This article was written by Kieren McCarthy for
The
Register.
It has been reproduced with permission.
Burgar contested the complaint and paid for a three-person panel
at domain name arbirtrator WIPO to decide the issue. In the end
though, they
decided for the movie star and against Burgar – who is a
regular at WIPO judgments, having registered hundreds of famous
peoples' name which he redirects to his Celebrity1000.com
website.
The decision comes as no surprise to anyone who follows the
uniform domain resolution policy (UDRP). But Burgar –
indisputably the most infamous domain name registrant – once
again highlights flaws and inconsistencies in the UDRP model.
Tom Cruise's lawyers made three basic points: the actor has
"common law trademark and service mark rights" in the term Tom
Cruise; Burgar was making money from the domain through third-party
ads on the Celebrity1000 website; and that internet users were
likely to be confused and think that TomCruise.com was affiliated
personally with the website.
Counter-argument
In response, Burgar chose not to contest the actor's trademark
rights but argued that the site was a fansite and a biography of
the actor helped demonstrate that. He said he had made no attempt
to sell the domain to the actor, and that his use of the domain
should be protected under the right to free speech (which is
explicitly recognised in UDRP wording).
Burgar also argued, convincingly, that "internet users entering
'www.tomcruise.com' in their browsers are not seeking the actor in
person, nor would they expect that the actor is endorsing the
website. Instead, the internet user is looking for information
about the actor. Respondent provides such information."
He also argued that the extraordinary 10-year delay in Cruise
starting this action indicates that the actor "did not believe
Respondent truly had been acting in bad faith". By leaving it for
so long, he had implicitly agreed to Burgar's legitimate ownership,
Burgar argued.
However, Burgar's past caught up with him, with the final
decision constantly referring to the previous occasions he has been
involved in a WIPO dispute – in particular with
CelineDion.com, MichaelCrichton.com, KevinSpacey.com,
JeffreyArcher.com and others.
These cases were used as case law by the Cruise panel and it was
pointed out that "previous panels have determined that Respondent
has engaged in a pattern of registering the trademarks of third
parties, preventing them from registering their marks in domain
names".
Fuzzy logic
The panel's logic in knocking down Burgar's defences is somewhat
worrying. It claimed that Celebrity1000.com was "almost wholly
devoted to third-party advertisement links" and so it was
"difficult to see how this would better qualify as fair use of
Complainant’s mark".
That statement is not true, however, since the majority of the
content on Burgar celebrity site is created by the site and while
it is certainly not the most expansive website out there for
celebrity information, it is inaccurate to suggest that the site is
no more than a site of third-party ads.
This distinction is important is because the panel then uses its
inaccurate representation of the Celebrity1000.com site to justify
dismissing Burgar's claim for freedom of speech and freedom of
expression. The panel instead produces a convoluted and
unconvincing explanation as to why it is dismissing a fundamental
element of Western legal systems and the UDRP system itself.
In full, it states: "The Panel is well aware of the importance
of the First Amendment and freedom of expression. By limiting
Respondent’s use of Complainant’s trademark in the disputed domain
name, the Policy by definition effects some limitation on
Respondent’s scope of expression. However, it does this in a way
consistent with the balancing of interests inherent in the general
recognition of trademark rights. Free speech does not by definition
entail a right to take unfair commercial advantage of a
trademark."
Implications
If this decision is used for future decisions (which is what
happens with unhelpful frequency), the implication is that the
slightest income from a website or related website (Google Ads?)
could be used to undermine a freedom of speech defence and see
domains handed over.
The panel also unconvincingly dismisses Burgar's point that a
10-year delay is unacceptable. Burgar quotes a UDRP decision by a
different domain arbitrator (NAF) in which it decided that a
two-year was sufficient delay for rights in the domain to have been
lost. The panel dismisses this, saying that the panel in that case
had made a "mystifying" decision and denied that there was a
"meaningful precedent under the Policy for refusing to enforce
trademark rights on the basis of a delay in bringing a claim
following use of a disputed domain name".
Since there was also not "substantial evidence" that indicated
Cruise had approved of or condoned Burgar's use of the domain, it
was "not prepared to import a bar against his cause".
It's hard to escape the feeling that the WIPO panel has, for the
1,000th time, looked for a reason to hand over the domain rather
than follow the resolution process to reach a decision.
Flawed system
Since future decisions are frequently made by referring to older
decisions, rather than taking each case on its own merits, an
already flawed system is starting to wander off on its own,
unwelcome tangent.
This flawed process is also demonstrated in the choice of
panellists. WIPO itself chooses individual panellists in an opaque
and controversial process which, it is well documented, hugely
favours those who choose most regularly for the complainant.
In a three-person panel, the complainant choses one panellist,
the respondent the second, and the two seek to reach agreement on
the third. If they cannot, WIPO decides for them.
In the Tom Cruise case, Cruise's lawyers chose Sally M. Abel,
who, according to the most recent figures we have from UDRPinfo.com, has voted in the
complainant favour in 83 per cent of cases. Burgar chose David
Sorkin who has voted in the complainant favour in just 33 per cent
of cases. The 50 per cent disparity between the two illustrates the
highly unusual differences in opinion between experts in a process
that has run for nearly a decade.
The presiding panellist, chosen it is assumed by WIPO, is one of
the most frequent UDRP panellists, Frederick M. Abbott, who has
voted in the complainant's favour in 79 per cent of cases.
The UDRP process (there is no appeal) has become so polarised
that if you were provided with the names of the panellists in any
given case, you could predict with almost complete certainly what
the outcome was, regardless of the merits of the case actually
being heard.
So while Jeff Burgar is an extreme example of a domain
registrant, Tom Cruise's victory serves only to highlight the need
to reform the domain arbitration process.
© The Register
2006
