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

The sloppy cut-and-paste decision in the Calibers.com 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 Calibers.com dispute, the Complainant tried to use the UDRP to steal the calibers.com 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, hzcar.com 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.”

MaddHattEntertainment.com was found confusingly similar to MADD:  “the Panel finds that Respondent’s <maddhattentertainment.com> domain name is confusingly similar to Complainant’s MADD mark pursuant to Policy ¶ 4(a)(i).”

Uniprotein.com 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 <uniprotein.com> 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.”

Bodacious-tatas.com 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 calibers.com case, all three are present.

In cases such as calibers.com 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 Calibers.com 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 “gallupeurope.com“.  As described by the panel in the gallupeurope.com 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 GallupEurope.com is quite unusual and would rarely apply to the facts in a UDRP dispute, and they certainly have no relevance at all for the calibers.com dispute.

Why did the panelist in calibers.com 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 calibers.com dispute when neither had any relevance to the calibers.com 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 diversden.com 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 calibers.com decision.  And once again an entirely wrong-headed citation of the WWF case as, in the calibers.com dispute, the respondent prevailed in the DiversDen.com 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 Shoeland.com 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 GallupEurope.com 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 calibers.com 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 calibers.com show the disdain with which the UDRP is treated by some of those entrusted with its implementation.

Thanks to UDRPSearch.com for the help in researching this post.