5 With… Brett Lewis, Partner, Lewis & Hand
Good attorneys that specialize in domain law are difficult to find because they are always busy! I first heard of Brett Lewis while reading an article in DN Journal about a year ago. In the article, Brett provided tips to domain owners to help proactively protect their domain assets. I followed up with Brett to discuss some of his tips, and since that time, Brett has advised me on a few domain-related matters. There are several well respected domain law specialists, and I consider Brett one of the most knowledgeable.
Brett Lewis is a partner in the firm of Lewis & Hand, LLP. Lewis & Hand is experienced in representing clients in claims brought under the Anti-Cybersquatting Consumer Protection Act (ACPA). We also act as a legal advisor and consultant to clients throughout the world in disputes handled under ICANN’s (the Internet Corporation for Assigned Names and Numbers) Uniform Domain Name Dispute Resolution Policy (“UDRP”) and facilitate domain name transactions. Mr. Lewis also advises clients in issues involving various types of Internet and licensing agreements, and trademark and copyright infringement.
Mr. Lewis previously worked as Associate General Counsel for Register.com, one of the largest domain name registrars in the world. At Register.com, Mr. Lewis, resolved numerous domain name disputes, shut down websites of trademark and copyright infringers, as well as scam sites and so-called “phishing” sites, and successfully litigated a variety of legal issues.
Mr. Lewis began his career working for the highly regarded law firm Winthrop, Stimson, Putnam & Roberts, now known as Pillsbury Winthrop Shaw Pittman. There, he practiced intellectual property, licensing, Internet and domain name-related law. Prior to working at Winthrop Stimson, Mr. Lewis served as a law clerk to the Hon. David G. Trager in the United States District Court for the Eastern District of New York. Mr. Lewis graduated from Brooklyn Law School, magna cum laude, in 1998 and was a published member of the Brooklyn Law Review. He is admitted to practice law in New York State and in the Southern and Eastern Districts.
1) EJS: How did you become involved in domain name law, and what is it about this field that is of interest to you?
BL: “One does not choose to be a domain name lawyer. It chooses you.
Seriously? I was in the right place at the right time. The Internet was booming just as I graduated law school. I went to a big law firm and no one knew anything about Internet law. I started working for a partner in the firm’s IP group and the rest is history.
What is it about the field that interests me? Every case is like a puzzle. A lot of detective work goes into building or defending a case, and it is fun to find those pieces and put them together. It is also very satisfying to represent people who have been unjustly burdened by a demand letter or a UDRP Complaint.”
EJS: In your opinion, what are the biggest legal threats faced by domain investors, and what can they proactively do to help protect their interests?
BL: “Because of the possibility of statutory damages, the biggest legal threat is being sued in Court, although the threat of losing a valuable domain name through the UDRP process is right up there.
For dictionary word domain names, there is a common misperception that they cannot be the subject of trademark protection. This simply is not true. Many dictionary words are also used as trademarks. That, alone, does not, however, give the trademark holder monopolistic rights to the word or phrase, but it may give them the exclusive right to use it in a particular field. Domain investors need to be wary not to use domain names in a similar manner to registered marks, or allow links to competing content to be posted on their Web sites. Consider the domain name apple.info. It redirects to www.apple.com, but let’s say that it was registered to a third party. If that third party used the domain name to provide information on Upstate New York apple orchards, that would likely be a legitimate use of the domain name. If, however, that party used it to post links to MP3 devices and video cell phones, there very likely would be a problem. There is an article on in the legal issues section of DN Journal for anyone interested that lists more guidelines to follow.”
3) EJS: Assuming most domain investors don’t have time to read all UDRP decisions, what key decisions should they read and know?
BL: “I realize that there are disciples of UDRP decisions. As a general matter, I would warn against ascribing too much significance to any one decision. Unlike court cases, UDRP decisions have no precedential value. In other words, every dispute can be decided independently on its own facts. I could probably find a UDRP decision to stand for any proposition that I wanted to prove or disprove. It becomes much more significant which panelists one has than what decisions are out there. Panelists tend to be relatively consistent with their prior rulings, and both parties in a three-member panel dispute have some say in who the panelists will be. There are many excellent panelists.”
4) EJS: What have you learned from UDRP cases where you weren’t victorious?
BL: “That legally being in the right is not always enough. The first time that a panel ruled against my client, he was a great guy and totally legitimate. We were hit with an unprincipled decision that ignored what should have been binding trademark law. The panel went with its gut. UDRP cases are usually decided at a gut level. The panelists are not paid enough to justify spending very long on deciding disputes, so there is a tendency to rule based on feeling and write the decision that backs it out. It’s really a very human thing to do, although in many cases, substituting instinct and a subjective sense of equity can result in inequitable results. I had another case where the other side basically overwhelmed the panelist with information. Given the nature of UDRP proceedings, we did not have an opportunity to prove that the Respondent in that case had gotten our facts wrong.”
5) EJS: If you were in charge, how would you change the UDRP system to be as fair as possible to domain investors as well as trademark holders?
BL: “First, there is no uniformity to UDRP decisions. The Policy gives broad examples of what types of conduct constitute bad faith, but the examples do not apply to many of the issues litigated today. Those are left up to the panels to decide on a case-by-case basis. As a result, there are inconsistent decisions and not enough guidance to domain holders as to what is and is not permissible conduct. Without clear precedent or rules governing conduct, there is uncertainty and turmoil. I would advocate for a system that provided greater predictability, either by amending the definitions of what is and is not acceptable practice, to bring the rules in line with current trends, or implement a discretionary appeals body to review a handful of cases and set Binding rules that other panelists would have to follow. To me, transparency and predictability equate to fairness.
I would also amend the rules to impose a monetary sanction against parties guilty of reverse domain name hijacking. There should be more at stake for trademark holders to discourage them from filing overreaching claims. If, instead of a meaningless sanction, a reverse domain name hijacker was required to pay the respondent’s attorney’s fees and filing fees, I believe that it would discourage some of the more egregious claims from being filed.”