Comments to the Initial Report on the IGO-INGO Access to Curative Rights Protection Mechanisms Policy Development Process
I wish to comment on the IGO-INGO issue as it relates to the UDRP.I have experience with the UDRP process as I am currently involves in one of the longest running domain disputes in the history of the Internet. I registered DirectorsChoice.com in 2000. In 2002 the first legal threat was made. In 2014 a UDRP was filed and in 2015 a federal court case was filed under the Ant-Cybersquatting Protection Act seeking a judgment for Reverse Domain Name Hijacking.
There were a series of problems with the UDRP provider, the National Arbitration Forum. One problem that occurred during the process was that the rules for forming a panel were ignored. The complainant was also allowed to amend the complaint with a new set of specimens and new arguments.
The company filing the complaint had no registered trademark, hid communications about the domain that occurred over a 12 year period, and had no proof the domain was registered in bad faith some 14 years before. The panel found excuses for all of these things. For instance, since there was no proof of bad faith registration the panel found that "Respondent and Complainant are both based in the United States and as such Respondent was aware of Complainant’s use of its common law Marks at least 3 years prior to Respondent’s registration of the disputed domain name." Trademark rights were "granted" based on a company name on an invoice and a single quote from one person in the 1990's.
The most shocking part was the allowed amendment to the complaint. During the first submission specimens were submitted that ran Google ads for unrelated products such as intellectual property services (it was an intellectual property law firm collecting the specimens). The amendment had specimens of the same web page but the Google ads were different. Suddenly, most of the ads were travel-related and it was claimed the site was put for the purposes of infringement of the claimed common law trademark.
It is readily obvious to anyone familiar with the Google keyword system that the ads were probably displayed based on user preferences and had nothing to do with the domain dispute (see the Google user agreement indemnification clauses). The attorney who made the submission, Matthew Swyers of The Trademark Company, writes articles about the Google keyword system and how it relates to trademark infringement. The chair of the panel, Scott Austin, claims to be an expert in the Google keyword system as part of his law practice. All these experts reviewed these specimens yet they could not figure out the ads had nothing to do with the domain name? Mr. Austin apparently also holds an official position in INTA and INTA apparently promotes the services of the National Arbitration Forum at conferences and other events.
At this point the case is still in discovery. I have asked the court to allow me add the Trademark Company as a defendant as it seems the Google cookies that were used when the specimens were collected are "not available." My allegations against The Trademark Company are that they violated the Anti-Cybersquatter Protection Act by engaging in a pattern of filing out of scope UDRP's, that they used their expert knowledge of the Google keyword system to provide false evidence, and then destroyed the Google cookie files which would have allowed me to rebut the evidence.
In short, this dispute spanning more than a decade was very, very far outside the scope of the UDRP yet the panel made a finding anyway. This gives the appearance that the chair of the panel pushed for this because dismissing the complaint would have affected his relationship with INTA and affected his practice. Complainants to ICANN about NAF have gone unanswered and the ombudsman refuses to investigate in spite of numerous complaints from numerous sources over similar issues. Whether any of these entities can be liable under the Anti-Cybersquatter Protection Act remains to be seen.
Given the failure to properly manage the UDRP the court challenge should remain in place. As it is currently it could be argued that an IGO-INGO waives their right to immunity when they agree to the arbitration agreement. That should be changed so any entity who files a UDRP explicitly waves their right to any immunity. The respondent should have the matter reviewed in a legitimate legal forum rather than some kangaroo court run by NAF and INTA members.
Thank You Russ Smith UDRP decision - http://www.adrforum.com/domaindecisions/1590433.htm Court Case opinion - http://business.cch.com/ipld/SmithDirectorsChoice.pdf Court Case Docket - https://ecf.njd.uscourts.gov/cgi-bin/DktRpt.pl?313475