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    Highlights of the ICANNWatch Archive
    (June 1999 - March 2001)

    Uniform Dispute Resolution Policy (UDRP) Talk about Bad Faith...
    posted by tbyfield on Thursday January 24 2002, @03:57AM

    One of the few and tawdry pleasures that come with Watching ICANN is the occasional diamond of invective buried in the vast wasteland of discursive dung. Today's issue of Michael Geist's superb Internet Law News email newsletter has drawn our attention to one such gem -- a dissenting opinion crafted by ICANN Watch editor Milton Mueller in a WIPO UDRP ruling on the domain geac.net. [Updated to include mjrippon's commentary.]

    First, mjrippon's commentary (apologies for missing his fine contribution); Mueller's dissent below.


    The recent UDRP decision in the case of geac.net makes for an interesting read. The majority of the panel, led by presiding panellist Tony Willoughby, found that although the Respondent was lawfully engaged in the offering of services to the Complainant's customers, nevertheless the Respondent had no legitimate rights in the domain name in question.

    Hmmm. Doesn't sound quite right that, does it? Unsurprisingly, Dr Mueller found himself feeling pretty much the same way about it. There was a lot of distracting rubbish thrown in by the Complainant about whether the Respondent actually was using the domain name commercially to target Geac customers in the hope of convincing the panel that the Respondents use of the domain name was in bad faith. At the end of the day of course, that argument is irrelevant if the panel finds that the Respondent does have legitimate rights to the domain name.

    One of the feature of the decision was that the majority verdict was entirely unsupported by precedent UDRP decisions. This, of course, is Willoughby's style - and I myself have supported the suggestion in the recent UDRP questionnaire that decisions should not constitute precedents in future cases, in order to free the minds of the panellists to consider the individual facts of the case before them. Mueller's dissenting view was littered with precedents (as you might expect from an academic!), which IMHO is not necessarily a good thing. However, the most damning part of the dissenting view is Mueller's comments about his relationship with his co-panellists:

    "The majority refused even to discuss [the] precedents."
    "The majority decision shows no concern whatsoever for the facts about how domain names are used and whether actual diversion is taking place. Instead, the majority allowed themselves to become fixated on the question whether the domain name originally was set up to point to the Newtec website."
    Readers of ICANNwatch are, of course, more than familiar with Dr Mueller's background, and his willingness to make his views known. Tony Willoughby's name is also growing in repute, though, I would venture to suggest, not in popularity amongst UDRP and DRS respondents. So who exactly is he? Have a look at his firm's website, www.iprights.com. Does the domain name give you a clue as to how he might be swayed in UDRP cases?

    Tony Willoughby's decision on the Respondent's legitimacy was, in my view, incomprehensible and unsustainable in the face of the law on either side of the pond.

    But it doesn't entirely surprise me....

    Mueller's dissent:

    Opinion of Dissenting Panelist, Milton Mueller

    I dissent from this decision.

    The Respondent is a servicer and systems integrator of Geac products, and as such has a legitimate interest in the use of the Geac name. Currently, the domain name is not visible to the web-using public, but is used as an internal domain name to organize Newtecís service network using the FTP protocol (as indeed domain names were originally intended to be used). Even if the name were used as a website, numerous UDRP decisions have recognized such a relationship as a legitimate one, as long as there is no deception or diversion. (See: WIPO Case No.†D2000-0006, Adaptive Molecular Technologies, Inc. v. Priscilla Woodward & Charles R. Thorton, d/b/a Machines & More, in which a website retailerís use of a trademarked name Militec was found to be a legitimate interest and lacking in bad faith; DeC†AF-0243, Eddie Bauer Inc. v. Sales Solutions, in which use of the domain by respondent was upheld; WIPO Case No. D2000-1520, Cellular One Group v. Applied Communications, Inc. and WIPO Case No. D2000-1521, Cellular One Group v. COI Cellular One, Inc, involving the use of the "Cellular One" trademark as a domain name by retailers and resellers; and WIPO Case No. D2000-0187, Weber-Stephen Products Co. v. Armitage Hardware, in which a hardware store was permitted to register no less than 10 domain names referring to the trademarked "Weber" grills.

    The majority refused even to discuss these precedents. The Complainantís case that a significant number of their customers are being "diverted" to Newtec has no credibility. It is refuted by the current use of the name, which does not allow such diversion, and is inherently implausible due to the simple, uncontested fact that Geac saw no need to register the name for 11 years. The idea that customers find their way around the Internet by randomly typing in every imaginable variation of a trademark has no basis in fact. The majority decision shows no concern whatsoever for the facts about how domain names are used and whether actual diversion is taking place.

