Copyright Law

Consumer Advocate's Free Speech Rights Upheld in UDRP Trademark Proceeding

By Sam Bayard

Back in 2006, Robert Arkow, a self-styled consumer advocate who played a role in establishing the California (and then federal) Do Not Call lists, created a website at "metrolinkriders.com." The site hosts a forum for users and employees of Metrolink, the local commuter railway service in southern California, to comment upon Metrolink's services and policies. A small group of readers frequent the site, contributing on topics like possible fare increases and customer service issues. The Southern California Regional Rail Authority (SCRRA), the government authority that runs Metrolink, took umbrage and ended up initiating an administrative proceedings against Arkow under to the Uniform Domain Name Dispute Resolution Policy (UDRP). Recently, Arkow won his case.

Many readers may be unfamiliar with the UDRP, as Arkow probably was when he received the SCRRA's complaint back in March 2008. When you register a domain name, at least with ICANN-approved domain registrars, you automatically agree to be bound by the term of the UDRP, which creates an administrative procedure for resolving trademark-related domain name disputes. ICANN adopted this policy to provide a cheap and efficient way to resolve cybersquatting disputes without resorting to the courts of any one particular country. (Not a bad idea given the potential international dimensions to these disputes.) The procedure is sort of like an arbitration, meaning that a private actor renders judgment, rather than a government official like a judge. The procedure is streamlined compared to a lawsuit because the decision-maker relies soley on the written submissions of the parties, and the whole thing can take place remotely. The decision-maker only has the power to cancel or transfer ownership of a domain name; it cannot order the loser to pay damages, and all UDRP proceedings are subject to review by courts.

Importantly, a UDRP decision-maker does not apply U.S. trademark law, so the First Amendment protections (discussed in detail in Using the Trademarks of Others) won't necessarily help you out in a UDRP proceeding. Besides cheapness and efficiency, this may be another reason why a trademark owner would choose the UDRP route rather than a traditional lawsuit. To win, a complaining trademark owner must show three things:

1. your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. you have no rights or legitimate interests in respect of the domain name; and
3. your domain name has been registered and is being used in bad faith.

This is similar to what is required to establish a violation of the U.S. Anticybersquatting Consumer Protection Act (ACPA), but the ACPA requires a "bad faith intent to profit," not just "bad faith." This potentially makes noncommercial websites more vulnerable under the UDRP.

In Arkow's case, the UDRP decision-maker determined that he had a legitmate interest in using the "metrolinkriders.com" and "metrolinksucks.com" (registered after the SCRRA threatened litigation) domain names for purposes of commentary and criticism. The opinion gave weight to the fact that Arkow was not a competitor of the SCRRA, that his site was noncommercial (i.e., it had no advertising), and that the dispute involved parties from the U.S. where "judicial decisions tend to support criticism websites against trademark infringement and cybersquatting claims on constitutional First Amendment grounds." For similar reasons, the decision-maker concluded that Arkow did not register the domain name in bad faith, noting in addition that he had refused the SCRRA's offer to purchase the domain name from him and that he included disclaimers on the website making clear that it was not official. It concluded that "something more than criticism is required to establish illegitimacy and bad-faith for purposes of the [UDRP]."

Congratulations to Bob, who represented himself in the proceedings, for his big victory! LA Weekly has lots of details about the underlying dispute. See our database entry for links to the parties' written submissions.

Full post as published by Citizen Media Law Project on May 27, 2008 (boomark / email).