Re: [nc-udrp] Multiple Simultaneous Complaints At Different Providers = Registrar Liability

["John Berryhill Ph.D. J.D." <john@johnberryhill.com>]

From: "Dan Steinberg" <synthesis@videotron.ca>


>  For example, if the
> domain holder defaulted and A didnt have a perfect claim, if the arbitrator
erred
> in the decision, such error wouild be unrecoverable.

We've seen something close to that with a number of UDRP disputes filed by
the World Wresting Federation against various "WWF" formative domain names.
Unbeknownst to some of the UDRP panelists who ordered transfers to the
wrestlers, the UDRP was actually being used as an instrumentality by the
wrestlers to evade an agreement they had with the World Wildlife Federation
concerning the scope of rights which the wrestlers were entitled to claim in
the letters "WWF".  In fact, the panelist who had ordered some of the
transfers apparently did so with knowledge of the 1994 agreement enjoining
the wrestlers from using the letters "WWF" outside of the United States:

http://www.newsbytes.com/news/01/168948.html
"Here ... the fund is not a party," arbitrator David Perkins ruled.

In traditional arbitration, disputes are deemed non-arbitrable if third-party
rights are implicated.  Whereas in a US civil court proceeding, an interested
third party can intervene, private arbitration does not afford that
opportunity.  Among other things, proceeding with arbitration in the face of
a third party claim can give rise to collusion between the parties to the
arbitration, to the detriment of the third party.  With all the nutcase
schemes I've seen on either side of this circus, I wouldn't be surprised if
someone decided to attempt to "UDRP-proof" their domain name by (a)
registering it under one identity, (b) spoofing a UDRP complaint against it
under a second identity, and (c) defaulting and having it transferred to the
second identity.

> Things that simply have to go before an arbitrator or judge...to get a
ruling,
> not something you expect to be a purely adminstrative formality against
clearly
> abusive registration.

The "no-brainer" decisions aside, most panelists engage in deeper analysis
than would be warranted if it could still be maintained with a straight face
that it is was an administrative procedure limited to clearly abusive
registrations relative to the complainant's mark, instead of an arbitration
of some kind.  Decisions have evolved well beyond that standard. There is one
panelist who has three times ordered cancellation of the domain name at issue
on the grounds that neither party had demonstrated a right to it - apparently
out of a belief that some sort of pre-existing legal right is required to
register a domain name:

"Because of my concern that nobody may have the exclusive universal right to
the domain name "montgomerymall.com" without some qualification, I hereby
cancel that domain name." NAF Case No. 97042

"For the reasons mentioned, it would be inappropriate to transfer the domain
name. I am not sure anybody has the exclusive right to the unqualified name
potterbrothers.com. I hereby cancel the name."  NAF Case No. 97254

"For the reasons mentioned, I am in doubt whether the Complainant is entitled
to a domain name that is unqualified as to locale.  I therefore direct
cancellation rather than transfer."  NAF Case No. 97355

Hence, in order to have a domain name registration taken away from a
respondent, one merely has to show that the respondent does not have a right
to the domain name.  Proof of a right on the part of the complainant is not
even required if you get this panelist.  The NAF panelist quoted above will
simply cancel the name if he doubts either party has some unidentified
pre-existing right to it - and will do so reliably.  Cancelling the domain
name on the principle of "I am not sure" is somewhat amusing.  In two of
those cases, the respondent immediately re-registered the domain name.
Panelists are not required to read the original WIPO report, and some of them
clearly believe they are engaged in making law.

I'd suggest again that cancellation simply be eliminated as an option, but
there is an ingrained belief that cancellation makes the domain name simply
disappear forever, so I'll just keep collecting them.

> The other reason against first come first served (FCFS) is that it creates
a need
> to more micro-manage the portfolio of marks. Since FCFS applies...you
probably
> have to hear instantly if someone registers a domain that you think might
> infringe, for fear of another party hearing first and filing first. To me
its
> seems this takes the concept of vigorously defending the mark a little far.
> Thoughts?

But it already is FCFS.  NAF Case No. 102525 just transferred the domain
names aol-microsoft.com, aol-msn.com, and  microsoft-aol.com to America
Online (AOL) because they, not Microsoft, brought the UDRP complaint.  They
now have, thanks to the UDRP, a set of domain names which incorporate the
trademarks of their competitor in online services as major portions thereof.

Did I mention something about collusion when more than two parties are
involved?  Think about what happened here.  If AOL had gone out and
registered those domain names directly, then Microsoft's lawyers would have a
field day.  Doing it this way is much less risky, unless you get the panelist
that wants to cancel every domain name he gets his hands on.

The UDRP is useful for more than one thing.  (for yet another example, see
www.johnberryhill.com/cello on how the UDRP may be used to evade a federal
court order)

John