Tom Cruise has, unsurprisingly, won TomCruise.com from WIPO. And, unsurprisingly, he won it off Jeff Burgar who is notorious for having registered hundreds of celebrities names back in 1996 and used them to redirect to his Celebrity1000.com website.

Jeff sometimes fights these cases, sometimes not. This time he did and he exposed, yet again, how flawed the UDRP system is and why, with domain names again worth millions of dollars, this is an extremely important system to sort out.

ICANN has, for one reason of another, delayed a review of UDRP for at least five years, despite dozens of people arguing – and pointing out in clear terms – why it has to be done. It is vital that that review is now carried out as soon as possible.

I have written an article for The Reg on this, taking the TomCruise.com decision as the framework, and briefly outlined the problems with UDRP and how far too often the panellists appear to try to find a way of coming to the pre-decided outcome as opposed to following the rules and coming to a conclusion.

For some reason, The Reg cut out a single sentence in my piece which is at the heart of the problem. It was this: “Since the panellists and WIPO itself make money from the cases brought, there is a strong financial incentive for the individuals and the organisation itself to choose in favour of the complainant.”

This is entirely true. WIPO makes more money by deciding in Complainants’ favour – usually big companies since you have to have (or at least you are supposed to have) a trademark before bringing a case under UDRP. I have outlined in countless articles over the years how the decisions reached under UDRP are incoherent, incorrect, biased, bent or just plain wrong. And the only thing that connected every single bad decision is that the trademark holder is handed the domain.

UDRP has to be reviewed as a matter of urgency. There are no excuses anymore for putting off a review. ICANN should start the process now and it should open the consultation up to the public, because this is one of the areas of the Internet in which you don’t need technical knowledge to be able to argue accurately and effectively.

First published in The Register, 23 July 2006

Decision exposes systemic flaws

Tom Cruise has won his domain namesake, TomCruise.com, from notorious cybersquatter Jeff Burgar.

Burgar contested the complaint and paid for a three-person panel at domain name arbirtrator WIPO to decide the issue. In the end though, they decided for the movie star and against Burgar – who is a regular at WIPO judgments, having registered hundreds of famous peoples’ name which he redirects to his Celebrity1000.com website.

The decision comes as no surprise to anyone who follows the uniform domain resolution policy (UDRP). But Burgar, – indisputably the most infamous domain name registrant – once again highlights flaws and inconsistencies in the UDRP model.

Tom Cruise’s lawyers made three basic points: the actor has “common law trademark and service mark rights” in the term Tom Cruise; Burgar was making money from the domain through third-party ads on the Celebrity1000 website; and that internet users were likely to be confused and think that TomCruise.com was affiliated personally with the website.

Counter-argument

In response, Burgar chose not to contest the actor’s trademark rights but argued that the site was a fansite and a biography of the actor helped demonstrate that. He said he had made no attempt to sell the domain to the actor, and that his use of the domain should be protected under the right to free speech (which is explicitly recognised in UDRP wording).

Burgar also argued, convincingly, that “internet users entering ‘www.tomcruise.com’ in their browsers are not seeking the actor in person, nor would they expect that the actor is endorsing the website. Instead, the internet user is looking for information about the actor. Respondent provides such information.”

He also argued that the extraordinary 10-year delay in Cruise starting this action indicates that the actor “did not believe Respondent truly had been acting in bad faith”. By leaving it for so long, he had implicitly agreed to Burgar’s legitimate ownership, Burgar argued.

However, Burgar’s past caught up with him, with the final decision constantly referring to the previous occasions he has been involved in a WIPO dispute – in particular with CelineDion.com, MichaelCrichton.com, KevinSpacey.com, JeffreyArcher.com and others.

These cases were used as case law by the Cruise panel and it was pointed out that “previous panels have determined that Respondent has engaged in a pattern of registering the trademarks of third parties, preventing them from registering their marks in domain names”.

Fuzzy logic

The panel’s logic in knocking down Burgar’s defences is somewhat worrying. It claimed that Celebrity1000.com was “almost wholly devoted to third-party advertisement links” and so it was “difficult to see how this would better qualify as fair use of Complainant’s mark”.

That statement is not true, however, since the majority of the content on Burgar celebrity site is created by the site and while it is certainly not the most expansive website out there for celebrity information, it is inaccurate to suggest that the site is no more than a site of third-party ads.

This distinction is important is because the panel then uses its inaccurate representation of the Celebrity1000.com site to justify dismissing Burgar’s claim for freedom of speech and freedom of expression. The panel instead produces a convoluted and unconvincing explanation as to why it is dismissing a fundamental element of Western legal systems and the UDRP system itself.

In full, it states: “The Panel is well aware of the importance of the First Amendment and freedom of expression. By limiting Respondent’s use of Complainant’s trademark in the disputed domain name, the Policy by definition effects some limitation on Respondent’s scope of expression. However, it does this in a way consistent with the balancing of interests inherent in the general recognition of trademark rights. Free speech does not by definition entail a right to take unfair commercial advantage of a trademark.”

Implications

If this decision is used for future decisions (which is what happens with unhelpful frequency), the implication is that the slightest income from a website or related website (Google Ads?) could be used to undermine a freedom of speech defence and see domains handed over.

