December 1st, 2009 Posted in Trademark | 1 Comment »
The World Intellectual Property Office (“WIPO”) is a specialized agency of the United Nations. October 12, 2009 marked the 10th anniversary of WIPO’s significant new role in domain name disputes — in particular, the Uniform Domain Name Dispute Resolution Policy ”UDRP” which is the standard agreement that every commercial registrar of domain names must use and that every domain name buyer must agree to as part of the domain acquisition process. If you own a domain name, chances are you have signed a UDRP form.
Domain name “cyber piracy” was common at the time of the initial domain name “land rush” in the mid-1990’s. Many companies were slow to acquire domain names under their trademarks, and speculators were quick to scoop those up.
U.S. trademark law has developed to allow a mark holder to stop confusingly similar use of the mark by a junior user — but identical marks can be used by companies that don’t compete — for example, Delta Tools, Delta Airlines and Delta Faucets all can use and enforce “delta” against competitors whose use of a similar mark may create confusion. But there can only be one “delta.com” — for many years before the Airline acquired the domain it was owned by an accounting firm with a “text-only” webpage apologizing for the text-only format: “we receive thousands of mis-hits per day.
Domain name registrars are not required to engage in any “right to use” analysis (like your anti-confusion ombudsman the USPTO Trademark Examiner performs) in order to sell a domain name. In other words, anyone can buy any domain name, and domain name registrars have very little express exposure for selling a domain later alleged to be used in trademark infringement (although the buyer may have exposure.)
In the wake of the domain name land rush, many parties who claimed their trademark rights had been infringed sued under traditional trademark infringement and unfair competition (Sections 32 and 43(a) of the Lanham Act) — but cyber pirates might be able to avoid “true infringement” by using the site for arguably descriptive fair use purposes (Panavision.com was first pirated by a gentleman who put up a web cam of Pana, Ohio.) So, in 1999, both Congress and WIPO reacted with the similar 43(d) Anti-Cyber piracy statute and the UDRP, both of which prohibit acquisition or use of a domain name in bad faith — without the Lanham Act requirement of a showing of significant likelihood of confusion.
In particular, the UDRP proscribes domain name acquisition or use where: (i) the domain name is identical or confusingly similar to a trademark, (ii) the buyer has no legitimate interest in the name, and (iii) the domain has been registered or is being used in bad faith (Section 4.) Bad faith includes: (i) selling the domain back to the trademark owner, (ii) registering the domain to prevent the mark owner from doing so, (iii) using the domain to disrupt the mark owners business, or (iv) commercially using the domain in a confusing manner (Section 5.)
WIPO has a streamlined procedure for resolving UDRP disputes — one or three arbitrators may be selected by the parties and the decision is final and non-appealable — and results in transfer or retention of the domain in question. (If you want money — you need to use the Court system!)
Isaac Eiland-Hall of Florida acquired the domain “glennbeckrapedandmurderedaayounggirlin1990.com” earlier this year and put up a site making it clear that there was no evidence that Mr. Beck had engaged in such behavior, but that he had not otherwise denied it nor provided proof that he didn’t rape and murder a young girl in 1990. Mr. Eiland-Hall all apparently put up the site to MOCK Mr. Beck’s “birther” style of journalism where aspersions are cast until otherwise negated — the opposite of journalism.
Mr. Beck has US Trademark Applications on file for his name in connection with entertainment and other services. Using his name and these applications as a basis, Mr. Beck filed a WIPO UDRP action to recover this domain name. Here is a copy of the Complaint alleging defamation and bad faith in the acquisition and use of the domain name. Mr. Eiland-Hall defended that the domain was an “internet meme” or “esoteric inside joke” that had made the rounds of internet message boards prior to his acquisition of the domain and that his goal was to be a clearing house for Glenn Beck related rumors, myths and truths. Mr. Eiland-Hall explained that his site was not commercial and that only a “moron in a hurry” would be confused as to source or sponsorship. Mr. Eiland-Hall explained his First Amendment rights in exposing Mr. Beck’s rhetorical style and using this provocative domain name to do so. Here is a copy of Mr. Eiland-Hall’s WIPO Response.
WIPO ruled for Mr. Eiland-Hall — here is the Ruling. The WIPO Panelist ruled that Mr. Eiland-Hall was engaged in political speech devoid of commercial intent and thus there was no bad faith as required to trigger the domain relinquishment penalty of the UDRP.
But the WIPO ruling was only Mr. Eiland-Hall’s penultimate last laugh. Following the ruling, Mr. Eiland-Hall VOLUNTARILY relinquished the domain to Mr. Beck with an acid-tongued letter explaining that his “criticism has been aptly made” and that Beck’s “rhetorical style is no laughing matter.” See Eiland-Hall’s last laugh here.
Bottom line: “Gripe sites” are still alive and well – even after ten years of the UDRP.
J. Christopher Lynch, December 1, 2009