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August 17, 2016

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Have Gavel Will Travel: How Globe-Trotting Domain Defender Paul Keating Became One of the Industry's Top Attorneys

By Ron Jackson

Good domain names are  valuable assets - some so valuable that unscrupulous people - and even some well-known corporations that should know better - have tried to steal them through frivolous UDRP claims or outright Reverse Domain Name Hijacking. Often the only thing that stands between a would be thief and the rightful owner of a domain name is a skilled domain attorney

Paul Keating

While we are fortunate to have many talented attorneys who fit that description today, that wasn't the case just a decade ago when you could probably count the number of lawyers who were truly skilled in the highly specialized domain arena on one hand. One of the members of that select club of industry legal pioneers is Paul Keating who in 2013 is marking his 30th year as an attorney and his 10th year specializing in domain and intellectual property cases. 

Keating began handling domain cases in 2003, the same year we began publishing DN Journal. His entry into this field had a most unlikely beginning. In fact, at the time Keating was considering getting out of law all together to pursue some other entrepreneurial interests. 

That's when an old client, who also happened to have extensive domain interests, called and asked Keating to hang out a new shingle and represent him in domain matters. "I told him I would not start a law firm for one client," Keating recalled. "His response was to ask how many clients did I need? I told him 20.  Within 60 days he had 20 domainers call me for work! He then proudly called and asked if I had enough for a law firm now and here I am!"  

Keating became a regular at the major domain conferences and his client steadily grew as he proved himself to be among the very best in the field - a status he retains today. He has thoroughly enjoyed the journey but the place where he is now, both professionally and personally, is one he never would have envisioned in the earlier stages of a life filled with frequent moves accompanied by  unexpected twists and turns (including a fateful day 15 years ago that resulted in him spending the past decade living overseas in Barcelona and London).

In 1961, when Paul was 11 years old, Ricky Nelson's single "Travelin' Man" hit #1 on the Billboard Hot 100 Chart. It could have been Keating's theme song because even at that early age, he was already an international traveler. Paul's dad was an engineering graduate from Yale who specialized in large maritime construction projects including Chicago's famous Navy Pier, the Chesapeake Bay Bridge, the BART tube in San Francisco and the Port of Valdez in Alaska (his mother, a Wellesley College economics grad, is an active day trader who raised a flock of five children, Paul being the 2nd youngest among them).

As children Paul recalled moving often as his dad moved the family from one major construction project to the next. "After the Chesapeake Bay Bridge project we moved to Jamaica for five years.  Then, when I was 11, dad started working for Peter Kiewit and we moved to Omaha for a year. By that Christmas my father was in California heading up the designs for the BART tube construction, so we 

Paul Keating's father worked on major construction and renovation projects at locations across the U.S. including Chicago's iconic Navy Pier (above). 

(Navy Pier photo from Bigstock)

moved to Novato, a then small rural community about 45 minutes north of San Francisco.  It was so rural that I delivered the local newspaper on my horse!"

When he wasn't on horseback, odds are you would see Keating in the swimming pool through most his of his high school and college years. "I was a competitive swimmer and spent six hours a day in the pool between the ages of 16 and 21," Keating said. "I swam with the likes of Olympian Rick Dumont but my goals were shut down by Jimmy Carter’s Olympic boycott."

Aside from swimming, the other think Keating remembers about high school was his constant debates with a social science teacher who got so exasperated with their arguments he told Paul he should go to law school - a comment the verbally combative teenager took to heart. Keating enrolled at the University of San Francisco where he graduated in 1980, then stayed over to attend USF's law school, earning his law degree in 1983. 

As an undergraduate, Keating studied business & economics, fields that helped him pick up a good  part time job. "During school worked in the venture capital world for what now are called PE (private equity) firms. In the summer I worked heavy construction because I financed my own education," Keating said. "I was also a DJ for the university radio station (KUSF) – which earned no money but it was certainly fun and started my record collection and my eclectic interest in music. When I graduated from law school and passed the Bar my finance mentor sent me a card informing me I was “Certified useless", Keating laughed.

"I started my legal career working for the California Supreme Court. After a short stint there I knew I wanted no real part of litigation and went to work for a small boutique IP firm. I worked in startups, forming Informix and other companies that have since bit the dust but whose technologies we rely on today (MP3s, etc)."

