Conflicts: Under ICANN Policies
On January 1, 2000, by which time Network Solutions was no longer the monopoly registrar for the generic TLDs, a new policy known as the Uniform Dispute Resolution Procedure (UDRP) went into effect. (Though one case, for worldwrestlingfederation.com, managed to get filed in December, 1999, before the official effective date.) This policy, promulgated by the new organization ICANN, completely changed the rules, allowing challenges to be made and adjudicated via accredited dispute resolution arbitrator panels. (Country code domains still have their own policies, which may or may not use the ICANN procedure, as discussed in the Foreign Objects page.) At that point some trademark owners claimed they were shafted by the policy, since it made a challenge more difficult and expensive. Such fears proved unfounded, as the decisions in the new system have been mostly in the trademark owners' favor.
Actually, by now, the UDRP isn't the only ICANN dispute resolution procedure. The new TLDs have brought with them new policies in addition to the UDRP (which applies to all of them also). So far, these have included:
And there are also some non-ICANN domain dispute policies that are modeled to some extent on the above, and are often adjudicated by the same providers:
Biased or Not?
My early assessment after looking at many of the decisions (which are online at the arbiters' sites) was that there was some pro-trademark-owner bias, but not to a totally unfair degree; domain name users can still retain their names against a challenge if they're making some sort of legitimate use of the name, though they fare worse if there's any taint of "cyber-speculating", where the domain was apparently registered to try to make money by reselling it. However, in many cases, the domain owner failed to provide any response to a challenge within the given time period, causing default rulings (which aren't automatically in the challenger's favor, but tend to be because no rebuttal is made to the assertions in the challenge), which has caused many questionable trademark claims to be upheld.
With time, however, my view of the ICANN process got less favorable. Of the different arbitration agencies a challenger can choose, WIPO (The World Intellectual Property Organization, an agency tied to the UN) has been the most pro-trademark-owner and anti-domain-owner, and as a result, challengers are increasingly turning to them rather than their more-balanced competitors. They're winning this business by showing a great deal of bias to trademarks, even weak ones over more-or-less generic names, over any other use a domain owner might be making. By now there have been lots of horrible decisions, some of them vigorously contested (not just the "respondent defaults" which produced some of the early bad decisions), in which WIPO arbitrators seemed to make up "bad-faith registration" out of whole cloth to satisfy the ICANN rules requiring this be proven. Panelists (for WIPO, and sometimes for their competiors) have granted forcible domain transfers over such things as geographical place names (barcelona.com), two and three letter abbreviations that could stand for lots of things (jt.com, hp.org), and trademarked names that arguably have entered the language as common words and were being used noncommercially by the domain owner (rollerblade.net).
It's fairly common for panelists, especially when faced with respondent defaults and/or respondents who have lost many UDRP cases and domain-related lawsuits in the past, to ignore the need for the complainant to prove its case, and just rubber-stamp a decision composed of boilerplate text from other decisions, where all the elements are merely assumed to be true with no justification needed. For instance, the meetups.com decision saw no need to inquire into whether the complainant had actually achieved "secondary meaning" to their descriptive name in the fairly short time they've been operating, in order to gain common-law trademark rights to it (their application for a registered trademark is still pending, and hence can't be relied upon to show rights); rather, the decision just said that such rights exist, with the only explanation of this leap of reasoning being a link to an earlier case that found rights to a pending trademark, but in that case the panelist had found the name in question to be "suggestive" rather than "descriptive", and hence deserving of a higher degree of protection with no secondary meaning required. In contrast, "meetup" seems to me to be descriptive, but this issue wasn't even raised.
Not everything has gone against respondents, however. A computer game player got to keep sting.com despite a challenge from the singer of that name; the arbitrator finally accepted in this case the argument that the name was a common English word with many other uses. Also, a fan site of rapper Tupac Shakur got to keep Tupac.com as its address, though some other Tupac-related domains were transferred in other challenges because their registrants were just stockpiling them for commercial purposes rather than actually operating a fan site there. Another case showed that the panelists are, at least sometimes, willing to let people keep domains corresponding to their own names, even when they happen to coincide with a trademark. Here, somebody named A. R. Mani got to keep armani.com against a challenge by the owner of the Armani trademark.
... the bad...
On the other hand, another case, of accessaz.com, is on the face of it a straightforward cybersquatter case -- the registrant of that domain did it shortly after a site named accessarizona.com went into operation, and explicitly promoted the domain in a domains-for-sale site as valuable because it might get mistaken traffic destined for that other site -- but what I found interesting in the case is some of the reasoning of the arbitrator. It seems that in a last-ditch effort to save the domain, the registrant changed tactics and claimed the domain was registered for the purpose of starting an e-commerce site devoted to "access" to everything from "a" to "z", and the use of "AZ", the postal abbreviation of Arizona, is mere coincidence (even though the registrant lives in Arizona). This thin disguise was easily defeated by noting the prior evidence of his intent to play on the popularity of accessarizona.com, which he had publicly displayed. But the arbitrator didn't stop there; he added that "it is simply not credible that an entrepreneur intending to set up such a web site would not have registered other similar domain names such as accessa2z.com, accessatoz.com, etc." I have to take umbrage at this; some people are still trying to use the domain name system in the manner it was originally created, by registering one domain and using it (and logical subdomains within it), not every domain under the sun that's anything like it. Maybe this guy "on trial" wasn't one of them, but the arbitrator's opinion tars with a broad brush everyone who fails to engage in such "pre-emptive cybersquatting" themselves; this makes their own ventures less serious in this judge's eyes. Will they decide I have less claim at rights to dantobias.com (regardless of that being my name) for not having also registered dantobias.net, dan-tobias.com, and a zillion other combinations? (I finally did break down and register dantobias.org, since I was vacillating about whether that or the .com one is more appropriate for my personal site, on which I may do a wide variety of things both commercial and noncommercial -- eventually, I settled the issue by getting dan.tobias.name for my "personal" stuff and dan.info for my "informational" stuff, but those weren't available at the time I registered the .com and.org names. Eventually, I let the .org version expire, and to date, nobody seems to have cybersquatted it, or legitimately registered it either!) I don't need all those other domains... one is enough (but I've got enough hypocrisy to grab several anyway... :) )! There are other people in the world named Dan Tobias... they're welcome to any remaining similar domains if they want them. I still believe in the original spirit of the Internet as a place to share and cooperate, not as a place to be greedy and grab everything you can.
