Featured UDRP/DNF Attorneys Cage Match: Engineer.biz/info

[jberryhill]

I sincerely do not think the time stamp is valid.
I have seen many times that the automatic dates shown on most archived pages are way inaccurate.

It depends on the manner in which the page content is generated. Current active content can be pulled into an "old" version of the page. However for something done in simple HTML, like this:

http://web.archive.org/web/20010331175308/http://engineer.net/

it's pretty reliable.

 

[DNQuest.com]

Sounds like you're still arguing the case lol

 

[Brett Lewis]

John's client registered Engineer.biz and engineer.info several years after my client had registered Engineer.net. My client used Engineer.net as an organic job search site -- companies sign up to list jobs with him. His site receives 70,000 or so visitors per month. Among his clients are a number of fortune 500 companies that placed job listings on the site. He spent years building up the site from nothing. The panelist found that my client possessed trademark rights in Engineer, based on his extensive use of the ENGINEER mark in commerce.

In 2002, John's client registered Engineer.biz and Engineer.info. Within months, he purchased an advertising banner and job listing on my client's site. At the time, John's client did not post links to engineering jobs on his site. My client took no issue with his registration of the domain names, even though they were similar, precisely because they were not being used to compete against him. Hmmm. . . sounds like an evil, over-aggressive trademark holder.

Within a couple of months, my client noticed that John's client had changed his site to a job search site and was diverting some traffic to his site from a banner ad. My client asked John's client, by letter, to stop and accused him of infringing his trademarks and unfairly competing. John's client agreed to stop operating a competing Web site. He did so for three years. Then he started up again, operating a competing job listing service that included, verbatim, listings from my client's site. My client hired us to send another letter, which we did. John's client did not respond, so our client asked us to file papers.

We believed and alleged that John's client had scraped the job listings off of our client's site. John claimed that the listings were licensed from a third party, and that the content was made available by my client by RSS feed. The information made available by my client through RSS was not for re-use or sale, and was limited -- it did not contain entire job listings, as appeared on John's client's site -- meaning, that someone did scrape it and repackage it.

Why does it matter in the context of a UDRP if someone scrapes content off of your site and posts it on theirs? If you are trying to prove that there was bad faith, the fact that someone registered a domain name, identical to your trademark, and then scraped content from your site and posted it on theirs, would matter.

John also accused my client of lying about a number of other technical issues, including that his Web site was not used in a job search service prior to 2001, and cited archive.org records to prove it. Prior to 2001, my client hosted his site on a non-conventional port, which was not archived by Archive.org.

In the end, the panelist was overwhelmed with tecnical allegations that he did not believe himself to be qualified to assess. In that way, John did a very good job of creating confusion. The case basically boiled down to whether John's client had acted in bad faith at the time that he registered the disputed domain names. We believed that his actions, in posting a banner ad on our client's site, and shortly after changing his sites to host a competing job search service that contained our client's own listings were sufficient evidence of bad faith intent. The panelist did not.

If we were asked to represent the same client again under the same circumstances we would do it again in a heartbeat. Under the facts, which largely were excluded from the decision, this was a fairly clear case of bad faith. On the record, the Panelist held simply that we did not do enough to establish the respondent's state of mind at the time of his registration.
That does not mean that he did not have a bad faith intent, and it does not mean that if a claim were brought under the ACPA, or the Lanham Act for trademark infringement, the same result would be reached.

Trademarks 101: dictionary words can be trademarks. See, e.g. Apple. The issue with dictionary words is often a company claiming trademark rights outside of the areas in which it provides goods or services, and then leveraging limited rights to assert claims against a domain name. It happens all the time. The ONLY reason that our client pursued a claim in this case was that John's client was using its trademark to compete directly against it. We lost.

