Cybersquatting cases filed under the Uniform Dispute Resolution Policy have become less predictable, judging from complex new guidelines for adjudication panels.
The World Intellectual Property Organization has just published WIPO Overview 2.0, which sets out over 10 years of UDRP precedent for panelists to consider when deciding future cases.
The document is a must-read for domain investors and trademark holders.
Updated for the first time since 2005, it contains new sections covering developments such as registrar parking, automatically generated advertising and proxy/privacy services.
The Overview has quadrupled in length, from 5,000 to 20,000 words. With that, has come increased complexity. WIPO notes:
While predictability remains a key element of dispute resolution systems, neither this WIPO Overview nor prior panel decisions are binding on panelists, who will make their judgments in the particular circumstances of each individual proceeding.
The document reflects decisions already made, rather than creating new law, but as such it also reflects the tilting balance of the UDRP in favor of complainants.
For example, while the 2005 guidelines presented majority and minority views on whether [trademark]sucks.com domains meet the “confusing similarity” criterion, Overview 2.0 presents only a “consensus view” that they do, suggesting that it is now settled law.
On whether parking a domain with PPC ads meets the “legitimate interests” criterion, the guidelines refer to precedent saying that the ads must not capitalize on a trademark:
As an example of such permissible use, where domain names consisting of dictionary or common words or phrases support posted PPC links genuinely related to the generic meaning of the domain name at issue, this may be permissible and indeed consistent with recognized sources of rights or legitimate interests under the UDRP, provided there is no capitalization on trademark value
Supporting this view, the Overview states that “bad faith” can be shown even if the domain owner does not control the content of their parked pages and makes no money from the ads:
Panels have found that a domain name registrant will normally be deemed responsible for content appearing on a website at its domain name, even if such registrant may not be exercising direct control over such content – for example, in the case of advertising links appearing on an “automatically” generated basis… It may not be necessary for the registrant itself to have profited directly under such arrangement
There is a defense to this, if the respondent can show they had no knowledge of the complainant’s trademark and made no effort to control or profit from the ads.
Because the UDRP calls for “registration and use in bad faith”, the guidelines also ask: “Can bad faith be found if the disputed domain name was registered before the trademark was registered or before unregistered trademark rights were acquired?”
The original guidelines said no, with a carve-out for cases where the squatter anticipated, for example, a future corporate merger (microsoftgoogle.com) or product release (ipad4.com).
The new guidelines are a lot less clear, calling it a “developing area of UDRP jurisprudence”. The document lists several cases where panelists have chosen to essentially set aside the registration date and concentrate instead just on bad faith usage.
The question of whether a renewed domain counts as a new registration is also addressed, and also has a couple of exceptions to give panelists more flexibility in the decisions.
The Overview covers a lot of ground – 46 bullet points compared to 26 in the first version – and will no doubt prove invaluable reading for people filing or fighting UDRP cases.
The guidelines are not of course set in stone. The 2005 version read:
The UDRP does not operate on a strict doctrine of precedent. However, panels consider it desirable that their decisions are consistent with prior panel decisions dealing with similar fact situations. This ensures that the UDRP system operates in a fair, effective and predictable manner for all parties
But the new version adds a caveat to the end of the sentence: “while responding to the continuing evolution of the domain name system.”
The World Intellectual Property Organization handled more cybersquatting cases in 2010 than in any other year to date, according to just-released statistics.
WIPO said today it received 2,696 UDRP complaints last year, up 28% over 2009’s 2,107 cases.
But the number of domains covered by these cases actually slipped a little, from 4,688 to 4,370, according to WIPO.
Since the policy was created in 1999, WIPO says it has decided over 20,000 UDRP complaints, covering over 35,000 domain names in 65 TLDs.
It may sound like a lot, but it’s actually a vanishingly small percentage of the 205.3 million domain names that are registered across all TLDs today.
Facebook has filed a UDRP complaint covering 21 domain names that include its trademark.
All seem to belong to the same domainer: Mike Mann. His company, Domain Asset Holdings, which has over 162,000 domains to its name, is listed in the Whois for each.
It’s the largest single UDRP filing by Facebook to date, and only its second to include brand+keyword domains.
The contested domains include: aboutfacebook.com, facebookbabes.com, facebookcheats.com, facebookclub.com, facebookdevelopment.com, killfacebook.com and many more.
All 21 covered by the UDRP are currently available for sale at Mann’s DomainMarket.com, with list prices between $350 and $8,000 and above.
A quick search on that site for other well-known social media brands returned dozens of results.
Mann is known as co-founder of BuyDomains, and more recently as one of the former owners of sex.com, which sold for $13 million last year.
The founder of Xvid.org, a popular if legally dubious video codec, is trying to get his hands on the domain name Xvid.com.
Michael Militzer, who launched the Xvid project in 2001, has filed a UDRP complaint with the World Intellectual Property Organization.
Xvid.com was registered in 2000, and spent much of the last decade as a placeholder site, but changed hands early last year. It’s now developed, with links to video software.
In a thread on DigitalPoint, it is claimed that the current registrant paid $55,000 for the domain. It may prove to have been a poor investment.
There’s plenty of UDRP precedent suggesting that buying a domain name corresponding to a trademark can be considered bad faith, even when the original registration preceded the trademark filing.
Millitzer obtained his US trademark on the word “Xvid” in 2008. Historical Whois records show the domain has only been registered to its current owner since 2010.
There’s an irony here: Xvid has been accused in the past of infringing intellectual property rights in the form of MPEG’s patents.
Could Apple shut down MacRumors.com using the Uniform Dispute Resolution Policy?
That seems like a fair interpretation of a recent WIPO decision over the domain name LegoRumors.com, which was handed over to Lego Juris, maker of the popular toys.
LegoRumors.com leads to blog-style news site, not many months old, that reports on Lego products.
The site is a bit of a mess – poorly written, spammy, and ad-heavy. You’d have to be nuts to think it was an official Lego site.
It does appear to contain original content, and does not look to me like the kind of clear-cut cybersquatting that the UDRP was intended to address.
Lego succeeded in seizing the domain, regardless. The WIPO panelist (in a decision that could also have used a run through a spell-checker) found:
The disputed domain name consists of two different words, one consisting of the Complainants registered trademark and other of a generic term “rumors”. The Panel considers that the addition of the generic denomination, especially when added to a famous trademark is not sufficient to avoid confusion.
Pay attention, “rumors” sites.
The panelist also found that the domain name was registered in bad faith, on the basis that the registrant clearly was aware of Lego’s trademark (because he’s writing about Lego) and because the site contained sponsored links to potential competitors.
Apply this logic to MacRumors.com, which knowingly uses an Apple trademark in its domain name, writes about Apple products, and currently shows ads for BlackBerry and Adobe products that compete with Apple.
I’m not suggesting for a second that MacRumors is in any danger of losing its domain, but if the UDRP was implemented equitably, this case could be seen as scary precedent.