Interestingly, another panelist in another decision, Clive Elliott, said that "It is unclear as to why the Respondent felt justified in registering these two additional domain names in order to protect its so-called rights," with regard to the respondent registering the .net and .org versions of a domain it already held as .com. In a rather strange decision, the panelist ordered the .net and .org domains transferred to the complainant (though the complainant was neither a network provider nor a nonprofit organization) while letting the respondent keep the .com.
...and the ugly
Another arbitrator statement I find disagreeable, though also in the course of an open-and-shut cybersquatting case, came in the msnbc.org case. Here, there was a clear famous trademark, and no sign of any sort of legitimate use on the part of the registrant (who in fact had nothing but a "Domain For Sale" notice at the address). So it would likely have been an easy decision on the part of any of the panels to award transfer in this case. But the particular panelist, Peter L. Michaelson, Esq., felt compelled to explain his reasoning further:
Apparently, he's more interested in not imposing "unfair" burdens on hypothetical Internet users who don't know the difference between the domain endings (e.g., that MSNBC is a commercial enterprise, not a nonprofit organization) than in not imposing unfair burdens on domain registrants who might, under this reasoning, get domains yanked that they do have legitimate uses for, just because they happen to be the same as somebody else's domain in a different top level domain. Taken to the ultimate conclusion, this attitude makes the existence of more than one top level domain totally useless, because this panelist thinks anyone with trademark rights to one domain should have pre-emptive rights over all other users in any other top-level domain.
In fact, in another case, a different panelist, David H Tatham, disagrees with automatic rights to all similar domains to anyone who registers one; he says "Similarity with existing domain names is not an offence under the ICANN Policy." That didn't help the respondent in the cadburyland.com case in which he made this statement, who was still found to have registered the name in bad faith, but it did show that the mere fact that the complainant owned cadburyland.co.uk didn't give them any special rights over other cadburyland domains beyond the rights to "Cadburyland" they might have through trademark registrations. So this goes against the implications of the above-quoted decision even though they both found for the complainant.
In many cases, the arbitrators seem to be inclined to grant anybody with any sort of trademark rights to a word or acronym unlimited rights to demand the transfer of all domains containing that word, regardless of what they're presently being used for or whether the registrant had even heard of the trademark before registering the domain.
Sometimes, the panelists even admit that they're not the proper people to be deciding whether valid, protectible trademark rights exist to a name that is the subject of a challenge -- but they go and order the transfer of a domain anyway! For instance, in the LatinChat.net case, the panelist said: "The terms Latin and chat are obviously generic terms. Whether combining the terms into LATINCHAT can create a protected name is better left to a court or trademark office tribunal." One would think that, given this, he would therefore deny the challenge in order that the challenger can bring the case in a court or trademark office tribunal if they find such action justified, but instead he ruled in favor of the challenger anyway. This was contradicted by a different panelist in the case of latinchat.org, filed and decided at just about the same time, where the registrant was allowed to keep that domain.
The contradictory decisions in these two latinchat cases indicate that the domain name dispute resolution process has a long way to go before it reaches a state of stability and consistency in which people can have a reasonable assurance, based on the facts of a case, of which side is going to win. In a legal system, such consistency is usually regarded as a desirable thing. If the system is consistent -- even if it's consistently unfair -- people can make plans within the system and have a reasonable expectation of not having their plans upset by a surprise decision against them; and if everybody knows the likely outcome of a dispute, fewer people will be inclined to engage in behavior that would put them on the losing side, and hence fewer disputes will break out in the first place, and fewer resources will be diverted away from productive activity and towards pursuing and defending against legal challenges. But if the system is inconsistent, people on both sides of any actual or potential dispute will have reason to believe they stand a chance of winning, and hence will keep going forward into the dispute without surrendering or settling; many resources will be devoted to these disputes; and until each one is decided, neither side in them will be able to make firm plans that won't have a risk of upset. And even when one dispute is resolved, others with similar situations won't be assured that their case will go the same way, so their own disputes can still rage on indefinitely. It's not a very good situation for anybody (except the lawyers).
The Just Plain Loony
The craziest domain challenge I've encountered so far in the ICANN files is one which was so ridiculous that even the normally pro-complainant panelist, James A. Carmody, appeared to be doing his best not to laugh his butt off as he swiftly rejected it. In the godspeaks.org case, the complainant was "Love Your Neighbor Corp." of Detroit, which challenged godspeaks.org (and a few other similar domains also owned by the respondent) on the basis of the complainant's registered trademarks "Love Your Neighbor" and "Love Thy Neighbor". Immediately, you can see that something does not compute, as the trademarks bear no relation whatsoever to the domain names being challenged, other than both being related to the Bible and religion.
In fact, the complainant here managed a "perfect score", failing to even allege, let alone prove, any of the three elements which must be proven to succeed at a domain challenge: that the domain is identical or confusingly similar to a mark belonging to the challenger, that the respondent lacks any legitimate interest in the name, and that the domain was registered and used in bad faith. The only basis of the complaint, in fact, was that the respondent's Web sites, and also the billboards placed by the respondent (you may have seen them; they're the ones with biblical quotes saying "I meant that -- God") sometimes use the phrase "Love thy neighbor," hence allegedly infringing on the complainant's trademark on the phrase. The panelist rightly stated that billboards were completely out of the jurisdiction of a domain dispute panel. As for the content of the Web sites, this may sometimes be relevant in showing good or bad faith in the domain use, but it's irrelevant in a case such as this where the domain doesn't even infringe on any trademark in the first place!
