eon.law.harvard.edu/udrp/decisions/2000-
1.html (last visited Oct. 3, 2001). This pattern has largely continued through July 2001. See
Geist, supra note 169, at 17 (reporting that of the first 3094 cases, 292 or 9.5% were decided
by three-person panels).
panels, notwithstanding the de jure power that they are given under
the terms of the Policy. This leaves internal checking functions as
the principal method by which arbitral-type excesses are to be
checked. Yet UDRP panels have only weak incentives to limit their
own authority.
As noted above, the panelists and institutions operating in
international arbitration cases compete for business of both
complaining and responding parties. They thus have an incentive to
stay within the boundaries of the arbitral agreement and to issue
awards that encourage repeat business from both parties.235
In the
UDRP, by contrast, competition incentives are skewed in favor of
complainant intellectual property owners. It is complainants, not
respondents, who choose the dispute settlement provider and who
pay panel fees in all single-panelist cases. In principle, respondents
may convert a single-member panel to a three-person panel after
receiving the complaint. In practice, the large number of cases in
which respondents fail to appear and the added cost of choosing a
three-person panel for those who do236
significantly diminish the
impact of respondents’ choice on the incentives of providers and
decision makers.237
Confirming fears expressed by some participants during the
ICANN review-and-comment process, evidence suggests that
2001] DESIGNING NON-NATIONAL SYSTEMS 211
238. Comments of David Post to ICANN Staff & Council Regarding UDRP, Oct. 11, 1999,
at 3, at http://www.icannwatch.org/archives/essays/939754407.shtml; see also John Berryhill,
The UDRP Provides Disputable Resolution Incentives, at 2 (Apr. 4, 2000) (“[A]ny proregistrant
provision that managed to sneak its way into the UDRP can be effectively negated
by the overall incentive structure built into the way that the UDRP is administered.”), at
http://www.icannwatch.org/archive/udrp_and_incentives.htm.
239. See CPR Inst. for Dispute Resolution, Dispute Resolution for Internet Domain Names:
Cases and Published Decisions, at http://www.cpradr.org/ICANN_Cases.htm (listing results
of UDRP cases decided by CPR Institute) (last visited Oct. 3, 2001); eResolution, Decisions:
D o m a i n N a m e A d m i n i s t r a t i v e D e c i s i o n s , a t
http://www.eresolution.ca/services/dnd/decisions.htm (listing results of UDPR cases decided
by eResolution) (last modified Sept. 21, 2001); National Arbitration Forum, Domain Name
Dispute Resolution: Decisions, at http://www.arbforum.com/domains (listing results of UDRP
cases decided by National Arbitration Forum) (last visited Oct. 3, 2001); WIPO Arbitration
a n d M e d i a t i o n C t r . , C a s e R e s u l t s : g T L D s , a t
http://www.arbiter.wipo.int/domains/statistics/results.html (last visited Oct. 3, 2001)
(statistical breakdown of cases decided by WIPO Arbitration Center).
240. Berryhill, supra note 238, at 3 (citing examples of dispute resolution providers
“boast[ing]” that they “go after cybersquatters” and have “evicted” them from domain names).
241. See Geist, supra note 169, at 6 (providing statistical evidence documenting differential
win/loss records among dispute settlement providers); Mueller, Rough Justice, supra note 169
(same); see also Tamara Loomis, Disputes Get Swift Resolution Under UDRP, N.Y.L.J., July
27, 2000, at 5 (“Trademark lawyers seem overwhelmingly to prefer WIPO, whose panelists
are comprised mainly of intellectual property lawyers and professors.”).
dispute settlement providers are acting on the “irresistible incentive
to . . . develop a reputation for deciding cases in favor of
complainants.”238
Providers now publish statistics on their win/loss
records and other information about their decisions, information
which serves as indirect advertising to trademark owners intent on
choosing the most complainant-friendly provider.239
There is also
anecdotal evidence that providers have adopted more overt methods
to attract complainants by boasting of the tough stance their
panelists have taken in UDPR disputes.240
These features have
already created a public perception that some dispute settlement
providers are more complainant friendly than others, a fact that the
case statistics support (although the cause-and-effect dynamic is
still unclear).241
If this perception becomes entrenched, it will affect
the selection process of an ever larger pool of complaining
trademark owners, further skewing provider incentives and
undermining ICANN’s vision of the UDRP as a substantively
uniform system administered by disaggregated decision makers
competing only over nonsubstantive matters.
212 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
242. Loomis, supra note 241, at 5. For WIPO’s complete “list of neutrals” and their
qualifications, see http://arbiter.wipo.int/domains/panel/panelists.html (last modified Sept.
11, 2001).
243. See Tata Sons evicts pornographic cyber squatter (Aug. 28, 2000) (discussing recent
UDRP victory and stating that WIPO panelist affiliated with private intellectual property law
firm in India “has been advising [the company] in all Trade Mark related matters and the
filing of complaints with WIPO Arbitration Center in domain name cases”), at
http://www.tata.com/tata_sons/releases/20000828.htm (last visited Oct. 2, 2001); see also
Berryhill, supra note 238, at 1 (positing that counsel representing trademark owners will
choose dispute settlement providers staffed by “practicing trademark attorneys,” some of
whom may be “pre-disposed” to find in their client’s favor).
In international commercial arbitration, panelists in one dispute often act as counsel in
future disputes not involving the same parties. See DEZALAY &GARTH, supra note 9, at 18-29.
In that context, however, control over the selection of panelists and arbitration centers is
more fairly divided. See supra, Part II.B.1.
In addition, consider the identity of the individuals who serve as
UDRP panelists. Most are practicing intellectual property attorneys,
while a somewhat lower number are retired judges and legal
academics.242
It is at least an open question whether decision
makers from the private sector can sufficiently distance themselves
from the milieu in which they practice to self-limit their own powers
and develop balanced norms for the trademark-domain name
interface. This is particularly true if panelists are permitted to trade
on their UDRP expertise by representing trademark owners in
future domain-name disputes.243
Taken together, these skewed internal checking functions are
likely to place significant pressure on UDRP decision makers to rule
in favor of complaining trademark owners. If, however, the disputes
subject to the UDRP were both unambiguous and narrow, then the
Policy itself might exert an adequate constraining force to prevent
panelists from acting on these pressures. As we explain below,
however, the UDRP provides panelists with discretionary decisionmaking
authority, making it unlikely that the text of the Policy will
exert such a constraining effect.
C. Checking Functions in Ministerial Decision-Making Systems
and in the UDRP
The documents that comprise the UDRP’s drafting history,
including both the WIPO Report and the gTLD-MoU, stressed the
ministerial or nondiscretionary administrative character of their
2001] DESIGNING NON-NATIONAL SYSTEMS 213
244. RONALD DWORKIN, TAKING RIGHTS SERIOUSLY 24 (1977) (“Rules are applicable in an
all-or-nothing fashion. If the facts a rule stipulates are given, then either the rule is valid, in
which case the answer it supplies must be accepted, or it is not, in which case it contributes
nothing to the decision.”).
245. KENNETH CULP DAVIS, DISCRETIONARY JUSTICE: A PRELIMINARY INQUIRY 4 (1969).
246. See id. at 52-96; DWORKIN, supra note 244, at 31-39.
respective proposed decision-making models. The ministerial
attributes of the UDRP coalesce around several features: the
Policy’s focus on cybersquatting and other widely deplored domain
name abuses, the short time periods for rendering decisions, the
ability to prosecute or defend claims without the assistance of
attorneys, and lastly, limiting the remedial powers of panels to
transferring or canceling domain names. These nondiscretionary
attributes make it important to compare the checking functions that
operate in ministerial decision-making systems with those at work
in the UDRP.
1. Checking Functions in Ministerial Decision-Making Systems
We begin with a definitional clarification. By ministerial or
nondiscretionary administrative decision making, we are referring
to systems in which the authority granted to decision makers is
tightly if not entirely constraining. Within such systems, a
predetermined rule or set of rules compels a particular result in
response to a given set of facts.244
Such rule-based decision making
is the antithesis of discretionary decision making, which occurs
“whenever the effective limits on [a decision maker’s] power leave
him free to make a choice among possible courses of action or
inaction.”245
We recognize, of course, that there is no bright line
separating discretionary from nondiscretionary decision making,
although there are strong and weak forms of discretion.246
Nevertheless, we believe that the distinction is a useful one for our
purposes, both because it was a concept the UDRP’s progenitors
adopted and because it highlights the ways in which the UDRP
differs from systems (be they administrative or judicial) in which
decision makers do enjoy significant discretion.
In the case of domestic ministerial or nondiscretionary
administrative bodies, creational checking functional are often
imposed by elected representatives or their delegates who are
214 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
247. Peter L. Lindseth, Democratic Legitimacy and the Administrative Character of
Supranationalism: The Example of the European Community, 99 COLUM. L. REV. 628, 645-48
(1999) (reviewing literature on administrative accountability). Creational checking functions
might also be imposed by “the people” in the exercise of popular sovereignty. See U.S. CONST.
art. III.
248. See FDA v. Brown & Williamson Tobacco Corp., 529 U.S. 120 (2000) (holding that FDA
lacked authority to regulate tobacco products).
249. See, e.g., Administrative Procedure Act, 5 U.S.C. §§ 551-57 (2000).
250. See generally CHARLES H. KOCH, JR., 2 ADMINISTRATIVE LAW AND PRACTICE § 8.20, at
466 (2d ed. 1997) (noting historical and modern uses of writ of mandamus to compel
government officials to perform non-discretionary obligations).
251. See Keith Hawkins, The Use of Legal Discretion: Perspectives from Law and Social
Science in THE USES OF DISCRETION 11, 37 (Keith Hawkins ed., 1992) (discussing ways in
which decision makers use nondiscretionary rules “as defences” and as “justification for
decisions after the fact”); see also id. at 39 (“In administrative agencies ... bureaucratic rules
guide officials in ... providing protection from criticism in difficult cases.”).
accountable to the voting public, or at a least more directly
accountable than the individuals who act as decision makers.247
The
authority of these decision makers, in turn, is constrained first by
the statute delegating legislative authority to the administrative
agency248
and later by transparency and participation procedures
that precede administrative rulemaking.249
With these creational checks established, affected parties can
assert a variety of external checking mechanisms. External checks
may be as simple as a exercising a right to appeal, either to an
administrative appellate authority or to a national court, both of
which are empowered to review claims of error using a standard of
review that grants a predetermined degree of deference to the initial
decision maker. In the case of national courts, the appealing party
may seek to compel the administrative decision maker to perform
a nondiscretionary act or to overturn a decision in which the agency
abused its discretion.250
However, where challenges are leveled at
decision-making bodies against whom no appeal lies, checking
functions may be legislative or constitutional in nature, such as
when legislators revise a statute to limit or expand the authority of
an administrative agency.
The internal constraint on abuses of ministerial decision-making
power is the self-imposed value of rotely applying preset legal rules
to a particular set of facts. By mechanically and neutrally
implementing the nondiscretionary power granted to them,
administrators insulate themselves from claims of error or abuse.251
2001] DESIGNING NON-NATIONAL SYSTEMS 215
252. See Frederick Schauer, Giving Reasons, 47 STAN. L. REV. 633, 637 & n.8 (1995)
(identifying situations in which “legal decisionmakers facing specific controversies simply
announce results without giving reasons to support them”).
253. Lindseth, supra note 247, at 646.
254. Berkman Ctr. for Internet & Soc., Harv. Law Sch., Analysis of Key UDRP Issues, at
A3 ¶ 2 [hereinafter Key Issues], at http://eon.law.harvard.edu/udrp/analysis.html (last visited
Oct. 3, 2001) (“[I]n most cases the respondent defaults by failing to submit a timely response,
leading to an even greater likelihood of a finding of bad faith, since the dispute is then
resolved solely on the complaint.”).
255. To the contrary, panels are expressly authorized by the Policy and Rules to review the
allegations of the complaint and to order a cancellation or transfer of the domain name if
justified. UDRP Rules, supra note 17, Rule 14(a). The UDRP also gives panels broad
discretion to determine the significance of a party’s default. Id. Rule 14(b) (“If a Party, in the
absence of exceptional circumstances, does not comply with any provision of, or requirement
under, these Rules or any request from the Panel, the Panel shall draw such inferences
therefrom as it considers appropriate.”).
A simple decision awarding or declining to award a claimed benefit
or privilege is often all that is required. Explanations need not be
given at all, or if provided, need not be detailed or discursive.252
2. Misplaced and Inadequate Ministerial Checking Functions in
the UDRP
What checking mechanisms could operate to control the
ministerial functions of UDRP panels? One mechanism would be to
provide a system of internal appeals, an option WIPO recommended
but ICANN rejected. De novo “appeals” to national courts
theoretically could also provide some external checks, but the
substantial obstacles to review discussed above may deter appeals
by respondents in most cases. Yet some form of meaningful external
review procedure is essential to maintain accountability and “to
ensure that the rules produced in the administrative sphere fall
within the original legislative mandate and do not violate the rights
of individuals or other private interests.”253
One further context in which panels are authorized to act in ways
that might appear ministerial in nature is where a respondent fails
to answer the complaint. Commentators have noted the large
number of UDRP decisions in which respondents fail to appear or to
defend against trademark owners’ complaints.254
These defaults do
not disempower panels from processing such cases, many of which
involve clear and uncontroversial abuses of domain names.255
216 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
256. See Noodle Time, Inc. v. Max Marketing, No. AF-0100 (Mar. 9, 2000) (stating that
failure to respond “should be considered as an admission that such claims are true”), available
at http://www.eresolution.ca/services/dnd/decisions/0100.htm; Alcoholics Anonymous World
Services, Inc. v. Raymond, WIPO Case No. D2000-0007 (Mar. 6, 2000) (citing Mondich and
finding “Respondent’s failure to respond to the Complaint allows the inference that the
evidence would not have been favorable to Respondent”), available at
http://www.arbiter.wip.int/domains/decisions/html/2000/d2000-0007.html(last visited May 4,
2001); Mondich v. Brown, WIPO Case No. D00-0004 (Feb. 16, 2000) (“It is a general principle
of United States law that the failure of a party to submit evidence on facts in its control may
permit the court to draw an adverse inference regarding those facts.”), available at
http://www.arbiter.wipo.int/domains/decisions/html/2000/d2000-0004.html.
257. In the human rights context for example, supranational tribunals and review bodies
require individual complainants to substantiate the factual assertions they make against
defending governments in order to find a treaty violation. See Helfer & Slaughter, supra note
5, at 353-54.
258. See infra Section III.B.1.; see also Bodansky, supra note 31, at 599-600.
At the level of individual justice, we are largely untroubled by the
grant of default judgments. It requires little cost or effort to
participate in UDRP panel proceedings, and the range of
circumstances in which panel determination of cases against
defaulting parties will produce bad substantive law is probably
narrow. In particular, while several panels have treated a
respondent’s default alone as a virtual admission of the
complainant’s claims,256
this is unlikely to alter the development of
UDRP jurisprudence if the legal conclusion is explicitly premised
upon the uncritical acceptance of the alleged facts. Only where a
contested legal issue would benefit from adversarial debate, and
instead, is argued from one side alone, is skewed UDRP case law
likely to result.
We do not mean to downplay such a possibility. However, our
concern about the number of default cases rests principally on a
more structural basis, and suggests that a continuing high rate of
default may be problematic for the UDRP unless carefully
monitored.257
International and non-national dispute settlement
bodies typically cannot rely on a large account of intrinsic credibility
or legitimacy. They are built on less obviously democratic
foundations, and their representational capacity is continually
questioned.258
Therefore, it is even more important for such bodies
to operate in ways that enhance their legitimacy and do not deplete
their capital of credibility.
2001] DESIGNING NON-NATIONAL SYSTEMS 217
259. See Peter H. F. Bekker, International Legal Aid in Practice: The ICJ Trust Fund, 87
AM. J. INT’L L. 659 (1993) (discussing mechanisms used by the U.N. to provide legal expertise
and funds to states seeking to settle disputes through the International Court of Justice); Carl
Otto Lenz & Gerhard Grill, The Preliminary Ruling Procedure and the United Kingdom, 19
FORDHAM INT’L L.J. 844, 858 (1996) (discussing legal aid provided to individuals litigating
before European human rights tribunals); Kim Van der Borght, The Review of the WTO
Understanding on Dispute Settlement: Some Reflections on the Current Debate, 14 AM.U.INT’L
L. REV. 1223, 1230-32 (1999) (noting that developing countries have asked that additional
resources be made available to assist in the prosecution of claims before WTO dispute
settlement bodies).
260. See UDRP Rules, supra note 17, Rule 15(a) (authorizing panels to decide cases using
“any rules and principles of law that [they] deem[] applicable”); supra Part I.B. (discussing
UDRP’s formation).
In the specific context of domain-name disputes, ensuring the
credibility and persuasiveness of default decisions is particularly
important given the doubts expressed about ICANN’s authority. It
also helps to alleviate concerns that the process by which the UDRP
was adopted unduly favored intellectual property interests.
International institutions, such as the European Court of Human
Rights, the International Court of Justice, and the World Trade
Organization make great efforts (through financial assistance or
technical support) to reduce default jurisprudence.259
The UDRP
panels are more like such tribunals than national courts in terms of
the need to preserve their legitimacy, and thus should consider
adopting mechanisms developed by such tribunals in deciding
default cases.
D. Checking Functions in International Adjudication and in the
UDRP
As we explained in Part I, several attributes of the UDRP
resemble the adjudicatory functions of domestic courts and
international tribunals. These include the requirement that all
panel decisions be reasoned and published in a widely accessible
manner on provider web sites. Published, reasoned decisions
contemplate an interpretive role for panels and the creation of a
trademark-domain name jurisprudence—functions endorsed by the
text of the Policy, by participants in the WIPO consultative process,
and during ICANN’s own deliberations.260
218 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
261. Helfer & Slaughter, supra note 5, at 300-07 (discussing state parties’ control over
structure of supranational tribunals).
262. Vienna Convention, supra note 48, arts. 31, 32 (specifying interpretive methodologies
for all treaties).
263. The WTO achieved a similar result by requiring rulings of panels or the Appellate
Body to be adopted by the DSB absent a consensus to do otherwise. See infra note 265 and
accompanying text; see also Daniel Pruzin, U.S. Blocks EU’s Request for Panel at WTO on
Havana Club Rum Dispute, 17 Int’l Trade Rep. (BNA) 1209, 1209 (2000) (noting use of
procedure permitting party to temporarily block formation of a WTO dispute settlement
panel).
264. In the WTO, panel and Appellate Body rulings do not constitute definitive
interpretations of the WTO agreements. See Raj Bhala, The Myth About Stare Decisis and
International Trade Law (Part One of a Trilogy), 14 AM. U. INT’L L. REV. 845 (1999). For such
authoritative constructions, states must look outside of the dispute settlement process to the
Yet, are UDRP panels competent to create such a jurisprudence
within the constraints the Policy imposes on them? In international
adjudication, numerous checking mechanisms limit the authority of
international courts, tribunals, and review bodies (which we
collectively refer to as tribunals) to interpret treaties and resolve
disputes between contesting parties. The next sections identify
those restrictions and then compare them to the checks that operate
on UDRP panels.
