UDRP

Long-held Domain Names Transferred to Complainants

There has lately been a number of long-held investor registered domain names transferred to complainants under the Uniform Domain Name Dispute Resolution Policy (UDRP). Two of the domain names were registered 23 years ago. This has provoked several commentators to complain that the UDRP is tilted in favor of mark owners and trademark-friendly panelists expressing hostility to the domain industry. I think we have to dig deeper than this. more

Vulnerabilities of Weak Marks and Uncurated Websites

Dictionary words, alone, combined as phrases, modified by other parts of speech, and single letters that function as marks also retain in parallel their common associations that others may use without offending third-party rights. As a rule of thumb, generic terms are not registrable as marks until they perceivably cross a threshold to suggestive and higher classifications. more

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. more

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. more

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. more

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. more

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"). more

‘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... more

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... more

Fighting Phishing with Domain Name Disputes

I opened an email from GoDaddy over the weekend on my phone. Or so I initially thought. I had recently helped a client transfer a domain name to a GoDaddy account (to settle a domain name dispute), so the subject line of the email -- "Confirm this account" -- simply made me think that I needed to take another action to ensure everything was in working order. But quickly, my radar went off. more

Post-UDRP, ACPA Actions Challenging Awards

The Uniform Domain Name Dispute Resolution Policy (UDRP) is not an exclusive remedy for cybersquatting, but it is by far the preferred forum. Direct actions in courts of competent jurisdiction, the Anticybersquatting Consumer Protection Act (ACPA) in the U.S. are minimal in comparison, and it is rare for respondents to remove disputes to a court of competent jurisdiction before a UDRP decision (paragraph 4(k) of the Policy). Less rare (but not copious) are post-UDRP challenges under the ACPA. more

Beware of Extra Fees in UDRP Proceedings

The Uniform Domain Name Dispute Resolution Policy (UDRP) is known as an inexpensive alternative to litigation (and that's true), but some proceedings can end up costing a trademark owner more than it may have expected. There are generally two additional types of expenses that can arise during the course of a UDRP proceeding: (1) extra filing fees for certain aspects of a case filed at the Forum, and (2) an increased filing fee if the domain name registrant wants a three-member panel to decide the case. more

.site Domain Names Eclipse .xyz in Dispute Proceedings

Despite the launch of more than 1,200 new generic top-level domains (gTLDs) in recent years, .com remains - far and away - the top-level domain that appears most frequently in decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP). But, some new gTLDs are attracting more disputes, including .site, which has become the new gTLD that, so far this year, has appeared in the most UDRP decisions. The rise of .site represents a change from last year, when .xyz was the most-often disputed new gTLD. more

Proving and Protecting Rights to Domain Names

At their best, UDRP panelists are educators. They inform us about the ways in which parties win or lose on their claims and defenses. What to do and not do. In addressing this issue, I'm referring to less than 10% of cybersquatting disputes. For 90% or more of filed complaints, respondents have no defensible answer and generally don't even bother to respond. But within the 10%, there are serious disputes of contested rights (contested even where respondent has defaulted). more

Is a New Set of Governance Mechanism Necessary for the New gTLDs?

In order to be able to reply to the question of whether a new set of governance mechanisms are necessary to regulate the new Global Top Level Domains (gTLDs), one should first consider how efficiently the current Uniform Domain-Name Dispute-Resolution Policy (UDRP) from the Internet Corporation for Assigned Names and Numbers (ICANN) has performed and then move to the evaluation of the Implementations Recommendations Team (ITR) recommendations. more