Presentation on theme: "Death by Paper-cut Managing Risk in the Domain Industry"— Presentation transcript:
1Death by Paper-cut Managing Risk in the Domain Industry enova, Ltd.International Legal Consulting ServicesDeath by Paper-cutManaging Risk in the Domain IndustryPaul Raynor Keating, Esq.Renova, Ltd. - Law.esParis, June 2008
2What is riskHow likely is theOccurrenceResultRenova
3Sales Legal (tm) Sources of risk Breach of contract Buy a stolen domain (express.com $150,000)Legal (tm)ForfeitureRenova
4Minimize Risk and Still Have a Life Which is better?High risk of eventLow risk of loss(UDRP loss of 7.95 domain)High risk of eventHigh risk of lossLow risk of eventLow risk of lossLow risk of eventHigh risk of loss(Express.com)Renova, Ltd.
6Consistency Represented by Authorities Final report of the WIPO Internet Domain Name Process, April 30, 1999 –The UDRP is not intended to provide the holders of intellectual property rights more protection in Cyberspace than they are afforded in the physical world.Renova
7Legal Risks Began With Clear Definition UDRPComplainant must PROVE:1. Domain identical or confusingly similar to trademark2. Registrant has no rights or Legitimate Interest3. Bad faith registration and bad faith use.Renova, Ltd.
8It means something in the real world TrademarkIDENTICAL OR CONFUSINGLY SIMILARIt means something in the real worldRenova, Ltd.
11Complainants Say the Darndest Things “Meterman is not in any sense a dictionary word”“’CHEAP HOTEL’ is a famous mark”“187 was invented by Telecom Italia”“Our client holds an international trademark in…….”Renova, Ltd.
12Trademark - Fast Forward………. Complainant must show:“I have a trademark (somewhere)”Text vs. textVirtually anything is sufficient (use is use)Rights can exist anywhere in the worldNo need to actually trace ownership or even legal existence“Unregistered trademark rights do not exist in some nebulous way across the breadth of the countries in which a complainant proves it has a reputation. These rights derive from national laws and do not exist divorced from such laws.” (aspis.com D /18/2008)Renova, Ltd.
13REALITY R “Pay day loan is a trademark.” LH is a trademark of Lufthansa (based on IATA ticket references).“It is not a panel’s place under the Policy to investigate whether a particular registered mark that is relied upon by a complainant may or may not have been registered with the consent of an interested third party. The fact that a complainant is the registered owned of the relevant trade mark is sufficient. “ (aspis.com).Drugstore is a valid trademark (complainant disclaimed the word “drugstore” apart from the figurative design). (drugstore1.com).Renova, Ltd.
14So what standards do we apply? Legitimate InterestComplainant allege:Registrant has not Bonafide interest“There is in the majority’s view no compelling justification for the importation into the Policy of local law on the question of rights or legitimate interests. This is an autonomous concept that should be interpreted consistently under the Policy, regardless of the geographical location of the parties.” (Aspis.com).BUT: Didn’t we “import” local law into the Policy in findinga trademark?So what standards do we apply?Renova, Ltd.
15Legitimate InterestIdentical TM and Domain – no legitimate interest.“by adopting that domain name the registrant is making a false representation to the world as to who he is. Perhaps there will be cases where as a matter of fact a respondent will be able to show that the domain name is not perceived by the public in this way. Nevertheless, in the absence of such evidence, a panelist can reasonably assume that such a false representation is being made.“ (Aspis.com).Renova, Ltd.
16Legitimate Interest R What happened to rights? Prima-facie = presentation of facts which if uncontested prove theultimate fact.Complainants simply allege the Policy in the Negative.“Complainant did not authorize…..”“Respondent is not commonly known by…..”BUT: …A prima facie allegations vanish when confronted with facts that, when viewed in the light most favorable to the defendant, contradict the prima facie evidence originally presented. ITC Ltd. V. Punchgini, Inc., 482 F. 3d 135, C.A.2 (N.Y. 2007).A prima facie standard does not alter the original burden of proof. (Id).Renova, Ltd.
17Bad Faith R Complainant allege: Registration in Bad Faith. Passive use of a domain is non-use and thus registration in bad faith.“there is no express requirement that this bad faith be directed to or connected with a complainant.” (Aspis.com; complainant did not exist at registration).“the Respondent’s legal representative is based in Spain.” (muyjunior.com)“Showing willful blindness by using automated registration programs with no mechanism in place to weed out trademarks can be indicative of bad faith.”Renova, Ltd.
18Bad Faith R Complainant allege: Use in Bad Faith. Single appearance of conflicting reference is sufficient.That registrant cannot control results is sufficient.Registrant can control results through removing trademark references and using met tags. (not possibleRobot.txt is evidence of bad faith.nytimes.com – perfect example of robot.txt useRequired by Google contracts – no automated resultsRenova, Ltd.
19International UDRP Court of Justice ? “There is in the majority’s view no compelling justification for the importation into the Policy of local law on the question of rights or legitimate interests. This is an autonomous concept that should be interpreted consistently under the Policy, regardless of the geographical location of the parties.” (Aspis.com).BUT: So what law is to be applied?Renova, Ltd.
20RESULT: Greater risk R Respondents have the burden of proof Legitimate Interest - Frozen standardBad Faith - Ever expanding examplesSpecial rules for domainers (Anciens)Duty to avoid conflictRenova, Ltd.
21Selected DecisionsAncien Restaurant Chartier v. Tucows.com - Professional domaining (PPC, Resale) may be legitimate IF:You are really in that business (resale or PPC);The domain is really a “dictionary word” (generic/descriptive phrase);no evidence indicating actual knowledge of the TM; and,Respondent has made good faith efforts to avoid registering domain names that are identical or confusingly similar to marks held by others.CTV.com (dissent)“The burden to avoid conflict with established rights, even if less than universally established, should rest upon the registrant.“ (Hon. R. Kerns)Renova, Ltd.
22R Lack of Oversight: Panels and ADR providers do not follow the rules ICANN does not manage the processJudicial Oversight does NOT exist:US ACPA is a completely different standard.Some jurisdictions prohibit any action to contest UDRP result.Panelist View – if you don’t like it you can always file a court action.Unfairly places burden on the RespondentBurden should be on the Complainant.Renova, Ltd.
23Building on Momentum gained from the early years of the industry, TM holders are continuing to cut the rug out from the industry in the UDRP and other areas.Limited input from the domainer community.Continued erosion of the rules.Inserting words not present Inserting words that are notPrima Facie evidence = prima facie allegation.Absence of a defense is now evidence of guilt.Continued expansion of bad faith elements & Precedent building.Blending of Legitimate Interest and Bad Faith.Active legislation attempts and active lobbying.Renova, Ltd.
24R enova GET INVOLVED FIGHT FOR THE INDUSTRY. Educate Panelists LITIGATE:Your loss = Community LossAnother domainer’s loss = your future lossSTOP DEFAULTING ON STUPID DOMAIN NAMES !!!!!!Renova