By Zak Muscovitch.

1. Smell The Case

I would have to say that the single most important way of winning a domain name dispute, is knowing when not to try defending a UDRP complaint. Some cases are just not winnable. Some are winnable but not worth bothering. When confronted with a UDRP complaint, you must smell it inside and out, in order to determine whether this is a case worth fighting, and more importantly, whether it is a case worth winning. A good UDRP nose is not easy to develop. It usually takes years of experience, constantly following case law developments, and having good instincts.

Obviously, some cases don’t pass the smell test right of the bat, such as when someone registered a domain name “because it only costs 10 bucks”, and thought that they could “sell the domain name to a famous company for a million dollars”, since it is so close to their trademark. On the other hand, some cases smell like roses from the moment you open them. A good example of this is when a complainant takes a wild shot at hijacking a domain name that has been owned by the registrant before the complainant’s trademark was even a twinkle in the complainant’s eye.

But it is the cases that fall in between these two extremes where a good sense of UDRP smell is crucial. For example, I often see cases where sure, there is a defence, but not what I would consider a “winning” defence. In other words, it is the kind of defence that is vigorously made, and then you lose. For example, sure, KFC can stand for “knives, forks, and cups”, and maybe the domain name owner claims he has never heard of Kentucky Fried Chicken, but really, does this defence really stand a chance?

Other cases however, are indeed winnable, but are not “sure things” either. For example, a complainant may present a convincing case that it has trademark rights which long-preexisted the domain name registration, and that the domain name has never been used for anything other than “Pay Per Click” advertising, and that the domain name owner advertised the domain name for sale. That however, is not always the end of the story, since none of those factors in and of themselves should normally result in a loss to the domain name owner.

If the domain name owner can show that he did not “target” the trademark owner, and perhaps also show that the domain is a generic dictionary word or term, for example, then the case will often boil down to what was the domain owner’s “state of mind” when he registered the domain name. Accordingly, it is precisely this type of case where things are not clear-cut, and a good sense of UDRP smell will reveal that there is hope, with the a vigorous defence.

2. Weigh The Money

Sometimes a case is winnable, but it will simply take too much time and effort to win. Some people might say that winning a UDRP domain name dispute gives you the upper hand in a subsequent negotiation with the complainant, who has clearly demonstrated that it really wants the domain name. But that is not always, or even often, the case. For example, many trademark owners will launch a UDRP complaint just to “police” their trademark rights, and if they lose, hey, they did their job, their lawyer made money, and they could not care less about you owning a remotely similar domain name to theirs, in a second or third-rate TLD. Even when you own a good quality domain name, winning does not by any means ensure that the losing complainant will want to buy your domain name. Sounds strange, I know, but it happens often.

So, if you paid $10 for a domain name, and it will cost you $2,000 for a three member panel, plus legal fees, and at the end of the day, it is not a domain name that you think you can sell or that you want to develop for yourself, it may just not be worth it to win.

Sometimes a solution is to try defending the domain name yourself without having to pay for a domain name lawyer. Sometimes the solution is to just forego the three-member panel option, and go with the free single member panel. In every case however, one must weigh the costs and the potential upside, or lack thereof, before defending against a UDRP complaint.

3. Take a Walk

Having a record as a cybersquatter doesn’t help win subsequent domain name disputes. Sometimes taking a walk is the best way of “winning”, since it protects your reputation. Protecting your reputation means not getting a record as a cybersquatter by either winning your case, or by settling a case where the outcome is somewhat less than certain. In this manner, you can “win” even when you walk away from your domain name, since by settling, you have avoided a potentially harmful record as a cybersquatter.

On the other hand, there is nothing like winning a case and getting a Reverse Domain Name Hijacking decision under your belt, or even preemptively suing, to sent the message to potential claimants that you are not to be trifled with. That being said, unfortunately, this is seldom enough to discourage potential complainants, as usually their counsel will not be diligent enough to review your past good record, or will not care enough to not take a shot anyhow.

4. Don’t Be Lucky

It is true that sometimes a domain name owner will not even defend against a complaint, and yet still win the case. Sometimes a domain name owner will represent themselves and win. Sometimes a domain name owner will hire an inexperienced or incompetent lawyer and win. Sometimes you get lucky with a particular panel or a particularly poor complaint. All of this is good luck, but don’t count on luck to win a domain name dispute. Being successful on a consistent basis, i.e. repeating your success in defending a domain name, take more than luck; it takes hard work. A thorough investigation, an extensive and well researched Response, a careful selection of panelists, and a well thought out approach, are all far more important than luck, because you can rely on these factors every time.

