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R enova, Ltd. International Legal Consulting Services Death by Paper-cut Managing Risk in the Domain Industry Paul Raynor Keating, Esq. Renova, Ltd. - Law.es Paul@LAW.es Paris, June 2008 What is risk How likely is the Occurrence How likely is the Result R enova Paul@ Law.es

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death by paper cut managing risk in the domain industry

R

enova, Ltd.

International Legal Consulting Services

Death by Paper-cut

Managing Risk in the Domain Industry

Paul Raynor Keating, Esq.

Renova, Ltd. - Law.es

Paul@LAW.es

Paris, June 2008

what is risk
What is risk

How likely is the

Occurrence

How likely is the

Result

R

enova

Paul@Law.es

sources of risk
Sources of risk
  • Sales
    • Breach of contract
    • Buy a stolen domain (express.com $150,000)
  • Legal (tm)
    • Forfeiture

R

enova

Paul@Law.es

which is better

Minimize Risk and Still Have a Life

Which is better?

High risk of event

Low risk of loss

(UDRP loss of 7.95 domain)

High risk of event

High risk of loss

Low risk of event

Low risk of loss

Low risk of event

High risk of loss

(Express.com)

R

enova, Ltd.

PRKeating@Renovaltd.com

slide5

Attractive industries have predictable risk levels

Sales Risk

Controllable

Changing Unpredictably

Legal Risk

R

enova, Ltd.

PRKeating@Renovaltd.com

slide6

Consistency Represented by Authorities

Final report of the WIPO Internet Domain Name Process, April 30, 1999 – http://www.wipo.int/amc/en/processes/process1/report/finalreport.html.

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.

R

enova

slide7

Legal Risks Began With Clear Definition

UDRP

Complainant must PROVE:

1. Domain identical or confusingly similar to trademark

2. Registrant has norightsorLegitimate Interest

3. Bad faith registration and bad faith use.

R

enova, Ltd.

PRKeating@Renovaltd.com

slide8

Trademark

IDENTICAL OR CONFUSINGLY SIMILAR

It means something in the real world

R

enova, Ltd.

PRKeating@Renovaltd.com

slide9

Trademark

R

enova, Ltd.

PRKeating@Renovaltd.com

slide10

Trademark

R

enova, Ltd.

PRKeating@Renovaltd.com

complainants say the darndest things
Complainants 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…….”

R

enova, Ltd.

PRKeating@Renovaltd.com

slide12

Trademark - Fast Forward……….

  • Complainant must show:
  • “I have a trademark (somewhere)”
    • Text vs. text
    • Virtually anything is sufficient (use is use)
    • Rights can exist anywhere in the world
    • No 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 D2008-0387 6/18/2008)

R

enova, Ltd.

PRKeating@Renovaltd.com

slide13

REALITY

  • “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).

R

enova, Ltd.

PRKeating@Renovaltd.com

slide14

Legitimate Interest

Complainant 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 finding

a trademark?

So what standards do we apply?

R

enova, Ltd.

PRKeating@Renovaltd.com

slide15

Legitimate Interest

Identical 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).

R

enova, Ltd.

PRKeating@Renovaltd.com

slide16

Legitimate Interest

What happened to rights?

Prima-facie = presentation of facts which if uncontested prove the

ultimate 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).

R

enova, Ltd.

PRKeating@Renovaltd.com

slide17

Bad Faith

  • 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.”

R

enova, Ltd.

PRKeating@Renovaltd.com

slide18

Bad Faith

  • 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 possible
    • Robot.txt is evidence of bad faith.
    • nytimes.com – perfect example of robot.txt use
    • Required by Google contracts – no automated results

R

enova, Ltd.

PRKeating@Renovaltd.com

slide19

International 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?

R

enova, Ltd.

PRKeating@Renovaltd.com

slide20

RESULT: Greater risk

  • Respondents have the burden of proof
  • Legitimate Interest - Frozen standard
  • Bad Faith - Ever expanding examples
  • Special rules for domainers (Anciens)
    • Duty to avoid conflict

R

enova, Ltd.

PRKeating@Renovaltd.com

slide21

Selected Decisions

  • Ancien 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)

R

enova, Ltd.

PRKeating@Renovaltd.com

slide22

Lack of Oversight:

  • Panels and ADR providers do not follow the rules
  • ICANN does not manage the process
  • Judicial 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 Respondent
      • Burden should be on the Complainant.

R

enova, Ltd.

PRKeating@Renovaltd.com

slide23

Building 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 not
  • Prima 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.

R

enova, Ltd.

PRKeating@Renovaltd.com

slide24

GET INVOLVED

  • FIGHT FOR THE INDUSTRY.
  • Educate Panelists
  • LITIGATE:
    • Your loss = Community Loss
    • Another domainer’s loss = your future loss
  • STOP DEFAULTING ON STUPID DOMAIN NAMES !!!!!!

R

enova