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

[Cheryl Preston]

I also note that the characteristics the UDRP panel describes as
material in their decision are legitimate free speech issues.  According
to the article, the decision-maker is protecting the use of “domain
names for purposes of commentary and criticism.”  It recognizes the
relevance of “the fact that Arkow was not a competitor of the SCRRA,
that his site was noncommercial (i.e., it had no advertising),” and
there was no intent to mislead as “he included disclaimers on the
website making clear that it was not official.”

The decision-maker recognizes that not every word we utter should trump
every other kind of law or value just because of the First Amendment.
The law in the US has always distinguished legitimate free speech claims
from efforts to avoid compliance with other legitimate legal concerns in
an organized society.  What Arkow was doing is different in kind from
folks pandering in child pornography on the Internet.

And, this use of the UDRP illustrates how deeply involved in policy
ICANN already is!




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.