If you are going to lie in a UDRP case - at least be smart about it! Hydentra, LP. v. Xedoc Holding SA

The recent domain name decision, Hydentra, LP. v. Xedoc Holding SA, WIPO Case No. D2008-0454 is of interest for a few reasons:

The Best Part - Cybersqatter Busted and PWNED

The Complainant alleged that the domain in question, metart.com, was owned and controlled by a man by the name of Slavik Viner. The Complaint further alleged that given Viner’s standing in the adult entertainment community, he must have known about the Complainant’s trademark and website (www.met-art.com) when he registered the domain in question, www.metart.com.

The Respondent claimed that Mr. Viner was not the owner of the domain name.

In support of its position, the Respondent also files a declaration in the name of Paul Raynor Keating that is said to be given “under the penalty of perjury”. Mr. Keating asserts:

(i) That he is an attorney licensed to practice by the State of California.

(ii) That he is a director of the Respondent and familiar with the ownership of the corporation and that “Mr. Viner is not listed in the records of the corporation as a shareholder”. (source at 5.22)

Perhaps Mr. Viner was “not listed in the records of the corporation as a shareholder,” but does that make the statement honest? Lets keep exploring:

The respondent then continued to deny any involvement by Mr. Viner:

“Mr Viner does not control all or any part of Xedoc. Xedoc is a duly registered Luxembourg corporation. None of its shareholders are US citizens or residents. Its directors are publically listed. They include Mr. Keating who is a director of a number of corporations”. (source at 5.26)

The Panel was provided with various emails between the Respondent and the domain broker.

Some of these are redacted but an explanation of this is given in a footnote. In particular, the Respondent states: “Some documents may have been partially redacted so as to preclude the inadvertent disclosure of highly confidential information such as bank account numbers, user names, passwords and the like.”(source at 5.17)

However, it seems that more than this “highly confidential” information was redacted.

Complainant’s Response to the Respondent’s Supplemental Submissions

5.29 The Complainant contends in this particular submission that notwithstanding the Respondent redaction of certain emails appended to its submissions, it was possible for the Complainant to see what was behind those redactions. In particular, some text was not fully obscured and when the pdf text was copied by it to a Microsoft Word file, the redactions disappeared in their entirety.

5.30 Once these redactions are removed, the Complainant contends that it is apparent that Mr. Slavik Viner was the individual who conducted the negotiations with Sedo in relation to the purchase of the domain name. (source at 5.29-5.30)

Oh SNAP! It is bad enough to be PWNED for lying to a tribunal — it is even worse when you get caught by being so utterly stupid as to not know how to properly obscure text in a PDF document!

5.31 As a consequence the Complainant contends that the Respondent has sought to deliberately hide Mr. Viner’s connection with the Respondent. Further, since the material discloses Mr. Viner’s email address, the Complainant has been able to discover further evidence to show that Mr. Viner frequently frequents and posts on various “adult webmaster forums” and it is “not conceivable that he would not be aware of one of the most well-known adult nude photography sites in existence”. (source at 5.31)

This is why even if you are ethically-challenged, honesty is still the best policy. You never know when a dumb maneuver will reveal your lack of honesty for all the world to see.

Although this is the most interesting part of this decision, there are other issues of interest:

Bad faith registration sticks to a domain

A cybersquatter registered the domain name wwwups.org. Lots of typosquatters register the domain name corresponding to a legitimate website, but omit the period between the www and the domain name. Go ahead, pick any website that you visit on a regular basis, and take out the period. Chances are, you’ll find yourself on a pay-per-click page. (See What is a Pay-Per-Click Page? and Auto-generated websites equal bad faith under the UDRP).

The cybersquatter then transferred the domain to another party. That party tried to claim that it had registered it in good faith, thus the UDRP did not apply.

The case, United Parcel Service of America, Inc. v. Michael Robert, WIPO Case No. D2008-0339 was rather simple — given that it involved such a famous mark.

What is interesting about this case is that the panelist made it clear that bad faith registration, at least under the facts of this case, follows the domain name - even if it is transferred to a new registrant.

Under the circumstances, the bad faith underlying the original registration is properly imputed to the recipient of domain name in question. If this were not the case, unscrupulous parties could easily subvert the purpose and provisions of the Policy by transferring domain names to third persons in anticipation of a case being brought and have the third party nominally refrain from engaging in bad faith use while the case was pending thereby possibly avoiding a finding of bad faith registration and/or use. The Panel concludes that the bad faith involved in the original registration of the Domain Name should be imputed to Respondent.

