August 27, 2008
New Case:
Certain cases come along from time to time that are instructive in elucidating the meaning and showing the elasticity of the term “abusive registration.” The WIPO Final Report explains in Paragraph 170 that “[b]ecause of the elastic meaning of cybersquatting in popular terminology, we have therefore chosen to use a different term––abusive registration of a domain name––in order to attribute to it a more precise meaning.” The imagined regime that became UDRP was intended to combat two types of “predatory and parasitical practices” [Paragraph 23]:
[1)] “the deliberate, bad faith registration as domain names of well-known and other trademarks in the hope of being able to sell the domain names to the owners of those marks” [; and]
[2) registering domain names] “simply to take unfair advantage of the reputation attached to those marks.”
Also, testimony by Francis Gurry, WIPO’s then general counsel, to the U.S. House of Representatives on July 28, 1999, in which he stated that the “most egregious manifestation of this problem is the exploitation in bad faith of the ease and simplicity of obtaining a domain name registration in order to register, as a domain name, the trademark of another person with a view to extracting a premium from the owner of the mark.” A copy of Mr. Gurry’s full testimony can be found at <http://www.wipo.int/amc/en/processes/process1/testimony/>.
In determining UDRP claims, the construction of “abusive registration” is generally limited to a narrow range of predatory or parasitical conduct that is covered by the term “cybersquatting.” The Policy “distinguishes ... legitimate interests [such as may be proved by the respondent] from a set of circumstances which are likely to represent abuse of the trademark holder’s rights. It is only the ‘bad faith’ registration and use of a domain name that is prohibited by the Policy,” Educational Testing Service v. TOEFL, D2000-0044 (March 16, 2000).
Although expressed as “abusive registration,” there have been decisions through the years that make it clear that UDRP’s jurisdiction extends to “abusive conduct.” Giles Thomas v. UK-Muscle Nutrition, D2008-0824 (WIPO August 19, 2008) is another case in that line. Reducing the facts to a bare summary, the parties had formed a business entity that for the Complainant came unstuck. He owned the domain name which the Respondents caused to be transferred by chicanery. The Panel stated
By no stretch of the imagination can this transfer of the First Domain Name be regarded as anything other than abusive. Even if the Respondent genuinely believed that it was, as is asserted in the Response, the legal owner of the Domain Name, this was not the proper way of going about it. The Respondent was effectively taking the law into its own hands.
It must be said that not all panelists would resolve the factual circumstances in Giles Thomas as did the Panel by ordering the domain name transferred. A different panelist could just as easily have found that the claim involved a business dispute and thus outside the scope of the Policy. See Common on Cases, Disputes Outside the Scope of the Policy.
August 26, 2008
New Case:
Anomalous decisions are not unknown from both WIPO and Nat. Arb. Forum in which class Nike, Inc. v. nikerotterdam, FA0804001180664 (Nat. Arb. Forum August 19, 2008) (<nikerotterdam>) is an examplar.
To say that the NIKE trademark is well known probably understates its presence in the market place by a wide margin. As a general rule, while prima facie proof coupled with the respondent’s failure to bring itself within the safe harbor of ¶4(c) subdivisions i-iii is conclusive that the respondent does not have rights or legitimate interests in the domain name, a complainant’s success in proving lack of rights or legitimate interests does not necessarily prove respondent’s bad faith. The scale of proof was discussed in the Daily Note for August 15. The Panel in FabJob Inc. v. Compana LLC, D2006-0610 (WIPO August 16, 2006) noted that the “ ‘bad faith’ requirement of the Policy should not be conflated with the ‘lack of legitimate rights’ requirement, although the facts will often be common to both requirements.”
However, the Panel in Nike held – a position against precedent – that to satisfy absence of the “rights or legitimate interests” test the “Complainant must bring evidence of Respondents use of the disputed domain name in a way that infringes upon Complainant’s rights.” In this case, according to the Panel, the
Complainant did not make allegations as to Respondent’s use or non-use regarding the disputed domain name. Moreover, Complainant did not offer evidence, such as an Internet screenshot indicating where the disputed domain name leads. Therefore, because Complainant did not make any allegations or supply any evidence towards a Policy ¶¶ 4(c)(i) and/or (iii) finding, the Panel has no choice but to find that Complainant failed to make a prima facie case under Policy ¶ 4(a)(ii).
To support this view, the Nike Panel cited a case that demanded a different spectrum of proof than in Nike. It involved a contract dispute with a respondent who may have had either a right or legitimate interest.
Having found that Nike, Inc. did not satisfy ¶4(a)(ii) the Panel proceeded to hold that it did not satisfy the ¶4(a)(iii) either. In its view, the Panel held
***here as well, Complainant offered no evidence demonstrating the use or non-use of the disputed domain name. Therefore, the Panel lacks the necessary showing upon which to make an analysis or findings of bad faith on the merits of the case.
Ordinarily, particularly with a famous mark the prima facie bar is set low. The Nike Panel appears to have reversed the burdens. See, for example, a much cited case, Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001):
Proving that the Respondent has no rights or legitimate interests in respect of the Domain Name requires the Complainant to prove a negative. For the purposes of this sub paragraph, however, it is sufficient for the Complainant to show a prima facie case and the burden of proof is then shifted on to the shoulders of Respondent. In those circumstances, the common approach is for respondents to seek to bring themselves within one of the examples of paragraph 4(c) or put forward some other reason why they can fairly be said to have a relevant right or legitimate interests in respect of the domain name in question.
Nike, or let us just call any “Famous Mark,” having proved that the Respondent was neither licensed nor had permission to use its trademark, the burden shifted to the Respondent for an explanation, which in this case was not forthcoming since the Respondent defaulted. In the words of Compagnie Generale des Matieres Nucleaires the Panel made Nike, Inc. “prove a negative” which it was unable to do. It was given a burden the Policy (as construed by earlier panelists) did not require.
