Case represents a big victory against radical UDRP ideology.
A World Intellectual Property Forum panel handed down a UDRP decision on March 1 that could reverberate for a while and finally put to rest some recent shenanigans with UDRP.
If you aren’t a UDRP junkie you may not appreciate it. But if you are, read on…
The case pitted Xbridge Limited v. Marchex Sales, Inc. over the domain name simplybusiness.com.
Xbridge operates business insurance company Simply Business, which uses the URL SimplyBusiness.co.uk. It started using the name Simply Business some time in 2005.
Marchex acquired the domain name with Yun Ye’s portfolio at the beginning of 2005. It monetized the domain name with pay-per-click ads including some for insurance.
This isn’t merely a case of Xbridge v Marchex. The lawyers and panelists involved add to the intrigue.
Xbridge was represented by Waterfront Solicitors. One of Waterfront’s Partners is Matthew Harris, who handles UDRP cases for WIPO. Marchex was represented by John Berryhill.
The three panelists: John Swinson, Andrew Christie, and Frederick Abbott.
I’ve written a lot about Andrew Christie. His main claim to fame is that he changes up the UDRP requirement that a domain name be “registered and used” in bad faith to “registered or used” in bad faith. In other words, if you register a domain before a trademark is established you can still lose a UDRP.
Given Harris’ deep knowledge of the UDRP process, his firm advanced Christie’s idology:
On a proper reading of the Policy, all the Complainant need show is that the disputed domain name has been used in bad faith and there is no need to demonstrate registration of the disputed domain name in bad faith (see e.g., City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, WIPO Case No. D2009 0643).
This was important because the domain name was registered before Xbridge got its trademark. Xbridge had to convince the panel to take Andrew Christie’s view.
All three panelists agreed the domain name was confusingly similar to Xbridge’s mark and that Marchex has no rights or legitimate interests in the domain name. They also agreed that Marchex was recently using the domain in bad faith given its links to insurance advertisers.
But given that the name was registered prior to Simply Business becoming a mark, 99.9% of panelists would say it wasn’t registered in bad faith.
This probably set up quite a fight within the panel. It took them a long time to decide. By rule the decision was due on February 3, so the decision was several weeks late.
Swinson and Abbott agreed that the domain wasn’t registered in bad faith. Christie of course dissented.
But this case could be a big one when it comes to arguing against Christie’s ideology (called the “Octogen Trio” for a series of cases where this methodology was emphasized). Swinson and Abbott dedicated nearly five pages to painstakingly tearing apart the Octogen argument. They even provide six reasons why a certain aspect of this ideology is wrong.
You can read their dissection of Octogen here (pdf).
Do you find it somewhat troubling that a UDRP panelist (or a firm where one works) also files UDRP cases? I do. I know Harris isn’t the only panelist who’s been in both roles. But I would think there could be some conflicts here. Could this loss affect how a lawyer/panelist deals with one of the other panelists or defending lawyers in a later case?
It doesn’t smell great if not a definite conflict of interest with Harris and/or any others who are dancing in both weddings.
As for Christie, I think that at the first wipo where he made a decision and referenced a previous case with a resembling decision only failing to mention he wrote that other decision should have been the last singe or otherwise wipo panel he is on and i saw at least one on this blog previously.
@Andrew: As always, excellent reporting.
David J Castello says
Great reporting, Andrew.
Tim Davids says
+++ Great Reporting.
What a mockery of justice they make.
It smells like Waterfront Solicitors is a bunch of ass-clown, wanna-be, reverse hijacking, domain thieves. Just one old domain investor’s opinion. 🙂
I smell a lawsuit-a-comin’. Probably class action if they have been doing this for some time, enough innocent people and companies having been affected, and if enough monetary compensation from Waterfront Solicitors is warranted. Just one old connected surfer’s opinion.
Let the dirt digging begin on Waterfront Solicitors . What else have they been up to?
It looks from the site they are out of the U.K, but their Whois info. shows that they are located, or at least their domain says, they are located in the Maderia Islands, Funchal , a Portual territory.
A legal maneuver to keep from being sued themselves? Just sayin’.
Karen Bernstein says
Congratulations, John, for another fantastic result! You are my hero!!
passing by says
Excellent write-up. Thanks for highlighting this case.
Do I understand what you are saying correctly? WIPO’s own attorney is promoting a radical reinterpretation of the clear language of the UDRP to do away with the requirement regarding bad faith registration?
If so, it seems that there would be tremendous opportunity for mischief. WIPO also selects the pool of five panelists from which the presiding panelist must be selected.
All WIPO has to do is to stack the pool of five panelists with ones that share Christie’s view so that the Presiding Panelist will also be one of these ‘activists’. Then when Complainants select Christie, and get a Presiding Panelist from a biased pool, Christie’s minority view will quickly start becoming the majority view (as reflected in the panel decisions).
It seems to be a clear conflict of interest to have WIPO’s representatives advocating an ‘out of the mainstream’ perspective while WIPO is able to influence the panelists selected to adjudicate these proceedings.
If WIPO is successful in manipulating the process so that it can produce panels that support this minority view, then it will be clearly the most Complainant friendly panel, and will attract more Complainants to its forum.
Ugly conflicts of interest all around.
Andrew Allemann says
@ passing by – It’s not WIPO’s own attorney, it’s one of WIPO’s panelists.
Bret Moore says
I’ll never understand how Christie can read the plan language of “and” to mean “or.” But note that a lot (a majority, I think) of ccTLDs have that wrinkle in their dispute resolution process, if they subscribe to one.
Interesting Stuff. But there is another dynamic here that no one else seems to have picked up on.
Harris is already on public record as disagreeing with the Christie analysis. He did it in D2010-0393 and D2010-0470.
So if he was involved in the case, it looks like this is a case of a lawyer arguing a point for his client that he did not personally agree with.
Isn’t that what lawyers do all the time?
The Mize says
Question – when Marchex renews this domain after 2005 then wouldn’t they be re-registering “in bad faith” and using the domain “in bad faith” at that re-registering date?
Andrew Allemann says
@ The Mize – only according to a couple crackpot panelists who think “renewing” is the same thing as “registering”