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 anything
they 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.
