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UDRP: Abusive Supplemental Filings in the case of AutoOwnersInsurance.com

February 22nd, 2012 Comments off

The following is a guest post by Paul Raynor Keating (paul@law.es). He is a domain industry attorney with offices in Barcelona and London.

The recent decision in autoownersinsurance.com is a perfect example of things going from worse to horrible. While the decision itself contains many substantive flaws, my overwhelming issue is with the lack of due-process rights evidenced by this UDRP.

The complaint was limited to a 3-paragraph argument which asserted a USPTO registration for “Auto-Owners”. The complaint asserted lack of legitimate interest because the domain was used in PPC and included links to insurance (surprise). The complaint did not allege bad faith registration and allegations of bad faith use were limited to the same PPC argument.

Read more after the jump.

The timely response explained that the mark was a “design” mark obtained under 2(f). For those unfamiliar, a 2(f) application is required when a mark is not “distinctive”. The registration is granted based on the ex-parte submissions of the applicant. “Ex-parte” means that no one is allowed to challenge the application. We argued the domain was not identical or confusingly similar given the additional descriptive term which substantially expanded upon the mark. We noted that while the complainant alleged common law trademark rights in “auto owners insurance”, there was not one scintilla of evidence (not even a hair) supporting the claim.

Complainant’s legitimate interest and bad faith claims were limited to the fact insurance links appeared on the PPC page. The PPC results for insurance were hardly surprising since the domain was inherently descriptive. Insurance is after all required in most places and of obvious interest to “auto owners”.

On the February 14th respondent received Complainant’s supplemental filing (“CSF”) which my email records showed to have been filed late.The CSF included 13 pages of argument and 9 new exhibits covering 191 pages, representing over 7.3 MEGABYTES of data. The CSF substantially amended the original complaint and for the first time included evidence supporting a common law trademark claim. Respondent started preparing a reply which was set for filing on the night of the 21st. Just prior to filing, Respondents received a decision dated February 21st! The decision makes it clear that the entirety of the CSF was considered by the panel. The decision does not even discuss the propriety of the CSF.

It is shocking that a UDRP panel would issue a decision 4 working days after receipt of a CSF, particularly one that was of such length and magnitude. There was no communication from the panel and four (4) days to respond to what amounted to an entirely new complaint with substantially more allegations and evidence is blatantly unfair. The timing of the decision implies that it was written on Friday for submission on Monday and immediately issued on Tuesday. Given the length of the decision (13 pages), it is unlikely to have been written on Monday and I have my doubts that a 3-member panel would have worked over the weekend on a UDRP.

Aside from the lack of opportunity to respond, I was personally shocked that the panel would have the CSF considered at all. The UDRP provides for supplemental filings only upon panel request.

12. Further Statements

In addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.

Although NAF has its notorious Supplemental Rule 7, NAF panels have held that SR 7 is controlled by Policy Paragraph 12 (“[T]he controlling provision is Paragraph 12 of ICANN’s Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), under which discretion to request such supplementation rests with the Panel.” (Deep Foods, Inc. v. Jamruke, LLC. c/o Manish Patel, FA0648190 (NAF April 10, 2006)). SR 7(f) prohibits supplementals that would amend a complaint.

Even those panels accepting supplemental filings have limited them to exceptional circumstances. Prior panels have repeatedly held that and the failure to submit evidence of trademark rights does not qualify as “exceptional” and “does not constitute sufficiently exceptional or proper circumstances for the Panelist to exercise discretion and to request any further information from the Complainant.” (Autobytel.com inc. v. Sand WebNames, D2001-0076); see also: Universal City Studios, Inc. v. G.A.B. Enterprises, D2000-0416 “There is no provision in the Rules for a party to file an additional submission without leave of the Panel.”).

The Policy specifically limits the breadth of supplemental rules:

Supplemental Rules means the rules adopted by the Provider administering a proceeding to supplement these Rules. Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, file size and format modalities, the means for communicating with the Provider and the Panel, and the form of cover sheets.”

