Panelist Christopher S. Gibson that was one of the 3-member panel in the controversial Camilla.com WIPO case was also part of some other questionable decisions in the past. I don’t think that anyone thinks this is a surprise.
The Internet Commerce Association (ICA), a non-profit advocating for the rights and interests of domain name owners and related service providers, issued a statement regarding to the November 30 decision of the WIPO Administrative Panel in the case of Camilla Australia Pty Ltd v. Domain Admin, Mrs Jello, LLC (Case No. D2015-1593). You can read the statement below.
I used UDRPsearch.com to find some other questionable decisions by the panelist Christopher S. Gibson of this case. He has gone multiple times against the majority decision, has ordered the transfer of domains such as cafeinternet.com or has refused findings of Reverse Domain Name Hijacking. Here are a few examples I found in just one hour of research:
|David Green||cafeinternet.com E-mail Services, NA NA|
The complaint was accepted by Christopher S. Gibson and another panelist while Robert A. Badgley issued a dissenting opinion that he would deny the complaint.
|East End N.Y. Imports Inc.||DYNAMO.COM, c/o Privacy Protection and Autorenewal|
The complaint was denied but Christopher S. Gibson and one other panelist refused to find RDNH.
|The Clorox Company||Domains for sale, dba Netegg|
The UDRP was denied but Christopher S. Gibson had a dissenting opinion that the domain name should have been transferred.
He is also one of the panelists that ordered the transfer of the domain name senna.com in 2008.
This is the complete ICA statement regarding the UDRP decision for Camilla.com:
The egregious three-member panel decision in this Uniform Domain-Name Dispute-Resolution Policy (UDRP) dispute departs substantially from prevailing UDRP practice and relies on criteria inconsistent with those set forth in the UDRP as adopted by ICANN. This decision demonstrates once again that review and reform of the UDRP by ICANN is an urgent priority.
“The panelists on the Camilla.com dispute disregarded 15 years of UDRP practice, rewrote and distorted the Policy, and set an impossible standard for domain registrants to meet to avoid the loss of their valuable generic domains” said ICA Board member Nat Cohen, President of Telepathy Inc. “If this decision stands and guides panelists in other future cases, it would undermine the rights of millions of domain owners, undercut much of the domain industry, and would encourage further abuse of the UDRP system”, added Cohen.
The decision states that “the Panel accepts that the Respondent did not and could not reasonably have known of the Complainant’s trademark when it registered the disputed domain name in May 2009”. Based on prevailing and proper UDRP practice, that should have ended the analysis; the Respondent clearly could not have had bad faith intent when it registered the domain. Indeed, in ICA’s view, at that point the Panel would have had clear grounds to cite the Complainant for attempted reverse domain name hijacking. Complainant received its Australian trademark more than two years after the U.S.-based Respondent registered the domain, and only has a pending “intent to use” application for a U.S. trademark.
Instead, the panelists created new and unprecedented duties for registrants, proclaiming that a “registrant of domain names that adopts a PPC revenue model must ensure that after registration the disputed domain name is not used in a deceptive or confusing manner with new or developing trademarks” and a “registrant of domain names from the moment of acquisition must be prepared to take necessary steps to ensure that the PPC links generated by algorithm do not infringe existing trademarks, or any trademarks that may emerge in future”. (Emphasis added.) The panel’s decision would place a burden on domain registrants of generic words to monitor ongoing trademark registrations in every nation in the world. It would also require them to influence the proprietary ad placement algorithms of Yahoo!, Google, and other major online ad providers. Both of these new responsibilities are nowhere to be found in the UDRP rules and are impossible to meet.
The Camilla decision overthrows an important balance between trademark and domain registrant rights and provides a blueprint for any future trademark registrant to steal valuable generic domains without paying market value by simply initiating a UDRP action.
“While ICA respects trademark rights, the UDRP cannot be allowed to become a vehicle for legitimizing domain theft,” said Cohen.
The decision of whether to appeal this UDRP decision lies with the registrant. ICA believes that this decision should be overturned under the U.S. Anticybersquatting Consumer Protection Act (ACPA). If an appeal is filed, ICA will give full consideration to providing support to help persuade the court that the panel’s finding of bad faith registration and use is contrary to U.S. law.
ICA and its Counsel and legal advisory group are continuing to review the decision and may issue a further statement once that review is completed.