August 25, 2008
Of Note:
A recent opposition proceeding before the TTAB, Gamers, Inc. v. Game Xpert, Inc. produced an opinion (not precedential) that included a discussion about domain names attaining trademark status. See John Welsh’s TTABlog®. The Board stated that the “Opposer is relying on its use of “GOGAMERS.COM” and “GAMERS” to establish common law rights and priority of use.” It was unsuccessful in opposition, but in passing and the reason for noting it here is that the Board stated that
***while a domain name may attain trademark status, its use as an address does not support trademark use. In re Eilberg, 49 USPQ2d 1959 (TTAB 1998). “When a domain name is used only to indicate an address on the Internet, the domain name is not functioning as a trademark.... Domain names, like trade names, do not act as trademarks when they are used merely to identify a business entity; in order to infringe they must be used to identify the source of goods or services.” Lockheed Martin Corp. v. Network Solutions, Inc., 985 F. Supp. 949, 956, 44 USPQ2d 1865, 1871 (C.D.Cal. 1997).
Although the Lanham Act expressly provides that a trade name is sufficient to establish priority, 15 U.S.C. 1052(d), there “is no equivalent provision for domain name registration or use; nor is a domain name, per se, similar to a trade name, it is more in the nature of a street address.”
The evidence indicated that the Opposer had a self created problem. While it was the first to register its domain name, which could have achieved trademark status, it never used it in logo form as a source identifier on its website, as did the Applicant, until after Applicant’s filing for registration of “GOGAMER.COM.”
The Opposer lost because of what it did not do in the first instance and in the second its evidence was deficient in establishing priority.
August 22, 2008
New Comment: Distinguishing Among Theories
The Policy lists four non-exclusive examples of bad faith. Each identifies a particular and distinguishable parasitic or predatory act. One “theory” should not be confused with the other any more than theories of action in civil court. For example, tortious interference with contract is distinguishable from tortious interference with prospective advantage. A plaintiff cannot hope to win....
New Case:
Respondents have asserted equity defenses, particularly laches, from the earliest cases, with sometimes ambiguous results, for although panelists generally agree that there is no room for general equitable doctrines under the Policy such as would be possessed by Courts in common law jurisdictions, nevertheless sitting on one’s rights has consequences. For example, if in the interim the respondent has used the domain name in conjunction with a bona fide business its right will not be disturbed. In this respect, ¶4(c)(i) of the Policy can be viewed as a kind of equity defense, a waiver and estoppel against the complainant or an acquiescence.
The Respondent in Avaya Inc. v. Holdcom, FA0806001210545 (Nat. Arb. Forum August 9, 2008) had been using <magiconhold.com> (identical to the Complainant’s trademark) for seven years. However, by itself “[c]ontinuous use adverse to the interest of Complainant is not a basis from which Respondent can acquire rights in the domain name” unless it can bring itself within ¶4(c)(i) of the Policy. The term “bona fide business” is construed strictly and is measured by objective criteria.
Paragraph 4(c)(i) provides that a respondent has a legitimate interest in the domain name if it can prove that “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name [was] in connection with a bona fide offering of goods or services.” A business competing with the complaint can never be bona fide. In Avaya, the Respondent provided competing services which is mala fide. The Respondent even “acknowledge[d] that it was aware of Complainant’s claim of rights at the time of registration, [but] it nevertheless asserts that it believed that Complainant’s mark was generic.” [See Daily Notes for August 19 and 20; separate words may be generic but their combination is not]. The Panel rejected this argument. It held that
Without evidence of why Respondent selected the at-issue suggestive domain name or showing some evidentiary basis for claiming Complainant’s mark had become generic, this belief does not seem reasonable. Therefore, Respondent’s decision to register and then use the at-issue domain name with knowledge of Complainant’s claim of trademark rights in conjunction with a website for a competing business evidences bad faith registration and use under Policy ¶4(b)(iii).
The obverse of this for businesses that are allegedly bona fide is that the greater the length of time sleeping on rights the more difficult to satisfy the requirements of ¶4(a)(iii) of the Policy. It is not laches, then, that applies, but failure to prove bad faith registration. [See Daily Note for July 28].
August 21, 2008
New Case:
When is a gripe site not what the respondent alleges it to be? Paragraph 4(c)(iii) states that the respondent is safe if “you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” To exercise the right, the respondent must prove both that the noncommercial use is legitimate and that it is “without intent for commercial gain.” It is the intent that determines whether the “noncommercial or fair use” is legitimate. Thus, any evidence from which an inference can be drawn that there is intent for commercial gain extinguishes the right. The Panel in Ginn Real Estate Company LLC v. Hilton Wiener, FA0806001211342 (Nat. Arb. Forum August 20, 2008) stated that
What is clear, however, from all of the discussion on this issue is that a respondent must not be seen to be using the criticism site for commercial gain. If that is really what the respondent is doing, the conduct is contrary to the plain words of paragraph 4(c)(iii) of the Policy and hence it cannot give rise to a legitimate interest.
The Hilton Wiener in Ginn Real Estate is a lawyer. He claimed that he registered <ginnlawsuit> as “a forum for investors in Ginn projects to compare notes, get information and keep abreast of pertinent news and litigation’ and maintains that he, like many other investors in Ginn projects, feel they have been duped and misled.” In fact, the website “contained a great deal of trenchant criticism of the Complainant. But it also contained more than critical statements about Ginn.” If the website is more than a criticism site it cannot pretend it is only that.
The “that” in Ginn Real Estate is evidence that the Respondent was selling himself. How? “the commercial use that prevents the Respondent from succeeding on this point is not solely that the Respondent is using the website and hence the Complainant’s trademark to promote himself as an attorney, but also the fact that the successful class action and other litigation he is encouraging must themselves personally benefit him directly and financially.”
August 20, 2008
Recent Case:
Complainants prevail when their evidence is not rebuttable; respondents lose when their proof is not persuasive. A name well known but not famous in a niche market requires a higher level of non-rebuttable proof that the respondent had the complainant’s trademark in mind when it registered the domain name. The Respondent in Gettysburg Flag Works, Inc. v. Precision Marketing Solutions, Inc. and Jeffrey Reynolds, FA0804001179369 (Nat. Arb. Forum June 10, 2008) (U.S. parties) (<gettysbergflags.com>) argued that the expression “Gettysburg flag” is a generic expression. However, the evidence it submitted “balanced unfavorably against Complainant’s evidence that the expression “Gettysburg flag” is not a generally recognized expression.” Although (in Respondent’s dismissive view, the Complainant was an “obscure store located in Albany, New York”) Respondent’s argument was not helped by its being in the same niche, the flag business and that it used the domain name to redirect traffic to its own website.
