Singer Jennifer Lopez has filed papers against the owner of jenniferlopez.org and jenniferlopez.net, accusing him of cybersquatting.

The two sites are owned by one Jeremiah Tieman who lives in Arizona and uses the sites to display news, pictures and videos of and about the singer and includes a disclaimer at the bottom stating that the sites are fan sites and are not endorsed by Lopez. However, both sites also include prominent ads and links through to affiliate sites.

Case D2009-0057 was filed last week with the World Intellectual Property Organization (WIPO) by Lopez’s charitable foundation – which support women and children on low incomes – rather than her hard-hitting IP lawyers Fross, Zelnick, Lehrman and Zissu who are the registered owners of Lopez’s dotcom website.

It is not yet known if Tieman will put up a fight for the domains – I have emailed him asking for an interview – but his chances don’t look good after WIPO has consistently found in favour of celebrities in such cases. Tom Cruise was awarded TomCruise.com by WIPO in a carefully fudged judgment (my analysis here) but also a judgment in which it was argued that if someone made any money at all from a namesake domain that it could be taken as a sign of “bad faith” – one of the three things that someone must prove in order to be given their domain. Another similar fudge gave England and Manchester United footballer Wayne Rooney his dotcom.

Other celebrities recently involved in cybersquatting cases have been Scarlett Johansson, who was given scarlettjohansson.com after its owner unwisely decided to have a competition which gave applicants the “chance” to have a threesome with the sexy actress. Chef Raymond Blanc also won back his dotcom namesake last year.

However, all is not lost for Tieman. Sting lost his attempt at Sting.com; and most famously Kevin Spacey lost his bid for KevinSpacey.com in the California courts, put in an appeal and then reached a deal with the notorious celebrity-domain-name owner Jeff Burgar who handed it over.

We shall have to wait and see what happens with JenniferLopez.net.

Update: Jennifer Lopez’s Foundation won back the domains. You can read the decision here.

Previous owner Tieman didn’t help his case by changing the “Whois” registration details for the domain twice in an apparent effort to sidestep the UDRP process. It didn’t work. Tieman also offered to sell the domain to the Lopez Foundations twice – for $80,000 and then for $45,000.

All that aside though the UDRP decision is shaky, and, as I have covered a number of times in past cases, have built its case on the foundation of suspect decisions, themselves built on top of suspect decisions. It’s a whole house of cards that will fall down if WIPO doesn’t start looking at UDRP properly and firming it up.

This time around, the nine-year delay between the domain registration and Lopez’ action is dismissed, despite there being a whole legal theory in the US of “laches”. The panelist finds that this doesn’t apply in “injunctive” cases – although I have to say handing over intangible property (as also defined in US law) strikes me as more than just injunctive action.

So in conclusion: Lopez won; the original owner was a bit dodgy; the UDRP process is a mess; and WIPO continues to fudge the rules.

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