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  • 2009 Domain Dunce Award: Panelist Andrew F. Christie

    1. BY - Dec 28, 2009
    2. Policy & Law
    3. 56 Comments

    WIPO arbitrator wins 2009 Domain Dunce Award.

    Last year I handed out a couple Domain Dunce awards. But there was so much stupidity in the domain name world this year that I have about five to hand out.

    The first winner of the 2009 Domain Dunce awards is WIPO arbitrator Andrew F. Christie.

    I’m going to coin a new phrase: “circular reference arbitration”. It’s when a UDRP panelist refers to his own cases as precedent, as Mr. Christie likes to do.

    I first became aware of Christie’s circular reference antics when reading the case for Parvi.org, a case currently involved in a lawsuit. In his decision handing the domain name over to Ville de Paris, Christie ignored thousands of cases of UDRP precedent and the rules themselves, which clearly state that a domain name must be registered and used in bad faith. Instead, Christie decided that a domain name can be registered in good faith but used in bad faith at a later date and still be handed over.

    How did he do this? He cited one of his prior decisions without mentioning that they were his decisions!

    In the Parvi.org decision, under the header “Reconsideration of the bad faith requirement”, arbitrator Andrew F. Christie cited previous cases decided by a “distinguished” panelist who found that domain names don’t need to be registered AND used in bad faith, as the UDRP states. Instead, this panelist decided that a domain not registered in bad faith could still violate the policy if later used in bad faith.

    The panelist he was referring to was M. Scott Donahey, who referred to an even earlier decision in Telstra Corporation Limited v. Nuclear Marshmallows. Christie wrote “The issue addressed in the [Donahey decisions] is profound, and the panelist addressing them is distinguished”.

    What Christie didn’t mention was that he was the panelist in the Telstra case that Donahey relied upon. In other words, Christie wrote the Telstra decision, another panelist agreed, and now Christie is using this “profound” issue as established fact. How’s that for a circular reference?

    It gets better. In another poorly decided case (although the ultimate outcome is correct) for ZeroSpam.com, Christie again refers to his earlier decisions without mentioning that they were his decisions.

    After determining that ZeroSpam.com was registered well before the complainant had any rights to the term, Christie again stated that this was not enough for the respondent to win the case. This time he cited Donahey’s decisions, based on Christie’s decision in Telstra, as well as his own Parvi.org case. Again, he didn’t mention his involvement with these cases!

    After reviewing the reasoning in the [Donahey cases], the panel in Ville de Paris v. Jeff Walter, WIPO Case No. D2009-1278 (“Ville de Paris”) came to a similar view.

    Perhaps this should read:

    After reviewing the reasoning in Donahey’s cases, which were based on my reasoning in Telstra, I agreed with myself in WIPO Case No. D2009-1278 (“Ville de Paris”).

    Mr. Christie has done a slick job using circular references to his own decisions without mentioning that they are his own decisions. He has also decided that, for each UDRP case he receives, he will pervert the definition of “registered and used in bad faith”.

    For that, we give Andrew Christie a 2009 Domain Dunce award.

56 Comments
  • Very nice catch Andrew. I think he pulled the wool over my eyes in the decision a bit b/c he seemed so “fair and balanced”.

    Maybe that fair and balanced approach was just so that he can lay down even more UDRP decisions where the “AND” is not necessary. I noticed he did this but dismissed it after reading the “balanced” decision.

    There are so many trademark lawyers and other interests that would love to get rid of the “AND” so that a flood of UDRP’s could be filed.

    The NAF and WIPO never put brakes on this stuff…… until they are investigated. The NAF already shut down their credit card arbitration business as a settlement for running a shady operation.

  • nice detective work Andrew.

    I tried the same tactics with my wife but lost the case :)

  • Yes, excellent catch, Andrew.

  • John Berryhill says:

    December 28, 2009 at 1:04 pm

    I still like his total BS distortion of the facts in the Parvi.org case. One the things a panelist gets to do is to seem “well reasoned” by simply lying about the facts or omitting crucial facts:

    “The Respondent’s initial response to the Complainant’s cease-and-desist demand was to indicate that the domain name would be used for a particular type of website that was not in any way related to the subject matter of the programs operated by the Complainant under its PARVI trademark, and to offer to place a link on his website directing users to the Complainant’s website. The Complainant indicated that this would be acceptable, but only so long as the Respondent also included a disclaimer of association with the Complainant and gave the Complainant a “preferential privilege” in the event of transfer of the domain name (in effect, an option to acquire the domain name). At that point, the Respondent decided to use the disputed domain name for a website concerned with subject matter related to programs operated by the Complainant under its PARVI trademark.”

    No, Mr. Christie, that’s not what happened and you know it. First, the Complainant admitted in correspondence that the domain name was registered by Mr. Walter in good faith. Second, it was not used “with subject matter related to programs operated by the Complainant” – any bleeding idiot can see that he’s using the domain name to distribute a Linux kernel for a discontinued Sun server product. Oh, sure, the City of Paris is just cranking out Linux server OS software. Bullshit.

    But the best is:

    “The Respondent’s claim that he registered the disputed domain name to use it for a small social networking website because “parvi” is the Latin word for “small” is unconvincing, because the correct word for “small” in Latin is “parvus” not “parvi”.”

    So, on top of being a liar, Mr. Christie is also illiterate. Latin adjectives conjugate, and parvi is the male plural conjugation of parvus – “they are small”.

