Policy and advocacy group takes unusual step of issuing statement about a particular UDRP case.
The UDRP for Camilla.com was truly horrible. A three-person panel essentially stole a valuable, generic domain name from the heirs of the late Igal Lichtman, commonly known in domain name circles as Mrs Jello. It ruled that a company that didn’t have any sort of trademark rights in the name “Camilla” at the time the domain was registered should get the domain name.
Internet Commerce Association, the policy and advocacy group for domain name investors and service providers, has issue a statement on the decision. I am publishing the full statement below:
Washington, DC; December 11, 2015 —
The Internet Commerce Association today released the following initial statement in regard to the November 30 decision of the WIPO Administrative Panel in the case of Camilla Australia Pty Ltd v. Domain Admin, Mrs Jello, LLC (Case No. D2015-1593):
The egregious three-member panel decision in this Uniform Domain-Name Dispute-Resolution Policy (UDRP) dispute departs substantially from prevailing UDRP practice and relies on criteria inconsistent with those set forth in the UDRP as adopted by ICANN. This decision demonstrates once again that review and reform of the UDRP by ICANN is an urgent priority.
“The panelists on the Camilla.com dispute disregarded 15 years of UDRP practice, rewrote and distorted the Policy, and set an impossible standard for domain registrants to meet to avoid the loss of their valuable generic domains” said ICA Board member Nat Cohen, President of Telepathy Inc. “If this decision stands and guides panelists in other future cases, it would undermine the rights of millions of domain owners, undercut much of the domain industry, and would encourage further abuse of the UDRP system”, added Cohen.
The decision states that “the Panel accepts that the Respondent did not and could not reasonably have known of the Complainant’s trademark when it registered the disputed domain name in May 2009”. Based on prevailing and proper UDRP practice, that should have ended the analysis; the Respondent clearly could not have had bad faith intent when it registered the domain. Indeed, in ICA’s view, at that point the Panel would have had clear grounds to cite the Complainant for attempted reverse domain name hijacking. Complainant received its Australian trademark more than two years after the U.S.-based Respondent registered the domain, and only has a pending “intent to use” application for a U.S. trademark.
Instead, the panelists created new and unprecedented duties for registrants, proclaiming that a “registrant of domain names that adopts a PPC revenue model must ensure that after registration the disputed domain name is not used in a deceptive or confusing manner with new or developing trademarks” and a “registrant of domain names from the moment of acquisition must be prepared to take necessary steps to ensure that the PPC links generated by algorithm do not infringe existing trademarks, or any trademarks that may emerge in future”. (Emphasis added.) The panel’s decision would place a burden on domain registrants of generic words to monitor ongoing trademark registrations in every nation in the world. It would also require them to influence the proprietary ad placement algorithms of Yahoo!, Google, and other major online ad providers. Both of these new responsibilities are nowhere to be found in the UDRP rules and are impossible to meet.
The Camilla decision overthrows an important balance between trademark and domain registrant rights and provides a blueprint for any future trademark registrant to steal valuable generic domains without paying market value by simply initiating a UDRP action.
“While ICA respects trademark rights, the UDRP cannot be allowed to become a vehicle for legitimizing domain theft,” said Cohen.
The decision of whether to appeal this UDRP decision lies with the registrant. ICA believes that this decision should be overturned under the U.S. Anticybersquatting Consumer Protection Act (ACPA). If an appeal is filed, ICA will give full consideration to providing support to help persuade the court that the panel’s finding of bad faith registration and use is contrary to U.S. law.
ICA and its Counsel and legal advisory group are continuing to review the decision and may issue a further statement once that review is completed.
TOM CRUISE says
The Panel must have been watching Minority Report on repeat and bought into the whole future crime thing. Message to Panel. It was the movies, it wasn’t really real. : )
If you haven’t already it’s time to contribute to ICA.
The BIG Question now is ,will Nat Cohen or any or the larger cash rich domainers put their money were their mouths are and fund the appeal from this decision ?. It has got to be in everyones interest to do so.
All of the registrars should make a large contribution. They are the ones feeding the sites with the potential trademark ads.
Mike – Nat Cohen nor any other domainer should not put money up to fund the appeal from this decision. The estate of Igal should defiantly fight this in courts and they have the means to do so. Not sure who is managing the portfolio now, but this domain is far too good to let it go due to a few crook WIPO panelists. Lets assume a good lawsuit costs $20k. This domain is worth so much more than that! And they can file a lawsuit in either Florida or New Jersey. (Not sure which jurisdiction the Complainant submitted to.) That is a lot better for Mrs Jello as the Complainant is in Australia. Also good to know is that the Complainant has the means to pay big money for their attempt at stealing this domain. The best news. United States courts are fair and accurate. Unlike shoddy WIPO panelists.
it’s just one horrible decision. The members of the panel should be banned from sitting on another URDP process. None of them have good judgement. it’s border line to been dishonest. They are misrepresenting and discrediting the process. It hard to believe that those individuals were representing the value of URDP, it’s more probable the interest of the initiator of the URDP. Shame on them!
