Cut-and-paste UDRP decisions citing facts from unrelated cases. This reflects the lack of care and consideration with which some NAF panelists treat the responsibilities to which they have been entrusted. Andrew Allemann reports on his discovery at http://domainnamewire.com/2010/04/23/seriously-wooot-the-hell/

George Kirikos demonstrates that the practice of cut-and-past decision making is widespread at NAF – http://www.circleid.com/posts/20100423_naf_copying_pasting_nonsense_into_udrp_decisions/

This is what happens ICANN delegates responsibility but abdicates oversight.  ICANN is responsible for ensuring that the UDRP process is implemented fairly with respect for the rights of both parties involved.  But ICANN has shown no appetite for carrying out its core functions as it hungers for the riches that come with growing its fiefdom into new territories – i.e.  the new vanity TLDs of the ever receding launch date.

Attorney Zak Muscovitch, Andrew Allemann (DomainNameWire.com), Michael Berkens (TheDomains.com), attorney Howard Neu and attorney Eli Pearlman - photo courtesy of Ron Jackson, DNJournal.com

The ten decisions on the 2009 UDRP Wall of Shame were publicly revealed at TRAFFIC Las Vegas.  Following the announcement, five panelists debated which decision deserved to be considered the very worst UDRP decision of 20009.  Andrew Allemann proposed OpenDental.com.  Howard Neu proposed DEAcom.com.  Mike Berkens proposed SmoothMove.com.  Eli Pearlman proposed parvi.org.   Zak Muscovitch proposed LomaLinda.net/.org.  Patrick Ruddell (Chef Patrick) moderated the debate.  The audience voted after the presentations and selected LomaLinda.net/.org as the most poorly decided UDRP case of 2009.

IDN Blog and DN Journal have photos and brief write-ups of the UDRP Wall of Shame presentation.

Here are the ten decisions the panel selected for the 2009 UDRP Wall of Shame:

LomaLinda.net/.org (WIPO: March 11, 2009) – Decision grants trademark rights in ‘Loma Linda’, a mid-size California city, to a local hospital and university.

SmoothMove.com (NAF: April 7, 2009) – finds it is bad faith to speculatively own a dictionary phrase domain if there is a trademark on that phrase.  The decision has the effect of granting trademark holders ownership rights to the English language.

DEAcom.com (NAF: April 14, 2009) – Respondent owned domain for 12 years, used it for a corporate web site for four years, and continues to use the domain for email.  Yet because the web site has been dormant for two years, he is found to be using the domain in bad faith.

Filta.com (NAF: April 23, 2009) – Panelist chooses to ignore response received 44 minutes late (but timely filed in Respondent’s time zone) and a timely filed additional submission and awards filta.com based on a design mark for FILTAFRY granted after the registration of the domain name.

MothersMilk.com (NAF: June 22, 2009) – finds ‘passive non-use’ of a generic phrase is bad faith.   Complainant refiled after same claim denied two months prior.

OpenDental.com (NAF: August 5, 2009) – Korean dentist registers domain in 1999 and after a brief period of use no longer uses the domain.  American company starts using term ‘Open Dental’ in 2003.  Panelist finds the dentist’s continued ownership without use is bad faith.

OkTaTaByeBye.com (WIPO: August 11, 2009)– claims active travel site using ‘Ta Ta’ in the British meaning of ‘Goodbye’ infringes on the rights of the Indian conglomerate TATA Sons.

KOC.com (WIPO: August 31, 2009) – blank page found to be bad faith use.  Trademark holder lost a UDRP on the same domain eight years earlier.

DKB.com (WIPO: September 30, 2009) – Continued passive holding of the domain by DKB Data Services after prior legitimate commercial use found to be bad faith once German bank Deutsche Kreditbank AG asserts an interest.

Parvi.org (WIPO: Nov 19, 2009) – Panelist finds the domain owner likely registered the domain in good faith but nevertheless orders the transfer of the domain.

The cases selected for the 2009 UDRP Wall of Shame will be posted here tomorrow.

The prosciutto consortium had Community Trade Marks for “PROSCIUTTO DI PARMA” (Italian) and “PARMA HAM” (English).  The sole panelist determined that a domain based on the French translation of these marks is confusingly similar and, in the absence of a response, orders the transfer of the domain.

