Howard Neu – UDRP & WIPO Unveiled – Live from Traffic DownUnder 2008

November 17, 1 Comment - Author: Simon Johnson

Howard needs no introduction, he is the co-founder of TRAFFIC conferences along with Rick Schwartz. Before launching into the speech, Howard commented that TRAFFIC will be working on a “Code of Standards” for domainers with a launch date of April 2009. Interesting…..

UDRP

• Is there evidence of bad faith?
• Demonstrating rights or legitimate interest. eg: bona fide offering of goods and services, commonly known by that domain name, legitimate non-commercial or fair use.

How Is It Supposed To Work?

• Impartial arbitration
• Choice of forum
• Inexpensive resolution in that there are no hearings, oral argument.

How Does It Work?

• Pleadings only
• Number of panelists could be important. i.e: some may rule more for complainants or respondents
• No official stare decisus (normally ensures a uniformity of law)

There is nothing to say that a panelist has to follow precedent.

Stragtegy In How To Pick A Panel

• Look at  the previous decisions made by panelists.
• If you remove all the cases where there is no response by a respondent; a panelist may look balanced.

WIPO v. NAF

• The problem is if you don’t respond, you get a track record (as a cybersquatter).
• In another case, the panel will look at this track record. You have to be careful here!

Landmark Cases

Ingram micro vs ingredients (WIPO 2002)

• Ingrammmicro.org, ingrammmicro.net
• 2 TM’s include “Ingram Micro”
• Complainant labeled Respondent cybersquatter
• No response
• No effort to sell domain to mark owner or competition
• No evidence domain acquired to disrupt business
• etc..

Hebrew University v. Alberta Hot Rods (WIPO 2002)

• alberteinstein.com
• Einstein founder and involved with complainant
• Domain redirects to Respondent’s celebrity1000.com
• Previous panels found that Celebrity1000.com fails to offer legitimate goods or services
• No common law trademark
• celebrity1000.com offers links to goods and services, so its a legitimate business.

Falwell vs Cohn (WIPO 2002)

• jerryfalwell.com etc..
• Complainant fails to show that his famous name is used as a label for goods adn services
• WIPO holds that POLICY should be limited to personal names commercially exploited.

Hero.com – Involves John Berryhill

MyKnot.com (WIPO 3/10/08) – Respondent did not reply. The case had been heard by another panel and got a negative result. No new evidence.

BakersDelightLies.com (WIPO 2/25/08) – Australian case. Franchisee of Complainant – left and created an attack site. Panel distinguished from “sucks” – no commercial use – no advertising or link

AlignTechnology.com (WIPO 3/31/08) – Complainant has AlignTech.com for orthodontics – Respondent picks up dropped names – Panel excluded additional materials from Complainant as not appropriate. Again, the respondant didn’t file a reply, couldn’t offer any additional materials.

TastyTwist.com (WIPO 10/13/08) – Domain parked at Sedo. Respondent offered to sell for $10k after receiving C&D – no evidence of prior complaints – no bad faith.

ClickFarm.com (NAF 10/28/09) – No response – Parked at a PPC Monetizer – Regged before the Complainant obtained Trademark – No bad faith.

FreemanHonda.com (NAF 9/2/8) – No response. Complainant had no registered Trademark and was in business since 2005.

Stats for Defense vs Default

• If there is an obvious loss, settle and give up domain. Ask complainant to withdraw the action (so you dont have a track record).
• Record used against respondent in future cases
• Never agree to not register other domains. It may make you look bad in future cases.

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