True Religion can’t get TrueReligion.com domain name through UDRP.
In July I wrote about how True Religion (NASDAQ: TRLG), maker of premium denim products, had filed a UDRP against the owner of TrueReligion.com to try to get the domain name.
Pretty much everything I predicted in my post was correct: The owner owned the domain since well before True Religion’s brand existed, he registered and used it for legitimate purposes (to discuss religion), and later started using it in a way to take advantage of the jeans company.
Based on the UDRP, this complaint must fail. The majority agreed because the domain owner had rights or legitimate interests in the domain and didn’t register it in bad faith.
But one panelist, Scott Donahey, disagreed.
Some panelists believe that a complainant should “win” the third prong of a UDRP – that it is registered and used in bad faith – if it is either registered in bad faith or used in bad faith.
In this case, the domain has clearly been used in bad faith. The registrant admits that he changed the site to take advantage of the jeans company:
In 2009 the Respondent says that he noticed that the disputed domain name was receiving up to 1000 hits per day but that it appeared that these visitors were seeking the Complainant’s clothing brand. This factor negatively affected the statistics of page visits on his Islam based sites so he says that he stopped directing its traffic to his Islamic websites and started making use of it through Google’s Adsense program. He submits that the current “for sale” price of the disputed domain name at USD 380,000 is a reasonable price for a domain name that is attracting 1000 hits per day.
Yet it’s also clear that he didn’t register the domain in bad faith. He registered it to create a site about religion, and did so well before True Religion jeans were sold.
Donahey believes this should suffice for finding that the domain was registered and used in bad faith:
In the present case, when the Respondent registered the disputed domain name, the trademark did not exist. Respondent was therefore entitled to continue using the domain name truereligion.com as he had been using it, or to use it for any purpose whatsoever, so long as he did not intentionally use it to profit from the goodwill associated with Complainant’s later created trademark. However, as the Respondent candidly admitted, he is now using the disputed domain name to profit from the good will the Complainant created in the mark. I defy any panelist to show me evidence from any portion of the legislative history or from any other provision of the Policy that would indicate that the drafts persons or the provisions of the Policy as drafted intended that a registrant could use a domain name to target a trademark and profit from its goodwill, so long as at the time that the domain name was registered, the registrant had no intention of doing so.
The jeans company may have other legal avenues to pursue this domain name or to change how it is used. But the UDRP is not the appropriate policy for this.
Because of panelists like Donahey and Andrew Christie, who has taken a similar position, the Uniform Domain Name Dispute Resolution Procedure is not Uniform. The outcome depends to too great a degree on which panelist is assigned to a dispute.
Donahey and Christie don’t like that the UDRP does not provide a remedy for situations, such as this one, where a domain is registered in good faith but then put to a bad faith use.
They interpret the UDRP in a way that allows them to disregard the requirement that a domain must be found to be Registered in bad faith before a transfer can be ordered.
ICANN has a serious problem because the panelists who are adjudicating the UDRP are splintering into various conflicting factions. ICANN has no mechanism to bring the rogue panelists back into line.
The problem of uniform application of the UDRP is compounded because ICANN continues to accredit new UDRP providers – each of whom has their own set of procedures and their own stable of preferred panelists.
Instead of becoming more uniform over time, the UDRP is devolving into an inconsistent, contradictory mess.
In a system where two panelists finds RDNH and another panelist orders a transfer while sitting on the same panel deciding the same dispute- as happened in the refiled dispute for StMoritz.com- there is no clear guidance as to what is allowed and what is grounds for loss of a domain under the UDRP.
ICANN needs to clean up this mess.
“ICANN needs to clean up this mess.”
Be careful what you wish for.
Basically, here is the short of what Nat said:
What an arrogant dick Scott Donahey is for interpreting the UDRP rules as he wishes, not as they are written.
Scott Donahey should never be allowed to be a panelist after this written dissension.
Donahey should certainly know better, but continues to ignore the history of the UDRP, which was intended for a narrow class of clear-cut cases using an expedited and relatively informal procedure, as opposed to the rigorous requirements of real courts. The reason why the UDRP was intended for that narrow class of cases was that the relief sought from the UDRP is extraordinary, namely the transfer of the domain name itself.
Donahey is blind to the actual historical documents, which clearly state:
http://archive.icann.org/en/udrp/udrp-second-staff-report-24oct99.htm
“c. The Recommended Policy Is Minimalist in its Resort to Mandatory Resolution. In contrast to the policy currently followed by NSI, the policy adopted by the Board in Santiago, as set forth in the final WIPO report and recommended by the DNSO and registrar group, calls for administrative resolution for only a small, special class of disputes.”
