A pretty sleazy attempted RDNH

[dvdrip]

Well you go directly to element 3 and then decide element 2 based on element 3.
If you are Berryhill then you satisfy element 2. If a panelist says otherwise then he is not all that fair.

That is why for a UDRP complaint to be satisfied, it needs all 3 elements satisfied. If elements 1 and are satisfied and element 2 is not, then that is a clear court case. Not a UDRP. If panelists believe that they are above any law and have a different opinion on what UDRP should be, then again they are not as fair as they think.

I'm talking about a fair panelist too. The overarching issue is "legitimate rights". Being "commonly known by" is one defense.

But let's say that I register Berryhill.tld, and use the domain name for nothing relating to me, but to advertise my friend's taco restaurant - Jim's Awful Infringing Tacos. Jim competes directly with http://www.berryhillbajagrill.com/

I could see a "fair minded" panelist taking the position that I am not commonly known as "Berryhill", but I am commonly known as "John Berryhill", "John", and a number of other things not fit for publication; and then further deciding that the infringing use is not "legitimate".

This may come as a shock, but even fairminded people can disagree on the consequences of the same facts. Here the "unfair" panelist is reaching for a result which he believes is "fair" in a broader sense, and is narrowly interpreting the rule.

 

[jberryhill]

Well you go directly to element 3 and then decide element 2 based on element 3.
If you are Berryhill then you satisfy element 2. If a panelist says otherwise then he is not all that fair.

Am I "commonly known as" Berryhill?

None of my friends, family, clients or colleagues comes up to me and says, "Hi, Berryhill"

I understand how the UDRP works quite well. I've seen a couple of them, you know.

The point is that the word "fair" is an interesting word. I'm always fascinated by discussions which revolve around the word "fair".

Is it "fair" for me to use Berryhill.tld to abuse the rights of the TM owner? No, it is not. I'm assuming we agree on that.

The way even courts often deal with a larger "unfairness" drives how broadly or how narrowly they will interpret a rule. One can argue that I am not commonly known as "Berryhill", and thus move right through element 2 of the UDRP. The language of the rule includes "commonly known as", and while Berryhill is my last name, it is also true in some sense that I am not "commonly known as" Berryhill.

Some take the view that written rules cannot address all circumstances, and that a larger "fairness" matters. This was the debate between Jesus and the Pharisees concerning field gleaning on the Sabbath - "Man is not made to serve the law. The law is made to serve man". There are varying degrees to which people will take that reasoning, but questioning the motives of those who disagree with you is ultimately unproductive.

To put it another way, and staying focused on the word "fair"...

What you are saying is that it is "fair" for a panelist to broadly interpret "commonly known as", such that I can use Berryhill.tld to deliberately do something wrong, because my last name is "Berryhill".

Another position would be that it is "fair" for the panel to apply the rule in a way that brings an end to the unfairness in which I am engaging, and do not believe it is "fair" to be bound by the rule in a particular way that allows an unjust result.

The difference lies in how you approach rules. Rules are made by people, and no rule is perfect. It is a perfectly fine definition of "fair" to say that it is defined by blind adherence to rules, and that is the Pharisaical position in the argument.

 

[dvdrip]

Well if YOU are saying that you are not known as Berryhill then I rest my case.
And if the complainant has proof from your friends that you are commonly know as "court case loser" (xasodikis in greek) then I also think that you deserve to lose this.
Have you actually seen what you describe in a UDRP decision?

Also I still believe that what you describe belongs to a court of law and not a UDRP. And that is fair in MY eyes.

 

[jberryhill]

Well if YOU are saying that you are not known as Berryhill then I rest my case.

I would of course argue otherwise. My point is that the rule can be literally interpreted to result in a finding that I am not "commonly known as" Berryhill.

Most likely, a panel would agree with your position.

But arguments seldom consist of one person who is right, and another person who is wrong, and "fair" depends on how large a box you are willing to draw around it.

Have you actually seen what you describe in a UDRP decision?