The panel also unconvincingly dismisses Burgar’s point that a 10-year delay is unacceptable. Burgar quotes a UDRP decision by a different domain arbitrator (NAF) in which it decided that a two-year was sufficient delay for rights in the domain to have been lost. The panel dismisses this, saying that the panel in that case had made a “mystifying” decision and denied that there was a “meaningful precedent under the Policy for refusing to enforce trademark rights on the basis of a delay in bringing a claim following use of a disputed domain name”.

Since there was also not “substantial evidence” that indicated Cruise had approved of or condoned Burgar’s use of the domain, it was “not prepared to import a bar against his cause”.

It’s hard to escape the feeling that the WIPO panel has, for the 1,000th time, looked for a reason to hand over the domain rather than follow the resolution process to reach a decision.
Flawed system

Since future decisions are frequently made by referring to older decisions, rather than taking each case on its own merits, an already flawed system is starting to wander off on its own, unwelcome tangent.

This flawed process is also demonstrated in the choice of panellists. WIPO itself chooses individual panellists in an opaque and controversial process which, it is well documented, hugely favours those who choose most regularly for the complainant.

In a three-person panel, the complainant choses one panellist, the respondent the second, and the two seek to reach agreement on the third. If they cannot, WIPO decides for them.

In the Tom Cruise case, Cruise’s lawyers chose Sally M. Abel, who, according to the most recent figures we have from UDRPinfo.com, has voted in the complainant favour in 83 per cent of cases. Burgar chose David Sorkin who has voted in the complainant favour in just 33 per cent of cases. The 50 per cent disparity between the two illustrates the highly unusual differences in opinion between experts in a process that has run for nearly a decade.

The presiding panellist, chosen it is assumed by WIPO, is one of the most frequent UDRP panellists, Frederick M. Abbott, who has voted in the complainant’s favour in 79 per cent of cases.

The UDRP process (there is no appeal) has become so polarised that if you were provided with the names of the panellists in any given case, you could predict with almost complete certainly what the outcome was, regardless of the merits of the case actually being heard.

So while Jeff Burgar is an extreme example of a domain registrant, Tom Cruise’s victory serves only to highlight the need to reform the domain arbitration process.

• The WIPO judgment on TomCruise.com

First published in The Register, 26 November 2001

Movie star unable to sue in US

Movie actor Kevin Spacey has lost a landmark court battle over ownership of www.kevinspacey.com.

Judge Gary A Feess, of the United States District Court of the Central District of California, ruled on 14 November that if Mr Spacey wished to take ownership of the domain to court he would have to file in a Canadian court, where its current owner – the notorious “cybersquatter” Jeffrey Burgar resides.

The decision, in which Mr Burgar and his lawyer Mr EC Grimm “raise a novel threshold question regarding the exercise of personal jurisdiction where the Defendants’ ‘contact’ with the forum have taken place in cyberspace”, should at least allow a more level playing field in relation to future domain disputes. From now, complainants are unlikely to be able to chose where a case is heard, removing any incentive for law courts in certain areas to advertise their stronger approach to large companies and rich individuals.

This decision (case CV-3848) effectively ruins any hopes Mr Spacey had of taking over the domain, without buying it.

In the Anticybersquatting Consumer Protection Act 1999, US Congress accepted that as long as there is no attempt to sell on a “personal name” Web site for profit, then it is an example of “fair use” and permission is not needed from the individual in question.

This decision was roundly attacked by Californian senators at the time, who stood up for the Hollywood film industry. The California legal system could be considered the most sympathetic jurisdiction to anti-cybersquatter manoeuvres conducted by celebrities.
Arbitraitor

Why didn’t Spacey’s lawyers just go to domain arbitrators the World Intellectual Property Organisation (WIPO) or the National Arbitration Forum (NAF), like every the lawyers of every other celebrity and use their domain resolution system (Uniform Dispute Resolution Policy, more commonly known as UDRP)?

This is something that Mr Spacey did in April this year, winning the domain www.kevinspacy.com in August. UDRP has been heavily criticised in the past for showing bias towards famous or influential people, but… Mr Burgar won a previous WIPO case in almost identical circumstances over the domain www.brucespringsteen.com.

In that case (D2000-1532), the three-person panel made damning criticisms of how WIPO and UDRP operated, although recent decisions have not fully taken these into account.

Mr Spacey filed his case against Mr Burgar on 4 May this year, saying that Mr Burgar was “an infamous cybersquatter” who was using the actor’s name to promote a commercial celebrity Web site. The suit claimed Mr Spacey and his production company M. Profitt Productions (named after the incestuous junkie crime lord Mel Profitt he played in TV show Wiseguy) owned the rights to Spacey’s name, voice, and image. They wanted the domain transferred over and monetary damages paid.

That Mr Burgar is “an infamous cybersquatter” is not under question. He has had celebrity run-ins with Celine Dion, Jodie Foster, Mariah Carey, and others. But he is a rare example of someone willing to argue his case for domain name ownership and has helped more than almost anyone else in exposing contradictory and unjustifiable decisions made by the domain ruling bodies.

The KevinSpacey.com court decision [pdf]

The NAF decision on KevinSpacy.com