Privacy/proxy services carry no per se stigma of nefarious purpose, although when first introduced circa 2006 there was some skepticism they could enable cybersquatting and panelists expressed different views in weighing the legitimacy for their use. Some Panels found high volume registrants responsible for registering domain-name-incorporating trademarks. Others rejected the distinction between high and low volume as a determining factor. more
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
Not all domain names identical or confusingly similar to trademarks are actionable. Exhibit 1 are complainants whose trademarks postdate domain name registration. The latest example of this is Insight Energy Ventures LLC v. Alois Muehlberger, L.M.Berger Co.Ltd., D2016-2010 (WIPO December 12, 2016) (<powerly.com>) but there are other, more esoteric examples such as loss by genericide, Shop Vac Corporation v. Md Oliul Alam / Quick Rank, FA1611001701026 (Forum December 10, 2016). more
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
Not infrequently heard in domain name disputes are cries of shock and gnashing of teeth that domain name holders may lawfully offer their inventory at excessive prices. Take for example TOBAM v. M. Thestrup / Best Identity, D2016-1990 (WIPO November 21, 2016) (<tobam.com>). Respondent accused Complainant of bullying which Complainant denied... more
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
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
Another domain name dispute decision -- this one for '24hour.fitness' -- has highlighted the increasing (potential) relevance of the top-level domain (TLD) under the Uniform Domain Name Dispute Resolution Policy (UDRP). As I have written before, the proliferation of new TLDs is having an impact on whether and how UDRP panels consider the TLD in their decisions. more
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
Proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP) can be heard by either a one- or three-member panel. Here are eight important facts that every complainant (trademark owner) and respondent (domain name registrant) should consider when deciding whether to select one or three members... Either party - complainant or respondent - has an opportunity to select a three-member panel... more
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