http://ipkitten.blogspot.com/2020/03/when-court-turned-to-expert-on-whether.html
A time-revered pastime of IP commentators is discussing “things that they did not teach you in law school”. One of IPKat’s favourites is the role of expert witnesses. Well-known are instances of expert testimony in understanding the invention in a patent case, or valuation of a trademark portfolio.
Kat friend Paul McClelland discusses a less frequent use of expert testimony in a case in Singapore concerning a contract for the transfer of a domain name, where an expert witness was relied upon to determine whether cybersquatting had occurred.
As previously reported by IPKat, here, 3 Corporate Services Pte Ltd v Grabtaxi Holdings Pte Ltd [2020] SGHC 17 concerned the enforceability of a contract for the transfer of a number of ccTLDs containing the word “grab”. These domain names had been purchased by various entities who were connected in some way with the plaintiff, in or around the time that the defendant, today a leading provider of ride-hailing and financial services across South-east Asia, established operations in various South-east Asian countries under the “GRAB” name.
It later transpired that the plaintiff (or a related party) had registered more than 1,000 domain names, including names similar or identical to other well-known brands. As a result of this information, the defendant declined to make payment, which ultimately led to the Court proceedings alleging breach of contract.
The expert evidence
In its defence, the defendant argued inter alia that the contract was unenforceable on grounds of public policy because the plaintiff was engaged in cybersquatting. As public policy illegality is rooted in the interests of a community, a party relying on it must (a) establish what the relevant community is, and (b) show that the legitimate interests of that community merit intervention against the sort of activities complained of.
Being a dispute about the sale of a domain name, the relevant community for this case was naturally the Internet community. As such, the defendant chose to introduce an expert witness from the Internet community: an Singapore Domain Name Dispute Resolution Policy Service (SDRP) panellist and IP practitioner, to give expert testimony both on “the nature of cybersquatting and whether the defendant was engaged in it” and “whether the agreement may be rendered unenforceable for public policy considerations”.
Expert in sleeping
On the first question, the expert proceeded to outline the history and development of the domain name system (DNS) that powers the internet and its stakeholders. The purpose of this discussion seems to have been to give the Court an insight into the mindset of the Internet community, its standards, and the expectations of its stakeholders.
The expert then reviewed various publications from the relevant stakeholders in the DNS system, including the Uniform Domain-name Dispute-resolution Policy (UDRP), the Singapore Network Information Centre’s (SGNIC) equivalent, and a World Intellectual Property Office (WIPO) report.
Against this backdrop, the expert opined that “cybersquatting” was synonymous with “deliberate, bad faith, abusive registration” of a domain name in violation of trade mark rights, and that it was something that the Internet community widely vilified. The report concluded, based on the timing of the activities, and the multiple other registrations owned by the plaintiff or its related parties, that the plaintiff’s conduct met the WIPO definition of “cybersquatter”.
The Court accepted the expert’s definition and found that the plaintiff squarely fell within the definition of a cybersquatter.
Comment
On the surface it may be tempting to treat domain name dispute resolution policies as law. Certainly, they bear some of the hallmarks: cases brought under the UDRP or SDPR employ a set of rules, a decision-maker, and two or more parties in dispute. The parties will rely on legal rights, such as trade mark registrations, they will establish evidence, and they will make submissions.
However, this case serves as a reminder that the Internet’s infrastructure is a community ecosystem, with its own rules and stakeholders. While regulated by national law, DNS dispute resolution mechanisms are not part of it (see e.g. R & A Bailey & Co. v. WYSIWYG). Courts may intervene where other principles apply (in this case, public policy, or e.g. in cases of trade mark infringement or breach of trust: see TWG Tea Pte Ltd v Murjani Manoj Mohan [2019] SGHC 117), but evidence concerning the DNS might also lie within the remit of an expert.
Photo by the author
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