Bill Clinton Loses UDRP Cybersquatting Arbitration – Inconsistency Still a Big Problem With UDRP Decisions

As being reported at HuffintonPost.com and Domain Name Wire, President Bill Clinton lost his Uniform Domain Dispute Resolution Policy (UDRP) NAF arbitration for the domains <williamclinton.com>, <williamjclinton.com> and <presidentbillclinton.com>, registered with The Name It Corporation d/b/a Nameservices.net.  Essentially, the arbitrator/panelist Glen Ayers found that:

1. Respondent’s disputed domain names are confusingly similar to Complainant’s WILLIAM CLINTON mark pursuant to Policy ¶ 4(a)(i). Thus the first element of the policy was satisfied.
2. Respondent lacks all rights and legitimate interests in the disputed domain names pursuant to Policy ¶ 4(a)(ii).
3. Respondent has not registered or used the disputed domain names in bad faith; Respondent has not violated any of the factors listed in Policy ¶ 4(b) or engaged in any other conduct that would constitute bad faith registration and use pursuant to Policy ¶ 4(a)(iii).

As noted below, the arbitrator's decision is questionable as a matter of common sense and UDRP precedent.  One problem that continues to persist under the UDRP is the disparity of experience, understanding or trademark law and established bias (both pro-Complainant and pro-Respondent) of UDRP arbitrators.

Additional resources regarding the issue of cybersquatting famous, celebrity and politician names:

• Celebrity Cybersquatting: Why Don't Famous People Protect Their Domain Names?
• Personal and Proper Names Protected Under Anti-Cybersquatting Act  
• Cybersquatting On The George Bush Library Name
• Political Candidate Cybersquatting: Hillary Clinton's Name Most Squatted

The problem with this decision is that, in finding that the registration was not in bad faith, the arbitrator seemed to confuse what is, and is not, competition. The arbitrator cited a large number of decisions which hold that re-directing a web site to a competitor constitutes bad faith:

However, the Panelist cannot find that Respondent’s registration and subsequent use of the disputed domain names to resolve to a website in direct competition with Complainant constitutes a disruption of Complainant’s business and qualifies as bad faith registration and use pursuant to Policy ¶ 4(b)(iii).  Compare S. Exposure v. S. Exposure, Inc., FA 94864 (Nat. Arb. Forum July 18, 2000) (finding the respondent acted in bad faith by attracting Internet users to a website that competes with the complainant’s business); see also Puckett, Individually v. Miller, D2000-0297 (WIPO June 12, 2000) (finding that the respondent has diverted business from the complainant to a competitor’s website in violation of Policy ¶ 4(b)(iii)); and EBAY, Inc. v. MEOdesigns, D2000-1368 (WIPO Dec. 15, 2000) (finding that the respondent registered and used the domain name <eebay.com> in bad faith where the respondent has used the domain name to promote competing auction sites)…

Compare Luck's Music Library v. Stellar Artist Mgmt., FA 95650 (Nat. Arb. Forum Oct. 30, 2000) (finding that the respondent engaged in bad faith use and registration by using domain names that were identical or confusingly similar to the complainant’s mark to redirect users to a website that offered services similar to those offered by the complainant); and State Fair of Tex. v. Granbury.com, FA 95288 (Nat. Arb. Forum Sept. 12, 2000) (finding bad faith where the respondent registered the domain name <bigtex.net> to infringe on the complainant’s goodwill and attract Internet users to the respondent’s website).

The arbitrator concludes that Bill Clinton's name re-directing the the Republican Party web site was not a 'competitor' without any analysis and in apparently direct conflict with the 5 cases cited above.  The arbitrator fails to cite a single decision supporting his decision and bad faith analysis.  Instead, he simply points to cases where web sites were re-directed to direct competitors as though that was a litmus test (and although those cases seem to support a finding of bad faith).  

I heavy dose of 'duh' is probably in order here.  The National Republican Party's web site is designed to raise funds for that party and against Bill Clinton's name and interest.  Redirecting the URL to to RNC may even suggest that Bill Clinton endorses the Republican party, its message and/or the funding that party.  While one might think that virtually everyone in the Unites States might know that Bill Clinton is a Democrat, in a global market a small percentage, which would be tens or hundreds of thousands of people, could reasonably be confused about this use.  Clearly, the Respondent registered the domains to divert traffic and money from Bill Clinton to the Republican Party. 

The bad faith factors which clearly apply here are: (iii) the domain was registered primarily to disrupt the business of a competitor; or  (iv) by using the domain, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation. More importantly, these factors are non-exclusive. 

Does anyone doubt that these domains were registered to divert and confuse internet users to an adversary? If it were a porn site who did not compete with Bill Clinton or his message, would this arbitrator have found the same result?

