Red Bull in a China Shop
<redbullbeijing .com> and others
Transfer (with dissenting opinion)
Panelist: Mr. Matthew Kennedy (Presiding), Mr. Joseph Simone and Dr. Hong Xue (Dissenting)
Brief Facts: The Thai Complainant sells energy drinks including RED BULL. The Complainant entered into joint venture and trademark licensing agreements with Red Bull Vitamin Drink Co. Ltd, the purpose of which was the introduction of the Red Bull vitamin drink to China. A trademark ownership dispute arose between Red Bull Vitamin Drink Co., Ltd and the Complainant, in which the former claimed ownership of the RED BULL trademarks in China. The trademark ownership claim was dismissed by a Beijing court. The Respondent claims to have registered the domain names in the course of employment with the Respondent Company and that the beneficial owner, Red Bull Vitamin Drink Co., Ltd, uses the domain names in connection with its valid and subsisting licensing agreement.
Held (majority view): The Respondent failed to prove that she was and continues to be an employee of Red Bull Vitamin Drink Co. Ltd. The Respondent failed to substantiate her claim that Red Bull Vitamin Drink Co., Ltd has the exclusive right to use the RED BULL trademarks in mainland China. The Supreme People’s Court of China previously declined to accept the authenticity of the purported 50-year license agreement for the RED BULL. The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names. The Respondent targeted the Complainant’s trademarks when she acquired the disputed Domain Names and registered them in bad faith.
Dissenting opinion: There is insufficient evidence to conclude that the Respondent had not been the employee of Red Bull Vitamin Drink Co. Ltd since acquiring the disputed Domain Names or that the purported license agreement was inauthentic. The court decision referenced by the majority decided the ownership of the RED BULL trademarks in China but the authenticity of the purported licensing agreement was not conclusively determined. The Parties’ complicated dispute regarding the 50-year licensing agreement (especially the new evidence) is more appropriately resolved through a full trial in other legal proceeding than in an expedited administrative case.
Complainant’s Counsel: Internally represented
Respondent’s Counsel: Han Kun Law Offices, China
Buttkicker Gets Butt Kicked
Complaint Denied (RDNH)
Panelist: Mr. Michael A. Albert
Brief Facts: Complainant is in the business of consumer electronics and apparel. Complainant has rights in the BUTTKICKER mark through its registration with the USPTO since 2003. Respondent registered the disputed Domain Name on Sept. 30, 1996 and planned to use the domain name in connection with a smoking cessation program developed by Respondent’s father, wherein word “butt” can refer to a cigarette butt, while “kicker” refers to the common phrase of quitting smoking by “kicking” the habit. Currently, the disputed Domain Name has been passively held.
Held: Respondent provided multiple documents as evidence in support of the smoking cessation program, including an expired USPTO application and online description of the program/device. Therefore, the Respondent has rights and legitimate interests in the disputed Domain Name under Policy. Also the Respondent’s registration of the disputed Domain Name predates Complainant’s first claimed rights in the BUTTKICKER mark. In such circumstances, the Complainant cannot prove registration in bad faith in terms of the Policy.
RDNH: The Complainant knew or should have known that it was unable to prove either that Respondent lacks rights or legitimate interests in the <buttkicker .com> Domain Name or that Respondent registered and is using the disputed Domain Name in bad faith. The most glaring evidence for this conclusion is that the Domain Name was registered a decade before Complainant’s trademark rights came into existence. It is logically impossible for the registration to have been made with the intent to infringe on trademark rights that did not yet exist. Accordingly, the Panel finds that reverse domain name hijacking has occurred.
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Roberto Ledesma of Lewis & Lin, LLC, New York, USA
Turkish Car Company’s Complaint Not Up to Speed
Complaint Denied (RDNH)
Panelist: Mr. Matthew Kennedy
Brief facts: The Complainant is a Turkish company founded on June 28, 2018 for the purpose of producing automobiles. The Complainant holds multiple trademark registrations in Turkey and the European Union containing the element TOGG. “TOGG” is an acronym formed by the initials of the first four words in the Complainant’s company name – TÜRKIYE’NIN OTOMOBILI GIRIŞIM GRUBU. The Complainant currently uses <togg .com.tr>, where it provides information about itself and its planned automobiles. The disputed Domain Name has a registration date of January 2003. The Complainant purported to withdraw the Complaint after the commencement of the proceeding but the Respondent objected to the withdrawal.
Held: The Panel declined to terminate the proceeding. Termination would leave the Complainant free to refile a complaint, whereas continuing will give the Respondent an opportunity to obtain findings on the merits of the Complaint. The disputed Domain Name was acquired by the Respondent in 2014, five years before Complainant obtained its earliest trademark registrations. Obviously, the Respondent could not possibly have had the Complainant or its marks in mind in 2014 when it acquired the disputed Domain Name.