The panelist ends by saying "Complainant's allegations are not sufficiently comprehensible to be threatening or intimidating to Respondent and do not rise to the dignity of reverse domain name hijacking." This has to be an embarrassing decision for the complainant in this case, who has already lost several other domain disputes where they had better cases, for domains that were some variant of "LoveThyNeighbor" or "LoveYourNeighbor" -- although in those cases the domains actually did match the trademark in question, the panelists found this Biblical phrase sufficiently generic to allow for considerable use by other parties.
I have no idea what the examiner for the U.S. Patent and Trademark Office was smoking when he allowed that moron in Detroit to get a trademark on this phrase. The series of futile domain challenges from that company certainly don't seem very neighborly.
See this article about the case, which also notes that that Detroit loony has sued a Florida nonprofit organization with the domain lovethyneighbor.org, which survived an attempted snatch via the ICANN procedure, but is now having to defend their name in court. The defense should be very easy, given that the nonprofit organization was founded years before the complainant registered its trademark, and hence has a demonstrable prior use.
Losing My Religion...
Speaking of religious stuff, one case shows that the panelists are willing to recognize intellectual property rights in the name of a religion belonging to a central body representing that religion. In this case, the domain bahaiwomen.com was ordered transferred to the U.S. organization claiming to represent the Baha'i faith in the United States. I find such decisions troubling myself -- I consider religion to be a matter of personal conscience rather than something that ought to be used to build empires around the accumulation of property, intellectual or otherwise. Religions that try to use trademark, copyright, patent, and trade secret laws to protect their name and belief structure -- the Scientologists come quickly to mind in that regard -- are, by doing so, giving a strong indication that they are not true religions at all but are con games seeking money and power from deluded cult followers. (I'm not saying here that the Baha'i religion is a con game -- it's a legitimate religion as far as I'm aware -- but that makes it all the more unsavory that they would act in a manner similar to that of the scam artists!) Can you imagine any organization being able to successfully claim intellectual property rights to the names "Christian", "Jewish", or "Islamic"? A site promoting "Christian Women", "Jewish Women", or "Islamic Women" might offend some of the faithful of these religions, but wouldn't be a trademark violation. But even more importantly to the spirit of free inquiry, schismatic groups can emerge from any of these religions, with beliefs that oppose the present-day establishment, and are allowed under freedom of speech and press to promote their views. Many of the religious groups that are now part of the mainstream establishment got their start in that way, in an era when the Internet was not available as an option for communicating their views, but the Internet makes it even more feasible for any of today's dissidents to try to gather supporters. The establishment in past eras sometimes fought back by starting holy wars against the heretics and burning them at the stake for witchcraft; perhaps the modern method of filing intellectual property lawsuits is more civilized, but it's still an attempt to suppress free inquiry just like the more barbaric methods of the past were. If a group of Baha'i have a disagreement with their organization and form a splinter group, and set up an Internet site at reformedbahai.org (or something like that), would it be fair for the "parent group" to take their address away? This case gives them the precedent to do this.
And, in fact, that's exactly what has happened in a newer case, though this time it's the Seventh Day Adventists that used the UDRP to suppress the site of a schismatic breakaway group. The case found a protectible trademark right to the name "Seventh Day Adventist", and ordered the transfer of domains belonging to a "heretic" who claimed that God Himself ordered him to start a competing church.
Does The Top Level Domain Matter?
The panelists usually regard the rightmost portion of the domain name (.com, .org, etc.) to have no significance to the case. However, there have been a few exceptions where the TLD was considered of some importance.
When the Puerto Rican supermarket chain Pueblo challenged "their" name in .com, .org, and .net, they rolled to victory on the .net front (over a domain warehouser who wasn't really doing anything with the name other than trying to sell it, though he seemed to have registered the name as part of a bunch of town and city names, not to infringe on the supermarket), but were handed stunning defeats on the other two. Judge Perluss (who I mention some more below) was the panelist here, and showed uncommon sense in letting the operator of a noncommercial city guide to Pueblo, Colorado keep the pueblo.org domain, giving a decision that (in an extreme rarity) actually acknowledged the distinction in the domain endings: "The top-level domain "org" customarily is in usage by non-profit or "miscellaneous" entities and not by a supermarket chain such as Complainant's." The same judge also let a consulting company with "Pueblo" in its name keep pueblo.com, despite fairly minimal use of the domain (it used it for e-mail, but didn't have a Web site).
Another panelist with some clue as to the distinctions between the different TLDs is Kyung-Han Sohn, who in the solidworks.info case said: "Since there is a greater possibility that <.info> domain names are registered for non-business & non-commercial purposes such as dissemination of useful information unlike <.com> and <.biz> used for business & commercial purposes, necessity of layperson's free use shall be considered as well as protection of a specified person's exclusive right in interpreting 'Legitimate Interests' or 'Bad Faith.'" In other words, even where a name exactly matches the company name of a complainant, the use of the name by independent individuals or groups for the purpose of commentary is explicitly considered a valid use in a TLD not intended specifically for commercial use. The 2007 asml.info case also saw a value to having the .info version of a name go to a site with independent information about the referenced entity instead of being controlled by it.
Panelists considering the appropriateness of sites for their TLDs can cut both ways, however. In this case the panelist stated that "the .com TLD should not be registered and used for non-profit activities", and gave this as one of the reasons behind taking away the domain under dispute, a .com domain whose registrant was claiming a noncommercial purpose.
It remains more common, however, for the appropriateness of the particular TLD (at least for "open" ones like .com, .net, and .org) to be discounted by the panel as a factor, though this doesn't stop parties to cases from occasionally making arguments along those lines in the hopes that their case will be among the few exceptions. The vaughan.com case, for instance, featured the complainant arguing (unsuccessfully) that the respondent lacked legitimate interest in the name due to their lack of commercial use given that it is a .com domain.
