Steve Levy ⬥ 21 May
While in Hong Kong last week for the International Trademark Association’s 136th meeting, I attended a training session for National Arbitration Forum (NAF) domain dispute panelists. Some of the best and brightest panelists joined in an open discussion of both procedural and substantive issues which they feel are important to or evolving in such disputes. In a nutshell, here are my take-aways from this session.
The number of decisions that reference laches – a defense tactic citing delay by the brand owner in bringing the dispute – is on the rise. Some of the panelists at the NAF meeting adhere to the traditional view that laches does not apply in UDRP cases, since the relief sought is only equitable and not related to damages. Others believe that, while laches should not be a controlling issue, it may be taken into account as part of the overall picture, when a very long delay supports the argument that the respondent is not using the domain in bad faith. In other words, use of the site is not “disrupting the business of” the complainant because, if it were, the dispute would have been brought much sooner.
Bad Faith Renewal
The panelists at the NAF session unanimously agreed that the theory of “bad faith renewal” of a domain is not properly within the scope of the UDRP.The big5.com decision (which I covered in a previous blog) opened the door for a complainant to win a UDRP case even though its trademark rights post-dated the acquisition of the domain by the respondent. This is based on the idea that Para. 2 of the UDRP says that a domain owner must agree that its domain doesn’t infringe on anyone’s trademark rights both when it registers the domain and each time it renews it. The panelists felt that Para. 2 is merely a term for the registrar to impose on its registrant customers and does not provide an independent ground for brand owners to assert against a domain owner. This follows criticism of the big5.com case by others in the industry.
New gTLDs Create Anticipation
Some of the panelists at the session have already issued UDRP or URS decisions affecting new gTLDs. The most common issue in these cases is the lack of content on the websites in question since the domains haven’t been registered for very long and it’s sometimes a challenge to determine if they have truly been registered and used in bad faith. However, it was unanimously expected that cybersquatting in the new gTLD space will increase and that panelists will, as a result, see more and more of these cases.
Biggest Challenge? Lack of Preparation
Finally, on the procedural side, the panelists agreed that their biggest problem is unprepared parties and their counsel. Panelists waste quite a lot of time issuing procedural orders in an attempt to help parties fix obvious mistakes in their complaint or exhibits and find it frustrating that even these efforts are sometimes met with continued failures by both complainants and respondents.
As I’ve advised again and again, some of the best and brightest NAF panelists agree that having experienced and expert UDRP counsel is the most effective way for parties to fully express their claims and defenses and to have the best chance of winning their cases.