1. Checking Functions in International Adjudication
International tribunals are creatures of treaties. When
negotiating, ratifying and enforcing treaties, national governments
use a variety of tools to prevent and control excesses by the tribunals
they create. Most obviously, governments build creational checking
functions into a treaty’s text to specify the form and functions of
adjudication. These textual constraints include clauses addressing
the composition of the tribunal, the discretion it enjoys to screen
cases for review, its evidentiary and fact-finding powers, and
whether its decisions are legally binding or not.261
Checking features
are also implicit in the Vienna Convention on the Law of Treaties,
which contains a hierarchy of generally applicable treaty
interpretation methods.262
Structural checks of a political nature can
be imposed by adding procedures for treaty parties to delay or
overrule individual tribunal rulings,263
or by specifying in advance
the procedures for amending a treaty in response to a particular
decision.264
2001] DESIGNING NON-NATIONAL SYSTEMS 219
WTO Ministerial Conference and General Council, which may adopt such interpretations only
if three-fourths of the WTO membership agrees. See WTO Agreement, supra note 2, art. IX(2).
265. This blocking mechanism is subject to differing constraints in different treaty regimes.
In the old GATT trade regime, for example, the losing party could unilaterally block a panel
decision from taking effect. Under the WTO dispute settlement system, by contrast, decisions
become binding unless all states agree to block them by a consensus vote. See David Palmeter,
National Sovereignty and the World Trade Organization, 2 J. WORLD INTELL. PROP. 77, 80-81
(1999); see also REISMAN, supra note 173, at 15 (discussing potential uses of UN Security
Council to nullify decisions of the ICJ). For a recent example of delaying tactics with respect
to global intellectual property norms, see Ravi Kanth, WTO Arbitrator Gives Canada Until
Oct. 7 to Comply With Drug Stockpiling Decision, 17 Int’l Trade Rep. (BNA) 1313, 1314 (2000)
(WTO arbitrator rejected Canada’s request for fifteen-month period to implement TRIPs
panel’s pharmaceutical patent ruling and imposed six-month period instead); Award of the
Arbitrator, United States—Section 110(5) of the Copyright Act, WTO Doc. No. WT/DS160/12
(Jan. 15, 2001) (rejecting U.S. claims for a fifteen-month delay), available at
http://www.wto.org/english/tratop_e/dispu_e/160_12_e.pdf.
266. The United States’ criticisms of the ICJ in response to the Court’s acceptance of
jurisdiction in the Paramilitary Activities in Nicaragua Case is perhaps the most famous
example. See BARRY E. CARTER & PHILLIP R. TRIMBLE, INTERNATIONAL LAW 326-29 (3d ed.
1999). For a discussion of realistic rates of compliance and delaying tactics in European
human rights cases, see Mark W. Janis, The Efficacy of Strasbourg Law, 15 CONN. J. INT’L L.
39 (2000).
International adjudication is also home to a diverse series of
external checking functions. While some treaties allow litigating
parties to appeal an initial decision by a tribunal, many do not. In
the latter instance, or when the decision is issued by the treaty’s
highest decision-making authority, affected parties (which often
include nonlitigating treaty signatories) may exercise both formal
and informal political checking mechanisms in response to perceived
errors or excesses by decision makers.
Most formally, affected treaty parties may seek to amend their
agreement to thwart the impact of a particular decision. But
amendment procedures are cumbersome and time-consuming. A
defending state may therefore choose a more narrowly tailored
mechanism, such as initiating treaty procedures that allow it to
block or delay a particular decision from taking effect.265
Where a tribunal’s decision is both final and binding, more
attenuated external checking functions come into play. The losing
party may seek to delay implementation of a particular ruling or
even flout it altogether, in each case justifying its conduct by
reference to the decision makers’ alleged errors or abuses of
authority.266
If decisions are nonbinding then losing parties may
simply ignore them, but because even nonbinding decisions have a
220 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
267. THOMAS M. FRANCK, THE POWER OF LEGITIMACY AMONG NATIONS 24 (1990)
(“Legitimacy is a property of a rule or rule-making institution which itself exerts a pull
toward compliance on those addressed normatively because those addressed believe that the
rule or institution has come into being and operates in accordance with generally accepted
principles of right process.”). For an analysis of the compliance pull exerted by nonbinding
decisions of the U.N. Human Rights Committee, see Helfer & Slaughter, supra note 5, at 344-
45.
268. See Helfer & Slaughter, supra note 5, at 315-17 (discussing methodologies used by
ECJ and ECHR in response to charges of judicial activism by national governments); see also
Helfer, Adjudicating Copyright Claims, supra note 20, at 408-09 (discussing how ECHR
advanced its authority incrementally to overcome resistance from state parties).
269. Distinctions are often drawn between common law and civil law judging. Conventional
understanding of civil systems emphasizes, for example, the more mechanical nature of
judging. See JOHN HENRY MERRYMAN, THE CIVIL LAW TRADITION (2d ed. 1985); KONRAD
ZWEIGERT & HEIN KöTZ, 1 AN INTRODUCTION TO COMPARATIVE LAW (Tony Weir trans., Oxford
Univ. Press 3d rev. ed. 1998). Both systems, however, value reason giving, even if the reasons
stated may rest in the case of common law systems on inductive consistency with prior
decisions, and in civil law systems on deductive application of first principles. See Thomas
Mackay Cooper, The Common and the Civil Law – A Scot’s View, 63 HARV. L. REV. 468, 471
(1950). For insightful discussions of the methods and functions of reasoning in civil law
systems, see Mitchel de S.-O.-l’E. Lasser, Judicial (Self-)Portraits: Judicial Discourse in the
French Legal System, 104 YALE L.J. 1325, 1342-43 (1995); Michael Wells, French and
American Judicial Opinions, 19 YALE J. INT’L L. 81, 92 (1994).
270. Lon L. Fuller, The Forms and Limits of Adjudication, 92 HARV. L. REV. 353, 365-72
(1978); see also Lee Anne Fennell, Between Monster and Machine: Rethinking the Judicial
Function, 51 S.C. L. REV. 183, 184 (1999) (analyzing and reviewing literature on
“jurisprudential threats that judges themselves perceive as circumscribing their work”).
strong “compliance pull,” a losing party may still publicly express its
disagreement with the reasoning or conclusions of the tribunal.267
Whether made in response to binding or nonbinding decisions, such
public criticisms send a message to decision makers that they have
acted in ways perceived as improper by important players in the
decision-making process. It is a message that international tribunals
have heeded in the past,268
thereby internalizing the very values that
external checking functions serve.
What other internal checking mechanisms constrain judicial
decision making? An extensive literature seeks to explain the art of
common and civil law judging in general and of reasoned decision
making in particular.269
Much of this literature identifies ways in
which judges have internalized norms that constrain their actions.270
Indeed, the notion that decisions should be reasoned in itself exerts
a constraining force on judicial decision making. Reason giving roots
out latent errors, promotes intellectual rigor, and constrains the
scope of discretion in a specific case within a preexisting framework
2001] DESIGNING NON-NATIONAL SYSTEMS 221
271. See Bingham, supra note 197, at 141-43 (identifying benefits produced by the
obligation to produce reasoned judgments, including imposing constraints on judicial
discretion); Rau, supra note 184, at 530 (“[R]easoned opinions can be seen as one means of
imposing transparency on the decision-making process and in particular, of imposing a certain
self-discipline on the decisionmakers themselves.”); Schauer, supra note 252, at 641
(describing reasoned decision making as “includ[ing a] decision within a principle of greater
generality than the decision itself”).
272. Helfer & Slaughter, supra note 5, at 322. The operation of internal judicial constraints
is particularly acute where judges are engaged in decision making at what is perceived to be
the margins of their legitimacy or institutional capacity.
273. The candor with which different international tribunals have claimed this
interpretative function varies. The ECHR, for example, has explained that it possesses a
“European supervision” over national governments that “empower[s it] to give the final
ruling” on questions of treaty interpretation. Barfod v. Denmark, 149 Eur. Ct. H.R. (ser. A)
at 12 (1989); see also Sunday Times v. United Kingdom, 30 Eur. Ct. H.R. (ser. A) at 36 (1979).
The ECJ has claimed the same preeminent interpretive power. Lindseth, supra note 247, at
663-64 (citing case law and commentary indicating that the ECJ has “established itself as the
ultimate judge of the extent of Community competences”). By contrast, other dispute
settlement bodies have proceeded more cautiously. E.g., Waste Mgmt., Inc. v. United Mexican
States, ICSID (W. Bank) Case No. ARB(AF)/98/2 ¶¶ 8-9 (2000) (panel noted its power to
interpret NAFTA investor dispute settlement provisions under the Vienna Convention on the
Law of Treaties but did not elaborate on that power).
274. The ECJ’s early and aggressive use of a teleological method of interpretation to
expand its own competencies and those of European Community institutions is by far the
most famous example of this trend. See, e.g., Lindseth, supra note 247, at 638, 663-64
(discussing ECJ’s method of treaty and legislative interpretation); J.H.H. Weiler, The
of generalized principles.271
More broadly, the giving of reasons
“bolsters a court’s legitimacy by justifying its conclusions in terms of
a particular polity’s legal traditions and underlying social, economic,
and political values.”272
The existence of international judicial scrutiny is a comparatively
novel development and thus internal constraints are still evolving.
The core tension arises from balancing a tribunal’s power of
independent review against the need for deference to politically
accountable domestic governmental bodies. On the one hand,
international jurists have claimed an exclusive interpretative
competence that arises concomitantly with adjudicating disputes
between contesting parties. To be sure, it is necessary and
appropriate for jurists engaging in this function to analyze the rights
and obligations a treaty imposes.273
The results of such an
independent analysis are, however, far from preordained.
International tribunals employ a multiplicity of interpretative tools
to expand existing rights, fill gaps left open by treaty drafters, and
claim implied powers nowhere enumerated in a treaty’s text.274
222 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
Transformation of Europe, 100 YALE L.J. 2403, 2416 (1991) (noting same). For a discussion
of a similar expansion of judicial power by the ICJ, see REISMAN, supra note 173, at 19-45.
275. National courts also possess an arsenal of escape mechanisms (e.g., in the United
States, the political question doctrine) that permit them to avoid politically contentious issues
and thus not risk their legitimacy. Cf. Bush v. Gore, 531 U.S. 98 (2000) (Breyer, J.,
dissenting). However, the calculation whether to invest or preserve some of a court’s finite
supply of legitimacy in entering a divisive topic may differ in the case of international
tribunals where legitimacy may be more tenuous (and more readily depleted) than in the
national context.
276. Steven P. Croley & John H. Jackson, WTO Dispute Procedures, Standard of Review,
and Deference to National Governments, 90 AM. J. INT’L L. 193, 211-13 (1996) (identifying
importance of these issues for WTO dispute settlement bodies); Helfer, Adjudicating
Copyright Claims, supra note 20, at 399-401 (discussing ECHR’s methodologies of deference
to national actors); see also Waste Mgmt., Inc., ICSID (W. Bank) Case No. ARB(AF)/98/2 ¶¶
8-9 (Keith Highet, dissenting) (stressing need for “as complete an understanding as possible
. . . of the legal issues involved” in NAFTA Chapter 11 dispute because the “precedential
significance of this Award for future proceedings under [NAFTA] cannot be underestimated”).
277. See REISMAN, supra note 173, at 31; Raj Bhala, The Precedent Setters: De Facto Stare
Decisis in WTO Adjudication (Part Two of a Trilogy), 9 J.TRANSNAT’L L.&POL’Y 1, 3-4 (1999);
Helfer & Slaughter, supra note 5, at 319. This phenomenon of treating past decisions as
persuasive authority extends to the judgments of sibling tribunals as well. See Jonathan I.
Charney, The Impact on the International Legal System of the Growth of International Courts
and Tribunals, 31 N.Y.U. J. INT’L L. & POL. 697, 699-700 (1999).
To counterbalance these broad interpretive powers, however,
international tribunals have adopted critical internal checking
mechanisms. These include procedural screening devices to avoid
deciding certain cases on their merits, incrementalist decisionmaking
strategies, and identification of subjects ill-suited for
international adjudication.275
When using these devices to selfimpose
constraints on their authority, international jurists often
acknowledge the virtues of deferring to domestic actors, of respecting
the intentions of a treaty’s drafters, and of considering the broader
political climate in which their decisions will be received.276
In the abstract, these two approaches—interpretative supremacy
and internal restraint—at best are in tension and, at worst flatly
contradictory. However, the obligation to give reasons for decisions,
together with the candor with which most jurists approach
interpretive problems, has generated an extensive body of doctrinal
rules to reconcile the competing pressures. And these rules exert yet
another constraining force: jurists treat their own precedents as
persuasive authority although no treaty requires them to do so.277
In
this way, putative excesses of interpretive authority quickly become
entrenched in a tribunal’s case law, highlighting for affected parties
2001] DESIGNING NON-NATIONAL SYSTEMS 223
278. This aspiration found its most compelling expression in ICANN’s Second Staff Report,
which rejected attempts by both trademark and domain name owners to alter the UDRP to
reflect their respective interests. See Second Staff Report, supra note 149, at 8-9.
279. See Carl E. Schneider, Discretion and Rules: A Lawyer’s View, in THE USES OF
DISCRETION, supra note 251, at 87 (“Perhaps the most obvious way of limiting a decisionmaker’s
discretion is to provide him with rules written at some level of detail that attempt
to tell him what decision to reach where a particular set of facts exists.”).
an opportunity to exercise one or more external checking functions
to remedy them.
2. Misplaced and Inadequate Adjudicatory Checking Functions
in the UDRP
Accepting that the UDRP’s drafters sought to empower panels to
create some sort of trademark-domain name jurisprudence does
nothing to answer the question of what substantive norms such a
jurisprudence should strive to develop. Much of the UDRP’s genesis
reflects a desire to limit the scope of dispute settlement to
cybersquatting and similar behavior condemned by all Internet
stakeholders.278
However, the questions remain: how to ensure this
vision is translated into practice, and how to provide mechanisms for
rectifying any deviations from that vision should they occur? As we
explain below, the checking mechanisms ICANN adopted were
inadequate to address the risks and problems engendered by
granting panels adjudicative decision-making powers.
a. Creational Checking Functions
One obvious way to confine panels’ adjudicatory power is to
include clear rules and limiting principles in the UDRP’s founding
documents.279
Yet, the final version of the UDRP reflects only an
equivocal endorsement of this basic creational checking mechanism.
Some provisions of the Policy do indeed manifest the drafters’ desire
to the limit the scope of dispute settlement and the interpretive
authority of panels. However, others suggest a starkly different
vision of the UDRP, one that contemplates expansive, discretionary
adjudication by panels deciding cases at the trademark-domain
name frontier.
224 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
280. One obvious example would be the number of and types of domain-name registrations
necessary to constitute a “pattern” of registering designed domain names to prevent
trademark owners from reflecting their marks in such domain names. See Policy, supra note
17, ¶ 4(b)(ii).
281. Key Issues, supra note 254, ¶ 3 (“Since the UDRP specifies that bad faith is not limited
to the specific circumstances enumerated in 4(b), panels have taken the liberty of finding bad
faith beyond the 4(b) factors.”). For a recent and controversial example, see Reg Vardy Plc v.
Wilkinson, WIPO Case No. D2001-0593 (July 3, 2001) (respondent, who was not a competitor
of the mark owner, registered domain name in bad faith notwithstanding fact that Policy ¶
4(b)(iii) premises finding of bad faith upon registration primarily for the purpose of disrupting
the business of a competitor; panel relied on “all the circumstances” and registrant’s “objective
of causing harm and nuisance to the Complainant”), available at
http://www.time4talk.co.uk/finalwipo/Decision.htm.
282. Even with this indefinite grant of decision-making authority, however, ICANN could
The most acute expression of this tension appears in the first
three subsections of paragraph 4 of the Policy, which set forth the
elements that a complainant must prove to justify a transfer or
cancellation of a domain name. Paragraphs 4(b) and 4(c) list the
circumstances demonstrating, on the one hand, a respondent’s
“registration and use” of a domain name in bad faith, and on the
other, her “rights or legitimate interests” in the domain name
sufficient to defeat a complaint. If the UDRP were designed as a
system of constrained judicial decision making, these enumerated
circumstances would be dispositive of all claims and all defenses.
Under such a system panels would admittedly still have
interpretative discretion to decide in each dispute whether the facts
presented fell within the parameters of the enumerated rules and to
resolve ambiguities contained within the rules themselves.280
However, the exclusive nature of the categories would exert
considerable constraining force, preventing panels from expanding
the Policy very far beyond the heartland of cases circumscribed by
the text.
The UDRP’s drafters, however, did not limit panelists’ discretion
to these enumerated grounds. Instead, they labeled these exemplars
as “circumstances” which existed only “in particular but without
limitation” to other situations of bad faith, on the one hand, or rights
and legitimate expectations, on the other.281
Such an obvious and
open-ended invitation to lawmaking sends a clear message to panels
that they can exercise independent authority in determining which
sorts of unenumerated circumstances justify a ruling in favor of
complainants or respondents.282
Without constraints on these open-
2001] DESIGNING NON-NATIONAL SYSTEMS 225
have used other textual methods to at least partially effectuate its goal of limiting the UDRP’s
scope. We discuss one such method in Part III.B.6.a. infra.
283. See Cybersquatting Decisions 3, supra note 237, at 2.
ended clauses, panels are left with little to guide the exercise of their
discretionary lawmaking powers. Not surprisingly, this omission has
produced a schism between panels that strictly construe the UDRP
and those that interpret the Policy more expansively to curb a
broader range of conduct by domain-name registrants.283
b. External Checking Functions
An alternative checking model would have granted panels
interpretive powers in the text of the UDRP, but constrained those
powers and corrected any errors they engendered through external
checking functions. As drafted, the UDRP contains two external
checking mechanisms, one political and the other legal. Neither,
however, are adequate to curb abuses of adjudicatory power by
panelists.
Political checking mechanisms exist by virtue of ICANN’s
authority to revise the Policy and Rules. ICANN’s established
procedures make it possible to amend the UDRP on a regular basis
in response to input from affected parties. Indeed, the authors of the
Second Staff Report expressly recommended that the DNSO revisit
dispute settlement issues after the UDRP began operations to
consider the recommendations of trademark and domain-name
owners. Such a robust political revision process could diminish the
significance of panel errors and excesses of authority by quickly
correcting them to conform to the consensus view of interested
stakeholders.
