Arbitrator Blasts CitizenHawk for Boilerplate UDRP Filing

Panelist calls out mass UDRP filer for automated case submission.

Just how does CitizenHawk file so many UDRP cases? It appears to use an automated UDRP generator or template to quickly file cases. And a panelist with National Arbitration Forum is calling B.S.

The case in question is on behalf of CitizenHawk client The company tried to get, arguing that it differs by only one letter from its mark. But the complaint contained irrelevant and erroneous information, and the panelist wasn’t pleased. When CitizenHawk tried to file an additional submission, the panelist wrote:

Having carefully reviewed Complainant’s initial submission, the Panel believes that it was prepared by some sort of automatic process with little or no human review. For example, the Complaint refers throughout to “Complainant’s Mark(s)” and “Disputed Domain Name(s),” even though there is only one relevant mark and one domain name in dispute. The Complaint includes an obviously false contention regarding the timing of the registration of the disputed domain name, and includes other extraneous boilerplate material (for example, argument and authorities for the proposition that a top-level domain is irrelevant to the question of identicality or confusing similarity—clearly inapplicable in this case, where the trademark includes “.com”).

Ouch. Panelist David E. Sorkin refused to consider the additional submission, and found that the domain name was not registered and used in bad faith.


  1. John Berryhill says

    This one is a gem:

    “Complainant also asserts that the disputed domain name was registered “significantly after Complainant’s registration of their relevant Mark(s) with the USPTO.” Compl. at 7. However, the Complaint identifies only one mark in which Complainant claims rights, and the exhibit accompanying the Complaint identifies the registration date of that mark as January 12, 2010.”

    18 USC 1343:

    “Whoever, having devised or intending to devise any scheme or artifice to defraud, or for obtaining money or property by means of false or fraudulent pretenses, representations, or promises, transmits or causes to be transmitted by means of wire, radio, or television communication in interstate or foreign commerce, any writings, signs, signals, pictures, or sounds for the purpose of executing such scheme or artifice, shall be fined under this title or imprisoned not more than 20 years, or both.”

  2. says

    What a waste. You can not boilerplate UDRP filings like you can threat letters. Citizen Hawk should know better. Their clients should know that these types of filings actually hurt their trademark rights, to the extent they exist.

  3. says

    Since it’s CH and their clients who will be getting burned as a result of this ill-founded if not illegal scheme, “boilerplate” seems especially appropriate.

  4. says

    The next logical step might be to analyze UDRP decisions (esp. defaults) to determine which panelists are using boilerplate responses for their decisions, and which are not. Obviously Mr. Sorkin would be on the positive side of the spectrum, whereas other panelists likely simply fill in the blanks on their standardized decisions.

    One could probably make a strong case that there is bias for those panelists caught filling in the blanks, because it is obviously a lot more work for them to deviate from that template. Given the choice of doing extra work (for no extra money) or simply filling in the blanks, the economic incentives for panelists would lead to excessive rulings against domain registrants.

    • says

      @ George,

      1. I read the decision. Clearly the arbitrator cut and pasted. He mentions a completely different complainant and domain name at the beginning, and some sentences just stop in the middle. Then he orders a cancellation rather than transfer. Outrageous.

      2. Well, actually the arbitrators at NAF are handed some language to cut and paste.

  5. says

    lol Andrew. I browsed the decision so fast, I didn’t spot the AOL reference and (might want to save a copy, too, in case NAF changes it. One can use to preserve a copy independently, too.

    You might want to make that a new story of its own. I’m sure if it was studied systematically, some panelists are doing minimal work for their $1000, and probably earn $5,000+ per hour.

  6. says

    This is another reason why we should push for all decisions to be available via XML and an API, by the way. The providers produce the decisions in non-standard formats to make it hard to do this research in an automated manner.

    It’s hypocrisy, since they got lobbied hard to get efiling of UDRP documents, to make their own lives easier.

  7. says

    I’ve been looking at some other decisions by Diaz at NAF.

    In case #1128992 for, “Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.” So, the complainant proved their case, but still lost!!!

    In case #1259275 for, which was a 3-panel member case, same language “Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.” (although if you read the decision, it should be “failed to establish all three elements”)

    There are actually *63* cases in NAF with the exact match sentence of:

    “Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.”

    which is nonsensical! If anyone needed proof that NAF is a cut/paste factory, this adds to the mountain of evidence.

  8. says

    Actually, it’s not 63 times, but a significant number of times. I went back and read various decisions, and one panelist created text:

    “Not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.”

    (note the initial word “NOT”) This accounts for some of the 63 matches. But, a large number of matches simply dropped the word “Not”, and kept all the rest.

    And the cut/paste factory kept repeating the error, lol.

  9. says

    Ok, final stats, 22 matches for:

    ““Not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.”

    (i.e. with the word “Not” up front)

    So, subtract that from the 63, and there are a lot of cut/paste jobs going on with nonsense text!

  10. says

    I went through and verified that there are indeed *41* instances of this cut/paste at NAF, and here are the relevant case numbers:

    1302612 1299752 1297995 1270184 1267051 1265798 1260576 1259275 1247548 1236932

    1236721 1202940 1195739 1182336 1172987 1158551 1140580 1128992 1128482 1122960

    1065183 1048716 873313 823027 818403 811632 804703 662187 639195 587435

    555041 550345 514784 488845 469107 352423 289033 250240 237522 221239


    And here’s why: originally, some panelist had written:

    “Complainant not having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be DENIED.”

    Then someone dropped the first word. Then, someone dropped the 2nd word, which made it complete nonsense! And they kept repeating the error, for YEARS, sometimes in 3 person panels, too!

    Scandalous. I think NAF needs to explain, and ICANN should create an inquiry, and possibly even suspend/decertify NAF.

  11. Steve says

    Lawyers who routinely file UDRP complaints often start out with a form from a prior case (why reinvent the wheel?). But it is imperative to always thoroughly read each complaint before it get filed to ensure its accuracy and that it is carefully tailored to the current dispute. In fact, when civil complaints are filed in Federal court (such as those under the ACPA), lawyers may be sanctioned for improper statements under Rule 11.

    I don’t know if Citizen Hawk uses lawyers or others experienced in UDRP practice or if it really uses an automated complaint generator, but, when making subtle legal arguments, there is no substitute for direct and thoughtful drafting.

  12. LetsBHonest says

    Lets Be Honest.

    What lawyer or Paralegal or Analyst dont use a form of some kind for commonly used statements.

    Fro “pete-sake” NAF requires their standard language to be used. SO don’t blame the people that use the process “blame the people behind the Process”.

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