Of course, the appropriateness of a given TLD for its use will be most likely to be considered when the case involves a TLD that has registration restrictions that are actually capable of being (sometimes) enforced; for instance, the gea.biz case is a sign that some of the panelists take that domain's registration restrictions seriously (even though they're only enforced after the fact, not at the time of registration). There, the panelist criticized the fact that the registrant's site proclaims itself to be "without any commercial purposes", and asserted that "No one would expect or look for non-commercial information under a .biz domain", going on to assert that the country code domain for the location of the organization in question would be more appropriate for such a use. The domain was hence ordered transferred. It appears, from some of the evidence shown in the decision, that the noncommercial site may have just been a sham used by the registrant to attempt to get away with cybersquatting, but by the case's reasoning even a legitimate nonprofit group might get their .biz domain taken away due to their noncommerciality.
A company needn't exist yet for you to cybersquat it!
In what strikes me as one of the more bizarre decisions, the arbitrators have forced the transfer of ec.com to an e-commerce magazine named "EC.com", which adopted and trademarked that name despite not actually owning the domain in question (which had already been registered by somebody else). The domain was subsequently sold to a third party, against whom the publishers were able to prevail in the arbitration decision. I find this very troubling, since it means that companies might be able to steal any domain they want by naming one of their products after it, .com suffix and all, and then filing a claim. Penguin Books is getting under some fire for naming a book "katie.com" when they don't own that domain (as I recount in my Other Disputes page), but at least they didn't try to steal it away from its owner. (They did, in an unrelated case, try to take penguin.org away from a person nicknamed "Penguin" who used that domain for his personal site, but failed.)
Other attempts to do the same thing have failed, though. In the sealstore.com case, a company went into business as "Sealstore.com, L.L.C." despite not owning the referenced domain name, and then filed a challenge against the owner of the domain (who had registered it before the complaining company even existed) for infringement of the alleged common law trademark rights they had in the name. (The "seals" being sold in this store, by the way, are industrial sealing system components, not baby seals that have been clubbed to death, so environmentalists can stop protesting.) While the respondent's own rights to the name were weak (the domain merely links into the respondent's main site which is at a different domain name, and they haven't used "SealStore" as their trade name or trademark), there was still no possibility of bad faith under such circumstances, so the respondent got to keep the domain. It's a sensible decision by panelist Judge Irving H. Perluss (Retired), who is also responsible for some more good decisions I recounted above. These decisions made him one of the panelists I liked and respected... at least until he handed down the truly awful sex.biz case. I did wish, however, that he had taken a more forceful position in denouncing what I see as the thoroughly reprehensible practice of registering a trade name, trademark, or other identifying name consisting of a domain name you don't actually own (complete with the .com or other TLD at the end of it), and then filing a challenge against the (pre-existing) owner of that domain on the grounds of name infringement. (The above-mentioned barcelona.com case fits into this category, as the city of Barcelona has attempted to register trademarks to barcelona.com, barcelona.org, barcelona.net, and barcelona.edu, all without actually owning any of these domains, and when the .edu domain isn't even one they're eligible to obtain since it's limited to 4-year degree granting institutions.)
A couple more attempted reverse hijackings of this variety both failed, and were apparently initiated by either the same person or by people acting in concert, as one of the complaints even carelessly left in some mistaken references to the domain being sought in the other case -- haven't they ever heard of the "global replace" feature in most word processors and text editors? Anyway, the complainants tried to win the transfer of america.com and tobacco.com from their long-standing registrants by forming companies named "America.com" and "Tobacco.com" respectively, applying for U.S. and Canadian trademarks to those names, and, with those trademark applications still pending (and quite likely to be rejected due to the generic nature of those names and the fact that the applicant has yet to show the slightest evidence of having actually used the names in commerce), filing complaints against the domain holders who had the names half a decade before the complainant concocted this scheme. Fortunately, the panelists didn't buy this, and rejected the "America" case; apparently the complainant then proceeded to drop the "Tobacco" case, since it's now terminated with no publicly-posted decision, though the owner of that domain used to have some related documents posted at his site.
A more recent (2007) case failed to let an accounting company reverse-hijack mycpa.com. They had their actual site at mypersonalcpa.com, and used as their corporate name the bletcherous Mypersonalcpa.com, Inc. (geez... putting ".com" in corporate names is so 1999!), but they coveted the shorter and catchier mycpa.com, which somebody else had registered and put into use earlier. Their strategy was to attempt to trademark "mycpa.com", which the USPTO didn't allow at first, but inexplicably allowed later when they appended "Inc." to the end of the trademarked phrase (despite it not actually being their corporate name). Using the newly-registered trademark to "Mycpa.com, Inc.", they then tried to wrest the domain away from its legitimate owner using UDRP, but the panel didn't go for it. Apparently, the firm actually opened a branch office in Beverly Hills which brands itself using the name "Mycpa.com", so they're advertising their rival's Web site. Real clever marketing. As a consolation prize, they did manage to get the domain mycpa.info in another UDRP case, on the grounds that this registrant wasn't actually using the domain.
The strategy of trademarking a domain name you don't actually own in order to reverse-hijack it appears to be more successful in the area of new top level domains. For instance, in the paint.biz case, a company managed to win this highly generic name by using "paint.biz" as some sort of product name or slogan (I'm not sure of the exact context) in between the time the .biz TLD was first announced and the time the startup process was completed with somebody else getting the name. I discuss this some more in this ICANNWatch article. It's being done with regard to attempts to get entire TLDs, too, as seen with .chicago.
