Tom Rask on the UDRP Process
Nat Cohen had a fantastic article about the UDRP process on Larry Fischer’s blog the other day, and it’s a “must read” for anyone that invests in domain names. The article has spawned discussions in private about UDRP defense and prevention, and it has been interesting to learn how other domain owners cope with this potential threat.
I received an email this morning from Tom Rask, of Logical Sites, whose company owns and operates websites on geodomain names including Sunnyvale.com, Sheboygan.com, Kenosha.com, and EurekaSprings.com. Tom offered some unique insight and advice, and with his permission and encouragement, I have posted the contents of his email below.
The basic problems with UDRP process are:
- It is a quasi-judicial process, not a judicial process.
- There is no accountability for WIPO or for the panelists.
- You can assert the fluffiest of common-law TM rights with impunity
- There is no monetary compensation for you if the opponent asserts an overly broad scope of use of their TM. They can “give it a whirl”, something they could not do so cheaply and with such impunity in a real TM court case.
Illuminating example: a few years ago, I lost a UDRP case that I knew I was going to lose. I had registered wwwxyz.com, where xyz was the name of European multinational with over 100 K employees. I had good reason to want to really jerk xyz’s chain, reasons that don’t matter for the purpose of this discussion.
So I decided to be totally over the top. Luckily for me, the WIPO case administrator made clear procedural errors, so I had occasion to suggest to him and his boss that perhaps “he should return to his native Norway, where unions can be counted on to protect the incompetent”. When WIPO did not offer me an avenue of appeal for mishandling the case, I said that it is no coincidence that corrupt organization like the IOC and WIPO are both located in Switzerland because they know they are safe there. In the US, they would be prosecuted under the RICO act. “Switzerland:” I said “high mountains, low morals”.
I had a lot of fun and inflicted many, many manhours on my opponent, who probably wished they had just bought the damn name instead. I suspect that WIPO has me on a blacklist….:-)
So I lost, and the Panelist wrote this at the end of his decision “Finally, the Panel cannot leave this case without commenting on the behaviour of the Respondent, which has been a disgrace, a grotesque abuse of this administrative proceeding”.
I e-mailed the Panelist (an experienced UK TM attorney) and said: yes, exactly. I was abusing the process, and if I had done that in a court of law, the judge would not have allowed it. The Panelist told me that he had taken my case seriously, as he does all cases, and that he spent 70 hours on the case. I apologized for that.
The Panelist and became friends via e-mail. He agreed that it is a problem that there are no sanctions: no sanctions if WIPO or similar orgs don’t follow the rules, no sanctions against the kind of roiling rancor I had engaged in. And no sanctions if a Panelist just decided to suck up to his perceived big money trademark interests. So it can become a Wild West Circus very quickly.
So what should you do if you get hit with a UDRP?
- See if you and your opponent can agree on a Panelist. In scania.mobi, my opponent incredibly agreed to my suggestion of using Diane Cabell as the sole Panelist. She is a very fairminded corporate counsel for Creative Commons (a great org) and formerly of Harvard’s Berkman Center for Internet and Society. Had she decide against me, I would have still felt it was fair.
- If you cannot agree, you can do what Nat did (in the LomaLinda.com UDRP): a 3-member Panel. But this is risky. You can still lose 2-1 by getting two people like Richard Page on the Panel. If you lose and then go to court, the judge may take the approach “why should I overturn WIPO”….even though a WIPO UDRP decision is not a judicial decision.
- If your name is actually important to you, consider filing in federal court in order to stop the UDRP process. Federal court is very expensive. Bad PR is also very expensive and your opponent will know that, too. Once the court case has been filed, asserting abuse on your opponent’s part, then you can talk to them. Now they know that you are mounting a vigorous defense.
Nat won 2-1, and that is great. But my point is: he could just as easily have lost 2-1.
UDRP is a crapshoot that is best avoided.
I have also noticed that lawyers usually do no better at UDRP than mere mortals.
This is a not a slam against lawyers, just a reflection of the animal that UDRP is.
If you get hit with a UDRP case, I’d be happy to discuss it with you.
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