The opposite, however, is not true. See, e.g., HSBC v. Clear Blue Sky; AEG v. Alvarez.

Cybersquatting in Narnia - Goliath Wins

A few weeks ago, I wrote a rather harsh assessment of Richard Saville-Smith, the registrant of narnia.mobi. He sent me a pretty spirited defense of his position and complained that I unfairly portrayed him.

Consistent with my policies, I listened to him, gave him the benefit of the doubt, and I even changed the post. By the time I was done reading this guy’s emails, I was even rooting for him. I am the sucker of the day.

That was all before I found out what a complete bullshit artist he is. After looking at the panel findings, I’m back to my original position — he’s a cybersquatter, and the Panel thought so as well (for the reasons I predicted in this post).

Here is the really interesting part of the decision — a rejection of the Sorkin/Cabell theory that there is no constructive knowledge requirement under the UDRP:

Paragraph 2 of the Policy implicitly requires some good faith effort to avoid registering and using domain names corresponding to trademarks in violation of the Policy. Media General Communications, Inc., supra. See Shaw Industries Group Inc. and Columbia Insurance Company v. Rugs of the World Inc., WIPO Case No. D2007-1856; HSBC Finance Corporation v. Clear Blue Sky Inc. and Domain Manager, WIPO Case No. D2007-0062. Paragraph 2 of the Policy (“Your Representations”) is incorporated by reference in the registration agreements of ICANN-approved registrars, and provides as follows:

“By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else’s rights. (emphasis added)”. (source)

Some media outlets are still trying to paint Mr. Saville-Smith as a poor victim of a big corporation. Yes, he is David in this scenario (and I rooted for the underdog). However, it seems that my initial assessment was correct: He’s just an opportunist and a bullshit artist.

The UDRP in Narnia

This is an updated and corrected version of an earlier post.

Richard Saville-Smith says that he bought the domain name narnia.mobi for his 11 year old son as a birthday present, and now the C.S. Lewis estate, represented by Baker & McKenzie, filed a domain name arbitration to wrest control of the domain name away from him. (source)

The mainstream media is trying to paint this as a big mean company trying to steal an 11 year old kid’s cookies. More likely, it is a story of a big mean company trying to steal a small opportunist’s lemonade stand. Not that both aren’t a bit unseemly on the part of the big guy, but the emotional angle didn’t pull me in.

That isn’t to say that Mr. Saville-Smith isn’t in the right here. Nor is it to say he is. Initially, it appeared to be clear that he was just another cybersquatter. However, upon further research, I am going to reverse my position at least 120 degrees, consume some humble pie, and call this one a little closer than it originally appeared.

Cybersquatting comes to Narnia - Edited

This post has been updated here.

Domain History Blocking Comes to Domain Tools

More than once, Domain Tools’ domain history has proven quite useful to me in domain disputes. It is always nice to be able to show a panel that the respondent is lying about the date of acquisition of a domain name — especially since the date of each transfer is considered to be a “new registration” under the UDRP. See this post (and scroll down to “Relation Back of Rights”).

A few weeks ago, word leaked out on the International Trademark Association list serv that Domain Tools was bought by a domain monetization company. A DMC is a company that turns un-used domains into pay-per-click sites. I’m not a big fan of them, as is obvious from this prior post. In theory, they are fine - they turn unused web domains into money-making enterprises. Unfortunately, in practice they encourage people to hoard domains, encourage domain tasting, and make the internet less navigable and more annoying.

When word hit the street that a DMC bought Domain Tools, there were some gasps of concern and a pretty spirited argument about what this meant for the future. In particular, cybersquatter defense attorneys trotted out the pitchforks and torches to burn one particular attorney, Marc Trachtenberg, (hereinafter, “Mr.T”) at the stake for his suggestion that this development did not bode well.

I’m glad that Mr.T survived, because it did not take long for him to be proven correct.

Now that Domain Tools is owned by a DMC, Domain Tools has a nifty new feature – Domain History Blocking. This little number is tailor made for those who just can’t seem to prevail when the facts come to light. From the Domain Tools website:

Domain History Blocking
Domain Tools offers Domain History Blocking for the purpose of domain sales or other short term purposes. The rate is $10.00 per domain name per day. (source)

Who wants to bet that “other short term purposes” will include “making sure that complainants in UDRP proceedings can’t prove when a domain was acquired.” Sort of the way that respondents figured out that the internet archive was a good tool to show bad faith use, so they started using robots.txt to get rid of the evidence.

