Should the UDRP be reformed? Don't go there, says WIPO

The Uniform Dispute Resolution Policy (UDRP) of ICANN, which is binding for all registrars and, by virtue of being incorporated into the domain name registration agreement, on anyone registering a domain name in a generic top level domain (notably .com, .net and .org, the others play a small role), provides since 1999 for a dispute resolution process if a trade mark owner feels that a domain name infringes his rights. Assuming IPKat readers will be roughly familiar with the policy, I shall spare you the details (some background here).

ICANN is cautiously posing the question whether the UDRP should be reformed, and has received a resounding "NO, PLEASE DON'T" from WIPO. The main arguments of WIPO, as summarized in a Webinar held on 10 May 2011, are the following:

• The UDRP has been offering an effective solution for trademark owners, domain name registrants, and registration authorities.
• By accommodating evolving norms and practices, the UDRP has proven to be a flexible and fair dispute resolution system.
• With vast DNS growth around the corner and untested new RPMs in development, the time is wrong to revise the UDRP.
• Institutionally stacked, an ICANN revision process would likely end up overburdening and diluting the UDRP.
• Fundamental questions about the business and DNS beneficiaries of cybersquatting must be addressed before targeting the very mechanism intended to address this practice.

Instead of allowing the UDRP to be placed in the dock, ICANN should first fairly address the following issues:

• the relationship between cybersquatting and the activities, revenues and budgets of DNS actors; the incidence of UDRP cybersquatting findings in relation to wider trademark abuse in the DNS overall, with filed UDRP cases merely representing the tip of the iceberg; and
• the degree of proportionality between trademark rights enforcement and domain name registration opportunities in the DNS.

From the user's side, Aimee Gessner, Senior Trademark Counsel at the BMW Group, adds:

• The real problem is not the UDRP: Other practices since the launch of the UDRP in 1999 have contributed largely in encouraging cybersquatting:
• Domain name tasting
• Increasing domain parking sites / pay per click sites
• Drop-catching
• Use of privacy registration services to hide identities of cybersquatters
• Establishment of bogus “registrars” that have no purpose other than to cybersquat

Summary:
• The UDRP is working fairly and efficiently for its intended purpose
• There are many other causes today for the steady increase in cybersquatting which ICANN should rather review
• Brand owners are concerned at this time with what the expansion of the DNS will cause in terms of cybersquatting and other forms of rights infringement system at such a critical time
• Unwise to review and possibly compromise UDRP system at such a critical time

Attorneys acting for complainants point out that the trade mark owners bear the entire cost of the UDRP system and suggest that a "loser pays" system may be fairer. Respondents warn against further streamlining a system that may cease to be considered fair.

The registrars have some technical issues with the UDRP, notably

• The meaning of “Maintaining the Status Quo” in Section 7 is not clear: No explanation of “Legal Lock” mechanisms and when they go into effect or when they should be removed.
• Policy does not provide guidance on what a registrar is to do if a claim is stayed or suspended: Is the legal lock to be removed or remain in place?
• Policy does not address Privacy and Proxy Registrations or require complaining party to amend complaint once infringing party identified.
• No explanation on what a registrar should do when a UDRP decision conflicts with an injunctive order issued by a of local jurisdiction.

It should be possible to implement these rather technical issues without breaking the system, this Kat thinks. As far as the message of WIPO is concerned, it couldn't be clearer: don't go there (they literally state this in an open letter to ICANN).

Velosolex.com: one seriously contested nostalgic domain name

A VéloSolex is a simple motorized bike manufactured in France from 1946 to 1988; production by a licenseee in Hungary ended in 2002. About six million VéloSolex were produced, and they were loved for their simplicity and that certain "esprit de France" - baguette, Brigitte Bardot, lazy morning in the sun, anyone?

In 2005, the company Mopex S.A. started manufacturing a modernized version of the VéloSolex, using Chinese parts and fitted with a catalyst. Because Mopex does not own the trade mark rights in the sign VELOSOLEX, the product is (outside the Unites States, more below) sold under the name of "Black n Roll".

Mopex originally registered the domain name velosolex.com, but lost it to Magneti Marelli Motorpropulsion France S.A.S, which owned the trade mark rights in the sign at the time (WIPO, No. D2003-0187). The rights in the trade mark VELOSOLEX were then transferred to Sinbar Sarl, a company of the Cible 99 group of companies. It distributes an electric "Vélosolex" under the name of "eSolex". Sinbar obtained the domain name velosolex.com from Forsyte Corp., Nassau, who had registered the name in 2004 after Magnetti Marelli had apparently failed to renew it (WIPO, No. D2008-1667).

