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.
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".
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."
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.
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
