UDRP Arbitrator Sandra Franklin offers her insights on UDRP arbitrations concerning trademarks, domain names, and cybersquatting issues in this Cybersquatting Law Radio interview. Listen or read the interview below.
“It’s interesting because parking pages tend to be the trouble spot in these, and we represent as many trademark holders as do respondent domainers, but what we always tell folks is that you can take issue with the UDRP, you can take issue with the trademark law, you can disagree with it all day long, but as a smart business person, what you should be doing is acknowledging the reality of the established precedent in this area and understand that if you put up a parking page that gravitates towards a trademark use and start showing competing ads with that trademark, then you have a very difficult time getting through the UDRP without losing your domain.”
“…if you’ve got a domain that you think is worth five or six or seven figures, then parking that page comes with risk if you have no reasonable way of excluding trademark protected ads or trademark infringement type ads on that page.”
“The software made me do it is not a defense.”
“…getting back to the reality versus the wish list of what maybe someone would want the UDRP to be and not to be, but there’s very established precedent that a registrant of a domain has a duty to control their domain. So if you’re a domainer and you realize that’s the precedent, then you shouldn’t be banking on “the software made me do it” as a defense when you come to the point of a UDRP arbitration.”
“…parking pages are a big risk. They tend to be the arrow through the heart in too many cases.”
“…for those bulk domainers who just have software doing it and they never “see” the domains they register, that’s fine as a business model if that’s the way you want to go, but it doesn’t help you under the UDRP and it doesn’t help you under the ACPA that you didn’t know what was in your portfolio, because there is certainly precedent out there that places some obligation to know certain things. It’s not like Colonel Klink, “I see nothing.” It doesn’t work very well in this case.”
Announcer: Welcome to Cybersqatting Law Radio, brought to you by Traverse Cybersquatting Law, internet lawyers specializing in domain name disputes, resolutions and all other domaining issues.
Enrico Schaefer: We are here today with Sandra Franklin. Sandra is a very experienced arbitrator and mediator. She does UDRP arbitrations as well, through both WIPO and NAF. Welcome to the show today.
Sandra Franklin: Thank you.
Enrico Schaefer: Talk a little bit about your arbitration background and experience.
Sandra Franklin: Well, I’ve been an arbitrator for more than 20 years and a UDRP arbitrator since the very beginning, so now just over ten years. I think I’ve been involved in about 800 decisions.
Enrico Schaefer: 800 UDRP decisions?
Sandra Franklin: Yes.
Enrico Schaefer: Wow. That’s a lot of decisions.
Sandra Franklin: Yes.
Enrico Schaefer: So, the Uniform Domain Name Resolution Dispute Policy, the UDRP, in general is a policy which governs domain names and trademarks. In general, what happens is if a trademark holder thinks that someone else is holding a domain name which incorporates their trademark, they can use the UDRP to make the claim of trademark infringement, of bad faith cybersquatting, and ask, under the Policy, that an arbitrator essentially forcibly transfer that domain to their control, correct?
Sandra Franklin: Yes. It’s a streamlined process which very specifically targets just cybersquatting, not a lot of other trademark infringement issues, but it’s sort of a streamlined arbitration process. There are three things that have to be proved. You have to prove that the Complainant has trademark rights; that the Respondent does not have any legitimate right; and that the Respondent registered in bad faith. It’s pretty straightforward.
Enrico Schaefer: Pretty straightforward.
Sandra Franklin: Three things that have to be shown.
Enrico Schaefer: What is WIPO, and what is NAF? Explain that a little bit.
Sandra Franklin: WIPO is the World Intellectual Property Organization in Geneva, Switzerland, and NAF is the National Arbitration Forum. They are the two most prominent administrators of UDRP cases. There have others, but basically those are the only two….except there’s the ADNDRC, the Asian Domain Name Dispute Resolution Center also that’s an administrator for these cases.
Enrico Schaefer: As an administrator, those organizations, WIPO and NAF primarily, they handle the procedural aspects of an arbitration, and in the case of a single member panelist, they select or help select the panelist for a particular arbitration?
Sandra Franklin: Yes, they just appoint.
Enrico Schaefer: They Just appoint.
Sandra Franklin: And then when there are three member panels, they will get suggestions and then appointment the chairperson. They’ll get suggestions for two of the panelists, and then they usually appoint the chairperson. Those of us who serve as arbitrators just appear on these panels, and it’s just a very straightforward rotation basis for the most part.