Prosciutto -photo by Sun Taro

If you think that the domain <jambon-parme.com> is similar to <italianwine.com> or <frenchcheese.com>, think again.  Like Champagne (also here), the names of certain food products can be protected.

How does this apply to the Parvi.org case?   The relevant provision of the UDRP in the Parvi.org decision is Paragraph 4(a)(iii), which states that the Complainant must prove that the disputed domain name “has been registered and is being used in bad faith”.   Note that the connecting word is “AND” not “OR”.   The Policy states that in order to succeed in its Complaint, one of the elements that the Complainant must prove is that the domain has been registered in bad faith.   That seems clear.   But wait, we have yet to witness the powers of reasoning that can be called upon by a UDRP panelist.

The basic facts in the case are straightforward.   The City of Paris has a French trademark on PARVI.   Respondent lives in California and registered parvi.org.

There is no evidence that the Respondent was aware of the French trademark at the time of registration.   Indeed, sole panelist Andrew Frederick Christie finds:

There is insufficient evidence on the record for this Panel to find, on the balance of probabilities, that the Respondent registered the disputed domain name in bad faith. Although it is certainly possible that the Respondent was aware of the Complainant’s PARVI trademark, and of the Complainant’s programs under that trademark, at the time the Respondent registered the domain name, this seems unlikely given the different geographical locations and native languages of the Complainant and the Respondent. Thus, this Panel is not satisfied, on the present record, of the probability that the Respondent registered the disputed domain name with the intention of benefiting from the Complainant’s PARVI trademark.

So under the the clear language of the UDRP, as we saw above, the Complaint must fail as the Complainant has not proved that the Registrant registered the domain in bad faith.

Not so fast, according to Christie:

For the reasons explained above, however, this finding does not resolve the dispute. Rather, it is necessary for this Panel to determine whether, in all the circumstances, the Respondent is acting in bad faith. The evidence on the record leads this Panel to conclude that, on the balance of probabilities, the Respondent is acting in bad faith.

Christie recognizes that the Policy as written would be powerless to order the transfer of a domain when someone who registers a domain in good faith later uses the domain in bad faith.   Christie is   correct in this observation.   But he draws the wrong conclusion.

The correct conclusion is that the Policy was intentionally created with a limited focus: to address only blatant instances of cybersquatting and trademark infringement.   It was not intended to be the remedy for any and all shenanigans that people can play with domain names.   There are clear laws on the books dealing with trademark infringement.   The penalties under the Anti-Cybersquatting Protection Act are much more severe than in the UDRP.   If a domain owner is using a domain in bad faith, and if the UDRP does not apply, the injured party can seek a remedy through the courts.

The conclusion Christie draws, however, is that he and other similarly minded panelists can decide on their own to rewrite the language of the UDRP to give it a more expansive reach more in keeping with their views of what the UDRP should accomplish.   As Christie states:

The intent of the Policy is to provide a fair and efficient mechanism for trademark owners to obtain redress in situations where their trademark rights are abused as a result of bad faith activities of domain name registrants. There seems no reason in logic or in principle why the availability of redress should be confined to situations where bad faith is present at the time of acquisition of the domain name.   To limit the trademark owner’s redress in this way would result in outcomes that make no sense.

In other words, Christie is stating “I don’t like the conclusion I must reach if I follow the Policy, therefore I will rewrite the policy to reach the conclusion I prefer.”

Christie’s mistake lies here:

There seems no reason in logic or in principle why the availability of redress should be confined to situations where bad faith is present at the time of acquisition of the domain name.

It should not matter that Christie can find no reason ‘in logic or in principle’ to limit domain transfers under the Policy to situations where bad faith is present at registration.   It is not up to him, nor should his opinion on this matter.   His responsibility is to apply the UDRP AS WRITTEN.   If he doesn’t like the way the policy is written he can advocate to change it.   Instead he abuses his position of authority as sole panelist in this case   to disregard what the UDRP actually says and substitutes instead what he wants it to say.

Christie, of course, does not say in his decision that he has decided to rewrite the UDRP and is basing his decision on his ‘improved’ version.   Christie must in his decision appear to be applying the UDRP while at the same time coming to a conclusion that contradicts the clear wording of the UDRP.