His time in the start up world left Keating with an entrepreneurial streak that has never gone away. "In 1985 I stopped practicing law for three years to buy a clothing factory in Peru 

Paul Keating speaking at the 2006 
T.R.A.F.F.I.C. Silicon Valley conference.

but sold it in 1989 because running a firm doing the same thing every day grew extremely boring. I went back to work as a lawyer to service a long-time client, then progressed through various small to medium firms and finally ended up as 1 of 13 equity partners at Carroll, Burdick & McDonough (CBM), a 97-attorney firm where I ran the business practice of 11 attorneys," Keating said.

It was at CBM, where Keating said he specialized in strange clients, that he was first introduced to domains in 1998. However, he did not warm up to them right away. "I rejected a plan from a senior associate to form a domain practice because I did not believe it could generate enough business", Keating recalled. "However, among my clients was one domainer who would end up playing a large part in  my life - although I had no idea that would happen at the time. My specialty was taxation and difficult IP financing deals and I grew an odd practice that included everything from working for Jello Biafra and The Dead Kennedys to designing equity participation plans for law firms and start-ups."

The Romain Bridge Cathedral in Vic, Spain - the 
hometown of Paul Keating's wife Victoria whose family 
history there can be traced back across nine centuries. 

(Vic, Spain photo from Bigstock)

Keating's relationship with domains wouldn't really warm up until 2003 when he had moved to Spain. How he wound up there is another interesting story. Remember the fateful day 15 years ago that I mentioned earlier in this article? Keating told us about it. "In the summer of 1998 I met my wife Victoria who was a lawyer from Spain and who was in San Francisco studying English and the U.S. legal system. We lived in Tiburon (a town in Marin County across the bay from San Francisco) and spent our vacations visiting her family in Spain. Her parents lived in Vic which is a small town in the Pyrenees north of Barcelona where her family has had roots for some 900 years. We spent Christmas in the mountains in Vic in a house built before the American Revolution and 

summer at the beach near the French border with boat rides up the coast for lunch - rather idyllic!," Keating recalled fondly.  

"We were married in 2002 in a small chapel in Vic that was built in 1100. The wedding was originally planned to for the fall of 2001 but was postponed due to 9/11. On September 11th I was in Berlin giving a presentation. I ended up flying to Barcelona as all U.S. flights had been cancelled. I spent a week holed up in Barcelona until I could return to San Francisco. We reset the wedding date because none of my family and none of our friends from San Francisco would travel. So, fast-forward to spring of 2002 when everyone came to Spain for the ceremony."

Another twist of fate would end up making Keating a permanent resident of Spain. By the end of 2002 Victoria was pregnant with their son Andreas, but due to a medical issue she couldn't fly back to San Francisco with Paul. So, he went back to work for a couple of months then returned to Spain for the birth in March 2003 and stayed until June, spending that spring working San Francisco hours in Barcelona - which meant working until 3am, then picked back up with his family life at 10am

After Andreas was born, Keating still could not get his family back to San Francisco. "2003 was the year of SARS. Andreas could not fly on a commercial airline until he was 6 months old, so, I returned in June and negotiated another leave until September. We finally all returned in September when I found my staff had decorated my office with a skeleton and cobwebs," Keating smiled.

Keating also found that something bigger than his office decor has changed. "By then Spain had my heart," he said. "By December 20, 2003 I had sold my interest in the firm, sold my house, my car, etc. and was standing in Barcelona again. I had no idea what to do other than not be an attorney. I had plans to start other businesses and had even negotiated a contract to supply low-voltage security fencing to the Catalan prison system."

It was then that Keating got that fateful call from the old client in the domain business - a call that has kept him the domain industry ever since with offices in both Barcelona and now London as well. It is one of those rare businesses that can provide the kind of flexibility most an only dream of. "Traditionally, attorneys needed close proximity to clients," Keating noted. "There seemed to be a heavy reliance on face-to-face meetings. I have no such restriction in my current practice."

"Although I started off with most clients being based in the U.S., this has not been the case for many years now.  My practice includes clients from far off places such as Australia, Philippines, Africa and Turkey and not so far off places such as Europe. I actually have never had a client in Spain! London is unique for me in that I actually have clients in England. Since 2003 I have had five clients visit my offices in Barcelona (counting one that came twice!)," Keating laughed. "I have had no clients visit the London office. Although time-zone issues arise (particularly in London where we are one hour earlier than Europe), I see no real issues as to where clients are located.  We communicate largely by email and phone."

