[ga] Amending the UDRP process to protect domain registrants

["Prophet Partners Inc." <Domains@xxxxxxxxxxxxxxxxxxx>]

Panelist Ms. Dana Haviland makes some noteworthy comments regarding ICANN's 
UDRP in a new WIPO decision ruled as a Reverse Domain Name Hijacking. Her 
comments have strong merits and should seriously be considered as the basis for 
amending the UDRP process to protect domain registrants. It is important to 
recognize that despite the limitations of the UDRP to award domain transfers or 
cancellations and the inability to award monetary damages, legitimate domain 
registrants are in a lose-lose situation and are penalized by having to spend 
undue time and legal expenses fighting frivolous domain disputes, even if they 
eventually win the dispute.

Wildfire, Inc. v. Namebase, WIPO D2007-1611 IronArc.com (January 29, 2008)
http://www.wipo.int/amc/en/domains/decisions/html/2007/d2007-1611.html


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  "Under the Policy, in order to prevail, a complainant must prove the 
following three elements of a claim for transfer or cancellation of a 
respondent's domain name:

  (i) that the domain name is identical or confusingly similar to a trademark 
or service mark in which the complainant has rights;

  (ii) that the respondent has no rights or legitimate interests in the 
disputed domain name; and

  (iii) that the respondent's domain name has been registered and is being used 
in bad faith.

  Policy, paragraph 4(a).

  Complainant in this case seeks transfer of Respondent's Domain Name even 
though Complainant admits that Respondent's domain name registration took place 
well before the establishment of Complainant's trademark rights. The case 
raises interesting questions as to the rights of domain name registrants in the 
context of a UDRP proceeding, too often overlooked in the analysis and 
balancing of the competing interests of trademark owners and domain name 
holders under the Policy. It is important to remember that not all domain name 
holders are cybersquatters."


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  "Recognizing that she is in a distinct minority, this Panel nevertheless, 
like the panel in the John Ode case, considers that the timing of a 
complainant's establishment of trademark rights ought to matter with respect to 
the analysis of the requirements of paragraph 4(a)(i), and that the relevant 
date for determination of the complainant's trademark rights should be the date 
of registration of the domain name and not the date of the complaint, for 
consistency with the purpose and structure of the Policy in limiting the scope 
of the UDRP proceeding and balancing the competing interests of domain name 
holders and trademark owners.

  One reason for the Panel's view is that the Policy was not designed to change 
the "first come, first served" registration process for domain names, but to 
address the specific problem of cybersquatting. The scope of the UDRP procedure 
was therefore "limited to cases of bad faith, abusive registration of domain 
names that violate trademark rights ('cybersquatting' in popular terminology"), 
a definition and framework that presupposes the prior existence of trademark 
rights violated by the abusive registration. See The Management of Internet 
Names and Addresses: Intellectual Property Issues, Final Report of the WIPO 
Internet Domain Name Process, April 30, 1999 (the "WIPO Report") Executive 
Summary, paragraphs v and vi; Chapter 3, paragraphs 135(i) and (ii).

  As stated in the WIPO Report,

  "It is considered that concerns about the mandatory nature of the procedure 
can be greatly alleviated, if not removed entirely, by confining the scope of 
the procedure to abusive registrations or cybersquatting..Since the procedure 
would apply only to egregious examples of deliberate violation of 
well-established rights, the danger of innocent domain name applicants acting 
in good faith being exposed to the expenditure of human and financial resources 
through being required to participate in the procedure is removed."

  WIPO Report, Chapter 3, paragraph 160. See also Miele, Inc. v. Absolute Air 
Cleaners and Purifiers, WIPO Case No. D2000-0756 ("the legislative history of 
the Policy indicates that it was promulgated to tackle egregious cases of 
cybersquatting, leaving other disputes to the courts for resolution").

  Thus, arguably, the threshold issue in paragraph 4(a)(i) with respect to the 
complainant's trademark rights should be whether they were in fact 
"well-established rights" at the time of the registration of the domain name. 
The policy was not designed to protect "non-existent" trademark rights, so the 
language of paragraph 4(a)(i) need not and should not be so construed."


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  "But where a complainant can not show any basis for the existence of any 
trademark rights prior to the registration of the domain name, why should that 
complainant be entitled to initiate a UDRP proceeding against the domain name 
holder? Shouldn't the domain name holder in such a case have the right to 
peaceful enjoyment of the domain name as contemplated by the drafters of the 
Policy?

  Apparently not, at least with respect to paragraph 4(a)(i), as under most 
UDRP cases which have considered this issue, domain name holders must look to 
paragraph 4(a)(iii) of the Policy for protection from such Johnny-come-lately 
trademark owners. The construction of paragraph 4(a)(i) to require only proof 
of trademark rights at the time of filing of the complaint has prevailed over 
time, so that, as set forth in paragraph 1.4 of the WIPO Overview of WIPO Panel 
Views on Selected UDRP Questions, the consensus view on this issue is that

  "Registration of a domain name before a complainant acquires trademark rights 
in a name does not prevent a finding of identity or confusing similarity. The 
UDRP makes no specific reference to the date of which the owner of the trade or 
service mark acquired rights. However it can be difficult to prove that the 
domain name was registered in bad faith as it is difficult to show that the 
domain name was registered with a future trademark in mind."1

  As discussed above, the allegations of the Complaint in this proceeding 
establish that Complainant did not have any common law or registered trademark 
rights in the IRONARC mark at the time of Respondent's registration of the 
Domain Name, and therefore, in the Panel's view, should have no standing under 
paragraph 4(a)(i) of the Policy to bring this claim against the Respondent."

  (emphasis added)


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  "And under paragraph 4(a)(iii) of the Policy, to obtain transfer of a domain 
name, the complainant must show bad faith registration of the domain name under 
paragraph 4(a)(iii); a showing of only subsequent bad faith use of the domain 
name is insufficient. Similarly construing paragraph 4(a)(i) to require a 
complainant to show the existence of trademark rights at the time of the 
registration of the domain name, and not just the establishment of trademark 
rights at some subsequent date prior to the filing of the complaint, would 
arguably better reflect the balancing of the competing interests of trademark 
and domain name holders under the Policy, as well as the "first come, first 
served" nature of the domain name registration process.

  Finally, such a requirement in paragraph 4(a)(i) would help protect domain 
name holders from claims by trademark owners seeking to hijack their domain 
names by virtue of later-acquired trademark rights."

  (emphasis added)


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Disclaimer: I am not a lawyer and these are only my personal opinions. If you 
require legal advice, you should seek qualified legal counsel.

Sincerely,
Ted
Prophet Partners Inc.
http://www.ProphetPartners.com
http://www.Premium-Domain-Names.com