I don’t do enough domain-name dispute resolution work under the UDRP to even pretend to be a UDRP maven, but I do know a couple of them, and one of them is Paul Raynor Keating. Paul is a redoubtable and erudite contributor to the e-Trademarks list and pretty much “the guy” for domain name litigation in the EU, or at least if your main language is English. (Oddly enough, but entirely characteristically, if Paul “has a webpage” at which he flogs his services to the world the way, um, certain others of us do, I’ve never been able to find it; hence, no official link to him. But here’s his stuff.)
Paul is very animated these days about what he describes as abuses of the UDRP system, and has taken to the Intertubes, big time, to promote his thesis. Two articles have appeared under his byline in the last couple of days and in a number of venues, and I am excerpting them here and providing links so we can all figure out what’s going on out there.
The first piece is entitled, “Why UDRP Panel Certification is Important: HardwareResources.org,” published in TLD Magazine, in which Paul explains:
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. . . .
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. . . . 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 [pay per click] 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. . . .
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.
There’s more: The second article is called “Abusive Supplemental Fillings” and can be found at both Domain News and The Domains and probably a bunch more places. Excerpt:
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. Read More…