Oh, heck yes. For example, the "trademark" criterion has been applied quite broadly in some cases that were hi-jack cases, and which also didn't neatly fit into the UDRP considerations. Some panelists will reject cases which are really hi-jacks, if there isn't convincing proof of a trademark. Other panelists feel compelled not to let a thief get away with a crime. Again, it comes down to how legalistic one's perception of "fair" is.

Laws and rules are rough cut, one-size-fits-all type things. Over a large sample space, the intent is to approximate what is usually "fair". But some people make the mistake that laws and rules define what is "fair" in any particular situation, and thus mistake laws and rules as "fairness" itself.

Here, take a look at this one.

The domain name is familytravel.com...

http://domains.adrforum.com/domains/decisions/822980.htm

Complainant used the disputed domain name and FAMILYTRAVEL.COM mark since that time in connection with its online family travel business, until Respondent’s unauthorized acquisition of the <familytravel.com> domain name.

The Panel finds that Complainant has acquired sufficient common law rights in the FAMILYTRAVEL.COM mark through its extensive and continuous Internet presence since 2001. Complainant has used its mark to create an online family travel business.

The decision went on to find lack of legitimate rights and bad faith because the name was hi-jacked.

But, really, the finding on the TM criterion is bullshit. The Panel itself says that FamilyTravel.com was used in a "family travel" business. Well, duh... if you can't describe the type of business without using the term itself, then you are very close to the generic end of the descriptiveness field.

The trademark finding here is really unsupportable. But since it was a default, and the name was stolen, the panelist let it slide.

That's precisely the thing I'm talking about - narrowing or expanding one's interpretation of a rule in response to the overall "fairness" of obtaining a particular result.

It does not make anyone a "bad person" because everyone does it to some degree all of the time.

 

[dvdrip]

Well that is not what I was looking for. I was looking for a last name domain name owned by a person with that last name.
Also applying UDRP to stolen domains is a travesty of the UDRP. Clearly Hon. Ralph Yachnin thinks he is still in court.
I didn't expect better from NAF. If you know that the Respondent will not reply, you can get any domain you like using NAF. You don't even need a trademark as we see here.

 

[jberryhill]

Well that is not what I was looking for. I was looking for a last name domain name owned by a person with that last name.

You want fries with that?

 

[dvdrip]

And some onion rings too.

Well what you were describing seems like this case:
http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1003.html

Both complainant and respondent had hotels named kivotos in Greece. The domain had an actual live website with photos, prices etc. You name it. Panelist ignored that and punished the default.
Respondent was in high season and when he realized what a UDRP was, he had lost the domain. They are at court now. Website is still live but redirects to another domain name too.

But both yours and mine are defaults so it just does really proves what you are saying.

You want fries with that?

 

[David G]

Am I "commonly known as" Berryhill? None of my friends, family, clients or colleagues comes up to me and says, "Hi, Berryhill"
.....

But if the name was JohnBerryhill.tld you are obviously commonly known by that so is this discussion only relevant to last names or first names and not applicable to full names?

P.S. Who said this anyway? "But when he calls most domainers morons and stupid, when he calls most lawyers(including you) idiots and dumb, when he calls 2 of the most sought after "Respondent" panelists "both are absolute disgraces to the UDRP process."

 

[jberryhill]

But if the name was JohnBerryhill.tld you are obviously commonly known by that so is this discussion only relevant to last names or first names and not applicable to full names?

The discussion is more about how the totality of circumstances in a given situation will influence the extent to which rules are interpreted broadly or narrowly. It is unlikely I would lose the berryhill.tld example. I am merely pointing out an interpretation which a panelist could reasonably apply, if there were other facts indicating that a ruling against me would be "fair" or "just" in some larger sense.

Without going into a much larger digression about legal philosophy generally, if a UDRP were a court proceeding, instead of an "administrative process", it would structurally be a proceeding in equity (which has a particular meaning in law), in which the rules of decision are not a mechanical checklist. The whole notions of "legitimate rights" and "bad faith" are derived from the arena of equity. So, if we really go whole hog in applying equitable procedure, an equitable defense such as "legitimate rights" is barred in my example by the doctrine of "unclean hands" - i.e. I cannot claim "legitimate rights" as a defense while I am engaged in trademark infringement.