    Clearly Mr. Christie never met this Centurion:

    http://www.youtube.com/watch?v=IIAdHEwiAy8

    Wait until Biggus Dickus hears of this!

  • The “rules” (section 20) state that “Except in the case of deliberate wrongdoing, neither the Provider nor a Panelist shall be liable to a Party for any act or omission in connection with any administrative proceeding under these Rules.”

    Perhaps it’s time some of these UDRP providers and panelists are tested under that clause. The “discovery” process would be very educational. I believe I read somewhere that UDRP providers apparently have private mailing lists or discussion forums for panelists. If that’s the case, those communications should all be “discoverable.”

    With the number of UDRP cases declining (and thus income to providers/panelists also falling), this pattern of conduct attempting to broaden the set of situations that fall under the UDRP (as opposed to the “clear cut cases” that it was intended for) could almost certainly be considered to be “deliberate.” If it causes someone to lose their rightful property, it would be “wrongdoing” too.

  • John Berryhill says:

    December 28, 2009 at 2:48 pm

    “If that’s the case, those communications should all be “discoverable.” ”

    That is true whether or not the provider is being sued. However, serving a subpoena on a UN treaty organization (WIPO) is no mean feat. The panelists themselves, however, are not immune from subpoena, and that may very well be tested in the near future.

  • Checking the MX records of wipo.int, it appears they use Postini email filtering (owned by Google). One can therefore attempt to serve the subpoena on Google. :)

  • Actually, citing your own case a precedent happens all the time. Berryhill should know that. Moreover, subpoenaing an agreed to arbitrator – about what? Deliberate wrongdoing is something like taking bribes not ruling in a way you do not like.

  • If WIPO panelists have liberal and creative interpretations of the UDRP rules, in order to further their financial interests in garnering more and more cases, it would be somewhat hypocritical of them to desire narrow and restrictive definitions of “deliberate wrongdoing.”

  • Say what you will, courts like arbitration. They do not want to be crushed by domain complaints. Unless you show something other than losing a case or the trend going against your interest, you aren’t going to do anything. Are there odd decisions? Yes. are they “deliberate wrongdoing?” doubt it. Panelists are allowed to have interpretations – that is the whole point of arbitration.

  • John Berryhill says:

    December 28, 2009 at 3:52 pm

    “Actually, citing your own case a precedent happens all the time. Berryhill should know that.”

    Berryhill didn’t write the article, either. Typically, a court will refer to its prior decisions as its prior decisions, and not pat itself on the back as “distinguished” or note that it agrees with itself, as if that were something special.

    “Moreover, subpoenaing an agreed to arbitrator – about what?”

    As has been noted in connection with the NAF, there are communications between the UDRP provider and the panelists which are not made of record. Mr. Christie’s “new paradigm” approach to the UDRP was the subject of a session at the recent WIPO meeting in Geneva. What made the Parvi case particularly interesting for his approach was the Complainant’s express admission in pre-dispute correspondence that the domain name was registered in good faith. This inconvenient fact made the case perfect fodder for his re-interpretation of the UDRP. Quite a coincidence there, eh Mr. Ture?

  • John Berryhill says:

    December 28, 2009 at 4:04 pm

    Ah… I hit “submit” prior to finishing. Concerning the “agreed to” arbitrator – a domain name registrant agrees to the UDRP. If you take a look at the suit filed pursuant to the Parvi decision, one of the sets of allegations is that the UDRP was not applied.

    You will also notice in, for example, Mr. Neil Brown’s recent comments to ICANN on the subject of the proposed CAC “Supplemental Rules”, that the domain registrant does not agree to any and all Supplemental Rules of a UDRP provider, nor to the assignment of any particular panelist.

    In fact, domain registrants do object to assignment of panelists. Take, for example, WIPO D2008-0789 – Ricard.com – brought by Pernod-Ricard (and currently also the subject of litigation).

    http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0789.html
    “The Complainant is Pernod Ricard, Paris Cedex, France, represented by Cabinet Dreyfus & Associés, France.”

    Isn’t that interesting? The principal of Dreyfus & Associés is UDRP panelist Ms. Nathalie Dreyfus.

    Let’s have a look back at WIPO Case Case No. D2001-1471 – pernod.com – also brought by Pernod Ricard:

    http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-1471.html

    “Nathalie Dreyfus
    Panelist”

    Now THERE is one fascinating way to pick up clients, no?

  • John Berryhill says:

    December 28, 2009 at 4:14 pm

    “Say what you will, courts like arbitration.”

    US Courts have uniformly afforded it no deference to UDRP decisions in post-UDRP litigation, and have approached post-UDRP litigation as a de novo proceeding under the Lanham Act. _Parisi v. Netlearning, Inc._, 139 F. Supp.2d 745 (E.D.Va. 2001); _Eurotech, Inc. v. Cosmos European Travels Aktiengesellschaft_, 213 F. Supp.2d 612, 617 (E.D.Va. 2002) (judicial review of World Intellectual Property Organization decision is de novo); see also _Sallen v. Corinthians Licenciamentos LTDA_, 273 F.3d 14, 20 (1st Cir. 2001) (“[T]he UDRP explicitly contemplates independent review in national courts.”) In specific relation to the NAF, a prevailing UDRP complainant was, in further litigation, assessed costs and had its trademark registration cancelled in view of the extent of the lack of merit in a claim that was nonetheless endorsed by an NAF panelist. _Retail Services Inc. v. Freebies Publishing_, 364 F.3d 535 (4th Cir. 2004), discarding NAF Claim No. FA0204000112565 in which transfer of freebies.com was ordered by the panelist.