On the other hand, in Mercer Human Resource Consulting, Ltd., Mercer Human Resource Consulting Inc. v. Konstantinos Zournas, D2007-1425 (WIPO November 23, 2007) (U.S. Complainant, Greek Respondent) the Respondent was not a competitor. It argued that it registered the domain name to be used in conjunction with its website “regions.info” that is under development as a city/area website that will offer targeted local content and functionality for travelers and residents. At or around the same time it had acquired many other domain names with geographical terms including <athens.info>, <barcelona.biz>, <roma.info>, <essex.info>, <clemson.info> <losangeles.info>, <granger.info>, etc.” Although the Panel did not buy Respondent’s rebuttal argument that it had a right or legitimate interest in the domain name, that is it failed the ¶4(c)(i) test, it concluded that the Complainant had insufficient evidence to prove registration in bad faith. Why? Because the Complainant is in a niche business that caters to “organizations as opposed to the general public.” There was no proof of knowledge. Complainant’s evidence did not establish
that its trademark MERCER is well known among the general public in the United States of America or Europe. Complainants’ trademark MERCER is probably well-known among organizations requiring and using human resources, pension, investment and related services within their organizations in many countries throughout the world.
Since “there is no evidence before the Panel that Respondent is such an organization or part of such an organization” its explanation is plausible and plausible wins over suspicion.
In Gettysberg Flags, the Panel based its conclusion on several factors. Two are noteworthy for the inferences they are made to yield, that the “explanation[s] [were] created after the fact.” First, “Respondent did not offer a 34-star flag until after Complainant obtained federal registration for Complainant’s trademark and after Complainant contacted Respondent about the disputed domain name.” Second, the Respondent does not have other domain names reflecting other significant Civil War battles, which “this Panel finds demonstrates that Respondent did not register the disputed domain name ‘to sell historic flags marking the Civil War’.” Finally noteworthy was the Panel’s analysis of the market. It is not necessary to have physical presence in the complainant's jurisdiction:
[Although the] Respondent may have a larger geographic market than Complainant ... the geographic scope of the parties’ respective markets are in fact defined by the Internet, which is by its very nature worldwide, and as such, the scope of the respective geographic markets for purposes of the Policy are not different.
For these reasons, the Panel found that the Respondent registered and was using the domain name in bad faith.
August 19, 2008
Catching Up:
It has become de rigueur for respondents to either or both deny knowledge of the complainant or its trademark and assert that the domain name is a generic term or common word as a means for retaining ownership of it. Lack of knowledge, if credibly evident, defeats the claim for registration in bad faith as does the generic term or common word when used for its ordinary meaning. A respondent’s knowledge resolves to a question of plausibility. The latest entry in this derby is The Carphone Warehouse Limited and The Phone House B.V. v. Navigation Catalyst Systems, Inc., D2008-0483 (WIPO June 20, 2008) (18 domain names). Except for one registration which the Panel found not to be confusingly similar, the rest “all contain minor, non-distinctive variations from the Complainant’s CARPHONE WAREHOUSE mark.”
It is true that the trademarks in The Carphone Warehouse case are composed of common words, which together with lack of knowledge could have been a convincing argument for good faith registration. However, the common words in this case – which separately would have minimal protection – in combination strengthen the mark and shifts the burden to the respondent to explain why it selected that name and non other for its business.
The Panel notes that the Respondent in The Carphone Warehouse was also the Respondent in mVisible Technologies Inc v. Navigation Catalyst Systems Inc., D2007-1141 (WIPO November 30, 2007) “and has been a respondent in other panel decisions under the Policy.” As such it
could hardly have failed to appreciate that this administrative proceeding is not concerned with whether or not United States trade mark law would permit the Complainants to stop others from using their CARPHONE WAREHOUSE and PHONE HOUSE marks in commerce in the United States.
Further downgrading the Respondent's arguement, the Panel notes that the “Internet is worldwide, and the application of the Policy in a case such as this is not restricted to matters affecting commerce in the United States of America.”
August 18, 2008
Revisiting recent case:
Dispute Resolution Service Providers are responsible for reviewing the complaint for compliance with Rule 2 of the Rules of the Policy which includes obtaining verification from the registrar that the complainant has properly identified the registrant and his or her contact information. Rule 5 of the WIPO Supplementary Rules expressly sets out the requirement. The primary concern is due process. The respondent is entitled to receive actual notice of the proceedings, not only from the complainant under Paragraph 2 of the Rules, but also from the Provider after it has certified complaint compliace.
The lengths to which the Panel will go in examining the file for due process compliance is illustrated in 322 West 57th Owner LLC v. Administrator, Domain, D2008-0736 (WIPO August 6, 2008). See Daily Note for August 13th discussing a substantive issue in the case. Due process was also brought up in another recent case, Atrium Medical Corporation v. Emin Keklik, FA0803001172416 (Nat. Arb. Forum June 18, 2008).
In 322 West 57th the “the Center requested confirmation from the Registrar as to whether [it] received a copy of the Complaint from the Complainant and to confirm contact and registrant information set forth in the Complaint relative to the disputed domain name.” It
also requested the Registrar to specify, for the domain name: (a) whether the Policy applies to the name, (b) whether the registrant has submitted, in its registration agreement, to the jurisdiction at the location of the principal office of the registrar for court adjudication of disputes concerning or arising from the use of the name, (c) the language of the registration agreement, and (d) whether the name will remain “locked” during the proceeding.
The registrar’s initial response identified registrant as the party appearing in the WHOIS directory, who turned out to be a proxy. The proxy informed the Center “one day before the expiration of the response period and as such rather late in the process” that it was merely a reseller of domain registrations and that the actual registrant was Ms. Jansson a resident of the Sheffield (a residential building currently being sponsored by the Complainant for conversion to a condominium) who was shielding her name under a privacy agreement. Ms. Jansson's website is less than complementary of the sponsor and its sales tactics. The Panel explains that
Inasmuch as Respondent C/O Mecca Hosting identified Respondent Jansson to the Center on June 17, 2008 –one day before the expiration of the response period and as such rather late in the process, apparently Respondent Jansson was never formally notified of this administrative proceeding and served with the Complaint by either the Complainant or the Center. Thus, Respondent Jansson, due to her rather late identification as the actual registrant, was effectively denied an opportunity at that time to participate in this proceeding.
