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Is ICANN’s .IR Response at Odds with the ACPA and ICE Domain Seizures?

An initial review of ICANN’s response to litigation seeking it to turn over control of the ccTLDs of Iran, Syria and North Korea led to the conclusion that it had opened a “legal can of worms”. A few more just wriggled out, and they threaten the basic assumption that underlies the U.S. statute governing cybersquatting and the practices engaged in by Federal officials seizing domain names engaged in intellectual property infringement.

In a blog post, “Are Internet domain names “property”?”, placed at the influential Volokh Conspiracy legal discussion website, Temple University Law Professor David Post further explores the implications of ICANN’s response. His comments carry considerable weight, as he is also a Fellow at the Center for Democracy and Technology, an Adjunct Scholar at the Cato Institute, and a member of the Board of Trustees of the Nexa Center for Internet and Society.

Professor Post starts out by declaring his distaste for “resolving through private litigation matters that are more properly viewed as substantial international disputes between nation-states”. That aversion is heightened when it “embroils ICANN in either (a) complicated questions of international politics or (b) the resolution of private disputes”. And he gets to the heart of the potential international political dangers of this litigation with his observation that, “the notion that the decisions of US courts can interfere in ICANN’s management of the domain name system in a way that courts elsewhere cannot… will not go over very well in an international community that already thinks the US government exercises too much control over ICANN, and over Internet infrastructure in general”.

While agreeing with ICANN’s argument that a ccTLD is not property, he goes on to observe that this contention is actually at sharp odds with existing U.S. law and enforcement practices involving the protection of trademarks and copyrights:

It’s a very sensible argument, and I’ve made it myself many times. The problem, though, is that US law already—very unfortunately, in my view, but there you are—treats domain names as if they were “property”. The Anti-Cybersquatting Protection Act permits aggrieved trademark owners to institute in rem actions against domain names whose owners are located abroad (and not subject to the jurisdiction of the US courts)—to seize the domain names and then to adjudicate the rights associated with them, on the fiction that the names are indeed property located in the judicial district where the particular domain name registry is located. On very much the same theory—that domain names are seizeable “property”—the Dept. of Homeland Security has issued several thousand seizure orders over the past few years against domain names allegedly involved in large-scale copyright infringement.

Professor Post, after noting that, “I would expect the plaintiffs here to press this argument in opposition to ICANN’s motions to quash”, concludes his post with the hope that “ICANN’s other arguments are strong enough that the judge can (and hopefully will) grant its motion without having to delve into this rather tricky nomenclatural minefield about what is, and what isn’t, property”.

But what if the case doesn’t play out that way? What if the plaintiffs raise the “are domains property?” issue with sufficient force to get the DC Court of Appeals to rule on it? What if the politically fraught nature of this case propels it on to the Supreme Court, which may have to resolve conflicting Appeals Court decisions that have split on whether second level domains are property or just a form of licensure?

Any holding that domains are not property could well be the basis for a challenge to the in rem provision of the ACPA, and to ICE’s domain seizure practices.

There is of course an argument to be made that ccTLDs assigned to nation-states and whose relationship with ICANN is strictly voluntary are fundamentally different in legal character than gTLDs that are based upon a registry agreement contract between the operator and ICANN. But that argument is most unlikely to be raised in this case as it only involves ccTLDs.

Lots of parties not involved in this litigation have a considerable stake in it. New gTLD applicants that have expended large investments in their registries would like certainty over the U.S. legal status of them, since all registry contracts are governed by US law. While there is no consensus within the domain investment community as to whether it would be desirable to have interests in second level domains classified as a property right, it seems axiomatic that if a gTLD is found to not constitute property than a second level subunit of it will likewise lack that status. And trademark and copyright owners may not be pleased with any judicial decision that undermines the basis of their current online protections.
This is but the latest potential fallout of this most unusual case. More consequences may be in the offing. Stay tuned.

By Philip S. Corwin, Senior Director and Policy Counsel at Verisign

He also serves as Of Counsel to the IP-centric law firm of Greenberg & Lieberman. Views expressed in this article are solely his own.

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Not exactly John Berryhill  –  Aug 5, 2014 6:14 AM

“Any holding that domains are not property could well be the basis for a challenge to the in rem provision of the ACPA…”

...which would be a foolish challenge for several reasons. 

The ACPA does not assume or require domain names to be property.  If it did, then it would not require a separate section of the statute specifically authorizing an in rem proceeding, as a procedural proposition. 

The fact that the ACPA includes a statutory provision stating that a plaintiff may, under certain circumstances, proceed *as if* a domain name were property - i.e. in the procedural form of an in rem suit - is itself a good indication that, absent the express statutory authority, the plaintiff would not be able to do so. 

In other words, the in rem provision of the ACPA is there to say “you can do this in the form of an in rem suit” regardless of whether domain names are “property” of any kind at all.  If it were by any means understood that domain names were propertyx the ACPA would not need a separate section saying, in effect, “under certain conditions, this can be done as an in rem suit.”

As tantalizing a proposition as it would be for domain registrars to have to charge sales taxes, or for domain speculators to have to pay sales and property taxes on their transactions, the in rem provision of the ACPA does not make that a reality. 

This is in contrast to, for example, the statute directly addressing the question in relation to patents, 35 USC 261, establishing:

“Subject to the provisions of this title, patents shall have the attributes of personal property.”

In other words, patents aren’t considered “property” as a consequence of anything other than a statutory provision saying that, subject to the limits of 35 USC, they shall be considered as having the attributes of property.  They can be treated “as property” for a number of purposes.  But even to say that something “shall have the attributes of property” is not to say it is property for all intents and purposes.

Likewise, the ACPA itself refers to the “owner” of a mark, but only to the “registrant” of a domain name. The use of a different word for these two roles in the ACPA must be interpreted as having two different meanings.  There is only one “owner” mentioned in the statute, and it is the mark owner.  The statute does not use a term of title in reference to the domain registrant. 

Finally, the question of whether a TLD is a “domain name” for these cases was asked and answered in dismissal of the .delmonte case.  What the analysis above completely ignores is how the ACPA defines “domain name” in 15 USC 1127:

“The term “domain name” means any alphanumeric designation which is registered with or assigned by any domain name registrar, domain name registry, or other domain name registration authority as part of an electronic address on the Internet.”

While an uninformed read might suggest a TLD falls within that definition if we consider ICANN to be a “domain name registration authority”, two courts have already expressly rejected that construction, and expressly in relation to TLD’s in the .delmonte case.  A good starting point is occasional Circleid contributor Eric Goldman’s very readable review of that decision entitled “Court Declines to Review LRO to [.delmonte], Saying gTLDs Aren’t ‘Domain Names’ for Cybersquatting Purposes”. Indeed, the title alone sums it up nicely. As technically similar as they may be, a TLD and a registration within a TLD are simply not the same thing for the purposes of the ACPA.

But, sure, if you ignore the statutory language, basic rules of construction, and the case law on point, the analysis quoted above makes sense.

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