|Third Circuit Reverses in Domain Name
|2/20. The U.S.
Court of Appeals (3rdCir) issued its
a case involving judicial review of an arbitration award regarding a domain name
registration. The Appeals Court reversed a District Court affirmation of an
arbitration award in favor of a trademark holder.
Introduction. Eric Dluhos is a pro se cyber squatter from New Jersey.
He registered the domain name
www.leestrasberg.com, thereby invoking the name of the famous acting coach,
Lee Strasberg. Strasberg's widow still operates a theatre institute in her
deceased husband's name. His estate still holds trademarks. Strasberg, the
estate, and theatre institute's web site operator objected to Dluhos'
registration, and ultimately instituted a Uniform Domain Name Dispute Resolution
Policy (UDRP) arbitration, which they won.
Dluhos has little understanding of law. He sued in federal court, eventually raising
numerous spurious claims, such as constitutional claims against non state
actors, antitrust violations, and labor law violations. The District Court,
among other things,
affirmed the arbitration award, after reviewing it under the deferential standards set out
in the Federal Arbitration Act (FAA). The Appeals Court reversed and remanded on
the basis of an argument not raised by Dluhos -- the interrelation of FAA, the
Anticybersquatting Consumer Protection Act (ACPA), and the UDRP. In short, the
Appeals Court held that UDRP arbitrations are not mandatory, and therefore not
subject to review under the FAA. However, while Dluhos never plead a claim under
the ACPA, that is a remedy available to him in this case. The Appeals Court gave
Dluhos the benefit of being a pro se litigant, and
remanded to the District Court with instructions that it review the arbitration
award under the standards set forth in the ACPA. The Appeals Court affirmed the
dismissal of all of the spurious claims.
UDRP Arbitration. Eric Dluhos registered the domain name
www.leestrasberg.com with the domain name registrar,
Network Solutions Inc.
(NSI), in 1999. The registration agreement required Dluhos to abide by the
Internet Corporation for Assigned Names and
Numbers’ (ICANN) Uniform
Domain Name Dispute Resolution Policy (UDRP). The UDRP provides for arbitration
of disputes regarding domain name registrations by an approved dispute
resolution service provider.
Lee Strasberg was a famous acting coach. His widow, Anna Strasberg, owns and
directs the Lee Strasberg Theatre Institute, and serves as the executrix of the
Estate of Lee Strasberg. The Estate owns trademarks, including "The Lee
Strasberg Institute" and "Actor by Lee Strasberg".
CMG Worldwide, which represents and manages Internet sites for the Estate,
the Institute and Anna Strasberg, wrote to Dluhos demanding that he rescind the
registration. He did not. CMG then instituted an arbitration proceeding under
the ICANN UDRP.
Dluhos did not contest the arbitration proceeding before the
Arbitration Foundation (NAF), other than to write it a letter stating that he
contested its jurisdiction. The NAF issued a
decision against Dluhos and
directed that the domain name be transferred to the Estate of Lee Strasberg.
District Court. Dluhos filed a complaint in
U.S. District Court (DNJ) against
the various Strasberg parties, NSI, and CMG challenging, among
other things, the constitutionality
of the dispute resolution process. Dluhos later filed an amended complaint in
which he alleged harassment, breach of contract, Section 1983 violations, and
violations of his First, Fifth and Fourteenth Amendment rights. The defendants
then filed motions to dismiss. The District Court dismissed the complaint for
failure to state a claim upon which relief can be granted. The District
dismissed the constitutional and 1983 claims for lack of state action.
The District Court also reviewed the UDRP decision under the
Federal Arbitration Act, which provides, at
9 U.S.C. § 10(a), that
a District Court may overturn an arbitration award "... (2) Where there was
evident partiality or corruption in the
arbitrators, or either of them. (3) Where the arbitrators were guilty of misconduct in
refusing to postpone the hearing, upon sufficient cause shown, or in refusing
to hear evidence pertinent and material to the controversy; or of any other
misbehavior by which the rights of any party have been prejudiced. ..." The
District Court upheld the arbitration decision.
Dluhos appealed. On appeal, he raised, for the first time, antitrust and
labor law claims. However, Dluhos never raised the Anticybersquatting Consumer
Protection Act (ACPA). The Appeals Court reversed the District Court's decision not to vacate the
decision of the UDRP arbitrator.