There are numerous impediments to the effectiveness of the
political checks we have just sketched, however. First, if the process
by which ICANN’s initial iteration of the UDRP was subject to
legitimacy challenges, similar charges (however justified) are likely
to plague any revision of that process. Moreover, if intellectual
property interests have captured ICANN’s rulemaking process, as
some commentators have contended, then the results of any revision
process may be regarded as equally tainted. In addition, the pitch of
the legitimacy and capture debate is likely to be set even higher than
226 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
284. WIPO, Interim Report of the Second WIPO Internet Domain Name Process, (Apr. 12,
2001) [hereinafter Interim Report II] (identifying conflicts between domain name registrations
and myriad intellectual property issues, including personal names, trade names, geographical
indications and indications of source, nonproprietary names for pharmaceuticals, and names
of international intergovernmental organizations), available at
http://wipo2.wipo.int/process2/rfc/rfc3/.
285. See ICANN, New TLD Program, at http://www.icann.org/tlds (last modified Sept. 9,
2001) (identifying seven new gTLDs approved by ICANN); ICANN Approves Seven Top-Level
Domains, supra note 123 (reviewing proposals for new gTLDs, including extensions of UDRP
and enhanced protections for intellectual property owners).
286. WIPO, WIPO2 RFC-1: Request for Comments On Terms of Reference, Procedures and
Timetable for the Second WIPO Internet Domain Name Process (July 10, 2000) (noting that
in the dispute over the creation of the UDRP, given that the review
will occur in the same timeframe as consideration whether to extend
the UDRP to far more controversial intellectual property issues.284
Second, the extremely rapid growth of UDRP case law is likely to
make ad hoc review of the UDRP process a poor proxy for review in
individual cases, or more formalized periodic review procedures. In
the first twenty-one months of operation alone, UDRP panels issued
over 3500 decisions, raising myriad complex issues for reviewers to
consider. In addition, the sheer number of decisions issued suggests
that episodic appraisals may be inadequate to prevent erroneous
interpretations of the Policy from becoming entrenched.
Third, attention to UDRP review and reforms is likely to be
obscured, at least in the short term, by the other domain name
regulatory issues on ICANN’s agenda. For example, the question of
UDRP reform has received far less scrutiny than the creation of new
gTLDs, an essential component of ICANN’s mandate from the
United States government.285
This suggests that political checking
mechanisms are likely to be both slower and more cumbersome than
the Second Staff Report had contemplated.
Fourth, the attention and resources that affected constituencies
can devote to monitoring the UDRP and urging reforms of the
system are likely to be limited. This is so not only because of the
competition between UDRP reform issues and other regulatory
issues on ICANN’s agenda but also because of the multiple fora in
which lawmaking is likely to occur. In July 2000, WIPO commenced
its second domain-name consultative process to consider the more
contentious intellectual property issues excluded from its first
consultative process.286
This second WIPO process produced
2001] DESIGNING NON-NATIONAL SYSTEMS 227
member states had asked WIPO to study and issue recommendations concerning domain
name registrants’ “bad faith, abusive, misleading or unfair use of: Personal names;
International Nonproprietary Names (INNs) for Pharmaceutical Substances; Names of
international intergovernmental organizations; Geographical indications, geographical terms,
o r i n d i c a t i o n s o f s o u r c e ; a n d T r a d e n a m e s ” ) , a v a i l a b l e a t
http://wipo2.wipo.int/process2/rfc/rfc1/index.html; Caroline Drees, U.N. Agency Broadens
Fight Against Cybersquatters, Reuters (July 10, 2000) (quoting WIPO Assistant Director
General as characterizing second WIPO consultative process as addressing “very complicated”
legal issues which are less harmonized than national trademark laws), available at
http://www.acm.org/technews/articles/2000-2/0T12w.html.
287. See Final Report, Second WIPO Internet Domain Name Process, supra note 27, ¶¶ 117,
163. It bears noting, however, that the interim and final reports of the Second WIPO Domain
Name Process candidly acknowledge the much more significant risks associated with
lawmaking at the perimeter of the international intellectual property system:
The efficiency with which policy can be implemented through the deployment of
the technical infrastructure, however, also inspires caution. New law has, in the
past, been created in democracies by representative legislatures. It is one thing
to give expression to existing law in an effective manner through the deployment
of a powerful technical infrastructure. It is quite another thing to use the
technical infrastructure not merely for the implementation, but also for the
formulation, of new laws.
Interim Report II, supra note 284, ¶ 26; see also Final Report, Second WIPO Internet Domain
Name Process, supra note 27, ¶¶ 65-67 (expressing similar sentiments and recalling
distinctions in political theory between creating law and applying law). The recommendations
(both of action and inaction) contained in the final report of the Second WIPO Internet
Domain Name Process were heavily influenced by whether the protections sought by different
parties reflected a consensus embodied in existing international intellectual property law.
See, e.g., id. ¶¶ 92, 155, 201, 245.
288. See Daniel Kahneman et al., The Endowment Effect, Loss Aversion, and Status Quo
Bias, 5 J. ECON. PERSP. 193 (1991).
recommendations to ICANN for additional mechanisms (some of
which are similar to the UDRP) to protect certain other names and
identifiers, such as international nonproprietary names of
pharmaceutical substances and the names of international
intergovernmental organizations.287
Fifth and finally, the active use of the UDRP and its expansive
interpretation by some panels are likely to create an “endowment
effect” that will make it difficult for ICANN’s political bodies to resist
a ratcheting-up of intellectual property protection or to investigate
panel errors and abuses.288
Several forces are likely to obscure the
need for a review of the UDRP that tests trends in panel case law for
their fidelity to the present Policy. These include a push by
trademark owners to extend the UDRP to new gTLDs, a drive by
famous trademark owners to incorporate enhanced dispute
228 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
289. See, e.g., Electronic Commerce Work Programme, supra note 15, ¶ 44 (stating that the
UDRP has “arguably become a de facto international standard”); WIPO, Wipo To Probe New
Issues Relating To Domain Name Abuse, Press Release PR/2000/235 (July 10, 2000) (stating
that the UDRP “is now widely regarded as an efficient, quick and cost-effective way to resolve
domain name disputes”), available at http://www.wipo.int/eng/pressrel/2000/ p235.htm.
290. Alternatively, ICANN’s review process may focus only on the current system’s most
egregious problems, such as the skewed incentives created by permitting complainants to
choose the dispute settlement provider. See Mueller, Rough Justice, supra note 169. By way
of full disclosure, we note that one of us has recently been appointed as the independent
academic expert on the Task Force named to review the UDRP. ICANN Watch, Names
Council Selects UDRP Task Force Members (Aug. 27, 2001), at
http://www.icannwatch.org/article.php?sid=317 (listing Graeme Dinwoodie as part of task
force as “independent academic expert”).
settlement protections for their marks, and pressure by nontrademark
interests currently excluded from the UDRP to
incorporate their intellectual property rights into the Policy. In the
debates these issues generate, the existing UDRP will serve as a
minimum baseline against which all revisions proposals will be
measured.289
The debate over forward-looking developments is likely
to obscure the more retrospective question of panels overstepping
their adjudicatory authority.290
Additionally, if ICANN expands the
UDRP without undertaking a meaningful and balanced review, its
actions may validate those panels that have adopted an expansionist
methodology.
Whatever the results of ICANN’s political review of the UDRP,
such a process is likely to provide little comfort to the parties in
individual cases who believe that a panel has acted erroneously or
exceeded its mandate. What legal recourse do such aggrieved parties
have under the present Policy? As noted above, the drafters did not
include any system of internal appeals, either to ICANN, to the
registrars, or to the dispute settlement providers. As a result, even
where two opposing lines of decisions become entrenched in the case
law, there is no established mechanism in place to review them.
Appeals to national courts, although possible, suffer from all of the
difficulties we identified above in our discussion of external arbitral
checking functions.
In addition, the fact that UDRP panels apply a non-national body
of rules that may diverge from national trademark and
cybersquatting statutes suggests that those courts issuing rulings in
cases previously considered by UDRP panels will apply their own
2001] DESIGNING NON-NATIONAL SYSTEMS 229
291. Indeed, in one recent case, a U.S. district court adopted a ruling directly at odds with
a prior UDRP panel decision between the same parties without even citing that decision, let
alone discussing why or how the panel had erred. Cf. Referee Enters., Inc. v. Planet Ref, Inc.,
N o . 0 0 - C - 1 3 9 1 ( E . D . W i s . J a n . 2 4 , 2 0 0 1 ) , a v a i l a b l e a t
http://www.loundy.com/CASES/Referee_Ent_v_Planet_Ref.html, with Referee Enters., Inc.
v. Planet Ref, Inc., No. FA0004000094707 (Nat’l Arb. Forum June 26, 2000), available at
http://www.arbforum.com/domains/decisions/94707.htm. In another case, a U.S. district court
issued a preliminary injunction that effectively affirmed a prior UDRP panel decision, again
without citing to the prior dispute. Cf. Registral.com, LLC v. Fisher Controls Int’l, Inc., No.
H-01-1423 (S.D. Tex. June 28, 2001), available at http://www.s0rk.com/docs/fisher1.pdf, with
Fisher Controls Int’l, Inc. v. Registral.com LLC, No. FA0102000096749 (Nat’l Arb. Forum
Apr. 20, 2001), available at http://www.arbforum.com/domains/decisions/96749.htm.
292. UDRP Rules, supra note 17, Rule 15(a).
293. One of the most frequent concerns raised by UDRP observers is whether panels are
adopting coherent and consistent interpretations of the Policy. See Cybersquatting Decisions
3, supra note 237 (providing a statistical analysis of decisions between commencement of
UDRP and May 5, 2000, showing that only 25.5% of cases cited prior panel decisions and
stating that “[t]his does not bode well for the rule of law, encourages users to forum shop for
panelists, and provides little guidance to prospective users as to how a particular issue is
likely to be decided”); John Partridge, Loblaw loses another Net name battle, TORONTO GLOBE
& MAIL, June 21, 2000, at B7 (noting “a disturbing lack of consistency in decisions under the
new dispute resolution system”).
national laws rather than “correct” the panel’s interpretation of the
Policy or its application to a particular set of facts.291
Moreover,
because panels also have discretion to decide cases using whatever
legal rules they deem applicable,292
they are free to ignore any
indirect corrective force these national court decisions exert and to
continue deciding cases using their preferred construction of the
Policy. That many UDRP decisions will involve parties and
registrars from different countries is likely to enhance this effect.
Panel decisions that diverge widely from the text of the UDRP,
from each other, or from national laws, risk undermining the
UDRP’s legitimacy.293
Conflicting panel decisions, particularly
interprovider conflicts, are likely to exacerbate disparities in the
panel selection process, making the complainant’s right to choose the
provider an even more significant feature than it is at present. By
contrast, any significant divergence between the UDRP and national
trademark laws will increase the incentives for losing parties to
appeal a panel’s ruling. If lengthy and expensive national court
appeals become habitual, they will undermine the UDRP’s goal of
providing a fast, inexpensive, and streamlined way to resolve
cybersquatting cases without adding much to the checking functions
the system sorely needs.
230 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
294. Cf. Louise Ferguson, Geographic Domains on Shaky Ground,THE STANDARD, Aug. 11,
2000 (reporting statement of WIPO Assistant Director General that “the performance of the
a r b i t r a t o r s i s c o n s t a n t l y u n d e r r e v i e w ” ) , a v a i l a b l e a t
http://www.thestandard.com/article/0,1902,17627,00.html.
295. A number of commentators (and a few panel decisions) have criticized the quality of
the legal reasoning of panel decisions. See, e.g., Loomis, supra note 241, at 5; Emerson H.
Tiller, ICANN’s Uniform Domain Name Dispute Resolution Policy: An Overview and Critique,
1 INTERNET L.&BUS. 589 (June 2000). See also Winterson v. Hogarth, WIPO Case No. D2000-
0235, ¶ 6.12 (May 22, 2000) (noting that panel decision in Cedar Trade Assocs. v. Ricks
“unfortunately gives no guidance as to why common law rights ... qualified as a trade mark”),
available at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0235.html; J.P.
Morgan v. Resource Mktg., WIPO Case No. D2000-0035 (Mar. 23, 2000) (refusing to follow
four prior panel decisions which had accepted rebuttals from complainants “[b]ecause the
distinguished panelists in these cases did not discuss this issue [and this panel does] not have
t h e b e n e f i t o f t h e i r r e a s o n i n g ” ) , a v a i l a b l e a t
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0035.html.
c. Internal Checking Functions
ICANN’s conflicting signals to UDRP panels concerning their
adjudicatory powers also affects their adoption of internal checking
mechanisms. On a basic level, the requirement that all decisions be
published and reasoned exerts a constraining effect on gross errors
and excesses of authority. Panelists know that the decisions they
author will be available to all potentially affected parties, including
not only the litigants, but future litigants, other panelists, and
ICANN. They thus have a significant interest in ensuring that their
rulings meet at least minimal levels of competence and
persuasiveness, particularly if they hope to receive future UDRP
assignments.294
Beyond this bare minimum level of competence, however, there
are few structural incentives for panels to produce carefully reasoned
decisions.295
Well-reasoned decisions require at least a modicum of
deliberation, a quality that the time and cost-sensitive UDRP does
not favor. Consider the following: Panels normally must issue a
decision within less than forty-five days after a complaint is filed.
Panelists are private adjudicators with other responsibilities outside
of the UDRP competing for their time. Also, the modest
compensation panelists receive for their services pales in comparison
to the fees they can receive as practicing attorneys or deciding other
2001] DESIGNING NON-NATIONAL SYSTEMS 231
296. See Berryhill, supra note 238, at 3 (“A $200 an hour attorney has very few hours to
waste in reading the complaint and the response, making a decision, and reducing that
decision to writing.”); Steven Bonisteel, Tour Boat Firms Collide in ICANN Domain Dispute,
NEWSBYTES (Ontario), May 26, 2000, 2000 WL21177837 (“[T]he lower fees [for UDRP panels]
may be discouraging some arbitrators from giving their full attention to the matter and
providing a full slate of reasons.”).
297. Cf. Helfer & Slaughter, supra note 5, at 325 (explaining the persuasiveness of ECJ
decisions to national European courts by noting “the intrinsic value of widespread and diverse
input in a deliberative process: Two minds are better than one, and fifteen minds, particularly
minds from different perspectives and cultures, are better than two”).
298. Of the forty-five three-member panel opinions between January 14 and July 3, 2000,
nine (20%) contained individual concurring or dissenting opinions. Cybersquatting Decisions
1 through 3, supra note 237; See M. Scott Donahey, The ICANN Cybersquatting Decisions #
5: June 14, 2000 through July 3, 2000 [hereinafter Cybersquatting Decisions 5], available at
http://eon.law.harvard.edu/udrp/decisions/2000-5.html (last visited Oct. 3, 2001); M. Scott
Donahey, The ICANN Cybersquatting Decisions # 4: May 5, 2000 through June 13, 2000
[ h e r e i n a f t e r C y b e r s q u a t t i n g D e c i s i o n s 4 ] , a v a i l a b l e a t
http://eon.law.harvard.edu/udrp/decisions/2000-4.html (last visited Oct. 3, 2001).
299. Cabel, supra note 34, at 6.
arbitral matters.296
Each of these pressures are likely to limit the
attention that panelists can devote to drafting reasoned opinions.
Deliberation, particularly deliberation seeking to reconcile a
dispute settlement system’s competing systemic values, is facilitated
by the use of multiple decision makers.297
Thus, holding other
variables constant, three-member panels should produce better
reasoned UDRP decisions than one-member panels. Three-member
panels enjoy increased opportunities for exchanging views, catching
errors, identifying relevant issues not raised by the parties, and
fleshing out ambiguities or competing approaches. It is not
surprising, therefore, that a sizable number of three-member panel
rulings contain dissenting or concurring opinions,298
a fact that
suggests single-member panels may be obfuscating or eliding
controversial issues embedded in their decisions. Yet, as we
identified earlier, the increased cost of three-member panels and the
disincentives for both complainants and respondents to choose them
are likely to severely limit the number of three-member panel
decisions.
The lack of any appeal process within the UDRP makes the need
for a deliberative approach to decision making particularly acute.
Although some observers have criticized ICANN’s failure to include
such an appellate mechanism to resolve interpretive differences
among panel rulings,299
dispute settlement systems can create
232 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
300. Charney, supra note 1, at 104-05 (noting that “the variety of international tribunals
functioning today do not appear to pose a threat to the coherence of an international legal
system”); id. at 108 (arguing that persuasive authority of ICJ’s decisions for other
international tribunals is bolstered by “the fullness and deliberative character” of its decisionmaking
style); see also Joel P. Trachtman, The Domain of WTO Dispute Resolution, 40 HARV.
INT’L L.J. 333, 353 (1999) (indicating “a rule of stare decisis is not necessary to the
development of a body of jurisprudence by a court or dispute resolution tribunal”).
301. Helfer & Slaughter, supra note 5, at 382-83 (discussing gap-filling by ECHR); Michael
P. Van Alstine, Dynamic Treaty Interpretation, 146 U. PA. L. REV. 687 (1998) (discussing gapfilling
in courts applying the United Nations Convention on Contracts for the International
Sale of Goods and similar treaties).
coherent jurisprudence without an appeals body or a doctrine of
binding precedent. The adjudication of public international law
disputes has always operated without the aid of a supreme judicial
control body, and the recent proliferation of courts and tribunals has
not thrust international law into chaos.300
Several conditions are necessary, however, for the UDRP to
function effectively as a disaggregated and nonhierarchical dispute
settlement system. First, like the jurists who serve on international
tribunals and domestic courts, UDRP panelists must internalize a
set of guiding objectives and principles to assist them in resolving
difficult cases. How, for example, should they interpret the
lawmaking powers granted to them by ICANN in paragraph 4 of the
Policy? Should the UDRP panelists construe these powers as a
narrow grant of authority consistent with the drafters’ goal of
limiting the UDRP to open-and-shut cases, or should they use their
discretionary authority to adopt teleological interpretive methods
and fill gaps left open by the drafters?
Answers to these questions require a theory of the relationship
between adjudicators and the lawmakers who created the dispute
settlement system. Gap-filling may be appropriate for systems in
which the drafters have expressly authorized such a function, or
where political lawmaking bodies are at an impasse.301
Gap-filling is
far more problematic, however, when it encroaches upon areas
intentionally excluded from a dispute settlement system or where
the political rulemaking process is robust and promises to fill gaps
on its own. An expansive construction of adjudicatory powers also is
highly questionable during the early days of a new dispute
settlement regime in which jurists’ authority to hear even
2001] DESIGNING NON-NATIONAL SYSTEMS 233
302. See Dinwoodie, New Copyright Order, supra note 8, at 503-18 (discussing the dangers
of activist WTO panel interpretations in TRIPs cases); Helfer, Adjudicating Copyright Claims,
supra note 20, at 423-31 (discussing dangers of gap-filling by TRIPs panels).