    Here’s how much the Court of Appeals for the US Fourth Circuit “likes” the UDRP:

    http://pacer.ca4.uscourts.gov/opinion.pdf/021396.P.pdf

    “Although we agree with the City Council that the WIPO proceeding is relevant to a claim under § 1114(2)(D)(v), it is not jurisdictional; indeed, the WIPO panelist’s decision is not even entitled to deference
    on the merits.”

  • “Nathalie Dreyfus
    Panelist”

    WoW! That is disturbing.

  • John Berryhill says:

    December 28, 2009 at 5:22 pm

    “WoW! That is disturbing.”

    It is inherent in having UDRP panelists who are also attorneys (and their firms) which file UDRP complaints on behalf of clients.

    UDRP Panelist/Advocates know exactly what are their client’s issues, and are in a position to advance new doctrines which work to the benefit of their trademark clients. It doesn’t need to be as egregious as Ms. Dreyfus being a panelist and then advocate for a party to a proceeding she decided, but that one is a standout performance.

    Most UDRP panelists do an exceptional job for what amounts to volunteer pay (sorry folks, but it is at the rates they normally charge in practice). However, permitting panelists to also represent parties in proceedings is structurally unethical, because it is a needless opportunity for mischief. There are plenty of qualified attorneys, and accredited panelists, who do not represent claimants in UDRP proceedings. There is no need to have panelists which also represent UDRP claimants. None.

  • WIPO maintains a page with a “Selection of UDRP-related Court Cases” at:

    http://www.wipo.int/amc/en/domains/challenged/index.html

    I wonder how incomplete that list really is, given that “Court cases that are pending or for which no order/decision is available are not published on this list.” Since most court cases reach a settlement, it likely means a large number of cases are not displayed, even if WIPO is aware of them (which they and NAF should be aware of, since they often complain when registrars don’t implement a transfer decision within the 10 business day period, and thus can infer that those situations involve court cases).

    Ms. Dreyfus ordered internetexplorer.com be transferred to Microsoft, for example, in D2005-0644. Looking at the WHOIS, it doesn’t look like Microsoft owns it. Her website does make the marketing boast of a “successful outcome in 99% of cases”, in over 200 WIPO cases, though:

    http://www.dreyfus.fr/index.php?lg=en_EN&sec=news

  • By the way, there was a controversial US Supreme Court decision this year, Caperton v. Massey, where the court created a new standard requiring requiring judges to recuse themselves if there is a “probability of bias”. See:

    http://www.supremecourtus.gov/opinions/08pdf/08-22.pdf

    I believe this principle might be useful to disqualify some UDRP panelists, and even some “forum shopping.”

  • Too bad no one in this industry has millions of dollars and nothing but time to start throwing mud back at these panelists…

  • Mr. Berryhill, you confuse your issues. A claim under the ACPA would be de novo and not require any deference to a UDRP, but, then again, there would be no reason or relevance to obtaining any records from the panelist in an ACPA case either – which was my point. Even if there is a conflict, so what? That is the system that has been built and in which you must function, unless you want to have ACPA suits on all these cases (which would make you richer). However, I hardly think that most domainers are going to want to start having lawsuits rather than UDRP’s for most of their domains. It hardly seems cost effective.

  • John Berryhill says:

    December 28, 2009 at 10:19 pm

    “Mr. Berryhill, you confuse your issues. A claim under the ACPA would be de novo and not require any deference to a UDRP, but, then again, there would be no reason or relevance to obtaining any records from the panelist in an ACPA case either – which was my point. Even if there is a conflict, so what?”

    Because there is an independent interference with contract claim, that’s why.

    “which would make you richer”

    LOL… Now I know you don’t know me.

    Most of the time, the UDRP works fine for the purpose for which it was designed, and you obviously know utterly nothing about what I have told domain registrants for years – by and large, the UDRP is a good deal for all concerned.

    That does not mean it is without problems. Conflicts of interest, and wholesale re-interpretation of 10 years of decisions, and expectations built on it, are problems.

    “That is the system that has been built and in which you must function, unless you want to have ACPA suits on all these cases”

    The “system” we are talking about here is the UDRP which, by its own terms, entitles either party to submit the dispute to a court for “independent” evaluation at any time. It *is* the system in which I have functioned in bringing quite a few suits under Section 4(k) of the UDRP itself.

    Domain registrants are by no means the only ones who go to court after losing UDRP decisions. Take Strick.com, on which I was local counsel:

    http://www.internetlibrary.com/cases/lib_case116.cfm

    “After plaintiff unsuccessfully attempted to acquire the strick.com domain name from defendant, plaintiff had NSI place the domain on hold. Plaintiff thereafter challenged defendant’s right to the domain name in an ICANN proceeding before the National Arbitration Forum (“NAF”) which upheld defendant’s rights to the domain. Because “the NAF decision is not binding on this Court, which has de novo review of the matter,” however, plaintiff was free to challenge defendant’s conduct in an action brought in federal court. Plaintiff commenced such an action, asserting claims of common law unfair competition and federal and state law dilution.”

    And, yes, the TM claimant lost in the UDRP AND in their subsequent lawsuit.