By listing examples, the Policy makes it clear that supplemental rules are permitted to cover only non-substantive matters. Imposing a 5-day deadline for a supplemental reply is clearly non-administrative and such a short period inherently conflicts with the Policy.

In this decision the panel ignored the language of Paragraph 12 AND the prior precedent which limits supplementals to (a) those requested by the panel and (b) to those reflecting exceptional situations where Complainant could not have reasonably anticipated the need to incorporate the supplemental matters in the complaint.

By ignoring Paragraph 12 and the Policy limitation on supplemental rules, the respondent is faced with a bush-whacking opportunity. The Complaint has all the time in the world to prepare and file the complaint (even laches is not a defense). The Respondent is limited to a 20-day window. The CSF amounted to a complete “do-over”. The complainant filed a boiler-plate “place-holder” complaint and then filed its “real” complaint as a “supplemental” leaving Respondent with virtually no time in which to respond.

Given the repeated references to fairness (both in the UDRP and in NAF’s own website), the issuing of the decision without an opportunity to respond is morally and legally wrong.

ICANN must resolve this issue. NAF’s SR7 is in inherent conflict with the UDRP which is the only binding obligation of the respondent. The ADR provider may not adopt rules that are in conflict with the UDRP and the panels may not enforce supplemental rules to the extent they are in conflict with the UDRP and the basic concept of fairness that is supposed to prevail under the Policy. By failing to address such abuse, ICANN is exposing the entire contractual arbitration process to distain and legal challenge. While not perfect, stability and inherent fairness is fundamental to the proper functioning of the UDRP. The panel (and NAF) in this case ignored both.

Related posts:


Why UDRP Panel Certification is Important: HardwareResources.org

February 20th, 2012 Comments off

The following is a guest post by Paul Raynor Keating, Esq. Paul is an attorney specializing in the domain space. He has offices in Barcelona and London.

Although the UDRP has functioned for over a decade, the evidence continues to mount in favor of a certification process so all can be assured that panelists have the proper legal knowledge and address claims seriously. Examples abound of panel errors but I have seen few that competes with the likes of Hardware Resources, Inc. v. Yaseen Rehman, Claim Number: FA1201001423229 (HardwareResources.org), a recent decision by NAF-favored panelist Atkinson (see the related study by Zak Muscovitch).

In Hardware Resources, the panelist was so absorbed with the Complainant’s assertions that he failed to examine even the most basic aspects of the claim. Granted the case was a default. But that provides little excuse given the obviousness of the problems. Given Mr. Atkinson’s litigation experience (he authored an article entitled “How to Respond to Trial Objections in 1995), I am somewhat perplexed.

Complainant asserted 4 registered trademarks for “HR Hardware Resources”. A 10-second trip to the USPTO site satisfied my surprise that the PTO would allow registration of such a descriptive trademark. Complainant’s “trademarks” consisted of 2 text marks and 2 design marks. Each of the marks contained the following disclaimer:

NO CLAIM IS MADE TO THE EXCLUSIVE RIGHT TO USE “HARDWARE RESOURCES” APART FROM THE MARK AS SHOWN.”

The significance of the disclaimer is of course that the Complainant had expressly disclaimed the words “Hardware Resources” if they did not appear with “HR”. Perhaps Mr. Atkinson (or more likely the intern at NAF who may have written the decision?) missed that bit.

Notwithstanding the clear disclaimers, the Mr. Atkinson boldly stated:

The differences between the mark and the disputed domain name include the deletion of the initial letters “H” and “R” of Complainant’s mark, the removal of the space between the terms, and the addition of the generic top-level domain (“gTLD”) “.org.” The Panel holds that removing letters from a mark does not differentiate a disputed domain name from the mark.”

Had Mr. Atkinson (or his associate) taken 20 seconds of time he could easily have discovered that the elimination the “HR” was in fact material for the simple reason that Complainant held no trademark rights in their absence. Actually, come to think if it, the disclaimer would have been printed in the trademark registration certificate that Complainant surely produced.

