Now this is just stupid.
I just finished reviewing the details of Tata Communications’ case against Portmedia Inc. for the domain name TrueRoots.com. The facts of the case are fairly clear: the domain name was registered well before Tata Communications started using the term TrueRoots. Later, once Tata started using the mark, the parked page at TrueRoots.com started to display links related to Tata’s use.
As is sometimes the case, the panelists disagreed over the third section of UDRP, which states that the domain name must be registered and used in bad faith. Despite this language, some panelists say the intent of the policy was that this should be or, not and. In other words, these people think that if you register a domain name that doesn’t have a trademark, then UDRP can still be used to get that domain name if it later infringes on a mark.
In explaining this view, panelist M. Scott Donahey gives perhaps the dumbest analogy I think I’ve ever read in a UDRP:
As this Panelist sees it, the majority’s interpretation elevates form over substance. The approach taken by the majority is the equivalent of applying the scienter test in the case of a shooting not only to the shooter’s state of mind at the time he fired the gun, but also to his state of mind at the time he purchased the gun. Thus a man who purchased a gun with the intent to engage in target practice would be free thereafter to shoot his neighbor with impunity.
Portmedia won the case. It was defended by Ari Goldberger.
Tim says
More bogus panelist politicking to further their cause.
Mike Maddaloni - @thehotiron says
So is he saying that domain names don’t kill people, people kill people? 🙂
mp/m
Howard says
Is this the real smoking gun?
Jerry Foxx says
So what do we have? 2 blogs pointing out tremendous crimes against small business owners.
This is just soo discouraging to a.) domainers and b.) people looking to invest in the domain market.
We are plagued with lawyers, and laws that are made up as they go along.
And at the same time, we are completely helpless and at the mercy of the panelists. No matter what the defense is, no matter how generic the domain. It is random desicions made by a currupted system.
When is someone going to stop this mockery of a legal system that every domainer and small business owner in the industry is up agaist?
It’s not like the media is on our side. It’s not like it’s even some small concern in the mainstream. The general concensus of our business is that we are all a bunch of back alley low lifes. We might as well be drug dealers. No one gives a shit about us. Nuff said.
jp says
I wish I had a good analogy for why when the policy clearly uses te word “and” that some panelists go by the word “or”. I’d say I’ve got a pretty good grip on the English language and the words “and” and “or” have clear and distinctly different meanings. So if the policy is written using the word “and” then “and” it is. I’m not saying I agree that it should be “and” or “or” because there is certainly a good argument for “or”, but uhhhhh I thought that when it came to the law, policy is policy. If policy isn’t “policy” then it is just a “suggestion”. If panelists don’t like the policy then let’s change the policy (through the propper channels of course).in the mean time policy is policy. This is stupid.
even says
seems tata dont have true roots 😀
Stephen Douglas says
I’ve always believed that ICANN should have a secondary review process before a final decision is handed down, especially if there is only one panelist on the decision.
This shovelhead who used the “gun” analogy obviously doesn’t get “first come, first serve.”
If someone buys a domain name that later another company decides to use as a TM, how does this ICANN idiot know the company didn’t get the idea from seeing the guy’s domain, website, promotions, although this is not the important part.
The important part is that Donahey’s decision verbage smacks of “tea party” thinking – “if it’s connected to the current govt and politicians, it’s bad because they all started out with the intent to do “good”, but we’ve decided that their “good” isn’t what we had in mind.
As I’ve stated before, there should be a final review policy – small fee maybe – but someone at ICANN with some logical ability to be objective can overrule someone who has absolutely no idea what the hell they’re talking about (Donahey).
Jonty Williams says
Congrats to Ari.
Hawaiian Shirt Guy says
Outrageous. That’s the problem with the “jury of your peers” approach. If there are no peers to be found, any know-nothing schlub off the street will do.
John Berryhil says
“If there are no peers to be found, any know-nothing schlub off the street will do.”
Well that is part of the problem – these pwnelists have profound misunderstanding of how these systems actually work. If a domain name is later adopted as a mark, and the mark owner begins advertising, it is the mark owner’s own behavior which causes the advertising to appear.
It is not that the “gun owner” started shooting at anyone – the mark owner, knowing the domain was registered, deliberately walked into the shooting range. It is a forseeable consequence of adopting someone’s existing domain name as a mark.
In the real world, this situation is called “reverse confusion” – where a junior party’s use becomes more well known than a senior user. The remedy in that situation is to compensate the senior user for loss of utility of the term at issue. That remedy is not available in the UDRP, so panelists pretend not to know normal trademark law.
jblack says
So Donahay, by his own logic, categorizes all target practice shooters as murderers. Someone give that moron Miller’s analogy test….before he starts dabbling in mixed metaphors.
John Berryhill says
“So Donahay, by his own logic, categorizes all target practice shooters as murderers.”
Apparently so, if a “victim” wanders onto the rifle range, it is the shooter’s fault.
This does not apply if one is hunting with the former Vice President of the US.
Joseph Slabagh says
Steven that comment seems like you have no idea what the tea party is about at all. You try to make the movement out to be something it is not.
That said, this is not what the UDRP was for, to make it sound like domainers are killing people.
Stephen Douglas says
@Joseph,
Yes, Joseph, I know exactly what the “tea party” is all about:
Confusion, no standard platform, a huge media conglomerate fueling “outrage” based on falsehoods, and/or a collection of many injustices, with or without merit.
Point me to their “official” website or headquarters so I can be reschooled, because the tea party meetings I saw didn’t indicate one.
But we digress!
The important thing here is that many of us have our best domains dangling at the mercy of “Wannabe Oracles” trying to explain the “magic” of TM interpretation.
even says
funny they won trueroots.us.com subdomain case 😀
udrpsearch.com/wipo/d2010-0314