RDNH: The Complainant was represented by legal counsel. The Complaint specified the creation date of the disputed Domain Name, which was 16 years before the earliest registrations of the Complainant’s trademarks in March 2019. The Complainant at best launched this proceeding without addressing the critical issue in the case and knowing that it could not succeed in its Complaint under any reasonable interpretation of the Policy. Therefore, the Panel declared that the Complaint was brought in bad faith and constituted an abuse of the administrative proceeding.
Complainant’s Counsel: Gün + Partners, Turkey
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States
Don’t Confuse Your B&B with Your BNB, or AirBNB
Panelist: Mr. Blackmer, W. Scott
Brief Facts: The French Complainant operates hotels & restaurants, has a portfolio of more than 500 hotels in France, Germany, Italy, Spain, Portugal, Belgium, Switzerland, Poland, Austria, Slovenia, the Czech Republic, and Brazil. The Complainant holds multiple trademark registrations for B&B Hotels and similar marks since 1990 and operates online through multiple domain names, including <hotel-bb .com> (1998), <hotel-bb .tm.fr> (1998), and <hotel-bb .fr> (2000). The disputed Domain Name was created on July 26, 2001 by a U.K. resident, who has parked the domain name at DAN .com for sale, with a minimum offer of GBP 4,997.
Held: The disputed Domain Name is composed of the English dictionary word “hotel” and the string “bnb”, a variation of the common acronym “b&b”, which stands for “bed and breakfast”. Those words are very common on Internet travel websites. The less distinctive the mark, the harder it is to establish the likelihood that a similar, descriptive domain name was chosen for its trademark rather than dictionary value. The problem is that the textual elements of those marks are dictionary words or acronyms that are very commonly used, and the Complainant is neither globally known nor uniquely associated in the travel industry with hotels and bed and breakfasts. The Respondent’s intention of selling the Domain Name is not in itself proof of bad faith and no indication that the Respondent is a competitor or serial cybersquatter. Therefore, no Bad Faith is proved against the Respondent.
Complainant’s Counsel: Fiducial Legal By Lamy, France
Respondent’s Counsel: Self-Represented
UDRP Lights On, But Nobody Home
Panelist: Mr. David E. Sorkin
Brief Facts: Complainant was founded in 1917 as Wisconsin Power and Light Company, but later the name changed to Alliant Energy Corp. The Complainant claimed as having expended significant sums of money and substantial effort promoting and advertising its goods and services under the WISCONSIN POWER AND LIGHT COMPANY mark. The members of the public throughout Wisconsin and Iowa “continue to associate” the mark with the Complainant and its goods and services. Complainant alleges the Respondent has used the disputed Domain Name, without any authorisation or licence for a website in Complainant’s name, presumably in support of Respondent’s fraudulent scheme.
Held: Complainant does not own any Trademark rights in the name, therefore, relying on unregistered or common law rights in the mark. Based on the manner in which Complainant has used and claimed public recognition of its mark, it appears that Complainant no longer uses that mark in a trademark or even a trade name sense, having shifted to ALLIANT ENERGY, more than twenty years ago. Therefore, the Complainant has not proved that it has the rights in a relevant mark in terms of the first clause of the Policy. The Panel reaches this conclusion reluctantly, as it appears fairly clear that Respondent lacks rights or legitimate interests in the disputed Domain Name and that Respondent registered and is using the domain name in bad faith.
Complainant’s Counsel: Thomas L. Holt of Perkins Coie LLP, Illinois, USA
Respondent’s Counsel: No Response
Gooooal! Beckhams Score a Domain Transfer
Panelist: Mr. Warwick A. Rothnie
Brief Facts: The Complainants are wife and husband. The first Complainant started her “Victoria Beckham” fashion label in 2008 and her fashion products are offered for sale from an official website and are available in more than 450 stores in 50 countries worldwide. The second Complainant is a former English footballer who has worked with world-leading fashion and lifestyle brands. He is the owner of two registered trademarks in the United States – “BECKHAM” (since 2007) in classes 9, 16, 25 (includes clothing), 28, and 41 and another “BECKHAM” (since 2012) in Class 3 (which includes fragrances). The U.S. Respondent registered disputed Domain Name on July 8, 2020 and it resolves to a website offering competing fashion products. The products on offer from the Respondent’s website are not products made or offered by the First Complainant’s business or endorsed by the Second Complainant. By clicking on the link on the website “Fragrances” took the browser to another website which in addition to offering for sale fragrances offered other fashion items including a swimsuit range under the label “Victoria Beck”, which is not used by or associated with either of the Complainants.