If it has not become apparent by now from my postings, I am neither entirely pro-trademark nor entirely pro-respondent. I believe that there is abuse on both sides of the aisle and have never taken an inconsistent position in a UDRP. We have successfully defended many domain holders against overreaching claims from trademark holders, just as we have successfully prosecuted UDRP claims for aggrieved trademark holders. The world is not black and white, and these issues certainly are not.

 

[Dale Hubbard]

The issue here would appear to be copying and pasting jobs ("screen scraping") without permission. I operate in this sector and this is a definite "no-no". I have spent a great deal of money in building my job board site. All my content has been placed by my customers. If someone started to scrape my site without permission, I would also be looking for redress.

 

[Deleted member 5660]

If it has not become apparent by now from my postings, I am neither entirely pro-trademark nor entirely pro-respondent.

It is apparent to me that you gave your client bad advice because all domain lawyers know the UDRP is for a limited scope of abuse registrations and not all this stuff you are rampbling about. In my opinion you should refund your fee to your client and explain that if he has a dispute at all the proper place is in civil court.

The issue here would appear to be copying and pasting jobs ("screen scraping") without permission. I operate in this sector and this is a definite "no-no". I have spent a great deal of money in building my job board site. All my content has been placed by my customers. If someone started to scrape my site without permission, I would also be looking for redress.

what about putting and "s" at the end of engineer? What do you think should happen to that fellow?

 

[Brett Lewis]

Okay. Let's see what the Policy says.

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

In what way did this dispute fall outside of the scope of the Policy? Please feel free to speak on behalf of all domain lawyers.

 

[Deleted member 5660]

In what way did this dispute fall outside of the scope of the Policy? Please feel free to speak on behalf of all domain lawyers.

I won't speak on behalf of all domain lawyers ... only the good ones.

The scope of the policy is described in the ICANN staff reports which is essentially the "legilslative history" of the UDRP. I previously complained to WIPO and NAF early on because it was clear some of the panelists had not read the reports. WIPO at least got back to me and said the reports were required reading for the panelists. The second staff reports talks about "abuseive registrations" and INTA wanting to expand the definition (even though the term is not in the policy itself)

http://www.icann.org/udrp/udrp-second-staff-report-24oct99.htm

Let's face facts. Even those with limited knowledge of the UDRP can see right off the bat this was not the correct forum for the complaint. Even after you lost you are still making arguments. Now you got this poor Azooza fellow worried because he own engineers.net and he is worried you are going to hassle him if he puts up a site about engineers. It is cases like this and lawyers like you that give all trademark lawyers a bad name. Your client is due a refund.

 

[Gerry]

Brett, just to clarify..."Trademarks 101: dictionary words can be trademarks. See, e.g. Apple." How apple uses the word Apple and it's logo is trademarked. Apple does not own the word Apple. Just want clarification for the sake of additional confusion.

I once owned the domain AppleBasket.com. Had I chose to feature a shopping cart filled with Apple computers and iPods, I breached that line. But this was a gift site for Fruit Baskets and such.

Many domainers automatically jump the gun as soon as they see a word that is used in any context that is a TM without knowing what a TM actually is. It is a trade mark and the emphasis should be on the mark.

I am not an attorney but years in the advertising business and working with large international and national companies and corporate lawyers has helped.

I think most domainers would truly benefit from a Trademark 101 and USTPO 101 course. Get thee a blog up!

 

[jberryhill]

Prior to 2001, my client hosted his site on a non-conventional port, which was not archived by Archive.org.

That's not outside of the realm of possibility, but a little difficult to square with the "coming soon" graphic here:

http://web.archive.org/web/20010925054739/http://engineer.net/

If the real site was on another port, then it seems strange that there would just be a "coming soon" page on port 80. "Coming soon" but already there on another port?

Plus, it sort of seems logical that if someone wanted to show that they had a trade or service mark before 2002, they might include an example of how the mark was used before 2002. Yes, archive.org doesn't check all ports. The defense in this case is limited to what it can obtain via archive.org. The complainant just might have better records of his own stuff than archive.org has.

