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.

While there have been various media reports speculating about who made the complaint; what I do know is that the complainant was The Arsenal Football Club Public Limited Company and the respondent was Domains by Proxy, Inc./Official Tickets Ltd.

The mother, Gillian Fergusson told the BBC that she was shocked by the decision. “We provided very clear statements from the internet registration company saying that we had not tried to make any money and yet somehow it has just simply ignored the evidence.”

Apparently, registering an e-mail address for a child is not legitimate use!

Ms Fergusson said: “We have not done anything illegal or wrong, we were perfectly entitled to have this domain name.

“There was three months in which they could have registered this. There was a private period for any trademark holder to register any .mobi domain name when they went on sale in 2006.

“We did not buy ours until after that three-month period had expired and it was open for public sale.”