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NAF Embarrassment with Sloppy and Inaccurate Cut-and-Paste decision in dispute

2013 November 25
by Nat

The sloppy cut-and-paste decision in the UDRP demonstrates once again the National Arbitration Forum’s (NAF) shoddy practices and some panelists’ lack of respect for the Reverse Domain Name Hijacking (RDNH) finding.  The decision also highlights the poor implementation and oversight of the UDRP policy, the policy that controls how a domain owner loses the rights to his or her domain name.

In the dispute, the Complainant tried to use the UDRP to steal the domain name, despite the fact that the domain was registered a decade prior to the Complainant’s trademark registration date and despite the domain owner’s 13 years of use of the domain in its descriptive sense.  The panelist rightly denied the complaint.

But why didn’t the panelist find Reverse Domain Name Hijacking?  This case seems like an obvious example of RDNH.  RDNH has been found in dozens of similar situations where the domain predated the trademark rights, where there was clear legitimate use and where there was no evidence of bad faith.  Why wasn’t RDNH found in this case?

In the section on RDNH, we’ll see that the panelist copied and pasted irrelevant nonsense that demonstrates the lack of integrity with which the panelist discharged his responsibilities.   NAF is likely complicit in this, as the language used was apparently boilerplate language provided to the panelist by NAF.

Let’s look at the panel’s discussion of RDNH that led him to conclude against making an RDNH finding.  We’ll examine it one piece at a time.  It starts-

As the Panel finds that Complainant has satisfied Policy ¶ 4(a)(i), the Panel finds that Complainant has not engaged in reverse domain name hijacking.

Under 4(a)(i), the Complainant has to demonstrate that:  “(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights”.  As explained at the recent WIPO Workshop in Geneva, this first test is treated as whether a Complainant has met the minimum standing to bring a dispute and is interpreted very generously by most panelists.

For instance, was found confusingly similar to Hertz:  “to this Panel’s eye and ear, HZCAR is similar to ‘Hertz Car’ and thus to Complainant’s HERTZ trademark. Complainant has on balance established this Policy element.” was found confusingly similar to MADD:  “the Panel finds that Respondent’s <> domain name is confusingly similar to Complainant’s MADD mark pursuant to Policy ¶ 4(a)(i).” was found to be confusingly similar to Universal:  “Turning to the central question posed by Policy ¶ 4(a)(i), we conclude from a re-view of the record that the <> domain name is, as alleged in the Complaint, an amalgamation of a common abbreviation of Complainant’s UNIVERSAL trademark and the term “protein,” which describes an aspect of Complainant’s business, plus the generic Top Level Domain (“gTLD”) “.com.”   The combination is confusingly similar to Complainant’s mark.” was found to be confusingly similar to Tata: “One might think, nevertheless, that the inclusion of the word “bodacious” in the domain name registered by the Respondent, taken together with the addition of the letter ‘s” to TATA, could create a sufficient distinction, for trademark purposes, between the Complainant’s TM TATA, on the one hand, and the Respondent’s Domain Name on the other. Such a contention, however, is untenable in the view of the Panel, by virtue of the very high level of goodwill that both TATA and TATAS have acquired.”

As these cases demonstrate, the criterion in 4(a)(i) presents such a meaninglessly low hurdle to a Complainant that even an ant could jump over it, thanks to many panelists’ eagerness to help lower the bar.

The view that meeting the criterion in 4(a)(i) is sufficient to prevent a finding of RDNH is a minority view.  Indeed 95%+ of RDNH decisions are found in cases where 4(a)(i) of the policy has been satisfied.  The panels in these cases will find RDNH because the Complainant should have realized that its complaint was fatally flawed due to any one or all of the following factors- a) the domain name proceeded the trademark rights, b) the Complainant was aware of the domain owner’s legitimate rights to the domain, or c) there was no evidence of bad faith.  Any one of these factors is sufficient for a finding of RDNH.  In the case, all three are present.

In cases such as where the domain is an exact match for a generic term, and the trademark is also on a generic term, then the fact that the trademark is exactly the same as the domain makes the Complainant’s bad faith worse, rather than lessens it, as it means that the Complainant is trying to use the UDRP to steal a domain based on a word that has substantial inherent value.