Implicit is that the Respondent not be prejudiced by delay in receiving process. Providers’ failure to comply with the service rules, inadvertent or not and discovered after submission of the file to the Panel and even if it causes delay in the proceedings, must be corrected. Atrium Medical, supra. The remedy, rejected by the Panel in 322 West 57th, would be to restart the proceedings and require a refiling of the response. However, he made a procedural ruling that “in spite of the delay with which [Ms. Jansson’s] Response has been filed [he] has nevertheless accepted and fully considered her Response. Given this, the Panel sees no valid reason to require the Center to restart this administrative process.”
August 15, 2008
New Comment: Uncertainty in Protecting Two and Three Letter TrademarksI noted in an earlier Comment a degree of ambivalence in how diligent a bulk or high volume registrant must be to avoid being found to have acted in bad faith. There have been a number of recent cases involving two and three letter domain names accused of violating the Policy, among them....
New Case:
The ease or difficulty of a complainant’s middle burden of proving that the respondent has no rights or legitimate interests in the domain name depends upon the classification of the trademark. The evidential demands are proportional to the trademark's fame or presence in the marketplace. The greater the fame or presence the less evidence necessary to shift the burden; vice versa where there is less fame or presence. For famous or well known trademarks simply denying that the respondent has permission to use the trademark is prima facie proof that the respondent has no rights or legitimate interests in the domain name. The burden having shifted, the respondent's evidential rebuttal must be of a higher quality to prove its rights or legitimate interests in domain names identical or confusingly similar to famous or well known trademarks.
These observations about the quality of evidence are illustrated in Perpetual Motion Interactive Systems Inc. v. NameBubble LLC, FA0806001212590 (Nat. Arb. Forum August 13, 2008). The Complainant alleged ownership of a three-letter trademark, DNN. The Respondent, a bulk registrant, had purchased the domain name a few months earlier for $14,000 and was allegedly preparing to use it – but would give up this intention if the Complainant wanted to buy it for $60,000. The Complainant (no doubt outraged by the sticker price) simply alleged that the Respondent had no right or legitimate interest in the domain name because it “is not being used for any legitimate purpose. It merely purports to be the site of the ‘Domain Name Network’ and states that it is ‘under construction’.” That was not enough.
The Panel pointedly noted that it “does not share the Complainant’s view that Respondent has the burden of proving legitimate rights or interests.” The shift of burden to the respondent does not relieve the complainant of its own burden. The complainant must still support its claim by a preponderance of the evidence, but it gives the respondent the opportunity to rebut the prima facie evidence. At minimum, this can consist of an explanatory rebuttal; maximally, the respondent can offer irrefutable proof of its rights or legitimate interests. The Respondent in Perpetual Motion Interactive alleged a defense under ¶4(c)(i) of the Policy – “before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services” – but its evidence consisted of a one page outline of its intentions for the website. The Panel stated that while it
shares Complainant’s view that the threshold to demonstrate preparations to use the disputed domain name in connection with a bona fide offering of goods or services ... has to be higher than submitting a single, unpublished, and undated page with almost no content ... the situation at hand[] goes further: The domain name is comprised of a generic acronym, consisting only of three letters which is also used by several third parties and which correspond as initials to the name for the website intended by Respondent; this name, “Domain Name Network,” again, plausibly corresponds to Respondent’s business, the trade in domain names; the time frame between Respondent’s registration of the disputed domain name and the notice of the Complaint is indeed short, so that the lack of an active website is of little relevance.
The problem, evidently not anticipated by the Complainant, is that its trademark neither famous nor well known is in a less protectable category requiring more proof than it could possible marshal at this time.
Revisiting Consent to Transfer (See Comment, Rejecting Respondent’s Consent to Transfer and Finding Bad Faith):
Texas International Property Associates - NA NA has the dubious distinction of being a serial cybersquatter with over a hundred claims against it. Its modus operandi much detailed through numerous cases is to evade returning the domain name until it has to and then in an act of piety consents to transfer. The delaying tactics have been reviewed and condemned. Some panelists have seen through these shenanigans; some either have not or ignore it and accept the consent, as in the latest episode, WD-40 Company v. Texas International Property Associates, D2008-0876 (WIPO August 6, 2008).
In Messe Frankfurt GmbH v. Texas International Property Associate, D2008-0375 (April 29, 2008) the Panel rejecting the Respondent’s request to terminate the proceedings without a decision, stated:
[I]n cases of this type it would be contrary to the spirit and intent of the Policy for a party to use the expedient of offering to transfer the disputed domain name at the last minute, in order to avoid a decision on the merits and thereby minimize the risk of adverse findings/comments.
This conduct, the Panel stated, is particularly egregious
where that party appears to have done the same previously and where the purpose of the step appears to be to circumvent the Policy. In the instant case the Panel infers that the purpose of this strategy is not only to delay the inevitable... but also effectively to thwart the Policy (where patterns of questionable conduct have always been relevant) and that this is an abuse of process and a further indication of bad faith conduct.
August 14, 2008
Within less than a one week span, August 8 to 13, the Nat. Arb. Forum reported 6 “claim denied” decisions. Not what one is used to seeing. The Complainants lost for a variety of reasons: in the first, it failed to prove that the Respondent lacked rights or legitimate interests in the domain name (Mattel, Inc. v. Konstantinos Zournas, FA0806001203398 (Nat. Arb. Forum August 8, 2008) [<barbitwins.com>]) ; in the second, the pleadings raised an issue that was outside the scope of the Policy (Halliburton Energy Services, Inc. v. M2 Polymer Technologies, Inc., FA0806001212731 (Nat. Arb. Forum August 11, 2008) (<baraclear.com>)]; in the third, it failed to prove common law rights in an acronym (Museum of Science and Industry v. Sam Wilkinson, FA0806001211341 (Nat. Arb. Forum August 12, 2008) [<msichicago.com>]); in a fourth, it failed to prove that the domain name was identical or confusingly similar to the trademark and even if it had, the Respondent proved that it had a legitimate interest in the domain name, actually dozens of them (Slide, Inc. v. SLIDETV.com, Inc. c/o Marketing Department c/o Daniel Bryan, FA0806001212529 (Nat. Arb. Forum August 13, 2008) [<slidetv.com>]); and in the fifth and sixth, they failed to prove bad faith registration (MNM Media LLC v. leftlane.com, FA0806001211465 (Nat. Arb. Forum August 12, 2008) [<leftlane.com>] and Compudata S.A. Corporation v. Gilbert Melgar, FA0806001211478 (Nat. Arb. Forum August 12, 2008) [<multiscan.com]).
