Celebrity name domains

[jberryhill]

Guilty

I wasn't going to name names.

Damn. Bring back that edit button!

Heh... it was my suggestion that edits not be allowed in this forum.

Too many people would ask a question, I would write a long answer, and then they'd pull the question.

Making a waste of time out of a waste of time was a double kick in the pants.

He didn't make the post to called a cybersquatter.

It's an internet forum. No animals were harmed in the production of Enrico's post.

 

[dvdrip]

It's an internet forum. No lawyers were harmed in the production of my post.
And I did say please.

 

[EnricoSchaefer]

March2008. I apologize for the tone of my original post. I was probably having a bad hair day

I think John, Marc and I all suffer more than the average domainer over the vagaries and slippery slope of cybersquatting. When you operate a fan site which is driving revenue (i.e. "but are not earning a great deal") on a celebrity name, you are in all likelihood cybersquatting. It is not the sale to a third party which creates bad faith, it is the revenue being earned on the site, no matter how little. And 'turning it into a fan site" without ppc won't reduce the liability already created to the registrant. Selling it to someone else (not the celebrity) simply creates the possibility of bad faith use. In short, fan sites with adwords are typically not going to escape the cybersquatting category simply because they are labeled "fan sites."

I am all in favor of domaining and domainers, who I find have a entrepreneurial spirit unlike I have seen in any other industry. I also realize that domaining is still not legitimized in the broader public's mind, and thus the market itself is still not developed anywhere near to its potential. Part of the problem is cybersquatting. Many domainers have ultimately realized and concluded that the best way to increase domain values is to continue to develop the end-user market for domains. Many leading domainers have become vocal advocates against bad faith cybersquatting. But the community needs to do more than 'talk the talk', it needs to 'walk the walk.' Here is an article I wrote on the subject:

Do Domainers Deserve Their Reputation As Cybersquatters Because They Fail To Police Their Own? Quoting an article at Domain Name Wire: Editorial: How the Domain Industry Can Clean Itself Up.

No one benefits when domainers play in the grey area of cybersquatting. The 'no harm- no foul' rule should not apply. Even if few celebrities have ever aggressively pursued damages for these matters, there is still harm.

As always, I appreciate divergent view points and the fact of the discussion itself.

 

[marcorandazza]

Concur

 

[dvdrip]

Please explain.

I think John, Marc and I all suffer more than the average domainer over the vagaries and slippery slope of cybersquatting.

 

[EnricoSchaefer]

Many domainers, even those that do engage in cybersquatting, do not get hassled. Even those that do typically get hit with a UDRP at most. There are instances where things get ugly quick. In some instances, these folks have to consider personal bankruptcy when they get caught with their hand in the cookie jar and the big corporation demands big money in order to avoid litigation.

We see a lot of grey area issues, where meritorious arguments and defenses exist. Those are meant to be fought. The more obvious ones, where cybersquatting is a given, ... we are hired to try to clean up the mess. In short, we see it every day from the trenches. And it would be a great day when the only calls received re obvious cybersquatting are only the people who did not know the law.

 

[jberryhill]

Please explain.

Easy.

How many domain names did you defend in UDRP proceedings last month?

In a typical month, I defend or settle anywhere from 4 to 10 UDRP disputes. Having been dealing with these things since the policy began, I can tell you, along with every other attorney that does these things, that there's a real, palpable movement among panelist/advocates to close what they perceive as "loopholes" in prior UDRP decisions, and they are trying to find more excuses to unjustly transfer domain names.

The way they do this is to make sweeping statements in cases clearly involving bad actors, and then to apply these statements as some sort of "rule" in cases that are less clear.

Take the entire topic of using generic words as domains for PPC sites. You can find a boatload of UDRP decisions in which panels say that is a perfectly legitimate use of a domain name.

However, in cases where there is clear bad behavior, the panel will say something along the lines of "It's just a PPC site, which is not legitimate".

Then, they recycle decisions like that and quote them in generic name cases.

