18 October 2005

Needled in Geneva

I arrived at 03:30 this morning after a 4-hour drive from Luton and a very full day in Geneva where I attended the WIPO Domain Name Panellists Meeting and visited the Quaker United Nations Office ("QUNO") for lunch. It was a fantastic experience. I learned a lot from those meetings. Enough to blog away for days. As I am still quite exhausted from the journey, I'll mention just one amusing incident though it wasn't fun for me at the time.

A very nice man called Lawrence Nodine (a partner of Needle & Rosenberg PC - you see the very bad pun - of Atlanta, Georgia recently acclaimed as the top law firm for IP in the USA) was delivering a very erudite paper entitled "Trends in Domain Name Registration using Whois Details". Though it was scholarly it was almost the last paper of a very long day and I am afraid I allowed my attention to drift as I wanted to look up the actual text of the Policy for a question that I had intended to to ask. Suddenly thorough my reverie I caught the words "Southwest Airline" and "Is Mr Lambert here in the audience?" Rather foolishly I stuck up my hand and mumbled something like "Yes here". "Mr Lambert" said Lawrence, "can you tell us what happened in that case?"

I had decided Southwest Airlines Co. v. Lorna Kang at the end of last year or the beginning of this. It was quite an unremarkable case and the only reason it stuck in my memory was that it was one of the last bits of work that Piper Rudnick must have done before their merger with DLA. Lawrence had been talking about registrants' conduct and I did recall that Lorna Kang had been a respondent in a lot of cases and I had been aware of that but that was all I could say. Everyone was glaring at me and it was clear that that was not the answer that Lawrence was expecting. "Anyway" said Lawrence, "you were really anguished which is why you denied the complaint." "Nonsense" said I. "It was quite straightforward. I found in favour of the airline." The screen had a reference to "My Little Duckie". "I can't remember anything about "my little duckie," I blurted. Fortunately, Matthew Harris had a BlackBerry and he looked up the case to which Lawrence referred. An announcement from the floor attributed the decision to a "nameless American panellist" and I was exonerated from what appeared to have been an eccentric decision.

The unnamed American panellist was in fact none other than Professor Frederick Abbott, Edward Ball Eminent Scholar of Florida State University and the case that Lawrence had in mind was Southwest Airlines Co. v. Cattitude a/k/a LJ Gehman. In that case, Professor Abbott denied the complaint for absence of bad faith. Having read the decision very briefly, I can see why. The airline relied on an affidavit from a private detective of a conversation in which the respondent mentioned a fee for the sale of the disputed domain name. That evidence did not impress Professor Abbott and I doubt that it would have impressed me.

As the panellist noted, the detective's initial offer to purchase the domain name was clearly rejected by respondent, with an indication that he had no intention to sell the name and that he was using it in connection with its business. The agent telephoned the respondent again and followed up with another e-mail request. On this occasion, the respondent reiterated that he had no intention of selling the disputed domain name. He added that he hoped to keep further inquiries away by stating that he would not accept an offer less than $25,000 wishing the investigator good luck in finding an alternative domain name.

The contention that this constituted evidence of registration “primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of [respondent’s] documented out-of-pocket costs directly related to the domain name” was clearly nonsense. As the panellist put it:

"With perhaps rare exception, every business asset is for sale at some price. Southwest Airlines is for sale at some price. The fact that Respondent on repeated inquiry could be induced to say, There is some price at which I would sell this domain name” shows nothing more than that Respondent is an ordinary businessperson. Taken in the context of the correspondence between Complainant’s agent and Respondent, the evidence shows that Respondent registered the disputed domain name to use in connection with its apparel business, and not for the purpose of selling it to complainant (or a third party). Complainant’s characterization of Respondent’s conduct omitted information highly material to this proceeding."
I have to say that I find much force in Professor Abbott's reasoning.

By coincidence I had mentioned Professor Abbott's work in "This and That". He has done a lot of valuable work (some of it published by the QUNO) and he is obviously a scholar of tremendous intellect and integrity. I take the attribution as a compliment - albeit a backhanded one - from Lawrence.

Other Posts on Domain Name Disputes
Always Consider the UDRP First 31 Aug 2005
Back from the Smoke 13 Sep 2005

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