Re: [ga-udrp] UDRP Questionnaire

[Jeff Williams <jwkckid1@ix.netcom.com>]

Chris and all,

  Good answers here Chris...  Well done!  >;)  (Yes this is another "Me To"
post)   >;)

NameCritic wrote:

> 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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--
Jeffrey A. Williams
Spokesman for INEGroup - (Over 118k members strong!)
CEO/DIR. Internet Network Eng/SR. Java/CORBA Development Eng.
Information Network Eng. Group. INEG. INC.
E-Mail jwkckid1@ix.netcom.com
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