RealTime IT News
New Weapon Against Reverse Domain Name Hijacking
By Brian McWilliams
March 08, 2001

Accused cybersquatters have a new defense strategy: "Get Froomkin."

Referring, of course, to Michael Froomkin -- domain dispute panelist, professor of law at the University of Miami in Florida, ICANN gadfly, and outspoken critic of reverse domain name highjacking by trademark holders.

In two surprising arbitration rulings in recent weeks by the World Intellectual Property Organization or WIPO, the respondent domain holders have requested, as is their right under ICANN's Uniform Dispute Resolution Policy or UDRP, a three-person panel featuring Professor Froomkin.

Opting for three-person panels rather than the default one is a financial risk for domain holders. Under ICANN's rules, respondents pay nothing in one-judge arbitrations. But they must split the costs, which range up to $5,000, when three panelists are involved.

So far, the risk seems to have paid off. According to ICANN statistics, domain arbitrations are decided about 75 percent of the time in favor of the complainant, which in most cases, is a corporation or famous person with a trademark to protect. But a three-person WIPO panel including Froomkin last month surprised observers by ruling that Internet consultant Jeff Burgar was allowed to keep his domain brucespringsteen.com, despite attempts by Sony Records to boot Burgar off it.

And in a recent decision involving the domain yourmove.com, Froomkin rounded out a WIPO panel that decided Scottish businessman Irving Remocker was entitled to keep his domain despite cybersquatting accusations from CGU, a Scottish insurance company that had trademarked the term "Its Your Move."

According to David Flint, a solicitor with the law firm MacRoberts, which represented Remocker in the yourmove.com case, his client was in the right and would have prevailed regardless of the composition of the panel. But Flint says it didn't hurt that Froomkin was on board.

"If you are a respondent, there is merit in choosing a three-man panel and looking very carefully at who you would like the panelist to be, because you want not simply opinions from people who happen to be trademark attorneys," said Flint.

Froomkin, who declined to be interviewed for this story, noted that he's not the only law professor who's been tapped to sit on WIPO panels by respondents. Indeed, Diane Cabell of Harvard's Berkman Center for Internet and Society has served as a panelist and argued for limiting the rights of trademark holders in domain disputes. And a number of other law professors are registered with eResolution, one of the three organizations chosen by ICANN to provide arbitration services in domain disputes.

But even trademark attorneys acknowledge that this new "unstacking the deck" strategy is a smart move by domain holders.

"You would like to think that all three arbitrators are going to be fair and not favor one view over the other, but everybody knows that's not going to be the case," said Gregory D. Phillips, a trademark expert with Howard, Phillips & Anderson in Salt Lake City, Utah.

"For so long, respondents have been feeling that panels have tilted toward trademark holders, and they're doing anythingthey can to tip the balance the other way," added Phillips, who has represented a number of trademark holders in lawsuits against alleged cybersquatters.

ICANN originally established the UDRP process to keep domain disputes out of the expensive court system. But panel-stacking by both sides proves, according to Phillips, that the dispute process is flawed.

"I never advise a client to use the UDRP. I'd much rather go into a court where you know you're going to get an independent judge who's subject to review on appeal. There's an inherent fairness that you're never going to get in the UDRP process," said Phillips.

If the latest panel-rigging strategies result in both sides in disputes losing faith in the UDRP process, it's likely there will be a call for changes from ICANN. But as long as trademark holders continue their winning percentage, chances are the UDRP will remain a popular way to evict cybersquatters.