I used to regularly obtain decisions that said things like:

http://domains.adrforum.com/domains/decisions/430650.htm

As the Respondent points out, there are many previous panel decisions that uphold the Respondent’s business practice as long as the domain names have a clear generic meaning and it does not appear the Respondent had the Complainant’s trademark in mind. (see inter alia Canned Foods, Inc. v. Ult. Search Inc., NAF Case No. 96320, February 13, 2001 involving the domain name <groceryoutlet.com> used in its generic sense; Career Guidance Foundation v. Ultimate Search, WIPO Case No. D2003-0323, July 21, 2003 involving <collegesource.com> used in its descriptive sense; and Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, April 13, 2001 involving the domain name <sweeps.com> used for a website about sweepstakes.


Now, that passage cites to two cases I defended, and one which Ari Goldberger defended.

After a while, panels started "punting" on the legitimate interest issue, using words along the lines of "there's no need to decide whether it is legitimate, in view of our discussion of 'bad faith'..."

So, they stopped finding generic PPC use "legitimate" and allowed a lot of abusive registration cases to pile up, saying "PPC is not legitimate".

By following that strategy - and it is a deliberate long-term strategy, they now say things like - relative to the domain name joystick.com:

http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1422.html

The Panel does concede that the use of the domain names as described above may well be a legitimate activity. However in this case, the Panel sides with many previous UDRP panels that have concluded that this activity, in and of itself, is not “a bona fide offering of goods or services” in compliance with the requirements of paragraph 4(c)(i). See for example Computer Doctor Franchise Systems, Inc. v. The Computer Doctor, NAF Case No. FA95396; and State Farm Mutual Automobile Insurance Company v. David Haan, NAF Case No. FA948470 (“Respondent is not offering any good or service of its own and is presumably collecting pay-per-click referral fees from the third-party links on its website...Thus, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy [paragraph] 4(c)(i)”)


Do you see the shift? "Oh, it *may* be legitimate, but we're going to cite cases of clear cybersquatting (like on the State Farm trademark) to say that it's not.

That's the kind of thing that Enrico is talking about. As a domainer, you might see one UDRP complaint in a blue moon. I see dozens of them every year, and I can tell you that bad actors are providing excuses to make life harder for those who make a sincere effort to play it clean.

(Heh, I was writing while Enrico was... same thing... the "view from the trenches" is what we get every day)

 

[dvdrip]

This

I think John, Marc and I all suffer more than the average domainer over the vagaries and slippery slope of cybersquatting.

and this

we are hired to try to clean up the mess.

does not go together. Sorry but I don't feel sorry for you.

 

[jberryhill]

We see a lot of grey area issues, where meritorious arguments and defenses exist.

Precisely.

I've been on opposing sides from Enrico, Brett Lewis, Marc Randazza in domain disputes. It's not a matter of whether they or I was "right" in some cosmic sense. Each side is dealt a hand of facts, and each side applies the rules to its facts in a manner designed to persuade a neutral party that their side best fits the rules in their favor. We can't change the facts, and each side usually has a couple of decent, non-frivolous arguments.

But the field we're playing on makes it difficult when the rules themselves are a moving target. The more prevalent there is "bad behavior", then the more the rules tend to move in a restrictive direction, which narrows the range of defensive arguments.

 

[dvdrip]

Is this how you suffer? Because UDRPs have become a bit harder to defend? But UDRPs ARE your job.

Mine isn't. And I have replied to more than 10 in the past year.

Is you are suffering why don't you just make an effort to change the UDRP?

Easy.

How many domain names did you defend in UDRP proceedings last month?

In a typical month, I defend or settle anywhere from 4 to 10 UDRP disputes. Having been dealing with these things since the policy began, I can tell you, along with every other attorney that does these things, that there's a real, palpable movement among panelist/advocates to close what they perceive as "loopholes" in prior UDRP decisions, and they are trying to find more excuses to unjustly transfer domain names.

The way they do this is to make sweeping statements in cases clearly involving bad actors, and then to apply these statements as some sort of "rule" in cases that are less clear.

Take the entire topic of using generic words as domains for PPC sites. You can find a boatload of UDRP decisions in which panels say that is a perfectly legitimate use of a domain name.

However, in cases where there is clear bad behavior, the panel will say something along the lines of "It's just a PPC site, which is not legitimate".

Then, they recycle decisions like that and quote them in generic name cases.

