April 1-14, 2000 Developments in international law, prepared by the Attorney-Editors ofInternational Legal Materials The American Society of International Law
ICANN Administrative Panel Decision:
Noodle Time, Inc. v. Max Marketing, DeC AF-0100
(March 9, 2000)
Noodle Time, Inc., which operates a chain of restaurants
under the trade name "Benihana of Tokyo," filed against
Max Marketing, the registered owner of the disputed
Internet domain name benihanaoftokyo.com, a complaint
under the Uniform Domain Name Dispute Resolution Policy
("URDP") of the Internet Corporation for Assigned Names
and Numbers ("ICANN"). Para. 1. Noodle Time asserted
inter alia that Noodle Time is the present owner
of the trademark "Benihana of Tokyo," which was registered
with the U.S. Patent and Trademark Office ("PTO") in
August 1972 and has been in use since April 1964. Para.
3(b). Noodle Time also alleged that Max Marketing: 1)
has no connection with Benihana restaurants; 2) is unrelated
to Noodle Time; and 3) has never been licensed or otherwise
authorized to use or register the disputed domain name.
Noodle Time claimed that Max Marketing had used the
domain name in bad faith, as Max Marketing had admitted
its intent to use the domain name for the purpose of
selling, renting or otherwise obtaining compensation
from Noodle Time. Para. 4. Noodle Time further claimed
that Max Marketing had intentionally tried both to create
confusion with the trademark and to extort money from
Noodle Time by threatening to destroy e-mail messages
intended for Noodle Time that were sent to the disputed
domain name. Id.
Max Marketing failed to submit a response to Noodle
Time's claim, and the Administrative Panel ("Panel")
concluded under Paragraph 14 of ICANN's URDP Rules ("Rules")
that such a failure "should be considered as an admission
that such claims are true." Para. 5. The Panel also
noted that if a claim in such circumstances includes
sufficient credible evidence of an ICANN policy violation,
the Panel must find for the complainant and take appropriate
action as to the domain name registration. Id.
The Panel asserted, however, that such a decision is
not a default award, but rather an award based on the
unrefuted evidence presented to the Panel. Id.
The Panel verified that Max Marketing had registered
the domain name benihanaoftokyo.com with Network
Solutions on May 20, 1999, (Para. 3(b)), and had used
it in a prohibited manner under URDP Paragraph 4a, which
requires that: 1) the domain name in question be identical
or confusingly similar to a trademark or service mark
in which the complainant has rights; 2) the respondent
have no rights or legitimate interests in respect of
the domain name; and 3) the domain name be registered
and used in bad faith. Para. 5.
The Panel found that Noodle Time's registered trademark
with the PTO was sufficiently confusing, as the disputed
domain name is identical to Noodle Time's registered
trademark. Para 5(i). The Panel noted that Max Marketing
could possibly have shown a legitimate right or interest
in the domain name, but in the absence of any response
the Panel accepted Noodle Time's arguments that Max
Marketing had no such interest. Para 5(ii). The Panel
further found that Max Marketing had not registered
and used the disputed domain name in good faith, in
that Max Marketing did not appear from the record to
have had any intention of using the name for a legitimate
business purpose. Para 5(iii). The Panel found that
the name had been acquired primarily for the purpose
of selling, renting or otherwise transferring the domain
name to Noodle Time as the trademark owner for valuable
consideration in excess of documented out-of-pocket
costs directly related to the domain name. Id.
The Panel ordered the domain name of benihanaoftokyo.com
to be transferred to Noodle Time, but rejected Noodle
Time's request for both the cancellation and transfer
of the disputed domain name. Id. The Panel noted
that ICANN Policy allows for the imposition of only
one such remedy, not both. Id. JJ
U.S. Supreme Court: Rice v.
Cayetano, No. 98-818 (February 23, 2000)
The Office of Hawaiian Affairs ("OHA") was established
by amendment to the Hawaiian state constitution to administer
programs for "Hawaiians" and "Native Hawaiians." The
OHA is composed of nine trustees chosen in statewide
elections, in which only descendants of the peoples
inhabiting the Hawaiian islands in 1778 could vote.
The petitioner, Rice, did not have such ancestry, and
subsequently brought suit against Hawaii under the Fourteenth
and Fifteenth Amendments of the U.S. Constitution to
invalidate the voting exclusion.
The federal district court granted Hawaii summary judgment
by analogizing the historic guardian-ward relationship
between Hawaii and Native Hawaiians to the relationship
between the U.S. and U.S. Indian tribes. The Ninth Circuit
affirmed on appeal that "Hawaiians, being the group
to whom trust obligations run and to whom OHA trustees
owe a duty of loyalty, should be the group to decide
who the trustees ought to be." The Ninth Circuit also
analogized the OHA with the Bureau of Indian Affairs.
