When ICANN implemented the Uniform Domain Name Dispute Resolution Policy (UDRP) in 1999, it explained its purpose as combating "abusive registrations" of domain names which it defined as registrations "made with bad-faith intent to profit commercially from others' trademarks... Bad actors employ a palette of stratagems, such as combining marks with generic qualifiers, truncating or varying marks or by removing, reversing, and rearranging letters within the second level domain (typosquatting). more
I opened an email from GoDaddy over the weekend on my phone. Or so I initially thought. I had recently helped a client transfer a domain name to a GoDaddy account (to settle a domain name dispute), so the subject line of the email -- "Confirm this account" -- simply made me think that I needed to take another action to ensure everything was in working order. But quickly, my radar went off. more
The Uniform Domain Name Dispute Resolution Policy (UDRP) is not an exclusive remedy for cybersquatting, but it is by far the preferred forum. Direct actions in courts of competent jurisdiction, the Anticybersquatting Consumer Protection Act (ACPA) in the U.S. are minimal in comparison, and it is rare for respondents to remove disputes to a court of competent jurisdiction before a UDRP decision (paragraph 4(k) of the Policy). Less rare (but not copious) are post-UDRP challenges under the ACPA. more
Despite the launch of more than 1,200 new generic top-level domains (gTLDs) in recent years, .com remains - far and away - the top-level domain that appears most frequently in decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP). But, some new gTLDs are attracting more disputes, including .site, which has become the new gTLD that, so far this year, has appeared in the most UDRP decisions. The rise of .site represents a change from last year, when .xyz was the most-often disputed new gTLD. more
At their best, UDRP panelists are educators. They inform us about the ways in which parties win or lose on their claims and defenses. What to do and not do. In addressing this issue, I'm referring to less than 10% of cybersquatting disputes. For 90% or more of filed complaints, respondents have no defensible answer and generally don't even bother to respond. But within the 10%, there are serious disputes of contested rights (contested even where respondent has defaulted). more
In order to be able to reply to the question of whether a new set of governance mechanisms are necessary to regulate the new Global Top Level Domains (gTLDs), one should first consider how efficiently the current Uniform Domain-Name Dispute-Resolution Policy (UDRP) from the Internet Corporation for Assigned Names and Numbers (ICANN) has performed and then move to the evaluation of the Implementations Recommendations Team (ITR) recommendations. more
The Uniform Domain Name Dispute Resolution Policy (UDRP) has never required that a complainant own any trademark registrations to succeed in a domain name dispute, given that common law trademark rights (if properly established) are sufficient. But, as a pair of recent UDRP decisions reminds us, even some registrations are inadequate. The issue relates to the first element of every UDRP complaint, which requires the party seeking relief to prove that the "domain name is identical or confusingly similar to a trademark... more
Two Uniform Domain-Name Dispute-Resolution Policy (UDRP) decisions posted this month involved domain names registered 20 and 21 years ago, David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, 21 years and Commonwealth Bank of Australia v. Registration Private, Domains By Proxy, 20 years. Complainants prevailed in both cases. The domain names stand out as being the oldest to have been found registered in bad faith, and transferred. more
The Uniform Rapid Suspension System (URS) is often described as a domain name dispute policy that applies to the new gTLDs. While that's true, the URS is actually broader than that. The URS (a quick and inexpensive policy that allows a trademark owner to obtain the temporary suspension of a domain name) applies to more than just the new gTLDs, that is, those top-level domains that are a part of ICANN's 2012 domain name expansion. more
A federal restraining order has been issued against a father and son accused of registering several domain names based on cycling legend Greg LeMond's name and his company. more
Shortly after I recently wrote about WIPO's new role as a domain name dispute provider for the .eu ccTLD, the Forum published its first decision on another type of "eu" domain name: eu.com. The decision involved the domain name nike.eu.com. What makes this case interesting is that it represents one of the few .com domain name disputes that includes a country-code in the second-level portion of the domain name. more
A number of recent UDRP decisions remind trademark owners (and counsel) that cybersquatting cases have to be built from the ground up. Each stage has its evidentiary demands. The first two demand either/or proof; the third, the most demanding, requires proof of unified or conjunctive bad faith registration and bad faith use of the accused domain name. Priority, which intuitively would be thought a factor under the first stage (as it is under the ACPA) is actually a factor under the third stage. more
"Voter databases and software systems in an overwhelming number of states -- 39 to be exact -- were targeted by Russian cyberattacks over the summer and fall of 2016," Allegra Kirkland reporting today in TPM more
Efforts to combat cybersquatting began in earnest in 1998 when the World Intellectual Property Organization (WIPO) (at the request of the United States Government supported by all member states) began an extensive process of international consultations "to address cross-border trademark-abusive domain name registrations." ... The extensive process concluded in the Spring of 1999 with WIPO publishing a detailed report... more
When in the Fall of 1999 the Internet Corporation for Assigned Names and Numbers (ICANN) implemented the Uniform Domain Name Dispute Resolution Policy, it did not come with a fully formed jurisprudence. Panelists were essentially on their own in creating it. They had some guidance from a lengthy and detailed report published by the World Intellectual Property Organization ... and a basket of principles derived from trademark law, but panelists had to build the jurisprudence from scratch. more
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