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Undone! Failure of Persuasion in UDRP Proceedings

Gerald M. Levine

A split Panel in an early decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) held that parties deserve more than "[i]t depends [on] what panelist you draw." Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001). That's one side of the paradigm; the other side makes demands on the parties to prove their contentions, either of cybersquatting (one element of which is proving that respondent lacks rights or legitimate interests) or rebutting the claim (one element of which is respondent demonstrating it has rights or legitimate interests). The Majority held that credibility is an element of persuasion:

The dissent spends much time in an attempt to explain Respondent's inaction, but none explaining his actions. The dissent believes that the panel should refrain from evaluating the credibility of the parties. The majority disagrees. As panelists, we are not obliged to put away our common sense before we open a file. Why was it necessary to register the Complainant's mark in all three generally available gTLDs in order to accomplish any of the aims Respondent professed to have? The majority believes that it was not necessary

Respondent in Time Inc. could hardly deny that the phrase "Life Magazine" was identical to Complainant's mark; its sole argument was the subjective claim that it had no intention to infringe, but intention is measured by its consequences; if the act produces injury, it is intended.

If words and phrases are common property (corralled in dictionaries or expressions in common use), trademark owners cannot own them but are granted limited rights to prevent others from using them for unlawful purposes. Time Inc. cannot own "life." To bring it more current, the trademark owner of ATLAS has no exclusive right to "atlas" in the phrase "Atlas Global Van lines," AWGI, LLC v. Cordelli Brian Scarlet / null, FA180800 1801553 (Forum September 18, 2018) (<atlasglobalvanlines.com>. The limitation is explained in Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1147 (9th Cir. 2002): "Although EMI has the exclusive right to use the trademark 'ENTREPRENEUR' to identify the products described in its registration, trademark law does not allow EMI to appropriate the word 'entrepreneur' for its exclusive use." The concept that preserves words and phrases from being monopolized lives on in UDRP awards, the "Atlas" case being the most recent.

A different law applies to coinages. Unless canceled for genericide, mark owners have enforceable rights for every part of speech. If it's a noun it cannot be appropriated as a verb. The Respondent in Google Inc. v. Jan Jeltes, DAU2008-0012 (WIPO October 20, 2008) and Google Inc. v. Jeltes Consulting/N. Tea Pty Ltd, D2008-0994 (WIPO August 20, 2008) converted the noun into a verb--"to google" — and thence into another noun "googler" — googler.com.au> and — and thence (again) for the verb "googles."

The plaintiff in a U.S. federal action (joined by a losing Respondent in a UDRP proceeding, Chris Gillespie) tried a different tack for Google, of petitioning the court "for cancellation [of Google's trademark] on the ground that the word 'google' is primarily understood as 'a generic term universally used to describe the act[ ] of internet searching.'" Elliott v. Google, Inc., 860 F. 3d 1151 (9th Circuit 2017). In the earlier UDRP proceeding, Respondent-Gillespie argued that the "Complainant has been aware for some time that its mark is being used generically as a transitive verb meaning 'to search the Internet'. Since 'google' is now considered a generic term, the proper forum to decide the issue is the Trademark Trial and Appeal Board or the courts [not a UDRP proceeding]." Google Inc. v. Chris Gillespie, FA1203001434643 (Forum May 10, 2012).

Respondent-Gillespie in the UDRP proceeding had registered 763 domain names that "paired the word 'google' with some other term identifying a specific brand, person, or product — for example, 'googledisney.com,' 'googlebarackobama.net,' and 'googlenewtvs.com.'" The three-member Panel rejected the genericide argument as being out of the scope of the UDRP and reduced the issue to comparison of domain names and trademark. It found that Respondent lacked rights or legitimate interests, and had registered the domain and was using domain name in bad faith.