Competitors are not defined in the purely commercial sense of McDonalds v. Burger King. See CCA Indust., Inc. v. Dailey, D2000-0148 (WIPO Apr. 26, 2000) (finding that that "this association with a pornographic web site can itself constitute a bad faith").  See Mission KwaSizabantu v. Rost, D2000-0279 (WIPO June 7, 2000) (defining “competitor” as “one who acts in opposition to another and the context does not imply or demand any restricted meaning such as commercial or business competitor”); see also Compagnie Generale des Matieres Nucleaires v. Greenpeace Int’l, D2001-0376 (WIPO May 14, 2001) (stating that although Respondent’s complaint website did not compete with Complainant or earn commercial gain, Respondent’s appropriation of Complainant’s trademark with a view to cause “damage and disruption to [Complainant] cannot be right, still less where the use of the Domain Name will trick internet users intending to visit the trademark owner’s site into visiting the registrant’s site” in holding that the disputed domain name was registered in bad faith).

it is also hard to understand how the HillaryClinton.com decision which finds bad faith based on prior knowledge of trademark rights by Complainant can be squared with this decision. 

Complainant has established that its HILLARY CLINTON mark is famous worldwide.  This is evidence that Respondent registered a domain name identical to Complainant’s mark based on the goodwill associated with Complainant’s mark.  Registration of a domain name that incorporates Complainant’s mark, despite knowledge of Complainant’s rights in the mark, is evidence of bad faith registration and use pursuant to Policy ¶ 4(a)(iii).  See Digi Int’l v. DDI Sys., FA 124506 (Nat. Arb. Forum Oct. 24, 2002) (“[T]here is a legal presumption of bad faith, when Respondent reasonably should have been aware of Complainant’s trademarks, actually or constructively;”); see also Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. 2002) ("Where an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse."); see also Exxon Mobil Corp. v. Fisher, D2000-1412 (WIPO Dec. 18. 2000) (finding that respondent had actual and constructive knowledge of complainant’s EXXON mark given the worldwide prominence of the mark and thus respondent registered the domain name in bad faith); see also Samsonite Corp. v. Colony Holding, FA 94313 (Nat. Arb. Forum Apr. 17, 2000) (finding that evidence of bad faith includes actual or constructive knowledge of a commonly known mark at the time of registration).

In a case involving anncoulter.com, a panelist found bad faith on the following facts:

The Panel infers from the facts that Respondent was well-aware of Complainant and its rights in the ANN COULTER mark prior to registering its infringing domain name. Respondent’s registration of the disputed domain name with actual knowledge of Complainant’s rights evidences bad faith registration of the domain name. See Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1148 (9th Cir. Feb. 11, 2002) (finding that "[w]here an alleged infringer chooses a mark he knows to be similar to another, one can infer an intent to confuse"); see also Albrecht v. Natale, FA 95465 (Nat. Arb. Forum Sept. 16, 2000) (“The Respondent intentionally registered a domain name which uses the Complainant’s name.  There is no reasonable possibility that the name karlalbrecht.com was selected at random.  There may be circumstances where such a registration could be done in good faith, but absent such evidence, the Panel can only conclude that the registration was done in bad faith”).

There is no way to square the Clinton decision, incorrectly decided, and the Coultier decision, correctly decided. 

In another decision involving Princeton University, the panel found:

Respondent’s registration and use of the <princetonuniversitypress.com> domain name to promote the anti-abortion agenda by subjecting unsuspecting Internet users to graphic images of aborted fetuses represents a bad faith intent to trade off of the goodwill Complainant has established in its registered PRINCETON UNIVERSITY PRESS mark. As Respondent knew or should have known of Complainant’s registered mark, the Panel determines that Respondent’s intent was to confuse Internet users as to Complainant’s affiliation or sponsorship with the website and its politically charged content. See Rittenhouse Dev. Co. v. Domains For Sale, Inc., FA 105211 (Nat. Arb. Forum Apr. 8, 2002) (finding that “when a party registers and uses a domain name that incorporates a well-known mark and connects the domain name with a website that depicts offensive images,” the party has registered and used the disputed domain name in bad faith)

In fairness to Mr. Ayers, it is unknown what arguments or citations were provided by counsel for Complainant it their filings, as those documents are not available on-line.  Sometimes, Complainants fail to make the 'winning' arguments necessary to educate the panelist.

Although it is unclear if the data set is complete, a full text search for the arbitration panelist Glen Ayers at domainfight.net reveals his prior UDRP decisions.  Despite the 85% or so percentage finding in favor of Complainant, note that Mr. R. Glen Ayers decisions in favor of Respondents appears to be out of whack with his fellow panelists. In a three member panelist request, the Respondent can one of the panel members.  If I were representing a Respondent, I might serious consider requesting a 3 member panel and choosing Mr. Ayers. Is it time to reform the UDRP as proposed in this article which proposes a review process for any panel decision.

Mr. Ayers is a former bankruptcy Judge who does not list any trademark or cybersquatting experience as part of his background.  It appears that he is a favorite of Respondents.