Domain Management

Counterfeit Marks and Counterfeit Goods: Pretense in Cyberspace

The term "counterfeit" is defined under U.S. trademark law as "a spurious mark which is identical with, or substantially indistinguishable from, a registered mark." 15 U.S.C. § 1127 (Lanham Act, Sec. 45). Used as a noun, domain names ultimately found to have been registered in bad faith make their registrants cybersquatters by definition. But more commonly we encounter counterfeiting as an adjective as it applies to spurious goods (counterfeit goods) -- "made in exact imitation of something valuable or important with the intention to deceive or defraud." more

CADNA Returns to Lobby for Stronger Cybersquatting Laws

Coalition Against Domain Name Abuse, the lobby group that campaigned for stronger cybersquatting laws and against new gTLDs, is back. more

How a ‘Defensive Registration’ Can Defeat a UDRP Complaint

A company that registers a domain name containing someone else's trademark may be engaging in the acceptable practice of "defensive registration" if (among other things) the domain name is a typographical variation of the registrant's own trademark. That's the outcome of a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), a case in which the domain name in dispute, idocler.com, contained the complainant's DOCLER trademark -- but also contained a typo of the respondent's DOLCER trademark. more

CircleID’s Top 10 Posts of 2016

The new year is upon us and it's time for our annual look at CircleID's most popular posts of the past year and highlighting those that received the most attention. Congratulations to all the 2016 participants and best wishes to all in the new year. more

Parsing Domain Names Composed of Random Letters for Proof of Cybersquatting

The Respondent's cry of pain in AXA SA v. Whois Privacy Protection Service, Inc. / Ugurcan Bulut, axathemes, D2016-1483 (WIPO December 12, 2016) "[w]hat do you want from me people? I already removed all the files from that domain and it's empty. What else do you want me to do???" raises some interesting questions. "A," "x," and "a" is an unusual string of letters but unlike other iconic strings such as "u," "b" and "s" and "i", "b" and "m" for example that started their lives as the first letters of three-word brands AXA is not an acronym. more

It’s Official: 2016 Was a Record Year for Domain Name Disputes

As I predicted more than three months ago, 2016 turned out to be a record year for domain name disputes, including under the Uniform Domain Name Dispute Resolution Policy (UDRP). That's according to statistics from the World Intellectual Property Organization (WIPO), the only UDRP service provider that publishes real-time data on domain name disputes. WIPO's statistics show 3,022 cases in 2016 -- an increase of almost 10 percent from 2015. The previous most-active year for domain name disputes was 2012... more

Here’s the Largest URS Complaint Ever Filed

A complaint under the Uniform Rapid Suspension System (URS) may -- like the Uniform Domain Name Dispute Resolution Policy (UDRP) -- include more than one domain name, but few URS complaints have done so. Now, one new URS case just changed everything. In the largest URS case ever filed, an expert at the Forum ordered the suspension of 474 domain names in a single proceeding. more

Appearing Respondents Called Out as Cybersquatters

UDRP complainants prevail in the range of 85% to 90% which approximately correlates with the percentage that respondents default in responding to complaints. The annual number of complaints administered by ICANN providers has been hovering around 4,000 +. Astonishingly, the number has remained steady for a good number of years despite the phenomenal increase... Compared to the whole, there are a relatively small number of contested disputes, perhaps in the annual range of 400 to 500, and of those a larger percentage are called out as cybersquatters. more

UDRP Standing: Proving Unregistered Trademark Rights

The Uniform Domain Name Dispute Resolution Policy is a non-exclusive arbitral proceeding (alternative to a statutory action under the Anticybersquatting Consumer Protection Act) implemented for trademark rights' owners to challenge domain names allegedly registered for unlawful purposes. Policy, paragraph 4(a) states that a registrant is "required to submit to a mandatory administrative proceeding in the event that a third-party... more

Certifying to Merit and Proper Purpose in Alleging and Defending Cybersquatting Claims

Parties to a UDRP proceeding must include a certification similar in U.S. practice to Rule 11 of the Federal Rules of Civil Procedure (and undoubtedly a feature in procedural codes in other judicial jurisdictions) "that the information contained in this [Complaint or Response] is to the best of [Complainant's or Respondent's] knowledge complete and accurate, that this [Complaint or Response] is not being presented for any improper purpose, such as to harass... more

New Technique Detects and Eliminates Abusive Domains at Time of Registration

A team of researchers from Princeton University and the University of California has developed a machine-learning algorithm named PREDATOR that can accurately establish domain reputation at the time of domain registration. more

Corresponding to Trademarks, But Nonactionable Claims for Cybersquatting

The threshold for an actionable claim under the Uniform Domain Name Dispute Resolution Policy (UDRP) is a trademark in which complainant has rights. "Rights" means a trademark that could have been newly minted a moment before filing the complaint. This is different from the Anticybersquatting Consumer Protection Act (ACPA) in which trademark owners must have a "mark that is distinctive at the time of registration of the domain name." The difference is important... more

The Importance of Protecting Credibility: Claiming and Rebutting Cybersquatting

The Uniform Domain Name Dispute Resolution Policy (UDRP) is an online dispute resolution regime. While panelists technically have discretion under Rule 13 to hold in-person hearings if they "determine[ ] ... and as an exceptional matter, that such a hearing is necessary for deciding the complaint" no in-person hearing has ever been held. Rule 13 exists to be ignored. more

Three Kinds of UDRP Disputes and Their Outcomes

There are three kinds of UDRP disputes, those that are out-and-out cybersquatting, those that are truly contested, and those that are flat-out overreaching by trademark owners. In the first group are the plain vanilla disputes; sometimes identical with new tlds extensions (mckinsey.careers> and <legogames.online>); sometimes typosquatting (<joneslang lassale.com> and <wiikipedia.org>); and other times registering dominant terms of trademarks plus a qualifier (<pleinphilipp-shop.com> and <legostarwars2015.com>). more

Masking Identity with Proxy/Privacy Services

No censure attaches to having domain names registered by proxy/privacy services. However, while the practice has become routine for protecting privacy and sensitive information, registering in the name of a proxy is still taken into account in assessing intention, and even circumstantial evidence without contradiction or explanation can tip the scale in complainant's favor. more