07|13|2009 06:50 pm EDT
Karen Bernstein, a New York City domain dispute attorney, is urging domainers to fight back and protect their rights after seeing business owners use the UDRP process to force domain transfers time and time again.
In one of Ms. Bernstein’s recent cases she was able to defend WeDirect Inc.‘s ownership for www.CheapAutoInsurance.com despite the complainant having a federally registered trademark for CHEAP AUTO INSURANCE. The Panel held that WeDirect – and anybody else – is entitled to register a commonly used phrase as long as it is being used in a descriptive fashion. However, while WeDirect was financially able to defend its rights, its request for the panel to acknowledge that the arbitration complaint was brought in bad faith was declined – causing Ms. Bernstein to publicly question the flaws in the UDRP system which make it difficult for domainers with less funds to defend their domains.
“The National Arbitration Forum Panel’s decision to decline a finding of reverse domain name hijacking for my client is yet another example of how business owners are using the UDRP [Uniform Domain Name Resolution Policy to strong arm domainers into transferring their profit-making domains with no repercussions,” argued Ms. Bernstein.
“The average cost to file a domain dispute is low compared to the enormous sums that must be shelled out to bring a federal trademark infringement lawsuit and that’s why so many companies opt to go through the UDRP process. On the other hand, the average domainer does not necessarily have the financial resources or the time to fight the domain dispute and either does not respond to the arbitration complaint (allowing in most cases the domain to be transferred) or spending the time and money to fight it.
Ms. Bernstein speculates that since domain arbitrations are relatively inexpensive, many business owners decide to take advantage of the system by filing complaints for minimal fees without facing any legitimate threat of being found guilty of reverse domain name hijacking.
“There needs to be strong efforts by the domain community to lobby ICANN to change its arbitration complaint intake policy and not to permit the URS [Uniform Rapid Suspension System Policy] to take effect,” Ms. Bernstein concluded.
Note: Paul Keating, a Barcelona-based (but California licensed) lawyer specializing in intellectual property, has suggested a way to modify UDRP domain arbitration as to avoid rapid domain suspensions. Check it out here…