But, no, don't confuse my example with what does or should happen in a UDRP. A defense of "it's my last name" is overwhelmingly likely to win under "commonly known as", regardless of what my friends call me.

Indeed, the "commonly known as" defense was stretched pretty much to the breaking point in this case, decided in favor of the respondent:

http://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0105.html

The Respondent asserts that he and his younger brother have long been known by the nicknames "muscle" and "fitness". The Respondent submitted a "sworn declaration" of Mr. Dong Hun Yu stating that he was the originator of those nicknames and that the Respondent and his brother have been commonly and widely known by those names. Mr. Dong also stated that he knew the brothers registered their nickname as a domain name to make a family website.

Yeah, I'm sure everybody in Korea has English nicknames....

But, if you have to know, people usually just call me "Microsoft", and my two sons answer to "Coca-Cola" and "Budweiser".

 

[Gerry]

Don Ho Cha of KumChunKo Shihungdong Han Yang Apartment.

I can see where the words muscle and fitness come into play.

I mean, look. He can not go by his real name, Don Ho. :snicker:

 

[marcorandazza]

I disagree.

In post-UDRP correspondence with the other side, I have used RDNH holdings as evidence of abuse of process, tortious interference and the action provided in 15 USC 1114(2)(d)(iv)-(v), and have settled these claims in exchange for payment, while keeping the domain name.

RDNH has no inherent value in the UDRP, but has evidentiary value elsewhere.

Well, John, honestly I think that they were probably persuaded that you would be able to prove the elements of 15 USC 1114(2)(d)(iv)-(v), since the RDNH finding in the UDRP decision is not binding on the court in which you file that claim. I can see wielding it as a psychological tool -- but I'm not aware of any cases in which a judge said "since the UDRP panel found RDNH, I'm going to take that as evidence of x, y, or z."

However, I know that your mental case library has more volumes than mine. So, if you want to prove me wrong, I'd be delighted to retract from that statement.

You do know that Uzi Nissan was using the domain name for foreign car repairs before he became a "computer retailer", yes?

Have you ever considered buying a computer from his site? Try it.

I did not know this!

 

[jberryhill]

the RDNH finding in the UDRP decision is not binding on the court

In terms of an abuse of process / malicious prosecution claim, it is strong evidence, since it is a procedural finding made in the course of the procedure itself. Not to be confused with substantive findings on the TM claim, it is a UDRP decision saying that the UDRP was abused. As the UDRP is a contractual provision, that's pretty strong in the direction of tortious interference with contract (i.e. the domain registration contract).

I'm not aware of any cases in which a judge said "since the UDRP panel found RDNH, I'm going to take that as evidence of x, y, or z."

People settle, what can I say?

As far as the "inviting a supplement" thing goes, the NAF has done a good job of weeding out panelists who won't take an NAF supp. rule 7 filing. In fact, a prominent UDRP panelist resigned from the NAF roster in a dispute over that particular supplemental rule. I haven't seen a NAF panel not take anything, as long as the now $400 fee is paid, in ages.

What's interesting is that the NAF collects a fee for supplementals, but doesn't pay the panelists anything extra. However, because the NAF has sole authority over its roster of panelists, the panelists have figured out that it is unwise to upset the customers by not considering the supplements they have paid to submit. It's the quick route toward not getting many case assignments and/or getting off of the roster.

And, yes, I filed a response today where the basic chronology is:

- Domain registered in 2003, and development begun for use X

- Complainant starts using term in late 2007 for the term in association with unrelated services Y

- Complainant obtains TM registration in 2008

The Complainant omitted the pre-dispute correspondence in which it was told the Respondent wanted to use the domain name for the purpose shown at the web page and didn't want to sell, and that correspondence was conducted by an attorney who (a) didn't identify himself and (b) used a personal address to obscure the fact that he was even an attorney. Those acts (a) and (b) violate that state's "communication with unrepresented persons" rule, so in addition to the UDRP response, he's getting a discipline complaint.

But back on the first point, a UDRP finding on a TM issue is distinguishable from a UDRP finding that the UDRP process has been abused in bad faith. A UDRP panel is authoritative on the second question, but not the first.

