The domain game

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.

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. . . .

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. . . .

By [panelists] ignoring [the regulations governing] supplemental rules, the respondent is faced with a bush-whacking opportunity. The complainant 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 [here] 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.

I hear ya, Paul:

I know what it’s liked to bushwhacked in litigation; I never stop living down the cases where it happens to my clients.  (Especially in a domain case!)  It’s the most frustrating experience a legal professional can have.  We’re taught in law school that, notwithstanding perhaps a dose of legal realism, legal causes are decided by some modicum of disinterested consideration respecting legal arguments.  Fair rules of procedure are to govern the manner in which such argument takes place.  We assure our clients, not of outcomes, but that based on our training, experience, preparation and presentation the advocacy that we will deliver to them will give them the best possible chance of a good outcome.

And when we get sandbagged by a judicial officer or other neutral, we don’t even have the words to explain to our dumbstruck clients what went wrong, and what they paid for.   I’ve won some and I’ve lost some, but among the latter I can count on my fingers the number of times my arguments were considered, explicitly addressed and disagreed with on principle, as opposed to merely being ignored or, worse, characterized as something they absolutely were not.

Charades of adjudication such as the ones described here make us seem to our clients to be part of some racket, almost like the old Soviet “lawyers” who were paid to help put you in jail.  How can we even justify to them that we charge fees to participate in such a system?  And yet, what choice do we have?

Does everything, really, turn into a racket?  Sometimes it seems that way; I’ve certainly written about how trademark law often seems that it has.  To fully comprehend what’s going on in the domain name part of that phenomenon — where trademarks, or things claiming to be trademarks, are more or less explicitly (however improperly) treated like rights in gross — read Paul’s pieces in full.