I used to regularly obtain decisions that said things like:

http://domains.adrforum.com/domains/decisions/430650.htm

As the Respondent points out, there are many previous panel decisions that uphold the Respondent’s business practice as long as the domain names have a clear generic meaning and it does not appear the Respondent had the Complainant’s trademark in mind. (see inter alia Canned Foods, Inc. v. Ult. Search Inc., NAF Case No. 96320, February 13, 2001 involving the domain name <groceryoutlet.com> used in its generic sense; Career Guidance Foundation v. Ultimate Search, WIPO Case No. D2003-0323, July 21, 2003 involving <collegesource.com> used in its descriptive sense; and Sweeps Vacuum & Repair Center, Inc. v. Nett Corp., WIPO Case No. D2001-0031, April 13, 2001 involving the domain name <sweeps.com> used for a website about sweepstakes.


Now, that passage cites to two cases I defended, and one which Ari Goldberger defended.

After a while, panels started "punting" on the legitimate interest issue, using words along the lines of "there's no need to decide whether it is legitimate, in view of our discussion of 'bad faith'..."

So, they stopped finding generic PPC use "legitimate" and allowed a lot of abusive registration cases to pile up, saying "PPC is not legitimate".

By following that strategy - and it is a deliberate long-term strategy, they now say things like - relative to the domain name joystick.com:

http://www.wipo.int/amc/en/domains/decisions/html/2008/d2008-1422.html

The Panel does concede that the use of the domain names as described above may well be a legitimate activity. However in this case, the Panel sides with many previous UDRP panels that have concluded that this activity, in and of itself, is not “a bona fide offering of goods or services” in compliance with the requirements of paragraph 4(c)(i). See for example Computer Doctor Franchise Systems, Inc. v. The Computer Doctor, NAF Case No. FA95396; and State Farm Mutual Automobile Insurance Company v. David Haan, NAF Case No. FA948470 (“Respondent is not offering any good or service of its own and is presumably collecting pay-per-click referral fees from the third-party links on its website...Thus, the Panel finds that Respondent has not established rights or legitimate interests pursuant to Policy [paragraph] 4(c)(i)”)


Do you see the shift? "Oh, it *may* be legitimate, but we're going to cite cases of clear cybersquatting (like on the State Farm trademark) to say that it's not.

That's the kind of thing that Enrico is talking about. As a domainer, you might see one UDRP complaint in a blue moon. I see dozens of them every year, and I can tell you that bad actors are providing excuses to make life harder for those who make a sincere effort to play it clean.

(Heh, I was writing while Enrico was... same thing... the "view from the trenches" is what we get every day)

 

[jberryhill]

Sorry but I don't feel sorry for you.

You know, dvd, I can hire you to dig a ditch and pay you $10 per hour.

Now, for the first week, I let you use a bulldozer.

On week two, I take away the bulldozer and I give you a shovel.

On week three, I take away the shovel and say "dig with your hands".

Why should you complain, you are still getting paid $20 per hour, right?

But your job is becoming increasingly more difficult and frustrating.

That's what is going on, slowly but surely, in domain disputes. More tools are being taken away, because of hysteria over bad behavior.

Simply getting paid to do a job is not job satisfaction. A lot of attorneys do particular types of work because they care, often passionately as I do, about the field in which they are working. Back in the 90's when people were having their domain names shut off under the old NSI policy, I would get angry and say, "I wish somebody would do something about this crap." So, I became one of those somebodys. I don't do this stuff because it pays well. I'd be perfectly well paid had I stayed in patent work.

Heck, I could make a better living visiting retirement villages, using form software to write up wills for nice old ladies, and billing them out the wazoo. Some lawyers do just that. Other lawyers have larger moral and social principles they are trying to advance than their own income.

Is you are suffering why don't you just make an effort to change the UDRP?

You obviously have no understanding of what I do outside of representation of clients.

http://www.icann.org/correspondence/berryhill-to-halloran-26sep07.pdf - who paid for that? Nobody.

https://par.icann.org/files/paris/Paris-RegistrarUDRPCompliance-26JUN08.txt - who paid for that? Nobody.

I've been in this fight for years. My paid work puts food on the table, and provides time to do a lot of things for domainers that I've never received a cent for. Your implication that I'm in some sort of prostitution business, and haven't been working for positive changes in domain dispute policies and practices for the better part of decade - without a red cent from anyone - is frankly insulting.