303. Cf. J. Crew Int’l, Inc. v. crew.com, WIPO Case No. D2000-0054, ¶ 3 (Apr. 20, 2000)
(UDRP prohibits “speculative registration of names that happen to be the trademarks of
others without a demonstrable plan for bona fide use”), available at
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0054.html, with World Wrestling
Fed’n Entm’t, Inc. v. Bosman, WIPO Case No. D99-0001, ¶ 3 (Jan. 14, 2000) (“It is clear from
the legislative history that ICANN intended that the complainant must establish not only bad
f a i t h r e g i s t r a t i o n , b u t a l s o b a d f a i t h u s e . ” ) , a v a i l a b l e a t
http://arbiter.wipo.int/domains/decisions/html/1999/d1999-0001.html; see also Telstra Corp.
v. Nuclear Marshmallows, WIPO Case No. D2000-0003, ¶ 7.11 (Feb. 18, 2000) (endorsing
concept of “passive holding” as sufficient to satisfy UDRP’s requirement of bad faith use),
available at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0003.html.
304. See, e.g., Excelentisimo Ayuntamiento de Barcelona v. Barcelona.com Inc., WIPO Case
No. D2000-0505 (Aug. 4, 2000) (geographic name), available at
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0505.html; Roberts v. Boyd, WIPO
Case No. D2000-0210 (May 29, 2000) (personal name), available at
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0210.html; Winterson v. Hogarth,
WIPO Case No. D2000-0235 (May 22, 2000) (personal name), available at
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0235.html. But see Kur-und
Verkehrsverein St. Moritz v. StMoritz.com, WIPO Case No. D2000-0617 (Aug. 17, 2000)
(refusing to transfer trademarked geographic name of Swiss city to official organization
representing that city where respondent provided information services about such city),
available at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0617.html; Sumner v.
Urvan, WIPO Case No. D2000-0596 (July 24, 2000) (refusing to transfer domain name
containing stage name of famous musician because musician’s actual name was different and
also generic), available at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-
0596.html; Springsteen v. Burgar, WIPO Case No. D2000-1532 (Jan. 25, 2001) (refusing to
transfer domain name), available at http://arbiter.wipo.int/domains/decisions/html/2000/
d1532-0003.html.
It is possible, though difficult, to obtain trademark rights in personal names. See 15 U.S.C.
§ 105(2)(e)(4) (1994) (providing for denial of trademark registration on ground that a claimed
uncontroversial disputes is fragile and subject to intense scrutiny by
affected parties.302
Measured against this internal checking-function metric, the
UDRP’s performance is questionable. Several panels have extended
the UDRP to cases involving legitimate disputes over domain name
ownership or to bad faith registration without corresponding bad
faith use, categories of cases that the drafters expressly excluded
from the Policy.303
More striking still is a line of cases permitting
surname and geographic name owners to bring successful complaints
against domain name registrants (either by ignoring the elements
required to prove a claim or by very expansive interpretation of the
notion of common law trademark rights).304
Not only did these
234 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
mark is primarily merely a surname). UDRP panels have transferred domain names
containing celebrity names on the grounds that such names constitute common law
trademark rights. See, e.g., Winterson, WIPO Case No. D2000-0235; cf. Interim Report II,
supra note 284, ¶ 175 (stating that UDRP jurisprudence “indicates that it can and should be
applied to protect personal names against bad faith domain name registrations, provided that
the criteria of the Policy are carefully and properly applied and that in cases where personal
names “have not been registered as a trademark or service mark, a particular focus must be
devoted to ascertaining that the name in question, under relevant law, has acquired the
requisite common law trademark rights”); U.S. Patent & Trademark Office, Abusive Domain
N a m e R e g i s t r a t i o n I n v o l v i n g P e r s o n a l N a m e s , a t
http://www.uspto.gov/web/offices/dcom/olia/domainnamerep.html, (last modified Jan. 18, 2001)
(concluding that the ACPA should not be extended to protect personal names).
305. Final Report, supra note 78, ¶¶ 167-68 (declining to extend dispute settlement to
“trade names, geographic indications or personality rights”); see also Second Staff Report,
supra note 149, ¶ 4.1(c) (“Except in cases involving ‘abusive registrations’ made with bad-faith
intent to profit commercially from others’ trademarks ... the adopted policy leaves the
resolution of disputes to the courts.”) (emphasis added).
306. See Charney, supra note 1, at 114 (advocating increases dialogue between ICJ and
other international tribunals); Helfer, Forum Shopping, supra note 1, at 326-31, 335-40, 349-
53 (documenting cases of horizontal dialogue among UN and regional human rights tribunals
and advocating more sustained dialogue to promote jurisprudential coherence); Helfer &
Slaughter, supra note 5, at 323-26 (noting dialogue among supranational tribunals as one
factor that covaries with their effectiveness).
rulings ignore the drafters’ desire to limit the UDRP to trademark
controversies, they also were issued at a time when WIPO was
studying whether to recommend an expansion of the Policy to
encompass these precise intellectual property rights.305
A second component of an effective nonhierarchical dispute
settlement system is that its disaggregated decision makers must
engage in an extensive and informed dialogue with each other
regarding the norms they seek to articulate. Such a dialogue
requires each decision maker to carefully search past relevant
decisions, to review those decisions, and to harmonize, reconcile, and
distinguish any divergent interpretations of the unitary text that all
decision makers are construing. In this way, it will be possible to
minimize many, although clearly not all, of the potential conflicts
that a nonhierarchical system of adjudication can engender.306
Whether UDRP panels will engage in the kind of sustained
dialogue necessary to avoid jurisprudential incoherence is uncertain.
Panels are not bound by prior UDRP decisions and need not refer to
them at all in their rulings. They may, of course, treat prior decisions
as persuasive under their Rule 15(a) authority to consult whatever
2001] DESIGNING NON-NATIONAL SYSTEMS 235
307. See 3636275 Canada v. eResolution.com, WIPO Case No. D2000-0110, § 7 (Apr. 10,
2000) (“Although entitled to consider principles of law deemed applicable, the Panel finds it
unnecessary to do so in any depth. The jurisprudence which is being rapidly developed by a
wide variety of Panelists world-wide under the ICANN Policy provides a fruitful source of
precedent.”), available at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-
0110.html.
308. For the period of January 14 to July 3, 2000, 160 out of 568 decisions, or 28%, cited
to prior panel decisions. Cybersquatting Decisions 1 through 3, supra note 237; Cybersquatting
Decisions 4 and 5, supra note 298. This trend has risen slightly over time. Cybersquatting
Decisions 5, supra note 298 (noting that 33% of 156 decided cases cited prior panel decisions
in the period of June 14 to July 3, 2000); see also Sundor Brands v. Trenchcoat Prods., Inc.,
WIPO Case No. D2000-0633, ¶ 6 (Aug. 21, 2000) (refusing to distinguish prior panel decisions
on the ground that “the instant Panel is not aware of the evidence presented in the cases cited
by Respondent and that such decisions are not binding in this matter”) (emphasis added),
available at http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0633.html; Pivotal
Corp. v. Discovery Street Trading Co., WIPO Case No. D2000-0648, ¶ 3 (Aug. 14, 2000) (“The
Panel is perfectly aware that it is not bound by any other decisions.”), available at
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0648.html.
Moreover, these figures mask the fact that panels have yet to develop a methodology for
assessing prior case law. Many of the panels that do cite to prior UDRP cases do so in a
cursory fashion without discussing the prior decision’s reasoning or identifying whether a
split of authority exists on the particular point at issue. See, e.g., Sundor Brands, WIPO Case
No. D2000-0633. Only a few have engaged in more extended analysis such as distinguishing
past precedents or reconciling conflicting strands of case law. See, e.g., J.P. Morgan v.
Resource Mktg., WIPO Case No. D2000-0035, ¶ 3 (Mar. 23, 2000) (noting inconsistent panel
approaches as to whether UDRP allows submission of rebuttals by complainants and choosing
approach that was more persuasively reasoned), available at
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0035.html; Pivotal Corp., WIPO
Case No. D2000-0648, ¶ 7 (discussing several decisions analyzing what constitutes a bona fide
offering of services by the respondent).
309. See Key Issues, supra note 254, at 9 (noting divergent approaches to “the perils of
applying domestic [UDRP] decisions to international disputes”).
rules of law they deem applicable to a particular dispute.307
They are
not required to do so, however, and a recent statistical survey
reveals that prior panel rulings are cited in only slightly more than
one-quarter of all cases.308
There may be cogent reasons for this
trend: Given the discretion panels enjoy to choose the controlling
law, it is far from clear what persuasive force, if any, a UDRP ruling
nominally decided under the law of one nation has for UDRP issues
arising under another nation’s laws.309
The UDRP’s hybrid decision-making structure poses a more
fundamental challenge to developing a consistent domain name
jurisprudence. The arbitral model upon which much of the UDRP
was founded places limited weight on past awards as sources of
authority. It also focuses more on resolving disputes between the
236 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
310. See Neil J. Cohen, Forum: ICANN at the Crossroads, 1 INTERNET L. & BUS. 581, 581
(2000) (stating that “the decisions diverge widely on the most important UDRP issues” and
that the outcome in any particular dispute “is a crapshoot”); The TLD Lobby, Is Your Domain
Name in Jeopardy?, at http://www.tldlobby.com (last visited Oct. 3, 2001) (stating that UDRP
decisions have been “wildly inconsistent”).
311. Although some (but by no means all) of the deficiencies of the UDRP are consequences
of breaking new ground free of existing national political structures and traditional forms of
international cooperation among governments, a return to either a purely national model or
a purely treaty-based one would jettison the advantages that non-national lawmaking offers.
We therefore reject the cosmetic “solutions” of instituting a series of checking mechanisms
based upon those found in a single national model or a single treaty regime, or based upon
a single decision-making model (whether adjudicatory, ministerial, or arbitral).
parties than on articulating governing legal norms or creating a
jurisprudence to guide future conduct by nonparties. Given these
antecedents, it is not surprising that stark divergences have
developed between panels analyzing the same legal issues.310
With
limited internal incentives for panelists to reconcile divergences, no
appeals process, and attenuated political checks, it is questionable
whether the UDRP as presently constituted can achieve
jurisprudential coherence.
III. EXTENDING THE NON-NATIONAL MODEL OF LAWMAKING AND
DISPUTE SETTLEMENT
As we explained at the beginning of this Article, international and
domestic policymakers are heralding the UDRP as a new model for
resolving legal disputes that transcend national borders. Their
proposals to extend the UDRP, however, fail to address two key
questions. First, are the conditions necessary for the UDRP’s
replication absent in other settings; and second, assuming that
replication is feasible, should the UDRP be propagated whether in
its current form or only with certain modifications of its structure?
In this Section, we seek answers to both of these questions. In
brief, we believe that the UDRP’s non-national model can indeed be
applied elsewhere, even absent centralized technological monopolies
such as ICANN. Of course, merely because replication is possible
does not mean it is desirable. We conclude that the question of
whether policymakers should encourage the proliferation of nonnational
approaches to lawmaking and dispute settlement cannot be
answered in the abstract.311
It depends instead on the methods used
2001] DESIGNING NON-NATIONAL SYSTEMS 237
to legitimize non-national structures, which in turn hinges on such
foundational issues as (1) the pace of non-national lawmaking and
dispute settlement relative to their alternatives; (2) the design of
checking mechanisms different from those currently found in the
UDRP; (3) the degree to which non-national structures accommodate
competing national values and interests; (4) the relationships
between non-national structures and complementary or competing
national and international ones; and (5) the substantive law that the
system encompasses. We address these variables in our discussion
below, identifying the options available to public and private
policymakers seeking to emulate the UDRP’s advantages without
retaining its problematic features.
A. Replicating the UDRP: Are Technological Monopolies Essential?
As an initial matter, one might question whether calls to replicate
the UDRP are misguided not on legitimacy grounds, but because of
technological deficiencies. According to this argument of
technological essentialism, centralized technological monopolies
were not merely a sufficient condition for creating the non-national
UDRP; rather, they were a necessary condition. For technological
essentialists, the successful operation of the UDRP rests on two
features embedded within the architecture of the domain-name
system itself. First, technology gave ICANN exclusive control of the
most commercially valuable domain-name space and permitted it to
condition access to that space on a registrant’s “consent” to a host of
substantive rules. Second, technology provided the means to enforce
dispute settlement decisions simply and automatically, without the
delays or due process constraints that enforcement of judgments
normally entails. In the absence of these two features, it might be
argued, non-national structures will be inherently unstable and may
even be rendered nugatory by competing national and international
alternatives.
To be sure, technological essentialism helps to explain why the
first extension of the non-national model is occurring entirely within
the domain-name system. It is no accident that ICANN made nonnational
dispute settlement a required component of the seven new
238 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
312. See ICANN Approves Seven Top-Level Domains, supra note 123.
313. See Interim Report II, supra note 284, ¶ 24 (stating that implementing the
recommendations of the second WIPO process through ICANN “has the obvious advantages
of automaticity in effect and total coverage. Since the technical infrastructure is deployed in
favor of the [chosen] policy, the policy can effectively be implemented throughout the whole
of that technical infrastructure, namely the DNS [domain name system]”).
314. ICANN, Principles for Delegation and Administration of ccTLDs Presented by
Governmental Advisory Committee (Feb. 23, 2000), at http://www.icann.org/committees/
gac/gac-cctldprinciples-23feb00.htm; Andrew Orlowski, Country code chiefs, registrars mull
ICANN breakaway, THE REGISTER (Nov. 25, 2000), available at http://www.theregister.
co.uk/content/6/14999.html.
315. James Ledbetter, Competing Domain-Name Registries Creating Tower of Cyber-Babel,
THE STANDARD (July 5, 2001), available at http://www.thestandard.com/article/
0,1902,27694,00.html.
gTLDs under its exclusive control.312
Applying the UDRP, either in
its current form or in an enhanced format, to a broader set of
domain-name disputes requires relatively minor modifications to the
root server and to the web of contractual relationships that ICANN
and its accredited registrars superintend.
Technological essentialism may similarly explain why the Second
WIPO Domain Name Process will likely produce the next wave of
UDRP extensions. The legal and political issues the second WIPO
process raises are complex, often exceedingly so. If, however,
governments and affected stakeholders can reach a consensus on
how to reconcile these issues, implementing that bargain will be
straightforward.313
Stated another way, the critical, practical
questions facing WIPO are questions of legitimacy, not questions of
technology.
Technological essentialism fails to account for other aspects of the
non-national story, however. First, consider the fact that ICANN’s
control of domain-name space is far from complete. ICANN has
imperfect control over the practices and policies of ccTLDs, and its
recent interactions with ccTLD registries suggest a relationship of
hostility rather than one of mutual cooperation.314
In addition,
ICANN is attempting to fend off competition from New.net, a
California firm that registers second level domain names in
“alternative” gTLDs outside the existing root server and thus beyond
ICANN’s reach.315
Nevertheless, both New.net and an increasing
number of ccTLD registries have voluntarily adopted the UDRP to
2001] DESIGNING NON-NATIONAL SYSTEMS 239
316. See New.net, Model Domain Name Dispute Resolution Policy, at
http://www.new.net/policies_dispute.tp (last visited Oct. 3, 2001) (comparing text of New.net
dispute settlement policy to UDRP); Final Report, Second WIPO Internet Domain Name
Process, supra note 27, ¶ 20 (noting that twenty-two ccTLDs have adopted the UDRP).
Similarly, keyword providers have adopted dispute settlement mechanisms not unlike the
UDRP to resolve disputes between keyword holders and trademark owners, notwithstanding
that keyword providers are not obligated to apply the UDRP or any equivalent system. See
id. ¶ 43.
317. Cf. Catherine Cronin-Harris, Mainstreaming: Systematizing Corporate Use of ADR,
59 ALB. L. REV. 847, 858 (1996) (discussing historical processes by which alternative dispute
resolution systems became institutionalized among American businesses).
It is equally plausible, however, that an existing dispute settlement system will be
emulated not because of its advantages, but because network effects have made it a de facto
model that cannot be ignored. See generally Mark A. Lemley & David McGowan, Legal
Implications of Network Economic Effects, 86 CAL. L. REV. 479 (1998). For present purposes,
we are agnostic about the causes of proliferation. Our point is simply that non-national
dispute settlement systems can and do proliferate absent technological imperatives. We
address normative issues in the next subsection.
318. Information Society Directive, Directive 2000/31/EC of the European Parliament and
of the Council of 8 June 2000 on certain legal aspects of information society services, in
particular electronic commerce, in the Internal Market, arts. 12-14, and recitals 40-46, O.J.
L 178, 1, 6, 12-13.
review cybersquatting complaints by trademark owners against
registrants in these domain-name registries.316
These events undermine the claims of technological essentialism
in two ways. First, they suggest that the UDRP can succeed even in
areas of the domain-name system not under ICANN’s monopoly
control (at least for purposes of imposing a mandatory dispute
settlement system upon registrants). Second, and perhaps more
importantly, the events reveal that where a non-national dispute
settlement system has advantages over traditional adjudication or
arbitration, those advantages may in themselves persuade other
public or private regulatory bodies to adopt the system, even in the
absence of a mandatory or centralized control structure.317
This latter point explains why the UDRP’s non-national model can
indeed flourish outside of the domain-name context. Consider for
example the notice and take-down obligations of private Internet
Service Providers (ISPs). The European Community’s recent
Information Society Directive instructs member states to encourage
the development of a notice and take-down system by means of
“voluntary agreement between all parties concerned.”318
Recent
practice under the U.S. Digital Millennium Copyright Act (DMCA)
suggests one way such a system might operate. Under the DCMA,
240 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
319. See Steven J. Metalitz, Implementation of the DMCA: The Practical, Ninth Annual
Conference on International Intellectual Property Law and Policy, at 7 (Apr. 20, 2001) (on file
with the William and Mary Law Review) (noting ISP action on thousands of notice and
takedown notifications and near total absence of disputes in court and concluding that “the
notice and taking down procedure codified [in the DMCA] has rapidly become the primary
means by which copyright owners and service providers cooperate to deal with instances of
online infringement”).
320. Under one approach to such a system, an ISP’s subscribers would submit to dispute
settlement of infringement claims by third-party copyright owners with respect to postings
of copyrighted materials on the ISP’s computer servers. The question of whether the ISP must
remove such allegedly infringing materials would be consigned, in the first instance (or
perhaps exclusively), to non-national dispute settlement providers authorized by the ISP
subscriber agreement to hear such claims based on some designated body of rules, be they
national or international copyright laws or some hybrid of the two. Further review by national
courts is possible but not essential to such a system.
321. A recent example is the draft Agreement on the Free Trade Area of the Americas,
FTAA.TNC/w/133/Rev.1 (July 3, 2001), available at http://www.ftaa-alca.org/alca_e.asp. The
draft treaty obligates the states that ratify it to participate in ICANN’s Governmental
Advisory Committee and to require “domestic Network Information Centers (NICs) [to]
ISPs in the United States function as the de facto adjudicators of
infringement disputes between copyright owners and users who post
copyrighted content to web sites. The disputes they oversee are
designed to precede litigation and do not preclude the contesting
parties from adjudicating their claims in court. The first few years
of practice under the statute, however, reveal that the overwhelming
majority of disputes are resolved with no judicial intervention.319
Admittedly, ISPs are nominally applying United States copyright
law to these disputes, not non-national or international law.
