Transcript Slide 1
Renova, Ltd.
International Legal Consulting Services
Death by Paper-cut
Managing Risk in the Domain Industry
Paul Raynor Keating, Esq.
Renova, Ltd. - Law.es
Paris, June 2008
[email protected]
What is risk
How likely is the
Occurrence
How likely is the
Result
Renova
[email protected]
Sources of risk
• Sales
– Breach of contract
– Buy a stolen domain
(express.com $150,000)
• Legal (tm)
– Forfeiture
Renova
[email protected]
Minimize Risk and Still Have a Life
Which is better?
High risk of event
High risk of event
Low risk of loss
(UDRP loss of 7.95 domain)
High risk of loss
Low risk of event
Low risk of event
Low risk of loss
High risk of loss
(Express.com)
Renova, Ltd.
[email protected]
Attractive industries have
predictable risk levels
Sales Risk
Controllable
Changing
Legal Risk Unpredictably
Renova, Ltd.
[email protected]
Consistency Represented by Authorities
Final report of the WIPO Internet
Domain Name Process, April 30, 1999
–
http://www.wipo.int/amc/en/processes/
process1/report/finalreport.html.
The UDRP is not intended to provide
the holders of intellectual property
rights more protection in Cyberspace
than they are afforded in the physical
world.
enova
R
Legal Risks Began With Clear Definition
UDRP
Complainant must PROVE:
1. Domain identical or confusingly similar to trademark
2. Registrant has no rights or Legitimate Interest
3. Bad faith registration and bad faith use.
Renova, Ltd.
[email protected]
Trademark
IDENTICAL OR CONFUSINGLY SIMILAR
It means something in the real world
Renova, Ltd.
[email protected]
Trademark
Renova, Ltd.
[email protected]
Trademark
Renova, Ltd.
[email protected]
Complainants Say the Darndest
Things
“Meterman is not in any sense a dictionary word”
“’CHEAP HOTEL’ is a famous mark”
“187 was invented by Telecom Italia”
“Our client holds an international trademark in…….”
Renova, Ltd.
[email protected]
Trademark - Fast Forward……….
Complainant must show:
“I have a trademark (somewhere)”
• Text vs. text
• Virtually anything is sufficient (use is use)
• Rights can exist anywhere in the world
• No need to actually trace ownership or even legal existence
• “Unregistered trademark rights do not exist in some nebulous way
across the breadth of the countries in which a complainant proves it
has a reputation. These rights derive from national laws and do not
exist divorced from such laws.” (aspis.com D2008-0387 6/18/2008)
Renova, Ltd.
[email protected]
REALITY
“Pay day loan is a trademark.”
LH is a trademark of Lufthansa (based on IATA ticket
references).
“It is not a panel’s place under the Policy to investigate whether
a particular registered mark that is relied upon by a
complainant may or may not have been registered with the
consent of an interested third party. The fact that a complainant
is the registered owned of the relevant trade mark is sufficient. “
(aspis.com).
Drugstore is a valid trademark (complainant disclaimed the
word “drugstore” apart from the figurative design).
(drugstore1.com).
Renova, Ltd.
[email protected]
Legitimate Interest
Complainant allege:
Registrant has not Bonafide interest
“There is in the majority’s view no compelling justification for the
importation into the Policy of local law on the question of rights or
legitimate interests. This is an autonomous concept that should be
interpreted consistently under the Policy, regardless of the
geographical location of the parties.” (Aspis.com).
BUT:
Didn’t we “import” local law into the Policy in finding
a trademark?
So what standards do we apply?
Renova, Ltd.
[email protected]
Legitimate Interest
Identical TM and Domain – no legitimate interest.
“by adopting that domain name the registrant is making a false
representation to the world as to who he is. Perhaps there will be cases
where as a matter of fact a respondent will be able to show that the
domain name is not perceived by the public in this way. Nevertheless,
in the absence of such evidence, a panelist can reasonably assume
that such a false representation is being made.“ (Aspis.com).
