“Super Lawyers” not famous enough to win gripe site UDRP fights

Three lawyers have failed to win cybersquatting complaints against a blogger who registered domains matching their personal names in order to criticize them.
Gregg Mashberg, Allen Fagin and Joseph Leccese, all attorneys with the international law firm Proskauer Rose, have lost three separate UDRP complaints recently.
Self-professed “investigative blogger” Crystal Cox registered josephleccese.com, allenfagin.com and greggmashberg.com last October, in order to publish a handful of unreadable and potentially defamatory blog posts alleging various forms of criminality.
The three men do not hold registered trademarks matching their names, so were forced to rely upon various awards they have won and media appearances they have made to show common law rights.
All three have apparently been named “Super Lawyers” by something called New York Super Lawyers, for example.
But the three-person WIPO panel which heard all three cases found, in virtually identical decisions, that the lawyers had failed to acquire common law trademark rights to their names.
The decisions read:

The record before the Panel suggests that Complainant is a highly respected, prominent lawyer who is a partner with a major law firm. There is insufficient evidence here that Complainant markets or provides services independently of the Proskauer law firm. Rather, it appears that the Proskauer firm is the platform on which Complainant provides his legal services.

It’s not unusual for a celebrity or public figure to win a UDRP complaint on the basis of their fame, but it appears in this case that the complainants were just not famous enough.

Registrar threatened over “stolen” Facebook domain

ICANN has threatened to terminate the domain name registrar EuroDNS for failing to transfer a typo domain lost in a UDRP case to Facebook.
But EuroDNS says it is subject to a court case in its home country, Luxembourg, which has prevented it handing over the name.
The original registrant of facebok.com lost a slam-dunk UDRP case back in September 2010. He didn’t even bother defending the case.
But over half a year later, he’s still in control of the domain, and he’s using it to recruit folk into a shady-looking (but probably legal) subscription text messaging service.
EuroDNS is the registrar of record for the domain, and like all registrars is responsible for transferring domains lost under the UDRP to the winning party, in this case Facebook.
ICANN’s compliance department – my guess is under pressure from Facebook – has therefore threatened EuroDNS with termination unless it hands over the domain in the next three weeks.
This is noteworthy because EuroDNS isn’t the kind of tiny, fringe outfit ICANN usually files compliance notices against. It’s a generally respectable business. It even shows up to ICANN meetings.
EuroDNS deputy general counsel Luc Seufer tells me that the company was fully prepared to transfer the domain – it had even sent the authorization codes to Facebook – but it found itself on the receiving end of a lawsuit claiming that the domain had been “stolen”.
Somebody in Luxembourg, it seems, has sued to reclaim an obvious typo domain that’s probably going to be transferred to Facebook anyway.
“We are therefore in an incredible position where if we transfer the name before the judge’s ruling we will be accountable in our own country and if we don’t transfer the name we are in breach of the [Registrar Accreditation Agreement],” said Seufer.
The Luxembourg case has not yet made it to court, hence EuroDNS’s delay, he said. ICANN is aware of the action, and has seen the court papers, he said.
According to ICANN’s breach notice (pdf), the only way for EuroDNS to avoid its obligation under the UDRP is to show proof that the original registrant has sued Facebook to keep the domain.
But the case in question was filed by a third party claiming to be the rightful owner of the domain, not the original registrant. EuroDNS seems to be trapped between a rock and a hard place.
Seufer said the company is prepared to hand over the domain, adding:

Should we simply ignore a judiciary court case against us in our own country – that could prevent us from operating the transfer since it is was asked of the judge – because of our RAA’s obligations?

The domain in question, facebok.com, currently redirects to a series of sites asking visitors to fill in a survey to win a Mac.
Those who are duped by it are actually signing up to a text service that costs, in the UK, £4.50 ($7.40) per week.

NAF sees rise in UDRP cases

The National Arbitration Forum saw a steep increase in the number of cybersquatting complaints filed under the Uniform Dispute Resolution Policy last year.
According to a NAF announcement, 2,177 cases were filed in 2010, up 24% on the previous year.
That seems to be roughly in line with the experience of the World Intellectual Property Organization, which recently reported a 28% increase in UDRP complaints to 2,696 last year.
On that basis, it appears that WIPO has ever so slightly widened the market share gap between itself and NAF.
Between 1999 and the end of last year, NAF had handled 15,763 domain disputes, compared to WIPO’s over 20,000.
A basic UDRP filing covering a few domain names with a single panelist presiding costs about $1,500 with both providers, not including lawyers’ fees and other expenses.
With roughly 35,000 complaints filed to date, we can estimate that the revenue from UDRP flowing to WIPO and NAF together has been in the ball park of $50 million in slightly over 11 years.

New UDRP guidelines reflect unpredictability

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

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

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

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

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

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

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”.