Respondents appeared in all but the last case. Except for the second case which raised an issue outside the scope of the Policy, whether a registrant is contractually required to return the domain name after the expiration of its contract, and the third in which the Complainant was unable to satisfy its burden on the threshold element, the others offered persuasive explanations or defenses to the claim of abusive registration. The two most amusing are Mattel and MNM Media. In Mattel (trademark, Barbie), however
The Barbi Twins are 2 women named Barbi that were born as twins. “Barbi Twins” are widely known in the adult entertainment and references on them can be found in thousands of websites on the Internet and on numerous magazines. <barbitwins.com> displays adult links, so in the adult context no visitor would assume that there has been a misspelling.
In MNM Media the Complainant registered the trademark LEFT LANE after the Respondent known as “leftlane.com” inadvertently abandoned it. However, the domain name was registered years prior to the Complainant commencing business using the trademark. The Panel held that “the fact that the LEFTLANE.COM trademark registration was allowed to lapse has no bearing on continued use of the <leftlane.com> domain name in connection with the Respondent’s business.”
Worth noting in the Compudata case, although the Respondent filed a timely Response it was in electronic format only, therefore decreed incomplete under ICANN Rule 5 and not considered in the decision. The Complainant alleged that the domain name resolved to a landing page of “jibberish.” However, I went to <multiscancorp.com> today and found that the domain resolves to a professionally developed website for a trading company established in 1998 offering numerous services to local Philippine government units and agencies. Ergo, this appears to be one of those cases in which two business entities adopted the same name, the Complainant by registering it as a trademark and the Respondent by using it as a tradename.
August 13 2008
New Case:
322 West 57th Owner LLC v. Administrator, Domain, D2008-0736 (WIPO August 6, 2008) (<sheffield57resident.com>)(complaint denied) has two issues worth comment, one procedural (administrative responsibilities and privacy) the other substantive (exercising free speech). I'll briefly note the substantive and leave the procedural for another day. The unnamed registrant is a “resident” of the Sheffield, a residential building in New York City that the Complainant wants to convert to condominium ownership.
Panelists’ views about “gripe” sites in the form of <trademark.gTLD> have a mixed history. They range from Monty and Pat Roberts, Inc. v. Bill Keith, D2000-0299 (WIPO June 9, 2000) (<montyroberts.net>)
In the instant case, the Panel does not dispute Respondent’s right to establish and maintain a website critical of Complainant ... . However, the panel does not consider that this gives Respondent the right to identify itself as Complainant.
to Howard Jarvis Taxpayers Association v. Paul McCauley, D2004-0014 (WIPO April 22, 2004) (<hjta.com>)
***although there has been a split even in the United States, in this Panel's view, the weight of authority suggests that a consensus is emerging that trademark.TLD domain names, when used for U.S.-based criticism sites, can constitute a legitimate interest, especially if there are not other indicia of bad faith.
This dialogue continues in 322 West 57th Owner LLC. The website to which the domain name resolved is critical of the Complainant. However, the Panel concludes that “[w]hile the addition of the term “resident” is insufficient to distinguish the disputed domain name from the Complainant’s mark for purposes of assessing confusing similarity, it suffices here to dramatically change the meaning, identification or overall impression of that name, in the minds of ordinary Internet users, from that associated with the mark itself, SHEFFIELED57.” Further,
use of a non-pejorative term, in conjunction with a mark, may well suffice to sufficiently distinguish the meaning, identification or overall impression associated with the resulting domain name, when used as an address of a website solely providing commentary of any sort, whether critical or otherwise, from that associated with the mark itself so as to avoid confusion and ultimately disparagement of the mark, and thus legitimize the use of the name as fair use under paragraph 4(c)(iii) of the Policy.
Neither the Howard Jarvis (“even if libelous [] is not prohibited by the Policy”) nor the 322 West 57th Owner (“no need, despite the Complainant’s fervent allegations and arguments to the contrary, to opine on such issues”) Panel had any interest in opining about the truthfulness of the messages. Tort claims have to be challenged in a different forum.
August 12, 2008
New Case:
One of a complainant's investigative tools in developing its case is researching web pages on The Internet Archive (“IA”) (http://www.archive.org). IA is a public nonprofit company dedicated to building an Internet Library. To take a recent example, the usefulness of the archive can be seen in Research in Motion Limited v. Louis Espinoza, D2008-0759 (WIPO July 23, 2008). The Complainant annexed to the complaint an image of a website to which <blackberrycoach.com> resolved. The Panel found that “it contained references to podcasts and other items that appear to relate to versions of computer software. There is no reference to the alternative meaning of ‘blackberry’ as a fruit” from which the Panel inferred that the domain name was registered not to extol the fruit but to take advantage of the Complainant’s trademark.
A well persented overview of IA's mission and well worth reviewing again is the Panel's discussion in The iFranchise Group v. Jay Bean / MDNH, Inc. / Moniker Privacy Services [23658], D2007-1438 (WIPO December 18, 2007) (unanimous 3-member panel). IA collects web pages and “[l[ike a paper library ... provide[s] free access to researchers, historians, scholars, and the general public.” In late 1999, IA started to build better-rounded collections using Alexa to crawl the web. With its Way-Back Machine -– a device that displays the web as it looked on a given date – anyone can have literally a window on the past. However, “Alexa respects robots.txt instructions [not to crawl a particular site], and even does so retroactively” thereby preventing the researcher from discovering targeted pages. The anecdote to this is drawing a negative inference against the respondent supporting the truth of a complainant’s “reasonable factual allegations ... as to the historical use of the web site to which the domain name at issue resolves ... and that the use of robots.txt in the particular case may be considered as an indicia of bad faith.”