The Appeals Court first examined whether an
UDRP arbitration is an arbitration within the meaning of the FAA. It reasoned
that "If a dispute-resolution mechanism indeed constitutes arbitration under the
FAA, then a district court may vacate it only under exceedingly narrow
circumstances. 9 U.S.C. § 10. ... The net result of
a court's application of this standard is generally to affirm easily the
arbitration award under this extremely deferential standard -- a result that is
squarely in line with the purpose behind the FAA where courts are tasked with
reviewing an arbitration decision."
The Court added, "If, however, a dispute-resolution mechanism does not constitute
arbitration under the FAA, then a district court has no jurisdiction to review
the result absent an independent jurisdictional hook."
The Appeals Court continued that "At issue before us then is whether
the nonbinding domain name
resolution policy (UDRP) proceeding that shifted Appellant’s registered domain
name to the Strasberg defendants constitutes arbitration under the FAA. If this
proceeding qualifies as arbitration under the FAA, then the dispute resolution
is subject to extremely limited review. If it does not fall under the FAA
umbrella, then the district court lacked jurisdiction to examine -- and thus to
affirm -- the result under the lax FAA review standards."
The Appeals Court held that, due to the terms of the UDRP, it is does not
provide for arbitration that is reviewable under the FAA. The Court held
that a UDRP arbitration is not mandatory, for two reasons.
"First, the UDRP obviously contemplates the possibility of
judicial intervention, as no provision of the policy prevents a party
from filing suit before, after or during the administrative proceedings."
The Court also wrote that "The UDRP was intended to ensure that the
parties could seek independent judicial resolution of domain name disputes,
regardless of whether its proceeding reached a conclusion.
... Indeed, unlike methods of dispute resolution covered by the FAA, UDRP
proceedings were never intended to replace formal litigation."
"Second, because the trademark holder or the trademark holder’s
representative is not required to avail itself of the dispute resolution
policy before moving ahead in the district court, these proceedings do not
qualify as the type that would entail a court’s compelling party participation
prior to independent judicial review -- thus removing the
proceeding from the warmth of the FAA blanket."
The Court also added that a "proceeding settles a disputed proceeding
only to the extent that a season-finale cliffhanger resolves a sitcom's
storyline -- that is, it doesn't. It is true that the language of the resolution
policy describes the dispute-resolution process as ``mandatory,´´ but ``the process
is not `mandatory´ in the sense that either disputant's legal claims accrue only
after a panel's decision.´´ Parisi, 139 F. Supp. 2d at 751 (quoting Bankers Ins.
Co., 245 F.3d at 319). Only the domain-name registrant is contractually
obligated to participate in the proceeding if a complaint is filed."
Hence, the Appeals Court concluded that the arbitration award was not subject
to review under the FAA, and it vacated the District Court's decision upholding
the award under the FAA.
However, the Appeals Court did not conclude at this point. While Dluhos never
argued that the District Court should have reviewed the arbitration award under
standards set forth in the ACPA, the Appeals Court nevertheless held that it
should have. Hence, it remanded to the District Court with instructions to
review the award under the ACPA.
The Appeals Court wrote that "Because the UDRP -- a private covenant --
cannot confer federal jurisdiction where none independently exists, the
remaining question is whether the Congress has provided a cause of action to
challenge its decisions. In the Anticybersquatting Consumer Protection Act, we
hold that it has."
It continued that "Under this modern amendment to the Lanham Act, a
registrant whose domain name has been ``suspended, disabled, or transferred´´
may sue for a declaration that the registrant is not in violation of the Act, as
well as for an injunction returning the domain name."
See, 15 U.S.C. §
1114(2)(D)(v), which provides that "A domain name registrant whose domain
name has been suspended, disabled, or transferred under a policy described under
clause (ii)(II) may, upon notice to the mark owner, file a civil action to
establish that the registration or use of the domain name by such registrant is
not unlawful under this chapter. 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."
