Domain Names

Artful Misrepresentations of UDRP Jurisprudence

The jurisprudence applied in adjudicating disputes between mark owners and domain name holders under the Uniform Domain Dispute Resolution Policy (UDRP) is essentially a system that has developed from the ground up; it is Panel-made law based on construing a simple set of propositions unchanged since the Internet Corporation for Assigned Names and Numbers (ICANN) implemented them in 1999. Its strength lies in its being a consensus-based rather than dictated jurisprudence.

Domain Name Disputes Deja Vu: Panavision.com and Panavision.org

History, it has been said, repeats itself. The same can be said of domain name disputes, as demonstrated by a pair of cases involving the same trademark ("Panavision") filed more than 20 years apart with remarkably similar facts. I can't hear the name "Panavision" without thinking about the origins of domain name disputes, so a decision involving panavision.org - coming more than two decades after litigation commenced over panavision.com - immediately made me nostalgic.

Significant Increase in Registry Locked Names Across Top 500 Most Highly-Trafficked Sites

A recent study conducted by Brandsight has revealed that 28% of the top 500 most-highly trafficked sites now employ registry locking. In contrast, only 15% of the top 500 most highly-trafficked sites were leveraging registry locking in 2013. Back in 2013, only 356 of the top 500 most-highly trafficked sites could be registry locked, but that number has also risen significantly so that now 396 of the top 500 most-highly trafficked sites are eligible.

Long-held Domain Names Transferred to Complainants

There has lately been a number of long-held investor registered domain names transferred to complainants under the Uniform Domain Name Dispute Resolution Policy (UDRP). Two of the domain names were registered 23 years ago. This has provoked several commentators to complain that the UDRP is tilted in favor of mark owners and trademark-friendly panelists expressing hostility to the domain industry. I think we have to dig deeper than this.

Vulnerabilities of Weak Marks and Uncurated Websites

Dictionary words, alone, combined as phrases, modified by other parts of speech, and single letters that function as marks also retain in parallel their common associations that others may use without offending third-party rights. As a rule of thumb, generic terms are not registrable as marks until they perceivably cross a threshold to suggestive and higher classifications.

ICANN Issues Guidance to Domain Registrars and Registries in Light of Hurricane Maria

ICANN has issued a guidance notice to registrars and registries in relation to Hurricane Maria, which caused massive damage throughout the Caribbean. This isn't the first time that this has happened, with a previous incident in Asia triggering action from both registrars and registries to give domain name registrants impacted by the natural disaster breathing space.

UDRPs Filed - Brand Owners Take Note

After being in the domain industry for over 15 years, there aren't too many things that catch me by surprise, but recently a few UDRP filings have me scratching my head. Both ivi.com and ktg.com have had UDRPs filed against them, and I have to say for anyone holding a valuable domain name, it's a cautionary tale and one that should have folks paying attention to the outcome of each.

When UDRP Consolidation Requests Go Too Far

Although including multiple domain names in a single UDRP complaint can be a very efficient way for a trademark owner to combat cybersquatting, doing so is not always appropriate. One particularly egregious example involves a case that originally included 77 domain names -- none of which the UDRP panel ordered transferred to the trademark owner, simply because consolidation against the multiple registrants of the domain names was improper.

Apple (Not Surprisingly) is Not a Cybersquatter

It's highly unusual for a well-known trademark owner to be accused of cybersquatting, but that's what happened when a Mexican milk producer filed a complaint against Apple Inc. under the Uniform Domain Name Dispute Resolution Policy (UDRP) in an attempt to get the domain name lala.com. Not only did Apple win the case, but the panel issued a finding of "reverse domain name hijacking" (RDNH) against the company that filed the complaint.

Confusing Similarity of Domain Names is Only a ‘Standing Requirement’ Under the UDRP

WIPO's newest overview of the Uniform Domain Name Dispute Resolution Policy (UDRP) succinctly states what decisions have made clear through the years: The UDRP's first test is only a "standing requirement." Standing, under the law, simply means that a person or company is qualified to assert a legal right. It does not mean or imply that one will necessarily prevail on any claims. The UDRP includes a well-known three-part test that all trademark owners must satisfy to prevail, but the first element has a low threshold.