In the "When Good Decisions Happen To Bad People" department, the eduction.com decision involved a rather unlikeable respondent, somebody who registers tons of domains -- many of them typos of famous names -- and points them all at his really sleazy site that pops up heaps of ad windows and makes it hard for you to escape (known as "mouse-trapping"). He's got the sort of site nobody in his right mind goes to on purpose, so he depends on people getting there by mistake. He's lost a long series of cybersquatting cases so far. But he won this one, and deserved it. He had registered eduction.com as a misspelling of "education" (and claimed, in his defense, that one educational aspect of his site was that it taught people not to misspell "education"!). A year or so later, along came a newly-founded company called E-Duction with its Web site at e-duction.com. It's some sort of credit-card plan for use as an employee benefit with payments automatically deducted from future paychecks ("e-duction" is derived, apparently, from "deduction"). This company, which didn't exist yet when eduction.com was registered, proceeded to challenge that domain as a "typo-squatting" infringement of their own name. While clearly taking a dislike to the respondent, the 3-member panel ruled in his favor on the grounds that it's quite a stretch to say he registered the name in bad faith against a company that didn't exist yet! I concur with this decision.
The case of thefarm.com wasn't really a grave miscarriage of justice, even though the complainant won over a very generic-seeming name based on what is probably a fairly weak trademark -- it was a respondent default, so if the owner of the domain didn't even bother to put up a defense, he probably deserves whatever happens to him. (Right around the same time, the owner of the similarly generic domain myroom.com won a case to keep the domain, so such names can be kept if you fight for them.) However, the panel in thefarm.com used some dubious reasoning. For one thing, the trademark in question was registered in 1995, while the domain was registered in 1994. This doesn't necessarily dispose of all valid claims the mark holder has to the name -- they might have had common law rights prior to the registration -- but it's distressing that the panel didn't seem to even feel the need to bring this up, but rather just noted that the domain was identical to the trademark, and that was that, ignoring completely the dates involved. But then, when judging whether the respondent had rights or legitimate interests to the domain himself, suddenly the order of events became relevant: "Respondent's legitimate interest must exist prior to the registration of the domain name and not after continued use". This is a clause that is not found anywhere in domain name policy; it's just another "rule" made up by a panelist. By this standard, few of the silly "dot-com" companies of the last few years would have legitimate rights to their names, since they didn't begin conducting trademarkable activity under them until they had registered the domain. Not that eliminating those silly "dot-com" companies would necessarily be a bad thing for the world in general, but it's certainly not what the domain dispute policy was intended to do.
Can Good Faith Turn to Bad... retroactively?
It is necessary under the UDRP for the complainant to prove that the respondent both registered and used the domain in bad faith. If no bad faith existed at the time of registration, then no amount of bad faith later can cause the registrant to lose. At least, that's what the plain-English wording of the policy says. Some decisions, however, seem to imply that later bad faith (real or imagined) can get into a time machine and go back to corrupt the original registration of a domain. For instance, the heel.com case presented no evidence that the slightest bit of bad faith existed when the owner of that domain registered it to use as the email address of a listserv (mailing list) devoted to North Carolina Tar Heels basketball fans. However, that listserv is no more, and the domain eventually sprouted a "This Domain is For Sale" page, something universally disliked by UDRP panelists (even though there's nothing inherently illegal or bad-faith about selling a domain name). When a German homeopathic remedy maker with a trademark on "-Heel" (with a dash before the word) challenged the domain, panelist Linda M. Byrne, Esq. saw no reason even to consider what sort of faith the registrant had at the time of registration -- trying to sell the domain later was enough bad-faith to extend backward retroactively and taint the domain -- judgment for the complainant.
Another bad thing in this decision is the fact that the panelist regarded the fact that "Respondent attempted to sell the disputed domain name to Complainant for $20,000 after months of negotiations" to amount to bad faith on the respondent's part. Funny... I would regard engaging in negotiations that last for months to be an act of good faith, while going behind the other party's back and filing a complaint seeking the domain to be transferred at no cost is an act of bad faith. Maybe the complainant's idea of "negotiations" is similar to that of the Trade Federation in Star Wars Episode I: The Phantom Menace, which attempted to kill the negotiators and then launched an invasion of the planet that was the subject of the negotiations. And the Galactic Senate was about as helpful to the "good guys" there as the UDRP was in this case.
Does the Doctrine of Laches Apply?
Another issue that comes up when you consider the timeline of a domain dispute is whether there is any applicability for the doctrine in trademark law known as laches. This doctrine holds that, if enough time lapses between when the trademark owner knows (or ought to know) about the potentially infringing use, and when they actually take action against it, then the action should fail because the trademark owner should be considered as having acquiesced to the usage. In other words, "if you snooze, you lose"; if you let somebody get away long enough with doing something that might be considered an infringement, then you can't turn around and start objecting to it later. There's a similar concept in real estate, where if you don't do anything about trespassers cutting across your land for years, forming a well-used trail, you may eventually lose your right to block the path because they've earned the right to keep walking that way by time-honored use. The familiar line in weddings urging objectors to "speak now or forever hold your peace" is of a similar nature; in the name of stability, objectors are expected to act in a timely manner instead of showing up later when they're least expected.
So, does this apply to UDRP cases? If you've been using a name online for years without anybody objecting, can a trademark owner suddenly come along and grab your name? The answer is unclear. There's no explicit mention of laches in the UDRP, but panels have brought in all sorts of concepts from outside on occasion, so there's no reason why a panel might not decide some future case on this basis. I don't know of any cases with decisions resting on it, however.
This concept seems most likely to come into play with regard to fan sites that use the name of the object of the fan's affection (e.g., a celebrity or product); this subject is likely to have been aware of the site's existence from an early stage of its existence, and even said favorable things about it, but at some future point, perhaps under different management, decides they need to protect their trademark better even if it means going after fans. Then the question would come up of whether they have any business objecting to a site at that point if they didn't do so before.
