Consumer Advocate's Free Speech Rights Upheld in UDRP Trademark Proceeding

[Cheryl Preston]

As Robert notes in his email:

"When you  
register a domain name, at least with ICANN-approved domain  
registrars, you automatically agree to be bound by the term of the  
UDRP, which creates an administrative procedure for resolving  
trademark-related domain name disputes. ICANN adopted this policy to  
provide a cheap and efficient way to resolve cybersquatting disputes  
without resorting to the courts of any one particular country. (Not a  
bad idea given the potential international dimensions to these  
disputes.)"

ICANN is already deep into various issues involving regulation of the Net and the UDRP is "not a bad idea given the potential international dimensions."  Why wouldn't we want this kind of mechanism for  "Fast Flux Hosting"?  FFH is so integral in the process of granting Net access, I can't see why we would want  individual countries to get involved.

Cheryl B. Preston
Edwin M. Thomas
Professor of Law
J. Reuben Clark Law School
Brigham Young University
424 JRCB
Provo, UT 84602
(801) 422-2312
prestonc at lawgate.byu.edu

>>> Robert Guerra <lists at PRIVATERRA.INFO> 5/30/2008 6:36 am >>>
Came across the following - that could be of interest to NCUC members..

Consumer Advocate's Free Speech Rights Upheld in UDRP Trademark  
Proceeding

http://www.citmedialaw.org/blog/2008/consumer-advocates-free-speech-rights-upheld-udrp-trademark-proceeding-0 

  Last updated on May 27th, 2008
	

Back in 2006, Robert Arkow, a self-styled consumer advocate who played  
a role in establishing the California (and then federal) Do Not Call  
lists, created a website at "metrolinkriders.com." The site hosts a  
forum for users and employees of Metrolink, the local commuter railway  
service in southern California, to comment upon Metrolink's services  
and policies. A small group of readers frequent the site, contributing  
on topics like possible fare increases and customer service issues.  
The Southern California Regional Rail Authority (SCRRA), the  
government authority that runs Metrolink, took umbrage and ended up  
initiating an administrative proceedings against Arkow under to the  
Uniform Domain Name Dispute Resolution Policy (UDRP). Recently, Arkow  
won his case.

Many readers may be unfamiliar with the UDRP, as Arkow probably was  
when he received the SCRRA's complaint back in March 2008. When you  
register a domain name, at least with ICANN-approved domain  
registrars, you automatically agree to be bound by the term of the  
UDRP, which creates an administrative procedure for resolving  
trademark-related domain name disputes. ICANN adopted this policy to  
provide a cheap and efficient way to resolve cybersquatting disputes  
without resorting to the courts of any one particular country. (Not a  
bad idea given the potential international dimensions to these  
disputes.) The procedure is sort of like an arbitration, meaning that  
a private actor renders judgment, rather than a government official  
like a judge. The procedure is streamlined compared to a lawsuit  
because the decision-maker relies soley on the written submissions of  
the parties, and the whole thing can take place remotely. The decision- 
maker only has the power to cancel or transfer ownership of a domain  
name; it cannot order the loser to pay damages, and all UDRP  
proceedings are subject to review by courts.

Importantly, a UDRP decision-maker does not apply U.S. trademark law,  
so the First Amendment protections (discussed in detail in Using the  
Trademarks of Others) won't necessarily help you out in a UDRP  
proceeding. Besides cheapness and efficiency, this may be another  
reason why a trademark owner would choose the UDRP route rather than a  
traditional lawsuit. To win, a complaining trademark owner must show  
three things:

    1. your domain name is identical or confusingly similar to a  
trademark or service mark in which the complainant has rights;
    2. you have no rights or legitimate interests in respect of the  
domain name; and
    3. your domain name has been registered and is being used in bad  
faith.

This is similar to what is required to establish a violation of the  
U.S. Anticybersquatting Consumer Protection Act (ACPA), but the ACPA  
requires a "bad faith intent to profit," not just "bad faith." This  
potentially makes noncommercial websites more vulnerable under the UDRP.

In Arkow's case, the UDRP decision-maker determined that he had a  
legitmate interest in using the "metrolinkriders.com" and  
"metrolinksucks.com" (registered after the SCRRA threatened  
litigation) domain names for purposes of commentary and criticism. The  
opinion gave weight to the fact that Arkow was not a competitor of the  
SCRRA, that his site was noncommercial (i.e., it had no advertising),  
and that the dispute involved parties from the U.S. where "judicial  
decisions tend to support criticism websites against trademark  
infringement and cybersquatting claims on constitutional First  
Amendment grounds." For similar reasons, the decision-maker concluded  
that Arkow did not register the domain name in bad faith, noting in  
addition that he had refused the SCRRA's offer to purchase the domain  
name from him and that he included disclaimers on the website making  
clear that it was not official. It concluded that "something more than  
criticism is required to establish illegitimacy and bad-faith for  
purposes of the [UDRP]."

Congratulations to Bob, who represented himself in the proceedings,  
for his big victory! LA Weekly has lots of details about the  
underlying dispute. See our database entry for links to the parties'  
written submissions.