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Almost everyone familiar with the phrase “bodacious tatas” would agree that among the last things it brings to mind is an Indian conglomerate. Unless, that is, you happen to be an arbitrator who handles disputes over Internet domain names. Because if you are, you would have ruled that the House of Tata, an Indian manufacturer of industrial and consumer products, is precisely what Web surfers think of when they come across the domain name www.bodacious-tatas.com. You would find, in fact, that the connection is strong enough — identical or confusingly similar in legal parlance — to constitute illegal trademark infringement. At least, that is what the arbitrator ruled in Tata Sons Ltd. v. D&V Enterprises, a case brought under an administrative proceeding to resolve domain name disputes known as the Uniform Dispute Resolution Policy (UDRP). And in so finding, not only did he gloss over the difference between “tatas” and “Tata,” but even more remarkably, determined that the addition of the word “bodacious” actually made the domain name more confusingly similar, since according to Webster’s Dictionary, the term means “high quality,” which Tata products, he noted, are known for. Unfortunately, during his little grammar lesson, the arbitrator either ignored or failed to realize that “bodacious tatas” is also a common American slang term for a part of the female anatomy. Instead, he found that the domain name owner, who ran — surprise! — a pornographic site, was illegally “attempting to take a cash-ride on [Tata Sons'] image and status.” To preclude any further defilement of the Tata name, he ordered that the domain name immediately be withdrawn from the lascivious grasp of its wrongful owner. SHARE OF ROGUE DECISIONS Over the 2 1/2 years the UDRP has been in use, it has seen its share of rogue opinions such as Tata Sons. The domain name www.tonsil.com, for instance, was turned over to a German company with the trademark “Tonsil,” based in part on a finding that the term was “an invented word that has no meaning or significance.” In another case, www.barcelona.com was turned over to the city of Barcelona, despite long-standing precedent that prevents cities and other political entities from trademarking their own names. Such questionable decisions provide fuel for critics of the UDRP, who have long contended that it is biased in favor of trademark owners. Its proponents counter that such cases make up only a handful of the some 6,000 decisions that have come down since the UDRP’s debut in January 2000. “The number of arguably aberrant decisions are dwarfed by the total number of cases,” said Jay Scott Evans, one of UDRP’s five original drafters and a partner at Adams, Schwartz & Evans in Charlotte, N.C. “If we looked at court decisions the same way, we would rewrite the Constitution.” Evans does not dispute that trademark owners win a solid majority of the time — a recent study by Canadian law professor Michael Geist put the figure at around 70 percent — but he said this seemingly lopsided outcome actually reflects the type of case it is designed for. “The policy was written to allow trademark owners who have an absolute slam-dunk case to win back their domain name from a cybersquatter,” he said. “If that is the case, in fact you should win 100 percent of the time.” There have been instances of panelists who have “bent over backward” to rule for the trademark owner, acknowledged David H. Bernstein, a partner at Debevoise & Plimpton who estimates he has arbitrated close to 100 cases. However, he said such cases were rare. He estimated that his own rulings were “close to 50-50.” Whatever the reasons for the high win rate, it is a strong draw for trademark holders looking to get back an infringing domain name. “It’s a pretty good process for a trademark owner,” said Allen Baden, a partner in the San Jose, Calif., office of Kenyon & Kenyon. “The statistics are pretty darn pro-trademark-owner.” His own experience confirms this view: He said he had yet to lose a single case of the 15 or so he has brought on behalf of trademark owners under the UDRP. The procedure’s speed and relatively cheap price also appeal. “You can usually expect a decision within two months of filing your complaint,” Baden said. And although the process got a bit more expensive when WIPO — the most popular forum for UDRP disputes — raised its filing fee from $1,000 to $1,500, the total cost, including legal fees, is still typically less than $7,000, he added. NOT FOR EVERY DISPUTE But lawyers cautioned that the mechanism will not work for every domain name dispute. “UDRP is not ‘one size fits all,’” said Evans, the UDRP drafter. “It’s a specific tool designed for cybersquatting. It’s not a tool to take care of all of your online trademark problems.” Debevoise’s Bernstein said two types of cases in particular should not be brought. The first is a dispute between two legitimate trademark owners, such as Apple Bank and Apple Computer. The second involves the “serial cybersquatter,” who, despite having lost dozens of cases, continues to cybersquat. In such a case, a lawsuit is the better approach, he said, because unlike the UDRP, damages and attorney fees can be awarded. Rose Auslander, a partner with Carter Ledyard & Milburn, said the process works best in cases where the domain name owner is not particularly concerned with keeping the domain name. In fact, about half the time, the respondent defaults, resulting in an almost sure win for the trademark owner. It is when a serious conflict arises that things can get sticky, she said. Although the process is designed to be streamlined, with no discovery or motion practice, she said she has recently seen instances in which the arbitrator allowed motions to be made, increasing costs for the parties. Auslander said she has also noticed a rise in counterclaims alleging reverse domain name hijacking, or an unfair attempt by a trademark owner to take a domain name from a legitimate owner. Since complainants are not guaranteed the right to a response, “they really have to assemble all the evidence upfront,” she said. WHOIS DATABASE CHANGED Changes to the WHOIS database, which lists contact information for every domain name holder, have also jacked up costs. About a year ago, Verisign, which maintains the database, eliminated free searches, said Amy Goldsmith, a partner at Gottlieb Rachman & Reisman in New York. Now, to search for other domain names held by a suspected cybersquatter, you have to use a private search service, which can cost several hundred dollars, she said. But the UDRP’s biggest shortcoming, Auslander and others agreed, is that it is “completely not binding on the courts.” So if the losing party decides to go to court, no matter how much time and money was spent on the UDRP proceeding, a win means nothing. Instead, as many trademark owners have already learned the hard way, the parties must litigate from scratch. The UDRP may no longer be a sure-fire means of fighting a cybersquatter (if it ever was), but even its critics concede that it has its advantages. “From a practical sense it’s still hard to turn down the opportunity to use a tool like the UDRP,” Auslander said.

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