    The UDRP was never intended to expand the scope of trademark rights, nor limit the rights of domain name registrants under applicable law in a competent jurisdiction.

    The problem you seem to have is that the UDRP entitles domain name registrants to seek recourse in court, as if that were somehow out of bounds of “the system the system that has been built and in which you must function”. Again, try reading UDRP 4(k) if you don’t understand that system.

    And, yes, I have a serious problem when a panelist tries to peddle the type of crap set forth in the Parvi.org decision. Go find me this Linux server software provided by the City of Paris under a Parvi mark, and learn some Latin, “Mr. Ture”.

  • John Berryhill says:

    December 28, 2009 at 10:22 pm

    I’m curious to know how ACPA cases would make me any richer, though. I’m one person who gets up fairly early, works fairly late, and charges by the hour. I haven’t run out of things to do in ten years of this stuff, so enthrall me as to how I can get more hours out of a day doing other stuff.

  • John Berryhill says:

    December 28, 2009 at 10:28 pm

    “I wonder how incomplete that list really is”

    Very. A good example of someone abusing the system is Texas International Property Associates. Try running that through PACER.

    Sometimes the trademark claimant simply walks away, resulting in a default against them, as in the very first post-UDRP lawsuit ever filed, which was a state court suit brought after the NAF buypc.com decision. Gauging the incidence of post-UDRP litigation by the WIPO list is misleading.

  • John Berryhill says:

    December 28, 2009 at 10:47 pm

    WIPO D2008-0387 – aspis.com is a good example.

    http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-0387.html

    Nullified by the US District Court for the District of Arizona. No mention on the WIPO “challenged” list.

    http://domainnamewire.com/wp-content/aspis-judgment.pdf

  • I just submitted the aspis.com case to WIPO — let’s see if they post it!

  • Paul Keating says:

    December 29, 2009 at 7:13 am

    Mr. Ture,

    You need to remember that the UDRP is incorporated within the Registrar Agreement by reference. Thus, the UDRP itself is subject to interpretation as a provision of contract law. It is not subject to precedent analysis but rather the language is limited to the 4-corners of the document without injection of any form of parole evidence.

    In the contract context, the registrant accepts the UDRP as it is written – not as it may be interpreted by wayward panelists who have their own personal agenda and who feel that the UDRP must expand to meet the current environment of the Internet. If this is desired the proper course is to revise the UDRP language itself.

    Even if such interpretation were appropriate, one would think the responsible thing to do would be to view the founding papers associated with the drafting of the UDRP. These include the WIPO Final Report as well as documents available on the ICANN site. Panelists interested in expansionist policies, however, take a great deal of care to not conduct any such investigation. If they did they would find clear references that And means AND and not OR and that the “examples” given in connection with bad faith is a listing of what would constitute bad faith reg and use. Thus, if one said the following are examples of Red and green houses and then listed houses painted in various shades of red and/or green, that would not mean that the example that described a house as entirely green was evidence that it was also red in color.

    As to the limitation of liability, a careful reading will show you that it is agreed to only as a part of the response in the UDRP. There is no immunity in a default situation and I for one am waiting for that perfect factual situation to occur.

    Some panelists also like to reference Policy Rule 2 as evidence that bad faith registration can occur only via use. These is a dishonest approach. Rule 2 is a copy of language in the registration agreement and the words themselves apply clearly as between the registrar and registrant (see reference to “you” and “us”. Further, the various representations are all knowledge based and the magical “infringement” rule is used. Panelists who wish to reference Rule 2 must honestly deal with the actual knowledge issue AND then proceed to a traditional infringement analysis which goes well beyond comparing the text of the domain and tm.

    As to discovery, given the contractual aspects, one is not limited to an ACPA claim. Under the contractual interpretation and the related interference and conversion claim, it would be an interesting project to investigate the communications and non-public records that exist. This would include internal communications between panelists and their various associates and paralegals. I doubt a court in the US would have much difficulty determining that it is relevant for discovery purposes.

    As with John Berryhill, I am not interested in destroying the UDRP and find it generally a positive thing. However, we have now gone well beyond the parameters and both the ADR providers and the panelists must be reigned in.

  • Paul Keating says:

    December 29, 2009 at 7:14 am

    Andrew, Another fine example of citing ones own decisions is Mr. Harris who in some instances issues decisions in which the ONLY authority cited are his prior opinions.

  • Paul Keating says:

    December 29, 2009 at 7:54 am

    Another example of Christie in action:

    http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1276.html

    “This finding does not, however, resolve the dispute. In three recent decisions under the Policy – City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009-0643, Phillip Securities Pte Ltd v. Yue Hoong Leong, ADNDRC Decision DE-0900226, and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, WIPO Case No. D2009-0786 (together, “Octogen trio of cases”) – a distinguished panelist expressed the view that, based on a close reading of the decision in Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003, “bad faith registration can be deemed to have occurred even without regard to the state of mind of the registrant at the time of registration, if the domain name is subsequently used to trade on the goodwill of the mark holder”.”

    Here he is applying the same circular citation in a case where the domain (zerospam) was registered 7 years before the tm registration and at least 1 year before the claimed first use date.

  • Well, Paul, at least that one’s denied. :)

  • Paul Keating says:

    December 29, 2009 at 10:41 am

    Dave,

    Agreed but the problem is that MOST of these “new” expansions start out in decisions where the complaint is denied. They are then cited in other decisions where the expansion is used to take the domain.