To put it another way - a UDRP decision has no bearing on a determination of cybersquatting under the ACPA. However, the section of 1114 I cited relates specifically to conduct during a UDRP.

 

[marcorandazza]

In terms of an abuse of process / malicious prosecution claim, it is strong evidence, since it is a procedural finding made in the course of the procedure itself. Not to be confused with substantive findings on the TM claim, it is a UDRP decision saying that the UDRP was abused. As the UDRP is a contractual provision, that's pretty strong in the direction of tortious interference with contract (i.e. the domain registration contract).

I guess I could buy that on a hypothetical basis. I dunno. It doesn't seem to rise to the legal standard of "abuse of process," at least not under any state AOP. As far as a tortious interference with contract goes, I like the creativity of the theory. I'm not sure how far it would get, but I would like to see that one tested.

As far as the "inviting a supplement" thing goes, the NAF has done a good job of weeding out panelists who won't take an NAF supp. rule 7 filing. In fact, a prominent UDRP panelist resigned from the NAF roster in a dispute over that particular supplemental rule. I haven't seen a NAF panel not take anything, as long as the now $400 fee is paid, in ages.

Really? Which one?

What's interesting is that the NAF collects a fee for supplementals, but doesn't pay the panelists anything extra. However, because the NAF has sole authority over its roster of panelists, the panelists have figured out that it is unwise to upset the customers by not considering the supplements they have paid to submit. It's the quick route toward not getting many case assignments and/or getting off of the roster.

Another weakness in the UDRP, and another reason why NAF sucks. I think that supplemental filings ought to be allowed as a matter of due process if, and only if, they are responsive to issues in the Response -- not mere re-argument or addition of neglected theories.

But, I don't see how paying $400 gives you a "right" under the UDRP to have your supplemental filing considered. And, if a panelist is supposed to be unbiased, then they shouldn't be influenced like this.

Nevertheless, I doubt that there are too many UDRP panelists who are chomping at the bit to be selected often. It seems that on average, a UDRP panelist makes $75 or so per hour to handle a UDRP case - and they probably bill closer to $400 to $500 per hour in their "real" practice. The only panelists who likely care if they get selected a lot are the academics and the $30K a year public interest lawyers.

And, yes, I filed a response today where the basic chronology is:

- Domain registered in 2003, and development begun for use X

- Complainant starts using term in late 2007 for the term in association with unrelated services Y

- Complainant obtains TM registration in 2008

The Complainant omitted the pre-dispute correspondence in which it was told the Respondent wanted to use the domain name for the purpose shown at the web page and didn't want to sell, and that correspondence was conducted by an attorney who (a) didn't identify himself and (b) used a personal address to obscure the fact that he was even an attorney. Those acts (a) and (b) violate that state's "communication with unrepresented persons" rule, so in addition to the UDRP response, he's getting a discipline complaint.

Did it violate that state's rule because he didn't identify himself as an attorney? Neither of my states bars have a problem with that -- they just prohibit lawyers from communicating directly with parties who are represented by counsel.

I dunno John, I think that its kind of a douche maneuver to toss a discipline complaint out there on those facts. I think you get a *wee bit* too personally involved in your cases, and I think you ought to reconsider that decision. I've not known you to do anything unethical in your practice, nor have I heard others whisper that you have. Nevertheless, I'm sure that you occasionally (inadvertently) might put a foot out of bounds from time to time. The karma of that decision might come bite you in the ass.

But back on the first point, a UDRP finding on a TM issue is distinguishable from a UDRP finding that the UDRP process has been abused in bad faith. A UDRP panel is authoritative on the second question, but not the first.

To put it another way - a UDRP decision has no bearing on a determination of cybersquatting under the ACPA. However, the section of 1114 I cited relates specifically to conduct during a UDRP.

I see your point here: And again, I'd love to see it tested. However, I still think a court would be obligated to review the materials de novo. I doubt that the court would take it as any more conclusive than the panel's statement on the underlying TM issue.

 

[jberryhill]

Neither of my states bars have a problem with that -- they just prohibit lawyers from communicating directly with parties who are represented by counsel.

