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. more

After 21 Years, Actor David Duchovny Wins His Domain Name

While plenty of UDRP decisions have made clear that a trademark owner's delay in bringing an action against a cybersquatter (often referred to as "laches") is typically not a defense, actor David Duchovny's decision to file a UDRP complaint nearly 21 years after the domain name davidduchovny.com was registered may set a record for the longest wait in a domain name dispute. more

When Two Trademarks Aren’t Confusingly Similar to One Trademark

As I've written before, domain name disputes involving multiple trademarks sometimes raise interesting issues, including whether a panel can order a domain name transferred to one entity without consent of the other. While panels typically have found ways to resolve this issue, one particularly troubling fact pattern arises when a panel denies a complaint simply because a disputed domain name contains trademarks owned by two different entities. more

When ‘Confusing Similarity’ in UDRP Cases Gets Confusing

The first element of the Uniform Domain Name Dispute Resolution Policy (UDRP) requires a complainant to prove that the disputed domain name "is identical or confusingly similar to a trademark or service mark in which the complainant has rights." It's unusual for a complainant to fail on this first of three prongs, but one recent case demonstrates just how uncertain the UDRP can be sometimes. more

Trademark Overreaching and Faux Cybersquatting Claims

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 Truth About Supplemental Filings in UDRP Cases

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

TMCH Review Recommends Status Quo

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

The DotBible Litmus Test for Domain Name Dispute Panelists

A dispute policy for the new '.bible' top-level domain name requires panelists who agree to hear cases to affirm that they "enthusiastically support the mission of American Bible Society" and that they "believe that the Bible is the Word of God which brings salvation through Christ." The DotBible Community Dispute Resolution Policy appears to be the first domain name dispute policy that requires panelists to take a religious oath - or, for that matter, an oath other than anything related to maintaining neutrality. more

WIPO Reports Rise in Cybersquatting Cases, Triggered by New gTLDs

According to the latest report from The World Intellectual Property Organization (WIPO), trademark owners filed 2,754 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) with the agency in 2015 - an increase of 4.6 % over the previous year. more

The Growing Importance of Language in UDRP Proceedings

An increasing number of domain name disputes are being conducted in languages other than English, a trend that presents a new challenge for some trademark owners. In 2015, 85.77% of all domain names disputes at the World Intellectual Property Organization (WIPO) were conducted in English - down from an all-time average of 88.01% and a record high (in 2000) of 99.84% (disregarding 1999, the first year of the UDRP, because only one case was filed - in English -- that year). more

Vox Populi Registry Says “Enough” About .SUCKS Accusations

Vox Pop Registry, the .sucks TLD operator, broke its silence today and has sent a letter to ICANN and government agencies in response to the extortion accusations."There has been much said lately about Vox Pop Registry, the company bringing dotSucks names to the Internet, not all of it flattering, some of it outright false and defamatory," says John Berard, CEO of Vox Populi.  more

The Coding of Online Brand Protection

Moore's law postulates that the number of transistors in an integrated circuit will double every two years. That law has given us smartphones and other devices with astonishingly diverse capabilities at ever lower costs. However, while it does not encompass online brand infringement, many trademark managers feel that their task is likewise expanding at exponential speed and imposing escalating costs. Potential cybersquatting based in the more than one thousand new generic top level domains is only one new source of anxiety. While the jury is still out on the level of harmful cybersquatting and the efficacy of the new Rights Protection Mechanisms (RPMs) for new gTLDs, that ICANN program is hardly the only challenge. more

UDRP Failure Endangers Consumers

Yesterday I participated in a panel at the International Consumer Product Safety Conference sponsored by the International Consumer Product Health and Safety Organization (ICPHSO) held at the European Commission in Brussels Belgium. This conference brings together the global community of product safety engineers, manufacturers, retailers, regulators, inspectors, and counterfeiting investigators. The role of online fraud and illicit product traffic is clearly one of the conference priorities. more

Rewiring Internet Governance: Step One Is About ICANN (Part 1)

It is time for some straight talk about governance. The word "governance" used here means authority. It does not merely mean rules, or coercion, or any other weasel-worded definitions that deflect our attention from the art of good governance as distinct from self-serving opportunism and illusory power sharing. Politics, as Theodore Lowi reminded us, is ultimately about "who gets what". Quibbling with endless essays about who rules the root is useful, but not demonstrative. more

ICANN at the Inflection Point: Implications and Effects Of the GAC Beijing Communique

Although this article was first published just a few days ago, on May 8th, there have been several important intervening developments. First, on May 10th ICANN released a News Alert on "NGPC Progress on GAC Advice" that provides a timetable for how the New gTLD program Committee will deal with the GAC Communique. Of particular note is that, as the last action in an initial phase consisting of "actions for soliciting input from Applicants and from the Community', the NGPC will begin to "Review and consider Applicant responses to GAC Advice and Public Comments on how Board should respond to GAC Advice... more