  • Even the ACPA is very clear the standard is:

    “(ii) registers, traffics in, or uses a domain name that—
    (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
    (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or”
    (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.”

    Case III are Red Cross and Olympic marks, so let’s ignore those (they’re very old in any case). Case I and Case II contain the phrases “mark that is distinctive at the time of registration of the domain name” and “famous mark that is famous at the time of registration of the domain name” — notice both state clearly “AT THE TIME OF REGISTRATION OF THE DOMAIN NAME.”

    So, even though the ACPA uses the words “or” instead of “and” (when describing “registers, traffics in, OR uses a domain name”), if the domain predates the mark then the registrant has a clear defence. The “OR” essentially becomes an “AND” because of that extra language.

    The ACPA also includes the words “Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.” TM lawyers who represent complainants like to leave those words out when they push forward their UDRP-reform ideas! That’s important counter-balancing language that exists.

  • Paul and John:

    Thanks for you contributions to this thread!

    Great information!

  • I should brush up on my Latin, because I have no idea what you are talking about regarding Latin.
    However, regarding the UDRP, Policy 4(b) seems instructive, as the conjunction is “or”, by the black letter, time of registration would not appear to be as relevant as some would hope, if you come back later and make improper use:

    b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

    (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

  • “JB Ture” (presumably a fake name?): There is a very big difference between “evidence” and “proof”. Perhaps you overlooked that, as the UDRP contains the word “evidence.”

    Each of the 4 circumstances enumerated in 4(b) are simply sets of data that can be included amongst the evidence, but it’s the job of panelists to weigh the evidence, determine whether it is valid or not, etc.

    For example, suppose John Smith is murdered, and blood is found at the scene. Tom Jones is a co-worker of John, and was known to have had arguments with him. That’s “evidence”. The blood at the scene was type “AB negative”, which matches Tom. That’s evidence. However, upon questioning, it was learned that Tom was attending a wedding in another city at the time of the murder, and was videotaped (with a timestamp) demonstrating this fact. That’s another piece of evidence in the case. Furthermore, DNA analysis of the blood showed that it did not match Tom at all. This is also “evidence.”

    One might want to brush up on the difference between “evidence” and “proof” after you review your Latin.

  • John Berryhill says:

    December 29, 2009 at 2:13 pm

    And, here Mr. Ture is where I wonder about your understanding of English, and particularly your understanding of the word “evidence”.

    Please tell me what this means:

    ——
    You will be found a murderer if you stab someone to death with a knife.

    The following circumstances shall be evidence that you stabbed someone to death with a knife:

    A) You drove a knife into someone’s body;

    B) You were standing over their corpse with a bloody knife;

    C) You own a knife; or

    D) You were seen running from the crime.

    ——–

    What you do not understand, and what Mr. Christie does not understand, is the meaning of the word “evidence” and how the word “evidence” and “proof” are two different things.

    Yes, “owning a knife” is evidence that you have stabbed someone to death with a knife. A piece of evidence is an assertion which, if proven, makes a proposition more or less likely. If I establish that you “own a knife”, I am one step closer to proving you murdered someone than if I do not establish that you “own a knife”.

    The fact that you “own a knife” is evidence that you have stabbed someone to death with a knife. It is not proof you have stabbed someone to death with a knife.

    However, if I make a list of things that constitute “evidence” you have stabbed someone to death with a knife, then there are going to be many things on the list which do not alone constitute a complete proof of having stabbed someone to death with a knife.

    If I am trying to establish that one is “drunk and stupid”, then it is “evidence” thereof that one is drunk. It is also “evidence” thereof that one is stupid.

    Fortunately, however, tomorrow I will be sober, and those who are drunk AND stupid will still be stupid.

    Of course the “use”-based evidence doesn’t say “registered and” in front of it. What kind of idiot is going to read a “use”-based evidentiary condition, as if it did not imply that the domain name was already established to have been registered.

    What Mr. Christie is trying to do is to reverse hundreds of interpretations of this particular contract provision on this point, by ignoring the definition of the word “evidence”, and what it means at law.

    An offense may have any number of conjunctive conditions which need to be proven. Each of those conditions may require particular evidence thereof. In providing a list of evidentiary items, it is not necessary to recapitulate all of the conjunctive conditions which define the offense. That is where Mr. Christie has gone clean off the rails here, as illustrated by listing things which may be evidence of “stabbing someone to death with a knife”.

  • My point was, to quote the actual story about which I was commenting:

    “In his decision handing the domain name over to Ville de Paris, Christie ignored thousands of cases of UDRP precedent and the rules themselves, which clearly state that a domain name must be registered and used in bad faith. Instead, Christie decided that a domain name can be registered in good faith but used in bad faith at a later date and still be handed over.”

    The Policy provision I referenced seems to indicate the that the 1) registered AND 2)used do not need to both be IN BAD FAITH, as Andrew seems to say. One can register in good faith and at a later point choose to use it in bad faith and still be in violation – as the Policy clearly indicates – if you provide sufficient evidence of that bad faith use, it can rise to the level of proof.

    As for the facts of other specific cases (and really the facts of this case), I have made no comment, but if you arbitrate you should expect arbitrary decisions – the particular concept referred to in this case does not seem to me to be beyond the pale – it seems within the black letter). Frankly, it is entirely reasonable that a name can be registered and used in good faith for years, then the owner decides he can make more by using it in bad faith. With the dual requirement Andrew references, under the UDRP, that person would be free to continue the bad faith use. That seems equally, if not more, illogical and unjust.

