[Ecommerce] WIPO pseudo-law sucks.com

[Michelle Childs]

Following Jeff's post on  the US protest website judgement- this article
from the Register, reviews the implication of the decision for WIPO's
arbitration scheme, which has previously found in favour of the trademark
owner and against protestors.
Michelle

US Appeals Court clarifies protest website law
       WIPO pseudo-law sucks.com
       http://go.theregister.com/news/2005/04/05/bosley_case_appeal/

'US Appeals Court clarifies protest website law
By Kieren McCarthy
Published Tuesday 5th April 2005 16:05 GMT
A decision by the Ninth Circuit (California) of the US Court of Appeals
has clarified where the law stands in relation in protest websites - and
it doesn't look good for WIPO, one of the arbitrators for global domain
disputes.

Despite a Mr Michael Kremer owning and running a protest website at the
exact same dotcom address as a company's trademark, the Appeals Court
ruled that trademark law was not broken because it was a non-commercial
site.

The decision potentially sets a dramatic precedent =96 barring any
intervention by the US Supreme Court - protecting protest sites' first
amendment rights on the Internet and undermining a body of pseudo-law
created by domain name arbitrator WIPO with regard to such sites.

WIPO has frequently found for the company in such situations, basing the
decision on an infringement of a company's trademark. With the US stating
categorically that this is not the case, it will be hard for WIPO (and
other arbitrators acting under the UDRP domain rules) to follow such logic
in future.

And while there are likely to be very few such cases in which a company's
exact trademark is under dispute (because they will already have
registered the domain), it does give a new lease of life to protest sites
such as those that append a "sucks" to the end of a company.

Wal-MartCanadaSucks.com (and four similar domains) was the start point of
a clampdown in July 2000 on what was becoming an Internet trend when a
WIPO judge handed them over to Wal-Mart saying that since they infringed
Wal-Mart's trademark they were therefore an abusive registration.

That case was soon followed by another that handed over a range of "sucks"
website for UK companies, including FreeserveSucks.com, DixonsSucks.com,
NatWestSucks.com and DirectLineSucks.com. These cases have since been used
as the foundation for many subsequent domain disputes.

And while WIPO's frequently criticised failure to include an appeals
process into its process makes it unlikely that the many "sucks" domains
will be returned to their original owners, it does raise a very
significant question about how disputes will be decided from now on.

Under the UDRP rules, an arbitrator is obliged to take into account the
national law of the defendant. WIPO now finds itself in a bind between
potentially going against US law by following its own previous decisions,
or executing a large u-turn and dismissing its own case law.

This dilemma of running a parallel legal system is not just happening in
the US either. Nominet in the UK has twice found itself going against the
wording of a High Court decision over domain Phone4u.co.uk in decisions
regarding the domains Game.co.uk and iTunes.co.uk.

Despite Nominet and WIPO's efforts to forge a separate channel for
deciding domain name disputes, it is inevitable the national law, once
settled and decided, will eventually take precedence.

In the recently decided case - Bosley Medical versus Michael Kremer - Mr
Kremer was unhappy about hair restoration treatment he was given by the
company, which advertises extensively in the US.

After a failed malpractice lawsuit against Bosley Medical, Mr Kremer
registered two domains - www.bosleymedical.com and
www.bosleymedicalviolations.com - and started outlining his gripes. Bosley
Medical's own site is at www.bosley.com.

The Appeals Court found that Mr Kremer had not infringed the Lanham Act
relating to trademarks. However, it did reverse the District Court's
decision that Mr Kremer had not infringed Anti-Cybersquatting legislation.
That does not mean Mr Kremer was guilty of infringing cybersquatting law -
just that Bosley Medical can continue to argue that he has (it claims he
attempted to sell the domain for a large profit).

For more information on the ongoing case and decision, visit Michael
Froomkin's post at the ICANNWatch site.'

-
Michelle Childs -Head of European Affairs
Consumer Project on Technology in London
24, Highbury Crescent, London, N5 1RX,UK.
Tel:+44(0)207 226 6663 ex 252.
Mob:+44(0)790 386 4642. Fax: +44(0)207 354 0607
http://www.cptech.org

Consumer Project on Technology in Washington, DC
PO Box 19367, Washington, DC 20036, USA
Tel.:  1.202.387.8030, fax: 1.202.234.5176

Consumer Project on Technology in Geneva
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