Renova, Ltd.
[email protected]
Legitimate Interest
What happened to rights?
Prima-facie = presentation of facts which if uncontested prove the
ultimate fact.
Complainants simply allege the Policy in the Negative.
“Complainant did not authorize…..”
“Respondent is not commonly known by…..”
BUT: …A prima facie allegations vanish when confronted with facts that,
when viewed in the light most favorable to the defendant, contradict the
prima facie evidence originally presented. ITC Ltd. V. Punchgini, Inc., 482 F.
3d 135, C.A.2 (N.Y. 2007).
A prima facie standard does not alter the original burden of proof. (Id).
Renova, Ltd.
[email protected]
Bad Faith
Complainant allege: Registration in Bad Faith.
Passive use of a domain is non-use and thus registration in bad faith.
“there is no express requirement that this bad faith be directed to or
connected with a complainant.” (Aspis.com; complainant did not exist
at registration).
“the Respondent’s legal representative is based in Spain.”
(muyjunior.com)
“Showing willful blindness by using automated registration programs
with no mechanism in place to weed out trademarks can be indicative
of bad faith.”
Renova, Ltd.
[email protected]
Bad Faith
Complainant allege: Use in Bad Faith.
Single appearance of conflicting reference is sufficient.
That registrant cannot control results is sufficient.
Registrant can control results through removing trademark
references and using met tags. (not possible
Robot.txt is evidence of bad faith.
nytimes.com – perfect example of robot.txt use
Required by Google contracts – no automated results
Renova, Ltd.
[email protected]
International UDRP Court of Justice ?
“There is in the majority’s view no compelling justification for the
importation into the Policy of local law on the question of rights or
legitimate interests. This is an autonomous concept that should be
interpreted consistently under the Policy, regardless of the
geographical location of the parties.” (Aspis.com).
BUT:
So what law is to be applied?
Renova, Ltd.
[email protected]
RESULT: Greater risk
Respondents have the burden of proof
Legitimate Interest - Frozen standard
Bad Faith - Ever expanding examples
Special rules for domainers (Anciens)
Duty to avoid conflict
Renova, Ltd.
[email protected]
Selected Decisions
Ancien Restaurant Chartier v. Tucows.com - Professional domaining
(PPC, Resale) may be legitimate IF:
You are really in that business (resale or PPC);
The domain is really a “dictionary word” (generic/descriptive phrase);
no evidence indicating actual knowledge of the TM; and,
Respondent has made good faith efforts to avoid registering domain
names that are identical or confusingly similar to marks held by others.
CTV.com (dissent)
“The burden to avoid conflict with established rights, even if less than
universally established, should rest upon the registrant.“ (Hon. R. Kerns)
Renova, Ltd.
[email protected]
Lack of Oversight:
• Panels and ADR providers do not follow the rules
• ICANN does not manage the process
• Judicial Oversight does NOT exist:
•
US ACPA is a completely different standard.
•
Some jurisdictions prohibit any action to contest UDRP result.
• Panelist View – if you don’t like it you can always file a court action.
• Unfairly places burden on the Respondent
• Burden should be on the Complainant.
Renova, Ltd.
[email protected]
Building on Momentum gained from the early years of
the industry, TM holders are continuing to cut the rug
out from the industry in the UDRP and other areas.
• Limited input from the domainer community.
• Continued erosion of the rules.
• Inserting words not present
•
Inserting words that are not
Prima Facie evidence = prima facie allegation.
• Absence of a defense is now evidence of guilt.
• Continued expansion of bad faith elements & Precedent building.
• Blending of Legitimate Interest and Bad Faith.
• Active legislation attempts and active lobbying.
Renova, Ltd.
[email protected]
• GET INVOLVED
• FIGHT FOR THE INDUSTRY.
• Educate Panelists
• LITIGATE:
•Your loss = Community Loss
•Another domainer’s loss = your future loss
• STOP DEFAULTING ON STUPID DOMAIN NAMES !!!!!!
enova
R