Fortunately, it seems that some panelists interpret destroying evidence as “bad faith.” A little while back, a panel said that use of the robots.txt file was evidence of bad faith without a darn good explanation. (blogged here) Lets hope that UDRP panelists look at this kind of evidence-suppression the same way.

The Robots (.txt) and the UDRP

Any web savvy lawyer knows the value of the Internet Wayback Machine. This website contains a historical directory of web pages, as they appeared on a given date in time. Naturally, being able to look at the history of a website can be an extremely valuable evidence-gathering tool, and I have used it both to support arguments and to demonstrate that other parties are clearly lying.

Web savvy cybersquatters know the power of the Wayback Machine. Accordingly, when they receive a demand letter or a UDRP complaint, cybersquatters increasingly seek to erase their web history from memory by using a “robots.txt” file - a file that instructs the Wayback Machine to not only stop collecting data on a particular domain, but to erase any existing history. It is that simple. One little file and poof! The evidence is gone.

A recent UDRP decision gives us our first insight into how domain arbitration panels may interpret this kind of behavior. See The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], WIPO Case No. D2007-1438.

The panel in that case observed that UDRP “Panels frequently reference the Wayback Machine in order to determine how a domain name has been used in the past.” The panel recognized that “sophisticated respondents” employ the “robots.txt” file in order to prevent access to the history of a contested domain name.

It is the opinion of the Panel that absent convincing justification for the employment of robots.txt in a given case, the use of the device may be considered as an attempt by the domain name owner and operator to block access by the panel to relevant evidence. In such a case, it is the Panel’s view that a panel is entitled to assume that reasonable factual allegations that a complainant has made as to the historical use of the web site to which the domain name at issue resolves are true and that the use of robots.txt in the particular case may be considered as an indicia of bad faith. (source)

Commentary: This is a good rule, and I believe that most ethical panels will follow it. If a party destroys evidence, it should be forced to give “convincing justification” for that destruction.

It is also good to see this kind of independent thinking by UDRP panelists and to see a panel give an opinion on an important subject, even though it might not have been a dispositive issue. Good UDRP panels engage in this kind of independent thought, to the benefit of respondents and complainants alike.

Update: It seems that the logic in this case has been picked up by at least one panel. See SCOLA v. Brian Wick d/b/a CheapYellowPages.com NAF Claim: FA0711001115109. (”In light of Respondent’s blocking of the archived versions of the Web site, the Panel will assume that Complainant’s reasonable allegations of historical use are true.”)

Auto-generated websites equal bad faith under the UDRP

Two weeks ago, in Is Godaddy a Mass Cybersquatter?, I discussed pay-per-click sites: The ubiquitous “sponsored links” pages that have become the cockroaches of the internet. Perhaps one day they will evolve into useful search tools, but today they are not even close.

Domain speculators and cybersquatters alike (the two terms are not synonymous) re-direct their domains to “sponsored links” pages. They are simply playing the averages. If you can register a domain name for $8 a year, then all you need to do is
generate $8.01 per year in pay-per-click fees to make it a profitable endeavor. Many make much more than that, but you get the point.

The links on these pages are usually generated automatically. I’m not bright enough to understand the algorithm, but some computer program, somewhere, takes a look at the domain name and matches it up with keywords, then provides sponsored links on the pay-per-click page. For example, motoguzzi.us brings you to a page that has links that refer to Moto Guzzi motorcycles. However, that doesn’t mean that Moto Guzzi paid for the links. Someone else may have simply bid for those keywords. I am certain that the registrant of motoguzzi.us hasn’t so much as seen the site in a long time, if ever. He most likely didn’t choose the links that are there.

This lack of direct control is often a central theme in a cybersquatter’s response to a UDRP complaint. At least one UDRP panel bought this argument. See Admiral Insurance Services v. Dicker, WIPO Case No. D2005-0241 (“the Panel accepts that the terms under which Google makes its Adsense advertisements available do not permit the Respondent to control them . . .”). However, that panel included David Sorkin, which makes its findings suspect. (He rules for complainants less than 1/3 of the time, and has earned more than $100,000 in UDRP panelist fees by making gullible decisions like this. Do the math).