The Court added that "we must liberally construe the pro se
litigant’s pleadings, and we will apply the applicable law, irrespective of
whether he has mentioned it by name."
|2/21. The Federal Trade Commission (FTC)
announced that it will hold two one day workshops on "the role of technology in
helping consumers and businesses protect the privacy of personal information,
including the steps taken to keep their information secure". The first workshop,
titled "The Consumer Experience", will be on May 14. The second, titled "The
Business Experience", will be on June 4. See,
2/21. Federal Trade Commission (FTC)
Chairman Timothy Muris issued a
regarding passage of
the Do Not Call Implementation Act. He said that "The President has signed the Omnibus
appropriations bill into law, providing funding to allow the Federal Trade
Commission to begin to develop a national Do Not Call registry. Additional
authorizing legislation for the registry is expected to be signed shortly. I am
delighted that the FTC can now respond to consumers' pleas to end unwanted
telephone intrusions into their homes, and I appreciate the support and
confidence of the Congress and the President and the efforts of my fellow
Commissioners to make the Do Not Call registry a reality. During the next few days,
the Commission will
start building the Do Not Call registry. Consumers will have the opportunity to
sign up for the registry sometime this summer, and the registry should be fully
functional and available to telemarketers by September. By fall, consumers
should begin to notice fewer unwanted telemarketing calls."
2/21. The Department of Justice's (DOJ)
Antitrust Division issued its evaluation recommending that the
Federal Communications Commission (FCC) approve
Qwest Communications' application under
Section 271 to
provide in region interLATA service in the state of Nevada. See,
release. The DOJ recommended approval of Qwest's long distance application for the
states of New Mexico, Oregon, and South Dakota on February 20. See,
Qwest release. On October 22, 2002, the DOJ recommended approval for the states of Colorado,
Idaho, Iowa, Montana, Nebraska, North Dakota, Utah, Washington, and Wyoming.
evaluation. The FCC approved that application on December 23, 2002. See,
order [PDF]. Also, Qwest has not yet received approval to offer
long distance services in the states of Arizona and Minnesota.
2/18. The U.S. Attorneys Office (CDCal) charged Alan Giang Tran by criminal
complaint with intentionally causing damage to a protected computer, and
recklessly causing damage by intentionally accessing a protected computer. The USAO stated in a release that Tran
was previously employed as the network administrator for a company whose servers
he accessed without authorization. The USAO further stated that he changed passwords,
and deleted programs, thereby shutting down the company's operations.
2/19. The Electronics Industry Association
(EIA) announced its legislative and policy agenda. It includes supporting
several tax related legislative proposals, such as "accelerated depreciation
schedules and first-year bonus depreciation, enhancement and permanence of the
R&D tax credit, tax relief for overseas profit repatriation, elimination of FICA
tax on severance and a broadband tax incentive." It also includes several trade
related items, including support for the Export Administration Act. The EIA also
stated that it will submit comments to the USTR regarding free trade agreements
"to ensure that high tech and business priorities are included". Also, with
respect to broadband, the group will support "passage of strong deregulatory
legislation". See, EIA
|Bush Criticizes Democratic Filibuster of
|2/22. President Bush devoted his
radio address to judicial nominations, and particularly, the nomination of
Miguel Estrada to be a judge of the U.S.
Court of Appeals (DCCir). Senate Democrats are filibustering. Bush
said that "We face a vacancy crisis in the
federal courts, made worse by senators who block votes on qualified nominees.
These delays endanger American justice. Vacant federal benches lead to crowded
court dockets, overworked judges and longer waits for Americans who want their
He elaborated that "Regional appeals courts have a 15 percent vacancy rate, and filings in those
courts reached an all-time high again last year. Since taking office, I have
sent to the Senate 34 qualified, mainstream nominees for the federal courts of
appeals. To date, only half of them have received a vote in the Senate, and 12
of the remaining 17 nominees have been waiting more than a year for a floor
Bush said that "a handful of Democratic senators, for partisan reasons, are attempting to
prevent any vote at all on highly qualified nominees. One of these nominees is
Miguel Estrada, my selection for the D.C. Court of Appeals. I submitted his
nomination in May of 2001, and Miguel Estrada has been waiting ever since.
That's almost two years, and that's a disgrace.
"Miguel Estrada's credentials are impeccable. He has served in the Justice
Department under Presidents of both political parties. He has argued 15 cases
before the U.S. Supreme Court, and he has earned the American Bar Association's
highest mark, a unanimous rating of well qualified", said Bush.
|Monday, February 24
|The Senate will return from its one week recess at 12:00 NOON. The House
is in recess until February 25. The Supreme Court will return from the recess which it began on January
10:15 AM. Treasury Secretary
will speak at the Credit Union National Association's Government Affairs
Conference. Location: Hilton Washington, International Ballroom, 1919
Connecticut Ave., NW.