Held: Consolidation of the Complaint is appropriate as the Complainants’ share a common surname “BECKHAM”, which has been registered by the second Complainant as a trademark (in respect of clothing, fragrances and fashion accessories). The disputed Domain Name was registered long after the trademark registration and also well after the first Respondent’s fashion label was launched and had gained widespread recognition in both the United Kingdom and the United States. The use of a confusingly similar domain in connection with competing or rival goods does not qualify as use in good faith under the Policy. Bad faith is also demonstrated by the title of the website “BECKHAM® Official Online Boutique”, which is a misrepresentation that the operator of the website is the owner of BECKHAM registered trademark.
Complainant’s Counsel: Demys Limited, UK
Respondent’s Counsel: Self-Represented
A Dog of a Domain Name Transferred
Panelist: The Honorable Charles K. McCotter, Jr. (Ret.)
Brief Facts: The Complainant markets and sells hair care products and other related products since 1919 under the WAHL mark throughout the United States and in 165 countries worldwide through retail stores and online retailers. The trademark “WAHL” was registered with the USPTO in November 1985. The Respondent registered the disputed Domain Name on May 18, 2021. The website at the disputed Domain Name displays several sponsored hyperlinks including links that display the WAHL mark and also terms related to the Complainant’s products.
Held: The Respondent is neither licensed or authorized to use the Complainant’s WAHL mark nor is commonly known by the disputed Domain Name. The Respondent does not have rights or legitimate interests in the disputed Domain Name because he doesn’t use the disputed Domain Name for a bona fide offering of goods or services or legitimate non-commercial or fair use under Policy. Rather, the Respondent registered and uses the disputed Domain Name to display third-party commercial hyperlinks and thereby attracts users to its webpage for financial gain. Use of a confusingly similar domain name to display third-party commercial hyperlinks is evidence of bad faith under the Policy.
Complainant’s Counsel: Joshua S. Frick of Barnes & Thornburg LLP, Illinois, USA
Respondent’s Counsel: No Response
Yes We Can, Take Away Cybersquatted Domains
<obamapresidentialcenter .com>, <thebarackhobamapresidentialcenter .com>, <thebarackobamapresidentiallibrary .com>, <barackhobamapresidentialcenter.com>, <barackhobamapresidentialcenter .org>, <thebarackhobamapresidentialcenter .org> and <thebarackhobamapresidentiallibrary.com>
Panelist: Mr. Clive L Elliott Q.C. (Chair), Mr. Ho-Hyun Nahm, Esq., and Mr. Professor David Sorkin
Brief Facts: Former United States President Barack H. Obama owns common law rights to the marks “BARACK OBAMA” & “OBAMA” and has licensed use of Complainant’s Marks to the Complainant, the Obama Foundation. Two Domain Names were registered shortly after President Obama became a front runner for the Democratic Party in the 2008 presidential election, and the other five Domain Names were registered immediately after President Obama was inaugurated as the 44th President of the United States. The Respondent claimed that Complainant was established in 2014, five years after the registration of the Domain Names. The Respondent further claimed he registered the Domain Names to use as free speech forums.
Held: Long before the Respondent registered the Domain Names, the OBAMA Marks had become distinctive and famous through President Obama’s extensive public promotion and use of the OBAMA Marks in U.S. commerce in connection with advertising and providing a wide range of services and activities, including having authored several books. Therefore, former President Barack Obama owns common law rights in the “OBAMA” Marks. The disputed Domain Names resolve to pages displaying third party links and no legitimate use is evident. The Respondent registered the multiple Domain Names in bad faith opportunistically since the disputed Domain Names were registered in anticipation of former President Barack Obama’s political career.
Complainant’s Counsel: James R. Davis, II of Perkins Coie LLP, District of Columbia, USA
Respondent’s Counsel: Self Represented
Instagram UDRP Goes Up In Smoke
Panelist: Mr. Remco M. R. van Leeuwen
Brief Facts: The Complainant is currently a well-known online photo and video sharing social networking application. The Complainant’s application launched on October 6, 2010 and its first EU trademark was registered on March 15, 2012. The Complainant was however, named Burbn Inc. until October 2010, when it renamed to Instagram. The Respondent registered the disputed .nl Domain Name on December 22, 2010, and at that time the .com was not owned by the Complainant. The Respondent submitted that while he does not question Complainant’s current popularity, in 2010 the Complainant was hardly known in the United States, let alone in the Netherlands and that it was profoundly unforeseeable that Complainant would subsequently gain worldwide popularity. The Respondent claimed that he registered the Domain Name for a cannabis courier service under the name “Insta Gram”, referring to a “gram” of cannabis.