However, the rules applicable to notice and take down disputes may
well evolve away from purely national roots toward contractenshrined
norms and practices not tied to any particular prescriptive
authority.320
This is especially likely if non-U.S. ISPs proliferate or
U.S. ISPs acquire customers from other countries. Moreover,
although technology permits ISPs to remove infringing copyrighted
content from their web sites, the sheer number of ISPs means that
it is a far more decentralized technology than that which controls
domain names. In short, there are both analogies to and divergences
from the UDRP that suggest the non-national model can flourish
outside of the domain-name system.
Where governments conclude that their national interests are
served by non-national dispute settlement models, those models are
likely to proliferate.321
Proliferation might also occur where the
2001] DESIGNING NON-NATIONAL SYSTEMS 241
participate in the . . . UDRP to address the problem of cyber-piracy of trademarks.” Id. at 8.14.
322. See Perritt, supra note 7, at 945-50 (explaining why credit-card-charge-back dispute
settlement systems benefit consumers, merchants, and financial intermediaries and
predicting the spread of such systems internationally).
323. Id. at 949 (“The relatively wide availability of charge-backs in Europe despite the
absence of any government compulsion to offer them, is strong testimony to their
attractiveness as an alternative dispute resolution mechanism.”).
relevant private actors’ interests are served by non-national models.
Indeed, the mix of public and private involvement may vary widely.
The substantive content of the UDRP emerged from a body of
uncertain public-private status. In the case of the DMCA, the notice
and take-down procedure is embodied in legislation, but the system’s
content has evolved from private ISP practice. In Europe, the EC
Directive encouraged the negotiation of private agreements but did
not establish a mechanism for their development. Thus, public
regulation of private parties may be required to jump start the nonnational
system, as was needed also with credit-card charge-back
disputes in the United States.322
If properly designed, however, the
system’s advantages may well convince even unregulated private
parties to emulate it, as occurred with the voluntary adoption of
charge backs in Europe and with ccTLDs and New.net’s emulations
of the UDRP.323
In sum, we agree with the claim of technological essentialists that
centralized technological controls of the sort ICANN enjoys will
greatly facilitate the propagation of non-national dispute settlement
systems. Nevertheless, such controls are not necessary conditions for
extending the non-national model, either where that model has
demonstrable advantages over alternatives or where government or
private interests are served by adopting a non-national approach.
The nature and extent of technological implementation (and, indeed,
public law involvement and oversight) will vary from one context to
another.
B. Designing Checking Functions for Non-National Systems
Assuming, therefore, that the UDRP can be replicated in other
contexts, we turn to the normative issues raised by non-national
structures and the variables that should guide government officials
and private parties considering whether, and in what form, to adopt
242 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
324. Milton Mueller’s statistical assessment of performance trends across all four UDRP
dispute settlement providers is an early and influential example. See Mueller, Rough Justice,
supra note 169. Michael Geist’s recent study of disparities among the different dispute
settlement providers also offers helpful empirical data. See Geist, supra note 169.
325. We note, however, that current information about appeals from UDRP panel rulings
is anecdotal and incomplete. See UDRP Appeals in Court, supra note 215.
them. These variables are developed from our analysis of the UDRP
as the structure at the leading edge of this paradigmatic shift, but
we intend that they extend more broadly. Only if greater attention
is paid to a new complement of checking functions will it be possible
for non-national lawmaking and dispute settlement structures
legitimately to replicate the UDRP.
Our analysis has a theoretical focus that we hope will serve as a
template for further and diverse scholarly inquiry. For example, the
variables we identify with regard to checking functions could help
guide empirical studies of the UDRP. At present, UDRP opponents
and proponents cite individual panel decisions to support claims that
the system is broken or functioning as its drafters intended. More
than anecdotal evidence is available, however. Because nearly all
UDRP decisions and other dispute settlement data are published,
commentators can identify with some precision broader trends upon
which to ground their assessments of the system and prescriptions
for reform.324
Future empirical studies could focus on procedural or substantive
issues. The extent of default jurisprudence would be a useful subject
for examination. Critics often cite the high success rate of trademark
owners as almost irrefutable evidence of the UDRP’s imbalance, but
the success rate of trademark owners can be measured in many
ways. For example, the rate might differ if default cases were
excluded from the calculation. So too, as appeals to national courts
become more prevalent, information about the percentage of panel
decisions appealed, and affirmance or reversal rates, could be used
to assess the efficacy of national courts as checking mechanisms for
non-national decision makers.325
Substantively, studies might, for
example, gauge whether panels are expanding the UDRP by
identifying the percentage of cases that premise a finding of bad
faith on conduct that the UDRP’s drafters chose not to include within
paragraph 4(a) of the Policy. The degree to which national interests
are penetrating into the system could be tested by analyzing panels’
2001] DESIGNING NON-NATIONAL SYSTEMS 243
326. See supra Part I.A.
327. See Liu, supra note 49, at 618-25 (discussing cyberspace source of authority).
328. See supra text accompanying notes 42-53 and 315-16 (discussing IAHC and New.net
as possible rival to ICANN).
329. See supra Part II.B.2. (discussing whether UDRP is hard law in practice).
330. See supra note 321.
choice of law methodologies and deference to national trademark
rights.
For present purposes, however, we focus on conceptual and
foundational concerns. Legitimacy and accountability, institutional
capacity, and the need for error correction mechanisms—these
concerns endure and guide our analysis.
1. The Importance of Legitimacy
As described above, the UDRP contains weaknesses that
undermine its claims of legitimacy. Legitimacy, of course, is a value
worthy of pursuit in and of itself.326
In a context such as the UDRP,
however, where regulatory and adjudicatory authority largely
operate outside existing national political arrangements and derives
power in part from the custom and consensus of affected
constituencies,327
legitimacy is essential to achieve even pragmatic,
self-interested goals such as viability and efficacy. Absent legitimacy,
non-national alternatives likely will arise because of the ease with
which competing structures and institutions can emerge without the
decelerating constraint of international or national political debate
and procedure. The fate of the Internet Ad-Hoc Committee’s
Memorandum of Understanding and the rise of New.net speak to
such facility.328
Legitimacy also nurtures and invigorates other forces that may
help to sustain the non-national system and abate its inherent
vulnerability. Non-national law is largely soft law, at least in
theory.329
But the law produced by a non-national system may be
hardened through, and incorporated into, traditional lawmaking and
adjudicatory processes. For example, it might be incorporated into
instruments such as treaties. The recently released proposal for a
Free Trade Area of the Americas Agreement raises the UDRP’s
status by making it the required means for resolving certain
cybersquatting disputes.330
Similarly, national courts soon will be
244 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
331. Cf. Heathmount A.E. Corp. v. Technodome.Com., No. CA-00-00714-A, at 18 (E.D. Va.
Dec. 29, 2000) (refusing to treat the UDRP as adequate alternative forum when reviewing
forum non conveniens motion and stating that the UDRP “is not an adequate substitute for
this court’s consideration of the issues presented here”), available at
http://dnlr.com/reporter/technodome.
332. The FTAA requires national governments to mandate that private parties not part of
the non-national system join that system. This bolsters the UDRP in two similar but slightly
different ways. First, because treaties must be approved by elected representatives and the
ICANN delegation from the Department of Commerce was never so approved, the former has
greater democratic legitimacy. Second, the status of the UDRP is enhanced by its widespread
adoption by a larger number of registries.
333. See supra text accompanying notes 4-15.
334. See supra Part II.A. Although we stress that change may occur at different rates of
acceleration for legislative and dispute settlement institutions within the same non-national
system, we recognize that “dispute settlement is not simply a mechanism for neutral
application of legislated rules but is itself a mechanism of legislation and of governance.”
Trachtman, supra note 300, at 336.
forced to consider (in many procedural contexts) what degree of
deference to give UDRP rules and UDRP panel decisions.331
Judicial
deference, where appropriate, would both boost the UDRP as the de
facto system and harden its soft-law character. A slightly different
form of hardening might be achieved by most country code domains
adopting the UDRP, thereby consolidating the UDRP’s position.332
Yet all these developments are unlikely to occur unless the system
is perceived as legitimate.
2. Deliberative Construction in a Non-National Era: The Case
for Speed
In fashioning control mechanisms for non-national systems, one
basic strategic choice must be confronted—deciding upon the pace of
legal change. As noted at the beginning of our inquiry, two
distinctive features of the UDRP’s hybrid model were the absence of
deliberative construction in developing the rules of the dispute
settlement system, and a departure from incrementalism in
adjudicating disputes.333
These aspects of the UDRP may of
themselves weaken the legitimacy of the system. However, they also
present a basic preliminary dichotomous choice, between slower and
faster models of lawmaking and decision making, that affects how
best to legitimize a hybrid system without jettisoning its
advantages.334
2001] DESIGNING NON-NATIONAL SYSTEMS 245
335. See supra Part II.B.2.b. (discussing practical binding effect of decisions).
336. The Policy does not have any statute of limitations. Thus, disputes that significantly
predate the launching of the UDRP in December 1999 may be freely decided by panels.
337. A second wave of accumulated, easy cases may arise once new gTLDs are opened for
registration. The nature and number of these cases will depend on variables such as whether
trademark owners are given priority in registering their trademarks in the new domain-name
space and whether the gTLDs are open to all comers or restricted to certain classes of
registrants. See supra Part II.A.
338. See Judith H. Bello, Some Practical Observations About WTO Settlement of Intellectual
Property Disputes, 37 VA.J.INT’L L. 357, 358-60 (1997) (noting that limiting WTO jurisdiction
to disputes among states creates restraints on government decision makers’ likely prosecution
of intellectual property claims).
339. Strong pressures to allow private parties access to the dispute resolution process exist
even in systems nominally restricted to nation states. See Daniel Pruzin, WTO Members Make
Unfriendly Noises on Friends of the Court Dispute Briefs, 17 Int’l Trade Rep. (BNA) 1283,
If a dizzying pace of progress is thought to be essential to secure
the benefits of non-national dispute settlement, that pace could be
maintained provided that decisions are subject to greater and later
external checks. Alternatively, the process could be consciously made
more deliberative, bringing it more within broadly accepted
parameters of slower-moving lawmaking models. That is, softer law
(as might be achieved, for example, through minimizing the de facto
binding force of panel decisions)335
can be made more quickly without
jeopardizing desired systemic values; harder law must be developed
more incrementally. While the former is a riskier strategy, it has
greater potential gains.
Consider the early flood of cases under the UDRP as an example.
Undoubtedly, this surge is in part the result of many disputes having
accumulated prior to the implementation of the Policy, as well as a
rush of early, easy cases that have come to establish the basic
parameters of appropriate conduct on-line.336
Both of these types of
cases should subside over time, at least within existing gTLDs,337
but
we doubt that the number of cases brought before the UDRP will
slow significantly. Unlike most other international structures, the
UDRP is a vehicle for adjudication of certain routine commercial
disputes. These disputes are brought by self-interested individuals
in lieu of private, multijurisdictional litigation, using procedures
that are inexpensive and user-friendly. Moreover, they are brought
without the checking intervention of state actors.338
These are
precisely the characteristics that make the UDRP model attractive
for replication.339
To remove them in the name of ensuring the fuller
246 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
1284 (2000) (noting increasing acceptance of and reliance upon submissions by nongovernmental
organizations and interest groups by WTO Appellate Body and Panels). But see
Philip Nichols, Extension of Standing in World Trade Organization Disputes to
Nongovernmental Parties, 17 U. PA. J. INT’L ECON. L. 295, 303 (1996) (criticizing proposals to
grant private parties standing to bring claims before the WTO).
340. Cf. Paul Geller, Intellectual Property in the Global Marketplace: Impact of TRIPs
Dispute Settlements, 29 INT’L LAW. 99, 112 (1995) (arguing that WTO panels should engage
in filling gaps in TRIPs Agreement).
341. These dangers do exist in individual disputes, but it is here that national institutions,
and in particular national courts, may serve an important constraining function. See infra
Part III.B.6.a.
ventilation of competing perspectives that a slower pace makes
possible might make the model significantly less useful.
Moreover, because of the pace of change in the digital
environment, panels will inevitably be faced with sets of facts
involving cutting edge issues upon which non-national lawmakers
inevitably will not have focused their attention. There is immense
value in panels being able to address these issues in the interstices
between periods of non-national rulemaking to create a fund of
experiential knowledge upon which lawmakers may later draw.
Indeed, although UDRP panels’ legitimacy may be endangered by a
hastening to address issues beyond the core of agreed cases, their
attractiveness may be equally undermined by their refusal to decide
cases in which gap-filling is required.340
Yet the legitimacy of panels jettisoning a cautious, incremental
approach depends, in large part, on the pace and nature of the
lawmaking process that undergirds and interacts with panel decision
making. Change may occur at different rates of acceleration for
legislative and adjudicative institutions within the same nonnational
system, but the speed of each is dynamically interactive; the
pace of one affects the pace of the other.
If non-national legislative reviews of dispute settlement outcomes
are both frequent and representative, then the dangers of panel
excesses and experimentation are, at least in the aggregate,341
markedly diminished. If, by contrast, the legislative process is
obstructed, not only are the dangers of rapid panel expansions
magnified temporally, but their legitimacy is far more uncertain.
True, international tribunals continue to function during periods of
political impasse, but during such times they are also subject to
pressures not found during phases of more lubricated political
2001] DESIGNING NON-NATIONAL SYSTEMS 247
342. Both the ECJ and the WTO have been presented with a docket of competenceexpanding
cases during periods when international lawmaking by national governments was
obstructed. See Lindseth, supra note 247, at 663-64 (discussing ECJ); Kanth, supra note 175,
at 1157 (discussing WTO). It was also during such a period of expansion that the ECJ came
under pressure from national courts in Europe to impose human rights limitations on
Community powers. See Helfer & Slaughter, supra note 5, at 310-11 (discussing ECJ’s
acquiescence to pressures by German Constitutional Court to develop a human rights
jurisprudence).
343. See Helfer & Slaughter, supra note 5, at 315-16 (documenting how the ECJ initially
extended its powers to achieve the goals of integration during periods of political stagnation
and then became more cautious as the EC’s political processes became more active).
evolution.342
Some tribunals have successfully managed these
pressures, swiftly extending their powers to achieve larger objectives
when forward political motion had slowed to a crawl, and
retrenching when legislative processes regenerated.343
However,
keeping a steady hand on the throttle of the accelerator requires a
degree of institutional control and coherence that may be impossible
when a non-national dispute settlement system’s hybridization
includes a disaggregated decision-making structure.
For these reasons, the preliminary choice between faster and
slower models of evolution pervades each of the checking functions
below through which we seek to legitimize hybrid non-national
models typified by the UDRP. That is, the devices we discuss below
nominally relate to a variety of discrete procedural issues, but
almost all implicate an effort to modulate the pace of non-national
lawmaking and non-national dispute settlement, thereby
accommodating the legitimacy objective we identified earlier.
3. Institutional Reform: Refurbishing Non-national Lawmaking
Reform of ICANN’s lawmaking structures would assist in
refurbishing the legitimacy of that institution and, as a consequence,
of the panels that interpret and apply the “law” that ICANN
produces. Moreover, if the organization’s lawmaking processes were
revised to enhance its democratic credentials, the different organs of
ICANN could additionally serve more significant checking functions
than they do at present.
We believe that some formal, organized rulemaking body, whether
public or private, is essential to impose checking functions on panels,
particularly if non-national legal norms will continue to serve at
248 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
344. Treaty institutions, however, may set parameters on the extent of power exercised by
non-national structures. Additionally, treaty norms may also serve as the substantive legal
rules to be applied by non-national dispute settlement decision makers. See infra Part III.B.7.
345. See Dinwoodie, A New Copyright Order, supra note 8, at 483-84 (need for dynamism);
id. at 550-52 (complexity of interests).
346. But see Richard Falk & Andrew Strauss, On The Creation of a Global Peoples
Assembly: Legitimacy and the Power of Popular Sovereignty, 36 STAN. J. INT’L L. 191 (2000)
(advocating the extension of democratic procedures and institutions from the setting of the
nation-state to the global context).
347. Cf. Roger Cohen, EU Unity After Danish Vote: ‘Wide’ Rather Than ‘Deep’?, INT’L
HERALD TRIB., Oct. 2, 2000, at 13 (discussing resurgence of national identities within Europe
in wake of Denmark’s rejection of common EU currency).
348. See Anne-Marie Slaughter, A Liberal Theory of International Law, 94 AM. SOC’Y INT’L
L. PROC. 240, 240-42 (2000).
least in part as rules of decision for on-line domain name disputes.
Existing treaty-based institutions are insufficient vehicles for the
forms of lawmaking and dispute settlement demanded by a global
and digital world.344
To be sure, such institutions tie the resultant
rules more directly to the people that are governed through the
national governments by whom such rules are negotiated. Treaty
lawmaking, however, is too slow, and does not reflect the
increasingly important interests that exist apart from (although
partly overlapping with) the interests represented in national
political units.345
Clearly, we do not envisage (and the peoples of the world are not
ready for) the creation of a world parliament to establish a direct
link between the non-nationally governed and their non-national
governors.346
Such a body is neither practical nor normatively
compelling when (globalization notwithstanding) social identities
and priorities remain linked in many important ways to
nationality.347
But this does not mean that looser political structures
of a non-national nature cannot be designed to complement national
mechanisms. Nor does it imply that such structures cannot be
nurtured to grow in line both with evolving social norms of
community and with practical considerations. This growth, and the
metrics for measuring its determinants, will appropriately be judged
by the primary actors at the present stage of global political
organization, namely the disaggregated national governments who
are themselves subjected to pressures from individuals and private
parties operating within and across nation-states.348
2001] DESIGNING NON-NATIONAL SYSTEMS 249
349. See, e.g., Center for Democracy and Technology, Domain Name Management Policy
(2000), at http://www.cdt.org/dns/icann/study/ (last visited August 31, 2001); At-Large
Membership Study Committee, Discussion Paper #1 (July 12, 2001), available at
http://www.atlargestudy.org/DiscussionDraftRev.5.4.htm; see also Mueller, Technology and
Institutional Innovation, supra note 41; Zittrain, supra note 51.
350. At minimum, these include reaffirming decisions taken at a time of democratic
impoverishment. See supra text accompanying notes 137-38 (discussing proposal).
351. Zittrain, supra note 51, at 1088-90 (discussing possible alternatives and successors
to ICANN).
352. These might include more intrusive legislative oversight of panel developments
through conducting annual (or more frequent) reviews of UDRP outcomes, investigating
allegations of actual or apparent biases relating to arbitral appointment procedures, and
considering proposals for structural reforms (such as a UDRP Appellate Body).
