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JMRI Defense: Regaining DecoderPro.com

Cybersquatting and the decoderpro.com domain name

In October 2004, we learned that Matt Katzer had registered decoderpro.com as a domain name in February 2004. Katzer had never had any role in developing DecoderPro. When asked about the domain name registration, Katzer said he was considering whether he would
"be able to take the open source code and turn it into a licensed product so it could be distributed"
Katzer also said he had the name because
"If I decide that to released (sic) a licensed version of an open source development effort, what better place to have it then the name of the development effort?"

Bob Jacobsen, one of the JMRI developers and the person who maintains the JMRI web site, wrote to Matt Katzer demanding the domain name. Katzer never replied. Jerry Britton, a JMRI user, offered to trade another domain name for it. Instead, Matt Katzer sued him. That suit was eventually settled by having them swap domains, so that Jerry ended up with decoderpro.com -- and a lot of restrictions that Katzer imposed on him. For one, Jerry couldn't transfer decoderpro.com to anyone else, including JMRI. If he did, Jerry would have to pay $20,000 plus attorney's fees. (Of course, Katzer's attorney Kevin Russell, who drafted the settlement agreement, did not impose similar transfer restrictions on Katzer for the domain name Katzer got out of the deal.) Katzer also demanded that Jerry not talk about this agreement, on pain of a $20,000 penalty. We learned of this settlement from public records in the Oregon federal court, because Katzer's attorney didn't file the agreement under seal as he was supposed to.

Getting Decoderpro.com Transferred

DecoderPro is a JMRI trademark, and we wanted that domain name. As part of our efforts to defend JMRI from Katzer's infringements, we asked the Court to order the domain name transferred as a part of a cybersquatting claim.

Matt Katzer filed a motion asking that the whole cybersquatting claim be dismissed because we'd not "joined all necessary parties" -- that is, we had not named the the current holder of the domain name, Jerry Britton, who lives on the other side of the country. There is a legal rule that a case has to include all people whose interest might be seriously harmed, so that they can have a say in the case. Katzer was trying to use it to force us to either drag in Jerry Britton, another model railroader who just wants Katzer to leave him alone, or drop our request to get our domain name back.

We argued against having to include Jerry, both in our written response to the motion (see page 14) and during the January 19th hearing, but it was not clear how the Judge would rule.

The UDRP Complaint and Decision

The Internet community has a process, the Uniform Domain Name Dispute Resolution Policy (UDRP), for determining who has the right to a domain name. The process is well documented, and requires those who want a domain name transferred to themselves to prove they are entitled to it, the current registrant is not entitled to the domain name, and that the current registrant registered and used the domain name in bad faith.

The UDRP process starts with a formal complaint, which is a legal document requiring significant preparation. The domain name holder is then allowed to respond, and both sets of documents are sent to an independent panel. There are a number of procedural steps that have to be followed to ensure that the decision is made fairly and independently. All of this is expensive, typically costing $1500 or more for the panel alone.

On May 23, 2007, we filed a UDRP complaint with the World Intellectual Property Organization (WIPO) in Switzerland.

The WIPO panel promptly returned a decision. Because of the transfer from Katzer to Jerry Britton, also known as "cyberflight", we argued that Katzer's bad faith actions should be considered. The panel agreed and had an entire section on "Katzer's Bad Faith", including:

  • "Indeed, the evidence supports the conclusion that Katzer had no purpose in registering the name except to keep it out of others' hands, including Complainant's hands."
  • "it is difficult to conceive of a legitimate use Katzer could make of the Domain Name."
  • "In the Panel's view, there is essentially a purpose on the part of Katzer to disrupt the business of a competitor by interfering with Complainant's exercise of his trademark rights."

and ended with the statement that:

  • "The Panel concludes that Complainant has demonstrated sufficient evidence of bad faith registration and use of the Domain Name on the part of Katzer"

The WIPO Panel then ordered the decoderpro.com domain name transferred. We expect it to be transferred shortly.

It's undeniable that this is a win for JMRI. An impartial panel, experienced in Internet and trademark law, has made a clear statement that Katzer had acted in "bad faith". Although that's been clear to us in the community since the beginning, having an impartial panel ruling in our favor is a big step toward holding Katzer accountable for his actions.

We have informed the Court of this result, and pointed out that it makes Katzer's objection moot because we will no longer ask the Court to order transfer of the decoderpro.com domain name. That removes any need to entangle Jerry Britton in the case, while allowing us to press the cybersquatting claim.