3:00 PM. The Federal Communications Commission's (FCC) Federal State Joint
Conference on Accounting Issues will hold a public meeting. See,
FCC notice [MS Word] and
list of panelists [MS Word]. Location: FCC,
Commission Meeting Room (Room TW-C305), at 445 12th Street, SW.
Deadline to submit comments to the The
National Telecommunications and Information
Administration (NTIA) regarding the state uniform commercial code exception
to the Electronic Signatures in Global and National Commerce (E-SIGN) Act. The
Act provides, at §101, for the acceptance of electronic signatures in interstate
commerce, with certain enumerated exceptions. §103 of the Act provides that the
provisions of section 101 shall not apply to "the Uniform Commercial Code, as in
effect in any State, other than sections 1-107 and 1-206 and Articles 2 and 2A".
The Act also requires the NTIA to review, evaluate and report to Congress on
each of the exceptions. The E-SIGN Act is codified at
15 U.S.C. § 7001,
et seq. The exceptions are codified at
15 U.S.C. § 7003.
notice in the Federal Register, December 24, 2002, Vol. 67, No. 247, at
Pages 78421 - 78423.
|Tuesday, February 25
|The House will return from its one week recess at 2:00 PM. It will
consider several non tech related measures under suspension of the rules.
TO BE DECIDED WITHOUT ORAL ARGUMENT.
9:30 AM. The U.S. Court of Appeals
(DCCir) will hear oral argument in Rice v. FCC, No. 01-1474. Judges
Ginsburg, Sentelle and Randolph will preside. Location: 333 Constitution Ave.,
12:15 PM. The FCBA's Cable Practice
Committee will host brown bag lunch. The speakers will be House Commerce
Committee counsel. RSVP to Wendy Parish at
email@example.com. Location: NCTA, 1724 Massachusetts Ave., NW, 2nd Floor
3:00 PM. The House Homeland Security Committee will hold its
organizational meeting. Press contact: Kate Whitman at 202 225-5611. Location:
Room 2359, Rayburn Building.
3:00 PM. Treasury Secretary
Homeland Security Secretary
and Deputy Attorney General Larry Thompson will speak at an event titled "Law
Enforcement Day Celebration". See,
The George Washington University, Lisner Auditorium, 730 21st Street, NW.
|Wednesday, February 26
|The House will meet at 2:00 PM for legislative business; it will consider
several non tech related measures under suspension of the rules.
10:00 AM. The House Commerce
Committee's Telecom and Internet Subcommittee will hold a hearing titled "Health
of the Telecommunications Sector: A Perspective from the Commissioners of the
notice. Location: Room 2123, Rayburn Building.
10:30 AM. U.S. Trade Representative (USTR)
Zoellick will testify before the House Ways and Means Committee about
the administration's trade agenda. See,
notice. Location: Room 1100, Longworth Building.
12:15 PM. The FCBA's Online
Communications Practice Committee will host a brown bag lunch. The topic will
be "Patent Licensing: Surprising Revelations About the True Currency of a
Technology Based Economy". The speaker will be David Martin, CEO of
M.CAM. RSVP to Beatriz Zaloom at
Kelley Drye & Warren, 1200 19th St., NW, Suite 500.
Day one of a three day conference titled "Third Annual Privacy Summit"
hosted by the International
Association of Privacy Officers.
|Thursday, February 27
|The House will meet at 10:00 AM for legislative business.
9:30 AM. The U.S. Court of Appeals
(DCCir) will hear oral argument in Z Tel Communications v. FCC, No.
01-1461. Judges Ginsburg, Sentelle and Randolph will preside. Location: 333
Constitution Ave., NW.
10:00 AM - 4:00 PM. The Federal
Communications Commission (FCC) will hold a hearing pertaining to its
"review of broadcast ownership regulation". See,
notice [MS Word] and
agenda [MS Word]. Press contact: Rosemary Kimball at
202 418-0511 or firstname.lastname@example.org.
Location: Greater Richmond Convention Center, 403 N. Third Street, Ballroom
Building, Level 1, Meeting Room 15AB, Richmond, VA.
