UDRP reform effort begins

Kevin Murphy, February 5, 2011, Domain Policy

ICANN has kicked off a review of its Uniform Dispute Resolution Policy, the occasionally controversial process used to adjudicate cybersquatting complaints.

The GNSO Council on Thursday voted to ask ICANN staff for a so-called “Issues Report” on UDRP, indicating that reform of the process is likely.

This is the relevant portion of the resolution, passed unanimously:

RESOLVED #2, the GNSO Council requests an Issues Report on the current state of the UDRP. This effort should consider:

* How the UDRP has addressed the problem of cybersquatting to date, and any insufficiencies/inequalities associated with the process.

* Whether the definition of cybersquatting inherent within the existing UDRP language needs to be reviewed or updated. The Issue Report should include suggestions for how a possible PDP on this issue might be managed.

Issues Reports commissioned by the Council are expected within 15 days, and 15 days after that the Council is expected to vote on whether to kick off a Policy Development Process.

A PDP could lead to changes to the UDRP that would be binding on all ICANN-accredited registrars and their customers.

While the UDRP has proven very effective at dealing with clear-cut cases of cybersquatting over the last 12 years, critics claim that it is often interpreted too broadly in favor of trademark interests.

If you read this blog regularly, you’ll know I frequently report on unfathomable UDRP decisions, but these are generally the exception rather than the rule.

Unrelated to UDRP, the GNSO Council has also voted against asking ICANN for an Issues Report on registry/registrar best practices for mitigating domain abuse.

Business interests wanted registrars to take more measures (voluntarily) to curb activities such as phishing, but registrars think this kind of rule-making is beyond the scope of the GNSO.

After a lot of heated debate and arcane procedural wrangling, the Council decided instead to ask for a “discussion paper”, a term that has no meaning under ICANN’s rules, meaning a PDP is less likely.

Renew a domain, lose a UDRP?

Kevin Murphy, February 2, 2011, Domain Policy

Renewing a domain name could land you in hot water if you’re hit with a UDRP complaint, if some current thinking at the National Arbitration Forum gains traction.

In the recent NAF decision over FreeGeek.com, panelists argued that if a domain was not originally registered in bad faith (because no trademark existed at the time) renewing the domain after a trademark had been obtained could nevertheless be used to demonstrate bad faith.

Showing that a disputed domain was registered and used in bad faith is of course one of the three pillars of UDRP.

Free Geek Inc runs its web site at freegeek.org. It wanted the .com equivalent, which was registered in 2001, six years before the company acquired a US trademark on its brand.

FreeGeek.com is owned by by Kevin Ham’s company, Vertical Axis. The registration has been renewed every year since 2001.

The three NAF panelists were split on whether renewals post-2007 should be considered evidence of bad faith.

Two of the panelists agree that Respondent should be charged with exercising some diligence at renewal to determine if there are outstanding marks which conflict; one does not.

That’s a disturbing statement, if you’re interested in registrant rights – two panelists basically want domain investors to relinquish their domains if somebody else subsequently acquires a trademark.

What’s more, the panelists’ position appears to be based on a dodgy interpretation of recent UDRP precedent. The decision goes on to say:

The Chair of the Panel is concerned that the Respondent renewed its registration after the trademark was applied for and the USPTO registered the mark. In RapidShare AG and Christian Schmid v. Fantastic Investment Limited… a panel in which the Chair participated, found that “bad faith” could include renewal of a domain name after the issuance of the mark.

It’s a dodgy interpretation because the referenced case, rapidshare.net, does not in fact discuss renewals at all.

In that case, bad faith was actually shown to have arisen due to the domain (which had survived a UDRP just a few months earlier) being bought by a new registrant, not due to a renewal.

What we seem to have here is a case of a couple of NAF panelists thinking about trying to expand the scope of the UDRP. There’s a ton of precedent concluding that renewals are not relevant when establishing whether a domain was registered in bad faith.

With that in mind, you’d think the case would have been a slam-dunk win for the complainant. Not so.

In fact, Ham prevailed on the basis that he had acquired rights to the domain by simply parking it, which constituted a legitimate commercial use.

This panel, in contrast to other panels, finds that the use of this model and evidence of the use is enough to justify a factual finding that Respondent has used the name for commercial purposes

Respondent has clearly demonstrated that it acquired rights in the name by usage even if the usage has been limited to a “pay-per-click” links page. Such usage does not itself signal a lack of rights and legitimate interests and can constitute a bona fide offering of goods or services according to Policy

If there are any recent UDRP cases that show just how random a process it is, this is the one.

