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Generic Domain Names Under Attack: Attorney Brett Lewis Details An Alarming Trend in UDRP Proceedings

With the rise of domain name values in recent years people who would like to separate domain owners from their assets without paying fair market value for them are coming out of the woodwork. Reverse hijacking attempts through either the court system or  UDRP proceedings are no longer a rarity. While you would like to think that justice would always prevail, that has not always been the case. 

Having seen others succeed in acquiring valuable assets based on exceptionally flimsy UDRP claims, some of these modern day highwaymen are now going after once sacrosanct generic domain names and actually gaining ownership of them. 

In a special guest article we are presenting in this month's newsletter veteran domain attorney Brett Lewis of Lewis & Hand, LLP in New York City has a story that should have everyone sitting up and taking notice. Brett's article begins below: 

Attorney Brett Lewis
Lewis & Hand, LLP - New York

There is a disturbance in the Force. Anyone who has recently defended against a UDRP claim staked against a generic dictionary word or last name – and lost – has felt it.  The de facto rule, seemingly governing UDRP Panels is “use it or lose it.”  Most Panels now reject the notion that the registration of a dictionary word or surname domain, alone, creates a legitimate right or interest in that domain name. Passive holding, a doctrine born out of Telstra Corporation Limited v. Nuclear Marshmallows [1] – a case involving the parking of a famous trademark domain – is now indiscriminately applied, in talismanic fashion, to strip individuals of their domain names and award them to holders of common dictionary word trademarks.[2]  

First-in-time, first-in-right  

Absent an abuse of trademark rights, the laws and policies governing domain name registration and use were designed to protect the rights of the party who registers a domain name first, as against other parties who might assert a claim to the same domain name. Accordingly, the 

registration and use of dictionary words and phrases, as well as surnames and made up words, should be presumptively legitimate. Indeed, many Panels have so held.  In Target Brands, Inc. v. Eastwind Group, [3] the Panel determined that “target” is a “generic term and a common word.”  Accordingly, the Panel reasoned that the complainant could not possibly have a monopoly over any domain name with the word “target” in it.  Citing the “well-established principle” that “where a domain name is generic, the first person to register it in good faith is entitled to the domain name and this is considered a ‘legitimate interest,’” the Panel concluded that the respondent had rights to and legitimate interests in the domain name. 

In making the above determination, the Panel cited to numerous prior UDRP decisions, all of which had similarly held that the registration of a generic word, itself, gave the registrant legitimate rights and interests in a domain name.[4]  

Preferring trademark owners  

Although there have always been Panelists willing to award generic terms to even obscure trademark holders, or holders of weak trademarks in a crowded field, recent UDRP decisions seem to indicate an alarming trend.  For instance in June 2008, a majority of the Panel in Aspis Liv Försäkrings AB v. Neon Network, LLC, [5] ruled against a respondent using a domain name comprised of a generic word for a non-commercial criticism site.  As was argued in a strongly worded dissent, absent any evidence of abusive registration or commercial use, the majority ruling was neither fair nor in keeping with the stated purpose of the UDRP.[6] 

Similarly, in Michelman, Inc. v. Internet Design, [7] the respondent claimed that it had registered the domain name <Michelman.com>, which corresponded to a surname of an abortion activist, for free-speech purposes.  In awarding the domain name to Michelman, Inc. of 

Cincinnati, Ohio, an obscure manufacturer of coatings and emulsions unavailable for retail purchase, the Panel concluded that the respondent’s free-speech argument was “concocted.”  The Panel also found that the respondent was not known by the domain name, nor had it used the domain name “in connection with a bona fide offering of goods or services.”  As such, the Panel found that the respondent had not demonstrated rights to or legitimate interests in the domain name pursuant to the UDRP.  

Even in disputes where the outcome is fair, Panels appear increasingly reluctant to find that the registration of generic words, alone, establishes legitimate rights to a domain name.[8]  For example, in House of Spices (India) Inc. v. DataNet Inc., [9] which was decided in favor of the respondent, the Panel, nonetheless, stated:  “there is, at least in the absence of other factors, no presumptive right to register a descriptive or generic phrase.”  

So-Called Passive Holding  

The idea that legitimate rights may only spring from actual use of a domain name in a developed Web site, or from plans to develop a domain name into such a site, appears nowhere in the rules governing the UDRP.  It also flies in the face of common sense and Due Process.  Trading in domain names is, and has been for well over a decade, a legitimate business.  Domain names are many things:  Web addresses, assets, keywords, brands, and identities, but at their most basic level, they are gateways to ideas.  Ideas and the potential locked up in those ideas can have tremendous value, as we have all seen with the explosion of Web sites, such as YouTube.com, Facebook.com and so many others. The simple truth is that there is a struggle for the finite number of domain names that can exist.  Those who have not turned their ideas into a Web site, or who cannot show demonstrable preparations to do so, are deemed to be illegitimate holders of their own intellectual and monetary capital.  

Even in a case where the respondent could show a history of purchasing surname domain names at auction (<scola.com>),[10] or where the registrant was a rocket propulsion engineer who worked for twenty years in the orbital sciences (<orbitalsciences.com>),[11] or where the respondent grew up on a large spice farm (<houseofspices.com>),[12] Panels found that the domain names were passively held and that the Respondents had failed to establish legitimate rights to the domain names.  