Notwithstanding ICANN’s status as the UDRP’s progenitor, it
may not be well-placed to evolve in this fashion. The trenchant
democracy deficit and legitimacy critiques leveled against ICANN
mean that entrusting the organization in its present form to oversee
and implement creational and external checking mechanisms may
only exacerbate the skewed elements of the present system. Much
ink has been spilled by scholars and public interest groups
advocating specific proposals for how to reform ICANN, including
changes to its voting and operational systems.349
For present
purposes, we will not rehearse the different proposals.350
We simply
indicate our general support for reforms not only because they will
bolster the legitimacy of ICANN’s control of the domain-name
system, but also because they enable us to enlist ICANN (or
whatever national rulemaking succeeds it)351
in the performance of
a variety of crucial checking functions over panel decision making.352
4. Horizontal Non-National Relations: Competitive Federalism
The relationship between competing non-national fora may also
affect the content and pace of panel decision making and the
internalized values of decision makers. Diffusion of power may act
as a check on abuses of power. At present, ICANN is committed to
making available to complainants a wide range of dispute settlement
institutions. Accordingly, domain-name registrants are required to
submit to the jurisdiction of any and all dispute settlement
providers. However, the procedures in place also give the
complainant unfettered choice among those providers, and thus the
250 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
353. See supra Part II.B.2.
354. See, e.g., Mueller, Rough Justice, supra note 169, at 12.
355. From a litigant’s perspective, a UDRP appellate body would provide an immediate
opportunity to correct panel errors without the expenses and delays endemic in national court
proceedings. From an institutional perspective, an appellate tribunal could provide a more
deliberative atmosphere in which to interpret the Policy, harmonize conflicting decisions, and
highlight problematic issues for subsequent review by ICANN’s political bodies.
356. They will also need to consider important questions about the jurisdiction of any
appellate tribunal that is created. See M. Scott Donahey, Adding Appeals Procedure to Dispute
Resolution Might Satisfy ICANN Critics, 6 ELEC. COMM. & L. REP. 33 (Jan. 10, 2001)
(proposing UDRP appellate panel and discussing its structure and jurisdiction); Experts Call
For Right of Appeal in Domain Name Dispute Resolution, 14 WIPO REP. 402 (2000)
(discussing comments by experts participating in meeting convened by WIPO). Cf. Helfer,
Forum Shopping, supra note 1, at 395-99 (discussing alternative ways of structuring a new
competition that is engendered is simply a race to favor the mark
owner.353
Restoring competition and balance is essential. Other
commentators have proposed immediate reforms.354
Additional
proposals might be considered if the number of dispute settlement
providers increased markedly. Requiring domain-name registrants
to designate a limited number of providers to whom they agree to
submit disputes might establish countervailing pressures and thus
more closely mimic the competition seen in international commercial
arbitration. There, the incentive to be seen as a fair dispute
settlement institution (or panelist) is generated by advance,
predispute designation of the dispute settlement institution. While
this veil of ignorance cannot be replicated in the UDRP context, a
similar equilibrium might be produced by establishing two equal
forces that push against each other. This is one example of how a
hybrid non-national structure might have to achieve the same result
as existing paradigms using slightly different devices.
5. Vertical Non-National Relations: A UDRP Appellate Body?
Significant checking functions could also be entrusted to some
form of non-national appellate body, either within ICANN itself or
comprised of jurists from the different dispute settlement providers.
Although the virtues of such a body are obvious,355
so are the vices,
which may in fact outweigh the virtues. Non-national lawmakers
will need to consider several variables in deciding whether to create
such a body.356
2001] DESIGNING NON-NATIONAL SYSTEMS 251
international human rights court to complement the existing system of multiple human rights
tribunals).
357. Cf. Stephan, supra note 30, at 747-48 (arguing that harmonization of international
commercial law should strive for “an optimal level of legal risk that is greater than zero”).
358. See supra Part II.B.1.
One variable will be determining whether an appellate tribunal
contributes to an optimal level of overall checking functions. Such
functions, although essential to any system of dispute settlement,
are not cost free.357
International commercial arbitration has long
eschewed appellate mechanisms precisely because they undermine
the finality and certainty of awards.358
However, as we have argued,
the UDRP is not purely arbitral and so might require checking
mechanisms that arbitration does not.
A second and closely related variable is UDRP’s substantive scope.
Broadening the policy and moving it closer to a full-fledged
adjudicatory model would increase the opportunities for conflicting
panel decisions, which an appellate tribunal could then reconcile. By
contrast, a more ministerial policy in which panel discretion is
tightly constrained ex ante is likely to require less harmonization.
The need for error correction in individual cases will remain, but this
may be adequately addressed by national courts if national court
review is facilitated in ways such as those discussed below.
Reformers must also consider the UDRP’s relationship to national
courts and national laws. Adding an additional layer of non-national
review will diminish litigants’ incentive to take a second appeal to
national courts, further distancing national judges from trademarkdomain
name adjudication and from influencing the formation of
legal norms. Such distance might be appropriate if ICANN were to
move the UDRP toward a more autonomous system of non-national
rules, but it is far less suitable for a national-non-national hybrid,
particularly one whose choice-of-law clause draws at least in part on
domestic statutes and case law as rules of decision.
Whether an appellate tribunal will provide a net benefit to the
UDRP system will depend on how each of these variables are
resolved. But on balance, we see the importance of maintaining and
even enhancing national law input as weighing against the creation
of such a body.
252 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
359. See, e.g., Froomkin, Wrong Turn in Cyberspace, supra note 26; Mueller, Technology
and Institutional Innovations, supra note 41; Zittrain, supra note 53.
360. See supra note 84 and accompanying text (discussing representational legitimacy of
Internet governance).
361. Liu, supra note 49, at 620-21 (discussing evolution of “direct Internet democracy”); see
also Peter M. Gerhart, Why Lawmaking for Global Intellectual Property is Unbalanced, 22
6. Relations Between Non-National and National Systems
Even though non-national institutional reform is where much
scholarship has focused,359
there are limits to what structural reform
of ICANN could of itself achieve. A more nuanced conception of the
multifarious relations between lawmakers and those that they
govern must also be developed. This conception begins with
creational checking functions. Those functions typically arise from
the need to maintain a nexus between the progenitors of the system
and those subject to the system, whether from the people who in
exercise of sovereignty form a national government in whose affairs
they are represented, or a legislature that assigns responsibility to
an agency whose activities it oversees.
For the domain-name system, it is often remarked that the
legitimacy of imposing checking mechanisms, whether as now
exercised by ICANN or by earlier bodies, rests in large part upon the
acquiescence of Internet users.360
This is a fragile basis upon which
to construct a claim of legitimacy. Just as the acquiescence of U.S.
nationals in U.S. efforts at regulating the Internet does not of itself
legitimate the exercise of U.S. jurisdiction over Internet activities
affecting other countries, so too the acquiescence of Internet stakeholders
would not legitimate preemptive or exclusive non-national
jurisdiction where national interests are at stake. If creational
checking functions themselves are to be valid and effective, it is
crucial that national interests also be incorporated into the analysis.
For this reason, we think it necessary to proceed simultaneously
along two parallel tracks. On the one hand, we urge ICANN to shore
up its non-national democracy deficit by introducing direct
representation and voting structures. If such reforms can be
accomplished, they would strengthen the allegiances between
private non-national governors and the Internet stakeholders they
seek to govern, without regard to nationality or national political
loyalties.361
However, the example of the European Union’s efforts to
2001] DESIGNING NON-NATIONAL SYSTEMS 253
EUR. INTELL. PROP. REV. 309, 311 (2000) (recognizing “the undemocratic nature of
international institutions” and noting that “it is nations, not people or their direct
representatives, who make international law”).
362. See Lindseth, supra note 247, at 672-80 (discussing how EC member states granted
greater lawmaking powers to directly elected European Parliament as a means of overcoming
the EC’s “democracy deficit,” but questioning whether the creation of a European “demos” is
attainable) (citing Joseph Weiler, Does Europe Need a Constitution? Demos, Telos and the
German Maastricht Decision, 1 EUR. L.J. 219 (1995)); see also Paul B. Stephan, The New
International Law–Legitimacy, Accountability, Authority, and Freedom in the New Global
Order, 70 U. COLO. L. REV. 1555, 1581 (1999) (noting the difficulty “[of] constitut[ing]
international organs as democratic republics”).
363. Nor can we allow the UDRP’s resemblance to an arbitral proceeding to obscure the
substance of the system. UDRP-generated opinions are creating a body of decisional law that
affects the public for whose benefit national trademark systems were created. The purposes
of trademark law not only “to secure to the owner of the mark the goodwill of his business”
but also “to protect the ability of consumers to distinguish among competing producers.” Two
Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 774 (1992) (citing Park’N’Fly v. Dollar Park
and Fly, Inc., 469 U.S. 189, 198 (1985) (internal citations omitted)).
364. See Dinwoodie, A New Copyright Order, supra note 8, at 542 n.224, 562-63.
overcome its own democracy deficit shows that legitimizing
supranational or non-national lawmaking structures through direct
representation mechanisms is a slow and cumbersome process, one
that may never fully supplant national political structures as proxies
for the interests of the governed.362
Therefore, as an additional strategy, we support the inclusion of
national structures in the design or refurbishing of non-national
lawmaking and dispute settlement systems on both pragmatic
grounds and as a matter of principle. Pragmatically, facilitating
input by the primary beneficiaries of the intellectual property
system, namely the public, cannot be achieved without the input of
national political structures.363
This is particularly true in the short
term if non-national lawmaking is to continue at a relatively rapid
clip while non-national democratic mechanisms evolve more slowly.
The inclusion of national structures is important for two reasons
of principle. First, as one of us has argued elsewhere, actions taken
in cyberspace have spillover effects off-line, where national
governments have traditionally and uncontroversially exercised
their authority within their own borders.364
For this reason, nations
do have some legitimate claims to prescribe in cyberspace, and these
must be accommodated in any non-national system.
Second, the addition of national structures into the lawmaking
mix may diffuse public choice concerns. Some commentators have
254 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
365. See Froomkin, Governance, supra note 85, at 623-25 (discussing public choice
pressures applicable to different methods used to achieve international harmonization and
standard setting); Stephan, supra note 30, at 743 (discussing political economy problems
affecting public and private international commercial lawmaking). It may be that the
widespread availability of digital communication and the development of bodies of critical
mass over a range of countries may, at some point, reduce public choice concerns that have
clouded international lawmaking in the past. See Citizens’ Groups: The Non-Governmental
Order: Will NGOs Democratise, or Merely Disrupt Global Governance?, ECONOMIST, Dec. 11,
1999, 1999 WL 29811934. Such a shift remains, at present, highly speculative.
366. See Gerhart, supra note 361, at 311 (“Even national systems face a real risk that the
producer interests will be given disproportionate weight over consumer interests.”).
367. See Treaty of Amsterdam Amending the Treaty on European Union, The Treaties
Establishing the European Communities and Certain Related Acts, Oct. 2, 1997, Protocol on
the application of the principles of subsidiarity and proportionality, O.J. (C340) 1 (1997),
argued that international lawmaking structures of various stripes
are especially susceptible to strategic pressures from certain
interests groups, who have the resources and incentives to distort
the lawmaking process in inefficient and substantively dubious
ways.365
Indeed, the ICANN process has been heavily criticized in
this regard. To be sure, national structures can also be strongly
skewed by public choice pressures,366
but we believe that a divided
non-national-national rulemaking competence (and the multiplicity
of perspectives it engenders) will at worst not exacerbate public
choice problems and may in fact check the ability of certain interest
groups to achieve the dominance they might otherwise enjoy in a
single lawmaking forum. With this dual perspective firmly in mind,
we next consider several devices by which the interests of all persons
affected by non-national structures can be represented.
a. Subsidiarity and Deference
The relationship with national courts (and, separately, with
national laws) will be key. Principles of non-national-national
federalism must be developed. Within the EU, although the principle
of subsidiarity—that is, the notion of deferring to national
institutions—has proved to have little justiciable content, it has had
an important political role in conferring legitimacy upon its
supranational activities. And this concept has not simply been
deployed as the marketing strategy of a power-hungry institution;
EU officials have incorporated subsidiarity in fashioning their
legislative proposals.367
2001] DESIGNING NON-NATIONAL SYSTEMS 255
reprinted in 37 I.L.M. 56 (1998) (requiring that legislation contain what has come to be called
a “Subsidiarity Impact Statement”).
368. Indeed, the application of a particular national law may be more important to parties
than the adjudication before a particular national fora. As Linda Silberman famously
commented, to believe otherwise is to suggest that knowing where one will be hung is more
important than knowing whether one will be condemned in the first place. Linda J.
Silberman, Shaffer v. Heitner: The End of an Era, 53 N.Y.U. L. REV. 33, 88 (1978).
Recognition of the importance of applicable law, without forfeiting the procedural advantages
of the UDRP, would suggest that panels should be willing to apply national law where the
interests are so strong as to warrant such application.
369. It also conflicts with the balance between calls for uniformity and calls for national
autonomy reflected in current public international intellectual property law. See Dinwoodie,
A New Copyright Order, supra note 8, at 491-92.
370. If impediments to appeals by respondents result in panel decisions enjoying a de facto
binding status, see supra notes 211-27 and accompanying text, the harm to national interests
is that much greater.
371. See infra notes 386-98 and accompanying text.
Deference to national actors (or to national laws)368
is appropriate
where the parties’ expectations and the interests of national
jurisdictions coalesce to favor the application of national laws that
reflect those expectations and interests. For example, a registrant’s
rights and legitimate interests in using a domain name are likely to
vary from nation to nation, just as do user interests in off-line
disputes with trademark owners. Superimposing rigid non-national
norms in such cases creates the illusion of harmonization where the
consensus needed for harmonization does not exist, and it
disrespects both free expression rights and the careful balance
struck by most national intellectual property systems.369
Deference is also appropriate on pragmatic grounds. A pattern of
unduly trademark-protective panel rulings will only create
incentives for respondents to appeal to national courts to strike a
more appropriate balance.370
Additionally, rulings insufficiently
respectful of dominant national interests will merely fuel
nationalistic efforts to raise the specter of loss of sovereignty to
undermine the legitimacy of the fledgling non-national institution.
In the context of domain-name dispute settlement, however,
subsidiarity can function in a variety of ways. First, a methodology
of deference could be incorporated into UDRP decision making either
by revising the system’s choice-of-law rules—a subject we address in
greater detail below371
—or by introducing a “subsidiarity clause” into
the dispute settlement Policy. Such a clause would clarify that the
256 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
372. A subsidiarity clause could operate even if ICANN expands the UDRP to include some
or all of the more contested intellectual property issues considered in the Second WIPO
Domain Name Process. See Interim Report II, supra note 284.
373. A subsidiarity clause is but one example of a variety of textual devices by which nonnational
lawmakers could seek to ensure a limited application of the UDRP. Other examples
include preambular clauses setting forth the objectives against which the specific provisions
of the Policy are to be construed, or an incorporation by reference to established interpretive
frameworks, such as the one set forth in the Vienna Convention on the Law of Treaties.
374. See supra notes 340-43 and accompanying text.
375. See Dinwoodie, A New Copyright Order, supra note 8, at 493-94, 501-04.
376. At present, the dominance of the UDRP is overwhelming the development of
alternative national solutions. See Electronic Commerce Work Programme, supra note 15, ¶
44 (suggesting that the UDRP has “arguably become a de facto international standard”).
UDRP was intended to be limited to cybersquatting and other
enumerated domain name abuses,372
thus inhibiting expansive panel
lawmaking.373
However, a subsidiarity clause will not (and perhaps
should not) absolutely preclude panel attention to more controversial
issues. Panel jurisdiction will continually be pushed to the
margins374
and the flexibility to address lacunae and novel issues is
a perceived advantage of this mechanism over existing international
intellectual property structures, such as the WTO.375
Nevertheless,
subsidiarity language would signal to panels that they need to take
national interests into account.
A philosophy of subsidiarity will also have a second beneficial
effect—encouraging national legislatures and national courts to
engage in intellectual property domain-ame lawmaking and
adjudication. A UDRP limited to cybersquatting and analogous
egregious conduct does not imply that there is no need for the
development of standards of conduct where the interests of the
contesting parties are more balanced. However, if the UDRP is so
limited, national actors will be pulled into the breach to create rules
for such balanced cases. Indeed, it is striking that the UDRP was
created when national jurisdictions were still in the throes of
legislatively and judicially working through the myriad intellectual
property puzzles that domain name registrations raise. These
national law experiments should continue, but we question whether
they will continue if UDRP panels exercise expansive lawmaking
powers.376
An expansive UDRP with comprehensive non-national
rules reduces pressure on national decision makers to adopt their
own cybersquatting statutes or case law, thereby privileging by
2001] DESIGNING NON-NATIONAL SYSTEMS 257
377. The scant external checking functions of international arbitration are too limited to
work in a context such as the UDRP where the notion of party consent, upon which its limited
review is based, is a pure fiction. See Rau, supra note 184.
378. The involvement of institutions of democratic nation-states may also serve to enhance
the democratic legitimacy of the non-national system. More active national court involvement
would also serve an error-correction function by facilitating the review of similar facts in
disparate fora. This is a more nuanced approach than simply establishing an ICANN-based
appeals process.
379. In order to have standing to bring a complaint, a trademark owner must demonstrate
“that the domain name in question is identical or confusingly similar to a trademark or service
mark in which the complainant has rights.” Policy, supra note 17, ¶ 4(a) (emphasis added).
In addition to the question of common law rights, it is unclear whether panels should be
willing to review national administrative determinations of the validity of registered rights.
See Ty Inc. v. Parvin, WIPO Case No. D2000-0688, ¶ 6 (Nov. 9, 2000) (majority opinion of
Panelists M. Scott Donahey, Jeffrey M. Samuels and G. Gervaise Davis, III) (“As an
international body, it is not for the Panel . . . to second guess the rulings of national
trademark bodies, at least absent compelling evidence of changed circumstances.”), available
at http://www.arbiter.wipo.int/domains/decisions/html/2000/d2000-0688.html.
380. An additional area of tension under national trademark law is the question of “fame,”
a concept that may yet affect the contours of trademark owners’ rights under the UDRP. It
would greatly assist panels, elevate the ministerial nature of some of their activities, and
further legitimate the non-national process if national authorities made determinations of
default the non-national model, even if it is not the (or an) optimal
model. But if domestic lawmaking remains robust, it must be
accommodated somewhere in the non-national system.
One means of facilitating input from national systems would be to
further “soften” UDRP panel decisions by expressly encouraging
national court review that is more intrusive than one would expect
for a system with significant arbitral features.377
A second significant
step would be to revise the time limits and other procedural aspects
of the UDRP that presently limit domain-name registrants when
seeking effective review in national courts. Together, these steps
would make it easier for respondents to involve national courts, and
thus, to enlist such courts in the application of more extensive
controls on panel lawmaking than currently exist.378
National involvement may also be needed to take advantage of the
expertise of national institutions in applying national law. Consider
the issue of trademark ownership upon which a UDRP complaint is
premised. Not all countries offer extensive protection to common law
marks, but panels are expected to be able to address such difficult
questions as full-fledged and competent adjudicative bodies.379
If
panels were empowered to seek the assistance of national
institutions in interpreting and applying national laws,380
those
258 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
national fame. Indeed, this interpenetration could be further aided by the development of new
national institutions, such as national registries of well-known marks compiled by national
trademark offices.
