It’s time to rethink WIPO guide section 3.5
The current jurisprudence doesn’t match the goal of UDRP.
Many UDRP panelists consider the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition as bible for considering facts in a UDRP case. The guide provides an overview of the current jurisprudence of UDRP.
Although the guide reflects what UDRP panelists have generally decided in the past, it effectively acts as a forward-guiding document that is referred to as the rationale in current cases.
For example, panelist Warwick Rothnie cited it five times in a recent decision for ponthier.com (pdf).
One section of this guide has always troubled me — actually, two related sections.
Section 2.9 asks, “Do “parked” pages comprising pay-per-click links support respondent rights or legitimate interests?”
This section refers specifically to creating a positive benefit for the domain owner. If they have a parked page with pay-per-click links that relate to the generic nature of the domain, it’s evidence in favor of the domain owner that it has rights or legitimate interests in the domain. The full text states:
Applying UDRP paragraph 4(c), panels have found that the use of a domain name to host a parked page comprising PPC links does not represent a bona fide offering where such links compete with or capitalize on the reputation and goodwill of the complainant’s mark or otherwise mislead Internet users.
Panels have additionally noted that respondent efforts to suppress PPC advertising related to the complainant’s trademark (e.g., through so-called “negative keywords”) can mitigate against an inference of targeting the complainant.
Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.
In cases involving a website that is not predominantly a “typical” parked or PPC site (e.g., a blog, forum, or other informational page), where other clear, non-pretextual indicia of respondent rights or legitimate interests are present, some panels have been prepared to accept the incidental limited presence of PPC links as not inconsistent with respondent rights or legitimate interests.
So if you host a PPC parking page with ads related to the Complainant, that’s bad. If you host a page with ads related to the generic meaning of the domain and not the Complainant, that can actually help you. (This is why people are wrong to say that parking a domain can only be harmful in UDRP; it can actually help you if done appropriately.)
Section 2.9 also refers to Section 3.5, and it’s that section that I find troubling. Section 3.5 states:
3.5 Can third-party generated material “automatically” appearing on the website associated with a domain name form a basis for finding bad faith?
Particularly with respect to “automatically” generated pay-per-click links, panels have held that a respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (nor would such links ipso facto vest the respondent with rights or legitimate interests).
Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited, would by itself prevent a finding of bad faith.
While a respondent cannot disclaim responsibility for links appearing on the website associated with its domain name, panels have found positive efforts by the respondent to avoid links which target the complainant’s mark (e.g., through “negative keywords”) to be a mitigating factor in assessing bad faith.
This section gets to a common defense some domainers have about parking links: they didn’t select the ad links on the parking page. The algorithm did it.
The current jurisprudence is that the fact that the domain owner didn’t select links that show up on a parking page they set up isn’t a valid excuse in UDRP. That might be fair.
What I disagree with is in the second paragraph:
Neither the fact that such links are generated by a third party such as a registrar or auction platform (or their affiliate), nor the fact that the respondent itself may not have directly profited (emphasis added), would by itself prevent a finding of bad faith.
I think there needs to be a distinction between a parking page to which a domain owner pointed their domain to make a profit vs. those set up by a registrar, often without the domain owner’s awareness.
Basically, there should be a distinction between a domain investor and the typical end user registrant. Jane Smith from New York registers a domain for her business or one she’s thinking about starting. She doesn’t use the domain immediately, and the registrar puts ads on it.
Under section 3.5, Jane is responsible for those links.
I think that’s a lot to ask of the typical end user domain registrant. And I don’t believe it forwards the goal of UDRP, which is to keep people from purposefully cybersquatting on domains.
In the ponthier.com case, Warwick found in favor of the Respondent. He noted that the Respondent couldn’t escape blame for the links the registrar put on the parked page, but it appears the links targeting the Complainant only showed up in the Complainant’s country. (Oh, and the Respondent’s last name is Ponthier.)
I think panelists should rethink this jurisprudence when deciding cases. They can differentiate between a domain investor using Sedo or Bodis and the innocent small business entrepreneur whose registrar tried to profit off of their domain registration.
This distinction would further the goals of UDRP.
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