Held: The Respondent provided two affidavits to demonstrate that he had been making preparations to use the Domain Name in connection with a bona fide offering of goods or services, prior to notice of the dispute. Nevertheless, the Panel noted that insufficient information was provided by the Respondent such as documentation showing steps taken to bring his business plan to fruition over the past 10 years. There was insufficient evidence before the Panel to determine whether Respondent unfairly sought to take unfair commercial advantage of Complainant when registering the Domain Name. There are questions of fact here that require resolution of a kind that is better suited for a court of law,
Complainant’s Counsel: Hogan Lovells (Paris) LLP, France.
Respondent’s Counsel: Houthoff Coöperatief U.A., the Netherlands.
Tags: WIPO, Denied, Social Network
A Vaccine Trademark Registration Is Not Enough
Panelist: Ho-Hyun Nahm, Esq., Panelist
Brief Facts: The Complainant is a technology company specializing in storage and delivery of vaccines, having rights in the “VITRIVAX” mark. The trademark has a recent registration of August 2021 showing use since October 31, 2018, but the Complainant claimed common law rights since 2014. The Respondent is the vice president of a Company that develops thermostable powders, including vaccines under the “VITRILIFE” mark and registered multiple websites with variations of that mark. The Respondent registered the disputed Domain Name on February 08, 2018 to prepare to promote vaccine materials while it awaits FDA approval of its product.
Held: To establish unregistered or common law trademark rights for purposes of the UDRP, the Complainant must show that its mark has become a distinctive identifier which consumers associate with the Complainant’s goods and/or services. The Panel finds that merely showing the date of the first use of the name ‘VitriVax’ based upon a press article, coupled with the additional material from the Complainant’s website is insufficient to establish Complainant’s common law rights prior to the registration of the disputed Domain Name. The USPTO records otherwise show the first use in commerce by the Complainant being October 2018, while the disputed Domain Name has prior registration date. Therefore, the Complainant has failed to establish that the Respondent registered the disputed Domain Name in bad faith.
Complainant’s Counsel: Laila S. Wolfgram of Polsinelli P.C., Missouri, USA
Respondent’s Counsel: Cy Bates, California, USA
The Internet Commerce Association is pleased and excited to announce that, commencing today, August 23, 2021, the ICA will be offering a free weekly UDRP Case Summary Digest by email. UDRP cases of note will be summarized weekly and sent out every Monday, beginning today.
The ICA believes that this new service will provide an additional and helpful resource for UDRP practitioners, UDRP panelists, and domain name registrants to assist them in keeping current on new cases of note as they are released. While WIPO and NAF send out daily emails listing newly decided cases, it is a time-consuming challenge to distinguish from among the many routine cases the few which are noteworthy.
We are pleased to welcome Mr. Ankur Raheja as the Editor of the ICA’s new weekly UDRP Case Summary service. Ankur has practiced law in India since 2005 and has been practicing domain name law for nearly ten years, representing clients from all over the world in UDRP proceedings. Ankur Raheja is an accredited UDRP panelist with ADNDRC (Hong Kong) and MFSD (Italy). Previously, Ankur worked as an Arbitrator/Panelist with .IN Registry for six years. We are grateful to Ankur for undertaking this project to identify and summarize noteworthy UDRP decisions as they are published, which we hope will be a benefit for all who wish to keep up-to-date with UDRP jurisprudence. Ankur will be sending tweets with the highlights of individual cases of note and will also be preparing somewhat longer summaries of noteworthy cases for the weekly UDRP Case Summary Digest which is delivered by email.
To sign up for the ICA’s free weekly case summary digest service by email, please click here, and please make sure to select the “UDRP Newsletter” field. To receive Ankur’s tweets during the week with selected case highlights, follow @ICAdomains on Twitter.
Panelist: Mr. Petter Rindforth
Australian based Complainant claimed usage of mark BrickWorks since 1934 but had a recent Trademark registration of 2018. Respondent had registered the domain name in 1997 but was not making active use of the domain name, though was listed as Brickworks in business documents from third-parties and also for email communication. Proper evidence in support made available by the Respondent.
Held: The disputed domain name is a common and descriptive term. The Respondent provides masonry services and utilizes the domain name to communicate with customers and vendors. Respondent is commonly known by the <brickworks.com> domain name under the Policy. No evidence adduced by the Complainant in relation to common law rights in the mark since 1934. No registration in Bad Faith. The Panelist held that the Doctrine of Laches does not apply to the UDRP because the remedy under the UDRP “is not equitable”, whereas laches is an equitable remedy. Complaint Denied.
Panelist: Mr David H. Bernstein
The domain name VOCL.com was purchased on March 09, 2021 and on March 11, 2021 the new owner, Mr. Lindell, filed for a trademark registration and expressed his intentions to run a social media service called VOCL.com. On getting served with C&D notice soon thereafter by an existing VOCAL trademark owner, the disputed domain was transferred from Lindell to a new owner, ‘Epik’ at 75% of the original purchase price. ‘Epik’ initially claimed that it had been the original owner and that there was no Bad Faith as Mr. Lindell never acquired the domain name. Soon thereafter, the Respondent under a sworn affidavit admitted the facts as to the change of hands in March 2021.
