UDRP

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.

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.

Reverse Domain Hijacking Where Complainant Knew but Did Not Disclose Geographic Significance of Mark

In the case of Oy Vallila Interior Ab v. Linkz Internet Services, a 3-member WIPO Panel denied the Complainant's efforts to have the disputed domain name vallila.com transferred because the Complainant did not prove that the Respondent registered and used the disputed domain name in bad faith. The Complainant is in the business of providing fabrics and interior design services and claimed trademark rights in its registered mark VALLILA in the European Union.

Losing a UDRP Case: Questionable Decision or Questionable Submission?

Complainants naturally want to prevail on their claims of alleged infringing conduct and respondents (when they appear) naturally do their best to resist having their domain names taken from them in proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP), but their success depends on their submitting the right constituents of fact and proof. In a forum that has adjudicated over 60,000 cases, it would be surprising if there were no questionable or badly reasoned decisions.

Popular ccTLDs for Domain Name Disputes

As I've written before, the registry operators for many country-code top-level domains (ccTLDs) have adopted the Uniform Domain Name Dispute Resolution Policy (UDRP) or a variation of it, while other ccTLDs have crafted their own dispute policies, or none at all. Although no ccTLD appears as frequently as .com in domain name disputes, it's interesting to see which ccTLDs are subject to dispute the most often.

ADNDRC Launches “Guide to HKIAC Domain Name Dispute Resolution”

In celebration of Hong Kong Arbitration Week (15-20 October 2017), the Asian Domain Name Dispute Resolution Centre (ADNDRC) at the Hong Kong International Arbitration Centre (HKIAC), the first ICANN accredited Uniform Domain Name Dispute Resolution Policy (UDRP) provider based in Asia, will launch its landmark Guide to HKIAC Domain Name Dispute Resolution (the "Guide").

Trademark Rights Paramount to Contract Rights for Domain Names

UDRP decisions come down from providers (principally from WIPO and the Forum) at the rate of 7 to 10 a day. Complainants mostly prevail; this is because in 90% of the cases (more or less that percentage) respondents have no plausible defense and generally don't bother appearing, although default alone is not conclusive of cybersquatting; there must be evidence of infringement. When complainants do not prevail, it is not because they lack rights...

‘Beyond the Scope’ of the UDRP

Not all domain name disputes are appropriate for resolution under the Uniform Domain Name Dispute Resolution Policy (UDRP). While the UDRP is clearly the "go-to" legal tool for trademark owners pursuing cybersquatters, some disputes are about larger -- or different -- issues than the UDRP was designed to address. As stated in WIPO's Overview: Depending on the facts and circumstances of a particular case, and irrespective of whether the parties may also be engaged in court litigation...

Principles, Factors, and Elements that Promote or Undermine the Outcome of UDRP Cases

Panels adjudicating cybersquatting claims, defenses, and rebuttals under the Uniform Domain Name Dispute Resolution Policy (UDRP) expect parties to prove their contentions, and this means having a working understanding of what this entails. There is, first, a set of fundamental rules or principles -- such as pending applications for a mark do not constitute a right, or recognizing unregistered marks as constituting rights...