The volkswagen.org case seems to fit in this category, but unfortunately the domain owner defaulted and lost; it would seem like they'd have had a decent laches case based on their operation of a fan site for a long time. On the other hand, when patbenatar.com was challenged by the named celebrity despite her having known about and failed to object to the site since it started in the 1990s, the panelists let the fan keep it. It's a good precedent case for all fan site operators to cite, and I agree with the decision, even though the fact that it is a case where a site operator prevailed with an argument of "noncommercial use" despite it being a .com name rankles my sense of proper domain use. A later (2011) case reached a similar result with regard to ladygaga.org, a .org-based fan site.
Am I Famous or Not?
What if your domain is based on your actual name... the one your mom gave you... but there just happens to be somebody more famous than you who shares that name? Do you have the right to use your own name on the Internet, or is that infringing on the trademark rights of the celebrity who shares it? The UDRP has, as an absolute defense (in part 2 of its three parts), that you are "commonly known" by the name in question. But just what does that mean? How common does knowledge of your name have to be? I always thought that the clear meaning of this phrase was that those who do know you know you by the name in question, no matter how small this group may be. Maybe you just have a small, select group of friends, aquaintances, and relatives who have even heard about you, but if they call you Britney Spears, then that's what you're commonly known as even if you're not the famous singer who's also called that. However, a panel has made a much more restrictive interpretation of this clause. In this case, Lyle Peter Frampton was denied the right to keep the domain peterframpton.com, since although this is in fact the respondent's name, he's not as commonly known by this name as is the famous musician of that name. I find this decision troubling; if somebody else named Dan Tobias should happen to become a celebrity in the future, can he reverse-hijack any domains I own containing my own name, on the grounds that he's better known by it than I am?
However, in a divergent decision, somebody named A. R. Mani managed to keep armani.com despite the trademark status of Armani.
Somebody named Don Henley has been in an ongoing dispute with the famous musician of that name over a domain name, but no actual challenge or lawsuit seems to have been filed in this case. Meanwhile, somebody named Nissan holds the domain nissan.com and uses it for his computer-related businesses, but is having to fight ongoing legal action by the Nissan Motor Company which is seeking millions of dollars in damages from him for having the temerity to use his own name.
Now, how about if the name in question is your company name, as filed in your certificate of incorporation, or business license, or local assumed-name permit, or whatever other paperwork you might have to indicate you do business under it. This, as a number of panelists have pointed out, does not grant you intellectual property rights to the name, and does not stop you from possibly being held liable for trademark infringement if it conflicts with the rights of somebody else. However, doesn't it still constitute being "known as" that name, defeating the second prong of the UDRP? The panelist in the weeklypublishers.com decision didn't think so, saying:
Respondent is not commonly known as WEEKLY PUBLISHERS or <weeklypublishers.com> because Respondent cannot justify its misappropriation of Complainant's PUBLISHERS WEEKLY trademark in a domain name by the mere use of <weeklypublishers.com> as a trade name. Thus, Respondent has no rights or legitimate interests in the disputed domain name pursuant to Policy ¶ 4(c)(ii) even though the name of Respondent's business is WEEKLY PUBLISHERS.
It seems to me that this panelist went far abroad from the proper territory of the UDRP, a policy that was intended to handle a small subset of possible domain disputes, in cases where there was clear infringement, not cases where two parties had possibly-legitimate rights that require more evidence to adjudicate. It seems from my own examination of the site in question (still up when I checked, as the domain transfer hadn't yet gone through) that the respondent was operating a legitimate business syndicating cartoons to weekly newspapers, which didn't compete directly with complainant Publishers Weekly, a magazine aimed at book publishers. Both parties are connected with the broadly-defined publishing industry, but they are in very different segments of it. The terms "publishers" and "weekly" are very generic, and often found in close proximity (since many periodicals are published weekly). This naturally leads to a conclusion that any trademark rights PW has to its name are very narrowly defined. "Weekly Publishers" has a very different connotation from "Publishers Weekly", and is not obviously "confusingly similar" despite containing the same words. But even if they are, the second part of the UDRP fails because the respondent is known by that name -- that the name might perhaps infringe on the complainant's trademark is irrelevant to this. The UDRP case should have been dismissed, leaving it up to PW to file a case in a real court if they still want to pursue it.
What if the respondent owns a trademark too?
Most UDRP cases deal with situations where the complainant has trademark rights to the name in question and the respondent does not. However, there are a few cases where both sides have registered trademarks to the same name (which is possible in different fields of business and/or different countries). The rational decision in such cases, it would seem, would be to dismiss the case and require the complainant to go to a real court to resolve the issue of whether the trademarks conflict in an actionable way, an issue beyond the scope of the UDRP. However, there are some cases in which panels have decided to disregard respondents' trademarks as irrelevant; one is the overture.com.au case. In this case, the respondent seems to have started off as a classic cybersquatter, with a search site at the Australian country-code equivalent of the complainant's address and trademarked name. Then, after hearing from Overture's lawyers, they abruptly changed the site to one about musical instruments, and succeeded in trademarking the name in that field (despite opposition filed by the complainant). The panel ruled that the trademark was irrelevant because it was obtained after the initial dispute.
Just what is "Confusingly Similar"?
Usually, the first prong of the requirements of a case, that the domain is identical or confusingly similar to a trademark, is straightforward. You simply match the words in the domain and the trademark, ignoring spacing, punctuation, and capitalization, and disregarding generic stuff like "The" or the top level domain suffix where necessary, and if they match they're identical, and if they almost match they're confusingly similar. But there are some cases that stretch this very far. For instance, monacogambling.com was ruled to be confusingly similar to "Le Casino de Monte Carlo" (which has monopoly rights to gambling in Monaco), although there isn't a single word in common between the domain name and the trademark -- they simply mean the same thing. So what's somebody to do when they wish to create an independent site discussing gambling in Monaco or organizing tours to visit that casino? A normal technique to do such things without trademark infringement is to paraphrase the concept in words other than those which are trademarked, but this decision shows that ICANN regards that as infringement too. Does monopoly status to gambling within a very small country actually grant them monopoly status over any mention of it worldwide on the Internet?
