Time to rethink Section 3.5 of the WIPO Guide – Domain Name Wire

Current case law does not correspond to the objective of the UDRP.

Many UDRP panelists consider the WIPO Overview of WIPO Panel Views on Selected UDRP Issues, Third Edition as a bible for examining the facts in a UDRP case. The guide provides an overview of current UDRP case law.

Although the guide reflects what UDRP panelists have generally decided in the past, it effectively acts as a forward-looking guidance 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 confused me – actually two related sections.

Section 2.9 asks the following question: “Do ‘parked’ pages with pay-per-click links support the legitimate rights or interests of respondents?”

This section refers specifically to creating a positive benefit for the domain owner. If they have a page parked with pay-per-click links that relate to the generic nature of the domain, that’s evidence in favor of the domain owner that they have legitimate rights or interests in the domain. The full text reads:

Applying Section 4(c) of the UDRP, the panels concluded that the use of a domain name to host a parked page that includes PPC links does not represent a bona fide offer where such links compete or capitalize on the reputation and goodwill of the complainant’s brand or otherwise mislead Internet users.

The panels further noted that defendants’ efforts to suppress PPC advertising related to plaintiff’s brand (for example, through so-called “negative keywords”) may mitigate a targeting inference from the complainant.

The panels agreed that the use of a domain name to host a page including PPC links would be permitted – and therefore consistent with defendants’ legitimate rights or interests under the UDRP – where the domain name consists into one or more dictionary words or phrases and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase making up the domain name, and not to trade the trademark of the complainant (or its competitor).

In cases involving a website that is not primarily a “typical” parked or PPC site (e.g., a blog, forum, or other informational page), where other clear, non-pretext indicia of rights or legitimate interests of the respondent are present, some panels have been willing to accept the limited incidental presence of PPC links as not inconsistent with the rights or legitimate interests of respondents.

So if you are hosting a PPC parking page with complainant-related ads, that’s bad. If you host a page with advertisements related to the generic meaning of the domain and not the complainant, this can really help you. (That’s why people are wrong to say that parking a domain can only be harmful in the UDRP; it can actually help you if done correctly.)

Section 2.9 also references section 3.5, and it is this section that I find troubling. Section 3.5 states:

3.5 Can material generated by third parties appearing “automatically” on the website associated with a domain name constitute a basis for finding bad faith?

In particular with respect to “automatically” generated pay-per-click links, the Panels felt that a Respondent cannot disclaim responsibility for content appearing on the website associated with its domain name (such links would not confer nor ipso facto to the respondent any rights or legitimate interests).

Neither the fact that such links are generated by a third party such as a registrar or an auction platform (or their affiliate), nor the fact that the defendant himself may not have directly benefited from them, n alone would not prevent a finding of bad faith.

Although a defendant cannot disclaim liability for links appearing on the website associated with its domain name, the panels have found that the defendant’s positive efforts to avoid links that target the plaintiff’s mark (e.g. example, through “negative keywords”) were a mitigating factor in the bad faith evaluation.

This section discusses a common defense that some domainers have about parking links: they have not selected the advertising links on the parking page. The algorithm did.

Current case law is that the fact that the domain owner has not selected the links that display on a parking page that he has set up is not a valid excuse in the UDRP. It might be right.

What I disagree with is in the second paragraph:

Neither the fact that these links are generated by a third party such as a registrar or an auction platform (or their affiliate), nor the fact that the respondent himself may not have directly benefited (emphasis added), would in itself preclude a finding of bad faith.

I think there has to be a distinction between a parking page that a domain owner has pointed their domain to for a profit and ones set up by a registrar, often without the knowledge of the domain owner .

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 the one she is planning to start. She does not use the domain immediately and the registrar puts advertisements on it.

Under Section 3.5, Jane is responsible for such links.

I think that’s a lot to ask of the typical end-user domain registrant. And I don’t believe it conveys the purpose of the UDRPwhich is to prevent people from deliberately cybersquatting on domains.

In ponthier.com, Warwick ruled in favor of the respondent. He noted that the Respondent could not escape blame for the links that the Registrar had placed on the parked page, but it appears that the links targeting the Complainant appear only in the Complainant’s country. (Oh, and the Respondent’s last name is Ponthier.)

I think panelists should rethink this case law when deciding cases. They can make the difference between a domain investor using Sedo or Bodis and the innocent small business owner whose registrar tried to profit from registering his domain.

This distinction would further the objectives of the UDRP.

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