From this highpoint, the analysis gets only worse. Legitimate interest is found lacking because “using a confusingly similar disputed domain name to host pay-per-click links and pop-up advertisements, whether competing or not, does not constitute a bona fide offering of goods or services or a legitimate noncommercial or fair use according to Policy ¶¶ 4(c)(i) and 4(c)(iii).” Of course no mention is made of the descriptive nature of the asserted trademark or of the domain.

The authority for the panelist’s position? Two NAF decisions, Hewlett-Packard Co. v. Collazo, FA 144628 (Nat. Arb. Forum Mar. 5, 2003) and ALPITOUR S.p.A. v. Albloushi, FA 888651 (Nat. Arb. Forum Feb. 26, 2007). The panelist was obviously not familiar with either of the decisions. Hewlett-Packard addressed the domain HPCanada.com. HP is obviously a famous, non-descriptive mark and there could be no legitimate interest in using the domain to display links for computer equipment. Alpitour dealt with the domain BravoClub.com. The asserted mark was used for a hotel chain and obviously not descriptive; respondent used the domain for PPC for (surprise….) hotels. Exactly how HardwareResources.org presents a factual or legal scenario that is even close to Hewlet-Packard or Aplitour is a mystery.

Going from bad to worse, Mr. Atkinson next finds bad faith because Respondent offered to sell the domain to the Complainant for a whopping $40.00. Surely this is a joke. The opinion is apparently based on an empty allegation by complainant. God forbid there be any reference to evidence. I am always amazed how far panelists will go to “justify” an expansion beyond the actual text of the UDRP when doing so in favor of complainants. I rarely see this when the issue might favor the respondent. This $40-issue is yet another example. While it is possible that $40.00 was more than the out-of-pocket costs, the rule in this regard is tied to the concept of targeting and registering domain names for the purpose of holding them ransom to a known trademark holder. This case fails the mark by any stretch and by even mentioning the issue Mr. Atkinson opens both himself and the UDRP process to ridicule.

Yet again showing his preference for complainants, Mr. Atkinson finds bad faith registration based upon PPC use with websites that “have featured pay-per-click links, some relating to Complainant’s competitors and some being simply generic” and some that “displayed information about Complainant“. Mr. Atkinson thus finds that the respondent must have registered the domain “to attract consumers and create confusion for its own profit“. This is lumped together with the $40-issue to support a finding of bad faith.

It is telling that the only reference to “generic” was in the Complainant’s allegations. The panelist certainly does not mention the word or deal at all with the descriptive nature of the phrase at issue. The use of a descriptive domain for descriptive purposes has repeatedly been found both legitimate and in good faith. It has long been held that the foundational issue is whether the respondent “targeted” the complainant. Here, the Complainant had no trademark in “Hardware Resources”. The domain was used for – guess what – PPC links related to items long considered to be hardware-related. That Complainant may have appeared in any of the PPC links is the fault of the Complainant who voluntarily selected a less-than-stellar trademark.

The most important lesson to be learned here, however, is not that Mr. Atkinson should abstain from being involved in the UDRP process. The important lesson is that decisions such as these destroy the carefully structured balance of the UDRP process as a whole. Respondents are repeatedly told that they can legitimately register and use domain names for descriptive purposes. It instills little confidence in the “system” when panelists such as Mr. Atkinson issue ill-thought out opinions such as this one.

While panelists aren’t earning the salaries of bankers in New York, this case shows that 20 seconds of thought would have produced the correct result. Trademark disclaimers are there for a reason; without the disclaimer the USPTO would not have issued the registration. It defies logic to permit a registration with a disclaimer and then support a trademark in only what has been disclaimed. Complainants must be held responsible for selecting descriptive trademarks. After all, they do it for a reason – a descriptive mark gives them a leg-up on the competition. If a consumer is looking for “hardware”, coming across a sign for “hardware resources” leads to the assumption that one will indeed find hardware items there. However, having selected such descriptive marks they should not be permitted to use them as a sword to prevent others from doing so.

And, $40 for a domain name? I am not sure who was being sillier; the panelist in using this as bad faith or the respondent who thought it was a good idea to make the offer.