Archived pages from IA have been accepted as reliable proof of web images in UDRP proceedings. The E.W. Scripps Company v. Sinologic Industries, D2003-0447 (WIPO July 1, 2003) (“On the balance of probabilities, the Panel holds that they are accurate records of the home page accessed by the domain Name on those dates.”). A federal magistrate ruled IA snapshots admissible as “an admission of a party-opponent and are not barred by the hearsay rule,” Telewizja Polska USA, Inc. V. Echostar Satellite Corp., No. 02 C 3293, 2004 WL 2367740, at *5 (N.D. Ill. October 15, 2004); also, Louis Vuitton Malletier v. Burlington Coat Factory Warehouse Corp., 426 F.3d 532, 535 (2d Cir. 2005) (evidence of defendant’s Web site advertisements presented through archive.org capture of the site content at particular time).
August 11, 2008
Reclaiming lapsed domain names is particularly problematic for trademarks that make few ripples in the marketplace, although easier for those that are famous or well known. How is the registrant to know that the availability of the name is due to trademark owner's negligence in protecting its property and not abandonment? What is the registrant's duty? “Normally those who sleep on their rights do so at their peril,” Official Pillowtex LLC v. Smadar Zangi, FA0411000366168 (Nat. Arb. Forum January 6, 2005).
Offsetting this position is the view expressed in World Wide Commerce Corporation v. WebContents, Inc., FA1124467 (Nat. Arb. Forum February 13, 2008). The Panel noted that “[w]hile 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,” it is also true that the expression
“finders, keepers-losers, weepers” ... quaint and classic [though the saying may be] ... 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.
Fitting “one of the preferred categories” is an evidentiary hurdle, however, as the Complainant discovered in Promatic International Limited v. Name Administration Inc., D2006-0673 (WIPO July 19, 2006) (<promatic.com>). The Respondent pointed out that the Complainant did not have a trademark to which the domain name was identical or confusingly similar. It owned a device mark rather than a word mark registration. The case is instructive because it shows the Panel’s close attention to the evidence; what is offered and what withheld. The Panel expressed concern that “the Complaint failed to describe the Complainant’s trade marks accurately....”
What emerges in Promatic is that the Complainant has to do more than simply complain that the Respondent used an automated program to pick up its lapsed domain name. One of the questions much in dialogue among panelists after automated programs began scooping domain names is whether respondents have “a duty to conduct a search to check that the domain name in issue is not a trade mark of a third party.” The answer is “no,” unless there is “evidence that the domain name was registered (whether automatically or otherwise) ... [because] of any goodwill or reputation that the Complainant has built up in the name.” This points to the kind of evidence that must be offered, in Promatic omitted, if the complainant is to prevail.
August 8, 2008
New Comment: Penalizing the Complainant for Abusing the UDRP Procedure.Against a complainant who abuses the UDRP procedure – a recent example being Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM, D2008-0641 (WIPO July 31, 2008), who argued entitlement to the domain the registered years before because it had applied for a trademark of that name and wanted it for its business – the only penalty in a panelist’s quiver is
Missed When It Came Out:
Nominet updated its UK Dispute Resolution Service from July 28, 2008. One of the major changes defines “Abusive Registration,” or rather what it is not. Domaining is not in itself an Abusive Registration. Paragraph 4(e) of the Policy reads:
Sale of traffic (i.e. connecting domain names to parking pages and earning click-per-view revenue) is not of itself objectionable under the Policy. However, the Expert will take into account: the nature of the Domain Name; the nature of the advertising links on any parking page assocated with the Domain Name; and that the use of the Domain Name is ultimately the Respondent's.
Interesting to note is that the evidence that the Expert is to take into account is consistent with the decisions coming down from WIPO and the National Arbitration Forum. In Solon AG v. eXpensiveDomains.com Project, D2008-0881 (WIPO August 1, 2008), for example, in response to the Complainant's view that "domain name dealers are cybersquatters because they acquire domain names without any intention of making any genuine active use of them and for no reason other than to sell them on at a profit," the Panel stated
That is not the definition of a cybersquatter envisaged by the Policy. While domain name dealing carries with it the disadvantages to which the Complainant has drawn attention, it is of itself a lawful activity in most countries and it is not, of itself, a vice at which the Policy is directed.
See Comment Should High Volume Registrants Be Held to a Higher Standard of Diligence?
Note on Evidential Errors:
Reflecting on another, not uncommon failing – see yesterday’s Note on the complainant who imagined he possessed a trademark but offered no proof of it – today’s Note highlights parties lacking persuasive proof that they had any right to the relief requested. This is not a failing particularly associated with UDRP parties, although it is far from rare even when represented by counsel. A number of parties in recent trademark cases in other forums have similarly failed (or erred) in supporting their contentions and it may be useful to put three examples on the table for a quick autopsy. What did the parties and their counsel not do right?
Body 1: John Walsh reports on TTABlog® a recent case, Life Zone Inc. v. Middleman Group, Inc., Opposition No. 91160999 (July 15, 2008) [precedential] in which the Opposer failed both to properly introduce its trademark registrations or provide evidence establishing common law rights in its mark from a date prior to the Applicant’s filing date. The Board was impatient with both sides for their evidential failings and errors. On balance, however, “even if the applicant admitted opposer’s use [of its mark] on some goods, it [was] ultimately of no help to opposer, because opposer has not proven (nor has applicant admitted) when such use commenced.” Consequence: The Board dismissed the opposition for lack of priority.
Body 2: In Vail Associates, Inc. v. Vend-Tel-Co, Ltd, 2008 U.S. App. LEXIS 2782 (10th Cir. 2008), a case brought under the Lanham Act for trademark infringement, the Court had this to say about the plaintiff’s evidential failings:
By now we know the record contains little credible evidence of actual consumer confusion between the alphanumeric number 1-800-SKI-VAIL and the word Vail. We know the evidence has not established VA’s Vail mark as particularly strong. ... We know the sight, sound, and meaning of the two marks are not irrefutably similar. ... We know consumers exercise a high degree of care when planning ski vacations, mitigating confusion that might initially exist between the marks.
And in a risible footnote to the last sentence in the quote, the Court noted that
14 Indeed, at oral argument, counsel for VA, who no more wanted to talk about the record evidence than a hog wants to talk about bacon, opined that VA would be well within its rights under the Lanham Act to pursue claims of mark infringement against such retailers, merchants, and innkeepers. According to counsel, VA declined to do so only as a “matter of policy.”
