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Brothel beats Victoria’s Secret in titillating domain name dispute

July 19, 2012andrew christie, Domaining, Domainnamewire, Policy & Law, udrpComments Off on Brothel beats Victoria’s Secret in titillating domain name dispute

…and it’s seriously a fascinating UDRP case.

An Australian brothel has rebuffed an attempt by lingerie retailer Victoria’s Secret to take its domain name VictoriasSecrets.com.au.

The decision was handed down on a couple weeks ago and a Domain Name Wire reader just brought the case to my attention.

The subject matter certainly makes for an interesting story, but the story goes much deeper than that.

Let’s get the fun stuff out of the way: the respondent sent a porno mag to the panelist to show its use of the name and argued that its services (prostitution) were completely different from the famous retailer (lingerie).

Here’s one of my favorite lines in the decision, whereby Victoria’s Secret apparently argued its products are related to prostitution:

…the fact that the Respondent is using the disputed domain name in connection with prostitution, and the clear connection between the Respondent’s use of the disputed domain name and the Complainant’s trademark and products…

Alright, now on to the part that will be titillating to UDRP lawyers everywhere: the panelist kinda-sorta approved laches as a defense in UDRP. And that panelist is Andrew Christie.

If you aren’t familiar with Christie, he’s the panelist who frequently argues that domain registrants who didn’t register domains in bad faith but later used them in bad faith are in violation of UDRP. In other words, you’re in violation of UDRP if you register OR use your domain in bad faith.

In the present case, he found that the brothel likely registered its domain to benefit from the famous Victoria’s Secret. Yet he also determined that, due to a delay by Victoria’s Secret in bringing the dispute, the brothel had acquired a right or legitimate interest in the domain by using it so long.

The case hinges on a couple cease and desist letters Victoria’s Secret sent to the escort service in 2005. The Australian brothel responded to the second letter denying its infringement and asking the retailer for more information. The retailer never responded.

Here’s how Christie explains it:

In this Panel’s opinion, once a reasonable period of time had elapsed without the Complainant providing such information or initiating some legal action, the Respondent was entitled to conclude that the Complainant had ceased to press its allegations of trademark and trade practices infringement. From that time forward, it became possible for the Respondent to acquire a right or legitimate interest in the disputed domain name through subsequent use of it, so long as that subsequent use was bona fide.

I’m sure most UDRP watchers never thought Christie would find a way to massage the UDRP to find in favor of a respondent.

But upon further reflection, it kind of makes sense that Christie would rule this way.

Christie’s opinion on registering or using a domain in bad faith essentially claims that whether or not a domain registration violates the policy can change over time. Here, he’s saying the same thing about having rights or legitimate interests.

In fact, he notes that the brothel’s rights or legitimate interests in the domain name could later cease if it changed how it used its domain (e.g. to sell lingerie).

UDRP geeking aside, I’d bet good money this is the first time a UDRP panelist has received a copy of Penthouse as an exhibit.


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UDRP Panelists Still Can’t Agree on Decisions

September 7, 2010andrew christie, Domaining, Domainnamewire, Policy & Law, scott donahey, udrpComments Off on UDRP Panelists Still Can’t Agree on Decisions

Drug company loses dispute, but panelists disagree over key point.

A recent UDRP brought by drug giant Sanofi-aventis is interesting on a couple counts.

First, the company lost the case over the domain name ferrlecit.com. The respondent is a former licensee of Sanofi-aventis. It registered the domain name while it was a licensee. So it was registered in good faith. But when the drug company and licensee terminated their relationship through arbitration, there was no mention of what to do with the domain name. (Another example of lawyers overlooking an important part of intellectual property.) The respondent kept it, and now Sanofi is arguing it is being held in bad faith.

The UDRP states that, to be found “guilty”, you must have registered and used the domain in bad faith. Yet in this case it appears it was registered in good faith, but subsequently used in bad faith.

Two panelists agreed that the domain wasn’t registered in bad faith. Even though it may have later been used in bad faith, this doesn’t matter because of how the UDRP is written.

But one panelist disagreed, and it should come as no surprise as to who it is.

M. Scott Donahey has been on somewhat of a crusade to change how panelists view the registration and use clause to be registration or use. He has done this with the help of panelist Andrew F Christie. The pair keep referring to each others’ views on the matter which in turn reference their own decisions and views. It’s really quite entertaining.

Donahey is also the one who penned one of my candidates for “dumbest UDRP analogy ever“:

As this Panelist sees it, the majority’s interpretation elevates form over substance. The approach taken by the majority is the equivalent of applying the scienter test in the case of a shooting not only to the shooter’s state of mind at the time he fired the gun, but also to his state of mind at the time he purchased the gun. Thus a man who purchased a gun with the intent to engage in target practice would be free thereafter to shoot his neighbor with impunity.

I wonder how long it will take for Christie to refer to Donahey’s most recent decision.


© DomainNameWire.com 2010.

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Paris Wins Parvi.org in Disturbing Domain Name Arbitration Decision

November 30, 2009andrew christie, Domaining, Domainnamewire, Policy & Law, udrp, wipoComments Off on Paris Wins Parvi.org in Disturbing Domain Name Arbitration Decision

Paris wins domain as arbitrator throws out “registration AND use” in bad faith.