Initially, the Panelist analyzed the role of a domain Registrar – Epik – as the Respondent in the matter and noted that these relationships create an inherent conflict of interest since the Panel relies on the Registrar to provide accurate information in response to the verification request from the dispute resolution provider. Further, the information provided in the Response was materially inaccurate and it was only after the Panel issued procedural orders seeking clarification that the Respondent corrected the record and admitted the factual circumstances. Even then, there remained unexplained inconsistencies in the documentary material submitted by the Respondent. The Panelist asked WIPO to share the decision with ICANN and questioned if there should be restrictions on Registrars, their agents or employees in owning domain names. Domain transfer ordered.
Note: Similar requirement is already there for .IN Registrars as an Advisory: Sales of .IN Names restricted for Registrars– https://www.registry.in/registry-advisory-la01sales-of-in-names-by-registrars.
Complaint Denied with RDNH
Panelist: Mr. Ho Hyun Nahm, Esq., (Chair), Gerald M. Levine, Ph.D., Esq., and Fernando Triana, Esq.
GoSecure Inc. a computer and data security company, had a recent USPTO trademark registration dated June 28, 2016. The domain name however, pre-existed it, having been registered in 1999 as a generic combination for use in relation to Respondent’s business related to security and biometrics. The domain name was in active use from 2002-11 and later for email services. The Complainant alleged phishing, passive holding, incomplete whois, renewal of domain name since 2016 is in Bad Faith and Respondent’s offer to sell at an excessive price. Respondent denied these allegations and provided evidence as to its previous use and future plans.
The domain name was registered and used prior to the Complainant’s trademark rights, though recently unused for an active website and only currently used for email operations. There was no evidence of any phishing. Respondent additionally demonstrated that it maintains a blog by a similar name and is developing a project for the website. This evidence supports Respondent’s claim of making “demonstrable preparations to use” the domain name in terms of UDRP and hence Legitimate Interests in the domain name. The Panel determined that this was a “Plan B” case, as the Complainant initiated these proceedings only upon failed commercial negotiations and was therefore “Reverse Domain Name Hijacking.
Panelist: Mr Robert A. Badgley
Indian Complainant had applied for ‘2DG’ Trademark in May 2021, after it announced 2DG as the name for an anti-Covid drug. The Complainant already had rights in ‘2DeeGee’ since 2015. The Complainant claimed that it is a large and successful company and that its principal markets include the United Kingdom. The UK-based Respondent registered <2dg.com> in 2002 and claimed to own 100 more 3-character domain names.
The Panel concluded that Complainant has failed to prove that Respondent registered the domain name in bad faith. Complainant claimed that Respondent registered the domain name with actual knowledge of Complainant’s rights in the 2DG mark but there is absolutely no evidence in the record of the degree of the renown of the marks or that the Complainant ever used the marks prior to 2002, when the domain name was registered. Panel further noted domain names containing only three letters are generally regarded as desirable for a variety of reasons. Complaint denied.
Zak Muscovitch, General Counsel of the ICA, was invited by the World Intellectual Property Organization (WIPO) to present at its symposium on the occasion of the 20th anniversary of the UDRP held in Geneva on October 21, 2019. This invitation was a rare opportunity to share the perspective of domain name investors to an audience of UDRP panelists. UDRP panelists are required to peer into the souls of domain name investors to determine whether the domain name investors’ actions are badly intentioned or not. UDRP panelists are usually quite familiar with, and sympathetic to, the views of trademark holders, as many indeed come from the trademark bar. Yet UDRP panelists too often have little familiarity with the domain name industry or with the perspective of the domain name investors whose actions they are judging from afar.
Presenting on two panels, Muscovitch explained that domain name investors are important stakeholders in the UDRP process and are not cybersquatters. Further, he made the point that the UDRP is not intended to only serve trademark interests, but also to protect the rights of registrants. This is a crucial and precarious balance and the UDRP must never fall prey to attempts to tilt it further in favour of trademark owners.
Since its establishment 20 years ago, the UDRP has proved to be a double-edged sword. On one hand, domain investors have, most of the time, been able to successfully use the UDRP to avoid court proceedings and to save their domain names from predatory attempts by trademark owners to seize valuable generic domain names. But on the other hand, over the years we have seen many very troubling and unfair decisions. Indeed, over the course of 20 years, we have even seen UDRP panelists change their mind about what is fair, transferring domain names in the past which they would not transfer now. Over the years, some panelists have often begrudgingly begun to accept that investing in inherently valuable and generic domain names is a bona fide business and is entitled to protection.
