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New UDRP guidelines reflect unpredictability

Kevin Murphy, March 31, 2011, Domain Policy

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.”

UDRP filings hit new record

Kevin Murphy, March 31, 2011, Domain Policy

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.

WIPO launches global brand database

Kevin Murphy, March 8, 2011, Domain Services

The World Intellectual Property Organization has opened up a free, searchable web-based database of over 640,000 trademarks.

The slick new Global Brand Database is not related to domain names specifically, but could well prove an invaluable research tool for players in the space, especially for top-level domain applicants.

How useful it becomes will depend on how much the database grows. At the moment, it appears less than comprehensive.

WIPO said the interface currently provides access to three existing databases.

There’s the list of “armorial bearings, flags and other state emblems as well as the names, abbreviations and emblems of intergovernmental organizations” protected under the Paris Convention for the Protection of Industrial Property.

There’s the database of “appellations of origin” – geo-brands such as Champagne and Tequila – registered under the so-called Lisbon system.

Finally, and probably most interestingly, there’s international trademarks registered under the Madrid system, which is a way for companies to register their brands in multiple legal jurisdictions.

But don’t expect to find US trademarks, for example, listed in the database yet. WIPO said in its announcement that it plans to add national databases to the system in the future.

Xvid founder tries to seize $55k sale Xvid.com

Kevin Murphy, February 25, 2011, Domain Policy

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.

Rumor sites fair game under UDRP

Kevin Murphy, February 14, 2011, Domain Policy

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.

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.

Businesses to object to Arab UDRP provider

Kevin Murphy, October 27, 2010, Domain Policy

ICANN’s business constituency is to object to a new Jordan-based UDRP provider, saying that no new providers should be approved until rules governing their behavior are put in place.

The BC reckons that UDRP decisions need to be more consistent and predictable, and that a good way to achieve this would be with standard accountability mechanisms.

In a draft position statement, expected to be finalized and filed with ICANN tomorrow, the BC says that it:

strongly advocates that ICANN must first implement a standard mechanism with any and all UDRP arbitration providers that defines and constrains their authority and powers, and establishes regular and standardized review by ICANN with flexible and effective means of enforcement.

Its comment is expected to be filed in response to the Arab Center for Domain Name Dispute Resolution’s request for official recognition as a UDRP provider last month.

The BC does not appear to object to the ACDR on its own merits or on the basis of its location.

The statement notes that registrars are bound by contracts setting the rules for domain registrations, but that UDRP providers can force transfers unconstrained by any ICANN guidelines or oversight.

It’s well-known that UDRP decisions from the various existing providers are currently about as predictable as flipping a coin, with panelists frequently interpreting the rules along quite different lines.

The BC seems concerned that this could be exacerbated as more UDRP providers are approved and as new TLD registries start popping up in different countries.

The draft statement notes that currently about 99% of UDRP cases are heard by WIPO and NAF, and that most gTLDs are “based in a limited number of national jurisdictions”.

Cash-for-gold site seizes “sucks” domain

Kevin Murphy, October 19, 2010, Domain Policy

An Arizona cash-for-gold company has successful recovered a “sucks” domain name via UDRP, after it emerged that the anonymous gripe site was actually run by a competitor.

Valley Goldmine filed the UDRP complaint against the domain valleygoldminesucks.com back in August. As I reported, the contested domain contained a mere two blog posts, both dating to May 2009.

Up until about a month ago, the registrant’s identity was protected by Go Daddy’s privacy service.

But Valley Goldmine used a subpoena to identify the actual registrant, and it turned out to be the operator of Gold Stash For Cash, a direct competitor, which does business at goldstash.com.

The site was created after a local TV news report had ranked Valley Goldmine higher than GSFC in an “investigation” into cash-for-gold companies. The blog posts, ironically, attacked the report’s objectivity.

Despite precedent largely protecting “sucks” domains on free speech grounds, this was enough for WIPO panelist Maxim Waldbaum to find against the registrant on all three requirements of the UDRP.

Interestingly, Waldbaum used the fact that the domain satisfied the “bad faith” part of the UDRP to justify the “confusingly similar” criterion.

The associated website has high placement on search engine results for the Mark and is operated by the principal of a direct competitor of Complainant. Respondent’s use of the Disputed Domain Name in this context is precisely within the list of bad faith criteria under paragraph 4(b) of the Policy, which, in this Panel’s view, clearly indicates Respondent’s intent to create confusing similarity in the minds of Internet users.

The fact that GSFC stood to benefit financially from anonymously bad-mouthing its competitor clearly over-rode any free speech concerns, which does not seem unreasonable.

The panelist concluded:

Although cloaked in the mantle of a gripe site, Respondent’s website is quite clearly a platform for Respondent to cast aspersions on the reliability of a report that portrayed his company in a negative light and his competitor in a positive light, and to otherwise sling mud.

Amusingly, while GSFC appears to own goldstashforcashsucks.com, a third party owns goldstashsucks.com.

Delhi Commonwealth Games wins UDRP

Kevin Murphy, September 28, 2010, Domain Policy

With five days to go before the Commonwealth Games kicks off in Delhi, the organizers may be under fire for expecting athletes to live like squatters, but they have managed to beat off one cybersquatter.

(Do you see what I did there?)

The Organising Committee of the games has been handed delhi-commonwealth-games.com in a UDRP proceeding against an anonymous registrant handled by WIPO

It looks like a fairly straightforward case. The web site, which has content, appears on the first page of Google for [delhi commonwealth games]. The WIPO panelist said its use of commercial links showed bad faith.

The official domain of the games is the rather less SEO-friendly cwgdelhi2010.org.

Interestingly, the Committee became aware of the domain in April 2009 and its first move was to ask the registrar, Directi, to block it, which it refused. It was well over a year later when the UDRP claim was filed.

Delhi was awarded the Commonwealth Games in 2003. The domain was registered in 2006.

The city has recently come under fire for its apparent lack of preparation, offering arriving athletes accommodation well below par from a health and safety perspective.

Revlon gets the UDRP bug

Kevin Murphy, September 22, 2010, Domain Services

Revlon has become the latest company to start aggressively enforcing its trademarks via the UDRP.

The company has over the last few months filed 24 complaints with WIPO, covering 29 domains, most of which appear to be parked.

Apart from a couple of typos, the domains all contain the Revlon trademark in full, along with another noun or two, and look like slam-dunk cases.

It has already won a couple of cases, such as revlonhairproducts.com, which I expect the panelist could have adjudicated in her sleep.