Ummm... no.

Assuming you are licensed in Florida, the code there, like every code, has a section on responsibilities in communicating with unrepresented persons.

The Florida Rule:

http://www.law.cornell.edu/ethics/fl/code/FL_CODE.HTM#Rule_4-4.3

Rule 4-4.3 Dealing with Unrepresented Person

(a) In dealing on behalf of a client with a person who is not represented by counsel, a lawyer shall not state or imply that the lawyer is disinterested. When the lawyer knows or reasonably should know that the unrepresented person misunderstands the lawyer's role in the matter, the lawyer shall make reasonable efforts to correct the misunderstanding.

That's pretty much the basic standard. Other states go further and require that a lawyer positively identify himself/herself as such when communicating with an unrepresented person on behalf of a client having an adverse interest.

Did it violate that state's rule because he didn't identify himself as an attorney?

Yes. For example, here is the authoritative commentary on the same rule in Pennsylvania:

http://www.pacode.com/secure/data/204/chapter81/s4.3.html

In order to avoid a misunderstanding, a lawyer will typically need to identify the lawyer’s client and, where necessary, explain that the client has interests opposed to those of the unrepresented person.

Lawyers are not PI's. As far as being "personally involved", would you care to cite the rule in your state about your obligations when you observe a rule violation?

I still think a court would be obligated to review the materials de novo

I said "evidence". You are confusing "evidence" with "proof".

Yes, there are lawyers who believe it is okay to actively conceal their identity, and the fact that they are a lawyer, in order to contact unrepresented persons for the purpose of obtaining damaging admissions in the course of representing a client. A lot of states expressly prohibit that.

 

[marcorandazza]

I think you might be misinterpreting that rule. Either that, or I am misunderstanding the facts surrounding this particular alleged violation.

I don't see this rule requiring an attorney to identify himself as such. If the lawyer used a personal email address and simply conducted an investigation, I see no violation.

The rule is supposed to protect the public from lawyers trying to state that they are merely giving a disinterested opinion on the law.

Go ahead and file the bar complaint, but I think that a) nothing will come of it, because it doesn't seem like this was a violation (but, I don't know which state the guy is licensed in -- so maybe it was under his state's rules), and b) I think that lawyers should at least consider that they will file no more than three bar complaints against other lawyers throughout their career. Naturally, this can't be a hard and fast rule, because you could wade into a field of sleazes one day. But, a good mentor to me told me to act as if I had only three chances to do this in my entire career. Then ask if the complaint would we worth it if it were one of three. If not, don't file it.

Now, if you see a rule violation in Fla., conducted by a Fla. attorney, you are obliged to report it. However, if you see a rule violation by an out of state attorney, unless the matter is a Florida matter, you are not so obliged.

But, back to whether the attorney SHOULD have also acted as an investigator - that is another story. I don't see this as an ethical problem, but I do see it as a potential litigation problem, since he would then need to be an attorney AND a potential witness. Accordingly, you could potentially get him disqualified from representing the client in this matter, or have him forego the fruits of his investigation.

 

[jberryhill]

I think that lawyers should at least consider that they will file no more than three bar complaints against other lawyers throughout their career

Well, good. This will be number two. Number one was an unauthorized practice complaint, with which the board agreed.

I'll save you for last.

 

[lordbyroniv]

Well, good. This will be number two. Number one was an unauthorized practice complaint, with which the board agreed.

I'll save you for last.

Geez, that aint right :nono:

Even in jest

 

[marcorandazza]

Well, good. This will be number two.

It seems awfully petty. In the absence of some additional facts or rules that are not yet posted, I'd say that this bar complaint has zero chance of doing anything except diminishing your own reputation.

But, you're a big boy. You can make your own decisions. Just remember that karma is a *****.

 

[jberryhill]

This stuff only gets funnier. So, today, the NAF nominated a partner in the complainant's counsel's firm to be presiding panelist.

My suggestion was perhaps that partner could avoid the conflict by pretending to be someone else.

You just can't make this stuff up.

 

[marcorandazza]

Ok, now THAT is screwed up beyond belief.

And neither NAF nor this guy see any problem with that?