The prevailing trend is that the “willful blindness” argument is not valid, as illustrated in the recent decision: State of Florida, Florida Department of Management Services v. Bent Pettersen, WIPO Case No. D2008-0039.

Even if the content of that portal website was generated automatically - such that the Respondent was not directly aware of its precise content - the Respondent must, at least, have been aware that the website would be determined by search terms relating to the value of the mark that he wished to exploit. This would appear to be the natural result of ‘parking’ the disputed domain name at the website. Further, the Respondent is ultimately responsible for the content of the website within his control. As such, the Respondent could not avoid responsibility for the automatic generation of links at the subject website.

In coming to this conclusion, the Panels referred to another recent case, Villeroy & Boch AG v. Mario Pingerna, WIPO Case No. D2007-1912.

The Respondent is responsible for the content of any webpage hosted at the disputed domain name. It cannot evade this responsibility by means of its contractual relationship with the Registrar. The relationship between a domain name registrant and the Registrar does not affect the rights of a complainant under the Policy (cf Ogden Publications, Inc. v. MOTHEARTHNEWS.COM c/o Whois IDentity Shield/OGDEN PUBLICATIONS INC., Administrator, Domain WIPO Case No. D2007-1373).

See also Alpine Entertainment Group, Inc. v. Walter Alvarez, WIPO Case No. D2007-1082 (“[h]owever the content of a website may be determined under such arrangements, an assertion of descriptive rights or legitimate interest by a Respondent does not sit comfortably with a denial of knowledge or responsibility for the presence of said content.”); Asian World of Martial Arts Inc. v. Texas International Property Associates, WIPO Case No. D2007-1415 (citing AEG v. Alvarez).

“Finders Keepers” is not a legitimate defense to a cybersquatting claim

World Wide Commerce Corporation (”WWC”) registered its domain name, www.worldwidecommerce.com eleven years ago. Unfortunately, the registration inadvertently lapsed.

A domain vulture immediately snapped it up and offered it up for sale. The asking price appeared to be in excess of $50,000. Naturally, WWC filed a UDRP proceeding. As a panelist, they pulled Professor Darryl C. Wilson of Stetson University. Normally, when I see an academic panelist, I presume that the Complainant will lose. Academic panelists, for the most part, would believe that the tooth fairy is real if a respondent said so.

In World Wide Commerce Corporation v. WebContents, Inc., Claim Number: FA0712001124467, Professor Wilson kicked that stereotype in the teeth.

The respondent made the following argument:

Respondent contends that Complainant has no common law rights in the mark WORLD WIDE COMMERCE and that since Complainant “…has failed to establish secondary meaning of the catchphrase ‘Worldwide Commerce,’ the Respondent has as much right as the Complainant to continue ownership of the domain name going forward.” Respondent also states that its intention was to use the domain name for use in future business endeavors, that it is currently using the domain name for legitimate purposes, and that it is not currently nor did it in the past register and use the disputed domain name in bad faith. Respondent further notes, “There is an element of ‘Finders Keepers, Losers Weepers’ in this decision. We believe that is as it should be.”

With respect to the complainant’s common law rights, the respondent was arguably correct. I doubt that the complainant could convince a trademark examiner that the highly descriptive term, “World Wide Commerce” had developed secondary meaning sufficient to register the mark. Nevertheless, Wilson applied the UDRP properly. Perhaps these rights were weak, but Wilson properly held that the rights were sufficient to make out a prima facie case.

Complainant has made continuous use of the mark in commerce for more than eleven years, conducting business under the mark in connection with its web and telecommunication services. Complainant registered the “World Wide Commerce Corporation” name with the Colorado Secretary of State, registered and previously used the domain name before the registration lapsed, and purportedly generated revenues in excess of $5.3 million, while serving a long list of global clients. Complainant’s President contends in an affidavit that Complainant has spent significant time and money in generating substantial goodwill and consumer recognition in the WORLD WIDE COMMERCE mark.

Much better than that, Wilson explicitly recognized that snapping up an inadvertently dropped domain name creates both a lack of legitimate rights on the part of the respondent and that it is evidence of bad faith registration and use.