Noel Gallagher buys domain name with gig tickets

Kevin Murphy, January 31, 2011, Domain Sales

Former Oasis lead guitarist Noel Gallagher reportedly bought the domain name noelgallagher.com from a squatter in exchange for band memorabilia and free gig tickets.

According to British tabloid The Sun:

The former OASIS star found out recently that a cunning punter in Barcelona had snapped up the domain name noelgallagher.com ten years ago.

And The Chief’s plans to get things in order for his solo career were being held up by the Barca Bandit – because he was demanding a small fortune to hand it back.

Noel took matters into his own hands last week. He paid for the Spaniard to fly to London, put him up in a plush hotel and met him in person to thunder out a deal.

And after some serious haggling, and a few Oasis anecdotes, the chancer changed his demands from tens of thousands of pounds – to some signed memorabilia and guest list action at Noel’s next solo gigs.

I’m not sure how much success Oasis ever had outside of the UK. If you’ve never heard of them: briefly here in the 1990s they were regarded by some (mainly themselves) as the second coming of The Beatles.

I’ve never before seen a domain name story reported in The Sun, a notoriously unreliable but hugely popular Murdoch-owned daily rag, so I did a bit of fact-checking.

Whois history shows that the original registrant was from Madrid, not Barcelona, and that the domain was initially registered in 2002.

While the report claims Gallagher flew the squattter to London to negotiate the deal “last week”, the domain actually seems to have been owned by someone at Oasis’s record label since March 2010.

So either the cybersquatter got a free city break, or The Sun is — shockingly — reporting unreliable celebrity news.

The domain name does not currently resolve.

UDRP tip: put your domain in the Whois

Kevin Murphy, January 25, 2011, Domain Policy

If you’re fighting off a bogus UDRP complaint on one of your domain names, the onus is on you to prove that you have “rights and legitimate interests” in the domain.

That could be tricky, especially if you think you may been assigned a panelist with a pro-complainant bent, but there may be some ways to mitigate the risk of losing your domain.

Take this recent case, for example: PissedConsumer.com versus ThePissedOffConsumer.com.

The panelist determined that the registrant of ThePissedOffConsumer.com had no “rights and legitimate interests”on the grounds that a) it was competing with the complainant, b) the web site used the same color (red) as the complainant and c) the registrant was not known by the domain.

Ignoring the first two (highly debatable) findings, let’s look at c). The panelist wrote:

Complainant alleges that Respondent has never used a company name “The Pissed-Off Consumer” in connection with operation of any business activities. The WHOIS information for the disputed domain name lists the registrant of the domain as “John Cross.”

The Panel finds, based on the evidence in the record, that Respondent is not commonly known by the disputed domain name, and as such lacks rights and legitimate interests in the said name

In other words, because Whois showed the name of the registrant, rather than the name of the domain, the registrant was not “commonly known” as the domain and lacked rights.

To add insult to injury, the complainant was assumed to have earned the right to the mark “Pissed Consumer” before it had officially acquired a trademark (and before the disputed domain was registered) simply by virtue of operating PissedConsumer.com, despite the fact that it hides behind Whois privacy and is called Consumer Opinion Corp.

Presumably, if Cross had simply added the text “ThePissedOffConsumer” to his Whois record, the panelist would have had one less data point “in the record” to justify his finding.

In fringe UDRP cases, that could prove a useful defensive tactic.

TorrentReactor.net wins TorrentReactor.com case

Kevin Murphy, January 21, 2011, Domain Policy

The World Intellectual Property Organization has handed the domain name TorrentReactor.com to the owner of TorrentReactor.net, one of the internet’s most-popular BitTorrent movie piracy sites.

Really.

TorrentReactor.net owner Alexey Kistenev filed a UDRP complaint over the .com version with WIPO last year and won it earlier this month.

It was actually the second time he had taken the domain to arbitration.

Kistenev’s first complaint was dismissed by WIPO in March 2009, on the grounds that he did not have a valid trademark.

A month later, he applied for a US trademark on “TorrentReactor”, which was granted in July last year, and the UDRP was refiled in October.

In the latest case, Kistenev was helped by not only the fact that he now owns the trademark but also the fact that the domain has changed hands since the original complaint.

I wonder how much the current owner paid. In 2008, the then-owner had tried to sell it to Kistenev for $150,000. When he countered with a $30,000 offer, the owner asked for $50,000.

TorrentReactor.net is a page-one Google hit for searches including [torrent movies] and [torrent music].

Its front page contains links to torrents of recent, copyrighted movies such as The Social Network, Red and Let Me In, as well as new software, TV shows and music.

What we seem to have here is a case of WIPO indirectly helping piracy.

I guess it shows that WIPO arbitration panels can apply the UDRP uniformly when they want to.