    Instead, the majority allowed themselves to become fixated on the question whether the domain name originally was set up to point to the Newtec website. The majorityís case for both "lack of legitimate interest" and "bad faith" rests entirely on a disputed interpretation of what happened in late December and January 2001, shortly after the name was registered. Complainant contends that it resolved to Newtecís website and was intended to divert traffic. Respondent contends that it never used the domain for website and has since taken action to make sure that the domain resolves to Network Solutions home page.

    Respondent may have lied about its original use of the name and if so, its counsel damaged its case considerably. It is important to add, however, that the evidence submitted by the Complainant actually contradicted its own claim on this critical issue. The hard copy print out of the website source code provided by complainantís lawyers showed that the domain name for the website was , not as alleged.

    At any rate, the critical fact is that there is no dispute as to how the name is being used now, and has been used for most of its registration. The name currently does not resolve to the Newtec website. And that brings us to the language of the UDRP, which clearly limits qualifying disputes to cases in which "your domain name has been registered and is being used in bad faith." President Clintonís conduct in the Monica Lewinsky case notwithstanding, I donít think much debate is possible about the meaning of the term "is" here. It is used in the present tense. There is no discernible use in bad faith at present or when the dispute was filed. So there is a legitimate commercial reason for the Respondent to have selected the Domain Name, and its Ďinternalí use, which currently makes it invisible to consumers, can cause the Complainant no damage whatsoever. The majorityís theory of culpability apparently is grounded in the Bible rather than the UDRP, being derived from the doctrine of original sin.

    I recognize, of course, that bad faith respondents are capable of making last-minute changes in their use of a domain name in order to avoid liability under the UDRP. But that is clearly not true of this case. As far as we know, the current usage of the name has been in place for a long time. And that points to another problem with the majority decision. The Complainantís case never documented or even mentioned the communications between Complainant and Respondent that resulted in the alleged change in the type of use of the name. The majority decision deserves criticism for its failure to document the circumstances and agreements surrounding these negotiations. If the truth be told, the majority Panelists have allowed their over-solicitude for trademark rights to draw them into taking sides in what US slang (for which there is no adequate substitute) would term a "pissing match" between two hostile business competitors. This case reflects petty animosities between businesses, and has little to do with domain name rights. A proper application of UDRP would discourage these types of cases from being contested.

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  • geac.net
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  • WIPO Case No.†D2000-0006
  • WIPO Case No. D2000-1520
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    This discussion has been archived. No new comments can be posted.
    Talk about Bad Faith... | Log in/Create an Account | Top | 14 comments | Search Discussion
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    Re: Talk about Bad Faith...
    by dtobias (dan@tobias.name) on Thursday January 24 2002, @04:48AM (#4716)
    User #2967 Info | http://domains.dan.info/
    While I agree with the dissenting opinion here that the majority, as usual for UDRP decisions, has stretched the policy to the breaking point in order to once again find in favor of a trademark holder, I also find somewhat questionable the motives of the respondent in using the domain name. If it's just used for internal use, there isn't really any point to getting a separate domain name, particularly one with another company's name in it; the purpose could better be served by using hostnames or subdomains within the respondent's own domain, which would not require any registration or renewal fees, not subject them to UDRP proceedings, and would organize their sites in a more logical structure.
    [ Reply to This | Parent ]
    Re: Talk about Bad Faith...
    by joppenheimer on Thursday January 24 2002, @04:48AM (#4715)
    User #5 Info | http://JudithOppenheimer.com
    Mueller says, "The Respondent is a servicer and systems integrator of Geac products, and as such has a legitimate interest in the use of the Geac name."

    You say, "what [if] the domain name at issue was cocacola.net, and it pointed to ... a Coke distributor."

    I'm not a lawyer, but logic tells me that if the Coke distributor is licensed to use the cocacola trademark etc., it has a legitimate interest in using the domain name.

    So what's your point besides being adolescently contrary? Is that why you remain "anonymous"?
    [ Reply to This | Parent ]
    Re: Talk about Bad Faith...
    by fnord ({groy2k} {at} {yahoo.com}) on Thursday January 24 2002, @01:15PM (#4721)
    User #2810 Info
    Agreed. This isn't like cases in which an affiliate or retailer or reseller of a product or service uses the name belonging to the 'parent' company as part or all of its domain name, and even those rulings have gone both ways. Even the Respondent appears to describe itself as in a competitive position to the Complainant, see 5. B. Respondent, second last para.

    The Respondent was attempting to snag traffic otherwise meant for the Complainant, also check out the meta-tags it was using. The Respondent should count itself lucky, such meta-tag use has resulted in punitive damage awards in US courts, sometimes in the $millions. I agree with Anon, there are better poster kids out there. -g

    [ Reply to This | Parent ]
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