To the Court, Elliott was essentially missing the point:

In order to show that there is no efficient alternative for the word "google" as a generic term, Elliott must show that there is no way to describe "internet search engines" without calling them "googles." Because not a single competitor calls its search engine "a google," and because members of the consuming public recognize and refer to different "internet search engines," Elliott has not shown that there is no available substitute for the word "google" as a generic term.

Important for UDRP parties is the Court's advice because what holds true in court to prove contentions is also true in the administrative proceedings, to wit

Elliott cannot survive summary judgment based on "sheer quantity" of irrelevant evidence. We agree with the district court that, at best, Elliott has presented admissible evidence to support the inference that a majority of the relevant public uses the verb "google" in a generic sense. Because this fact alone cannot support a claim of genericide, the district court properly granted summary judgment for Google. (Emphasis added).

This is a good segue into the topic of persuasion or lack of it, and why. There are three recent cases for this review, a four-letter string of letters, Elgi Equipments Limited v. Michael Zielinski, Worldengine Holdings LLC, D2018-1625 (WIPO September 7, 2018) (<elgi.net>. Complaint denied), a neologism in Goodr LLC v. Michael Rader, Brandroot, D2018-1171 (WIPO August 28, 2018) (<goodr.com>. Complaint granted), and the already mentioned phrase in AWGUI, <atlasglobalvanlines.com>.

In Elgi Equipment, the four-letter string is either a coinage (Complainant), an acronym (for other businesses and trades) or, more simply, a string of random letters. The parties are located in India and the U.S. The disputed domain name was registered eleven years ago. Complainant alleges "elgi" is an invented term, a parochial view since Respondent demonstrated that the word is a surname, a geographic term as the name of a river in Russia, is used by at least two other businesses around the world who use the letters as an acronym, one of whom has the dot com registration, and is an abbreviation for "electronic gas injection" in certain industries.

Each of these successive pieces of evidence undercuts Complainant's contentions and adds to the persuasiveness of Respondent's defense. Complainant's contentions are also undercut by the existing facts. While "the Complainant has set out reasonable evidence of the extent of its contemporary activities under the ELGI mark ... and there is no doubt that as at the date of the Complaint its reach extends to the United States where the Respondent is based," nevertheless

the Respondent is correct to point out that the Complainant's acquisition of its manufacturing base in the United States in 2012 post-dates the registration of the disputed domain name by some five years and that, furthermore, in media coverage of this event produced by the Complainant an article notes that this purchase "will give Elgi a strong foothold in a market where it is not present".

The Panel points out that this "independent media report supports the Respondent's position in that it indicates that the Respondent is unlikely to have known of the Complainant because it had no market presence in the United States when the Respondent registered the disputed domain name and would not do so for a further five years thereafter. The Respondent's evidence that the filing of the Complainant's United States registered trademarks also post-date the registration of the disputed domain name by a number of years provides further support for its case." While this is not a case Complainant should never have brought, which is why the Panel declined to sanction it for reverse domain name hijacking, it had no actionable claim for cybersquatting.

The neologism "Goodr" introduces a different kind of problem for Respondent, namely that it is not a word in the English language. It's the kind of coinage possibly analogous to "bettr" or "greatr" in which the omitted vowels notwithstanding are recognizably English words with omitted vowels. That is not true of "goodr." Nevertheless, Respondent alleged that the name was generic, a difficult assertion since the word (even without the missing vowel) is manufactured ("worser" could be an example since it is in the dictionary although listed as "substandard."). However, the three-member Panel was not persuaded that "gooder" was a word or Respondent's argument that

it acquired the disputed domain name, which is a valuable five-letter domain, because of the generic and/or common usage of the term "goodr" as a descriptive term or as a surname. Respondent notes that the term "goodr" is a play on, reference to, and/or abbreviation of "gooder" and "do-gooder".... Respondent contends that it has developed and sold many other similar portfolios of descriptive terms that drop vowels, including <buyr.com>, <hotgrl.com>, <leadrs.com>, and <shootrs.com>.