Independent Info Sites
Since one of the possible defenses to the UDRP is legitimate noncommercial use, some people have tried to justify owning a domain containing somebody else's name because they are using it to provide independent information about that entity for the benefit of the public, as in a fan or criticism site or an independent review, reporting, or discussion site. This makes particular sense as a use of the .info domain -- why shouldn't BigCorp.info be an independent informational site about BigCorp, instead of just a redirect to BigCorp.com? However, the panels don't always buy this, as in the hyy.info decision, where they forced an independent site with information about the Helsinki student union, known as HYY, to turn over its domain to the organization they were commenting about.
The presence of other words in the domain besides the organization name or abbreviation might help; the famous ICANNWatch site, critical of ICANN, has never been challenged by them as far as I am aware.
Who's the David and who's the Goliath?
While in most cases the complainant is a large corporation, organization, or governmental body, and the respondent is an individual or small business, there are occasional cases that don't fall into this mold, such as when the complainant is a "little guy" and/or the respondent is a big corporation. The outcome of such anomolous cases is interesting to distinguish between rival theories about the bias of panelists -- do they favor big corporations over little guys, or do they favor complainants over respondents? From what I can see, the bias seems to be mostly complainants over respondents, without regard to size, as a few "little-guy" complainants have won (e.g., the SlashCity case where a small amateur fan-fiction site recovered a name they accidentally failed to renew from a speculator who registered it and put up pornography), while some "big-guy" respondents have lost.
A case in point for the latter category is the Powertrack case, where the respondent, UPS (of the big brown trucks), lost a domain that matched the trademark of another company. UPS was unable to provide a good explanation of why they registered the domain (which they weren't using), and apparently some arm of that company was engaging in some sort of business negotiations with the complainant, so they couldn't claim ignorance of the trademark. Thus, despite being a big, respectable corporation, they were treated like any individual cybersquatter by the panelists.
Independent research by panelists?
One controversial issue that hasn't been resolved is whether panel members should act like jurors in a trial, and use only the evidence formally presented them, or if it's OK for them to do independent research of their own to get to the facts of the matter. Some panelists think it's improper to look anything up themselves (by the standards under which mistrials can be declared if a juror becomes "prejudiced" by reading a news account of the matter under trial), while others do engage in research of their own to resolve issues that are confusing or ambiguous as presented by the complainant and respondent (especially if the respondent fails to respond at all, or responds in a poorly organized manner). In TV shows, movies, and comic books, jurors sometimes slip out of their sequestering to prowl around at night and solve the case they're trying, and perhaps a few panelists want to be this sort of "hero" themselves.
One case where such research was done was the allegralaw.info one, where despite a failure to submit a formal response, the respondent won because the panelist searched online records and determined that the respondent did indeed have a law practice under the name "Allegra", and didn't merely register the domain name to capitalize on the trademark for a medication. One must question, however, just how good a law practice the respondent has if he is unable or unwilling to produce a response to a challenge to his own domain.
Certainly, a respondent (or, for that matter, a complainant) shouldn't leave anything up to a panelist's independent research, even if they get a panel willing to do such things; one should be careful to spell out, in easily understandable form, all relevant facts that support one's side of the case to remove the need or temptation on the part of panelists to go elsewhere for information.
If at first you don't succeed...
As if the pro-complainant bias of the ICANN system wasn't bad enough already, there's a decision that makes it even more troubling. This concerns the domain thrashermagazine.net, which was regarded by Thrasher Magazine as being an infringement of their name. So far, this is a pretty straightforward case. However, in the decision, the panelist decided that the respondent had sufficient rights in the name to deny the claim. This should have been the end of the case, at least within the ICANN system. ICANN panelists hand down decisions good, bad, and ugly, but there's no appeal to them other than bringing the case into a real court, which is difficult and expensive (especially when the parties are in different countries, as in this case). However, Thrasher proceeded to file the same case again in the ICANN process, resulting in a new decision ordering the transfer of the domain. (This new case also added thrashermagazine.org as a challenged domain, but for the .net domain it was "double jeopardy".) The new panelist had to explicitly address the point of whether they had any right to render a judgment on a domain that had already survived a challenge in the same system. He brought up the issue that finality of decisions was a desirable thing, and wouldn't be achieved if losing parties could keep reopening cases. Nevertheless, he dismissed these concerns and went on to judge the case himself, reaching an opposite conclusion from the earlier panelist. This is unfair, since it means that a losing complainant can keep refiling its case until it gets a panelist who sees things "the right way". A respondent doesn't have that luxury, since it is the complainant who gets to initiate cases. So allowing this sort of double jeopardy works only in the complainants' favor.
This is something that really needs to be looked into whenever ICANN seeks to draft amendments to their dispute process. A sensible rule would be to prohibit re-filing of cases regarding the same domain unless the new case involves new conduct on the part of the registrant since the previous decision, or new evidence unavailable to the complainant at the time of the original case. Also, cases that are dismissed on purely technical grounds, with the original panel explicitly stating that the dismissal is without prejudice, can be re-filed with the technical flaws resolved. However, a complainant shouldn't be allowed to file a case repeatedly, based on the same facts and evidence, in order to harrass a domain owner and to hope for a sufficiently biased panelist to rule in their favor.
An appeals panel, available to losing complainants and respondents alike, might be a useful addition to the system, however.
Not all panelists are permitting such double jeopardy in the current system, though; in one case, an attempt by a complainant to get a case re-tried by filing again was soundly dismissed.
And then there's the hapless complainant who won their case, but still had to go back to the UDRP for another try... that was in the case of booz.com (not "booze" with an "e"), which the consulting firm Booz-Allen & Hamilton Inc. felt should be their property. They took their case to WIPO and won, getting the domain transferred to them. But soon afterward they dropped the ball by failing to properly renew the domain, and it dropped and was registered by somebody else... so it was back to WIPO for another case to get the domain back one more time. Will they hold onto it this time, or will it slip free once again?