Notice the words “small, special class of disputes.” It was clearly not intended for EVERY class of disputes. I find it hard to understand why Donahey would not be aware of the above document, which is very clear, and is found on ICANN’s website. Indeed, Donahey cites the Second Staff Report, and that quote is directly from it. Here’s another quote directly from the Second Staff report:
“4.5. Several comments (submitted by INTA and various trademark owners) advocated various expansions to the scope of the definition of abusive registration. For example:
a. These comments suggested that the definition should be expanded to include cases of either registration or use in bad faith, rather than both registration and use in bad faith.”
So, in other words, ICANN *did* consider, EXPLICITLY, whether it should be “or” or “and” — how can one not read the 2nd staff report, and not see this? Donahey talks about panelists “honestly confronting the debate” between “and” vs “or”, but then ignores that this debate happened, and those seeking expansion LOST!!
“While that argument appears to have merit on initial impression, it would involve a change in the policy adopted by the Board. ***The WIPO report, the DNSO recommendation, and the registrars-group recommendation all required ****both registration and use**** in bad faith before the streamlined procedure would be invoked.**** Staff recommends that this ***requirement not be changed*** without study and recommendation by the DNSO.”
(emphasis added) He and a few other panelists constantly misinterpret the actual UDRP rules, the actual UDRP history, and thus encourage more disputes by complainants, and less certainty for domain name registrants. Look at the actual words of the Second Staff Report, and tell me that the above paragraph isn’t clear about “and” vs. “or” — this isn’t some grey area open to interpretation, like Donahey pretends exists. It’s not open to debate.
In a real court, with real judges, with proper rules of discovery and evidence, with real rules of jurisdiction, the court has more room to provide a nuanced decision with narrower relief (such as granting monetary damages, or ordering that infringing content/use be discontinued, without the transfer of the domain name).
True Religion Jeans has lawyers and money. They can sue in a proper court of law, or buy the domain name. As Andrew stated, bringing a UDRP was not the correct procedure to seek relief for this dispute.
ditto max…
We can all agree that the registrant was Bad, though, right? Whether or not he originally registered it in good faith, he got what he deserved here, right?
Kevin: The registrant WON the UDRP decision (i.e. the jeans company lost). So, he did get the correct decision.
While the alleged temporary infringement of the jeans company’s TM rights might be a bad act, they sought relief in the wrong venue.
Doh! Yes, he won, I somehow forgot that by the time I got to the end of the story.
The jeans company (complainant) also failed in the 2nd part of the 3-part test, i.e. the majority of the panel decided:
“In spite of the Respondent’s subsequent use of the disputed domain name for commercial purposes and in a manner that by the Respondent’s own admission, attracts traffic as a result of the Complainant’s success, the majority finds that on balance and in the particular circumstances of this case it is not possible to say that the Respondent has “no” rights or legitimate interests in the disputed domain name as required under this limb of the Policy and therefore finds that the Complaint fails in relation to the second element of the Policy.”
If one visits the website today, it clearly states:
“DISCLAIMER: THIS DOMAIN NAME AND WEBSITE ARE NOT AFFILIATED
WITH THE TRADEMARK OWNER OF “TRUE RELIGION BRAND JEANS”.
and I don’t see any income-generating links to jeans-related products at this time. The jeans company should step up and purchase the domain, in my opinion. The opportunity cost of $380,000 sitting in the bank would be under $10,000/yr these days, given low interest rates. That’s insignificant, for a company that was acquired earlier this year for $835 million.
And at $200 per pair of jeans, they don’t have to sell too many 🙂
Really, the just result would be that he is ordered not to use the domain to make money off the jeans any more. UDRP won’t allow for that type of penalty.
Maybe what’s needed in cases like this – and any other cases involving infringing use – is something like the Digital Millennium Copyright Act (DMCA) that provides a notice provision if the copyright (or in this case trademark) holder believes that a use is infringing.
Under the UDRP the only remedy is too drastic – transfer of the rights to the domain – and not appropriate for situations like this where a legitimately registered domain is then put to an infringing use.
It is unfortunate that Mr. Donahey has now reached the point of claiming that those who do not agree with him are dishonest. The dissent in the Natterman case, which he states that any “honest” person should address, was extensively addressed in the filings of the JetGo.com dispute, and which relied on a less selective reference to “legislative history” of record. Rather than to address the issue there, the panel chose to simply ignore the entire issue.
The other notable aspect of the dissent is that Mr. Donahey had previously advanced this concept under a “common law” approach to evolving interpretation of the UDRP, but has now re-branded it under an “originalist” approach. The final WIPO Report on the UDRP, of course, expressly rejected an evolving common-law approach, so it would seem that much has gotten through.