How does he accomplish this feat?   He clothes his naked disregard for the Policy in ponderous phrases: “important reconsideration”, “based on a close reading of the decision”, “The issue … is profound, and the panelist addressing them is distinguished”, “a logical and incremental evolution of panel thinking”.

The drafters of the UDRP, one must think, believed they had drafted a clear document.   But it has devolved into a meaningless Tower of Babel with tribes of like-minded panelists “reconsidering” the original document, basing their decisions on the interpretations of “distinguished panelists” from their same tribe, as through repeated application of “logical and incrementation evolution” they have birthed a policy that is an entirely different species from its original forebearer.

Further discussion and analysis at DefendMyDomain.com, DomainNameWire.com.   Note Attorney John Berryhill’s comment that a simple Google search would have proven Respondent’s legitimate use of parvi.org, and should in itself have been sufficient to deny the Complaint.

Anyone can claim a right to your domain and file a UDRP complaint.   It will cost you thousands of dollars to hire a lawyer to defend your right to keep your domain.   Your case might be decided by one of the most creative legal minds in the field.   The panelists in UDRP cases have found ingenious, creative ways to justify turning your domain names over to companies who don’t have a right to them.   These companies have found in the UDRP a cheap, convenient way to obtain the domains they covet without having to pay you a penny for your domain.

We know of no other asset where the owner can so easily be deprived of ownership without compensation.   It is open season on domain owners as the institutions charged with maintaining an impartial arbitration procedure fall all over themselves to make themselves more attractive to the companies who want to take your domains.   Panels are rife with arbiters who view domain speculation as illegitimate and who disregard the clear language of the UDRP to order the transfer of domains to the complaining companies.   WIPO and NAF, the arbitration bodies, allow these panelists to operate for years deciding hundreds of cases without requiring that they adhere to the UDRP guidelines.

Here we highlight the most egregious UDRP decisions.   Read ‘em and weep.

The domains in question are alabama811.com, al811.com, la811.com, louisiana811.com, tennessee811.com, tenn811.com, and tn811.com.

A group called the ‘Common Ground Alliance’ has a design mark for ‘811′ that shows a shovel digging into the ground.     But the complainants are not the trademark holder, nor do they claim any connection to the trademark holder.   The Complainants are groups within each state assigned to operate the 811 number.

The sole panelist Lyon finds that the 811 operators have common law rights to the ‘811′ mark even though the Common Ground Alliance has pre-existing trademark rights to ‘811′ – and the Complainants’ services weren’t yet operational.   It’s hard to find common law rights based on use when there isn’t use yet – but Lyon managed to come to this conclusion.

Lyon also finds bad faith use even though the Registrant made no use of the domain.   The only use was a standard “Under Construction” page provided by the registrar which the Registrant would not have benefited from.

Lyon finds that the Complainants have common law rights for a similar use in a mark that someone else owns.   Lyon then orders the transfer of the domains – not to the owner of the registered trademark – but to the groups that don’t have the trademark.

Hard to make sense of this one unless one assumes that Lyon started from a desire not to have any domains related to this public service in private hands and advanced any tenuous reasons he could in support of this conclusion.

Detailed write-up at TheDomains.com

This could start a race to the bottom as the competing arbitration groups try to make themselves more attractive to Complainants.

Aren’t lower prices a good thing?   Not if the consequences are that the low prices encourage more frivolous filings.   The lack of uniformity in the decisions handed down are turning the UDRP process into a lottery.   The price of the lottery ticket may get cheaper.

Another bad consequence would be if the lower cost of a UDRP translates into lower compensation for panelists, as it may drive the more thoughtful, conscientious panelists out of the process.   Their places may be filled with an ever increasing number of hacks who are happy to trade their credentials for a quick buck and an opportunity, as they see it, to fight the good fight against cybersquatters.

The text of the UDRP and background documents can be found on this section of the ICANN web site

ICANN for Beginners, a short history of ICANN with a discussion of governance and main issues of concern

Rough Justice, An Analysis of ICANN’s Uniform Dispute Resolution Policy, by Dr. Milton Mueller.   A review of the UDRP after its first year of existence.