Enrico Schaefer: Now without getting into any specific cases, if you could just share with us some of the things that you see in these arbitrations and maybe some tips for either complainants or respondents, you know, where you think, boy, I’m going to rule in a particular way, but if I had just had more information about this or if complainant or respondent had done this, it might have been a closer call, some of the trends that you see in terms of the way parties, respondents and complainants handle these pleadings.
Sandra Franklin: Well, I have to think about some common trends, but one area comes to mind which is in the area of marks that are either descriptive or have a geographic connotation to them. That kind of has been a ripe area for sort of differing ideas about it depending on which side you’re on. Sometimes the respondents come to us, and even though there is a registered trademark for a descriptive word or a geographic location, they come to us and say, “yeah, but, that’s descriptive. The other person can’t monopolize it” or “that’s covering this such and such city or park or whatever, so the complainant shouldn’t be allowed to monopolize it”, but what they don’t realize is that, Number One, if there’s trademark registration, that cannot be ignored. That does get the complainant past the first threshold. They have rights. So then we have to go from there. Then we look at the legitimate rights, and the respondent sometimes doesn’t show how they have the standing to use it other than to just by saying, “well, it’s up for free use”. That’s not good enough. You have to show how you have legitimately used something that’s already trademarked. I think a lot of times they figure if they just show that it’s a descriptive word, that’s good enough. But what we then do is look at how they’re using that mark, and it very often is the case that they’re using not in a legitimate way but more in the use that the trademark’s covering.
Enrico Schaefer: Competitive with the trademark.
Sandra Franklin: Yes, so I mean they lose their argument right there. But if they can show some legitimate use based on the descriptive nature of it, then that’s a different story. Sometimes they don’t realize that that’s the heart of it, they have to show how they are legitimately using… let’s just pick of the top of our head the word Orlando. I’m just making one up. Maybe there is one on that. I’m not sure, but just Orlando. Well, maybe someone’s name is Orlando, who knows. There could be plenty of legitimate uses for the word Orlando, but if there’s a trademark that is covered, especially if it’s past the five year period where it gets the benefits of five year presumption, then they have to show how they’re using Orlando that comes back to something other than the city of Orlando. Again, just assuming that the city has that trademarked. And if they don’t, then that’s where they lose.
Enrico Schaefer: Right. It’s interesting because parking pages tend to be the trouble spot in these, and we represent as many trademark holders as do respondent domainers, but what we always tell folks is that you can take issue with the UDRP, you can take issue with the trademark law, you can disagree with it all day long, but as a smart business person, what you should be doing is acknowledging the reality of the established precedent in this area and understand that if you put up a parking page that gravitates towards a trademark use and start showing competing ads with that trademark, then you have a very difficult time getting through the UDRP without losing your domain. If you’ve got a high value domain, if you’ve got a domain that you paid some money for, if you’ve got a domain that you think is worth five or six or seven figures, then parking that page comes with risk if you have no reasonable way of excluding trademark protected ads or trademark infringement type ads on that page.
Sandra Franklin: Or even worse, sometimes they don’t even have any other legitimate use of that word other than the trademark. They’re only using it for the trademark value, which is exactly what the UDRP is meant to stop. If they can just help us out a little bit by actually using it in some legitimate way, maybe there’s some name the person has some reason to claim rights in the name Orlando, fine.
Enrico Schaefer: Use it that way.
Sandra Franklin: And that’s something different like Dr. Orlando. You can think of a way that it could be used. That is different than the trademark, trademark owners are not allowed to monopolize every possible use of their mark. You just have to not be so blatantly just using the domain name for the value of the trademark owner built into it, which is exactly what this policy is supposed to be avoiding.
Enrico Schaefer: It’s interesting, because all the domainer conferences over the last two years have talked about development and these enhanced parking pages that a little bit more content and a little bit more control. We think that’s a good thing because that allows them some flexibility with these pages to actually, if you’ve got a geo use of a domain that also may have some trademark rights in plumbing and heating, you can design that mini-site or that page in a way that you can then take to the UDRP arbitrator and say, look it, not only is this a geographic term, but I’m using it in a geographic way.” That becomes very important for higher value domain names.
