A company that registers a domain name containing someone else's trademark may be engaging in the acceptable practice of "defensive registration" if (among other things) the domain name is a typographical variation of the registrant's own trademark. That's the outcome of a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), a case in which the domain name in dispute, idocler.com, contained the complainant's DOCLER trademark -- but also contained a typo of the respondent's DOLCER trademark. more
As I predicted more than three months ago, 2016 turned out to be a record year for domain name disputes, including under the Uniform Domain Name Dispute Resolution Policy (UDRP). That's according to statistics from the World Intellectual Property Organization (WIPO), the only UDRP service provider that publishes real-time data on domain name disputes. WIPO's statistics show 3,022 cases in 2016 -- an increase of almost 10 percent from 2015. The previous most-active year for domain name disputes was 2012... more
A complaint under the Uniform Rapid Suspension System (URS) may -- like the Uniform Domain Name Dispute Resolution Policy (UDRP) -- include more than one domain name, but few URS complaints have done so. Now, one new URS case just changed everything. In the largest URS case ever filed, an expert at the Forum ordered the suspension of 474 domain names in a single proceeding. more
UDRP complainants prevail in the range of 85% to 90% which approximately correlates with the percentage that respondents default in responding to complaints. The annual number of complaints administered by ICANN providers has been hovering around 4,000 +. Astonishingly, the number has remained steady for a good number of years despite the phenomenal increase... Compared to the whole, there are a relatively small number of contested disputes, perhaps in the annual range of 400 to 500, and of those a larger percentage are called out as cybersquatters. more
The Uniform Domain Name Dispute Resolution Policy is a non-exclusive arbitral proceeding (alternative to a statutory action under the Anticybersquatting Consumer Protection Act) implemented for trademark rights' owners to challenge domain names allegedly registered for unlawful purposes. Policy, paragraph 4(a) states that a registrant is "required to submit to a mandatory administrative proceeding in the event that a third-party... more
Parties to a UDRP proceeding must include a certification similar in U.S. practice to Rule 11 of the Federal Rules of Civil Procedure (and undoubtedly a feature in procedural codes in other judicial jurisdictions) "that the information contained in this [Complaint or Response] is to the best of [Complainant's or Respondent's] knowledge complete and accurate, that this [Complaint or Response] is not being presented for any improper purpose, such as to harass... more
Another domain name dispute decision -- this one for '24hour.fitness' -- has highlighted the increasing (potential) relevance of the top-level domain (TLD) under the Uniform Domain Name Dispute Resolution Policy (UDRP). As I have written before, the proliferation of new TLDs is having an impact on whether and how UDRP panels consider the TLD in their decisions. more
The threshold for an actionable claim under the Uniform Domain Name Dispute Resolution Policy (UDRP) is a trademark in which complainant has rights. "Rights" means a trademark that could have been newly minted a moment before filing the complaint. This is different from the Anticybersquatting Consumer Protection Act (ACPA) in which trademark owners must have a "mark that is distinctive at the time of registration of the domain name." The difference is important... more
Proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP) can be heard by either a one- or three-member panel. Here are eight important facts that every complainant (trademark owner) and respondent (domain name registrant) should consider when deciding whether to select one or three members... Either party - complainant or respondent - has an opportunity to select a three-member panel... more
"Reverse Domain Name Hijacking" (RDNH) is a finding that a panel can make against a trademark owner in a case under the Uniform Domain Name Dispute Resolution Policy (UDRP)... While neither the UDRP nor the Rules provide any further details or guidance, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, provides some insight into the circumstances in which panels have found RDNH. more
The Uniform Domain Name Dispute Resolution Policy (UDRP) is an online dispute resolution regime. While panelists technically have discretion under Rule 13 to hold in-person hearings if they "determine[ ] ... and as an exceptional matter, that such a hearing is necessary for deciding the complaint" no in-person hearing has ever been held. Rule 13 exists to be ignored. more
The Uniform Domain Name Dispute Resolution Policy (UDRP) limits parties' submissions to complaints and responses; accepting "further statements or documents" is discretionary with the Panel (Rule 12, Procedural Orders), although the Forum (in Supplemental Rule 7) but not WIPO provides for supplementing the record with the proviso that "[a]dditional submissions must not amend the Complaint or Response." For some panelists, Rule 7 contradicts the Policy. more
The UDRP lists three nonexclusive circumstances for rebutting lack of rights or legitimate interests in domain names, which if successful also concludes the issue of abusive registration in respondent's favor. The third circumstance is "you are making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." more
With just a little more than three months left in 2016, the number of domain name disputes filed at the World Intellectual Property Organization (WIPO) appears to be headed for a record year. According to public data published on the WIPO website, the current number of domain name disputes filed this year (as of this writing, September 27, 2016) is 2,228 - which would indicate that the total might reach 3,011 cases by December 31. more
I noted in last week's essay three kinds of cybersquatting complaints typically filed under ICANN'S Uniform Domain Name Dispute Resolution Policy (UDRP). The third (utterly meritless) kind are also filed in federal court under the Anticybersquatting Consumer Protection Act (ACPA). While sanctions for reverse domain name hijacking are available in both regimes, the UDRP's is toothless and the ACPA's a potent remedy. more
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