 


Domain Industry Veterans Partner to Launch Domain Guardians

March 3rd, 2011 Comments off

Domain Guardians provide protection and management of domains in the event of death or disability

Domain name industry experts Mike Robertson, Jen Sale, Bill Vanderent, Adam Strong and Paul Keating have partnered to establish Domain Guardians, an ICANN accredited registrar providing domain estate planning and management services to domain professionals. The team will be launching the company and services at the upcoming ICANN Silicon Valley meeting in San Francisco, CA, USA from March 13-18, 2011.

The combination of Dark Blue Sea alumni, Robertson, Sale and Vanderent, along with Strong and Keating, offers over 50 years of combined experience in the domain industry. “Working with a group of this caliber is humbling, and we’re all very excited to offer the domain community a comprehensive suite of services that provide real value,” stated Robertson of this opportunity.

Domain Guardians has developed Domain Legacy to technically and legally protect and manage domain assets in the event of a portfolio owner’s death or disability.

Paul Keating, prominent domain lawyer, recognizes the complicated nature of managing a portfolio, “No one lives forever, and most domain investors are not planning enough for the future. Managing domains across multiple registrars and monetization providers is a daunting task. It requires a great deal of skill developed on the back of years that may include lost opportunities, missteps and other failures. What will happen to the asset base and income streams when the manager is no longer “there” because of a death or disability? How will our survivors cope in an industry where contacts and experiences are shared by word of mouth?

Veteran domain professional, Adam Strong, addresses the importance of Domain Legacy for your loved one’s protection and peace of mind, “Like other domain investors, I’ve thought, ‘Who’ll take care of my domains when I’m gone?’… I’ll be transferring my assets to my loved ones, who unfortunately don’t have the skills or desire to continue managing my business. It gives me peace of mind to know that they can trust the expertise of Domain Guardians to do this for them. Every domain investor with a valuable portfolio should protect the future of that portfolio.

For more information, and to arrange a meeting with the team at ICANN, please email hello@domainguardians.com.

Disclaimer: Adam Strong is also Managing Editor & Owner of DNN.

[via Press Release]

Bill Vanderent Paul Keating Adam Strong Jen Sale Mike Robertson

(c) 2011 DomainNameNews.com (1)


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Expanding Interpretation of UDRP Helps German Bank Win ‘Domain Lottery’

October 16th, 2009 Comments off

Despite being clearly limited in scope, the purpose of the UDRP continues to be ignored by experienced panelists. The result is an ever-expanding environment for domain disputes that exists completely far from any legislative or judicial oversight.

In the recently decide Deutsche Kreditbank AG v. DKB Data Services (USA), Inc. D2009-1084 (WIPO Sept 30, 2009), the respondent registered a three letter domain name (dkb.com) in 2001. NB: DomainTools (my favorite research tool) shows a record creation date in 1996. During this period the domain had been registered with a single registrar with only 2 name-server changes in seven years. Evidently the domain had not been used recently. The panelist, Mr. Swinson, accepted the statement of the complainant’s private investigator’s that the respondent was dissolved after it had merged with another company in 2002. Mr. Swinson concluded that the dissolution, followed by non-use was sufficient to transfer it to the complainant. (Obviously, the panelist did not know that the company was a client of “The Mill House Inn” in Long Island.  It will also be a disappointment to cfsoftware who will no doubt have lost a customer.) Whether the “investigator’s” statement was a sworn declaration was not disclosed in the decision. Notwithstanding the apparent dissolution, however, the respondent did maintain the registration. Is this “cybersquatting”? According to this panelist, it is.

Respondent’s default meant the complainant’s allegations were not challenged. Nevertheless, an unchallenged complaint does not entitle a panelist to issue decisions that are so obviously contrary to the purposes of the UDRP. In case it has escaped anyone, the UDRP Policy was designed to deal only with the limited problem of “cybersquatting”. “Cybersquatting” is the “deliberate, bad faith, abusive registration of domain names in violation of others rights.” (WIPO Final Report, 1999, p29). Numerous decisions confirm that it is NOT designed to resolve trademark disputes, business disputes, contract disputes, employment disputes etc. Such “complicated” matters fall outside the scope. The Policy is not designed to decide who has a “better” right to a domain, but merely whether a registration is abusive according to certain standards.