We believed and alleged that John's client had scraped the job listings off of our client's site. John claimed that the listings were licensed from a third party, and that the content was made available by my client by RSS feed. The information made available by my client through RSS was not for re-use or sale, and was limited -- it did not contain entire job listings, as appeared on John's client's site -- meaning, that someone did scrape it and repackage it.

It's not just the RSS feed. My client has no idea where Indeed.com gets its listings, but if your client's content is restricted, then why did he swear that he was looking for his own job listings on Google? That's a search engine too.

http://www.indeed.com/faq.jsp

Where do your jobs come from?

Indeed searches jobs listed on job boards, newspaper sites and niche sites. Indeed dynamically monitors job listings on these websites on a continuous basis, so in one simple search you can find the very latest jobs listed on every site.

[...]

Indeed is the leader in the aggregation and distribution of jobs using RSS. Your Indeed Job Searches may be added to any RSS feed reader.

The Complaint was very well argued.

Rather than re-hash it here, the decision has been posted. Monday morning quarterbacks are cordially invited to read:

The Complaint:

http://www.johnberryhill.com/engineer-complaint.pdf

The Response:

http://www.johnberryhill.com/engineer-response.pdf

His site receives 70,000 or so visitors per month. Among his clients are a number of fortune 500 companies that placed job listings on the site.

The disputed domain names were obtained in 2002 (I'm working from memory here). Hence, the current traffic, and the fact that Ms. Henslee (the brand manager at Harley Davidson) has no record of authorizing your client's use of the Harley logo, btw, are not relevant to:

the respondent's state of mind at the time of his registration.

On:

The panelist found that my client possessed trademark rights in Engineer, based on his extensive use of the ENGINEER mark in commerce.

Mmmm.....

For the purpose of its further findings, the Panel will assume that Complainant has shown use of its mark in commerce and that an identifiable public associates its mark with the services that it provides, providing a basis for common law rights.

[...]
Complainant's argument is misleadingly oversimplified, its citations are taken out of context, and the cases involve marks not nearly as generic as engineer.

There was no finding on the first element.

Nobody likes to argue more than attorneys. Again, the Complaint was well-argued, and links to both filings are posted above. Critics of either one should read them both.

 

[Deleted member 5660]

Brett, just to clarify..."Trademarks 101: dictionary words can be trademarks. See, e.g. Apple." How apple uses the word Apple and it's logo is trademarked. Apple does not own the word Apple. Just want clarification for the sake of additional confusion.

But if they sold apples I don't think they would be granted a trademark. The trademark comes in when they used the term to apply to computers or other products.

This engineer TM claim is closer to the prior owner of sex.com (Cremen I think) trying to enforce the TM on sex where he threatened a series of porn sites.

 

[jberryhill]

I won't speak on behalf of all domain lawyers ... only the good ones.

Russ, there's no way you can read the Complaint and not come away with the distinct impression that Brett is an extremely good attorney.

 

[Gerry]

But if they sold apples I don't think they would be granted a trademark. The trademark comes in when they used the term to apply to computers or other products.

My point exactly and a point that most domainers miss...it is OK to use like and similar and the same word(s) but knowing where those boundary lines lay is crucial.

I want to study and study and study and study this case closely before making any judgment on it. And, any conclusion that I may come to? Will be my conclusion.

 

[Deleted member 5660]

Russ, there's no way you can read the Complaint and not come away with the distinct impression that Brett is an extremely good attorney.

I don't see that at all.

First of all he claims a trademark on "engineering.net", not "engineering". which includes the TLD. The UDRP is based on a TM on the word minus the TLD and the usual line is that it is confusion because the TLD doesn't matter. In this case it does matter so I am not sure the panelist should even hyave accepted element one for this reason. If the disputed name was engineernet.com the maybe, assuming the mark for engineering.net would be granted in the first place.

the next problem is basing arguing based on a NAF decision. UDRP decsions are not appealed so the number of competing decisions grows unlike court decisions that can be appealed.

