A proposal to rectify bad UDRP decisions when there is dissenting opinion.
If you read any of the domain blogs and forums out there, you probably read about the recent LH.com UDRP decision courtesy of a three person panel at National Arbitration Forum. The panel handed over the generic domain name LH.com to airline Lufthansa.
Apparently two of the panelists (Hon. Carolyn Marks Johnson and David Tatham) didn’t find the irony in their acknowledgment that LH.com’s owner, Future Media Architects, invests in a number of two and three character domain names, and thus probably didn’t even have Lufthansa in the back of its minds when it registered the domain name.
But one panelist, David E. Sorkin, understood that. He dissented on the opinion, writing:
I respectfully dissent. I simply do not believe it is likely that Respondent’s reasons for acquiring the disputed domain name were related in any way to Complainant or its mark, and therefore would not find that the domain name was registered in bad faith, as required by Paragraph 4(a)(iii) of the Policy.
So one panelist got it right, two got it completely wrong, but Future Media Architects loses the domain. Well, not immediately. Future Media Architects has filed a lawsuit to keep the domain name. You can’t blame it. This domain has a liquidation value of $200,000 or more, and a 7 figure end user value.
But why should this go to the courts now? I propose a change to UDRP arbitration when there is a split panel: either side can request one additional three person panel review.
In this case, Future Media Architects could request a new review with three new panelists. If it loses again, it has to appeal outside of the arbitration system (i.e. lawsuit). If the new panel has a few smart folks on it, the matter will be settled by a unanimous decision.
What do you think?
Good idea as long as it only applies to the
Respondents. If the Complainant got to file again it would be abused.
Decisions by single member panels could also be appealed this way.
The recent BreedersClub.com decision is just as bad. The complainant, breedersClub.net didn’t even have a trademark or service mark of any kind.
@ Dennis – I guess I don’t understand how complainants could abuse this while respondents couldn’t.
BreedersClub was bad.. One mistake there was not electing to go with a three person panel.
This seems like a good idea; though probably best if on the second go-round, the losing party pays the filing fee.
Alternatively, they could bring in two more panelists and require that 3 (or better, 4) of the 5 panelists be in agreement to take away a name.
Even better, though, would be a requirement that all 3 of the panelists be in agreement before a name is taken from someone.
Taking away the valuable property of another should require no less.
Steve, good ideas. I especially like having the losing party pay the fees.
I agree with Steve M, the UDRP rules should change so that it must be unanimous with a three person panel to transfer a name.
Better yet, if it is proved that a UDRIP filer registered in bad faith, The UDRIP complaintant loses the rights to its companies name and T.M. Rights. That would slow down UDRIP Filings.
Dennis – I guess I don’t understand how complainants could abuse this while respondents couldn’t.
Then you have not put much thought into it.
Complaints are often abusive to begin with.
Rarely will you see a cybersquatter respond to an obvious case of cyberswuatting, let alone pay for a three member panel.
Large firms however would surley file for multiple arbitrations without blinking an eye. Why s hould someone have two chances to steal a domain.
Lack of an appeal system for the accused is a denial of ‘natural’ justice in modern procedures.
Appeal rights by both sides isn’t necessarily part of that scheme.
In ‘Double Jeopardy’ situations the complainant only gets one go.
At the moment, there is no significant downside for the complainant who loses a URDP case. Giving them an automatic ‘second go’ would simply be an invitation to have a practise case in the first, to find out the defense case, and do better next time, so to speak.
Definitions of ‘Attempted domain hijacking or theft’ should be set and egregious complaints should lead the ‘hijack’ branded complainants (and perhaps representative councel) to public opprobrium and loss of further rights to appeal similar cases, perhaps for a period of 5-10 years.
In the absence of financial penalties, that harsh outcome possibility would at least give them (and their representatives) pause for reflection, before launching a cavalier URDP.
Reverse domain name hijacking is very difficult to get in a ruling. But if a company is found to reverse hijack three times, they should be banned from filing more UDRPs.
@Jeff, if only.
While UDRP is an “internationalized” dispute system/platform applicable (whether we like it or not) to everyone, where ever they live; because TM rights are country specific, they must generally be legally attacked in each country where they exist.
Furthermore, taking away someone’s TM requires a much more detailed and involved (and expensive) process than taking away someone’s domain (another whether we like it or not).
I’m surprised that ICANN doesn’t have the UDRP arbitration policy state that the COMPLAINTANT is bound by the panel’s review and agrees to ICANN panel’s view on domain ownership as the “DOMAIN REGULATORY BODY ADVISEMENT”, which can be then used by the RESPONDENT in any lawsuit that the COMPLAINTANT may file if they lose the UDRP. In other words, if the Complaintant loses the UDRP, they can request an appeal on their filing, with a three member or more panel. If the panel is unanimous, then the Complaintant agrees to allow the Respondent to enter this professional decision as a source of expert understanding to the domain’s ownership into any civil action later.
This would make companies think twice about suing a domain holder once they lose to a UDRP and a second review appeal. The second appeal could be something ICANN could charge twice as much as the first UDRP, but at least it would put the Respondent in a better position legally if they won unanimously. What other “expert” source could a Complaintant refer to in a civil action?
Of course, if the Respondent lost, they also could request a FREE three panel review of the decision, and if the decision wasn’t unanimous, they wouldn’t be held to “expert opinion” of the ICANN panel in a civil action.
Make a secondary “appeal” panel for UDRP decisions that force both parties to submit to civil limitations in a court action after the UDRP, if the decision was unanimous by the ICANN panel.
Stephen, there’s no “appeals” process in UDRP. But I guess what you really mean is the complainant can file practically the same dispute but with some additional or new info some other time?
Even if there’s a provision binding the complainant and the respondent to the UDRP decision, either one can still go to Court.
I agree that the UDRP needs overhauling. However, this is not the way to do it.
There are already panelists who have figured out that they can make a nice little side income by making dumb decisions.
Do you really want to create an even greater incentive for panelists to market themselves as *partial* arbitrators.
Better overhaul idea —
1. All domain name disputes go to a single member panelist. Either party can appeal that one member panel’s decision to a three member panel.
2. If a panelist is overturned on appeal more than three times, he or she is suspended from being a panelist for 1 year.
3. No single panelist can be involved in more than a finite number of cases per year – not sure how many that should be, but it should be small enough that it will remove the panelists from circulation who make stupid decisions so that they’ll be picked again.
4. Give RDNH some teeth. All it is now is a psychological victory. Frivolous appeals and RDNH should come with a financial penalty.
Anyone know the status of the FMA lawsuit against Lufthansa?
http://www.LH.com is now pointing to Lufthansa.
David – the lawsuit was settled late last year. So they must have struck some sort of agreement.