In Deutsche Kreditbank, the panelist first found a lack of legitimate interest because none of the paragraph 4(c) descriptions of a possible legitimate interest could apply and, of course the Respondent, who was no longer in business, obviously had not provided any evidence of a bona fide use. The most troubling aspect, however, was the panelist’s fabrication of bad faith registration based on the Telstra decision. The panelist concluded that the current use was “passive” thus supporting a presumption of original bad faith intent.

The panelist’s application of Telstra leaves much to be desired. He openly doubted whether the complainant’s mark was well-known, holding that it was reasonable to conclude that the U.S. located respondent did not know about the German bank. Normally, if a respondent is unaware of the complainant, much more is required to show the kind of deliberate intent required for a finding of “cybersquatting”. The panelist then concluded that despite the fact that the respondent once was an existing company, it was not possible to conceive the respondent using the domain in any legitimate way. Finally, the panelist held that although the respondent may not have intentionally concealed its identity, it was not possible to contact him on a given address and respondent did not provide a response. Ultimately, Mr. Swinson justified his illogical decision by pointing out that the respondent “in all likelihood” was dissolved and thus the domain name would be of limited value to its operation as a business. This final point clarifies the inappropriateness of the entire decision.

The fact that the respondent had existed when the time the domain was registered is conclusive evidence of the absence of bad faith registration. The statements by the complainant’s investigator – that the respondent had been dissolved – are an admission that the respondent had in fact existed. The continued registration clearly indicates that a valid property right remained in the hands of the respondent. Dissolution does not cause property rights to evaporate – they transfer to the proper successor in interest. The lack of use here is irrelevant.

This decision typifies the continued expansion of the UDRP well beyond its intended scope. Without judicial oversight it is impossible to effectively challenge such wayward panelists and guide the UDRP process so that it is truly equitable. While Telstra may have been created to deal with a particular difficult factual situation, that decision itself went beyond the bounds of the UDRP. While the rationale of Telstra may be justified by the limited circumstances it was intended to address, the Deutsche Kreditbank decision shows the danger of a system where panelists with little or no judicial sense apply “precedent” to justify a decision to award a domain name to the person with a “better” use.

Decisions like Deutsche Kreditban only encourage trademark owners to try to use the UDRP to obtain domains that they are not in any manner entitled to but desire nevertheless. They are but another reason to encourage the establishment of an appeals process (or at least an ombudsman) or to require a regular peer review of panelists.

Author Paul Keating, ESQ. is a California attorney who is lucky enough to both live and work in Barcelona, Spain.

(c) 2009 DomainNameNews.com

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Recent Opinion on Google Case May Help Domain Owners

September 22nd, 2009 Comments off

In June of last year, Google and Louis Vuitton were engaged in battle before the Cour de Cassation (France). The French court requested the opinion of the European Court o justice (ECJ) on three matters. Today, the European Advocate General issued an opinion advising the ECJ regarding its anticipated ruling. The AG opinion available here (Opinion) included the following:

“The selection by an economic operator, by means of an agreement on paid internet referencing, of a keyword which will trigger, in the event of a request using that word, the display of a link proposing connection to a site operated by that economic operator for the purposes of offering for sale goods or services, and which reproduces or imitates a trade mark registered by a third party and covering identical or similar goods, without the authorisation of the proprietor of that trade mark, does not constitute in itself an infringement of the exclusive right guaranteed to the latter under [the Directive]”

“Article 5(1)(a) and (b) of Directive 89/104 and Article 9(1)(a) and (b) of Council Regulation … 40/94 … must be interpreted as meaning that a trade mark proprietor may not prevent the provider of a paid referencing service from making available to advertisers keywords which reproduce or imitate registered trade marks or from arranging under the referencing agreement for advertising links to sites to be created and favourably displayed, on the basis of those keywords.”