Then he goes into all this screen scraping, etc., etc. I can see the panelists now rolling their eyesy saying to themselves that this is way outside the scope of the UDRP.

Then after all his complaining about illegal screen scraping and violations of TOS he argues his point using essentially stolen data that Alexa republishes at their Internet Archive site without permission.

 

[Brett Lewis]

Russ, there's no way you can read the Complaint and not come away with the distinct impression that Brett is an extremely good attorney.

And John as well.

The complainant just might have better records of his own stuff than archive.org has.

Sometimes, old evidence is no longer available. Sometimes, clients forget to tell their attorneys things that turn out to be important.

if your client's content is restricted, then why did he swear that he was looking for his own job listings on Google? That's a search engine too.

Google isn't a competitor. I'd have to check, but believe that the listings were optimized for searchability on Google. You'd want people searching for your job listings and being returned to your job site. When they search for your listings and end up on a competitor's site, not so good.

Anyway, the briefs are posted, thanks to John.

 

[Sarcle]

there's no way you can read the Complaint and not come away with the distinct impression that Brett is an extremely good attorney.

And John as well.

After all of this. And there's not going to be a cage match on PPV? You'd have all the domainers, and much of the online industry, buying that match to watch.

Just take some time to think about it....:lol:

 

[jberryhill]

Sarcle, I've met Brett. He's not only better looking, but he's in a lot better shape than I am and has me on height and reach.

And that's aside from his secret weapon. It involves blinding one's opponent with reflected light.

Sometimes, old evidence is no longer available. Sometimes, clients forget to tell their attorneys things that turn out to be important.

True that.

Anyway, the briefs are posted, thanks to John.

It's also worth pointing out a few other things to people who read them, like Doc Com, who wants to commence to "study".

The objective of a Complaint is to build a box around the conclusion. To win a UDRP, the Complainant has to prove three things.

There is something of an advantage to the Respondent because, if the rules are followed, the Respondent (a) only has to disprove one thing and, significantly, (b) gets the last word. The Response can uncover facts and make arguments that even the best Complaint simply did not anticipate.

Now I say "if the rules are followed" because what normally happens with run-of-the-mill Complainants is that they then try to bend the rules. The UDRP states that the decision is to be made on the Complaint and the Response, and that if the Panel wants more information they can ask. Despite that clear wording, it has become practically routine for Complainants to submit some sort of "supplemental filing". Even the NAF has started collecting a fee for it, in spite of the fact that even some NAF panels will refuse to consider them.

Now, at WIPO, they've become somewhat inconsistent about how they handle "additional stuff filed by the Complainant", and as I said, some Complainants just go right ahead and demand that the material be sent to the Panel.

What happened in this dispute is that Brett wrote to the case manager and said that the Complainant had additional points that it wanted to raise in rebuttal to the Response, and that if the Panel would permit additional filings they would be sent.

The Panel did not request additional filings, so when you read the Response, you have to bear in mind that the Respondent had the last word. As Brett notes above, there may be other facts that point away from the conclusions reached in the Response, such as the claim that there was a site there but it was hosted on another port.

I would have no way of knowing that, and hadn't considered it as a possibility. However, what I would look for is any historical information showing promotion or links-in to the site pre-2002.

And if you try to do that, what you come up with is a press release dated 2003:

http://cache.zoominfo.com/CachedPag...6+1:56:46+AM&firstName=Eric&lastName=Tavenier

New Career Site for Engineer and Technical Jobs Works Like a Search Engine

A/E/C Newswire A/E/C Newswire 15-Sep-2003

Source: Engineer.net


New Career Site for Engineer and Technical Jobs Works Like a Search Engine Linking Jobseekers Directly to Job Openings on Engineering Company Web Sites

Monday September 15, 8:33 pm PST

DAVIS, CA., Sept. 15 -- Engineer.net today announced the launch of www.engineer.com , a new career Web site serving engineering professionals. Engineer.net is unique in its approach to Internet recruiting and offers benefits to both jobseekers and employers of engineers that are not available from any other career Web site.

