Common sense prevails in Pig.com case; Keith Urban is misguided in KeithUrban.com case.
This week Rogers Cadenhead won his UDRP with MGM over the domain name WarGames.com. Although I believe the decision was correct, there were some gray areas that at least gave MGM some inkling of rational for filing the complaint. But that’s not always the case.
Take the recent case of Pig.com, owned by DNForum owner Adam Dicker. A company called New Pig Corporation, which claims to have trademarks for “PIG”, went after Dicker for the three character generic domain. Fortunately, with domain lawyer John Berryhill representing him, Dicker was able to keep the domain. This is an example of a company trying to abuse UDRP to steal a name from a legitimate owner. New Pig Corporation even bid very high on pay-per-click ads to show up on Pig.com in order to try to show that the domain was trading on its goodwill.
In another case, musician Keith Urban is going after another guy named Keith Urban for the domain name KeithUrban.com. Can you imagine if a celebrity had your same name and that celebrity thought he should own it because he’s more popular than you? The only thing on KeithUrban.com that reflects the musician are the Google ads, which are not selected by the site owner. Those ads were added recently. A review of Archive.org shows that his site has never included information about the musician.
Given cases like these, it’s easy understand why people are frustrated with UDRP. Even if you have legitimate rights to a domain, defining yourself costs money. However, Berryhill points out that paying to defend a UDRP is worth it in the case of a valuable domain. At DNForum, he wrote:
I have seen plenty of domain registrants successfully defend their own UDRP. From time to time, I will take a look at a pro se response and provide a couple of changes, pointers to relevant prior decisions, and other things that will improve the response, at minimal cost. Several attorneys who do a lot of UDRP responses – Ari Goldberger, Steve Sturgeon, Stevan Lieberman, Zak Muscovitch, Brett Lewis, to name a few – have become fairly efficient at rapidly preparing and filing responses. Using a three-member panel fee at, for example, WIPO, costs $2000 for the panel fees, and I might take anywhere from four to eight hours to draft a response depending on the fact pattern, at $250 per hour.
So, if you are looking at a domain name that is worth $20,000 or so, then it’s a business decision whether it is worth spending, say, $5K to defend it or not. If the domain name isn’t worth much at all, then the downside of losing it is not that great an injustice.
In the case of Pig.com, Dicker is said to have purchased the domain for $50,000.
There’s a lot of debate as to whether the winner of a UDRP should be able to recover legal costs. Although it seems fair that Dicker would recover legal costs in this case, this is a double-edged sword. A lot of domains are given to complainants with questionable justification. As a respondent you could get hit with your legal fees along with the complainant’s fees.
Berryhill also points out that although most UDRPs are won by complainants, that might be because cases are self-selecting:
As someone noted, most UDRP’s are won by the Complainant. That doesn’t mean the UDRP is necessarily “unfair” – it is simply a reflection of the fact that lawyers don’t generally waste their time and their client’s money on frivolous filings. I would expect most UDRP’s to be won by the Complainant simply for that reason.
If you look over the list of UDRP decisions, they most commonly involve well-known marks, and the Respondent most often does not file a response. Again, that’s a reflection on the fact that the UDRP is designed for no-brainer cybersquatting situations.