 

[dvdrip]

Prostitution business? Who said that?

Of course I don't know what you do outside of representation of clients. Why should I? This thread has become me against all lawyers. I am tired of lawyers defending lawyers. Enrico Schaefer made a post and cleared this.

Start a thread and state your views and we'll discuss. I have never seen these links. I will read them. But we should also discuss what lawyers have done to make your job harder as you say it. Which is what is making domainers suffer a lot more that lawyers.

What is insulting is that lawyers representing clients are suffering more that their clients.

 

[jberryhill]

What is insulting is that lawyers representing clients are suffering more that their clients.

Well, to put it another way, my second paid job ever was as a janitor in an elementary school. (my first job was on a dairy farm)

I got paid every day to take out the trash, vacuum the classrooms, clean the toilets, and do light maintenance work.

There were some kids at the school that made my work a lot harder than most of the other kids.

Prostitution business? Who said that?

I was waiting for Randazza to jump in again....:smilewinkgrin:

 

[EnricoSchaefer]

I did not mean to really suggest that I am suffering. What I did mean to suggest is that many of us have an interest in seeing the domainer market continue to evolve and the full value of domains to be realized. What us many of us agree on is that stamping out blatant cybersquatting is an important part of that effort. Most domainers understand this dynamic as well. That is why domainers have become less patient and tolerant of business models which involve obvious cybersquatting. They know it is hurting their business big time.

In a way, I am glad that my admittedly short tempered initial response caught your attention dvd. These sorts of discussions are pretty important as the community continues to mature and evolve. And, believe it or not, I am often on the receiving end of John's keyboard strokes. Trust me, John is not agreeing with me because I am a lawyer.

I do stand by the sentiment of my original post. The facts make it clear that it is a site which would be considered cybersquatting. It may be that the author did not realize that what they were doing was a violation of the UDRP and ACPA. Many of the questions posted herein are from folks who didn't understand the law when they registered or may still wonder where the edges are. My mistake, perhaps, was assuming by the tenure of the post and the facts recited that the registrant knew he was cybersquatting and wanted to find a way to make another chunk upon sale or otherwise. There is a big difference between folks who know they are over the line, and those that are really looking to understand where the line is.

 

[jberryhill]

Trust me, John is not agreeing with me because I am a lawyer.

LOL. I can't stand lawyers.

I did think of a better analogy, though.

Every time I see my doctor, she tells me to quit smoking.

Why? She gets paid to take care of me if I get sick, right?

 

[DomainFlippin]

what if you have the same name as a celebrity are you susposed to just give up the domain name because they became a celebrity... to me if that is so is a bunch of horse $#!^

 

[marcorandazza]

Of course not! I can think of no better way to demonstrate "rights" or a "legitimate interest" in the domain name.

 

[jberryhill]

what if you have the same name as a celebrity are you susposed to just give up the domain name because they became a celebrity... to me if that is so is a bunch of horse $#!^

That's a different set of facts.

And that's why I donated several hours of my time to help out the friend of a neighbor of mine - a gentleman named Keith Urban - successfully defend a lawsuit brought by a celebrity named Keith Urban.

He's a talented illustrator and designer, and you can continue to see his stuff at keithurban.com.

Now, if you want to get in on the ground floor of an up and coming celebrity - marcorandazza.com is unregistered. At the moment, anyway...

For Christmas, however, my wife got me a pet guinea pig which I have named Marco Randazza, and I intend to make a website about my guinea pig. So I'm all set.

(Umm... I mean "hamster". Honestly, Marc, I picked the pet at random.)

 

[marcorandazza]

Minchia! In this day and age, a domainer lawyer, prejudiced against Italians!

 

[jberryhill]

Marco, I swear, I chose a small pet at random.

The reason I often think of guinea pigs as amusing pets is because of an old short story, which for fun I included as an exhibit to the pig.com UDRP response:

Honest to goodness, it is one of my favorite short stories since fifth grade:

"Pigs is pigs" by Ellis Parker Butler:

http://www.gutenberg.org/files/2004/2004-h/2004-h.htm