The URDP process should be revise.
An URDP is file by someone who’s after a domain for x reasons. So, to avoid having abuse of the systems, initiator of URDP should met some requirements and if the complain accepted, then you could have an URDP in progress. To registrer a trademark, you must met some criteria , same for an URDP. Less abusing demands.
To start, a clearing house for trademark holders should manage a database of trademark names , and then after, protect registrants and registrars by blocking those names from been bought in the first place.
The owners of trademark should registered their brand names within this database. The registries should not allow the registrars to sell any name within the database. Registrars should be fine for selling names protected by trademark.
Registrars can’t manage all this. They should be an unique agency.
It would be to the registrants to provide “rights of use/propriety” of any name protected by a trademark’s database to register the domain name.
Internet is a major part of everyone’s life. They should be permanant panel members sitting as judges, not improvise lawyers looking to get some extra-cash who give ridiculous decisions..
In resume, if you get organise, it s a simple task. The real problem’s is statu quo. You can protect all that you want, but if nothing is done… nothing will change.
So, bad call again. I wonder if the panel members was honest. Asking is answering.
Don’t ask more from fools and clowns. They eat money for breakfast, lunch and diner. It s not the ending that matter for some lawyers. As much as they get pay. It s a perfect world.
Block people from registering a name in a databas re is an idiotic idea.
By all means, alert the buyer to the possibility of legal action by advising them a trademark exists.
But just because a trademark exists, does not provide the trademark owner universal ownership.
There are perfectly legitimate reasons for trademarks to be registered by people not associated with the term, especially if the trademark is not registered in their country.
And that is just assuming exact match…just how much would blocked if it also covered the inclusion of a trademark in the overall domain.
blocking people by buying name listed on a database is an idiotic idea? How can it be when it would prevent trademark owners of having their names violated. It would also secure registrants by loosing their investment from an URDP.
An trademark owner, in most case, do not owns international rights, but they do have more rights then a domain speculator who has nothing to do with their business trademark.
alert the buyer to the possibility of legal action by advising them a trademark exists. I can’t say for other companies, but with GoDaddy, there is an alert mentioning a trademark owner before you pay for the domain name. If the registries can block “premium” and ICANN’s reserved words, they also can block some names.
There are perfectly legitimate reasons for trademarks to be registered by people? i see none.
The conclusion, be original yourself!
How CORRUPT these 3 rogue panelist will appear when in a U turn, a court issues a Reverse Domain Name hijacking decision under the ACPA while they ordered a domain transfer.
ICANN, WIPO and all “real panelists” should stand up and shame David J.A. Cairns,Presiding Panelist,
M. Scott Donahey, Panelist, and Christopher S. Gibson, Panelist.
These amateurs must be banned forever from UDRP panels.
They also need to be sued so that they explain their motives to render such a pitiful decision.
The whole domaining community need to come together to fight this ridiculous UDRP decision. This is not just about protecting our investments. It’s also about the very basic principle of what is right.
The domain industry needs to set a legal precedent against UDRP/WIPO and perhaps this is the case with which to do it. Hopefully Igal’s estate will fight this in court as there are grounds for a tortious interference judgement which could bring a six-figure damages claim against the complainant. It would be good to see the individual panellists sued as well, to discourage other wannabe judges from boarding the UDRP junket. Domain owners believe they are being forced into a genuine legal court when they receive a UDRP, but UDRP/WIPO is merely an arbitration forum that has almost no legal power. It’s not beyond the industry to destroy the credibility of this kangaroo court and make complainants think twice before they risk judgements against them of hundreds of thousands of dollars.
This case highlights exactly where our Industry is heading. The corporations can and WILL take your names reguardless of whether the case makes sense or not — or even if it’s legal! Scary stuff.
Ever heard the expression “foxes guarding the henhouse”?
Putting somebody in charge of a job, when they have a conflict of interest. Often used to refer to industry “self-regulation”…and there you have it.
David Wrixon says
The good news is that because UDRP is one arbitruary decision after another arbitruary decision, no legal precedent is set.
Here’s Yer Update Mate: Camilla.com is active down under (Aussies got it)