The U.S. Supreme Court ("Court") reversed in a 7-2
decision. The majority opinion by Justice Kennedy held
that the voting restriction violated the Fifteenth Amendment
because the federal government and the states "may not
deny or abridge the right to vote on account of race."
The Court found that while statutes implementing the
Hawaiian Amendment did not explicitly mention race,
they used ancestry as a proxy for race in an attempt
to restrict the voting franchise. The Court therefore
concluded that Hawaii's inquiry into ancestry is forbidden
by the Fifteenth Amendment because "the use of racial
classifications is corruptive of the whole legal order
democratic elections seek to preserve."
Justices Breyer and Souter concurred in the result
and rejected Hawaii's analogy to an Indian tribal trust,
finding that "(1) there is no 'trust' for native Hawaiians
here, and (2) OHA's electorate . . . does not sufficiently
resemble an Indian tribe."
Justices Stevens and Ginsburg dissented, arguing that
a special relationship exists between the federal government
and unique aboriginal peoples such as American Indians,
Alaska Natives, Eskimos, Aleuts and "Hawaiians." The
Justices also saw no invidious discrimination in compensating
indigenous peoples for past wrongs. SZ
When in force, the British Parliament's Northern Ireland
Act 2000 ("Act") suspends the Northern Ireland Assembly
("Assembly") and bars the Assembly from passing any
act. Sects. 1(1), 1(2). The Act comes into force on
such date as the Secretary of State ("Secretary") may
order without need of Parliamentary approval. Sects.
7(2), 9(2). During a suspension neither the Assembly
nor any Assembly committee may meet or conduct any business,
(Sect. 1(3)), nor may any person hold office or be elected,
nominated or appointed as a Minister or junior Minister,
or as a chairman or deputy chairman of a statutory committee.
Sect. 1(4).
The Act requires that "as soon as reasonably practicable
after the Act comes into force," the Secretary must
take steps to initiate a review of the suspension under
the Validation, Implementation and Review section of
the Belfast Agreement. Sect. 2. The Secretary may also
issue a Restoration Order: 1) causing the suspension
to cease, (Sect. 2(2)); and 2) permitting eligible persons
to resume their offices as First Minister, deputy First
Minister, Northern Ireland Minister, junior Minister,
or chairman or deputy chairman of a statutory committee.
Sect. 3. If a Restoration Order is revoked, however,
the suspension is once again effected. Sect. 4.
While the Suspension is in effect, the Secretary must
by order transfer to a Northern Ireland department any
implementing body functions stemming from agreements
between the U.K. and Ireland relating to Northern Ireland.
Sect. 5.
The Secretary may under the Act make any consequential,
supplemental or transitional provision that appears
to be necessary or expedient. Sects. 7(1), 7(2). Such
an order is exercisable by statutory instrument, (Sect.
7(1)), and is subject to annulment by resolution of
either House of Parliament. Sect. 7(3). Although Parliamentary
approval is required for other orders, (Sect. 7(4)),
such approval is not required absent certain time considerations
if the order declares that the Secretary considers it
expedient for the order to be made without such approval.
MB
European Council: Presidency Conclusions
from the Lisbon European Council of 23-24 March 2000
(March 27, 2000 draft)
In a special European Council meeting held March 23-24
in Lisbon Portugal, the European Council ("Council")
considered the challenges of both globalism and a new,
knowledge-driven economy. Para. 1. The Council proposed
inter alia: 1) adoption of pending e-commerce
legislation; 2) a Community patent for simple, inexpensive
and EU-wide patent protection; and 3) a simplified regulatory
environment. Paras. 11, 13, 17.
The Council stressed that peace, prosperity and stability
in Southeast Europe are a strategic priority for the
European Union ("EU"). Para. 46. The Council appealed
to the Serbian people to "take their future into their
own hands and to reclaim their place in the family of
democratic nations." Para. 50. The Council noted that
the EU would continue to both support Yugoslavia's democratic
opposition and uphold sanctions for as long as President
Milosevic remains in power. Id.
The Council applauded efforts toward stability and
democratic reform in Montenegro and Kosovo, and reaffirmed
its commitment to U.N. Security Council Resolution 1244,
and also to the efforts of UNMIK and KFOR in the region.
Paras. 52-53. The Council reaffirmed its appeal in regard
to Chechnya by calling for Russia to: 1) end the indiscriminate
use of military force; 2) allow independent investigation
of human rights violations; 3) allow international organizations
and observers to perform their missions freely; and
4) pursue without delay the search for a political solution.
Para. 56. MB
ICANN: Uniform Domain Name Dispute
Resolution Policy (Adopted August 26, 1999; Implementation
Documents approved October 24, 1999)
All registrars in the .com, .net, and .org top-level
domains follow the Uniform Domain Name Dispute Resolution
Policy ("URDP") adopted by the Internet Corporation
for Assigned Names and Numbers ("ICANN"). The URDP requires
a domain-name registrant ("respondent") to submit to
a mandatory administrative proceeding ("Proceeding")
when a complainant alleges the following: 1) the respondent's
domain name is identical or confusingly similar to a
trademark or service mark in which the complainant has
rights; 2) the respondent has no rights or legitimate
interests in respect of the domain name; and 3) the
respondent's domain name has been registered and is
being used in bad faith. Sects. 1, 4(a). The complainant
must prove these elements at the Proceeding. Sect. 4(a).