While it is clearly recognized that anyone has the right to purchase and make immediate or planned use of an available, non-confusing domain name that is legitimately offered for sale, Respondent registered the Domain Name after Complainant had inadvertently allowed the Domain Name to lapse, subsequent to eleven years of continuous use in commerce. Registration of a domain name under these circumstances is evidence of a lack of legitimate rights or interests in a domain name. See Zappos.com, Inc. v. Turvill Consultants, FA 404546 (Nat. Arb. Forum Feb 28, 2005) (finding that “[t]he fact that Complainant had previously held the domain name registration and has mistakenly allowed it to expire is further evidence that Respondent lacks rights and legitimate interests in the domain name under Policy ¶4(a)(ii).”); see also Am. Anti-Vivisection Soc’y v. “infra dot Net” Web Servs., FA 95685 (Nat. Arb. Forum Nov. 6, 2000) (holding that complainant’s prior registration of the domain name was a factor in considering rights and legitimate interests in the domain name).

What I really love is how the Panel slapped the unethical registrant with his own “finders keepers” language.

Complainant’s previous registration and use of the disputed domain name before the registration inadvertently lapsed coupled with Respondent’s immediate registration and refusal to transfer further supports that Respondent’s registration and use of the domain name was in bad faith pursuant to Policy ¶ 4(a)(iii). See Florists’ Transworld Delivery, Inc. v. Domain Strategy, Inc., FA 113974 (Nat. Arb. Forum June 27, 2002) (“Complainant previously held the contested domain name before an inadvertent error allowed the registration to lapse. Respondent apparently took advantage of the presented opportunity and immediately registered the lapsed domain name. Respondent’s opportunistic actions exhibit bad faith under Policy ¶ 4(a)(iii).”); see also RH-Interactive Jobfinance v. Mooburi Servs., FA 137041 (Nat. Arb. Forum Jan. 16, 2003) (finding that the respondent’s registration of the domain name “immediately after Complainant failed to timely renew the domain name registration” was evidence of bad faith).

While “finders, keepers-losers, weepers” is a quaint and classic saying it is also an oversimplification of the underlying law. Actually the finder takes as to all the world except the true owner, or the prior peaceable possessor. WWC Corp. provided sufficient evidence to show that it fit one of the preferred categories and Respondent, who rather unconvincingly claims to be an innocent finder here, is the party that must “tear” itself away from the disputed domain name.

Thank you Professor Wilson for both giving us a good decision and for burnishing the tarnished image of the gullible (or simply greedy) academic UDRP panelist.

For a contrary, and clearly idiotically-reasoned decision, see Canned Foods, Inc. v Ult. Search Inc., Claim Number: FA0012000096320.

What is a Pay-Per-Click Page?

We have all bumped into pay-per-click sites while looking for actually useful information. You know these sites. You type in a domain name, fully expecting to find a useful website, and all you find is a sponsored link generic page.

The Periplaneta Americana of the Internet

What you find
at motoguzzi.us

Up until I was about 26, my primary form of transportation was always a motorcycle. However, I never owned a bike that cost more than $600. In high school and college, I drooled over the Moto Guzzis that I would see from time to time that were hopelessly out of my financial reach. As soon as my bonus came in this year, I resolved to spend it on a Moto Guzzi.

I figured that Moto Guzzi would be at http://www.motoguzzi.com. No such luck. Let’s try http://www.motoguzzi.us. As you can see by clicking the image above, you don’t exactly wind up at Moto Guzzi’s website. (www.motoguzzi.com used to resolve to a pay-per-click site too, but it has since gone down)

Canadians looking
for Moto Guzzi
Canada will be
similarly disappointed

These pay-per-click pages and their operators are the parasites of the internet. I love when they put some goddamned phrase at the top like “find something interesting” or “helping you find what you need.”

Far from “helping you find what you need,” these sites do nothing except divert traffic from its intended destination. Trying to wipe them out is like playing whack-a-mole. Go find your favorite website. Lets presume that it is “The Drudge Report.” Now type in http://wwwdrudgereport.com/ (note that I forgot the period). Click it and see where you wind up - certainly no where near the Drudge Report. You can do this all day long — and you’ll find these crappy and annoying pages everywhere. I suspect that they outnumber “legitimate” websites at this point.

These pay-per-click sites are truly the Periplaneta americana of the internet.

Under the UDRP - these kinds of pages are usually considered to be bad-faith use — even when the registrant claims that the page was automatically generated.

Under the ACPA (15 U.S.C. § 1125(d)), this kind of parasitic behavior can subject the pay-per-click domain owner to up to $100,000 in damages as well as forfeiture of the domain name, and possibly an attorneys’ fees award.