Sandra Franklin: Yes. Even though this is not exactly your point, you’re bringing up another issue, which is sometimes the domainers or just the regular respondent is trying to claim that they do not have control over what ends up on their site that the domain name resolves to. Pretty universally, that just doesn’t fly.
Enrico Schaefer: The software made me do it is not a defense.
Sandra Franklin: No. Someone is in control of the domain name that that person owns, and it’s the owner ultimately. It’s the owner who controls what is posted, and there’s none of this passive responsibility. There’s a live person who owns that domain name, and if they don’t cause specific content to be there, they allow it, and sometimes they do cause that specific content, even on a parking page.
Enrico Schaefer: That’s interesting. Again, getting back to the reality versus the wish list of what maybe someone would want the UDRP to be and not to be, but there’s very established precedent that a registrant of a domain has a duty to control their domain. So if you’re a domainer and you realize that’s the precedent, then you shouldn’t be banking on “the software made me do it” as a defense when you come to the point of a UDRP arbitration. I think that domainers are getting smarter about this. I think that the indignance that sometimes we see with some of the results is being replaced by the business intelligence of domainers who see the reality and say, “okay. So how am I going to use this to my advantage? How am I going to make sure that I’m protecting my most valuable domain names? How am I incorporating the precedent that I know is out there into my legitimate business model?” All of that is for the better, but parking pages are a big risk. They tend to be the arrow through the heart in too many cases.
Sandra Franklin: Another place where the innocent bystander type defense doesn’t fly is when you have a savvy domainer then claiming that they did not now such and such was a registered trademark. That doesn’t work either.
Enrico Schaefer: They have a duty to know.
Sandra Franklin: Not only that, but their in the business of understanding and utilizing the internet, so guess what, the very first thing you do is check for trademark. They can’t say that they know everything about the global marketplace but they didn’t know about this well-known trademark.
Enrico Schaefer: Right, from 1974.
Sandra Franklin: Yeah. Or even just other more recent well-known trademarks. That doesn’t fly either, because we know their savvy internet business people, and we expect them to know what trademarks their utilizing.
Enrico Schaefer: What would be obvious to most people.
Sandra Franklin: We know they are.
Enrico Schaefer: And for those bulk domainers who just have software doing it and they never “see” the domains they register, that’s fine as a business model if that’s the way you want to go, but it doesn’t help you under the UDRP and it doesn’t help you under the ACPA that you didn’t know what was in your portfolio, because there is certainly precedent out there that places some obligation to know certain things. It’s not like Colonel Klink, “I see nothing.” It doesn’t work very well in this case.
Sandra Franklin: There’s an almost exact corollary to knowing what trademarks are out there to. They may say, “Well, I don’t have time to go and check.” You know what, think of a way to do it. You are charged. That’s the UDRP precedent. You’re charged with constructive notice.
Enrico Schaefer: That’s again I think is such a great point and such a great take away from this interview is some of these things that we hear again and again and again as sort of push back against some of the decisions, that’s great and all. And everyone’s entitled to their opinion, and maybe it is right, and maybe it is wrong. The reality is the reality. If you’re in this business, if you’re in this space, it doesn’t do you any good to ignore the reality, to ignore the precedent or wish that it was different. You need to adapt your business model to what is clearly at this point established precedent under the UDRP, under the policy, and under the more severe ACPA, which you could get hit with up to $100,000 in penalty damages plus attorneys’ fees if someone decides to come after you on that.
Sandra Franklin: Yes.
Enrico Schaefer: If someone wanted to find you online, Sandra, how would they do that? What’s your website?
Sandra Franklin: You can find me at technologyarbitration.com, and that’s primarily for my other intellectual property related arbitration work.
Enrico Schaefer: So what else do you do besides UDRP arbitrations? What are some examples?
Sandra Franklin: I do patent infringement arbitration, which is primarily the other area. I have done some mediation in the area of technology development through joint ventures with overseas companies and some US laboratories. It’s really anything to do with the process of commercializing intellectual property, patents, copyrights, new ideas. There are often disputes that arise in the work out of how the technology was supposed to be developed and who was owning which piece of it. As that progresses through the commercialization process, a lot of issues come up. I think parties are happy to have someone that has both the intellectual property background, as well as more than 20 years of arbitration experience.
Enrico Schaefer: Thanks for being here today.
Sandra Franklin: Thank you.
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