Paul Keating speaking at the 2012 
Domaining Spain
conference in Valencia.

Keating has been in the industry long enough to see the dramatic changes the business has gone through over the past decade. What was once the equivalent of a mom and pop business (actually even smaller in many cases with just one "mom" or "pop" involved) has grown into one that, despite the recession, has minted a number onf new millionaires. 

"When I first began seriously practicing in the space, transactions were originally completed with little or no documentation and it was difficult to convince clients that they should use even a simple bill of sale," Keating noted. "Now, however, it seems everyone is a domain expert. I see the involvement of more traditional business transaction attorneys who are trying to impose longer documentation with more onerous clauses such as indemnification and much more robust IP warranties.  I recently had to deal with an attorney who presented a 9-page bill of sale for a $1,250 transaction!"

"The industry is consolidating and the larger entities have begun to include domain names into their marketing and IP issues. With this growth has come more formality and this will continue. I am currently working on larger domain name financing projects involving private equity firms where the need for formalities is hugely apparent. Governments in search of more taxation revenues are also driving a greater need for corporate formalities in terms of revenue recognition and operational regimes."

"On the conflicts side, I see more reliance on alternate dispute resolution (ADR) and far less litigation than in the 90s when the likes of Verizon were obtaining huge (but useless) judgments for infringements," Keating said. "This is good in some respects (with faster, low-cost resolutions) but raises serious issues for registrants."

"The ADR (UDRP/DRS) process can actually preclude a registrant’s litigation rights. The domain environment (aside from ccTLDs) is almost entirely based upon contract – which is in essence a form of private law. Here the lack of formalities and foresight in the contractual creation stage harms registrants. Let me give you a couple of examples: 

First, we all know a losing respondent has the right to file formal litigation in the mutual jurisdiction to preclude the transfer of a domain in a UDRP. However, many do not realize that the mutual jurisdiction often does not provide the respondent with a legal right to press a claim. In other words,

Paul Keating on stage at the 2013 
Domaining Spain conference in Valencia.

the protections in the UDRP are meaningless and there is no remedy. Similarly, in the UK, the court in the Emirates dispute ruled that the DRS constituted binding arbitration thus precluding post-DRS litigation.

Second, registration agreements are governed by the law chosen by the registrar. Often this is insignificant because the domain has little value. However, this is not always the case. I am currently involved in a dispute over a valuable dot ME domain where the registry improperly took back the domain. The client has been forced to file in Montenegro where there is no developed law, where judges have little to no experience in domain names and the registry is effectively controlled by the government. Litigation is further complicated by the requirement of expert opinions when all of the court-recognized experts have conflicts due to their involvement with the registry.

Aside from contractual issues, domain registrants are being increasingly under threat from what I call the IP Rights Lobby and government enforcement agencies (e.g. ICE)," Keating added.

"I fear that the industry has been asleep and unorganized while the IP rights lobbies have undertaken a concerted effort to take control of the discussion and policy formation. Several examples come to mind. The first example is the URS where the rights of the registrant are treated almost as an after-thought with ever-expanding rights for the claimant. Back-door changes have suddenly appeared – such as the newly proposed fee to be paid by respondents. I believe we will see the same claimants who play games with UDRPs will migrate to the URS where the lottery tickets are cheaper and the burden is effectively shifted to the respondent," Keating predicted.

"A second example is the changes to the Trademark Clearing House (TMCH) implementation. We have now run from an exact match of a non-figurative trademark to the ability to register figurative marks as well as word combinations of marks.  As a result I can now lay “claim” to “fast cars” based upon a figurative trademark consisting of a squiggly doodle and the words “fast cars”.  There is even a move afoot to allow registration based upon the fact that a trademark has been 

recognized at the UDRP level even though the threshold for establishing trademark recognition at the UDRP level is so low as to be largely non-existent," Keating said, adding, "These are all part of the process of shifting effort and cost away from the trademark holders and placing additional burdens upon the domain registrant and associated domain name service providers."

