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The following was originally posted on the Consumer Law & Policy Blog.  Please visit it at http://pubcit.typepad.com/clpblog/.  They’re doing some great work.

Wednesday, October 08, 2008

A Tale of Two UDRP’s
by Paul Alan Levy

I have recently had some involvement with two proceedings under the Uniform Dispute Resolution Policy (“UDRP”), a procedure for deciding trademark disputes about domain names. The International Corporation for Assigned Names and Numbers (“ICANN”), which controls the system of assigning domain names, requires all domain name registrars to force domain name registrants to submit themselves to the UDRP as a condition of registering a domain name. These two proceedings help illustrate the bias of the UDRP against those who register domain names to criticize trademark holders, and the resulting lack of utility of the procedure to resolve cases in which the “griper” is determined to defend himself.

Curt Manufacturing Objects to George Sabin’s Gripe Site

One case involves a web site established by George Sabin, a Californian, to complain about a piece of equipment made by Curt Manufacturing Company of Eau Claire, Wisconsin that had caused injury to one of his friends. He used that domain name because it accurately reflects the subject of his web site. Curt filed a UDRP complaint alleging that the domain name curt-mfg.com violated its trademark rights. The complaint was filed in the face of many decisions of federal courts in the United States holding that a non-commercial “gripe” site about a trademark holder may use a domain name in the form www.trademark.com so long as the site itself is not confusing about whether it is sponsored by the trademark holder. After all, trademark law should not be available to suppress the speech of those who use trademarks truthfully to express their views about the trademark holder.

Sabin filed a response to the UDRP complaint which pointed out the many court decisions in his favor. In fact, he pointed out that Arizona, the location where the complainant had agreed to accept court jurisdiction in the event that these was an objection to the UDRP decision, is part of the Ninth Circuit, which had a controlling case on point, Bosley Medical v. Kremer.

However, the panelist appointed by the National Arbitration Forum, Joel Grossman, applied “his own brand of justice” and completely ignored governing federal law. Instead, he cited a handful of other UDRP decisions (a minority view even among UDRP decisions) that took domain names including trademarks away from the gripe site host on the ground that only domain names that combine the trademark with a word like “sucks” are permissible.

Under Rule 4(k) of the UDRP, the only way for a domain name registrant who loses a UDRP proceeding to prevent the transfer of the domain name to the complainant is to file suit within ten business days, but only in the “jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure [governing UDRP cases].” Because a complainant generally has the choice between submitting to court jurisdiction where the domain name registrant is located, or where the domain name registrar is located, complainants usually try to make it harder for the registrant to get to court by choosing the location where the domain name registrar is located. Sure enough, in this case Curt Manufacturing had opted for Arizona, not California, and Sabin did not know any lawyers who might help him in Arizona. It was only with difficulty that he managed to get a pro se complaint on file in Arizona by the deadline. Assuming that Sabin is able to find counsel in Arizona, he will have a strong claim for attorney fees under Ninth Circuit trademark law because under Bosley, Curt’s trademark claims are entirely groundless.

The Machinists Object to Gary Leatherman’s Gripe Site

A few days later, I received a request for assistance from Gary Leatherman in opposing a similar UDRP complaint by the Machinists union against his gripe site about a Machinists local. We had to recognize that the WIPO panelist might ignore the law just at the Arbitration Forum panelist had, making the submission of a response in the UDRP a waste of time. Moreover, the decision in the Fourth Circuit (where the Machinists’ Maryland headquarters is located) allowing gripe sites with domain names that use the trademark of the griping target, Lamparello v. Falwell, is even stronger than Bosley.

So, I contacted the lawyer representing the Machinists, Robert Kenney. Because Kenney, an IP lawyer from Virginia, claimed not to even know about the Lamparello case (which had come out of Virginia), I was concerned that he might not appreciate how untenable his position was. Or, perhaps, he was just happy to bill his client for his services regardless of how untenable his position was, a position I did not share since my own view is supportive of the labor movement. So I contacted an old friend in the Machinists’ legal department, and the UDRP complaint was promptly withdrawn.

The Increasing Disutility of the UDRP

In some ways, it is a pity that those who use trademarks to identify web sites that are about the trademark holder cannot count on the UDRP to protect their free speech rights. The UDRP has the advantage of being relatively cheap and expeditious. The problem is exacerbated by the fact that the complainant gets to decide which of several providers of dispute resolution services to ask to appoint a panelist. As a result, dispute providers have an incentive to adopt rules and to appoint panelists that favor complainants. The bias of the UDRP in favor of trademark holders is a longstanding problem, discussed several years ago in the paper Rough Justice by Syracuse University Professor Milton Mueller.

Perhaps, however, if trademark holders learn that they will no longer be able to rely on the UDRP so long as its panelists refuse to follow governing trademark law and First Amendment rulings from the federal courts, they will have reason to bring their complaints only to dispute resolution providers that require their panelists to follow the law.

Posted by Paul Levy on Wednesday, October 08, 2008 at 06:41 PM in Arbitration | Permalink

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