11:00 AM. The Senate Governmental Affairs Committee will hold a hearing on
several nominations, including Janet Hale (to be Under Secretary for
Management, Department of Homeland Security), and Clark Ervin (to be Inspector
General, Department of Homeland Security). Location: Room 342, Dirksen
4:00 PM. Michael
Meurer (Boston University School of Law) will present a paper titled
"Sharing Copyrighted Works". For more information, contact
Robert Brauneis at
202 994-6138 or
email@example.com. Location: George Washington University Law
School, Faculty Conference Center, Burns Building, 5th Floor, 720 20th Street,
NW. This event had been scheduled for February 18, but was postponed due to
|Friday, February 28
|9:00 AM - 1:30 PM. The American Enterprise
Institute (AEI) will host an conference titled "Prospects and Politics of
a U.S.-Taiwan Free Trade Agreement". The scheduled speakers include Rep. Tom
DeLay (R-TX), William Kristol, Deanna Okun, and Therese Shaheen.
12:15 PM. The FCBA's Mass Media Practice
Committee will host a brown bag lunch. The speaker will be Ken Ferree,
Chief of the FCC's Media Bureau. RSVP to Wendy Parish at
firstname.lastname@example.org. Location: NAB, Conference
Room, 1771 N Street, NW.
2:00 NOON. Deadline to submit comments to the Office of the
U.S. Trade Representative's (USTR)
interagency Trade Policy Staff Committee (TPSC) regarding the operation and
implementation of the World Trade Organization's
(WTO) Agreement on Technical Barriers to Trade (TBT). See,
notice in the Federal Register, February 3, 2003, Vol. 68, No. 22, at
Extended deadline to submit reply comments to the Federal
Communications Commission's (FCC) regarding the
[73 pages in PDF] of the FCC Spectrum Policy Task Force
(SPTF). The report recommends that "spectrum policy must evolve towards more
flexible and market oriented regulatory models." See, original
notice of extension [PDF].
EXTENDED TO MARCH 11.
submit reply comments to the
Federal Communications Commission (FCC)
in response to its Further Notice of Proposed Rulemaking, (FNPRM), released
last month, regarding whether providers of various services and devices not
currently within the scope of the FCC's 911 rules should be required to
provide access to emergency services. This is CC Docket No. 94-102 and IB
Docket No. 99-67. See,
notice in the Federal Register, January 23, 2003, Vol. 68, No. 15, at
Pages 3214 - 3220. See also,
Deadline to submit to the Copyright
Office (CO) claims to royalty payments for digital audio recording devices
and digital audio recording media, collected during 2002. Such claims are made
in accordance with
Chapter 10 of the U.S. Copyright Law and
Part 259 of the Copyright
Office regulations. See,
CO notice with
links to online claim submission forms.
Deadline to submit comments to the Federal
Trade Commission (FTC) regarding its
Consent Order with Educational
Research Center of America, Inc. (ERCA). On January 29 the FTC announced that
it filed an administrative
complaint against ERCA
alleging violation of the FTC Act. The complaint states that the ERCA
"collected personal information from high school and middle and junior high
school students through surveys ..." It further states that it "represented,
expressly or by implication, that information collected from students through
the Surveys is shared only with colleges, universities, and other entities
providing education-related services. ... In truth and in fact, information
collected from students through the Surveys is shared ... also with commercial
entities for marketing purposes." See,
FTC release and
notice in Federal Register, February 4, 2003, Vol. 68, No. 23, at Pages
|Monday, March 3
|10:00 AM. The U.S. Court of Appeals
(FedCir) will hear oral argument in Intellectual Property Development
v. UA Columbia Cablevision, No. 02-1248, an appeal from the U.S. District
Court (SDNY) in a patent case. Location: Courtroom 402, 717 Madison Place, NW.
Deadline to file FCC Form 477 with the
Federal Communications Commission (FCC). All
providers of local telephone service that serve 10,000 or more voice grade
equivalent lines, or wireless channels, in a given state must file this form.
Also, facilities based providers that serve at least 250 one-way or two-way
broadband (defined here as in excess of 200 kilobits per second) service
lines, or wireless channels, in a given state (or have at least 250 customers
for such service in a given state) must also file. This form provides the FCC
with the data that it uses for its twice per year report on the growth in use
of broadband services. See,
FCC notice [MS Word].
Deadline to submit comments to the
Copyright Office (CO) in response to its Notice of Proposed Rulemaking (NPRM)
relating to proposed regulations that set rates and terms for the use of sound
recordings by preexisting subscription services for the period January 1, 2002
through December 31, 2007. For more information, contact David Carson (General
Counsel) or Tanya Sandros (Senior Attorney, Copyright Arbitration Royalty
Panel) at 202 707-8380. See,
notice in the Federal Register, January 30, 2003, Vol. 68, No. 20, at Page
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