The obvious danger that these cases represent is that they undermine the fundamental principal that first-in-time is first-in-right.  They encourage the holders of weak marks in a crowded field to file proceedings, thus, increasing the amount of domain name litigation and increasing the costs to domain investors.  They force registrants to make alternative, stop-gap uses of their domain names, then often hold that such uses, including parking and the creation of directory style links, are not   

legitimate or valuable uses.  Most troubling, the Panels appear to make a conscious choice to award generic, dictionary word domain names to the parties whom the Panels feel will best put those domain names to use – the trademark holders.

Eminent Domain  

In certain respects, the UDRP process is effecting a shift in control from registrants to corporate interests, much in the way that the government condemns property and awards it to developers under its power of eminent domain.  One significant difference, however, is that in the case of the exercise of the State’s eminent domain power, there are Constitutional requirements that a taking be subject to just compensation.  Another difference is that these domain name takings are not being brought about by the government, but rather by arbitrators hired by private companies accredited and entrusted with ensuring the fair disposition of domain name disputes.  

There are undoubtedly cases where non-use of a domain name corresponds with the intent to trade off of the notoriety of a famous trademark.  There are, however, many cases where the fundamental right to register a generic or dictionary term is a right that should be recognized.  In these cases, it should be up to the owners of the domain names to realize the potential of their domain names—or not.  It is time for ICANN, NAF and WIPO to inject fairness back into the process.

[1] Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO Feb. 18, 2000) (disputed domain name <telstra.org>).

[2] See, e.g., SCOLA v. Brian Wick d/b/a CheapYellowPages.com, FA0711001115109 (NAF Feb. 1, 2008) (disputed domain name <scola.com>); Michelman, Inc v. Internet Design, D2007-1369 (WIPO Nov. 26, 2007) (disputed domain name <michelman.com>); Advance Magazine Publishers Inc. and Les Publications Condé Nast S.A. v. ChinaVogue.com, D2005-0615 (WIPO Aug. 9, 2005) (disputed domain name <chinavogue.com>).

[3] Target Brands, Inc. v. Eastwind Group, FA0405000267475 (NAF July 9, 2004) (disputed domain name <target.org>).

[4] See, e.g., Choice Courier Sys. Inc. v. Kirkendale, D2002-0483 (WIPO July 23, 2002) (disputed domain name <choice.com>); SOCCERPLEX, INC. v. NBA Inc., FA0003000094361 (NAF May 25, 2000) (disputed domain name <soccerzone.com>); Int’l Holding v. Beyonet Servs., D2000-0161 (WIPO May 12, 2000) (disputed domain name <zero.com>).

[5] Aspis Liv Försäkrings AB v. Neon Network, LLC, D2008-0387 (WIPO June 2, 2008) (disputed domain name <aspis.com>).

[6] The dissenting Panelist in Aspis Liv Försäkrings AB highlighted the distinction made in the UDRP notes between tarnishment on the one hand, and parody or criticism on the other, and observed that mere criticism “is never the basis for transferring the domain name.”

[7] See Michelman, Inc v. Internet Design, D2007-1369 (WIPO Nov. 26, 2007).

[81] See e.g., Bacchus Gate Corporation d/b/a International Wine Accessories v. CKV and Port Media, Inc., D2008-0321 (WIPO May 20, 2008) (disputed domain name <internationalwineaccessories.com>) (declining to make any finding as to the respondent’s right or legitimate interest where web page contained advertising links related to wine, the descriptive meaning of the disputed domain name); MIP METRO Group lntellectual Property GmbH & Co. KG v. Masoud Ziaie Moayyed, DIR2007-0005 (WIPO Feb. 15, 2008) (disputed domain name <metro.ir>) (declining to make any finding as to the respondent’s right or legitimate interest in a passive holding case where the domain name was comprised of “a common descriptive expression”).

[9] House of Spices (India) Inc. v. DataNet Inc., D2007-0845 (WIPO Sept. 25, 2007) (disputed domain name <houseofspices.com>).

[10] SCOLA v. Brian Wick d/b/a CheapYellowPages.com, FA0711001115109 (NAF Feb. 1, 2008).

[11] Orbital Sciences Corporation v. Finseth International, D2007-1482 (WIPO Jan. 16, 2008) (disputed domain name <orbitalsciences.com>)

[12] House of Spices (India) Inc. v. DataNet Inc., D2007-0845 (WIPO Sept. 25, 2007). 

So what can be done about the anti-domain owner trend Brett has detailed is his article? I know this has become my stock answer, but I don't see a better option anywhere on the horizon -
that is to join and support the domain industry trade association - the Internet Commerce Association. The non-profit group is working to prevent the kind of abuses cited in this article and to counter attempts to change laws via the U.S. Congress that would make it easier to strip domain owners of their assets (this year's 

Snowe Bill being one prime example). The ICA helped derail the Snowe Bill but that was just one volley in a war that will intensify in the months and years ahead. Complacency is no longer an option. 


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