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By
Brett Lewis, Attorney, Lewis & Lin LLC
| Editor's
Note:
If you find yourself asking
the question in our headline, this guest article
by veteran Internet legal counsel Brett Lewis
of Lewis
& Lin LLC is for you!
Being on the receiving end of a UDRP
Complaint can be unnerving and worrisome
for some clients, while others receive it as a declaration
of war. Many factors will influence
whether a domain name registrant chooses to fight
back and file a response, including the value
of the domain name, the registrant’s ability to
fund a defense, and the odds of successfully
defending the domain name.
Although the odds are generally stacked
against registrants statistically,
statistics can be misleading. Many times respondents
should expect to lose, because they are
engaged in conduct that runs afoul of the dictates
of the UDRP and governing law. The odds for
respondents in contested proceedings are far
better – perhaps in part because the Respondents
are represented by counsel, and in part because the
domain names in question are worth defending.
Disputes over generic terms and dictionary
words |
Brett
Lewis
Lewis & Lin LLC
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| where Complainants grasp
to smear a respondent with the taint of bad faith
are common. In some cases, a history of
registering other trademarked domain names may be
evidence of bad faith, while on other cases
involving generic, geographic or other descriptive
dictionary words, such inferences may not so readily
be drawn. It is incumbent upon the respondent
and his or her attorneys to bring all relevant
information to the Panel’s attention.
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Over the
years, my
firm has taken on a number of cases at
the stage where the respondent had lost a
UDRP decision; in each case the respondent had been
represented by counsel who omitted to mention and failed
to include key facts in their papers. In each
such case, the respondent should have prevailed
at the UDRP level, rather than having to file papers
in Court to stop the transfer of a legitimately
registered domain name.
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Cyber
law image from Bigstock |
For most clients, losing
a UDRP is the end of the line. Although
there are still decisions in which panels rule
subjectively, it is possible to cut down on
subjective rulings substantially by hiring an expert
in domain name law. Complicating that choice
is the fact that not all domain name attorneys
are created equal. Some of the glaring
mistakes I alluded to above were committed by
other domain name attorneys – so-called
experts (none of them named Ari
Goldberger, John Berryhill or Zak
Muscovitch - or Brett Lewis for
that matter)! Poor advice will do more damage
to a UDRP defense than a well-worded
complaint.
Most domain name
attorneys will take on cases on a flat fee basis
– be wary of those who do not – and
some even handle defenses on a full or partial
contingency. If an attorney won’t agree to
work on a partial contingency basis
(i.e., for a fixed fee plus a success fee,
instead |
| of for one larger
up-front fee), that may be an indication that
the attorney does not believe that your case
is meritorious, but is, nonetheless,
willing to take your money. Far too many
meritless papers are filed. Taking cases
on a partial contingency gives both parties
some skin in the game, so to speak, and sets
the incentives where they should be.
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Another important factor is
whether to opt for a single member or three-member
panel. Cost aside, there are very few cases
where I would ever recommend that a respondent
choose a single-member panel. Single panelists
are randomly assigned, which introduces significant
risk into the decision-making process. Not
all panelists are created equal and some have
less experience adjudicating domain name disputes,
or an inherent bias in one direction or the other.
This is not only a matter of opinion, but also of
statistical fact. For whatever reason, respondents
fare better with three-member panels than with
single panelists.
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In conclusion, if you
find yourself served with a UDRP complaint, seek
out the advice of a trusted domain name
attorney, or better yet, speak to several
of them. The good ones tend to turn up
in conversation and merit mentions on blog
posts for the right reasons. Make sure
that they have your best interests at
heart and aren’t just interested in
collecting a fee.
If the attorney doesn’t
ask you whether the domain name is worth more
than the cost of defending it, he or she
probably isn’t going to care whether you win
or lose, or whether you spend more money
defending a domain than what it’s worth.
Most of all, try to separate emotion
from the business decision |
Legal
expense image from Bigstock |
| on whether to spend
the money on a domain name defense – many
UDRP issues raise issues of fairness, but
unless you can spare the money on principle,
try to be dispassionate in your
decision making. |
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