When football or hockey players get into a fight during a game, flags get thrown and penalties are assessed -- and, of course, TV ratings go up. But when referees start scrapping, who's left to break up the action?
On Friday, a federal court in Wisconsin will try. Judge Charles Clevert will be hearing arguments in an ongoing dispute between the two major American publications for sports officials: Referee magazine, which runs the website Referee.com, and eReferee.com.
Domain squabbles are a dime a dozen. But two aspects set this case apart from others. First, the case has so far resulted in perhaps the broadest prohibition yet in a domain lawsuit. More importantly, it demonstrates how a trademark holders can engage domain-sanctioned mediators but can also ignore the result if it's not in their favor.
In addition to being barred from operating eReferee.com, its owner Right Sports, Inc., was enjoined from using the word "referee" in any "domain names, directory names or other such computer addresses."
This order effectively means that Right Sports can't own or operate eReferee.com, nor can it run a site such as "ConsultTheReferee.com" or even "AnotherDomain.com/referee."
Clevert's injunction even exceeds the terms Referee magazine was originally seeking in its litigation; Referee was only attempting to wrest the existing Right Sports domains that have the word "referee" in them.
Yet, after this initial ruling in its favor, the magazine now seeks a contempt-of-court violation against Right Sports, which is redirecting eReferee traffic to Officiating.com.
Right Sports, meanwhile, is filing for a stay until the final verdict comes through. In its docket of exhibits is a spreadsheet printout estimating the millions of dollars in damage such a sweeping order will do to its business.
This is the part of the lawsuit being argued Friday.
"We're not trying to be deceptive, we're not trying to capitalize on the name," said Jim Flores, Right Sports' president. "We are trying to do things that apply to the market that we're in."
Why this matter has even returned to court is an issue for a later date, but it's an important one.
Last spring, Referee filed a complaint against eReferee.com through ICANN's Uniform Dispute Resolution Policy (UDRP), claiming the eReferee name was confusingly similar to Referee.com and that the site was being operated "in bad faith."
Right Sports responded that the word "referee" -- on which the magazine has owned a trademark since 1989 -- is generic and can't be treated like the exclusive province of a single company.
On June 26, the National Arbitration Forum, retained as the mediator in the UDRP dispute, returned a verdict in Right Sports' favor. "The word Referee is generic for an official who serves as an umpire officiating at sports events and is a weak mark," wrote retired New York Supreme Court Justice Theodore Kupferman in his decision.
However, Referee ignored the non-binding UDRP decision and filed suit in the Seventh District Federal Court in Milwaukee, Wis.
Referee and its attorneys declined comment.
Michael Froomkin of the University of Miami Law School and operator of the ICANN Watch website calls this case an "outlier" -- going beyond almost any other order issued against alleged trademark violators.
"This is what we call -- it's sort of a technical term -- 'reaming them,'" Froomkin said. "It's a very unusual case in that you have a court being tougher on the registrant than the arbitrators.
The case also demonstrates how trademark holders can engage the UDRP machinery but can neglect the end result if it's not in their favor.
"The plaintiffs get two bites at the apple under the UDRP," Froomkin said. "The interesting thing is that under another court decision in Boston about a month ago, the defendant doesn't get a second bite."
He cited the recent Corinthians.com dispute, where the trademark holder (a Brazilian soccer team) won its UDRP process and the ousted domain name owner (a site quoting the Bible) tried to appeal in the courts.
In the court case, lawyers for the trademark holder conceded that they had no intent of pursuing any lawsuit, which resulted in a dismissal. Froomkin explained, "When a case is dismissed, the UDRP goes forward is as if the case had never happened."
This could mean that while eReferee.com may eventually be able to overturn the court-granted injunction, domain name owners who lose a UDRP dispute may not be so lucky.
"(The soccer team) made this concession, knowing that if the judge bought it, they'd get the domain name anyway," Froomkin said. "By succeeding in this, they've mapped the strategy which completely guts the ability of a losing registrant to go to court in the United States. It's really clever. But if it catches on, you're going to have a system where cases like this one keep coming up, but the other party doesn't stand a chance if it loses the UDRP."