To be noted, though, "buyr," "hotgrl," "leadrs," and "shootrs.com" are recognizable as English words minus vowels. Not so "goodr" (the sole use is found the noun phrase "do-gooder.") The Panel held that

Notably, while Respondent claims to have registered the disputed domain name on the basis of its generic or common usage, the website at the disputed domain name makes no use of or reference to "goodr" as a common or descriptive term or that "goodr" is a play on "gooder" or "do‑gooder." Instead, the website refers to the disputed domain name as a "great name," and "a snappy and memorable take on the word 'good'", which in combination could be seen as suggesting that the term "goodr" is essentially distinctive or fanciful and not a common descriptive term as Respondent now argues.

Although not cited by the Panel, Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000) offers a clue (unconscious to the Panel chair, I think) that an inference will be drawn from respondent's choice of name when "it is not possible to conceive of any plausible actual or contemplated active use of the Domain Name by respondent that would not be illegitimate." The Panel held:

Simply put, Respondent, who promotes itself as a branding expert, either deliberately chose to ignore Complainant's rights or deliberately decided not to conduct any search when determining that GOODR was unique and had good "brandability". Respondent was either aware of, or through its own representations should have been aware of, Complainant's rights when acquiring the disputed domain name and when later seeking to capitalize on the disputed domain name.

The Atlas case illustrates yet another issue, namely a trademark composed of a common dictionary word incorporated into a phrase that can plausibly be used for goods or services that "would not be illegitimate":

The Complaint filed in this proceeding is exceedingly spare. In particular, it makes no attempt to show, by at least proof prima facie, that Respondent has failed to use, or to make demonstrable preparations to use, the contested domain name, "in connection with a bona fide offering of goods or services" as provided in Policy ¶ 4(c)(i).

Worse (not worser!) for the Complainant is a miscue on its submission, hence a puncturing of credibility:

there is attached to the Complaint a screen print of the web page that is claimed to resolve from the disputed domain name. That web page displays a street address in Flushing, New York, a phone number, an e-mail address, a US Department of Transportation (USDOT) number and a Motor Carrier (MC) number. The Complaint does not suggest that any investigation has been made to determine the bona fides of these items of information. And, although the same web page also contains tabs labeled "Get Free Quote," "About Us," "Services," "Contact," "References" and "Letters," the Complaint makes no showing that these tabs have been explored to determine if they reflect whether a bona fide business is under operation at the challenged domain name.

The Panel found these omissions leave open the possibility that Respondent has "rights or legitimate interests in respect of the domain name" within the meaning of Policy ¶ 4(a)(ii). Because Complainant has left this question unattended, we cannot, on the record before us, conclude that Complainant has met its three-pronged obligations of proof under Policy ¶ 4(a)."

The common element in all these cases is a combination of undigested evidence promoted as conclusive and issues of credibility, either lack of it or reinforced by concrete evidence. The Atlas and Elgi Complainants and Goodr Respondent lacked credibility, that is the contentions lacked sufficient evidence to support requested conclusions. Parties lose when they substitute allegations of fact for the substance of fact.

By Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP Information about the firm can be found on the Firm’s website at iplegalcorner.com. Mr. Levine has a litigation and counseling practice representing clients in Intellectual Property rights and management, Internet and Cyberspace issues, domain names and cybersquatting, as well as a diverse range of legal and business matters from working with client to resolve commercial disputes, to copyright and trademark counseling and registrations. Visit Page
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UDRP is indefensibly inconsistent Elliot Noss  –  Sep 26, 2018 4:51 AM PDT

It is nice that you defend the UDRP as if panelists truly cared about precedent. But they too often don't and there is no recourse for most respondents (thankfully we are big enough to defend ourselves). See the decision in Marker (http://www.wipo.int/amc/en/domains/search/text.jsp?case=D2012-1461) where a single panelist first ignores numerous precedents for deferring to courts (we long ago stopped trusting the UDRP and immediately bring court actions in our cases) and then employs tortured logic to ignore numerous other precedents and enter a decision for no other reason than to create a precedent (that no doubt he or his colleagues would then rely on). And this is not a young lawyer.

