withdrawn UDRP - WIPO sucks !!!

[DaddyHalbucks]

Last year I got hit with a UDRP on a very generic acronym domain. Approximately a dozen organizations around the world were using the initials. There was no exclusive use. There was no registered trademark.

The complainant hired a fellow WIPO arbitrator as their attorney, and the Australian panelist had a real attitude and made many errors.

In the end, the complainant was the sweet little charity, and I was the evil American cybersquatter. I lost the UDRP.

So, I filed a pro se lawsuit to vacate it, but proper service was not made. So, I hired a lawyer to re-file the lawsuit, but before re-filing, we settled.

The terms of the settlement were that the complainant would withdraw the UDRP, and I got a letter to that effect from the complainant saying they withdrew the UDRP.

The problem is that WIPO has not honored the agreement, and the awful erroneous UDRP is still published on the web.

How to resolved this and force WIPO to correct its records?

 

[Drewbert]

Complain to ICANN?

(no this was not a serious suggestion).

 

[timechange.com]

No, file a lawsuit. You went thus far - essentially winning the case - and you'll stop now? The WIPO must amend their records to reflect the true status of the decision; anything less is hurting you in several ways.

 

[jberryhill]

How does any agreement between you and the complainant have any effect on UDRP Rule 16(b):

"(b) Except if the Panel determines otherwise (see Paragraph 4(j) of the Policy), the Provider shall publish the full decision and the date of its implementation on a publicly accessible web site. "

Did the Panel determine that the decision should not be published? No. End of story.

Even UDRP decisions, such as freebie.com, cello.com, and canada.biz, which have been reversed by a court, remain on the providers' websites as required by the terms of the UDRP.

"The problem is that WIPO has not honored the agreement [...]"

You had some kind of an agreement with WIPO? No, you didn't. You had an agreement with the complainant. However, at this point in time, neither you, the complainant, or both of you together, exercise any control over what WIPO wants to publish on their website. Did anyone bother to ask WIPO if they would take the decision down if the two parties agreed? You paid a lawyer for this settlement?

But let's back up a moment, to "a very generic acronym domain". You really need to get a handle on what the term "generic" means in trademark law. "NDCS" is not "generic" for anything.

"No, file a lawsuit."

Against whom, pray tell? Against WIPO - an international intergovernmental organization which can claim diplomatic immunity? Or against WIPO - the dispute resolution provider whom you indemnified against any action in your domain name registration agreement?

But, assuming there is some way to sue WIPO, what is the claim against them? They won't take down stuff from their website. So what? Are they under some kind of obligation to take the decision down?

Or against the complainant - who has no control over what WIPO puts on their website?

This I gotta hear....

 

[dtobias]

John Berryhill hit the nail on the head with this one...

I, for one, like the fact that all UDRP decisions, whether good, bad, or ugly, whether or not reversed later by a court or an agreement, are on the public record for all of us to study and learn from. The only exception are ones withdrawn before a decision was reached, but that does not apply in this case, where the settlement came much too late to affect the already-published decision.

Perhaps WIPO (and other resolution providers) ought to add addendum sections to posted decisions to note subsequent reversals by court or by agreement, but they shouldn't alter or remove the decision itself.

 

[jberryhill]

"they shouldn't alter or remove the decision itself."

I believe under appropriate circumstances, they might consider it. But the facts would have to be better than one party's unilateral assumption that the decision would disappear in the face of the dispute resolution provider's contractual obligation to ICANN to maintain such decisions on a publically-accessible website.

 

[DaddyHalbucks]

NDCS is generic because it means anything anyone wants it to mean. It means numerous things to numerous organizations around the world, from North Dakota to the UK. It is not famous, it is not distinctive, and it does not have secondary meaning.

WIPO breached its basic agreement to provide a neutral forum. It allowed the complainant to hire another WIPO arbitrator as its attorney.

WIPO further breached its role as a mediator by not wihtdrawing the published UDRP. The original dispute was between the parties, not between us and WIPO, and if we settled, that should be the end of the story.

How do we "learn" from bad UDRPs that remain on the books with no corresponding annotation to let us know that they were faulty? Why should faulty reasoning and erroneous facts remain glorified?

The UDRP damages my reputation and my business. I am not a cybersquatter, and I was prepared to go to court to prove that.

 

[dtobias]

"Generic" doesn't mean "anything anyone wants it to mean" (notwithstanding Humpty Dumpty saying that a word means exactly what he chooses it to mean, neither more nor less, in "Through the Looking Glass" by Lewis Carroll). Generic, according to the American Heritage Dictionary (4th edition), means "Relating to or descriptive of an entire group or class." What group or class does "NDCS" describe or relate to?

 

[DaddyHalbucks]

Exactly: broad groups or classes. A group can include many different sub-groups. It means whatever anyone wants it to mean.

Yes, 'generic' and 'descriptive' are equivalents! Good quote from the American Heritage. I agree. Thanks. There is a strong connection since 'generic' also means 'public domain.'

This is the exact opposite of a famous distinctive trademark such as COCA-COLA which means only one thing..

 

[DaddyHalbucks]

The trademark laws exist to prevent consumer confusion by allowing proprietary use of unique marks to identity the source of goods or services.

Generic and descriptive terms are not compatible with this principle, and therefore are not typically allowed for protection.

 

[Drewbert]

I think the UDRP decisions would be a lot more interesting to read, if you could read the full complaint and response as well.

That would shine a new light on things.

