Over the years the UDRP has attracted a good amount of criticism hewing to one of two poles, accusing panelists of either cognitive impairment or bias. There are panelists’ (it is said) “who substitute their personal views for the agreed language of the UDRP.” Other critics complain that there is a “fundamental bias in the Policy [in favor of trademark owners].” Others find that there is “a significant threat to free and robust expression on the Internet.”
A comment posted on September 20, 2005 announced that “The UDRP is obviously not working. Two websites, fundamentally the same (criticism at trademark.tld), two opposite decisions, both within weeks of each other!” This was echoed in response to a split decision in a recent case discussed further below that “demonstrates that UDRP has devolved into a casino, when panelists can reach such divergent decisions.” A banner headline in a posting on The Domains on March 17, 2015 reads “Worst UDRP Decision Of The Year? Panel Gives Away Domain Registered Before TM Was Filed.”
However, given the astonishing number of decisions it is surprising how few as a percentage of the whole are infected with errors of law or questionable judgments. Trademark owners generally prevail because the majority of registrant choices trademark owners challenge are indefensible. Domain name holders generally prevail where they are found to have a right or legitimate interest in the domain names in issue or are using the domain names for fair or noncommercial purposes.
Nevertheless, panelists do not walk in lockstep on a number of views and this has created tensions that undermine consistency and predictability of UDRP decision-making. There are in fact several issues, including split views on the issue of protectable speech, whether domain names are protected or only the content.
Split Decision in <easygroup.com>
The Easy Group Limited which owns a family of marks with the prefix “easy” has been complainant in a good number of UDRP proceedings. It mostly prevails against domain name holders who connect “easy” with qualifiers that suggest travel, such as <easytrain>,<myeasyjet>, <easyjetcharters>, <easystelios.com> (Stelios is a licensee of Easy Group) or typosquatting <easyjert>, <easyhote.com> and <easymobiel.com> and so on. It has lost where respondents were found to have registered their domain names prior to trademark acquisition or before Easy Group established its present reputation. So, for example, in EasyGroup (UK) Ltd v. Easymaterial.com Limited, D2000-0711 (WIPO September 7, 2000) (<easymaterial.com>) the Panel was
not persuaded that the announcements (or any preparatory work behind those announcements) give rise to any relevant rights. Even if they did, the Panel takes the view that no trader could monopolise the use of that word [‘easy’] as part of a trading style or domain name without very impressive evidence of long and exclusive use. No such evidence was put before the Panel.
This situation changed five years later in Easygroup IP Licensing Limited v. N. Hilton, Easycentre.com, D2005-0935 (WIPO October 31, 2005) (<easycentre.com>) where the Panel held that a trademark composed of a common word that achieves an international reputation “puts complainant’s claims on quite a different footing.” In the <easycentre.com> case the Panel rejected Respondent’s argument that Complainant did not have rights to monopolize”easy”:
All the points made by the learned panelist [in <easymaterial.com>] are, with respect, apposite today. However, that decision was made in 2000 when complainant’s “www.easy.com” website/portal was either still in contemplation or the early stages of use. In 2005, there has been almost five years of use, evidence of over 338,000 visitors each week to the website portal at “www.easy.com” and more than 58 million visitors to complainant’s easyInternetcafés.
The nail in the coffin for Easycentre.com, however, was evidence of targeting that supported both lack of rights or legitimate interests and abusive registration.
The latest dispute with Easy Group involved <easygroup.com>, easyGroup Limited v. Easy Group Holdings Limited, D2014-2128 (WIPO February 19, 2015) (<easygroup.com>) in which a 3-Member Panel split, with the majority denying the complaint and finding reverse domain name hijacking and the dissent finding lack of rights or legitimate interests and abusive registration. Some Twitterers see this as evidence the UDRP is a roulette wheel. To quote: “This demonstrates that #UDRP has devolved into a casino, when panelists can reach such divergent decisions. @DomainNameWire.” The criticism would have made sense if the dissent was correct and the majority wrong. But the dissent’s view is not correct; she has simply applied the wrong law. In a regime in which there is no appellate panel to correct errors of law or judgment, anomalies happen, but the World is not coming to an end!
Although the dissenting member cites no cases, the inspiration for her views are traceable to two related theories of liability that have been rejected by her colleagues, announced respectively in City Views Limited v. Moniker Privacy Services / Xander, Jeduyu, ALGEBRALIVE, D2009-0643 (WIPO July 3, 2009) (<mummygold.com>) and Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010). The “mummygold” theory is that abusive registration can be found even where the registration was in good faith. It reads a continuing promise into the original act of registration, with the result that any subsequent breach supports abusive registration regardless of registrant’s motivation for acquiring the domain name. Eastman varies the theme by holding that renewal is actually a new registration that carries with it all the representations and warranties of the original registration. Both these theories have been roundly rejected.
The dissent’s attachment to Sporto in the latest Easy Group case is clear from her language:
Every time a registered proprietor applies to renew his or her domain name he or she enters an agreement with the registrar that incorporates the Policy. Paragraph 2 of the Policy provides as follows:
“Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights.”
The Panel relies on a construction of the “representations” that binds the registrant for as long as it holds the domain name without regard to its good faith when it registered it.
Predictability and Consistency
The dissent’s view raises anew an old problem that panelists recognized early on about the UDRP, namely that appointment of the wrong Panel could in fact be a roulette wheel. See Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001) (<lifemagazine.com>) (“The majority believes that potential users of the UDRP are entitled to some degree of predictability. Counseling one who is considering filing a Complaint should consist of more than, ‘It depends what panelist you draw.’”)
The force of precedent was recognized by the Panel in PAA Laboratories GmbH v. Printing Arts America, D2004-0338 (WIPO July 13, 2004). He was sympathetic to the idea that a renewal was a new registration––“[t]he abusive refreshing of the original registration” (it stated) “is an act which this Panel considers should be an act of a kind encompassed by paragraph 4(a)(iii) of the Policy”––but rejected endorsing the conclusion of abusive registration because the consensus is that “mere renewal does not amount to registration.”
Although the criticism faulted UDRP for delivering inconsistent decisions it was the dissent in error. The majority followed precedent in finding for the trademark owner. If the dissent had been a sole Panel the the Complainant would have been out of luck, drawing the wrong panelist. Does it happen a lot? In the context of an arbitral regime in which panelists have filed over 40,000 decisions drawing the wrong panelist accounts for a fairly small of decisions.
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble. Ongoing Supplement here