Domain investors have uphill battle in UDRP reform.
UDRP reform is coming.
And this should scare the crap out of you.
Now let me get a few things out there:
1. I’ve never been a party in a UDRP case
2. I’ve read (and written) about many UDRP cases where the wrong decision was made
Thus I’m a fan of fixing some of the inequalities in UDRP, the lack of contracts with UDRP providers, etc.
But let’s be honest. When’s the last time domain investors got what they wanted out of a review process like this?
The trademark lobby has unlimited funds compared to domain investors. Domain investors are a loosely organized group. Head to head domain investors have no chance.
So far in the new gTLD process trademark rights have been kept in check by the deep pockets of future domain registries as well as work by the Internet Commerce Association.
But that battle may still be lost. The IP groups lobbied the governments, which in turn are putting the hammer down on ICANN. Don’t be surprised if significant concessions occur at the very last minute with no opportunity for you to respond.
UDRP is flawed. There need to be prohibitions on filing a case when the complainant’s trademark rights post date the domain registration. There need to be sanctions for reverse domain name hijacking.
But don’t count on getting either of these. And count on a lot of additional provisions that hurt legitimate domain name investors.
I suggest we follow Mahatma Gandhi’s Non-Violence approach where we should:
– make signs showing bullet points of UDRP injustice
– sit out in front of Capitol Hill and ICANN office on hunger-strike to draw Public/Gov/ICANN attention to our plight.
– we should also start organizing domain conferences in Washington DC and then it is easy to do the above hunger-strikes.
I believe it will work as it will generate lots of bad press for Gov/ICANN/TrademarkBullies and eventually they will agree for a more fair UDRP system.
Thanks.
It might be worth considering an appeals mechanism for respondents who lose. Perhaps the right to pay a fee the same as the ones for claimants and then have the case reheard by different panelist(s)?
This would hopefully help remove most of the egregious decisions.
You could take it even further and allow the appeal to be considered by a different UDRP provider to help remove any institutional bias.
Hello Andrew,
The worst thing the mind can do is let fear run away with its logic. In our opinion the only ones who should fear the coming changes are those who are in flagrant violation of current laws. Remember this : all the people who own registrations include a lot of the powerfull corporations in the same boat. So you will see a much less fearful set of changes in our opinion.
The worst thing domainers can do is get scared out of their positions by selling on the ultra cheap, to those who want control. Hold your positions and do not sell on the cheap would be our advice.
Gratefully, Jeff Schneider (Contact Group) (Metal Tiger)
@Andrew, How do you make a judgement, before you hear what the changes might be? Do you have insider knowledge?
We need a bible that the panelists will adhere policy to. It’s just too easy for a company or corporation now to ‘decide” they like a a name and financially outrun john q. domainer trademarking it.
Some domainers have hundreds even thousands of names and copyrighting each one would be impractical.
Each arbitrator person needs to apply what the domainer could possibly have done to avoid infringement while still recognising the competitive nature of domain buying for all.If it’s 1986 and I have a sunglasses company and decide to name one type of sunglasses model the “Yahoo”, what then?
It’s even worse for generics. If some clown in Estonia decides he has an acronym for his fight club that spells my domain, does he get it because he is a group and this is only one of a hundred names sitting in my enom Pandora’s box?
In some jurisdictions, registrants do not enjoy reg *and* use, in bad faith, because the doctrine is reg *or* use in bad faith.
For example, 4 (a)iii, here:
http://www.auda.org.au/policies/auda-2010-05/
Now *that* would be a worry.
If the U.S. Commerce Department should be smarter than it is showing itself to be.
How sad so many dumb folks are running it and letting ICANN do as they wish over the years, however in this case they are giving the green light to ICANN to defecate on legitimate domain investors.
@Nic you are quite right. .au has OR, as also do .uk and .nz. Most more “modern” and “up to date” ccTLD systems have this, instead of AND.
I would say that if there is reform of the UDRP, one racing certainty is that the requirement of showing both bad faith registration AND bad faith use will go.
