UDRP

UDRP / Featured Blogs

Searching for the Meaning of “Registers” in the Anticybersquatting Consumer Protection Act (ACPA)

Where outcomes depend on a word’s meaning, the first task is to define it. “Registers” which is one of the keywords in the Anticybersquatting Consumer Protection Act (ACPA), is still in the process of definition. Its statutory context provides that a domain name registrant is liable to the owner of a mark if “it has a bad faith intent to profit from that mark … and (ii) registers, traffics in, or uses a domain name [corresponding to a mark] that … is distinctive at the time of registration of the domain name [and] is identical or confusingly similar to that mark. more

What Due Diligence Satisfies Domain Name Registrant’s Representations (UDRP)?

Not infrequently mark owners in disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) claim that respondents should have been aware that the domain names they registered corresponded to their marks; and from this, urge panelists to draw the inference that the registrations were designed to take advantage of their goodwill and reputation. To test this premise, we need to take a step back for a quick look at UDRP provisions. All it takes to acquire a domain name is to sign a registrar’s registration agreement. more

Offering Price as Evidence of Bad Faith Domain Name Registration: A False (UDRP) Factor

I have pointed out in earlier posts that some panelists disapprove of the business of speculating in domain names. There have been a succession of decisions expressing this view beginning with <crew.com> discussed below. Forfeiture has been justified with a mixture of theories. If the offering price is allegedly "excessive" or the domain name is passively held, or the respondent has renewed its registration after the mark is first used in commerce, the panelists find respondents have engaged in unlawful conduct and must forfeit their domain names. more

MarkMonitor Supports Brand Registry Group (BRG) Call for Preliminary Applicant Guidebook

During last week's ICANN71 Virtual Policy Forum, the Brand Registry Group (BRG) held a very informative session about how ICANN can help potential applicants prepare for the next new gTLD round. Speakers during the session provided historical perspective that applicant guidebooks have regularly evolved over time as a result of community review and feedback provided to ICANN, providing concrete examples of how the current applicant guidebook was developed. more

Multistakeholderism Is Working: Even in Exile

I'm happy to report (mostly) positive feedback on my last article that examined how the multistakeholder model tackled, and tackled well, Phase 1 of the review of all Rights Protection Mechanisms. While bad news may sell more clicks, a little good news from time to time also appears to be welcome. Good news also reminds us of how fortunate we are to have a private sector ICANN with a multistakeholder model of policy development... more

Time of Registration in Determining Cybersquatting

While Panels under the UDRP and judges under the ACPA draw upon a similar body of principles in determining infringement -- both mechanisms, after all, are crafted to combat cybersquatting -- and though arbitration panels and judges undoubtedly view alleged tortious wrongdoing by abusive registrations of domain names through similar lenses and apply laws that may be outwardly similar, each protective mechanism has developed its own distinct and separate jurisprudence. more

Multistakeholderism Is Working: A Short Series of Articles

I was in a conversation with a close friend the other day, you know the kind where you have been friends for so long that you have endured each other experimenting with changed politics, evolving religion, and if you are unlucky, flirtations with multilevel marketing. We were discussing politics that day, which is not unusual given our ancient friendship and the recent change at the helm of the United States. more

Cybersecurity Tech Accord: 98% of Registrar Whois Requests Unrequited

When a brand goes so far as to ask a domain name registrar for Whois (the registration contact details) of a potentially abusive domain name, there's likely a lot at stake. Most often, the request is prompted by consumer safety concerns, such as the risk to consumers posed by a malicious site. Other times, the demand has a simple goal: to have a dialog with the registrant about the use of trademarks or other intellectual property in order to avoid extreme action. more

Limitations and Laches as Defenses in Domain Name Cybersquatting Claims

UDRP Paragraph 4(c) states as a preamble that "[a]ny of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interest to the domain name for purposes of Paragraph 4(a)(ii)." Three nonexclusive circumstances are listed. more

Exploring the Meanings of “Right” and “Legitimate Interest” (UDRP Proceedings)

For complainant, the second leg in determining cybersquatting under the Uniform Domain Name Dispute Resolution Policy (UDRP) is evidence respondent lacks both rights and legitimate interests in the challenged domain name (Paragraph 4(a)(ii)). I underscore "both" because proving one but not the other is not good enough. This seems obvious, so why suggest there is something to explore about "rights" and "legitimate interests" if their meanings hardly need explication? more