Re: [ga-udrp] UDRP Questionnaire

["NameCritic" <watch-dog@inreach.com>]

Chris McElroy aka NameCritic

----- Original Message -----
From: <DannyYounger@cs.com>
To: <ga-udrp@dnso.org>
Sent: Saturday, June 30, 2001 1:04 AM
Subject: [ga-udrp] UDRP Questionnaire


> The questions cited below have been put forth by Milton Mueller, and seem
to
> be a good starting point.
> http://www.dnso.org/clubpublic/tor-udrp/Arc00/bin00000.bin
>
> 001.    To what extent are panel decisions consistent with applicable law?

Very little. It hasn't even reflected normal Arbitration Rules. There has
been no uniform policy in regards to the findings by the panels. In many
cases they have ignored obvious TM infringements and found for respondants
that in no way should have retained the domain name and in numerous other
cases have carried protection of intellectual property much further than it
was ever intended to be. No matter whether one favors protection for Tms in
domain names or are against it, both can find a large number of cases that
show the lack of any uniform policy concerning TMs and domain names.

> 002.    Are decisions consistent across panelists and dispute resolution
> service providers, and if not, what can be done about it?

Same answer above applies to the uniformity of decisions. If the UDRP is
repairable and is still necessary at all, it has to clearly define exactly
what a domain name is. That has never actually been done. To reside over a
hearing about something that remains undefined is ludicrous. Declaring a
Domain Name is infringing upon someone's TM when the Domain Name has NOT
been used in commerce is equally ridiculous. The only way a Domain Name can
infringe upon a TM is IF it IS used in commerce and in the same
classification as the TM was registered in. In other words the owning of
Snickers.com is not a violation of a TM that applies to the candy bar if A.
It is not yet being used in commerce and B. It is a joke site that makes you
want to snicker. That has not been reflected in the decisions of the
Panelists thusfar. TM Classifications are not considered to be a factor in
most disputes. Then there is the case of so called famous marks, an opinion
at best that even the courts have a hard time defining. The courts don't
have near the hard time defining what is a famous mark than the Panelists
have though. They have considered many marks as famous and used dilution as
a means to show infringemnet when the marks could nowhere else be found as a
famous Mark, therefore dilution would not have applied at all.

> 003.    Is the potential for abuse of claimed common law rights so great
that
> the policy should be limited to registered marks?

Yes. It should only apply to Registered Trademarks and then only if the
Domain Name is used in commerce in competition with the Complainants Mark.
You cannot infringe upon a Trademark by NOT doing any commerce. The only
instance where this might apply is under a different rule that could pertain
to the Registration of a Domain Name to keep a Competitor from using their
Mark or one who tries to sell it to the Owner of the Mark where the Domain
Name Registrant initiated the contact. Many times the Complainant has
someone make an attractive offer to buy a domain name they want, then use
the correspondence from the respondant against them as evidence they only
registered the name in order to sell it. TM Holders have the responsibility
to reasonably protect their TM. This is also not taken into consideration in
the majority of complaints. Take a case I know you probably have not heard
of or at least do n ot know all about.

Buzzer.com. A company in Great Britain I believe it was registered this
generic sounding domain name. There happen to be 9 TMs on the word Buzzer
for various uses. The company Buzzer, Inc. initiated a UDRP action against
the Registrant and won the domain name even though another company with a TM
on the word Buzzer for much longer had also wanted the name. C.A.Hones & Co.

Now that in itself is not remarkable. What is remarkable is that they in
turn allowed the domain name to expire. That isn't reasonable protection of
their intellectual property when having been through a UDRP action they
should be familiar enough with the Internet to not claim ignorance. The
Company that registered the name this time was Buzzel Construction owned by
Korey "Buzzer" Buzzel.

The lawyer for Buzzer Inc. had a friend (Admitted by the Lawyer) who has a
rock band called Buzzer make an offer to Mr. Buzzel. The offer contained no
commercial gain for Mr. Buzzel, but gave him a chance to build a fan site
for the band. It was discussed I believe that if the Band's CD sold well
their might be compensation later.

The Lawyer then contacted Mr. Buzzel demanding he relinquish the domain name
to Buzzer, Inc. or he would sue him and make sure he could not afford to
defend the domain name. The Lawyer went further and emailed other companies
like Buzzers.com for instance and threatened them not to do business with
Mr. Buzzel if offered to do so.

The Lawyer then threatened the registrar Tucows with legal action or other
means to regain the domain name. He demanded that Tucows transfer the name
back to Buzzer, Inc. Amazingly enough, Tucows did so after 40 days of it
being registered to Mr. Buzzel. Mr. Buzzel never got his day in court. Never
got his day with an Arbitration Panel.

This just goes to show that even though we hear about lopsided decisions, we
don't here about all the small companies who have to fold to threats. We
also don't usually hear about Registrars who make their own decisions
regarding cases without giving the Respondant any recourse at all. The
ability for a large company to simply intimidate a smaller company out of a
valuable domain name is not being addressed or publicized, so there needs to
be a remedy by which a Domain Name Registrant can file an action against
these types of intimidation.

I don't claim to know all the answers but the above scenario is a real case
and there are many more like it we do not hear about. The system is being
widely abused.

> 004.    Should generic names, geographical names, initials and numbers be
> protected from claims by any trademark or name rights' owner, regardless
of
> the owner's fame?

Generic Names definitely should be excluded.

Geographical names should definitely be excluded. There are already TLDs
specific for governments. They do not need the commercial and general TLD
rights in addition to those.