We move on to the next line in the panelist’s discussion of RDNH-

See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”);

Here the panelist cites a case where the domain was TRANSFERRED as a reason not find RDNH.  This is the most obvious goof in the decision.  The WWF case should only be cited in cases where the Complainant has “satisfied all of the elements of the Policy”, in other words, when the Complainant won.  Here the complainant lost, and lost badly.   The panelist apparently just cut and pasted language provided by the NAF, without bothering to check that it was citing a case where the findings contradicted the findings in the present case.

Here’s the next case cited by the panel as relevant to its finding against RDNH-

see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).

This case is over the domain ““.  As described by the panel in the case, the facts in this care are:

Both the Respondent and the Complainant have registered  trademarks that correspond to  the disputed domain name.

There has been a prior business relationship between the parties.

The parties were involved in litigation over conflicting trademark rights prior to institution of this proceeding.


The fact pattern in is quite unusual and would rarely apply to the facts in a UDRP dispute, and they certainly have no relevance at all for the dispute.

Why did the panelist in cite a 13-year old World Wrestling Federation case  and a 10-year-old Gallup Inc. case as precedent for not finding RDNH in the dispute when neither had any relevance to the dispute?  Did the panelist research thirteen years of UDRP disputes and settle on these two cases as the ones that were most on point?  No, the answer is that the WWF case citation and the Gallup case citation are boilerplate language that has been cited in hundreds of NAF and WIPO decisions going back over a decade.

For instance, let’s look at what the decision from 2011 to see why the panel declined to make an RDNH finding:

Complainant has satisfied Policy ¶ 4(a)(i), accordingly, the Panel finds that Complainant has not engaged in reverse domain name hijacking.  See World Wrestling Fed’n Entm’t, Inc. v. Ringside Collectibles, D2000-1306 (WIPO Jan. 24, 2001) (“Because Complainant has satisfied [all of] the elements of the Policy, Respondent’s allegation of reverse domain name hijacking must fail”); see also Gallup, Inc. v. PC+s.p.r.l., FA 190461 (Nat. Arb. Forum Dec. 2, 2003) (finding no reverse domain name hijacking where complainant prevailed on the “identical/confusingly similar” prong of the Policy).

Hmmm.  Nearly a word-for-word copy of the language in the decision.  And once again an entirely wrong-headed citation of the WWF case as, in the dispute, the respondent prevailed in the UDRP dispute.  The Gallup case citation is similarly irrelevant and misguided.

Panelist Neil Brown shredded the rationale for using this boilerplate language and for citing the WWF and Gallup cases in disputes where the Respondent prevails in his dissent in the decision, where he argued that a RDNH finding was justified-

It is true that Complainant has succeeded on one element of the Policy, namely that the disputed domain name is identical to the registered trademark. It is sometimes said on the basis of World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles(supra) and  Gallup, Inc. v. PC+s.p.r.l., (supra) that there should not be a finding of reverse domain name hijacking when the Complainant has been partly successful. But in the former case, Complainant had succeeded on all three elements, including a finding against Respondent of bad faith registration and use; it would have been inconceivable that a finding of reverse domain name hijacking could then have been made against Complainant. In the latter case, the trademark of the famous company had been registered 18 years before the domain name and there was a real dispute between the parties that justified the filing of the Complaint. None of those features are present in the instant case, which is essentially one where there was no reasonable ground for Complainant’s making the claim or alleging bad faith.

In any event, Complainant has succeeded on the first element only in the most notional way and on an issue that it did not really advance. Its allegation was not that the domain name was identical to the trademark; its argument was solely that the domain name was confusingly similar to the trademark, which it was not, for no reasonable bystander would assume that the ‘shoeland’ of the domain name was invoking the Shoe Land of Complainant, confined as it was to two stores in one city and with no presence of the internet. Accordingly, Complainant has not succeeded in any substantial sense on any of the issues in this proceeding

Those considerations show that within the meaning of Paragraph 15(e) of the Rules, the Complaint was brought in bad faith in an attempt at Reverse Domain Name Hijacking.


It is bizarre that two cases from the earliest days of the internet continue to be precedents of choice tens of thousands of cases and thirteen years later.  It is even more bizarre when the case presents an extremely rare combination of factors that has no relevance for 99% of UDRP cases.  It is a travesty that the WWF case is cited as a reason against finding RDNH in disputes where the respondent prevails.