Allowing panelists to also represent complainants made sense in 1998, not 2018. It is now simply indefensible and violates fundamental principles of justice separating adjudicators from advocates. And try and get ICANN or WIPO to listen to that. There are no contracts and no regime for change. And the RPM review process is so stacked with IP lawyers that swimming upstream would be a full-time job. For a salmon!

Sadly, the process is corrupt at its core. It mostly works, but often doesn't and is heinous when it doesn't.

Thank you, Mr. Noss. One can hardly Gerald M. Levine  –  Sep 26, 2018 6:38 AM PDT

Thank you, Mr. Noss. One can hardly disagree there are unworthy decisions and panelists disregarding consensus or precedent, but I don't think the UDRP should be condemned as "corrupt at its core." Regarding bias (which is a form of corruption), I would expect panelist-lawyers who represent clients on the top (or, even bottom side) of the caption to refuse to accept appointment where there is a conflict of interest. I wonder whether you would revise your view if there were an administrative appeal as there is under the Nominet UK policy?

it is structural Elliot Noss  –  Sep 26, 2018 8:16 AM PDT

It would not change my view.

I use corruption in the technical/structural sense (not moral or ethical). It is the same reasoning that precludes judges anywhere in the world from being practising lawyers at the same time.

The conflict is inherent. People rely on their friends, or even their own, precedents.

Remember that the original logic for allowing this (and it was clearly viewed as an exception to fundamental principles of justice) was that their were too few practitioners with knowledge of the subject matter at the onset of the UDRP.  A clear sunsetting should have been a part of the exception, but now it is simply a way for people to feather their nest.

Again, the UDRP is overall a net positive. This is a clear pimple on the corpus though.

Very informative conversation, Mr. Noss. Thank you. Gerald M. Levine  –  Sep 26, 2018 8:52 AM PDT

Very informative conversation, Mr. Noss. Thank you. Of course judges are paid to be judges (full time), but panelists (and commercial arbitrators) are paid for their expertise and experience in certain areas of the law and receive occasional appointments; they have to make a living after all, and for IP counsel making a living may include representing trademark owners in their regular practice. We are in agreement, though, that "overall [the UDRP] is a net positive." The reason I mentioned administrative appeals is because the only avenue for "appeal" (at least where there is jurisdiction, and I am referring specifically to US law)is a de novo action challenging the UDRP award under the ACPA. However, this is likely to be prohibitively costly for small investors (although some have been successful) and perhaps not "prohibitively" for substantial rights holders although a disagreeable expense even when they prevail.

call me elliot and thanks for the kind words Elliot Noss  –  Sep 26, 2018 11:05 AM PDT

I have no doubt that if IP lawyers had to CHOOSE between being panelists or advocates, the list of panelists would still be full. Needing to make a living is not a reason to violate fundamental principles of justice.

Your appeal point is interesting (if separate). We would never bring an action in the US as it is the only jurisdiction in the developed world that does not have costs in the cause therefore tilting litigation in favour of deep pockets, ironically the exact opposite of the historical reasons for this exception.

Let me try and square the circle. If you were comfortable that a suitable amount of panelists could be found if panelists had to choose to not also be advocates, would you then be in favour of this change?

I'll pass on squaring the circle for Gerald M. Levine  –  Sep 27, 2018 3:30 AM PDT

I'll pass on squaring the circle for a later time. Regarding the point on "deep pockets) and costs, under the Anticybersquatting Consumer Protection Act the prevailing party is eligible for both damages ($100,000 per domain name) and attorney's fees, which is a statutory exception to the American Rule (also in the Copyright Act, incidentally).

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