In September I wrote about the city of Paris, France filing a UDRP against three domain names: WifiParis.com, Wifi-Paris.com, and Parvi.org. Paris was just handed a victory in the Parvi.org case; the other two cases are pending.

What’s disturbing about the Parvi.org case is that the panel found that the domain name was likely not registered in bad faith, but still handed the domain over on the basis that it was later used in bad faith.

Under the header “Reconsideration of the bad faith requirement”, arbitrator Andrew F. Christie cited previous cases decided by a “distinguished” panelist who found that domain names don’t need to be registered AND used in bad faith, as the UDRP states. Instead, this panelist decided that a domain not registered in bad faith could still violate the policy if it was later used in bad faith.

Christie writes:

The intent of the Policy is to provide a fair and efficient mechanism for trademark owners to obtain redress in situations where their trademark rights are abused as a result of bad faith activities of domain name registrants. There seems no reason in logic or in principle why the availability of redress should be confined to situations where bad faith is present at the time of acquisition of the domain name

Well, the policy is also supposed to provide a fair mechanism for domain name owners. That Paris filed two egregious cases of reverse domain name hijacking at the same time it filed the Parvi.org case should cause any panel to give the benefit of the doubt to the respondent.

Indeed, Christie doesn’t think the domain owner knew about the Parvi trademark at the time of his registration:

…Although it is certainly possible that the Respondent was aware of the Complainant’s PARVI trademark, and of the Complainant’s programs under that trademark, at the time the Respondent registered the domain name, this seems unlikely given the different geographical locations and native languages of the Complainant and the Respondent. Thus, this Panel is not satisfied, on the present record, of the probability that the Respondent registered the disputed domain name with the intention of benefiting from the Complainant’s PARVI trademark.

If the domain wasn’t registered in bad faith but was later used in a way to violate Paris’ trademark, its redress is in the courts, not UDRP. This sort wholesale change and expansion of UDRP by panelists is one of the reasons people are questioning the implementation of the policy. Whenever a panelist writes that his reasoning is “a logical and incremental evolution of panel thinking”, one should give pause.

Perhaps Andrew Christie is on a crusade to implement his vision on UDRP. He was also the presiding panelist on the Project.me case, which broke with precedent by suggesting that the top level domain should be considered part of the domain for trademark purposes.


© DomainNameWire.com 2009.

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Related posts:

  1. Paris Attacks Geo Domain Name Owners
  2. Arena.com Owner Wins Domain Name Arbitration
  3. Not-So-Uniform Domain Dispute Resolution Policy

Paris Wins Parvi.org in Disturbing Domain Name Arbitration Decision

November 30, 2009andrew christie, Domaining, Domainnamewire, Policy & Law, udrp, wipoComments Off on Paris Wins Parvi.org in Disturbing Domain Name Arbitration Decision

Paris wins domain as arbitrator throws out “registration AND use” in bad faith.

In September I wrote about the city of Paris, France filing a UDRP against three domain names: WifiParis.com, Wifi-Paris.com, and Parvi.org. Paris was just handed a victory in the Parvi.org case; the other two cases are pending.

What’s disturbing about the Parvi.org case is that the panel found that the domain name was likely not registered in bad faith, but still handed the domain over on the basis that it was later used in bad faith.

Under the header “Reconsideration of the bad faith requirement”, arbitrator Andrew F. Christie cited previous cases decided by a “distinguished” panelist who found that domain names don’t need to be registered AND used in bad faith, as the UDRP states. Instead, this panelist decided that a domain not registered in bad faith could still violate the policy if it was later used in bad faith.

Christie writes:

The intent of the Policy is to provide a fair and efficient mechanism for trademark owners to obtain redress in situations where their trademark rights are abused as a result of bad faith activities of domain name registrants. There seems no reason in logic or in principle why the availability of redress should be confined to situations where bad faith is present at the time of acquisition of the domain name

Well, the policy is also supposed to provide a fair mechanism for domain name owners. That Paris filed two egregious cases of reverse domain name hijacking at the same time it filed the Parvi.org case should cause any panel to give the benefit of the doubt to the respondent.

Indeed, Christie doesn’t think the domain owner knew about the Parvi trademark at the time of his registration:

…Although it is certainly possible that the Respondent was aware of the Complainant’s PARVI trademark, and of the Complainant’s programs under that trademark, at the time the Respondent registered the domain name, this seems unlikely given the different geographical locations and native languages of the Complainant and the Respondent. Thus, this Panel is not satisfied, on the present record, of the probability that the Respondent registered the disputed domain name with the intention of benefiting from the Complainant’s PARVI trademark.

If the domain wasn’t registered in bad faith but was later used in a way to violate Paris’ trademark, its redress is in the courts, not UDRP. This sort wholesale change and expansion of UDRP by panelists is one of the reasons people are questioning the implementation of the policy. Whenever a panelist writes that his reasoning is “a logical and incremental evolution of panel thinking”, one should give pause.

Perhaps Andrew Christie is on a crusade to implement his vision on UDRP. He was also the presiding panelist on the Project.me case, which broke with precedent by suggesting that the top level domain should be considered part of the domain for trademark purposes.


© DomainNameWire.com 2009.

Review and rate domain name parking companies at Parking Judge.

Related posts:

  1. Paris Attacks Geo Domain Name Owners
  2. Arena.com Owner Wins Domain Name Arbitration
  3. Not-So-Uniform Domain Dispute Resolution Policy