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UDRP: The Liabilities for the Corporations and/or their Lawyers

This post is based on the scenario that a trademark.tld domain name is registered with a UK ICANN accredited registrar, (they have an exclusive UK jurisdiction clause in their contracts), the trademark.tld criticism website located at that domain name is strictly non-commercial, the servers are located in the UK, and the registrant is a British citizen.

In the above circumstances, the corporations and/or their lawyers are taking a big risk when they use the UDRP in order to silence criticism at trademark.tld.

Like fashion, many trends come around again, for example protests. In the sixties, protesters marched with banners, now they can sit at a keyboard and their banner is their trademark.tld criticism website on the Internet. This is peaceful protest, and reaches a far wider audience than any other form of protest. With the power of the Internet, cyber protest and/or cyber criticism is likely to be one of the biggest uses of the Internet. Aggrieved people will make sure that their voices are heard and others are informed of corporations wrongful acts. For the corporations, cybersquatters are not going to be their main concern, it will be the cyber critics and cyber protesters, and in particular, the ones that use trademark.tld for such purposes.

The UDRP administrative proceedings is widely seen to be biased in favour of corporations and/or trademark holders and in general it is also widely seen to be utilised by corporations and/or trademark holders as a cheap and favourable alternative to litigation and a convenient back door way to obtain a gagging order against a critic.

After a few years of personal experience in UDRP administrative proceedings and court cases, if I have learned anything it is that UDRP administrative proceedings is not as good of an option to the corporation and/or trademark holder as they think it is and can come with severe liability to the complainant, and in some cases, their legal representative.

UDRP administrative proceedings can result in a lawsuit against the complainant and their legal representative for:

1. Malicious Defamation/Falsehood (UK Defamation Act 1996):

In initiating UDRP administrative proceedings, the complainant attempts to assert that the registrant is using the domain name in bad faith and this in turn insinuates that the registrant is a cybersquatter , a derogatory term.

When the registrant has no intention to profit from the registration or use of the domain name, then the registrant would view the complaint as malicious in nature and the registrant then has a cause of action to sue the complainant and their representative for malicious defamation under the UK Defamation Act. In such a case, the defendant (complainant) can not claim privilege in the court case because of the malicious nature of their act.

2. Groundless Threat of Infringement Proceedings (UK Trademark Act 1994):

If the registrant has no intention to use the domain name in the course of trade, and the complainant owns either a Community or UK trademark, then the registrant would have a cause of action in the UK against the complainant and their representative for groundless threats of infringement proceedings.

The jurisdiction issue:

When a domain name is registered with a UK ICANN accredited registrar, and the registrant is located in the same jurisdiction as the registrar, the complainant has no choice but to accept the jurisdiction of the registrant in the UDRP administrative proceedings.

If the registrant were to lose in the UDRP administrative proceedings then the registrant/respondent can challenge the decision of the administrator in the courts in the jurisdiction to which the complainant submitted to in their UDRP complaint.

In the course of challenging the decision, the registrant would not only claim the domain name but would also be likely to claim against the complainant for malicious defamation and groundless threats of infringement, thus taking jurisdiction over the entire matter. Whereas, if the registrant were to win the UDRP administrative proceedings and file a court case against the complainant for malicious defamation and groundless threats of infringement, then the complainant would be in a position to challenge the jurisdiction of the court claiming forum non-conveniens.

By Patel

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Comments

Brian Hall  –  Feb 28, 2008 7:39 PM

UK ICANN accredited registrars seem to have implemented a way to discourage a new form of pagewaxing.  In doing so, they are keeping with the general movement toward providing relief for those improperly subjected to the legal process for expressing views in a non-commercial way.  In fact, California has even enacted legislation against Strategic Lawsuits Against Public Participation (SLAPPs).  There are even organizations who will assist with Anti-SLAPP activities. 

As always, it all boils down to not abusing the legal process, including the UDRP.  Cybersquatting attorneys can identify whether or not a corporation, or other entity for that matter, may have trademark rights so as to be able to legitimately file a UDRP.  Without trademark rights, a UDRP must fail.

Regardless, with the ever-increasing use of the UDRP process, it is inevitable that abuses of the process will occur.  The questions remains, however, whether other registrars will follow the lead of the UK.  The should undoubtedly be yes if the UDRP provides yet another means for pagewaxing.

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