After many years of zealous advocacy by domain name lawyers and by the ICA, we are finally at a point where the UDRP has some degree of consistency, credibility, and stability, though we do continue to on occasion see very troubling outcomes and approaches by panelists. Moreover, there are numerous areas where procedural reform is required, as set out in our UDRP Reform Platform of 2018.
Yet despite that, there are those amongst the IP bar that are tempted to try to re-jig the UDRP to increase its breadth and scope, thereby directly harming domain name investors. One of the ways that has been floated is to change the “conjunctive” required bad faith registration AND bad faith use, to “bad faith registration OR bad faith use”. This could mean that a registration that was clearly registered in good faith, for example, prior to any trademark rights arising, could be taken away in the event of an unintended instance of a bad PPC link, or even perhaps, due to non-use.
Muscovitch made it clear to the assembled panelists, that in his view, this would be a severe and ill-advised change to the UDRP that would upset the 20 years of case law and balance that has been achieved to date. Moreover, attempts to introduce such radical substantive changes to the UDRP by trademark owners would surely be met with corresponding demands from registrants. In the ICA’s view, reform can be introduced to the UDRP via procedural changes and by clarification in the interpretation of the UDRP text rather than by changing its text. After hearing the ICA’s submissions, it appears that most of the assembled UDRP panelists have agreed – the UDRP should not see such radical changes.
The ICA would like to extend its gratitude to WIPO for inviting the ICA to participate in this important symposium on the UDRP and to thank the assembled panelists for the open and fair hearing that was received. The ICA believes that collaborative and constructive efforts to improve the UDRP remain possible without introducing any measures that would degrade investors’ ability to successfully defend their investments. The ICA looks forward to the work of the ICANN Working Group on the UDRP which will get underway shortly. The ICA hopes that trademark interests and investor interests alike will work together to ensure that balance exists in the UDRP as it was intended.
In the recent case concerning Chatroulette.org , the Panel demonstrated the responsible and prudent approach in evaluating evidence in the UDRP. The Panel stated as follows:
“The Panel takes the view that the Respondent’s denial of knowledge of the existence of the Complainant and his trade mark at that date is credible enough to require more from the Complainant to overcome. The Panel concludes that it would be unsafe on the evidence before it to reject the Respondent’s denial and conclude that the Respondent intentionally set out to acquire the Domain Name in bad faith to target the Complainant.” [emphasis added]
A Panel’s mandate and indeed its sole jurisdiction, is to only order domain names to be transferred in “clear cases”. It is crucial to recall what WIPO Panelist David Bernstein stated 18 years in his presentation to the WIPO, and what remains equally important today:
“Because of the truncated nature of the proceedings, electronic dispute resolution is not well suited to cases with hotly disputed factual assertions, requiring complex credibility determinations. Given the absence of a live hearing, cases that turn on disputed facts should instead be resolved in court, where discovery and cross-examination can permit a fact finder to navigate the shoals of conflicting testimony. [emphasis added]
A responsible and prudent UDRP panel that upholds the spirit and intent of the UDRP, will generally refrain from jumping to conclusions without an adequate evidentiary basis. This can sometimes be difficult to do, as UDPR panelists are often wise and experienced and may be tempted to resolve a dispute that otherwise should be left unresolved, since the UDRP is simply not equipped to handle disputes where there are competing rights or contested versions of material facts (See also for example, Quarterview v. Quarterview Co. Ltd., eResolution Case Numbers AF-0209a and AF-0209b) and Adaptive Molecular Technologies Inc. v. Priscilla Woodward (the existence of significant factual and legal issues makes this case inappropriate for resolution under the Policy).
The ICA acknowledges and appreciates the efforts and wisdom of the distinguished Panel in the Chatroulette.org case, which consisted of Tony Willoughby (Presiding Panelist), Alexandre Nappey, and Fernando Triana. They upheld the fairness of the UDRP procedure and employed the appropriate circumspect approach.
The Internet Commerce Association (ICA), a non-profit trade group representing the domain industry, applauds the World Intellectual Property Organization (WIPO) for removing misleading guidance from the newly released updated version 3.0 of its Overview of WIPO Panel Views on Selected UDRP Questions that in the previous version had granted undeserved legitimacy to a misconstruction of the UDRP commonly known as the Retroactive Bad Faith theory. Read more
Washington, DC; December 11, 2015 —
The Internet Commerce Association today released the following initial statement in regard to the November 30 decision of the WIPO Administrative Panel in the case of Camilla Australia Pty Ltd v. Domain Admin, Mrs Jello, LLC (Case No. D2015-1593; http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2015-1593):
The egregious three-member panel decision in this Uniform Domain-Name Dispute-Resolution Policy (UDRP) dispute departs substantially from prevailing UDRP practice and relies on criteria inconsistent with those set forth in the UDRP as adopted by ICANN. This decision demonstrates once again that review and reform of the UDRP by ICANN is an urgent priority.
