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07|13|2009 06:50 pm EDT

New York Attorney Urges Domainers To “Do Something” To Stop Frivolous Dispute Proceedings

by Chad Kettner in Categories: Legal Issues

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.

[via PRWeb]

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

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  • Soundly Reasoned

    The UDRP needs a penalty fee system but the way in which the current system is slanted, even if it were implemented, it would be of minimal benefit to the average domain owner.

  • http://DomainAuctionCleaner.com Drew

    The UDRP needs a lot of things but until domain registrants actually have a voice in the ICANN process, “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,” won’t do a thing.

    ICANN was infiltrated by corporate-friendly IP attorneys very early on in the process, and they were the flag bearers for the shut-out of the attempt to get a Registrant’s Constituency approved in the late 90′s. Many of these same people were awarded with positions of power at ICANN for their sterling effort and ensuring registrants have no voice.

    The ONLY way anything is going to change any time soon is if Registrants abandon their attempts to deal direct with ICANN (which have had very little effect over the last decade), and spend their time lobbying the organisation that is charged with protecting citizens from over-zealous corporations – their own governments.

    May I suggest that a group of concerned and interested Registrants from multiple countries get together with the very capable ethical IP Attorneys that have been mentioned in this article (and a couple of others) and gather up the firm evidence of Registrants being denied their rights in UDRP proceedings, and present them in a presentation to the GAC (Government Advisory Committee) of ICANN, copied to the appropriate people at USDOJ.

    GAC representatives have already said that they would welcome such a presentation and have suggested that it is very hard for them to push for Registrants rights until said Registrants present evidence of wrongdoing.

    I put my hand up to help this effort. Who else will?

  • Ron

    Yes there definitely needs to be all of the above. This has been a big topic of mine for many years as I have had filings agains my names that were unjust and time consuming.

    More and more companies are giving themselves generic names and then claiming they have a right to the domain name that would have been already purchased. If I was to open up a pizza company called ChicagoPizza.com today I shouldn’t have the right to try to get the domains that would be associated with it. In addition to this I don’t agree with Boston Pizza having the right to say that all domains associated with its brand are automatically theirs.

    It gives Boston Pizza a permanent advantage on search engines and direct type in traffic for people that would type it in without even knowing the brand in search engines for a pizza in the Boston area.

    I know there have been a lot of people on this forum that don’t really thing the domain .TEL has a chance but in Vancouver there has been a lot of companies that are already using and advertising these domain names. Bottom line a company can have one up and running in 20 minutes and advertise the next day with it. There is also a wave of new applications being built for this domain such as http://www.HornetHub.com making it easy for people to access these domains directly on their phone.

    Many companies didn’t buy their .TEL domain name and if this domain takes off under new cool applications for it, you can guarantee that the number of UDRP cases is going to skyrocket.

    The rules for generic domains should be fair game in my opinion.

  • http://DavidGreen.com/ David

    It’s really unfortunate Reverse Domain Hijacking findings seem to be so rare. Does anyome know of successfull cases? Can someone suggest the kind of pleadings to use for filing a reverse domain hijacking case (I have a few good cases in mind I would like to legally pursue but preferably on a pro se basis)?