So too will the (often theoretical) focus on “cybersquatters” in the ratio of the policy – again it is not in the .uk DRS and as an attempt to limit claims it has been expressly rejected by panels in that forum.
@Andrew – the two policy reviews of the .uk DRS is an indication that your concerns are likely to be justified. Even when a vast majority of respondents to the public consultation spoke out against a change (e.g. against the Summary Transfer proposal) it still went through.
If I were a domainer with 10,000+ “generics”, I’d be selling right now – before the inevitable legal fees hit. Big Money is a-comin’ after your generics, ‘cept they don’t want to pay for ’em 😉
hi Andrew, your first link to the ICA site is a ‘page not found’.
also, i’m no lawyer, but has anyone ever tried to challenge the trademark holder’s standing? do they have *evidence* of injury caused by the domain holder? if not, i think you can say they have no standing to complain, and therefore no case. just throwing that out there.
@ DomainAnimal – can you try again? Link works for me.
Andrew:
Have to respectfully disagree on this one.
It’s ironic that you say that registrants should be scared of UDRP reform — because I constantly read – and hear directly – that trademark interests oppose it as well because they think it will go against them! They seem to prefer a backdoor process which combines working to get draconian trademark rules put in place for new gTLDs, planning to then work to get the same changes applied retroactively to .com and other incumbent gTLDs; and to have panelists gradually take the rules farther and farther away from their starting point through a series of decisions that build upon one another.
ICA has been opposing that backdoor, under-the-radar approach and advocating an open, transparent, balanced and well-considered process of UDRP reform. Now ICANN’s GNSO has taken the first step to initiate such a process. We should embrace it, not be afraid of it. Domainers have many, many allies within the ICANN community who also want fair and beneficial changes. Some of them can be achieved procedurally, by pressing ICANN to institute a standard agreement between itself and UDRP providers (and it is really shocking that ICANN currently accredits WIPO, NAF, and others to arbitrate cases that can result in domain transfers or cancellations without any contract defining their powers), while others will require substantive alterations of the UDRP standard.
ICA is constantly hearing from its members that the UDRP is seriously flawed and needs to be improved, and they have been sharing many ideas about goals for UDRP reform. We look forward to ICANN starting down the road to considering proposals that improve the UDRP for all parties.
The alternative to an open UDRP reform process is to let trademark interests keep working in the shadows to get the changes that only benefit themselves — which also takes UDRP rules further and further away from the way Internet trademark law is evolving in the courts.
BTW, for those looking for the ICA website it’s at internetcommerce.org.
–Philip
@ Philip Corwin –
I’m very thankful to have you in this fight. You’re right; compared to back room dealings this is a good thing. I’m just worried we’re going to get the same apathetic response from the domainer community on this issue that we see in other issues.
seems to be working now
One ,only one of many, of the major inequalities of the UDRP is the way that UDRP does not differentiate between WORD only AND graphic trademarks. i.e. I could get a trademark for the word “the” tomorrow in a graphic form of say “tHe” and in colours. The trademark would be granted for any class of trademark I desired, but would NOT give me trademark rights in the word only, only in the coloured graphic letters. However having got that trademark I could then use it,if I wished to, to issue a UDRP and try and claim the equivelant .com domain.
There are two things I am now doing ,and that is (a) transferring domains to my home jurisidiction (because a rich complainant could choose the jurisdiction of your registrar) so that I can if necessary issue legal proceedings in person without expenses and incompetence of lawyers (b) getting trade marks for some domains that I value highly (c) have established a Company to hold some domains ,along with trade marks ,so that if legal proceedings go all the way to the Supreme Court the complainant could only get costs that the Company could pay.
One other thing. When you receive a UDRP please note that you do NOT need to accept/sign to accept the clause where you waive all rights to sue the UDRP provider (WIPO for example) . Of course why should you as Respondent accept a clause that was never included in the ICANN approved UDRP rules and policies ?. You are not obliged to, only the complainant is.