5. Stay Out of Trouble

And finally, staying out of trouble is the surest way of winning a domain name dispute, since you will have avoided one altogether by not registering domain names which attract complaints. Searching trademarks, getting legal advice before acquiring, and using your domain name for a developed website, are all great ways of staying out of trouble. Of course, even with the best of intentions, you can still find yourself on the receiving end of a UDRP Complaint, but the odds of this happening are of course much less if you have conscientiously avoided potentially contentious domain names.

By Zak Muscovitch

It took a law professor to met out some rough justice in a recent domain name dispute. In the case of Global Village Publishing, Inc. v. chenwen, Professor Darryl C. Wilson of Stetson University College of Law in Gulfport, Florida, ordered the three-letter domain name, GVP.COM to the Complainant, even though the Complainant only had a trademark for GVPI.

National Arbitration Forum UDRP Panelist, Professor Darryl C. Wilson

Not only did the Complainant not even have a registered trademark for GVP, the Complainant didn't even make any "specific claims of confusing similarity, other than noting that it previously owned the domain name for its own business". Now, normally it would take a lot more than this meager offering by the Complainant in order for a Panel to transfer a common three-letter acronym in the English language from the Registrant to the Complainant.

But this was not a typical case and the Panelist managed to use the UDRP in order to achieve some justice, rather than narrowly applying the law. As many practicing litigation lawyers will tell you, this is not altogether surprising since judges often (and arguably should) apply the law broadly in cases in order to achieve justice. In such circumstances, the judge will see 'where he or she wants the case to end up', and will then find a way to reach that conclusion through the application of the law, even if the route must take some twists and turns along the way.

The reason that this was not a typical case, was that the Complainant alleged that its account with its domain name registrar had been hacked by the Respondent, who then stole the domain name. The Respondent was accordingly, plainly called a thief by the Complainant, and the Respondent did not even respond to the Complaint. The fact that the Respondent did not even respond probably gave the Panelist reason to believe that this allegation of theft was true, and accordingly, justice would be served by restoring the domain name to its rightful owner, the Complainant.

The UDRP however, was not intended to be used as a broad tool to deal with every kind of domain name dispute. In fact, it was originally conceived as, and intended to be, a very limited tool for a very specific use; it was intended to address only the very clearest cases of what has come to be known as cybersquatting. ICANN's Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, dated October 24, 1999, in fact expressly stated that the UDRP Policy was to be "minimalist in nature":

"Except in cases involving "abusive registrations" made with bad-faith intent to profit commercially from others' trademarks (e.g., cybersquatting and cyberpiracy), the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide. The adopted policy establishes a streamlined, inexpensive administrative dispute-resolution procedure intended only for the relatively narrow class of cases of "abusive registrations." Thus, the fact that the policy's administrative dispute-resolution procedure does not extend to cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger's trademark) is a feature of the policy, not a flaw. The policy relegates all "legitimate" disputes--such as those where both disputants had longstanding trademark rights in the name when it was registered as a domain name--to the courts; only cases of abusive registrations are intended to be subject to the streamlined administrative dispute-resolution procedure."

Accordingly, the theft of domain names, per se, was not intended to be dealt with through the UDRP, since "theft" was not part of the "narrow class" of cases meant to be dealt with. Panels have regularly stated that they are not "competent to rule on the allegations of theft in the framework of [UDRP] proceedings" for this very reason.

Nevertheless, Panels can and do use the UDRP to address Complaints based upon theft. It is possible, sometimes with some minor intellectual gymnastics, to frame the unlawful registration of a domain name acquired through theft, in terms of the required prerequisite elements of the UDRP, namely; a) the domain name corresponds to the Complainant's trademark; b) the registrant has no legitimate interest in the domain name; and c) the domain name was registered and used in bad faith. This is precisely what the Panelist in this case was able to do.

In a hotly contested domain name dispute where the Respondent actually responds, the fact that a Complainant's trademark is only GVPI and the domain name is GVP.COM, may be more than enough to find that the Complainant does not even have sufficient trademark rights to win a UDRP dispute. But where a Respondent does not even respond and a Complainant makes allegations of theft of the domain name, it is possible for a panelist to overlook that distinction, and instead find, as the Panelist did in this case, that the trademark and the domain name were sufficiently confusingly similar, even, remarkably, where the Complainant failed to even make this crucial argument itself.

As can be seen from the above, the Panelist went out of his way to help out this Complainant, and did so apparently, to met out some justice, which was arguably appropriate in the circumstances, rather than parochially follow a very narrow interpretation of the UDRP and case law. And that, is how there can be justice instead of mere law in the UDRP.

Critics of a liberal interpretation and application of the UDRP will justifiably have cause for concern in harnessing the UDRP for a purpose for which it was not intended, but on the other hand, where a Respondent does not respond, and where a Complainant has made out a case based upon credible evidence that can be matched with the three required prongs of the UDRP, an equally persuasive argument may exist that where there is no harm, there is no foul, and justice is the true end of the law, not merely the means.