Body 3: The Complainant in Collective Media, Inc. v. CKV / COLLECTIVEMEDIA.COM, D2008-0641 (WIPO July 31, 2008) argued that although the Respondent had registered the domain name years prior to its application for a trademark (it had not even at this date progressed to registration) the domain name should “no longer” be registered by the Respondent because it had a better right to it. The Complainant (represented incidentally by a major law firm) failed dismally to understand the legal underpinning for abusive registration. It is not abusive to have registered a domain name which a complainant subsequently argues is identical or confusingly similar to its recently possessed trademark. Consequence: the Panel not only denied the complaint but it issued an order of Reverse Domain Name Hijacking.
August 7, 2008
New Case:
The Panel in Tanner Gould d/b/a Rhythm Motor Sport (RMS USA) v. Daniel Lundberg, FA0806001198556 (Nat. Arb. Forum July 31, 2008) highlights two interconnected threshold factors in determining compliance with Paragraph 4(a)(i) of the Policy (<rms-usa-fraud.com>), namely the dual, inseparable requirements linking identity or confusing similarity and trademark rights. The Complainant complained that the “only difference between the domain name and the mark is that the Respondent attached the word ‘fraud’ to Complainant’s mark,” implying that the criterion for jurisdiction was identity or confusing similarity. The Panel, however, explained that the Complainant “misses the mark [pun no doubt intended]”:
The issue is not whether the disputed domain name is identical or confusingly similar to Complainants domain name, but rather as posed by ICANN, whether “your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.”
If the Complainant had rights, the Panel would have moved on to consider whether the Respondent met its burden under Paragraph 4(c)(iii) in exercising free speech, which the term "fraud" implies. Low though the bar may be for complying with Paragraph 4(a)(i) there still has to be some proof that the complainant owns a trademark. This burden is heavier when the alleged trademark is based on common law principles.
Complainant’s proof, such as it was, which failed to include any evidence that it had common law rights, showed that it had filed RHYTHM RACING MOTORSPORTS with the Arizona Secretary of State as a trade name rather than as a trademark or service mark. The Second WIPO Report, subtitled Internet Domain Name Process: Recognition of Rights and the Use of Names in the Internet Domain Name System, dated September 3, 2001, discusses personal names, trade names and geographic identifiers. Personal and trade cognomens and identifiers are expressly barred from the protective jurisdiction of the UDRP unless the complainant has achieved recognition in the marketplace as the source of goods or services.
Since the best that the Complainant could do was to prove that it had a registered trade name it failed the threshold test and the complaint was dismissed.
August 6, 2008
New Case:
It is a mistake not uncommonly made by a complainant whose business and trademark came into existence in Year 5 and who discovers that someone else beat it to the domain name in Year 1 to believe that it has a superior right and is the victim of an abusive registration. This is the story in Pedro Amador Lopez v. Visel Ce, D2008-0671 (WIPO July 21, 2008) (<autocoaching.com> The WIPO Overview of WIPO Panel Views on Selected UDRP Questions summarizes the consensus as follows:
Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right. …
As the Overview also reports, the conclusion may be different if the complainant shows that the respondent acquired the disputed domain name at 11:55 p.m. of the last day of Year 4 at or around the time there was significant publicity of the complainant’s business being launched. This was the story in Ustream.TV, Inc. v. Vertical Axis, Inc., D2008-0598 (WIPO July 29, 2008) (<ustream.com>) discussed in yesterday Daily Note.
In Pedro Amador Lopez, the respondent was the original registrant using its domain name to deliver information on auto and coaching. Complaint denied.
August 5, 2008
Eric Goldman has posted a copy of a Decision and Order in Verizon California Inc. v. Navigation Catalyst Systems, Inc. et al. (CD CA, June 30, 2008) granting Verizon’s motion for preliminary injunction enjoining Defendants from registering or using any domain name identical or confusingly similar to [a specified number of marks].” Defendants employ an automated registration system to “reserve” domain names during the “Add Grace Period” which captured numerous typographical variations of Verizon’s marks. The Court expressly did not enjoin Defendants forbidding automatic registration, which “would essentially have shut down Defendants’ business completely.”
Navigation did not challenge Verizon's allegation that the domain names in issue were “confusingly similar” to its marks. Rather, it argued that its “reservation” of domain names did not amount to a “registration” as required under the ACPA. The Court disagreed: “There is nothing in the statute that defines 'registration' as complete only upon payment, and Defendants have pointed to nothing to show that Congress intended 'registration' to hinge on payment. Further, 'reserving' versus 'registering' is a distinction without a different -- either here entitled Defendants to the exclusive control and use of the names at issue, at least for some period of time.”
Further on domain name tasting, go to
http://www.domainnamenews.com/miscellaneous/icann-board-resolution-kills-domain-tasting/1689, ICANN Board Resolution Kills Domain Name Tasting.
New Case:
The Respondent in Ustream.TV, Inc. v. Vertical Axis, Inc., D2008-0598 (WIPO July 29, 2008) (<ustream.com>) committed a number of errors compounded by its falsely stating when it acquired the domain name. In its initial declaration, the Respondent stated that it registered the domain name years prior to the Complainant’s first public use of its mark which, if true, would negate registration in bad faith and require dismissing the complaint.
The acquisition date is therefore critical in determining bad faith. In a second declaration the Respondent amended its assertion by giving a date closer to the Complainant first public use of its mark, but still prior thereto. A party’s credibility is always a factor in weighing its testimony. In this case, the majority found that the Respondent’s “shifting story ... [to be] inherently incredible.” Important in reaching this conclusion was the Respondent’s “failure to provide a compelling explanation for why its first declaration was materially incorrect ... [which] smacks of being a post-hoc justification for a date just prior to the date the Complainant began public use of its mark.” It could have been expected “to provide a compelling explanantion” because, after all, only it knows the true facts of its acquisition.
Therefore, in weighing credibility panelists take into account a variety of factors, among them in this case was the Respondent’s use of a privacy shield and its “reputation as a serial registrant of domain names that cybersquat on others’ trademarks.” The majority explained that the privacy shield factor rose to significance because “the Complainant’s prima facie showing that the Respondent registered the disputed domain name after the Complainant publicized its prospective Ustream.TV services” and its explanations were “inherently incredible.”