Hi,
“UDRP is flawed. There need to be prohibitions on filing a case when the complainant’s trademark rights post date the domain registration. There need to be sanctions for reverse domain name hijacking.
But don’t count on getting either of these. And count on a lot of additional provisions that hurt legitimate domain name investors.”
____
**BTW: dealbook .com & NY times is a ‘perfect’ example…of trying “RH”…with someone that cannot be ‘bullied’ out of a domain. And when that did not work… they ended up having to buy the domain.
Someone else with less resource’s etc…could have easily folded under pressure from attorneys from a company like the NY Times…and just given up the domain.
____
I agree 100% with Andrews ‘quote’ above.
The domain’s seized over the last few months, without any kind of ‘due process’…has been a totally flawed.
And the list of so called ‘content farms’ Google has arbitrarily ‘banned’ from their SE in the last two weeks or so…is also flawed.
“Big Brother”, run a-muck…is just a few clicks away…from any of us,
Peace to all!
Dan
You know the old saying – IF IT ISNT BROKE DON’T FIX IT
This is like Obama trying to change our healthcare.
If I remember correctly, Groupon tried to purchase their domain name but was rejected. So they went the aggressive route, got a trademark and just took the domain via the legal route. If you have valuable, brandable domains without trademark protection then I’d certainly be worried about UDRP reform making it even easier for Big Money to take domains by force.
@ James – Groupon ended up buying Groupon.com, but they bullied the owner, telling him they got a trademark for a specific use and he could not use it for something similar.
Hi,
Just came out two minutes ago: (UK)
__
Police may soon seize domains without court order
Read more: http://www.thinq.co.uk/2011/2/11/police-may-soon-seize-domains-without-court-order/#ixzz1DffioYUP
___
Peace,
Dan
@ Andrew – thanks for the clarification. So in the Groupon case, the owner could have still used the domain but for something not related to group coupons?
Seems like a low priced (if that’s possible) trademark/wordmark domainer specific service would be a very good business for someone to get into.
@ James – well, he may have even been able to use it for the same thing Groupon did. According to the video I watched of Groupon people explaining it, the Groupon.com owner told them he had plans for some sort of group coupon site. I’m kind of surprised they admitted that.
I think the trademark process is having a mid life crisis.If your a new company and want to do business online and your domain is not available, you should purchase it or come up with something else and even if you request a trademark and win, the same should apply.The same bureaucracy that plaques our government is starting to spread like cancer.
logic should be applied if you own the domain before the trademark has been established by another company.
in some cases the idea is really quite obvious in the name so why allow this sort of thing to happen?
just another example of U.S lawyers thinking they rule the world.
my defense is simple, if you want my domain by force, i will turn it into a really nasty p*rn site and then WE both loose as i will spend my defense money on advertising which is far cheaper in the end. At least you can have a small laugh in the process as you go down swinging.
flawed? YES, i know but why waste $500+ per hour on defense just to have it taken away from you eventually…..who needs the stress if you dont have millions of dollars (most dont)
‘group on’ sounds like a nice g*ngbang site
get yourself a GOOD cyber liability insurance policy which covers trademark and copyright issues! i already had one case pop up and my insurance company told the opposing criminals that the battle will be long and HARD! this was 5 years ago our last communication! here are some good insurance companies here. good luck and god bless!!
http://search.yahoo.com/search;_ylt=A0geupxE3lVNtUUAVw1XNyoA?ei=UTF-8&fr=slv8-hptb5&p=cyber+liability+insurance&SpellState=&fr2=sp-qrw-corr-top
andrew, I will definitely back up phil on this one. UDRP reform was being pushed by the good guys, not the bad guys.
there are a few important things to note. first, like all ICANN policy reform processes, this will take a long time.
second, andrew you could perform a great service by helping be a central point for organizing and collection evidence of bad behavior by trademark counsel.
third, and most importantly, you can help this process immensely andrew by STRONGLY encouraging your readers to support the ICA. it is only phil and a couple of us on the registrar side who are pushing these issues (with the help sometimes of the good folks in the NCUC).