381. See generally Barbara Solomon, Two New Tools to Combat Cyberpiracy—A
Comparison, 90 TRADEMARK REP. 679 (2000) (comparing substantive and remedial aspects of
UDRP and ACPA).
382. For example, statutory damages are available under the ACPA. See 15 U.S.C. §
1117(d) ( Supp. V 1999). Similarly, plaintiffs in U.S. federal court may obtain broad injunctive
relief rather than the mere transfer or cancellation of existing domain name registrations.
383. The diversity of substantive national law in the particular area in question will also
affect efforts to replicate the UDRP. This lesson is seen even in the domain name context,
where technological conditions were ripe for the development of non-national systems. These
conditions are not, however, limited to cybersquatting and, in fact, extend to situations giving
rise to a range of disputes in which the equities vary widely. Thus, there exists a broad-based
demand for non-national forms of dispute settlement. However, this demand has been fulfilled
institutions might usefully assist panels in this quest, and thus be
incorporated into the non-national decision-making process.
The extent to which national laws serve as a vibrant contributor
to the non-national system might also be affected by the content of
those laws. For example, the enactment of the Anticybersquatting
Consumer Protection Act (ACPA) in the United States will likely
affect the nature of U.S. judicial contribution to the UDRP. Although
the two bodies of law are substantively similar, their procedural and
remedial rules differ.381
Whereas the UDRP has the advantage of low
cost, speed, and ease of enforcement, the broader remedies under the
ACPA might encourage trademark holders to proceed directly to U.S.
federal court.382
By the same token, the substantive rules of the non-national
domain name system might reduce some of the conflict between
trademarks and domain names. These include introducing new
generic top level domain names, restricting the open registration
system by withdrawing certain names from use as a domain name,
modifying the first come, first served system of domain name
registration, or developing defined permissible uses of trademarks
as part of domain names. Additional possible reforms of the
trademark system are also important, particularly as regards the
scope of rights granted a trademark owner in cyberspace. These
possible reforms illustrate that the successful operation of any nonnational
model will depend not only upon a coherent structural and
conceptual identity but also upon the different substantive rules
governing non-national conduct.383
2001] DESIGNING NON-NATIONAL SYSTEMS 259
only with respect to cybersquatting. This limited response to the more general demand can
be traced to the fact that relatively convergent values regarding cybersquatting were formed
largely independently of developed national legislation. To be sure, even in disputes of a type
ICANN clearly empowered panels to review, differing notions of free expression may be
implicated. Compare Mayo Found. for Educ. & Research v. Briese, No. FA0102000096765
(Nat’l Arb. Forum May 4, 2001) (use of mayoinfo.com to criticize the Mayo Foundation does
not violate UDRP), availalble at http://www.arb-forum.com/domains/decisions/96765.htm,
with La Caixa v. Namezero.com, WIPO Case No. D2001-0360, ¶ 6(c) (May 3, 2001) (finding
use of critical term similar to mark in domain name registration to be a violation of UDRP
because respondent’s distortion, while understood as critical by users of “countercultural
Latin jargon,” is unlikely to be understood as such by most Internet users), available at
http://arbiter.wipo.int/domains/decisions/html/2001/d2001-0360.html. And with respect to
conduct on cybersquatting’s periphery (such as domain name warehousing), panelists’
interpretations might be affected differently by use-based or registration-based principles of
trademark law, a division which separates the United States from the rest of the world. In
other intellectual property contexts, such as fair use under copyright law, one can foresee
even sharper divergences. The replication of the non-national model beyond the current
context, therefore, will work only if substantial weight is given to a philosophy of subsidiarity
and deference where diverse national laws exist.
384. By external objectives, we refer to the objective “to make effective, in all situations
involving persons as to whom it has responsibility for legal ordering, that resolution of
contending private interests [that it] has made for local purposes.” William F. Baxter, Choice
of Law and the Federal System, 16 STAN. L. REV. 1, 17 (1963).
385. Choice of law rules can also be shaped by public international lawmaking and thereby
b. Choice of Law in Non-National Systems
Another critical means of accommodating national interests into
the development of a non-national system is via the choice of law
analysis that panels employ. Because nations, in many cases, will
have a strong claim to prescribe conduct even in cyberspace, the
legitimacy of the rules that are applied and developed non-nationally
requires respect and consideration of those national claims to
prescribe. In the decision-making context, this is the function of
choice-of-law principles. Choice-of-law rules reflect what William
Baxter called the “external objectives”384
of a political unit, namely,
the policy values of how it seeks to effectuate its (internal)
substantive policy preferences where another political unit also has
a claim to exercise prescriptive authority over a particular dispute.
Choice of law rules in the UDRP are thus at the epicenter of nonnational-national
relations, because they embody the values that the
non-national system will seek to apply where national political units
have a competing claim to prescribe conduct.385
260 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
constrain the scope of choices available to national and non-national lawmakers. See infra
Part III.B.7.
386. Indeed, by virtue of their inherent legitimacy deficit, non-national institutions may
need to be particularly cognizant of the ability of other (national) institutions to interfere with
the effectuation of the non-national policies.
387. UDRP Rules, supra note 17, Rule 15(a) (authorizing panels to decide cases using “any
rules and principles of law that [they] deem[] applicable”).
One way that any political unit may pursue its external objectives
is, of course, simply to mandate the application of its own law in all
situations where it has a claim to prescribe. Nonetheless, a political
unit might more rationally conclude that the best route to making its
own internal policy values effective in the greatest possible number
of multistate situations is to take into account more than
proceedings before its own tribunals. Thus, the courts of State A may
apply, or at least consider, the internal policies of State B in the hope
(and expectation) that the courts of State B will consider the internal
policy values of State A in cases where State A would have a strong
interest in seeing its internal values applied. To restate these
strategic options in the UDRP context, the narrower unilateral
perspective would involve the application of autonomous nonnational
principles without reference to national interests or laws.
Alternatively, ICANN might rationally conclude that its
substantive policy preferences on the relationship of domain names
to trademarks might best be furthered if it recognized that national
courts and legislators are in a position to enhance or undermine the
substantive policy choices contained in the UDRP.386
Accordingly, to
ensure that national courts and legislatures support, rather than
undermine, those substantive policy choices, UDRP panels must be
willing to accommodate national interests and laws. Choice-of-law
rules can be regarded as the statement of the terms and conditions
of this bargain between the competing national and non-national
institutions.
Choice-of-law rules permitting panels to reflect the national
interests of relevant states in regulating domain name space must
therefore be developed by ICANN or by UDRP panels. It may be that
in a non-national setting, the connecting factors would have to be
quite substantial to justify exclusive (or even extensive) reliance on
one particular national law over autonomous non-national
principles. However, the current Rule 15,387
by failing in any real
2001] DESIGNING NON-NATIONAL SYSTEMS 261
388. The ability to seek redress might properly be classified as an external checking
function falling under the rubric of error correction. See supra note 173-76 and accompanying
text.
389. See generally FRIEDRICH K.JUENGER,CHOICE OF LAW ANDMULTISTATE JUSTICE (1993);
Symeon C. Symeonides, General Report, in PRIVATE INTERNATIONAL LAW AT THE END OF THE
20TH CENTURY: PROGRESS OR REGRESS? (Symeon C. Symeonides ed., 2000).
way to address choice of law, fails to ensure that national interests
will appropriately be recognized by panels, or to provide panels with
guidance on where such recognition should occur. It thus omits an
important means of establishing the legitimacy of the non-national
structure and indeed positively invites challenges to it. National
interests are not only, by virtue of their normatively persuasive
prescriptive claim, appropriately part of the non-national system;
they are, by virtue of their practical ability to affect its legitimacy,
an essential partner in its development.
Moreover, the lack of direction on choice of law, and hence the
absence of guidance on which laws will govern particular
circumstances, implicates checking functions. The citizenry (whether
nationally or digitally affiliated, or both) is without guidance as to
the body (national or non-national) from which to seek corrective
redress.388
The representational validity of the system is thus diluted
and the accountability mechanism is weakened.
What then should be the choice-of-law rule? What should be the
terms and conditions of the bargain that the non-national structure
offers national institutions? The answer is far from clear. The choiceof-law
dilemma is troubling courts and scholars in all aspects of
cyberspace, and settled approaches have not yet received widespread
support—even in the less complicated environment of nation to
nation relations. It may be that, as in those other contexts, the
question cannot be settled with absolute certainty. The illusion that
any choice-of-law questions could be resolved with such assurance
was disturbed by the realist conflicts scholars in the United States
throughout the twentieth century.389
However, some general parameters must be established, especially
if a non-national model is to supplant (or at least legitimately
supplant) national regulation in any respect. If nations are legally
or effectively to cede their direct authority to effectuate their
prescriptive goals, then that authority must be recognized elsewhere
in the system. As noted above, the choice-of-law system has
262 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
390. The administration of country code top level domains is delegated by ICANN (formerly
by the Internet Assigned Numbers Authority) to authorities (“managers”) in the relevant
country. For resolution of a recent controversy on the question, see Internet Assigned
Numbers Auth., IANA Report on Request For Delegation of the .ps Top-Level Domain (Mar.
22, 2000) (concluding that the .ps domain should be delegated to managers in the Palestinian
Authority and approving the managers for that purpose), available at
http://www.icann.org/general/ps-report-22mar00.htm. For a fuller discussion of this point, see
Dinwoodie, supra note 8.
391. Exceptions to this rule are evolving, such as the creation of supranational trademark
rights in economically integrated regions such as the EU. See Council Regulation 40/94 of 20
December 1993 on The Community Trademark, 1994 O.J. (L 11) (creating unitary, EU wide
trademark rights established by a single registration with an EU-level trademark office).
392. Juliana Gruenwald & Roy J. O’Connor, ICANN Tethered, INTERACTIVEWEEK, Feb. 14,
2001, 2001 WL 7347529; Senate to Scrutinize ICANN More Closely, THE STANDARD, Feb. 14,
2001, available at http://www.thestandard.com/article/0,1902,22210,00.html. In the more
specific context of famous trademarks, national and non-national competition continues.
Although belated adoption by ICANN of the “sunrise” proposal advanced in the First WIPO
Process would ensure protection for famous marks throughout cyberspace without direct
historically been the locus of that recognition. The value is no
different in the on-line context, even if the rule or methodology
adopted may be different in order to accommodate the differences
discussed above.
For a variety of reasons, in the domain-name setting in particular,
the balance of prescriptive claims to regulate might appear to fall
closer to the non-national than the national. Because the domain
name system is an element of the Internet’s architecture, domain
names would appear inevitably non-national. Registration can be
made in top level domains without regard to national status or
location. Generic top level domain names are not allocated by
national governments. Indeed, even registrations in the country-code
domain names need not be administered by governmental entities.390
National interests are not without some legitimate prescriptive
claim, however. At the very least, in every UDRP dispute there is
some national interest, because any complainant at present is
resting its claim upon trademark rights recognized by a national
law.391
The endorsement of such a claim, or the determination of the
scope of protection that flows from nationally conferred rights,
implicates the interests of the nation by whom the rights have been
conferred. Stated more tendentiously, the non-national system is
defining the scope of national rights in the cyberspace context—and
nation states have not yet ceded control over such issues to
ICANN.392
Trademark rights exist for the benefit of more than non-
2001] DESIGNING NON-NATIONAL SYSTEMS 263
national involvement, in September 1999, WIPO member-states agreed to a nonbinding
resolution calling for the per se protection of famous marks against registration as part of a
domain name by someone other than the mark owner. See WIPO, Joint Resolution Concerning
Provisions on the Protection of Well-Known Marks, General Report of the Assemblies of the
Member States of WIPO, 34th Annual Meeting, Doc. A/34/16 ¶¶ 171-83 (Sept. 1999)
[hereinafter Well-Known Marks Joint Resolution], available at
http://www.wipo.org/news/en/index.html?wipo_frame=/news/en/documents.html. We believe
that non-national lawmakers should give this and similar soft law initiatives considerable
deference. See infra Part III.B.7.
393. It may be that different laws, whether of one or more nations or non-national in
nature, should be chosen to decide different issues before a panel. This would be a typical
application of the doctrine of depeçage, which is found in traditional conflicts analysis. See
Willis L.M. Reese, Depeçage: A Common Phenomenon in Choice of Law, 73 COLUM.L.REV. 58,
58 (1973) (describing doctrine as “the process of applying the rules of different states to
determine different issues”). For example, the determination of whether the complainant
possesses “trademark rights,” an essential element of a claim under the UDRP, see Policy,
supra note 17, at ¶ 4(a)(i), would under present notions of international trademark law, be
a question of national law. Trademark registrations can be made only with national bodies,
with the recent exception of regional (but still territorial) rights such as those available
through the Community Trademark System in the EU. See Council Regulation 40/94 of 20
December 1993 on The Community Trademark, 1994 O.J. (L 11), art. 25. Similarly, the
existence of common law or unregistered trademark rights based upon use, which several
countries such as the United States permit, will be determined by whether consumer
association has developed in the country where such common law protection is sought. See
Buti v. Impressa Perosa, S.R.L., 139 F.3d 98 (2d Cir. 1998).
394. By this we mean to reject efforts to localize an entire dispute within a single country
and apply that law to all issues in a case (even if the particular national law would vary from
case to case). We are even more resistant to the notion, advanced by some writers, of
reflexively applying a particular jurisdiction’s rules (such as those of the United States) to all
UDRP disputes. See Angela Proffitt, Drop The Government, Keep The Law: New International
Body For Domain Name Assignment Can Learn From United States Trademark Experience,
19 LOY. L.A. ENT. L. REV. 601 (1999) (suggesting application of U.S. law to UDRP
cybersquatting disputes).
national cyberspace actors. We suggest that at least three
considerations should be borne in mind as ICANN and/or panels
construct choice-of-law rules.
First, the determination of issues393
in a non-national dispute by
the invariable application of a single national law would be
unhelpful.394
Use of a single national law would minimize the
potential of the non-national system to develop through an
accommodation of different national values a jurisprudence that, like
the social activity it regulates, transcends national borders and
reflects varied national interests. It would ground the non-national
system in outdated national premises by seeking to localize that
which is not local. And it would surely heighten the concerns of other
nations whose laws were not applied, but who inevitably have a
264 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
395. It is typical, of course, for decision makers in multistate cases to apply their own rules
of procedure even if the substantive law to be applied is a foreign law. See, e.g., RESTATEMENT
(SECOND) OF CONFLICTS § 122 cmt. b (1971) (discussing substance/procedure distinction).
396. See supra notes 321-23 and accompanying text (rejecting “world parliament”).
397. Dinwoodie, A New Copyright Order, supra note 8, at 550-51.
prescriptive claim, that there had been a transfer of sovereignty to
another institution (a competing national law) in which it has no
participatory role.
Second, for the reasons of national interest discussed above, it is
imperative that panels do not reflexively decide cases solely by
reference to autonomous principles unmoored from national values.
As is implicit in our critique of localization above, we believe that, in
the long term, the non-national system might usefully develop
autonomous rules that apply in disputes transcending national
borders. And certainly some autonomous rules, particularly in
matters of procedure, are required for the system to function
efficiently.395
But the development of such autonomous principles
must be grounded, at least initially and at least in part, in the
underlying national interests and values. Given the critique of
existing ICANN structure, and the unlikelihood that a full-fledged
democratic non-national legislative body can (or should) arise in the
near future,396
panel efforts to implement autonomous principles
without any reference to national interests rest on shaky ground.
Third, as a means of resolving these first two dilemmas, panels
should recognize that non-national social structures involve
participants with a complex amalgam of affinities (and hence,
expectations). These affinities are part national, part regional, and
part non-national. This is particularly true of cyberspace actors. To
use a non-domain name example, a citizen of the United Kingdom,
who is a permanent resident of the United States, but temporarily
in Canada, accessing a web site based in Germany that permits
access throughout the world but only to members of his profession,
may expect such conduct to be regulated by a dizzying array of
norms from a wide array of national and non-national sources. The
rules applied to non-national conduct, and thus, the rules to which
the choice-of-law provision should lead, should reflect these
complexities. The legitimacy of law as an instrument of social
regulation rests upon some correspondence between it and the social
structures that it purports to regulate.397
Thus the choice-of-law
2001] DESIGNING NON-NATIONAL SYSTEMS 265
398. Such fears were initially expressed by the EU over the privitization of the domainname
system. See Developments in the Law, supra note 45, at 1670-71 & n.105.
399. See, e.g., Wal-Mart Stores, Inc. v. wallmartcanadasucks.com, WIPO Case No. D2000-
1104, ¶ 6(B)(ii) (Nov. 23, 2000) (noting in case involving the challenge by a U.S. company,
holding trademarks in Canada and the United States, to the registration of a domain name
by a Canadian citizen with a Canadian–based registrar, that the “U.S. ACPA and trademark
infringement cases are natural sources of rules and principles of law to apply in resolving this
dispute” because of their similarity to the UDRP standards), available at
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1104.html.
400. See Panavision Int’l L.P. v. Toeppen, 141 F.3d 1316 (9th Cir. 1998).
401. Compare World Wrestling Fed’n Entm’t, Inc. v. Michael Bosman, WIPO Case No. D99-
0 0 0 1 ( J a n . 1 4 , 2 0 0 0 ) ( c i t i n g P a n a v i s i o n ) , a v a i l a b l e a t
http://arbiter.wipo.int/domains/decisions/html/1999/d1999-0001.html, with Array Printers AB
v. Lennart Nordell, WIPO Case No. D2000-0092 (Apr. 10, 2000) (applying Bosman’s “use”
concept to dispute involving two Swedish parties without citing Panavision), available at
rules should permit panels to draw from the variety of relevant
national laws as well as the non-national policies in constructing
applicable substantive rules.
c. Relative Influence of Different National Legal Systems
In any system where decisions from varied sources will be
considered as part of the law-formation process, the potential for
excessive influence of one subset of geographic rules or conceptual
settings must be borne in mind. In the context of relatively
homogenous constituents (such as the United States) this fear might
be discounted. In the international setting, there may be a fear that
the United States would dominate.398
A review of panel decisions to date, even those handed down by
non-U.S. arbitrators, reveals the significant influence of U.S. legal
principles.399
This is not always obvious on its face. Those principles,
first introduced from U.S. case law, are often “non-nationalized” by
their later repetition as principles of autonomous UDRP law without
full acknowledgment of their etymology. For example, the early
expansion of the notion of “use” in panel decisions interpreting the
UDRP can be traced to similarly expansive Ninth Circuit case law
interpreting the “use in commerce” requirement of the Lanham
Act.400
Yet, although recognized in the first UDRP panel decision
employing the Ninth Circuit case law, later panel decisions cite
simply to the initial decision incorporating the Ninth Circuit case
law.401
A system of formal precedent might only exacerbate this
266 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0092.html; see also AT&T Corp. v.