There was, as the dissent pointed out, a paucity of evidence on the issue of acquisition which should be read against the Complainant because it had the burden of proving bad faith. The majority in footnote 6 disagreed:
Although the dissent finds that the burden was on the Complainant to prove when the Respondent registered the disputed domain name given the absence of any information about the ownership since February 2005, the majority of the Panel holds that, given that the date when the Respondent registered the disputed domain name is uniquely within the Respondent’s knowledge and control, it was sufficient for the Complainant to make a prima facie showing and for the burden of production to then shift to the Respondent. Here, the Complainant met that burden ....
Significant here is the emphasis on the registration being “uniquely within the Respondent’s knowledge and control.” It chose not to disclose when it acquired the domain name. Interestingly, the “Wayback Machine at “www.archive.org” shows that there were archived pages from 2003 through February 2005, and then there were no archived pages again until March 2007, which, as the dissent acknowledges, is after the spate of publicity the Complainant received in February 2007. These facts, though hardly conclusive, further support the inference that the disputed domain name was unregistered (or at least unused) during the period between February 2005 and March 2007.”
August 4, 2008
New Case:
The Complainant in CeWe Color AG & Co. OHG v. Shenbun Limited, D2008-0810 (WIPO July 10, 2008) (<cewe.net>) received a nasty shock on learning that the word it is using as a trademark and believed was arbitrary, which perhaps it is in German, is also a “slang word in the Bahasa Indonesia language meaning ‘girl or young woman’ that the Respondent had chosen for its domain name.
The Panel held that “the Respondent has been able to demonstrate to the satisfaction of the Panel that it is the proprietor of other domain names featuring words in the Bahasa Indonesia language, being words associated with girls and young women and the registrations dating back to 2003 and 2004. Accordingly, it is not as if the Domain Name is an isolated example.” This suggests that the decision may have been otherwise if this particular domain name were an isolated example.
The determinative question in cases involving common or dictionary words is whether the respondent had knowledge, or could at the time of registration have had any awareness of the complainant or its mark. The equation is, If no knowledge then no bad faith registration. The complainant’s burden is heavier where its market is on one side of the world and the respondent is on the other side. It must be able to show that it has a market presence in the country in which the respondent lives. In this case, the Panel stated that it had
examined carefully the Respondent’s denial as to any knowledge of the existence of the Complainant at time of registration of the Domain Name. As indicated in Section 4 above, the evidence put in by the Complainant as to the nature and scope of its business is sparse in the extreme, so it is not reasonable to infer that the Respondent must have known of the Complainant at that time. The Complainant’s trade mark registrations in existence then seem to have been exclusively European and primarily German, so the Panel assumes that the Complainant’s business was primarily domestic/European at that time and not therefore one of which an Asian based individual or company need necessarily have been aware.
Accordingly, the complaint was dismissed.
August 1, 2008
New Comment, Rejecting Respondent’s Consent to Transfer and Finding Bad Faith
Rule17(a) of the Rules of the Policy read, “If, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.” Consent to transfer takes two forms: 1) The respondent unilaterally agrees to relinquish its registration; and 2) the parties mutually agree...
New Cases:
National Arbitration Forum reported two cases by The Great Atlantic & Pacific Tea Company, Inc. decided the same day, yesterday, July 31st, that came to opposite results. The one in which the Complainant lost, against RareNames, WebReg for <foodemporium.net> (FA0806001204243), the Respondent, a high volume registrant, appeared and aggressively defended itself from the imputation of bad faith. In fact, the Respondent's Vice President, indignantly swore in her affidavit that
We have developed proprietary technology to help us comply with our corporate policy of registering and maintaining only those domain names that incorporate common words or phrases, descriptive terms, and/or words to which we consider no single party has exclusive rights....
Rare Names used the same aggressive defense with less success in, among other cases, Orchard Supply Hardware LLC v. RareNames, Web Reg, FA0804001178941 (Nat. Arb. Forum June 27, 2008).
The other case, against Belize Domain WHOIS Service Lt c/o Whois Service for <foodemporium.org>(FA0806001204908), the Respondent defaulted. Consequently, there is no substantive counter-factual information about the Respondent, although had it appeared it may have been able to mount the same successful argument as Rare Names.
In New York City, the name FOOD EMPORIUM or THE FOOD EMPORIUM has been around a long time, but Rare Names (an irony in that it deals not in “rare names” but common ones) is located in Massachusetts and denied by fulsome affidavits any knowledge of the Complainant’s registered mark. However, that may be, this appears to be another case in which the trademark owner failed to police its intellectual property [See, Sun Studio Entertainment, Inc. discussed below July 28] and there was a sufficient basis for leaving the domain name with the Respondent. Rare Names registered the domain name in 2000. Although the Complainant did not register its trademark until 2002 it had been in use since 1980. But for the timing of the registration and the lapse of time before commencing a proceeding, there is a question in this class of case whether the Respondent should have been held to a higher standard. See Comment, Should High Volume Registrants Be Held to a Higher Standard of Diligence?
July 2008 (Archive)
UDRP decisions are only occasionally mentioned on blogs and webs and when they are they lean to summaries with little or no discussion of the jurisprudence, which I find dessicated and not particularly helpful to those practicing in the area. It seemed as though something more could be done. Hence, the rationale for <udrpcommentaries.com>. I will devote the website to examining the principles of domain name law and the parties' evidentiary burdens. The examination will take two forms: the first, Comments on Cases – a more extensive report from the front, as it were – and the second, Daily Notes of current or recent decisions briefly highlighting the central issue in the cases. Decisions will not be be simply summarized. In the Comments on Cases an attempt will be made to tie the current decisions with earlier ones to emphasize the evolution of the jurisprudence and panelists' adherence to precedent. The fact is, the UDRP jurisprudence is not static. There is growth, which I think will be demonstrated.
Some of the reports from the front are triggered by panelists discussing principles, citing earlier decisions and resolving issues in current cases, and other reports look back to cases in which the particular principles were first enunciated or elegantly expressed. There is, as every litigator knows, an ongoing dialogue in whatever forum he or she happens to be, not only between or among the parties, but also among judges or, in the UDRP lexicon, panelists speaking through their decisions and sometimes when there is a 3-Member Panel in these domain name proceedings, even, within the case itself through dissents. I hope to highlight the dialogue and, in passing, discuss the principles for which consensus has formed and those other instances in which there is still division.