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Refreshing Discourse from a Domain Name Arbitrator

Dissenting arbitrator says many domain arbitration panels are missing the point.

A recent WIPO domain name dispute for RuggedSwitch.com was found in favor of the complainant (read case). But one of the three arbitrators on the case –Diane Cabell — dissented, and her dissent puts into words the frustrations many people have about how UDRP cases are being handled:

The Complaint should fail under Section 4(c)(i) because the Respondent was using the Domain Name to offer bona fide goods and services prior to notice of the complaint. Complainant’s remedy is in court, not here.

This is a dispute between two competitors from different countries. The term “rugged switch” is a descriptive term used in their industry. Respondent registered the Domain Name for the purpose of using the descriptive term to describe the goods it was selling. That use is a legitimate interest. At the time the Domain Name was registered, Complainant held one design mark registration in Canada and, according to its US mark registration, had begun using the term as a mark in the US a few months earlier but it is not clear from the record that it had perfected any rights nor had it yet applied for a US registration. Design marks are distinguishable from text marks. Design mark rights exist only in combination with the design. A domain name contains no design elements. At that point in time, it would seem that Respondent violated no trademark rights when it registered the Domain Name.

Moreover, Complainant’s later US mark applications were rejected as descriptive for switches. Complainant amended its application to eliminate the class of goods involving switches and was subsequently issued a registration. This again, reinforces the lack of any mark rights sufficient to prevent the use of the term as intended by the Respondent.

Before the UDRP was developed, the domain dispute policy applicable to “.com” domains gave sole and exclusive right to a domain name to the owners of trademarks, regardless of the type of mark, its jurisdiction or of any competing rights that a domain registrant might have (local rights to use, design versus text, common law mark rights, reseller, etc.). The UDRP was designed to address that inequity and to allow panelists to frame decisions on the equities in each case including recognition of local rights and privileges. It was designed to address the fairly limited situation of cybersquatting in which a knowing registrant specifically targeted a known mark owner in an attempt to extract value directly from that owner’s mark.

Today, many panels will find proof of all three of the Policy’s elements simply from the existence of a mark of any kind with arguments that any mark is by definition identical or confusingly similar, that any use by any party other than a mark owner can only be illegitimate, and that bad faith necessarily exists if there is no legitimate interest.

That takes us back to the beginning, which I find disheartening.

Disheartening, indeed.

If you track UDRP cases, it’s worth noting that the lead arbitrator on this panel was Matthew S. Harris. He’s been involved in some other questionable cases lately, including aubert.com (which was owned by Tucows and also had a dissenting opinion) and unofficialblackberrystore.com.

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  1. Steve M says

    An eloquent and well-grounded dissent indeed…deserving of inclusion in the arguments we all use against others who would steal what they are unwilling to pay for.

    Thanks Diane.

  2. Patrick McDermott says

    Andrew,

    I don’t remember the source but within the last month I had read a warning that some companies are filing design trademarks that include a generic word(s) as a strategy to legally steal domains.

    Once the design TM is approved, the company files a UDRP against the Registrant
    of the .COM domain containing the generic word(s) that are included in the TM.

    The warning was included in a review of a UDRP case and decision similar to the one
    you wrote about above.

    It’s a sneaky backdoor way to claim a trademark for a generic term that you really have no right to.

    Since many Panelists are like Matthew S. Harris, the strategy can and has worked.

    Since these Panelists can’t or won’t see through this charade, the only conclusion I can come to is they are either stupid, ignorant, biased and/or corrupt.

    After one reads Diane Cabell’s dissenting opinion, what other possible explanation
    regarding the other Panelists can there be?

    • Andrew Allemann says

      Patrick, I’ve noticed that a lot of Matthew Harris’ decisions are based on design trademarks. Generally speaking, the reason a company has a design trademark and no other is because it couldn’t get a trademark on the name as itself.

  3. Seb says

    Did Tucows sue for Aubert.com ?
    The decision is dated March 17, 2009 and the domain is still not transfered as of today.

  4. donnacha says

    Diane Cabell was also the dissenter in Aubert.com decision, displaying in her opinion an impressive understanding of technology and a pragmatic sense of what is and is not possible online.

    Matthew S. Harris must really hate her.

  5. donnacha says

    Diane Cabell: “Complainant’s remedy is in court, not here.”

    I would very interested to hear opinions on how cheaply it might be possible for a Respondent who has lost a UDRP decision on a fairly straightforward issue such as this Design Mark mistake.

    As I understand it, if you take a case on your own behalf as an individual, as opposed to taking it on behalf of a company, you are allowed to represent yourself. I realize that there are many pitfalls, but it seems to me that an arena in which the pertinent facts are given due consideration is much better than the brazenly biased pig trough that the UDRP system has become.

  6. Steve M says

    Thanks for the good info & points, Patrick & donnacha (and donnacha, one can always represent themselves in court on any action; though doing so if fraught with legal risks).