Tying the System in Knots
Some cases have suggested a way that the ICANN dispute procedure could potentially get tied in knots, either accidentally or by the actions of a prankster. When I saw the case for aolkinko.com, I wasn't sure whether this case had been brought by AOL, or Kinko's, or both of them jointly, as both of their trademarks are contained in the name. It turns out that Kinko's is the one who brought the case, and they won and got the domain ordered transferred to them. But what if AOL now objects to Kinko's having a domain with AOL's trademark in it? They probably won't, since they're in a strategic alliance (which is what prompted the cybersquatter to register the name), but if they did, they'd have grounds to file an ICANN dispute against Kinko's, and maybe win and get it transferred to them. But then Kinko's would have a case against AOL for trademark violation, so it could go 'round and 'round in an infinite loop. Maybe one of the panelists would try to cut this Gordian knot by availing himself of the other option in dispute cases, to cancel the domain rather than transferring it -- this, however, would make the name open for anyone else to register, and there are some protestors who are making a point of registering any and all domains that get cancelled as a result of ICANN cases. (See nokiagirls.com.) Such protestors, of course, can get challenged by ICANN actions themselves, and the beat goes on and on and on! Somebody interested in doing some mischievous "culture jamming" could register a domain with two competitors' trademarks in it, like cocacolapepsi.com or mcdonaldsburgerking.com, and see what happens when that hot potato is tossed around. (I'm not trying it myself... I don't want to get sued!) Meanwhile, a recent case caused ebayrus.com to be transferred to Ebay... but I hear Toys 'R Us is vigorous in challenging anyone or anything with "R Us" at the end of his/her/its name (including parody sites), so if they jump into this, it could lead to one of these tangles.
Of course, one way for the "corporate victims" of such a scheme to prevail is for one of them to grant permission for the other to file a case against the "cybersquatter" and receive a transfer of the domain if victorious; that happened in the viagra-nascar.com case. This, however, is likely to be more difficult to arrange if the two named trademarks are of direct competitors rather than cooperating companies like in this case (the makers of Viagra sponsor a NASCAR racing car).
Extending the system?
Some people don't like the heavy-handedness of some of the decisions under the ICANN system, but others would like to extend the system even further, to cover such things as standardized nonproprietary drug names (well, if they're nonproprietary, why should anybody be able to challenge their use as a domain???), geographical place names (something which has already come up in cases like barcelona.com), and more. WIPO solicited comments recently regarding some of their proposals. Read my comments to WIPO. The final report is out now, and WIPO has backed down on proposing new restrictions on geographical names, personal names, and trade names (saying there isn't sufficient international consensus, and new laws or treaties are needed before anything can be done on it), but wants ICANN to move forward with restrictions on generic drug names and intergovernmental organization names; and, unlike the normal dispute policy, they want those restrictions to be immune to judicial review because they're imposed on the request of intergovernmental agencies with sovereign immunity. I suspect ICANN will be reluctant to enact these policies, however, since although a registrant whose domain is taken by these policies can't sue the U.N.-based agencies that instigated it, they can sue ICANN and its accredited registries and registrars. Thus, ICANN's lawyers will probably advise them that passing such a policy is too risky for their liability exposure.
The Policy as Rewritten by the Panelists
These are the things that, according to the actual ICANN policy, must be proven by the complainant against the respondent in order to prevail in a complaint:
After reading large numbers of the decisions actually rendered under this policy, here is my interpretation of what many of the panelists seem to regard the policy as actually requiring:
New TLD Policies
As I mentioned at the beginning of the article, there are some additional policies besides the UDRP that apply specifically to the launch phases of new TLDs. Some cases under these policies have been decided now, and the decisions are mostly similar in nature to those under the UDRP, except that to some extent they favor trademark owners over other registrants to an even greater extent, a likely consequence of the fact that, when these challenges are filed, the registrant has had little or no chance to actually use the domain, thus decreasing their ability to provide clear evidence of noninfringing use of the domain (they're reduced to merely claiming plans to begin such use, making it a matter of whose word the panelists believe, and they tend to believe big corporations with trademarks more). Also, the startup phases of new TLDs, with their sunrise periods and IP claims, are set up explicitly to give trademark owners more chance at the new names than anybody else, and the panelists reflect this attitude in their decisions. Hence, trademark owners have an even better victory record in new TLD challenges than in normal UDRP cases.
For instance, Ralph Lauren got to take lauren.biz from a registrant who said that his daughter was named Lauren and he planned on starting a business around the name. Although it is a famous trademark in the area of clothing design, it's also a common girl's name, and it's perfectly reasonable to suppose that a non-infringing use can be found for the domain. It's also possible that the registrant might make an infringing use, but that should be decided after the registrant makes some use, not pre-emptively before he even gets a chance to do so.
In another .biz case, gandalf.biz was awarded to the licensee for media and merchandising of The Lord of the Rings and its characters. While it's certainly a famous and distinctive character name, which goes back to J. R. R. Tolkien's The Hobbit, published in the 1930s, the federal trademark on which the licensee rests its claim goes back only to 2001. The respondent, on the other hand, has used "Gandalf" as part of his business name for about 15 years, and already owns some country-code domain names including "Gandalf" that have not to date been challenged. This, then, would seem like a case outside the bounds of the ICANN policies, which are supposed only to apply to clear-cut cases of infringement, not cases where both parties might have rights and a real court ought to hear any dispute of whose rights are superior. The respondent might well be violating rights in the character name (though there might be some question of how strong these rights are given that people have named things after Tolkien characters for decades and have not, to the best of my knowledge, been vigorously sued over it), but that should be up to a court to decide, not an ICANN kangaroo court.
What To Do When Your Domain Is Challenged:
This page was first created 14 Mar 2001, and was last modified 08 Feb 2015.