What lessons can we learn from the case?-

1.  Some panelists don’t even bother reading the decisions they cite in their cases.

2.  When the WWF and Gallup cases are cited when the transfer is denied, it means that the Panel did not give serious consideration to a finding of Reverse Domain Name Hijacking, preferring to use (inappropriate) ancient placeholder language rather than approaching the issue of RDNH with an open mind and a fresh perspective.

3.  It is time to retire the benchmark language being recycled over and over again for years past the point of absurdity, especially since the language isn’t even relevant to the cases at hand.

4.  This case continues the sad pattern of NAF issuing embarrassing copy and paste decisions.  This is in part why the ICA has called for an investigation of the NAF.

5.  Domain owners’ rights to their dot-com, dot-net and dot-org domains are only as secure as the quality of implementation of the UDRP.  Cases such as show the disdain with which the UDRP is treated by some of those entrusted with its implementation.


Thanks to for the help in researching this post.

8 Responses leave one →
  1. November 25, 2013

    Well researched, Nat. Be sure to save a copy of the decision, because not only does NAF have a history of copying/pasting nonsense, they also have a history of revising past decisions, without any audit trail, as I documented:

    • Nat permalink*
      November 25, 2013

      George, thanks for the comment and the retweet. Thanks also for the link to your post on CircleID. Your post and Keating’s comment on it highlight why ICANN needs to take seriously its responsibility to oversee the UDRP program and to apply standards on the UDRP providers. I’ve acted on your suggestion and have saved a copy of the decision.

  2. Rob M permalink
    November 26, 2013

    Nat, I don’t believe for one second that these panelists are lazy or sloppy, but rather they only hope you believe that is the case. They certainly don’t want to bite the hand that feeds them, setting that precedent would only slow future business for themselves. It is obvious that if they were forced to assess the facts logically that there could be no conclusion other than RDNH. So how do they avoid being forced to make that uncomfortable RDNH decision? Easy peasy. Just cut and paste any old dismissive language that might fly so that they just LOOK lazy and sloppy. After all, looking a bit sloppy sounds much less offensive than showing a willful contempt for the UDRP process, right?? They know exactly what they are doing and they know there’s not a damn thing anyone can do about it. Thanks to the complete lack of accountability that panelists have, they will just continue to pretend to be “sloppy” with these RDNH decisions. There is zero incentive for a panelist to do anything different and the precedent of pretending to be “sloppy” is so well established that it may as well be pre-printed on the UDRP decision forms.

    • Nat permalink*
      November 26, 2013

      Rob, I agree that there is little incentive for a panelist to make an RDNH finding but I also think there is little downside for them if they do. All we can do is speculate. My speculation is that when this panelist decided against making an RDNH finding that he looked at the boilerplate language provided by NAF for various situations and copied and pasted the language provided by NAF for use when a finding of RDNH is rejected. Unfortunately neither NAF nor the panelist bothered to check whether this stale boilerplate language had any relevance to the dispute. Maybe what actually happened is quite different, but this is what makes the most sense to me.

  3. Philip Corwin permalink
    November 26, 2013

    Excellent post, Nat. Appreciate the hard work you obviously put into documenting this latest example of the lack of quality control at NAF.

    The scary thing is that NAF is the better of the two arbitration providers selected by ICANN to do URS proceedings. As I told the ICANN Board last Thursday in Buenos Aires — — we’ll be watching to see how those decisions proceed, and whether URS is administered as just a narrow supplement to the UDRP or becomes a quick and dirty cut-rate alternative.

    • Nat permalink*
      November 26, 2013

      I hope that if ICANN can ever extricate themselves from the new gTLD quagmire that they will finally devote some attention to overseeing the UDRP process.

      As long as I’m engaging in wishful thinking, I’d also hope that they’d make a priority of ensuring that the implementation is uniform across UDR providers and of removing the pro-complainant bias from the process.

      But wishful thinking isn’t going to make that happen, which is why I am glad that you are engaging with ICANN to ensure that domain owners have a voice in these issues.

  4. John Berryhill permalink
    November 26, 2013

    The crazy thing about saying “It wasn’t trademark mis-use, because the complainant had a trademark” is that it sounds like “It can’t be armed robbery, because the defendant had a gun”.

    Yes, folks, in order to mis-use a trademark, you have to have one.

    • Nat permalink*
      November 26, 2013


      That’s a brilliant way to make the point intuitively clear.

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