“The panelists on the Camilla.com dispute disregarded 15 years of UDRP practice, rewrote and distorted the Policy, and set an impossible standard for domain registrants to meet to avoid the loss of their valuable generic domains” said ICA Board member Nat Cohen, President of Telepathy Inc. “If this decision stands and guides panelists in other future cases, it would undermine the rights of millions of domain owners, undercut much of the domain industry, and would encourage further abuse of the UDRP system”, added Cohen.
The decision states that “the Panel accepts that the Respondent did not and could not reasonably have known of the Complainant’s trademark when it registered the disputed domain name in May 2009”. Based on prevailing and proper UDRP practice, that should have ended the analysis; the Respondent clearly could not have had bad faith intent when it registered the domain. Indeed, in ICA’s view, at that point the Panel would have had clear grounds to cite the Complainant for attempted reverse domain name hijacking. Complainant received its Australian trademark more than two years after the U.S.-based Respondent registered the domain, and only has a pending “intent to use” application for a U.S. trademark.
Instead, the panelists created new and unprecedented duties for registrants, proclaiming that a “registrant of domain names that adopts a PPC revenue model must ensure that after registration the disputed domain name is not used in a deceptive or confusing manner with new or developing trademarks” and a “registrant of domain names from the moment of acquisition must be prepared to take necessary steps to ensure that the PPC links generated by algorithm do not infringe existing trademarks, or any trademarks that may emerge in future”. (Emphasis added.) The panel’s decision would place a burden on domain registrants of generic words to monitor ongoing trademark registrations in every nation in the world. It would also require them to influence the proprietary ad placement algorithms of Yahoo!, Google, and other major online ad providers. Both of these new responsibilities are nowhere to be found in the UDRP rules and are impossible to meet.
The Camilla decision overthrows an important balance between trademark and domain registrant rights and provides a blueprint for any future trademark registrant to steal valuable generic domains without paying market value by simply initiating a UDRP action.
“While ICA respects trademark rights, the UDRP cannot be allowed to become a vehicle for legitimizing domain theft,” said Cohen.
The decision of whether to appeal this UDRP decision lies with the registrant. ICA believes that this decision should be overturned under the U.S. Anticybersquatting Consumer Protection Act (ACPA). If an appeal is filed, ICA will give full consideration to providing support to help persuade the court that the panel’s finding of bad faith registration and use is contrary to U.S. law.
ICA and its Counsel and legal advisory group are continuing to review the decision and may issue a further statement once that review is completed.
On November 30th ICA filed its comment letter regarding the “Preliminary Issue Report on a GNSO Policy Development Process to Review All Rights Protection Mechanisms in All gTLDs” that was published for public comment on October 9, 2015. ICA’s complete comment can be viewed at http://forum.icann.org/lists/comments-rpm-prelim-issue-09oct15/msg00021.html, and all 24 filed comments are available at http://forum.icann.org/lists/comments-rpm-prelim-issue-09oct15/index.html.
The principal question raised by the Report was whether the review and possible adjustment of new gTLD RPMs and the review and potential reform of the UDRP should be combined or separated. On that key decision, our comment letter said that the RPMs should be addressed prior to the UDRP review for these reasons:
We believe that the RPM review and the UDRP review each constitutes a highly complex array of interrelated questions and judgments, and that trying to combine the two into a single mega-review will tax any Working Group (WG) inordinately.
In particular, the UDRP review will constitute the first comprehensive inquiry into ICANN’s oldest Consensus Policy. It may address structural issues; such as whether ICANN should enter into uniform contractual agreements with all UDRP providers, whether there should be clear boundaries to prevent individual dispute providers’ Supplementary Rules from influencing decisional outcomes, and whether an internal appeals procedure should provide an avenue for a ‘UDRP Supreme Court’ to address and reconcile disparate decisions by different providers on nearly identical fact patterns.
…Both domain registrants and trademark owner complainants deserve, after nearly two decades of unexamined use, a UDRP review and reform process that is accorded adequate time for comprehensive review and development of subsequent recommendations. This review of necessity must be preceded by the RPM review, as it was the intent of the GNSO Council in 2011 that the UDRP review be informed by that of the RPMs and by any changes made to them. Further, as staff notes at page 8 of the Report, one result of “this approach is the fact that community consideration of the more general overarching issue concerning the comprehensiveness of all the RPMs as a set of aggregate protections for trademark holders in all gTLDs, as well as the issue of whether any of the new RPMs should be considered Consensus Policies like the UDRP, will necessarily be postponed to the second phase of work”. Unlike staff, we do not view that consideration as a drawback but as a far more responsible approach than considering integration of any of the new gTLD RPMs in legacy gTLD without knowing whether or in what manner they may be altered.