But that's not the end of the story for this contested domain name: in July 2010, Velosolex America LLC, New Jersey, requested the transfer of velosolex.com from Sinbar Sarl (and first had to learn that the language of the proceedings under the UDRP is the language of the registration contract, which in this case was French). Velosolex America owns a U.S. trade mark "VS VELOSOLEX" since 2002 and distributes the "Black n Roll" Solex in the United States under the trade mark "Velosolex". Sinbar owns, among others, an international registration with extension to various European countries with a priority of 1964. Velosolex America alleges in the UDRP complaint that Sinbar had, in a settlement agreement concluded over an U.S. opposition proceeding in 2006, not to challenge the rights of Velosolex America in the domain name velosolex.com.

The WIPO expert notes that the settlement agreement of 2006 is less clear on the subject than the Claimant would like to show. In his reading, the settlement only prohibits Sinbar from challenging Velosolex America's rights in the domain name velosolex.com once the domain name is registered in the name of Velosolex America, which it never was. There was also an issue regarding the parties to the settlement agreement, because Velosolex America is not a named party, rather Ascione Rent a Car, Inc., was counterparty to the agreement. The relationship and transfer of rights from Ascione Rent a Car, Inc. to Velosolex America remain unclear. The expert notes that the interpretation of the settlement agreement requires a depth of instruction and analysis for which the UDRP is unsuited ("En définitive, ces quelques explications démontrent que le complexe contractuel et l’ensemble des circonstances ayant entouré la conclusion de l’accord du 12 juillet 2006 exigent une analyse et une instruction que le cadre limité de la présente procédure ne permet pas de régler à satisfaction."). In view of the trade mark rights of the Respondent in the sign VELOSOLEX, its registration and use of the domain name velosolex.com was not in bad faith. Transfer denied (WIPO, No. 2010-1231 of 21 September 2010).

I suppose the story shows that nostalgic brands do indeed pose thorny problems for those who would like to revive them - or continue using them after a hiatus - as fellow Kat Neil has alluded to in his recent post on IPKat. This Kat also believes the WIPO expert was right to think that the UDRP is unsuited for subtle issues of contract interpretation; these thorny issues should be best left to courts.

Corporación Habanos S.A. sees its UDRP claim for cohiba.com go up in smoke

Corporación Habanos S.A. failed to obtain the domain name cohiba.com in a recent URDP proceeding against Tobias Pischetsrieder. It is undisputed that the complainant owns more than 800 registrations worldwide for trade marks containing the term COHIBA, which was created in 1966 and first registered in 1969. In Germany (domicile of the respondent) the COHIBA mark was registered in 1985.

The respondent had registered the domain name cohiba.com in 1996 and not used it for any commercial purposes, neither offered to sell it nor placed any advertising on it. He argued that in 1996, when the domain was registered, it was not clear under German law whether the registration and use of a domain name constituted trade mark infringement. Whether COHIBA was a well-known mark in Germany at that time was unclear (he did not dispute that he was aware of the COHIBA brand at the time of registration). There co-existed trade marks with the term COHIBA for different goods. His registration and use of cohiba.com was not in bad faith.

The three-member panel agreed that under the circumstances, the complainant had failed to establish the bad faith of the respondent, and denied the transfer of the domain name. A key element considered was also the 13 year delay before the complainant enforced his rights; while the panel noted that the UDRP did not foresee forfeiture ("Verwirkung"), a long delay between the registration of the domain name at issue and the enforcement of the alleged rights counted against a finding of bad faith (citing The Knot, Inc. v. Ali Aziz, WIPO case No. D2007-1006).

D2009-1041 (in German - the complainant had filed its complaint first in Spanish but was educated that the language of the proceeding is the language of the domain name registration agreement, which in this case was German)

I CAN HAS CHEEZBURGER wins against icanhashotdog.com

In a case of inherent interest to the IPKat, a WIPO panelist has transferred the domain name "icanhashotdog.com" to the proprietor of the trade mark I CAN HAS CHEEZBURGER?.

The proprietor of the trade mark I CAN HAS CHEEZBURGER?, claiming protection for “on-line forums for the transmission of images and messages among computer users concerning animals and humor" filed a URDP complaint against the registrant of the domain name icanhashotdog.com, used for, well, essentially the services claimed.

And won despite the fact that the complainant had registered its mark almost a year after the domain name icanhashotdog.com was registered (he did claim first use of the mark some months before the registration of the domain name). The panelist held that the complainant had met its burden of proof to demonstrate common law rights in the trade mark I CAN HAS CHEEZBURGER?:

"Relevantly, the Complainant’s evidence is essentially that:

- it used its I CAN HAS CHEEZBURGER? mark in a domain name from January 2007;
- it featured the mark on its website to which its domain name referred (as annexed to the Complaint, the Complainant’s homepage displays the mark once, in the upper left hand of the page);
- its website rapidly became popular;
- its website was the subject of a number of media articles (the Complaint attached copies of two).

The Panel considers that, on balance, this is enough to demonstrate that the Complainant had developed common law rights in its mark by the time that the domain name was registered in July 2007. The Complainant did not provide a substantial amount of evidence of common law rights, or explain the origin of its mark. The Complainant’s claim to the first use of its mark from January 2007 in its trademark registration also does not establish an evidentiary presumption to that effect. (See recently e.g. Super-Krete International, Inc. v. Concrete Solutions, Inc., WIPO Case No. D2008-1333 citing McCarthy on Trademarks and Unfair Competition § 20:28 (4th ed.)).

However the Panel considers that, in this case, the evidential burden on the Complainant to provide evidence of common law rights is relatively light. Principally, this is because its mark appears to the Panel to be an invented and arbitrary phrase, and therefore inherently distinctive in a trademark sense for the purpose of the Policy. What is “inherently distinctive” in this regard may not always be capable of a neat definition. However, it is at least to be contrasted with marks which are derived from common terms, or words which are descriptive or suggestive of certain goods and services. There is nothing in the Complainant’s mark which seems to this Panel to be descriptive or suggestive of the services which the Complainant provides. The phrase “I can has cheezburger?” appears to have no common meaning, or to be derived in whole or part from any phrase with a common meaning, including one associated with the Complainant’s services.

Since the Complainant’s mark is inherently distinctive, the Panel considers that the Complainant’s evidence is, in this case, sufficient to demonstrate that it had unregistered rights when the Respondent registered the disputed domain name. Here, the Complainant provided evidence of its close association with an inherently distinctive mark. There is no evidence in the case file that the Complainant’s mark had any other association. The Panel accordingly finds for the Complainant under the first element of the Policy."

Since the whole "lolcat" meme originated from 4chan (no, I won't link, but you all know how to find it), the IPKat wonders whether it is correct to monopolize the use of the phrase for commercial purposes by a single provider. And the IPKat is glad that he has been around since before January 2007 and is therefore much older - not necessarily more mature - than all the lolcats.

Case No. D2009-1003

Use of "trademark.com" domain names for criticism sites

The IPKat's Greek friend Nikos Prentoulis wrote a guest article last week, "Free speech prevails over common law rights in WIPO panel decision", Though it attracted only a couple of posted comments, the Kat received some very thoughtful emails on the subject. One of these is from Matthew Harris (a partner in Waterfront Solicitors), who has written to the IPKat as follows:

"I thought you might be interested to learn that for quite a few years there has been a debate ongoing among UDRP panelists as to the extent to which <[trade mark].com> domain names can be legitimately used for criticism sites.

WIPO chose this as one of the subjects of discussion during the meeting of panelists in Geneva last October under the heading “Criticism sites and other free speech - bridging the divide?”. The “divide” is recorded in paragraph 2.4 of the WIPO Overview of Panel Views. It is broadly between a US approach that has been prepared (at least in cases that involve only US parties) to be influenced by US case law on the issue, and non-Americans that have tended to be less impressed by such arguments and more often than not have concluded that <[trade mark].[tld]> domain names, even when used for criticism sites, are abusive.

In the last couple of years the question has arisen as to whether this divide is logically defensible. This in turn raises fundamental questions as to what extent the UDRP can or should be seen as providing a sui generis system of law (albeit one created by contract) or should be influenced by provisions in national law (including free speech rights under the US constitution as well as national law concepts of “fair use”).

For those who are interested in the subject, decisions in which this debate has been conducted include:

1066 Housing Association Ltd. v Mr D. Morgan, WIPO Case D2007-1461 [declaration of interest: Matthew drafted this ...]

Fundación Calvin Ayre Foundation v Erik Deutsch, WIPO Case No. D2007- 1947

Sermo, Inc. v CatalystMD, LLC, WIPO Case No. D2008-0647 and

Grupo Costamex, SA de C.V. v Stephen Smith and Oneandone Private Registration / 1&1 Internet Inc. WIPO Case No. D2009-0062

The decision in D2009-0693 mentioned by your correspondent is of some interest in that the US panelist reached different conclusions on the issues of “right or legitimate interest” and “bad faith”. However, ultimately it is a decision that appears to be consistent with the traditional “US view”. It does not appear to address the more fundamental debate taking place on these issues.

It is also perhaps worth recalling that the English courts recently strayed into this discussion (perhaps unknowingly) in Patel v Allos [2008]. The decision was picked up by the IPKat at the time but was not as extensively reported as it perhaps deserves. It has not found its way on to the BAILII site. However, a full copy is accessible on Nominet’s website here".

Thanks, Matthew, says the IPKat, for taking the trouble to write in and to elucidate the current state of play in this obvious area of IP v free speech so neatly.

Free speech here

Words are cheap here

Words are cheep here [for those who sincerely believe that all music in 1971 was cool]

Expensive speech here

Free speech, but nothing to say?

The IPKat has today received a copy of the ruling last Friday of Sonia Proudman QC, sitting as a Deputy Judge of the Chancery Division, England and Wales, in Pankajkumar Patel v Allos Therapeutics Inc -- a dispute in which human rights and trade mark collide quite dramatically.

Allos, an international biopharmaceutical company, owned US trade marks for the words 'Allos' and 'Allostherapeutics, Inc'. Unsurprisingly Allos operated the allostherapeutics.com domain name. Patel, a horticulturalist, did not trade in the pharma sector himself. However, he developed the habit of registering the names of companies -- including Allos -- as domain names. Unlike some grubby souls who only do it for the nuisance value and in the hope that they will be bought off for a juicy sum of money, Patel had a higher purpose. This was to wage ideological warfare against what he perceived to be the evils of the pharmaceutical industry, which he sought to expose. Patel's sites were acquired in the hope of directing internet users searching for the (evil) company in question to a website in the name of the company, in the form "trademark.tld", on which the company's logo was displayed. After he had a full view of the home page, the internet user would then be treated to a disclaimer or would come to realise that the site was unconnected to the target company.

In the case of Allos, the disputing parties had already agreed to an ICANN Uniform Dispute Resolution Procedure (UDRP), in which the panel upheld Allos's complaint and ordered that the allos.com and allostherapeutics.com domain names be transferred to Allos. Now Patel went to court and sought to have the UDRP process set aside on an unspecified ground under the Human Rights Act 1998. According to Patel, the panel's decision infringed his right to freedom of expression under Article 8 of the European Convention on Human Rights. Patel also alleged defamation, malicious falsehood and wrongful threats to sue for trade mark infringement. Allos, unimpressed by these lofty claims, applied for (i) the claims to be struck out on the ground that it disclosed no reasonable grounds of action or (ii) summary judgment on the basis that Patel had no real prospect of succeeding and there was no other compelling reason why the matter should go to trial.

Sonia Proudman QC granted Allos's application. She observed that freedom of expression was not an unqualified right: it had to be balanced against the rights of others, such as the rights of a minority not to suffer abuse or -- in this case -- the rights of a trade mark owner freely to enjoy its own rights and property. There was no way Patel could succeed: he used a domain name without offering any indication that it was a protest site; the site featured Allos's own trade mark. It was hardly free speech to use a domain name and trade marks that internet users would (and were intended to) associate with Allos in order to trick them. Nor wa there any active criticism, or link to any.

The IPKat says, oh dear, here's another litigant appearing in person who really had no chance at all. It's not as if he had taken the trouble to exercise his freedom of expression by saying something about Allos. This is not so much a plea for freedom of expression as a plea to be able to retain the media of expression until such time as something expressable occurs to him. Merpel says, the judge struck the right note when she said:

"He cannot accept that he is the aggressor, not the victim. He is not debarred from making legitimate criticisms of pharmaceutical companies nor from setting up proper criticism websites from which he and others might do so. Instead, he had chosen to usurp names and logos contrary to the UDRP policy".

Col d'Allos here
Val d'Allos here