A New York based law firm recently won an arbitration proceeding in a fight over the use of a domain name. The arbitrator ruled the domain name was confusingly similar to the name of the law firm. It also applied a novel “bad faith” standard. That’s good news for the law firm, but maybe not so great for Web site operators who want to vent their gripes about customer service.
The law firm in question is Schwartzapfel Lawyers, P.C. It sought a ruling under the Uniform Domain Name Dispute Resolution Policy (UDRP) to compel the party who registered the domain name schwartzapfellawyers.com to transfer the name to the law firm.
The law firm was not happy that visitors to the Web site got routed to a Ripoff Report page dedicated to disparaging the firm.
The UDRP arbitration process is a relatively quick and low cost method for resolving disputes about domain names. It was adopted back in the day when “cybersquatting” was a money making endeavor. There was a time when trolls would register trademark brand names as domain names, and offer to sell the name to the trademark holder.
The UDRP requires the trademark holder to demonstrate that the domain name is confusingly similar, and that the troll registered the offending domain name in bad faith.
In this case, item one wasn’t too hard to prove – “schwartzapfellawyers.com” is unquestionably similar to “Schwartzapfel Lawyers, P.C.” As the panel noted, merely removing the letters “P.C.” at the end doesn’t lessen the confusion to any degree.
The bad faith element, though, was a little trickier. Typically, bad faith consists of the troll offering to sell the name back to the trademark holder. That wasn’t the case here. The troll just wanted the world to hear its beef with the firm, which apparently consisted of a “series of explicit insults aimed at attacking” the firm. In the panel’s view, this was bad faith.
The troll never appeared in the proceeding to defend itself, so it’s no great surprise that it lost. But the decision raises some troubling issues. Is it really “bad faith” to criticize a law firm (or a restaurant or a mechanic for that matter)? And wouldn’t anyone who was initially confused by the domain name realize it was not the law firm’s site the minute it landed on the Ripoff Report site? The UDRP process is a great tool to prevent misconduct. I’m just not sure it should be used to stifle criticism.