UDRP

Words and Descriptive Phrases as Trademarks Registered as Domain Names

In a trademark context, who owns or controls, or would prevent others, from using words and phrases commonly available to speakers in a language community, is in persistent tension. While common words alone or combined may become protected from infringing uses under trademark law, their protection is contingent on factors such as linguistic choices and strength or weakness of marks in the marketplace.

Credibility and Disbelievablity as it Affects Outcomes in UDRP Proceedings

"Credibility" in English comes through Middle French from a Latin word signifying trustworthiness and reliability in business and personal transactions (allegations, contentions, statements, promises, etc.). Where the goal is persuasion, exaggerating, embellishing, withholding, and falsifying evidence or accusing the adverse party of some heinous crime is not a winning strategy for proving claims or defenses.

UDRP Panelists: Getting the Standard Right Where No Response is Filed

Over three-quarters of the more than 55,000 UDRP cases decided since 1999 have been undefended. Requiring adequate evidentiary support of the complainant's allegations in disputes where the respondent has not filed a response, is therefore critical for producing just outcomes under the UDRP. While most UDRP disputes involve clear cybersquats that are indefensible, a significant number involve domain names that are not clearly cybersquats...

Dictionary Words Alone or Combined Functioning as Trademarks Are No Less Dictionary Words

By definition "any word" or "any combination of words" can function as trademarks, but whether alone or combined for that purpose no use can overrule their ordinary meanings, support their removal from the public domain, or prevent speculation or use of identical or confusingly similar words by businesses other than rights holders. The fact is, all words that are not coined found in dictionaries, word lists, and circulating in world cultures are generic.

CircleID’s Top 10 Posts of 2018

It is once again time for our annual review of posts that received the most attention on CircleID during the past year. Congratulations to all the 2018 participants for sharing their thoughts and making a difference in the industry.

The Hidden Perils of Filing a Baseless UDRP Complaint

When properly used, the UDRP enables trademark owners to take control of abusive domain names. Yet sometimes the UDRP itself is misused by trademark owners to try to seize desirable domain names to which they have no legal entitlement. Is there a downside to misusing the UDRP to attempt a domain name hijacking? Unscrupulous companies at times misuse the UDRP by improperly invoking its power to compel a transfer of ownership in order to seize inherently valuable, non-infringing domain names that the companies desire for their own use.

Drawing Inferences from the Record: UDRP/URS Decision-Making

The weighing of evidence involves the connecting of dots, which involves drawing inferences. However, just as there can be false positives, there can be false inferences. The tendency may be to think of inferences as coming in one size, but not all inferences are logically correct. Some are weak and others strong. The reason for talking about both kinds is that so much depends on the quality of their making.

Abusive Conduct: Domain Name Registrants and Rights Holders

Abusive conduct or cybersquatting is the essence of disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP), usually by domain name registrants violating their warranties of registration but also (in appreciable numbers) by trademark holders overreaching their statutory rights. The UDRP remedies are asynchronous: there is forfeiture of offending domain names; for abusive use of the process there is reverse domain name hijacking (RDNH), essentially a shaming remedy that substitutes for a monetary penalty.

Addressing Infringement: Developments in Content Regulation in the US and the DNS

Over the course of the last decade, in response to significant pressure from the US government and other governments, service providers have assumed private obligations to regulate online content that have no basis in public law. For US tech companies, a robust regime of "voluntary agreements" to resolve content-related disputes has grown up on the margins of the Digital Millennium Copyright Act (DMCA) and the Communications Decency Act (CDA).

Remedies for Cybersquatting: New gTLD Domain Names

In the discussions proceeding the World Intellectual Property Organization (WIPO) publishing The Management Of Internet Names And Addresses: Intellectual Property Issues (Final Report, April 30, 1999) that ultimately led to the ICANN implementing the Uniform Domain Name Dispute Resolution Policy (UDRP) (1999) commentators considered three remedies to combat cybersquatting: suspending, cancelling, and transferring infringing domain names.