    I am actually trying to discuss to Andrew’s post and how the various points raised actually relate to it.

  • This is where it doesn’t matter if it’s “illogical and unjust”, but a matter of following the rules. Some UDRP panelists don’t realize that UDRP is simply akin to a minor league small claims court, with very specific standards of what kinds of cases can be brought before them. Or perhaps they do realize it, but have greater ambitions — they want to turn UDRP into a world court for domain name disputes.

    Suppose we follow that example where a domain name is registered and used in good faith for 10 years. Then, a new startup launches a product with a mark identical to the domain name. The domain owner then decides to use the domain name in bad faith, to market products in competition with the startup. The proper forum for this case is *not* UDRP, because it clearly and conclusively fails the “registered in bad faith” test. Any “evidence” of bad faith use or registration is massively outweighed by the stark reality of the registration date. Unless the complainant pleads and proves that the domain owner is a time traveler, the UDRP challenge must fail.

    Is this unjust? Certainly not, because the complainant simply brought the case to the incorrect forum in the first place. If someone wants a divorce, they don’t take it to the US Federal Court of Appeal as an initial court for their claim — it’s simply the wrong forum, and a judge would toss it out. Just like you can’t bring cases for “specific performance” to a small claims court (where only money damages cases are allowed). In the case of domain names, the complainant could simply sue the domain registrant in real court to find justice. If the complainant brings it to the wrong forum, like UDRP, the panel must toss out the claim. While the panel might have great empathy for the complainant, it is an injustice when the panel takes cases that are out of scope.

    The UDRP has a simple set of remedies, either transfer the domain name, or cancel the domain name. This is far more restrictive than what a real court can do. A real court, for example, might order the domain owner to stop posting the competing content. The court might order money damages. Transfer of the domain name probably would not occur, unless the domain name could not possibly have any non-infringing use. Suppose a copyright violation occurs on the front page of the Wall Street Journal — the court is unlikely to award me ownership of the entire newspaper as a “remedy.” The remedy would need to be in balance with the injustice that transpired. Complex discovery, witness statements, etc. would be needed to handle these complex set of cases. That’s what real courts are designed for, to ensure justice through due process.

    In contrast, a bargain took place when the UDRP was created, namely that a simple procedure would exist for the so-called “clear cut” cases, in exchange for those simple set of remedies and informal procedures (e.g. no discovery, witnesses, lower costs, etc.). These “clear-cut” cases are a small subset of all possible domain name disputes. However, panelists and/or providers with dollar signs in their eyes seem to want to grow the market, and start making decisions in cases that are not “clear-cut” and are undeniably outside the “picket fence” that was carved out for UDRP cases.

    They do so at their peril, as in my view it is a deliberate wrongdoing. The time will come that they make a ruling against the wrong person, and…well, just go ask NAF why they are no longer involved in credit card disputes (or lookup the Wikipedia article on NAF — I would link to it, but it seems that triggers the moderation queue on this blog, although long posts seem to trigger it too, grrrr!).

  • Mr. JB Ture,

    You are wrong.

    If “used in bad faith” is all that is required, then why does the policy go out of its way to mention the “registration” part?

    Hence, the policy is understood to mean “registered in bad faith” and “used in bad faith.”

  • John Berryhill says:

    December 29, 2009 at 8:24 pm

    “Frankly, it is entirely reasonable that a name can be registered and used in good faith for years, then the owner decides he can make more by using it in bad faith.”

    Yes. It is also entirely reasonable that a domain name could be defamatory, constitute an illegal solicitation (HaveSexForMoney.com), and any number of unlawful, bad, or morally wrong and evil things.

    It is also that case that people who have held domain names and used them for years suddenly find themselves subject to claims being brought by trademark owners who did not even exist at the time the domain name was registered.

    The UDRP, as developed in the first WIPO Internet Domain Name Process, was intended to address a particular wrong called “abusive registration”. The UDRP was not intended to address every conceivable “bad thing” that in some way might be connected with a domain name. The focus was on bad faith registration and use per se.

    If, as you put it, the domain name was used lawfully for years, and then converted to some infringing purpose, then think about what you are saying there. The issue in that circumstance is not the domain name, but with how it is being used. As Mr. Kirikos quite clearly put it, the UDRP has a single remedy – transfer the name. But here you are suggesting a scenario in which the problem does not arise from an intention manifest in the selection of the name, but your scenario solely relates to how the name is being used. Courts have ways of addressing that type of situation. The UDRP does not.

    And sometimes this “conversion to bad faith” happens as result of what is called in US trademark terms “reverse confusion”. This is the type of thing in which a small seller of women’s books in the US midwest was called “Amazon” long before the online retailer became dominantly and famously associated with book sales. In that type of situation, the remedy is sometimes that the senior user will indeed have to give up its name, but the junior dominant user will also have to pay for the attendant expenses and value of goodwill given up by the junior user.

    That is precisely what happens when a junior TM claimant’s advertising spills into the relevance engines of PPC providers. The name could have been around for years, and suddenly the ad feed changes, but it only changes as a result of the junior party’s activities. Mr. Christie’s peculiar doctrine is a roadmap for domain name theft, since the ad feed can be intentionally gamed (and we’ve seen this, for example, in the pig.com dispute, where a TM claimant for oil spill adsorbents was bidding $2.74 per click in order to get its ad into the top spot for searches on the word “pig”).