    And the court filing fees are; as I understand it (maybe Andrew could look into); not even $1000 to get into court.

    Two other thoughts result:

    #1. For any of us w/generic domains worth 25-50k+, it may be worth filing our own design TMs.

    #2. Because such “improper use of trademarks to steal generic domains” legal actions are/could be largely standardized, i.e. the facts from case to case would be largely similar, this could be a good opening for a forward-thinking legal eagle to sell a book, special report, e-book, etc outlining the process.

    #3. Another option to keep the costs down is of course to get the court cases/files of others who’ve chosen to fight in court to keep their domain/s.

    One good source of court files is Justia.com.

  7. stu says

    Matthew S.Harris is corrupt there is no question,the big brown envelopes stuffed with cash influence his decision,this guy should be booted in fact i am surprised he has not got a price on his head with his terrible corrupt decisions.

  8. donnacha says

    @Steve M – thanks for the advice, I’m looking into the possibilities now. What is a pity is that there doesn’t seem to be a way for domainers to pull together and fund a test case, because the numbers of UDRP actions is inevitably going to grow – the arbitration companies are certainly sending out a strong signal that “If you file, you will win”.

    @stu – the sad thing is that brown envelopes stuffed with cash are not necessary; all the Panelists need to know is that if they keep handing down the “right” decisions, they will keep getting hired. They have stumbled upon a mutually beneficial arrangement – the Complainants only have to provide a minimum of evidence, evidence that would never stand up in a court with proper oversight, and the Panelists can sleepwalk through the entire process.

  9. Seb says

    That’s what i immediately thought Andrew.
    For obvious reasons, the registrar was certainly very reluctant transfering the domain ;-)but one month and a half was far too long to change ownership.

    Let’s hope for Tucows they’ll get a better judge than the lead panelist Matthew S. Harris…

  10. Kevin Ohashi says

    Good for tucows. Hope these guys follow their lead. Can complaints be filed against panelists/how to they keep(or lose) their credentials?

  11. Jeffery Cockburn says

    I think that the lead panelest is with the following firm: http://www.waterfrontsolicitors.com

    on the website under a page with the header ‘trade marks’

    ‘..Owning a registered trade mark gives you the right to stop any business using a mark that is identical or similar to your registered mark in relation to goods which are identical, similar, and in some circumstances, not similar to yours. Therefore, a registered trade mark can be a secret weapon in a domain name dispute or a valuable adjunct to your businesses technology…’

    – ..and in some circumstances, not similar to yours.

    – secret weapon?

    trademark law at its best. Thanks WIPO for such a fine ‘neutral’, I can hardly wait until the request for paperless complaints is approved… better yet WIPO should propose that we all save the bandwidth and let this panelist decide who looses their property without any notice at all.

    I will think of him as Matthew SecretWeapon Harris.

    Perhaps he has no connection to this verbage, or perhaps he is the firms domain guy.

  12. Jeffery Cockburn says

    http://www.waterfrontsolicitors.com/intellectual-property/legal-basics/developing-ip/trademarks

    “Therefore, a registered trade mark can be a secret weapon in a domain name dispute …”

    … a general editor of, the International Trademark Association’s Annual International Review of Trademark Jurisprudence and Volume II of its annual Trademark Law Handbook.

    http://www.wipo.int/amc/en/domains/panel/profiles/harris-matthews.pdf

    http://www.waterfrontsolicitors.com/about-us/partners

  13. Jeffery Cockburn says

    http://www.waterfrontsolicitors.com/about-us/partners

    quote:

    Carole Hailey …

    ‘Carole is a founding partner of Waterfront Solicitors LLP and …’

    ‘Recently, Carole has assisted a government department and a multi-national bank with the outsourcing of the development of business critical software solutions – two examples of Carole acting as poacher turned gamekeeper!’

    -poacher turned gamekeeper! ?

    Does anyone know what that means? Do lawyers usually talk that way?

  14. Anna Hillshill says

    This looks like small firm,

    “poacher turned gamekeeper”

    sound to me like the fox bragging that it is now guarding the hen house. I guess that we would have to ask the founding partner to know for sure what this means.

    “secret weapon in a domain name dispute or a valuable adjunct to your businesses technology”

    To me this means that with a trademark and the right ‘neutral’ panelest the value of domain arbitration to the trademark holder is found in the ability to take something that otherwise would have to be bought or done without. (just like real estate) Arbitration in a case like this only works in the long run provided that the target is weak.

    In my opinion a careful look at this udrp decision reveals bias on its face and a look at the the website of the firm referenced above is suggestive of the outcome.

  15. John Johnson says

    I’ve looked into this guy. Last year he also decided internationalwineaccesories.com. As lead panelist in a majority decision with Cabel he found in favour of a domainer. Also in image3d.net he not only rejected the complaint but also found reverse domain name hi-jacking. So maybe he isn’t so biased after all.

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