Initials should be excluded except in the case of a VALID Famous Mark. AT&T
for example. Possibly GM. They would have to pass the Famous Mark Test and
have in many court cases.

Numbers should usually be ecluded except again where there is a valid famous
mark. 3M comes to mind.

> 005.    Is the high respondent default rate due to a lack of real and
timely
> notice of complaints and/or a lack of time to respond?

20 days is not long enough to respond. There are vacations longer than that.
How would you like to come home from vacation to find you defaulted on your
rights to your domain name?

> 006.    Do complainants and respondents have parity in post-UDRP access to
> the courts?

Not at all. Some courts have refused to hear a case that has been decided by
UDRP when the Respondant has appealed. None I know of have refused to hear
an appeal from a Complainant. In addition to that, one of the companies, I
believe it is the NAF, but will look it up, allows a Complainant to pay an
additional $250 to file additional documents to the Panel after the case has
been heard. That is being done and in violation of WIPO rules yet the
practice goes on. This is something I need to verify as it was stated on the
TmTopics list, but if true this is yet another advantage given to the
Complainant without an equal fairness to the Respondant.

> 007.    Should the ability to challenge a name under the UDRP expire after
a
> single registrant has held the name for a specified period of time?

yes. It is the TM Holder's responsibility to protect their mark. They cannot
be allowed to be lax on that protection and expect the UDRP to babysit their
mark for them. 1 year is enough time.

> 008.     Should there be an internal review mechanism (such as an appeal
> panel drawn from all the Providers) to overturn clearly erroneous
decisions
> without resorting to courts?

I think their has to be an appeals process but most certainly not from the
providers. They have too much common interest in attracting new clients from
the pool of Complainants. There should be a seperate entity to review
decisions on appeal. Preferrably a Nonprofit entity supported by the
Arbitration Fees in set percentages that are not chosen by the Arbitration
Companies. A built in fee could be instituted to support the appeals process
so they are not beholden to the entities that pay them.

> 009.    Does Complainant selection of the resolution service provider lead
to
> "forum shopping" that tends to bias decisions against Respondents?

Absolutely. AOL lost a UDRP action in one Forum, so when they initiated
action against Aimster.com they chose a different Company to hear the case
where they felt their chances were much better. This leads to panelists
finding for complainants so they are chosen more often. It's simple
economics and leads to possible . . . no, probable abuse.

> 010.    Should registrars, rather than complainants, pre-select the
> Provider(s) to whom all disputes over names registered with them will be
> referred?

Yes. There should be a company and policy selected by each registrar. The
market will decide which has the best policies.

> 011.    Do policies for accrediting or de-accrediting dispute resolution
> service providers need to be specified in greater detail? Are any
providers'
> supplemental rules inconsistent with either due process and/or the ICANN
> rules?

If as I stated above for additional fees a Complainant can file more
documents past the submittal time and past the time of hearing the case
there is. And yes it should be more clearly defined and a Company/Provider
who abuses the rules to gain more customers should lose their ability to
provide the service.

> 012.    Should the UDRP be amended to enable respondents to initiate a
> "declaratory judgment" regarding their "rights and legitimate interests"
in a
> name?

Yes this would declare that they intend to use the Domain Name and for what
purpose while giving companies that may have a dispute their chance to speak
up.

PS: Additionally, Non-Use of a Domain Name or not having a Website at that
address does not constitute registration in bad faith and this needs to be
clarified. Many consider a domain name akin to a telephone number, as a
service. I can order a phone number. Never use my phone. Pay my bill, and
even if my phone number COULD by transposing the numbers to the letters in
your TM, you can't take my telephone for nonuse. The same applies for a
Company DBA. I can file a company name at the County Clerk's offic. The
registration is good for 5 years. If I never do business under that name I
cannot have it taken away from me nor can I be found to be infringing upon
someone's TM because I have not used the name in commerce.

This is continually used to try and prove registration in bad faith and is a
discriminatory practice that needs to be stopped. You register the name for
one or two or more years. There is no time limit in the UDRP or registrar
agreements that says how long you have to build your website. There is
nothing you sign when registering a domain name that says you own a company
of the same name.

What if a company or individual files a name and does not have the money yet
to have their website built? Is that bad faith? What if the website will
announce a new product line scheduled to come out next year and you don't
want to announce it yet? Is that bad faith? What if it is related to a TM or
Patent not yet assigned or approved yet but the domain name is secured in
advance of that approval to protect your interests? Is that bad faith? What
if the domain name is related to a technology not yet available therefore no
need for the website yet? Is that bad faith?

What if You just haven't felt like building the site yet? Is that bad faith?
No in all the above should be anyone's conclusion therefore no use is not an
infringement on a TM nor is it evidence of a bad faith registration. Neither
is the intent to sell the rights to a domain name. Companies list their
domain names as an asset all the time, therefore just evidence of the intent
to sell the rights to a domain name is not evidence of bad faith.
Redirecting a GENERIC domain name to drive traffic to a site, even if it is
to a porn site is NOT proof of registration in bad faith. It seems some
panelists who are biased against pornography in general find that if the
domain points to a porn site is evidence enough to be a bad faith
registration. Again showing decisions are nothing close to uniform and that
panelists have way too much leeway in deciding a case.

>
> What other questions should be added to this list?

Only one I can think of. Should the UDRP be scrapped in favor of another
system entirely and what might that be?


Chris McElroy aka NameCritic

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