    You have to bear in mind the limited remedial tools available under the UDRP, which is what drove the principle that it is intended to be limited to “clear cut” cases of manifestly abusive domain registration, and not any situation which might be characterized as ‘wrong’.

    That is why I object to your false dichotomy of the alternative being “entirely lawsuits”. I don’t object to the UDRP. It’s an efficient – and fair – system for the type of cases for which it was designed.

    Finally, this “mission creep” is disturbing in connection with the proposed URS – rapid suspension procedure for new TLDS.

    I’ll make some people faint here – I also believe that a URS, properly designed, is worthwhile. Nobody needs to pay $1500 and wait two months to figure out whether Microsotf.tld is a stinker of a domain name.

    But what we are being promised is that the URS will be limited to that type of “no brainer” “Microsotf.tld” situation. If there is a way to nail that down in black and white, then I’m fine with it.

    But is someone like Mr. Christie going to get creative after a decade of URS proceedings? If so, then I’m hearing the same tune I heard back in 1999.

  • Granted much of what you said is accurate and I have no objection to it. My scenario is where someone named James Wilson Marriott has jwmarriott.com as his personal site. No issue. He has no ads on it. No issue. IT should not be taken. He registered and used it in good faith, regardless of the similarity.

    Then he realizes he can make some money and parks it with key words for hotels. I think there is an issue. Clearly there is a ACPA issue, but, as the policy is written, there is a UDRP issue. The simple fact that he originally registered it for innocuous personal use does not seem, by the letter of the Policy, to form an absolute bar to a complaint – essentially my point that in the operative portion of the Policy, the language is “or” rather than “and.”

  • Anyone can make a complaint, even without a trademark. Silly ones are filed all the time.

    Your “point” is still incorrect, the language is “and.” If Wilso Marriott did what he did, the hotel chain should lose a UDRP, but it would likely win some relief (not necessarily a domain transfer) in court. Court is the proper place for the dispute, not UDRP. Panelists who find otherwise are intentionally misreading the policy.

  • John Berryhill says:

    December 30, 2009 at 11:23 am

    “My scenario is where someone named James Wilson Marriott has jwmarriott.com…”

    That’s a great scenario. Clearly, what you describe would be a scummy, rotten, unlawful, and bad faith thing for him to do. He should be stopped from running those hotel ads.

    In fact, you describe the allegations in two ACPA cases in which a domain name was not transferred. Mr. Uzi Nissan did in fact run ads relating to foreign cars at his nissan.com domain name. He has been enjoined from advertising automotive products, and he retains the domain name. Similarly, visual artist Keith Urban was unaware that Google Adsense was running ads relevant to country singer Keith Urban at his keithurban.com domain name, for which he was sued under the ACPA, and which he still owns and operates without the country music ads.

    There have been other cases which mirror the precise facts you set out, and in which the domain registrants have been stopped from using the domain names in an unlawful manner. Under the UDRP, Mr. A.R. Mani was allowed to keep his armani.com domain name.

    As an aside, though, while TM law does not confer an absolute right to use one’s personal name for any purpose (if my name is DuPont, for example, I can’t use it for chemicals), the UDRP in contrast, because of its limited scope confers a legitimate right in a domain name if the domain name corresponds to what one is “commonly known as”.

    Hence, what you describe is precisely what I meant by a “bad situation” that is not necessarily effectively redressable by the UDRP as the right tool for the job. Under the ACPA, your Mr. Marriot may be enjoined from advertising hotels, but he very well may not lose the domain name.

    And that gets back to your comment about “the system”. As an attorney, I am licensed to represent other parties in any court in Pennsylvania – family court, traffic court, county court, state court, and also in the federal courts.

    So, let’s say you burn down my house (and my neighbors’ houses, since this “rich” attorney lives in a cheap suburban townhouse condo). Did you do something wrong? Yes. Should I win a case against you? Yes. If I file a complaint against you in Philadelphia County Family Court will I win? No.

    I won’t win that case because I am in the wrong court, and one which is not set up to adjudicate the type of claim I have against you.

    The fallacy of “but he’s doing something bad”, as an impulse to undermine, and consequently de-legitimize, the UDRP is embodied in the old adage of treating everything as a nail if the only tool you have is a hammer. What you have among the UDRP panelist roster are certain individuals who do not appreciate the distinct functions of adjudication, legislation, and advocacy. Those functions call for different skill sets, and there is a reason why the crown jewel of Western political thought is embodied in the concept of separation of powers.

    Let’s say I ask you which is a better tool for driving a nail – a screwdriver or a wrench (“spanner” for Limeys and their ilk)? Are you really going to ponder whether you might do better hitting a nail with the handle end of the screwdriver or the flat side of a wrench? Or are you going to say, “Get a hammer, you fool.”

    The impulse to want to “stop bad things” is a good and noble impulse. I’m not criticizing anyone for wanting to stop bad things, and I’m not defending anyone engaging in bad things. Civilized people have figured out, through painful and repetitive experience, that the process by which one goes about stopping bad things is as important, and even more important to maintaining civilization, than the stopping of “bad things” as an independent end.

    Finally, as Mr. Keating pointed out, we are dealing with a contract provision here. Moreover, we are dealing with a specifically negotiated contract provision. We are not dealing with a legislative or constitutional point of interpretation. The UDRP is a contract. While contracts leave room for interpretation, those provisions for which the provision in question was in fact the object of negotiation are construed narrowly. It is the same principle of estoppel applied to, say, patent claim interpretation.