Alamuddin, WIPO Case No. D2000-0249, ¶ 7 (May 18, 2000) (in the absence of any case law
in Singapore, the domicile of the respondent, panel stated that “[p]rinciples of law set out in
decisions of Courts in the United States and the United Kingdom in similar cases could easily
b e o f a s s i s t a n c e t o S i n g a p o r e a n c o u r t s ” ) , a v a i l a b l e a t
http://arbiter.wipo.int/domains/decisions/html/2000/d2000-0249.html; Key Issues, supra note
254 (noting this trend for other U.S. cases).
402. See Heathmount A.E. Corp. v. Technodome.Com., 106 F. Supp. 2d 860 (E.D. Va. 2000)
(denying defendant’s motion to dismiss ACPA suit between two Canadian nationals on forum
non conveniens grounds, inter alia because Canadian law did not provide plaintiff with
adequate relief).
403. See Gruenwald & O’Connor, supra note 392; Senate to Scrutinize ICANN More Closely,
supra note 392. This possibility will continue so long as the United States does not relinquish
control over the root server that maps domain name space. See Mueller, supra note 170, at
498.
problem and undermine any benefits that a genuinely non-national
system would otherwise create.
Whether U.S. litigation and law would dominate would depend,
however, on several variables.402
To be sure, much of the activity on
the Internet is U.S.-based or -initiated. And effective U.S. control of
the domain name system is still a plausible assertion.403
However,
control over registration of names in the generic top level domain
has been dispersed widely to registrars throughout the world. Also,
the structural aspects that contribute to the abundance of U.S.
litigation (such as discovery rules, provisions for allocation of
attorneys’ fees, availability of contingency fees, etc.) need not be
replicated non-nationally. Procedural reforms of the ICANN system
that furthered such departures from the U.S. litigation model might
help to assuage fears that input from national laws and national
systems might simply mean the implementation of U.S. law. And
incorporating subsidiary principles as discussed above might
encourage other nations to develop domain-name-specific legislation
and litigation. This would diversify the national law sources upon
which UDRP panels could draw for support and ultimately mitigate
U.S. dominance.
7. Relations Between Non-National and International Systems
Non-national lawmakers must also carefully consider the
relationship between non-national systems and the rules and norms
of public international law. Public international law can interact
2001] DESIGNING NON-NATIONAL SYSTEMS 267
404. WIPO clearly believed that the UDRP’s novel procedures permitting trademark
owners to recapture domain names registered and used in bad faith was compatible with
intellectual property treaty law. See Final Report, supra note 78, ¶¶ 173-74 (noting that
WIPO’s proposed definition of abusive registration “draws on solid foundations in
international and national law and in case law,” and citing in particular unfair competition
provisions of the Paris Convention). It is unclear, however, whether WIPO’s view fits with
conventional understandings of the principal treaty regimes. The UDRP clearly furthers the
objectives of those regimes, but does so in a way that (perhaps rightly) brings into question
the core treaty principles of territorially circumscribed rights and national treatment. At the
very least, the application of non-national substantive rules instead of potentially conflicting
national laws weakens the grip of territoriality as the defining principle of international
intellectual property law. See Ty Inc., v. Parvin, WIPO Case No. D2000-0688, ¶ 6 (Nov. 9,
2000) (“[W]e are dealing not with the sovereign territory of the United States and its laws, but
with cyberspace, which is the ‘territory’ in which domain names exist”), available at
http://www.arbiter.wipo.int/domains/decisions/html/2000/d2000-0688.html; see also Dori
Kornfeld, Evaluating the Uniform Domain Name Dispute Resolution Policy, nn. 32-33 and
a c c o m p a n y i n g t e x t , a t
http://cyber.law.harvard.edu/icann/pressingissues2000/briefingbook/udrp-review.html (last
modified Oct. 31, 2000) (noting case transferring barcelona.com owned by a U.S. business to
Barcelona city government notwithstanding conflict between U.S. and Spanish law over
protection of geographic names).
with non-national structures in at least three distinct ways: first, as
a constraint on the subject matter of issues committed to the
jurisdiction of non-national lawmakers; second, as a source of
substantive rules to be applied in disputes between private parties
adjudicated in non-national fora; and third, as a source of (depending
on one’s perspective) competition or inspiration for the creation of
new legal rules relating to intellectual property rights. Each of these
mechanisms of interaction requires separate extended treatment,
and therefore we highlight only a few preliminary points below.
First, mandatory rules contained in relevant treaties such as the
Paris Convention and the TRIPs Agreement should, at least initially,
serve as boundaries on the authority of non-national lawmakers and
dispute settlement decision makers. As creatures of public
international law, these treaties create legal obligations only for
their nation-state signatories and cannot directly bind private nonnational
entities such as ICANN. However, the longstanding
pedigree and widely accepted nature of these treaty obligations
strongly suggest that they should be incorporated into non-national
lawmaking initiatives. Thus, where the treaties impose obligations
on national governments, they should constrain non-national
lawmakers as well.404
268 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
405. Conversely, treaties can incorporate non-national norms or structures as part of their
own substantive rules. See supra note 321 (discussing FTAA).
406. Intellectual property treaties require national governments to incorporate treaty
obligations into their national intellectual property laws or otherwise to recognize them in
their domestic legal systems. Thus, to the extent that national laws and institutions operate
as a check on non-national authority, those laws and institutions will implicitly serve to
constrain non-national powers within treaty-compatible limits. Cf. Final Report, supra note
78, ¶ 150(ix) (stating as a basic principle for the UDRP that “a decision by a court of
competent jurisdiction, in a country that is party to the Paris Convention [or the TRIPs
Agreement], which is at variance with a determination resulting from the [UDRP] should,
subject to the application of normal principles for the enforcement of judgements, prevail over
the administrative determination.”). For such a system to function effectively, however,
national courts will need to pay greater attention to the international dimensions of their
national laws. Dinwoodie, A New Copyright Order, supra note 8, at 550-52.
Translating these obligations into the particularities of the nonnational
setting presents considerable conceptual challenges. Under
one possible approach, mandatory treaty rules could be directly
incorporated into new non-national “legislation” as rules of decision
to be applied by non-national jurists.405
This preserves the
procedural virtues of a non-national dispute settlement setting while
coupling them with settled and unobjectionable substantive norms.
But such an approach could also diminish other non-national values,
such as the capacity of non-national decisionmakers to adapt old
norms or generate new ones tailored to rapidly evolving demands of
transborder digital technologies. An alternative approach (the one
apparently adopted in the UDRP) would create a new set of
relatively autonomous non-national norms but subject them to
implicit review for treaty compatibility through external checking
mechanisms. Such mechanisms could include review of non-national
rulings by national courts applying treaty-inspired national laws.406
Whichever approach is chosen, however, unanswered questions
will remain. Intellectual property treaties do not always provide
settled solutions for the most pressing issues plaguing digital
technologies disputes or do not speak to those issues in preclusive
detail. Where interstices exist, there are opportunities for new rules
and norms to evolve non-nationally. But such non-national evolution
must proceed in conjunction with and not in opposition to lawmaking
that occurs in more traditional settings. Consider, for example, the
work of WIPO’s Standing Committee on the Law of Trademarks,
Industrial Designs and Geographical Indications, which is
developing soft law recommendations for national governments
2001] DESIGNING NON-NATIONAL SYSTEMS 269
407. See Standing Committee on the Law of Trademarks, Industrial Designs and
Geographical Indications, Protection of Industrial Property Rights in Relation to the Use of
Signs on the Internet, WIPO Doc. No. SCT/5/2 (June 21, 2000), available at
http://www.wipo.org/sct/en/documents/session_5/doc/set5_2.doc; Standing Committee on the
Law of Trademarks, Industrial Designs and Geographical Indications, Summary by the Chair,
W I P O D o c . N o . S C T / 5 / 5 ( S e p t . 1 5 , 2 0 0 0 ) , a v a i l a b l e a t
http://www.wipo.org/sct/en/documents/session_5/doc/sct5_5.doc; Well-Known Marks Joint
Resolution, supra note 392, ¶¶ 171-83.
408. See Preliminary Draft Hague Convention on Jurisdiction and Foreign Judgments in
Civil and Commercial Matters (adopted by Special Commission on Oct. 30, 1999) [hereinafter
Draft Hague Convention], available at http://www.hcch.net/e/conventions/draft36e.html.
Under the current draft, the European countries would liberalize their recognition policies
and the U.S. would limit its more expansive notions of jurisdiction. For an analysis of the
convention debate, see Kevin M. Clermont, Jurisdictional Salvation and the Hague Treaty,
85 CORNELL L. REV. 89 (1999). Questions of enforcement are closely tied to questions of
appropriate jurisdiction to adjudicate. See Draft Hague Convention, supra, arts. 25-26
(judgments based upon proper jurisdiction under the Convention are to be enforced by
participant countries).
concerning well known trademarks and when use of a mark on the
Internet amounts to use within the territory of a member state.407
These initiatives may one day be integrated into national legislation
or national judicial decisions or serve as the template for negotiating
hard treaty law, and thus ripen into constraints on non-national
authority. Even prior to that time, however, respectful treatment of
soft-law developments is appropriate, both as sources of persuasive
authority to help resolve non-national disputes between private
parties and as inspiration for generating complementary nonnational
norms.
Public international law may also inspire competition with nonnational
systems, either through developing alternative substantive
rules or through establishing institutional structures that facilitate
the generation of new rules applicable to transborder situations.
With respect to the former, for example, the WIPO Standing
Committee on Trademarks proposed rules on resolving competing
legitimate rights on the Internet only after that issue was omitted at
an interim stage of the WIPO UDRP process. The latter issue is
implicated by the relationship of non-national dispute settlement
systems to existing and future international cooperative regimes for
the enforcement of judgments.
Efforts are currently underway in the Hague Conference on
Private International Law to draft a convention that addresses both
jurisdiction and recognition of judgments.408
The draft Convention is
270 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
409. Brussels Convention on Jurisdiction and Enforcement of Judgments in Civil and
Commercial Matters, Sept. 27, 1968, 1972 O.J. (L 299) 32, reprinted in 8 I.L.M. 229 (1969),
as amended by 1990 O.J. (C 189) 1, reprinted as amended in 29 I.L.M. 1413 (1990)
[hereinafter Brussels Convention] (applied throughout Europe).
410. Compare Brussels Convention, supra note 409, arts. 6(1), 16(4), with Draft Hague
Convention, supra note 408, art. 14.
411. See generally Expandable Grafts P’ship v. Boston Scientific BV, Court of Appeal of the
Hague (1999) FSR 352 (discussing, but appearing to limit, Dutch crossborder jurisprudence).
412. Brussels Convention, supra note 409, art. 5(3) (providing jurisdiction “in matters
relating to tort, delict or quasi-delict, in the courts for the place where the harmful event
occurred”); id. art. 6(1) (a person domiciled in a Contracting State may also be sued “where
he is one of a number of defendants, in the courts for the place where any one of them is
domiciled”).
413. The approach of the Dutch courts has had to deal, however, with a further provision
of the Convention. Article 16(4) provides that
in proceedings concerned with the registration or validity of patents, trade
marks, designs, or other similar rights required to be deposited or registered,
the courts of the Contracting State in which the deposit or registration has been
applied for, has taken place or is under the terms of an international convention
deemed to have taken place shall have exclusive jurisdiction over the matter
notwithstanding domicile.
Id. What happens when a defendant interposes a defense challenging the validity of a patent,
as is typical in patent infringement litigation? Do the proceedings brought under the liberal
jurisdiction provisions of Articles 5(3) and 6(1) now succumb to the “state of registration”
provision in Article 16(4), thus requiring litigation in the latter forum? In the last two years,
prompted by some related U.K. jurisprudence, the Dutch courts have stepped back from the
aggressive use of the Convention, in part because questions of patent validity are inevitably
based upon the Brussels Convention,409
which governs jurisdiction
and recognition of judgments in commercial matters throughout the
EU.410
In recent years, the Dutch courts have used the language of
the Convention to support the award of panEuropean relief in
patents (and in one instance, trademark) cases.411
The possibility of
transborder relief from a single national court clearly implicates the
importance of the non-national model reflected in the UDRP system.
The Convention effectively enables national courts to assume
jurisdiction not only over claims of infringement in their own
countries, but also over related claims of infringement elsewhere in
Europe.412
For example, a company holding various patents on the
same invention throughout Europe could bring an action in the
Dutch courts not only against the alleged Dutch infringer, but also
against any alleged German or U.K. infringer.
Although the case law under the Brussels Convention has not yet
fully developed because of a provision requiring deference to the
validity of acts of administrative officials in foreign states,413
there
2001] DESIGNING NON-NATIONAL SYSTEMS 271
implicated in many such proceedings. See, e.g., Coin Control Ltd. v. Suzo Int’l (UK) Ltd., 3 All
E.R. 45 (Ch. D. 1997).
414. Trademark rights, unlike patent rights, may in some countries exist without
registration, and hence implicate Article 16(4) to a lesser extent. See Pearce v. Ove Arup
P’ship, 1 All E.R. 769 (Ct. Appeal 1999) (noting that because copyright does not involve
deposit or registration, a court’s analysis in a copyright case under the Brussels Convention
is not complicated by Article 16(4)); Yakult v. Danone, 1998 E.T.M.R. 465, 472 & 479 (Hague
Dist. Ct. 1998) (noting that “[t]he system under the Brussels Convention requires that the
Court, even the ‘own’ court referred to in Article 2, must apply foreign trade mark law in the
appropriate cases” but declining to extend the injunction to France although “competent to
do so” because of a lack of urgency).
415. See Rochelle Cooper Dreyfuss, An Alert to the Intellectual Property Bar: The Hague
Judgments Convention, 2001 U. ILL. L. REV. 421 (2001).
416. See Dinwoodie, supra note 108, at 58 (discussing the potential of the Hague
Convention); cf. Dinwoodie, A New Copyright Order, supra note 8, at 569-71 (discussing the
possibility of using private international litigation to effect convergence in national copyright
laws).
417. Neither the Brussels Convention nor the Hague Convention addresses choice-of-law
issues.
are indications that the courts might be willing to use it in
appropriate cases to provide crossborder relief.414
Accordingly, if the
Brussels scheme were expanded to the world stage under the
auspices of the Hague Conference on Private International Law, a
private international scheme for securing crossborder relief might be
available to rival the UDRP.
If the Hague Convention were adopted, courts might be more
willing to apply foreign laws and decide consolidated transborder
litigation. Forcing courts to consider different national laws, and the
respective claims of each, both in prescriptive force and substantive
merit, would facilitate the convergence of national laws to generate
substantive rules of intellectual property law appropriate for
international disputes.415
Thus, consolidated private international
litigation might become an alternative vehicle to public international
law for developing convergent international principles.416
Whether such a scheme would in fact develop as a rival to nonnational
models such as the UDRP would depend upon a number of
variables, including the extent of treaty participation and whether
courts would be willing to adopt novel approaches to choice of law
that overcome the national nature of existing rights.417
If the
Convention is limited to a small number of countries, or still requires
plaintiffs to plead their case under separate national laws or in
272 WILLIAM AND MARY LAW REVIEW [Vol. 43:141
418. See Hague Conference on Private International Law, Press Release, available at
http://www.hcch.net/e/events/events.html#dipl2001 (last visited Oct. 3, 2001). An alternative
proposal of a stand-alone treaty addressing only intellectual property law issues is the subject
of ongoing work by Professors Jane Ginsburg and Rochelle Dreyfuss and may provide an
alternative vehicle for pursuit of these objectives. See Rochelle C. Dreyfuss & Jane C.
Ginsburg, Draft Convention on Jurisdiction and Recognition of Judgments in Intellectual
Property Matters, paper to be presented at Constructing International Intellectual Property
Law: The Role of National Courts, Chicago-Kent College of Law, Oct. 18-19, 2001, available
at http://www.kentlaw.edu/depts/ipp/intl-courts.
419. See U.S. Government Hears Widely Opposing Views on Issues to be Discussed in
Ottawa, 6 ELEC.COMM.&L.REP. 147 (Feb. 14, 2001) (discussing pressures on U.S. delegation
to Hague Convention concerning e-commerce issues in proposed treaty).
separate national fora, the non-national model would retain
significant advantages.
In addition, if the UDRP is to extend its remedial scope (as some
expansion proposals contemplate), difficult questions of enforcement
will arise. A non-national model that awards relief that is not
automatically self-enforcing would require some form of recognition
and enforcement of non-national judgments in nation states. Thus,
a treaty such as the Hague Convention could be an important
mechanism through which complainants can effectuate their nonnational
judgements. Relations between the Convention and the
non-national system are thus critical.
At present, the prospects for a global convention on these matters
are uncertain. A diplomatic conference to adopt the Hague
Convention had been scheduled for late 2000, but the United States
indicated its unease with the current draft, and adoption will not
occur until 2002 at the earliest.418
As negotiations progress, it would
behoove non-national lawmakers to work closely with the Hague
efforts to accommodate cyberspace and other transborder issues
within the debate,419
recognizing both that the attractiveness of the
non-national model may be affected by these international
developments, and (more importantly) that any expansions of the
remedial aspects of the non-national model might require links to
international enforcement mechanisms.
CONCLUSION
The UDRP represents the leading edge of a new movement in nonnational
lawmaking. Driven by the pressures of globalization and
the borderless nature of cyberspace, governments and private parties
2001] DESIGNING NON-NATIONAL SYSTEMS 273
will expand their efforts to transcend the limits of existing dispute
settlement paradigms. Therefore, the UDRP must be evaluated not
only as a vehicle for the resolution of conflicts between domain
names and trademark rights—important though that issue is in a
digital economy—but also as the likely default template for more
broad-based non-national lawmaking and dispute settlement.
Of necessity, the nature of disputes in the digital era required the
formation of a hybrid decision-making structure. We applaud the
willingness of the architects of the UDRP to escape the conceptual
straitjacket of existing models. Yet for all its advantages of speed
and global reach, the UDRP will see its legitimacy undermined if it
fails to incorporate checking mechanisms that control the scope of
decision making and connect non-national governors to those whom
they govern.
Just as the UDRP’s hybrid structure itself transcended existing
arbitral, ministerial, and judicial models, so must the checking
mechanisms that it adopts. The answers lie not in routine replication
of existing controls, but in attending to the relationships among the
institutional components of a non-national system. The guardians of
the UDRP, and the drafters of any non-national structures that
follow it, must embrace the challenge of constructing new forms of
control. If they do not, the potential for new models that match our
increasingly non-national world will be diminished by competing
assertions of national sovereignty, allegations of institutional
capture, and justified complaints of illegitimately expansive
lawmaking.