We agree with staff that “One benefit of this two-pronged approach is better alignment of the timing of the work on reviewing the new RPMs with the operational reviews of the New gTLD Program (including the CCT Review) and, conceivably, a new PDP on New gTLD Subsequent Procedures”. We fully expect that there will be substantial interest in completing the RPM review prior to the opening of any second round of new gTLDs, and that consideration provides another reason for structural separation. If the RPM and UDRP reviews were addressed together, substantial pressure could arise to truncate the UDRP portion lest it delay the timing and adoption of final RPM recommendations. As a result this first-ever UDRP review could get short shrift and inadequate attention.
Many of the other groups and individuals who filed comments also took the view that the RPM and UDRP reviews should be separate, with the RPMs teed up first.
What did surprise us was the reluctance of the trademark community to even contemplate a review of the UDRP, much less consider any changes based on nearly twenty years of experience with it.
The International Trademark Association (INTA) asserted that it is “is strongly opposed to opening the Uniform Dispute Resolution Policy (UDRP) to review as the UDRP has been functioning efficiently and well for over fifteen years. It is important to maintain this effective mechanism which combats the most blatant instances of cybersquatting within the domain name system. Any review or subsequent modifications could jeopardize the benefits that the UDRP is intended to provide to trademark owners.” Having attended INTA conferences along with thousands of others, and seen the money invested in global branding as well as the sector’s political influence, it strains credulity to believe that trademark owners could be “rolled’ in the course of a UDRP review.
ICANN’s Intellectual Property Constituency (IPC) warned “that the complexity of any review would be immense and the drain on resources considerable, with a risk of creating new problems via an overly complicated review process… the IPC has a serious concern that if a review were to be carried out, there is a risk of a polarization of views into two camps – each with a fear that the other camp would either dilute or overly strengthen the UDRP. Improvements sought by one side would be seen as potentially abusive to registrants, improvements sought by the other as potentially diluting the effectiveness of a mechanism for resolving disputes efficiently… if a review of the UDRP as a policy is to be considered, an “Expert Group” should be assembled to carry out this review.” For ICA’s part, we think that, just like war is too important to just be left to the generals, UDRP review and reform is too important to just be left to “experts” and must include participation by those with broader views of the UDRP’s impact on domain registrants and free expression, among other key considerations.
And UN agency and accredited UDRP provider the World Intellectual Property Organization (WIPO) opined that “the UDRP continues to function as intended. In its harmonized criteria and universal application, this anti-cybersquatting mechanism has come to be recognized as an international policy success… Destabilization of the predictable UDRP framework may have a range of unintended consequences. It would disrupt the body of precedent carefully developed by hundreds of panelists from across jurisdictions in tens of thousands of cases… Each day, the UDRP demonstrates the flexibility to meet the demands of an evolving DNS; it does not need system-wide updates that would imprudently limit this flexibility”. To the contrary, domain investors would respond that this “flexibility” is code for a lack of any binding precedent that makes the UDRP more of a casino game in a world of proliferating UDRP providers.
We are pleased that ICANN’s Business Constituency, of which ICA is a member, took a more balanced approach, stating, “While the BC believes that the UDRP is working well overall, it now seems timely to engage in a review of its performance with an eye toward considering possible improvements, so long as that UDRP review commences after completion of the RPM review.”
In response to the trademark community’s message of opposition and excessive caution, ICA added this final point to our comment’s Executive Summary, to wit:
Finally, we have strong disagreement with the view expressed by a minority of commenters that the UDRP review anticipated by the GNSO Council’s Resolution of December 15, 2011 should not proceed at all, and that any such undertaking would be unduly arduous and dangerous. The UDRP is the only ICANN Consensus Policy that has never been reviewed. Like any human undertaking, it is not perfect and was drafted by individuals who could not have known how it would be implemented in practice. Any UDRP review should of course be fully informed by the actual record of UDRP practice and experience of participants, and should proceed carefully. But we are confident that a good faith UDRP review that considers the legitimate rights and interests of both registrants and complainants, as well as related public policy issues, can produce a more balanced and consistent system that preserves the fundamental virtues of the UDRP while yielding modifications that benefit all affected parties.
ICA looks forward to participating in both the RPM and UDRP reviews. ICANN staff is scheduled to deliver a Report summarizing comments and suggesting next steps by December 10th. Following receipt of that report, the GNSO Council will decide on a way forward and, if ICA’s and other commenters’ proposed procedure is followed, will consider a draft Charter for an RPM review working group in the initial months of 2016.
Throughout the coming review processes, ICA will be an active participant seeking to protect the legitimate rights and interests of domain investors and developers and to bring greater balance between trademark and domain rights.
Here’s the rest of our comment letter’s Executive Summary: