Q&A with Author of ‘Domain Name Arbitration’ Book

Q&A with Author of ‘Domain Name Arbitration’ Book
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In the preface to his new book, “Domain Name Arbitration,” author Gerald M. Levine says his work “is principally devoted to explaining the process, jurisprudence, and demands of the Uniform Domain Name Dispute Resolution Policy, popularly referred to by its acronym, UDRP.”

The book is, as I said in a testimonial printed on the back cover, “an important, thorough and incredibly helpful guide for navigating the UDRP.”

Here, Levine answers some questions I had about his book and the UDRP:

Q: Why did you write this book?

A: This goes back to 2004, maybe even 2003 when a colleague asked me to assist him in dealing with a client’s claim that several people were using domain names either corresponding to its trademark or incorporating its trademark. I didn’t know what the remedies were or whether there were any against domain name holders in foreign countries, so I started researching the law, and that’s how I learned about ICANN and the Uniform Domain Name Dispute Resolution Policy, the UDRP. I also went into the statutory remedies under the Anticybersquatting Consumer Protection Act, the ACPA. I thought it interesting that both regimes rolled out in 1999. I started keeping track of the UDRP decisions and began organizing legal conclusions into themes and topics. There were already 15,000 or more decisions from the UDRP by 2005; but only a handful of decisions from the ACPA.

The book initially started as a brief memorandum to the client, and began growing as I added material and transitions from subject to subject. I did a long article for the New York Law Journal in 2005. Then I started organizing my notes to see whether there was enough for a book. This involved numerous drafts before I found the right organization. There were a number of false starts until I hit on a solution I thought would be the most practical and useful in guiding practitioners and parties in understanding what the UDRP was about and what the parties had to do to assert and defend claims of cybersquatting.

Q: Years ago, Corporate Counsel magazine called the UDRP “the preferred option for most trademark owners” for resolving domain name disputes. Do you agree, and why?

A: This view that the UDRP is “the preferred option” for combating cybersquatting is still the current perception, of course, and properly so. The administrative regime has proved astonishingly successful. Just think, if there were no UDRP every dispute in which parties resided in different countries would have to be decided in the countries in which the domain name holders resided. It would be cost prohibitive to do that. The UDRP functions as supranational forum, with its own procedural and substantive law that has been developing into a ripe jurisprudence now for fifteen years. The regime is available to trademark owners regardless of the jurisdictions in which they and domain name owners reside. Any trademark owner anywhere in the world has a remedy against any domain name holder anywhere in the world. The UDRP transcends territorial legal jurisdictions and that’s what’s so remarkable about it.

Also, the majority of disputes involve domain names clearly registered to take advantage of the good will and reputation owners’ trademarks; that certainly accounts for the 85% win rate for trademark owners. It is more cost effective to arbitrate under the UDRP than commencing litigation even in one’s own country. Just looking at the kinds of disputes on the database illustrates the problem. Within 60 to 75 days, or even less in some instances, panels appointed by providers produce reasoned awards. And, some of these awards are astonishingly good. Trademark owners win mainly because there is conclusive proof the domain names were registered and are being used to take advantage of the power of the corresponding trademarks.

Those trademark owners that fail to persuade fall into three categories. First, are those who fail to understand the evidentiary demands for prevailing under the UDRP and present insufficient or no evidence of bad faith. The second category of owners consists of those with weak trademarks composed of common elements that domain name holders are lawfully allowed to register and use as long as they have not registered the domain names with the intention of taking advantage of the trademark owners. The third category consists of trademark owners who concede priority or derive their rights from distant jurisdictions but claim to have the “better right” to the disputed domain name because they are offering “real” goods or services whereas the domain name holders are only monetizing their websites. Measuring distances, incidentally, whether temporally, geographically, and by goods/services offered by each of the parties, is a significant factor in determining whether there’s been an abusive registration.

Q: What are some of the popular misconceptions about the UDRP?

A: The first kind of “popular misconception” was held by domain name holders who were being challenged for their choices of domain names. The early domain players really didn’t understand the relationship between trademarks and domain names, and neither in some cases did trademark owners and lawyers. In the early 2000s there were domain name holders who couldn’t understand why it was unlawful to create close variants of trademarks. They argued they had as much right to variants as trademark owners had to trademarks. This argument was quickly put to rest under both UDRP and the ACPA. This form of cybersquatting received its own classification, “typosquatting.”

There is also another misconception that I’ve seen expressed by domain name holders as well as commentators that the UDRP is biased in favor of trademark owners. In part critics support their view by pointing to the overwhelming percentage of cases that end in favor of trademark owners. But, this is nonsense for the reason I’ve already mentioned. Where defenses are truly meritorious domain name holders prevail. And, if domain name holders lost under the UDRP they can be successful in federal court under the ACPA. In some cases reverse domain name hijacking by trademark owners has proved to be a very costly ordeal.

There is also a popular misconception that the UDRP isn’t working. This criticism is against panelists who follow their own beliefs of what the law should be rather conforming to established law, and this has happened in some recent cases where panelists take the position that the law doesn’t require them to find conjunctive bad faith, but the domain name can be forfeit in their view if there is bad faith use after renewal of registration. Again, this is not the law. There is a strong consensus of Panels that condemns this reading of the UDRP.

It has also been said the bias is endemic because the panelists are drawn from the trademark bar. This too does not bear scrutiny. This is not to say there aren’t some anomalies among decisions that come down; the regret here is that there is no administrative appeal from these decisions. There is, incidentally, an appeal mechanism under the URS, but so far ICANN has not amended the UDRP to provide for appeals.

Q: In researching and writing this book, what did you learn about the UDRP that surprised you the most?

A: What surprised me the most in researching and writing the book is the conceptual integrity of the UDRP. The jurisprudence has advanced in the same way as common law; it is Panel created, and although it is said by the World Intellectual Property Organization in its Overview to be a consensus based regime, it is rare for panelists not to cite precedent in their decisions. Panelists really do strive for predictability and consistency. You see it a lot in split decisions with the dissent taking a different legal approach to the facts. Also, in terms of surprise, is learning about the differences between the UDRP and the ACPA: there is the UDRP way, which is an “and” model; and there is the either/or way of the ACPA. The UDRP is not a trademark court.

Although I wouldn’t call it surprise it is always interesting to learn something new, and in this case it was about the differences between the two regimes and their evidentiary requirements. If there’s a trademark infringement it belongs in federal court. Some panelists want to remake the UDRP to be an administrative version of the ACPA. This is a huge mistake in my opinion.

Q: A lot of early UDRP cases involved pornographic websites and domain names that were truly identical to a company’s trademark, but those issues seem much less common today, as domain name registrants and trademark owners have become more sophisticated. What types of facts or trends are popular today in UDRP cases?

A: There are still domain name holders who respond to challenges of cybersquatting by threatening to repoint domain names to pornographic websites and there are a fair number of cases involving phishing for personal information. But, there are also cases of abusive process in which newly minted trademark owners are initiating complaints against domain name holders who have years of priority. So, the abuse is not always by the domain name holder.

Also, what’s happened is that use of content is much more sophisticated. In the early years bad faith use would be established by examining the content of the website; if it included the trademark owner or contained links to goods or services competitive with the trademark owner, that would indicate bad faith use, and if the trademark owner had priority in the marketplace, it would also establish bad faith registration. Now, the algorithms are so advanced that all of the infringements can be filtered out.

It is important to understand that holding domain names for sale or using them to generate revenue as search sites is not unlawful even though they may be identical or confusingly similar to trademarks.

Q: What do you see as the most contentious issues in UDRP jurisprudence?

A: The most contentious issue in UDRP jurisprudence, which started in a duo of cases in 2009, has been the attempt by a few influential panelists to change its construction to allow for forfeiture regardless of good faith registration if domain names are subsequently being used in bad faith. This view, which hasn’t really gotten anywhere and to my mind is a dead end, attempts to bring the UDRP into alignment with the ACPA. Nevertheless, there are some anomalous decisions sometimes by dissenting panelists that go to great lengths to explain the reasoning behind the view.

Another contentious issue is the use of domain names for commentary and criticism. What exactly is protected? Is it the domain name or the speech on the website? Some panelists hold that domain names identical or even confusingly similar to trademarks are not protected speech. Domain names may be protected if trademark are incorporated into strings that includes pejoratives such as “sucks.” Other panelists, particularly from the U.S. favor protection of domain names as well as content. Even alleged defamation is not enough to favor forfeiture because adjudicating whether material is defamatory is outside the scope of the Policy.

Q: The URS (the Uniform Rapid Suspension System) was intended to be a cheaper, faster alternative to the UDRP for domain name registrations in the new gTLDs, but it has not proven very popular, at least not yet. What do you think of the URS, and will it ever become as popular as the UDRP?

A: You’re right about the URS, and there’s good reason that it’s less popular, even though the remedy, shutting down the website, proceeds more rapidly and is marginally less expensive. The problem from the trademark owners’ perspective is that when the registration ultimately lapses the domain name returns to the pool of domain names and can be registered by another party, and if that happens the trademark owner has to go through the same procedure another time. With the UDRP the trademark owner can take ownership of the domain name and put it permanently beyond reach of cybersquatters.

Nevertheless, the URS is a useful tool to get the domain name out of the cybermarketplace and in that respect is fulfilling ICANN’s intentions in creating it.

Q: The new UDRP rules (as of July 31, 2015) address “locking” a domain name during a UDRP proceeding, which many practitioners believe will help reduce cyberflight. What did your research teach you about cyberflight, and how do you think it might change under the new rules?

A: This is an interesting issue because cyberflight has not shown up in all that many cases; in fact, some registrars were already locking challenged domain names upon receipt of notices from providers. The more important provision under the new UDRP rules is that the domain name holder no longer gets a copy of the complaint until it has been reviewed by the provider; and only after review does the provider serve the complaint on the domain name holder, Under the former rules, the complaint was served on the domain name holder as well as the provider at the same time which enhanced the possibility the domain name holder could move the registration to another registrar. The new rules eliminates that possibility.

The locking, of course, does not solve the problem of cease-and-desist letters. Once domain name holders are put on notice there’s an opportunity to change registrars; and put domain names in proxies to delay the proceedings. Providers and Panels are very attuned to this because the Whois directory discloses the name of the registrar and there is little tolerance for domain name holders who try to disguise themselves.

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