With so many threats to domain owner rights on the horizon, how does one protect their assets? Keating advised, "First, if you are serious then treat your domain business seriously. Spend time hiring an attorney. Most people spend more time hiring a secretary than they do in hiring an attorney. Look at the track record. Find out what they know about domains so that you do not fund their education. Look for people who will explain how you can do something and not merely tell you why you can’t.  Recognize that not all attorneys are the most efficient at all things. Negotiate fixed prices for definable projects."

"Second, take a serious look at your domains and at what you want to accomplish. Factor legal fees in as an average overhead cost issue (like your phone). It is foolhardy to ignore legal issues because the domain name at issue is itself of low value. What is needed is a structured

Legal help image from Bigstock

approach where you act as a team and the attorney can teach you how to address problems from the outset. For example, after 6 months of working with an attorney they should have taught you enough so that you can handle most claims properly. The same applies for transactions; after 6 transactions you should be familiar with basic terms so that you can spot when you need help and when you don’t."

"Third, take care of your reputation. If you don’t respond to cease & desist letters or default in UDRPs you will not be taken seriously when you have a dispute you want to challenge."

"Finally, if you have valuable domains, take care of them. This means putting them in a safe place with a registrar located in an agreeable jurisdiction. For many of my clients, I am advising that they use a U.S. registrar for their good generics so that (assuming they are using the domains properly) they actually have the protections of the ACPA (the ability to challenge UDRPs, etc.)," Keating said.

While Keating keeps his finger on the pulse of the domain industry, he is also juggling some new balls in his personal life. "We moved to London so my wife Victoria could complete her Masters in Art History at Christies. That meant that I became the principal care-giver for our son Andreas (age 10).  Andreas had never been formally educated in English – he has long been fluent speaking English (his third language) but did not read or write fluently. So, lots of tutoring and homework."

"Andreas introduced me to Halo which we play as a team.  I have also gotten involved in the atypical “dad” things such as PTA, fund-raising for my son’s school, arranging play dates, Museum tours and attending football (European), rugby and fencing matches. London is a great place for kids. I have loved it although it has meant less attention for my practice and many questions from the other parents who never seem to understand what I do or how I can have such a flexible schedule," Keating smiled.   

Aside from being “dad” I have regained my enjoyment for sailing. Having grown up racing 1-designs in windy San Francisco, I had found the light breezes of Barcelona rather boring. England has some interesting sailing. We live on a golf course in Spain and golf has always been an off-and-on-again passion. Regrettably I have yet to find any domainers in England who want to play." 

Before signing off, we asked Keating if he had any final advice for domain owners and the service providers who depend on them. Keating replied, "I would like the domain community to get more involved – and not just in domain names and registrant rights issues. The Internet was created with such a sense of freedom and passion – it allowed everyone to participate. Now, however, we seen an ever growing encroachment and I have a great fear that this will stifle the freedoms we have taken for granted."

"I am not talking about the “freedom” to have trademark typos or download the latest ripped movie.  My concern is far more basic. The Internet has become our lives so to speak. I

Paul Keating at the 2006 T.R.A.F.F.I.C. 
  conference in Florida

certainly could not live my life without it. My concern is over the degree of control being exercised both by government and large commercial interests, largely in the name of law enforcement, trade protection or, God forbid, terrorism. I fear that given the nature of the Internet and with the ability to track where we are and what we do, we will all end up being far more controlled and that the Internet, born out of a sense of freedom will in fact become a prison that we will have ourselves constructed," Keating said.

"This is happening but it is occurring in small steps. You can see some of it in the comments above with respect to the ever-expanding nature of IP rights. You can see other steps in recent trade agreement/treaty negotiations where commercial interests are invited to participate but the public is not. You can see it in the calls for more CCTV cameras and governmental investigations into the email and phone logs of journalists. You can see it in how the government actively enforces civil IP rights through domain name seizures (or wholesale asset seizures such as with MegaUpload)."

"So I encourage people to get more involved. Join the EFF. Join the ICA. Participate in the likes of Kickstarter to fund new business models for products, publishing, etc.  When you blog or post comments do so thoughtfully. Read the U.S. Constitution and realize that there is a small minority of governments that offer protections that are remotely similar. Then realize that even the minority of governments that do offer protections are busy dismantling them when it comes to the Internet," Keating concluded.


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