Paris wins domain as arbitrator throws out “registration AND use” in bad faith.
In September I wrote about the city of Paris, France filing a UDRP against three domain names: WifiParis.com, Wifi-Paris.com, and Parvi.org. Paris was just handed a victory in the Parvi.org case; the other two cases are pending.
What’s disturbing about the Parvi.org case is that the panel found that the domain name was likely not registered in bad faith, but still handed the domain over on the basis that it was later used in bad faith.
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 it was later used in bad faith.
The intent of the Policy is to provide a fair and efficient mechanism for trademark owners to obtain redress in situations where their trademark rights are abused as a result of bad faith activities of domain name registrants. There seems no reason in logic or in principle why the availability of redress should be confined to situations where bad faith is present at the time of acquisition of the domain name
Well, the policy is also supposed to provide a fair mechanism for domain name owners. That Paris filed two egregious cases of reverse domain name hijacking at the same time it filed the Parvi.org case should cause any panel to give the benefit of the doubt to the respondent.
Indeed, Christie doesn’t think the domain owner knew about the Parvi trademark at the time of his registration:
…Although it is certainly possible that the Respondent was aware of the Complainantâss PARVI trademark, and of the Complainant’s programs under that trademark, at the time the Respondent registered the domain name, this seems unlikely given the different geographical locations and native languages of the Complainant and the Respondent. Thus, this Panel is not satisfied, on the present record, of the probability that the Respondent registered the disputed domain name with the intention of benefiting from the Complainant’s PARVI trademark.
If the domain wasn’t registered in bad faith but was later used in a way to violate Paris’ trademark, its redress is in the courts, not UDRP. This sort wholesale change and expansion of UDRP by panelists is one of the reasons people are questioning the implementation of the policy. Whenever a panelist writes that his reasoning is “a logical and incremental evolution of panel thinking”, one should give pause.
Perhaps Andrew Christie is on a crusade to implement his vision on UDRP. He was also the presiding panelist on the Project.me case, which broke with precedent by suggesting that the top level domain should be considered part of the domain for trademark purposes.
Was the name ever used after the fact to infringe, yes or no?
Andrew Allemann says
@ Josh – I don’t think so, but the panelist apparently thought that since the owner of the domain used it for technology and Parvi is Paris’ wifi network, that’s close enough.
Absolutely correct. The UDRP is NOT a replacement for trademark law. This filing clearly should have been denied and the complainant directed to court for redress.
And you won’t find seizure of legal property to be common redress under trademark law. Seize of property is a very extreme measure; property rights are even protected under the US Constitution. Certainly not something that should be decided capriciously (as has become all too common under UDRP). At UDRP’s current rate in eroding property rights, complaints of jaywalking and inappropriate attire may soon be sufficient to stripe ownership. Let’s hope this egregious decision is an aberration and this panelist joins an AA chapter or otherwise gets it together.
Andrew Allemann I think the answer for Josh question is YES.
John Berryhill says
“Perhaps Andrew Christie is on a crusade to implement his vision on UDRP”
Yes. In fact, WIPO is funneling cases to him for the purpose of building up enough precedent to eliminate the idea that bad faith need be manifest at the time of registration.
Panelist Christie, by the way, knows utterly nothing about Latin, since the root term is parvo-/parvi- depending on number. For example, “Tres Porci Parvi” is “Three Little Pigs” in Latin. This is just another example of UDRP Panelists making up facts while exercising fake erudition. Christie is either disingenuous or stupid.
If you simply Google “parvi.org cobalt”, it’s absolutely clear what the site was being used for, that it had nothing to do with Paris municipal internet service, that it is not in French, and that the Response must have been fairly inarticulate.
Go ahead, check it out: http://www.google.com/search?q=parvi.org+cobalt
It was a Wiki about networking systems, not a “social networking” site. Again, either the Response was poorly worded, or Christie’s English ability is comparable to his Latin.
He’s moving the site to Parvi.us.
Andrew Allemann says
Unfortunately he was unable/unwilling to pay to defend himself.
The move to .us is smart…technically, Paris can’t own a .us domain name.
I would venture there is a good probability Paris likely baited the Parvi.org owner into setting up the perception of use in bad faith.
John Berryhill says
“I would venture there is a good probability Paris likely baited the Parvi.org owner into setting up the perception of use in bad faith.”
Correct, the City of Paris has been sued twice in the US for threatening domain name owners, so they have adopted the all too common strategy of taking advantage of naive responses to carefully worded inquiries.
While I do not justify the means in which it was handled I have to say that if the owner was infringing the end result would have… I should say should have been the same. I would have to say any shock or horror here is directed more at the means than the actual loss of the name. Now I read John’s reply and can say it seems both the means and out come are concerning.
Josh, is it reasonable to have your car seized because someone said you cut them off in traffic? Property seizure is NOT acceptable except under the most extreme circumstances. And the fact that its become a UDRP norm shows how obscenely skewed this process has become.
To make the process fair, how about we award respondent with a property deed to the complaint’s home for cases of reverse domain hijacking?
Jeff Walter says
I think the question that needs answering is this: should people be forced to comply with unenforceable trademarks by a third party? That’s what WIPO is doing via the UDRP.
wipo are fools, didnt we already know that?
John Berryhill says
Best. UDRP. Line. Ever.
“Like the panelist in the Octogen trio of cases, this Panel finds guidance in answering this question from the analysis and reasoning adopted in the Telstra decision.”
Of course he does.
He WROTE the Telstra decision.
Marc J. Randazza says
If the domain wasn’t registered in bad faith but was later used in a way to violate Paris’ trademark, its redress is in the courts, not UDRP
Be careful what you wish for. You are correct that the UDRP requires both bad faith registration and bad faith use. However, the ACPA only requires one of the two.
I would counsel domainers to really think about what it means though, if it is easier to win an ACPA case than a UDRP. When a UDRP filing fee is $1500, but a federal court filing fee is $300, there is already incentive to file a court case over a UDRP. A UDRP complaint is a lot more work than an ACPA complaint (although an ACPA case is more expensive than a complete UDRP).
If trademark owners are more incentivized to file ACPA claims than UDRP claims, do you think that they are going to file ACPA claims and *only* ask for a transfer of the domain name? No… they’ll ask for statutory damages ($1000 to $100,000) and they’ll ask for attorneys fees (which could be awarded).
I agree that the logic in this case is convoluted. I mean, its a stretch that would make the Goatse guy cringe. Nevertheless, if it becomes the prevailing view, then it becomes the prevailing view, and we’ll have to accept it.
My voice is here to ask you to consider whether it would be a bad thing that mark holders might have a heightened incentive to file in a forum where there are no damages available. At the end of the day, a domainer who uses a domain in bad faith is probably not going to get away with it. But, if he’s going to lose, better to lose at WIPO than in federal court.