Domain Management

The Popularity of .co (not .com) Domain Name Disputes

One of the most popular top-level domains under the Uniform Domain Name Dispute Resolution Policy (UDRP) is not even a gTLD (generic top-level domain). It's a ccTLD: .co, the country-code top-level domain for Colombia, in South America. Based on statistics at WIPO as of this writing, 29 .co domain names have been the subject of UDRP disputes this year, making it the most-disputed ccTLD under the popular domain name dispute policy. more

Statutory Remedies for UDRP Grievants

The U.S. is unusual in that grievants of a UDRP award have a statutory remedy from an adverse UDRP award, namely an action for declaratory judgement under the Anticybersquatting Consumer Protection Act (ACPA). The action is not an appeal, but a de novo assessment of the parties' rights, either that the domain name holder is cybersquatting or its registration was lawful. Under U.S. law UDRP awards are not treated as arbitration awards subject to the Federal Arbitration Act but as new disputes. more

Disputes Falling Outside the Scope of the UDRP

The UDRP is a forum of limited jurisdiction designed for trademark owners to combat a certain kind of tortious (sometimes tipping to criminal) conduct by which registrants register domain names with the bad faith intent of taking economic advantage of owner's marks and injuring consumers by beguiling them to disclose personal information. The forum is not open to trademark owners whose claims are outside its scope, even though they may include allegations of cybersquatting. more

Declaring and Declining to Find Reverse Domain Name Hijacking

What to one panelist is clearly bad faith conduct in filing a UDRP complaint, to another is excusable for lack of proof. The disagreement over reverse domain name hijacking centers on the kind of evidence necessary to justify it and the nature of the burden. RDNH is defined as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name." Rule 1, Definitions. more

Unlawful Targeting of Trademarks and Consumers in Registering Domain Names

Unlike trademark applications which go through a lengthy examination process before advancing to registration, anyone (anywhere in the world) can register a domain name identical or confusingly similar to a trademark - instantly and no questions asked, at least, in the traditional space (the legacy gTLDs)! With the new gTLDs registrants will receive notice of possible infringement if the brands are registered with the Trademark Mark Clearing House, but notices do not function as injunctions to block registrants from registering infringing names. more

Using the URS as a Preliminary Injunction for Domain Name Disputes

As I've written before, the Uniform Rapid Suspension System (URS) - the domain name dispute policy applicable to the new generic top-level domains (gTLDs) - is just not catching on. Whether because of its limited suspension remedy, high burden of proof or other reasons, the URS remains unpopular among trademark owners. However, there's one interesting use to which the URS can be put. more

Strategic Use of Screenshots from the Wayback Machine

Internet Archive contains a vast library of screenshots of websites that its Wayback Machine captures sporadically over the course of domain names' histories. While it doesn't compile daily images it opens a sufficient window to past use which is unique, invaluable, and free. (There are also subscription services, but they come at a hefty cost!). How it's used (and why the Wayback Machine should be in a party's toolkit) for supporting and opposing claims of cybersquatting is illuminated in a number of recent UDRP cases. more

Who Contacts Whom: A Material Factor in Selling Domain Names Corresponding to Trademarks

Acquiring domain names for the purpose of selling them to complainants is the second most heavily invoked of the four circumstances that are evidence of abusive registration. Because no self-respecting domain name reseller will ever admit to acquiring domain names "primarily for the purpose" of selling them to complainants "for valuable consideration in excess of [their] documented out-of-pocket costs directly related to the domain name" evidence of bad faith is typically deduced by other factors. more

Cybersquatting & Banking: How Financial Services Industry Can Protect Itself Online (Webinar)

Businesses in the financial services sector are among the most frequent targets of cybersquatters. In this free webinar, I will be joining Craig Schwartz of fTLD Registry Services to provide important information about how domain name fraud is affecting the financial services industries, including banking and insurance, and what businesses and consumers can do to protect themselves online. more

Warranties and Representations on Purchasing Domain Names: What are they Worth?

The WIPO Final Report published in April 1999, from which sprung the UDRP the following October, is useful in shedding light on what the assembled constituencies had in mind in agreeing to particularly contentious issues. One of those issues was whether registrants had to actively search trademark records before purchasing domain names. Other than paragraph 2 of the Policy which codifies registrants' representations, there is no guidance as to what registrants must do... more