The bad faith registration and use element may be proven
by circumstances indicating that the respondent has
registered or acquired the domain name primarily for
the purpose of selling, renting, or otherwise transferring
its registration either to the complainant as the owner
of the trademark or service mark, or to the complainant's
competitor, for valuable consideration in excess of
documented out-of-pocket costs directly related to the
domain name. Sect. 4(b)(i).
This element may also be proved by showing that the
respondent has: 1) by a pattern of conduct registered
the domain name to prevent the owner of the trademark
or service mark from reflecting the mark in a corresponding
domain name; 2) registered the domain name primarily
for the purpose of disrupting the business of a competitor;
or 3) intentionally and for commercial gain attempted
through the domain name to attract Internet users to
the respondent's website or other on-line location by
creating a likelihood of confusion between the complainant's
mark and the source, sponsorship, affiliation, endorsement,
product or service of the respondent's web site or location.
Sect. 4(b)(ii-iv).
The URDP establishes that the respondent can show a
legitimate interest in the domain name by proving that
the respondent has: 1) prior to notice of the dispute
used or has made demonstrable preparations to use the
disputed domain name, or a corresponding name, in connection
with a bona fide offering of goods or services;
2) been commonly known by that name, even if no trade
or service mark rights have been acquired; or 3) made
legitimate non-commercial or fair use of the domain
name, without intending for commercial gain either to
misleadingly divert consumers or to tarnish the trade
or service mark in dispute. Sect. 4(c).
The ICANN procedure applies only to disputes covered
by the URDP, (Sect. 5), and does not preclude submission
of a dispute to a court of competent jurisdiction before
or after a Proceeding. Sect. 4(k). Proceedings are conducted
before an administrative-dispute-resolution service
provider approved by ICANN and selected by the complainant.
Sects. 4, 4(d). ICANN's URDP Rules of Procedure provide
the procedure for initiating and conducting a proceeding,
and also for appointing a panel. Sect. 4(e).
Either party may petition to consolidate multiple proceedings.
Sect. 4(f). Fees are paid by the complainant except
in the case of an expanded, three-panelist panel, when
costs are split evenly. Sect. 4(g). Remedies under the
URDP are limited to the domain name's cancellation or
transfer to the complainant. Sect. 4(i). Domain name
transfers are limited during Proceedings. Sect. 8.
ICANN does not participate in proceedings or disputes,
(Sects. 4(h), 6), and is not liable for panel decisions.
Sect. 4(h). Save in exceptional cases of redaction,
all decisions will be published in full on the Internet.
Sect. 4(j). ICANN may modify the URDP at any time, with
changes posted at least thirty calendar days before
the changes take effect. Sect. 9. Such changes apply
to all registrants, and also to all Proceedings at which
the earlier version has not already been invoked. Id.
JJ
The ASIL has issued a new Insight by
Frederick L. Kirgis entitled "Possible Indictment of
Pinochet in the United States." It is located at http://www.asil.org/insigh42.htm
At its recent ASIL Annual Meeting the Society
introduced its new 1999 International Legal Materials
CD Edition. The CD Edition provides authentic
versions of ILM documents for all of the 1999 run, and
may be navigated by Web-style pages. The Society
is offering the CD Edition at an introductory rate of
$100 (which is far cheaper than the print run of 1999's
back issues). If you have questions about this
product, please contact ILM Editor Peter C. Hansen at
phansen@asil.org
The ILM Office would like to thank once again to all
who participated in production of ILIB Special Reports
that covered the ASIL's 94th Annual Meeting. We also
welcome our new subscribers.
The Inter-American Commission on Human Rights
has released the English version of its 1998 Annual
Report in two print volumes.
On April 3, 2000 Judge Liu Daqun of China was
sworn in as a Judge at the International Criminal Tribunal
for the former Yugoslavia ("ICTY"). Judge
Liu replaces Judge Wang Tieya, who recently resigned.
Judge Liu will serve the remainder of Judge Wang's term,
which ends November 16, 2001.
On March 29, 2000 ICTY Trial Chamber III found
Milan Simic and Branislav Avramovic not
guilty of criminal contempt after determining that no
allegations were "established beyond reasonable doubt."
International Law In Brief - Copyright 2000 - The American
Society of International Law Editor: Peter C. Hansen, Esq. Interns: Matthew Brinton, Jae Jo, Branislav
A. Maric, Adv., Sam Zengotitabengoa
To comment on this publication, send an e.mail message
to Peter C. Hansen, Editor at phansen@asil.org
For membership information, visit us on the Internet http://www.asil.org
