UDRP complainants are expected to get it right the first time, and if they don't there's a narrow window for a second filing. Evidence previously available but overlooked will not support a new complaint, although this does not preclude the possibility of one being accepted on evidence of new facts. In Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC the Panel concluded that the time between registration of the domain name and the filing of the complaint was too short for bad faith use... more
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
Trademarks can be strong in two ways: either inherently distinctive (arbitrary or fanciful marks), or composed of common elements that have acquired distinctiveness (descriptive or suggestive marks). Trademarks can also be weak in two ways: either composed of common elements, or lacking significant marketplace presence other than in their home territories. Panelists have seen them all, even by respondents alleging trademark rights registered later in time to complainant's. more
The Uniform Domain Name Dispute Resolution Policy (UDRP) is not an exclusive forum for the resolution of domain names accused of cybersquatting even though registration agreements use the word "mandatory" in the event of third-party claims. The UDRP is mandatory only in the sense that respondents are "obliged by virtue of the [registration] agreement to recognize the validity of a proceeding initiated by a third-party claimant." more
In another blog post, I wrote about the sometimes confusing circumstances in which domain name dispute panelists will consider supplemental, or additional, filings from the parties (in addition to a complaint and response) in cases under the Uniform Domain Name Dispute Resolution Policy (UDRP). I quoted the WIPO Overview, which states, in part, that supplemental filings may be appropriate where a party can "show its relevance to the case and why it was unable to provide that information in the complaint or response." more
On the question of reselling domain names on the secondary market, a dissenting panelist in a 2005 case observed that "[t]here is no doubt Respondent is in the business of being a reseller of domain names that consist of common English words" and then suggested that the "fundamental question before the Panel is whether or not such a business should be allowed under the UDRP." He concluded that such a business should not be allowed... more
A typical proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) consists of a complaint and, sometimes, a response. UDRP Rule 12 makes clear that "further statements or documents from either of the Parties" are appropriate only if "the Panel... request[s], in its sole discretion." In practice, however, such supplemental or additional filings are not uncommon, with the leading UDRP service providers - WIPO and the Forum - issuing guidance about when they may be appropriate. more
There is in the Anticybersquatting Consumer Protection Act a provision not expressly found in the UDRP (at least, not in so many words) but the concept is nevertheless present in the Policy by construction... The term "fair use" is typically associated with protected speech (criticism and commentary), fan websites, and nominative use of domain names but it is not limited to those uses. It's a flexible principle in both trademark and copyright law. more
For registrants who are not trademark owners losing their domain names can be an irretrievable loss; and for trademark owners, perhaps not irretrievable but fraught with uncertainties of recovery. ICANN attempted to solve the problem of inadvertent lapses of registration in the Expired Registration Recovery Policy (ERRP) and its companion the Expired Domain Name Deletion Policy (EDNDP), implemented in 2013. more
On July 25th ICANN announced the publication of the Draft Report of the Independent Review of the Trademark Clearinghouse (TMCH). This study was coordinated for ICANN by the Analysis Group, in conjunction with researchers from the Center for Internet and Society at Stanford as well the University of Pennsylvania's Wharton School... while public comments on the draft report will be accepted through September 3rd, this Report was triggered by GAC concerns expressed before the Applicant Guidebook for the new gTLD program was even completed, and is not the work product of a GNSO-created working group and therefore will not directly result in the establishment of any new ICANN policy. more
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