“In the event that the trade marks have a reputation, the trade mark proprietor may not oppose such use under [the Directive].”

“The provider of the paid referencing service [Google] cannot be regarded as providing an information society service consisting in the storage of information provided by the recipient of the service within the meaning of Article 14 of Directive 2000/31/… in particular electronic commerce, in the internal market (‘Directive on electronic commerce’)”

What could this mean for Domainers? As we know, domain names in PPC serve as keywords for PPC results. While some PPC providers allow owners to categorize domains or add additional keywords, Google and Yahoo require that the added words bear a contextual meaning to the actual domain name. In essence, domain names used in PPC serve the same function as Google’s keywords as used in advertising. LouisVuitton.com is thus served up as “louis + vuitton”. The PPC advertisement links appear because advertisers who have paid Google/Yahoo to have their advertisements appear on pages in the domain channel when such keywords are used in a search.

We must of course wait for the official decision of the ECJ but it is nice to see when people “get it”, particularly when they are in such authoritative positions.

So, one may ask….. How is the PPC system any different from what the European Attorney General sees as infringing activities? In a real sense of course there is no real difference other than one keyword is purchased from a list and the other is in the form of a registered domain name (and of course you are you and Google is king).

It will be interesting to see how this plays out in the various sectors of the Internet. Of course, UDRPs and the like are based on a different standard. However, even the panel decisions remain subject to court decisions. Now if only we could convince domainers to pursue legitimate claims in court, we might have something that would benefit everyone.


©Paul R. Keating, Barcelona 2009. Mr. Keating has been an attorney since 1983. He escaped the good life in San Francisco and now lives and works in Barcelona Spain. He specializes in domain name related matters including ownership structures, taxation, transactions and domain dispute resolution. Paul@law.es.

(c) 2009 DomainNameNews.com

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New York Attorney Urges Domainers To “Do Something” To Stop Frivolous Dispute Proceedings

July 13th, 2009 Comments off

Karen Bernstein, a New York City domain dispute attorney, is urging domainers to fight back and protect their rights after seeing business owners use the UDRP process to force domain transfers time and time again.

In one of Ms. Bernstein’s recent cases she was able to defend WeDirect Inc.’s ownership for www.CheapAutoInsurance.com despite the complainant having a federally registered trademark for CHEAP AUTO INSURANCE. The Panel held that WeDirect - and anybody else - is entitled to register a commonly used phrase as long as it is being used in a descriptive fashion. However, while WeDirect was financially able to defend its rights, its request for the panel to acknowledge that the arbitration complaint was brought in bad faith was declined - causing Ms. Bernstein to publicly question the flaws in the UDRP system which make it difficult for domainers with less funds to defend their domains.

“The National Arbitration Forum Panel’s decision to decline a finding of reverse domain name hijacking for my client is yet another example of how business owners are using the UDRP [Uniform Domain Name Resolution Policy to strong arm domainers into transferring their profit-making domains with no repercussions," argued Ms. Bernstein.

"The average cost to file a domain dispute is low compared to the enormous sums that must be shelled out to bring a federal trademark infringement lawsuit and that's why so many companies opt to go through the UDRP process. On the other hand, the average domainer does not necessarily have the financial resources or the time to fight the domain dispute and either does not respond to the arbitration complaint (allowing in most cases the domain to be transferred) or spending the time and money to fight it.

Ms. Bernstein speculates that since domain arbitrations are relatively inexpensive, many business owners decide to take advantage of the system by filing complaints for minimal fees without facing any legitimate threat of being found guilty of reverse domain name hijacking.

"There needs to be strong efforts by the domain community to lobby ICANN to change its arbitration complaint intake policy and not to permit the URS [Uniform Rapid Suspension System Policy] to take effect,” Ms. Bernstein concluded.

[via PRWeb]

Note: Paul Keating, a Barcelona-based (but California licensed) lawyer specializing in intellectual property, has suggested a way to modify UDRP domain arbitration as to avoid rapid domain suspensions. Check it out here