 

[jberryhill]

Hal,

Whatever your personal definitions of the terms "generic", "descriptive", "suggestive", "arbitrary", and "fanciful" may be, these words have very specific meanings in the context of trademark law which differ from your personal definitions. And, no, you will not get the legal meanings of these words out of a standard dictionary. Suffice it to say, trademark lawyers agree in the main on what these words mean, and NDCS is not the generic term for any category of goods or services. It has no definite generic meaning whatsoever.

I am not a WIPO panelist, and if I had an argument to the effect that NDCS is "generic" in front of me, all I would do is shake my head and think, "this guy should have hired someone who knows something about trademarks".

"How do we "learn" from bad UDRPs that remain on the books with no corresponding annotation to let us know that they were faulty? Why should faulty reasoning and erroneous facts remain glorified?"

Are you saying that when an appeals court overturns a lower court decision, that the lower court decision is magically expunged from existence? That's just plain goofy. Hey, Plessey v. Ferguson is still on the books. So is the trial of Christ.

"WIPO breached its basic agreement to provide a neutral forum. It allowed the complainant to hire another WIPO arbitrator as its attorney."

How does that affect neutrality? Gerry Davis is a WIPO panelist, and he represents quite a few respondents. So what?

Delta is a generic term for a landmass formed by silt deposits at the mouth of a river. It most certainly is distinctive and has secondary meaning as an airline and as a faucet company. It most certainly does not need to have a "unique" sense as a trademark.

 

[DaddyHalbucks]

John,

Thanks.

My definitions are the standard definitions. If not, the meanings are so close that they are equivalent for all practical purposes.

Sure it is one big shade of gray, but on the white end of the scale are the famous/ distinctive/ registered trademarks that are exclusive to one owner.

At the other end of the scale are descriptive/ generic/ common/ unregistered --and even obscure-- terms which may be used by a multitude of parties with no great brand equity in the minds of consumers.

After Enron and Tyco, etc.. ethics is back in vogue. If Gerry Davis is wearing two hats at once, I think that all of his arbitration decisions are suspect, and I would think that a respondent could challenge those decisions in court.

WIPO is a quasi-judicial body, and it needs to take the high road to maintain its integrity. Right now, it is a joke.

Delta Faucets and Delta Airlines are both obvious famous registered trademarks, and have large consumer awareness. I believe this is a prime example of "concurrent use."

In order to take advantage of a trademark, you need to be diligent about protecting it.

Just because something is an acronym for the name of a larger organization means nothing in trademark law. Trademarks must be descriptive adjectives in describing the origin of goods and services to have validity, ie., Kleenex tissues, Exxon gasoline, etc..

 

[ShaunP]

DCC ... are you ever wrong? Have you ever admitted being wrong? No matter how many people tell you something ... it's never good enough.

Friggin amazing!

Even funnier is that people actually use their valuable time to give you advice... what a waste of their time.

Shaun

 

[DaddyHalbucks]

What a shame that so many people can effectively use reason and logic --while others can only lash out with personal attacks.

 

[ShaunP]

Originally posted by DotComCowboy
What a shame that so many people can effectively use reason and logic --while others can only lash out with personal attacks.

DCC ... that was not a personal attack. It was an observation from seeing your discussions over the last couple of years. But hey, if the "everyone else is wrong but me" thing works for you... go for it.

Shaun

 

[jberryhill]

IBM computers, NCR cash registers, MCI long distance services... you are saying that acronyms can't be trademarks? Or that all trademarks need to be famous?

It sucks to lose, but nobody wins 'em all.

I don't understand the ethics point you are making at all.

Compare these acronym cases:

http://www.arbforum.com/domains/decisions/109364.htm

http://www.arbforum.com/domains/decisions/125751.htm

with these acronym cases:

http://www.arbforum.com/domains/decisions/98813.htm

http://arbiter.wipo.int/domains/decisions/html/2000/d2000-1298.html

In the first two, I represented the Complainant. In the second two, I represented the Respondent. There is big difference between these two groups of cases, though.

 

[DaddyHalbucks]

Of course acronyms can be famous! But in general they are, by their very nature, less distinctive than other marks.

Unless they are famous and/ or exclusive --they can mean different things to different people.

The ethics point is that arbitrators should be beyond reproach. There should be no appearance of impropriety.

WIPO promises a "neutral forum" and it DOES NOT deliver on that promise when arbitrators are double dipping by playing simultaneous roles as both panelists and party attorneys.

 

[DomainGoon]

Originally posted by Drewbert
I think the UDRP decisions would be a lot more interesting to read, if you could read the full complaint and response as well.

That would shine a new light on things.

If you were one of the parties filing, you probably wouldn't want everyone to be able to read everything you sent to arbitration. Sometimes it might include financial data, project budgets, various legal documents, contracts, etc.

 

[dtobias]

A famous acronym conflict is that between the World Wildlife Fund and the World Wrestling Federation over the WWF initials, which the wildlife fund won because the wrestling federation had signed a restrictive agreement years ago... a really stupid thing for them to do, because as a strict trademark case I don't see how either entity would have a case against the other as their fields are so different. Anyway, one was nonprofit and one was commercial, so they could have coexisted fine as wwf.org and wwf.com, if the lawyer-types weren't so desirous of having their own side grab all the marbles.

Another acronym that's won a number of UDRP cases against infringing domains is HP, for Hewlett-Packard; some of the challenged parties made claims to be using the initials to stand for "Home Page", but failed to provide any evidence of legitimate use in that vein. It would be interesting to see what would happen if HP went after one of several Harry Potter-related sites using those initials -- like hp2003.org.