    And, again, what you are doing is taking a subordinate list of evidentiary items, and reading it to dominate the overall condition to which it is subordinate.

    The UDRP sets forth the third criterion as:

    “your domain name has been registered and is being used in bad faith.”

    Well, of course every domain name “has been registered”, so if you do not apply “bad faith” to the condition of registration, then “has been registered” are surplus words with no meaning.

    That criterion is set forth first, and then a subordinate clause recites things which “shall be evidence”. The use of the word “evidence” means, to a literate attorney without an axe to grind, that the recited things are not necessarily conclusive nor alone sufficient to establish the proposition sought to be proved.

    The narrow scope of the UDRP is a design feature, because there is not a range of remedies available to take into account situations which are more nuanced than the scope of remedies allow. It is not the end of the world that I can’t sue you in any court for burning down my house, or that the range of courts available to me have their own limitations on the types of cases they are designed to address.

    But I do commend you for raising precisely the type of situation in which Mr. Nissan was able to keep his domain name, subject to an injunction requiring him to remove auto related advertising. I am, frankly, skeptical of his motivation, but the actual law applied by an actual court determined he was entitled to keep the domain name. Why should the scope of “transfer” situations in the UDRP be broader than what the law would require? Again, one of the driving principles of the UDRP is to keep its scope narrower than applicable law, to avoid undue broadening of its application in procedure with limited due process considerations.

  • John Berryhill says:

    December 30, 2009 at 11:42 am

    “under the UDRP, that person would be free to continue the bad faith use. That seems equally, if not more, illogical and unjust.”

    I would like to test your sense of “justice”.

    You have a trademark for “EXAMPLE” for widgets in the country of Blogistan.

    I register “EXAMPLE.COM” as a domain name for a project which doesn’t pan out, and two years later, I put PPC ads on it.

    Among the ads on the page for various things, there are ads for widgets.

    You write to me and inform me of your trademark.

    I say, “Oh, I’m sorry” and remove the widget ads.

    You then file a UDRP complaint.

    Alternatively, let’s say you don’t write to me first, but simply file the UDRP complaint while the widget ads are live. In response, I say, “I didn’t know about his Blogistan mark, or that the ads were showing widgets, but I will be happy to remove the widget ads.”

    Should there be a different “just” result in those two cases?

    I can give you a list of UDRP panelists and where they will come out on both of those fact patterns. One panelist in particular is particularly proud of his decision to transfer a domain name under those circumstances, and features it in his presentations on the subject.

  • Paul Keating says:

    December 31, 2009 at 8:44 am

    Mr. Ture,

    I am sure you are growing tired of this and my last few posts made from my iphone do not seem to have made the comments listing.

    I would like to stress a few points in an attempt to further clarify what Mr. Berryhill and others have been saying.

    1. Both the registration and use must be in bad faith. To argue that registration alone is sufficient is simply silly. That argument was raised by a law firm in BSA.com and they received a RDNH finding in response.

    2. Policy 4(b) is a listing of what constitutes evidence. It does not say that the following will constitute bad faith registration and bad faith use.

    3. It is incorrect to see any of the listed examples as evidence of BOTH bad faith registration and bad faith use. Each example applies to the specific situation described. The language does not, for example, state “any of the following will be evidence of both bad faith registration and bad faith use.”

    4. While 3 of the examples apply to registration and only 1 to use, that does not mean that 4(b)(iv) also applies to registration. A review of examples 4(b)(i-iii) clearly indicates they focus on registration. They are not evidence of bad faith use – such evidence must be separately established. For example, the circumstances showing you registered the domain for the primary purpose of selling it to the trademark holder or a competitor thereof is only evidence of registration intent. To find bad faith use in such a situation the panel would be required to find evidence of bad faith use. This may be shown by the fact that the respondent tried to sell the domain for an unreasonable amount or it may be shown by other evidence.

    Example: Lets suppose the rule read: “For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without
    limitation, if found by the Panel to be present, shall be evidence of cows and horses.

    i. a black cow
    ii. a brown cow
    iii. a black and white cow
    iv. a horse

    The fact that (iv) described only a horse does not mean that a horse is also a cow. Nor obviously do examples (i-iii) indicate that a cow is a horse.

    The analysis by Mr. Christie (and now unfortunately others) shows a fundamental error of both logic and grammar.
    If the rule had stated: “For the purposes of Paragraph 4(a)(iii), ANY ONE OF the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of BOTH registration and use in bad faith…” then Mr. Christie’s arguments could possibly be credible.

    Mr. Christie’s intention is clearly to expand the UDRP beyond its stated purpose. This can be seen in a 2002 article he authored in the Journal of World Intellectual Property, Vol. 5, No. 1, Jan. 2002). I have sent a copy of the article to the editor asking that he post it as a link. UPDATE; HERE’S THE LINK

    There is no support for such a process in the contractual nature of the UDRP, particularly given the many historical comments prepared at the time by those involved in its drafting.

  • John Berryhil says:

    December 31, 2009 at 12:35 pm

    “Mr. Christie’s intention is clearly to expand the UDRP beyond its stated purpose. This can be seen in a 2002 article he authored”

    Of course, Mr. Christie today would probably cite that article as being written by “a cleary misguided author who differs from the distinguished panelist in Parvi.org”.

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