Unlike traditional job-posting sites, Engineer.net is a Internet search engine. When a jobseeker performs a job search, he is searching live available position postings on engineering company Web sites. Clicking on a search result will link the jobseeker directly to that job posting displayed on the company's Web site.


Absolutely, there are plenty of situations where people don't keep old information or files around, and that can make it hard to prove what they were doing prior to 2002. It's a particularly tough spot when there is a statement by that person promoting a "launch" in 2003.

Now, maybe it was a "launch" of something new and improved, like the launch of "new" Coca-Cola. But, even as often as truth can be stranger than fiction, it can become hard to believe.

But, back on point, just because the Respondent had the last word does not mean that the Complainant didn't have arguments to make in rebuttal. Here, because Brett is a good, decent, and honorable attorney, he did not attempt to get around the particular rules of this particular procedure, as many complainant's attorneys do in a similar position.

 

[Deleted member 5660]

he did not attempt to get around the particular rules of this particular procedure, as many complainant's attorneys do in a similar position.

Yes he did. He tried to get the panel to rule on scraping issues. The panels were not set up to decide issues like that. if there is a scraping or other similar issue he should have first obtained a court decision that said the other person was scaping and that it was illegal. Then maybe you can bring the issue of bad faith but the panel cannot decide these issues. Once you see these types of claims in a UDRP you can just about count on losing.

There is one ofther piece of information that is not posted. How much did Mr. Lewis charge this poor fellow to lose his case?

 

[Dave Zan]

The panels were not set up to decide issues like that.

Because there's no such rule to get around to begin with in UDRP.

Did you ask your doctor to refund you if he prescribed you medicine that did
not work based on any and all details you provided during that consultation?
Just asking.

And Mr. Lewis, or any licensed professional for that matter, isn't obligated or
required to provide information that might betray their client's interests. In
this instance, what you're asking is for him to solely decide at his judgment.

 

[jberryhill]

He tried to get the panel to rule on scraping issues.

I don't agree with that.

As we all know, the "bad faith" element of the UDRP goes to intent. A lot of things in law hinge on intent. For example, various definitions of "burglary" involve the unauthorized entry into a building for the purpose of committing a crime therein. So, let's say you get caught entering someone's house. The prosecutor may try to charge you with burglary.

So you say, "No, I was just going inside the house to have a look around. I wasn't going to steal anything."

No court can get inside your head, but at that point we are going to look at other things. For example, you had a large empty bag with you when you were caught. Do you always carry around a bag, or might we reasonably infer that you had the bag because you intended to carry things out of the house?

So in the absence of being able to perform a Vulcan mind meld, you have to use indirect ways, based on objective facts, to present a persuasive argument that leans in the direction of "other bad behavior" suggesting that there was a bad faith intent.

In this case, the complainant claims that his ads were showing up on the respondent's website. He didn't know how they got there, so he assumed the respondent copied them.

Also, the respondent moved from one address to another, and updated the whois information to reflect the move. From the complainant's perspective, it looked like an attempt to change whois data after receiving a cease and desist letter. At that point, all you have are competing contentions. But when you look at the Michigan Secretary of State filings for the LLC then, yes, you have objective evidence that the respondent merely had moved.

So it wasn't "about scraping". That was simply a way of saying, "here's another thing that we think looks like the guy is up to no good."

When they search for your listings and end up on a competitor's site, not so good.

That depends on the business model. If the employment ads had, say, a referral code, then whomever listed the ad initially would get credit for the referral. There are other coding solutions that could probably give the complainant broader reach, but that gets to my overall impression that these guys could both benefit by finding a way to cooperate. But I'm willing to bet they are both still pretty jacked up about the entire affair.

 

[Gerry]

This "point:counter-point" discussion here is quite an education.