UDRP

The Popularity of .co (not .com) Domain Name Disputes

One of the most popular top-level domains under the Uniform Domain Name Dispute Resolution Policy (UDRP) is not even a gTLD (generic top-level domain). It's a ccTLD: .co, the country-code top-level domain for Colombia, in South America. Based on statistics at WIPO as of this writing, 29 .co domain names have been the subject of UDRP disputes this year, making it the most-disputed ccTLD under the popular domain name dispute policy. more

Statutory Remedies for UDRP Grievants

The U.S. is unusual in that grievants of a UDRP award have a statutory remedy from an adverse UDRP award, namely an action for declaratory judgement under the Anticybersquatting Consumer Protection Act (ACPA). The action is not an appeal, but a de novo assessment of the parties' rights, either that the domain name holder is cybersquatting or its registration was lawful. Under U.S. law UDRP awards are not treated as arbitration awards subject to the Federal Arbitration Act but as new disputes. more

Disputes Falling Outside the Scope of the UDRP

The UDRP is a forum of limited jurisdiction designed for trademark owners to combat a certain kind of tortious (sometimes tipping to criminal) conduct by which registrants register domain names with the bad faith intent of taking economic advantage of owner's marks and injuring consumers by beguiling them to disclose personal information. The forum is not open to trademark owners whose claims are outside its scope, even though they may include allegations of cybersquatting. more

Declaring and Declining to Find Reverse Domain Name Hijacking

What to one panelist is clearly bad faith conduct in filing a UDRP complaint, to another is excusable for lack of proof. The disagreement over reverse domain name hijacking centers on the kind of evidence necessary to justify it and the nature of the burden. RDNH is defined as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name." Rule 1, Definitions. more

Unlawful Targeting of Trademarks and Consumers in Registering Domain Names

Unlike trademark applications which go through a lengthy examination process before advancing to registration, anyone (anywhere in the world) can register a domain name identical or confusingly similar to a trademark - instantly and no questions asked, at least, in the traditional space (the legacy gTLDs)! With the new gTLDs registrants will receive notice of possible infringement if the brands are registered with the Trademark Mark Clearing House, but notices do not function as injunctions to block registrants from registering infringing names. more

Using the URS as a Preliminary Injunction for Domain Name Disputes

As I've written before, the Uniform Rapid Suspension System (URS) - the domain name dispute policy applicable to the new generic top-level domains (gTLDs) - is just not catching on. Whether because of its limited suspension remedy, high burden of proof or other reasons, the URS remains unpopular among trademark owners. However, there's one interesting use to which the URS can be put. more

Strategic Use of Screenshots from the Wayback Machine

Internet Archive contains a vast library of screenshots of websites that its Wayback Machine captures sporadically over the course of domain names' histories. While it doesn't compile daily images it opens a sufficient window to past use which is unique, invaluable, and free. (There are also subscription services, but they come at a hefty cost!). How it's used (and why the Wayback Machine should be in a party's toolkit) for supporting and opposing claims of cybersquatting is illuminated in a number of recent UDRP cases. more

Proving Common Law Rights Predating Domain Name Registration

The trademark rights required for standing under paragraph 4(a)(i) of the Uniform Dispute Resolution Policy (UDRP) refer to both registered and unregistered rights. Complainants with registered trademarks satisfy the requirement by submitting their certificates of registration. However, and not surprisingly, complainants with unregistered trademarks have to demonstrate that the alleged marks qualify as such, which requires that complainants prove both secondary meaning of the marks and their distinctiveness prior to the registration of the domain name. more

Cybersquatting & Banking: How Financial Services Industry Can Protect Itself Online (Webinar)

Businesses in the financial services sector are among the most frequent targets of cybersquatters. In this free webinar, I will be joining Craig Schwartz of fTLD Registry Services to provide important information about how domain name fraud is affecting the financial services industries, including banking and insurance, and what businesses and consumers can do to protect themselves online. more

Warranties and Representations on Purchasing Domain Names: What are they Worth?

The WIPO Final Report published in April 1999, from which sprung the UDRP the following October, is useful in shedding light on what the assembled constituencies had in mind in agreeing to particularly contentious issues. One of those issues was whether registrants had to actively search trademark records before purchasing domain names. Other than paragraph 2 of the Policy which codifies registrants' representations, there is no guidance as to what registrants must do... more

The Future of Domain Name Dispute Policies: The Journey Begins

A just-launched ICANN "working group" (of which I am a member) will - eventually - help to determine the future of the Uniform Domain Name Dispute Resolution Policy (UDRP), the 17-year-old domain name arbitration system that has been embraced by trademark owners and criticized by some domainers; as well as the Uniform Rapid Suspension System (URS), the new (and limited) arbitration process that applies to the new gTLDs. more

Trademark Owners’ Rights to Corresponding Earlier Registered Domain Names

As I pointed out in last week's essay, having trademark rights that come into existence later than registrations of corresponding domain names only gets complainants to first base; they have standing but no actionable claim. I also noted a nuance (not a difference in substance) in standing requirements between the Uniform Dispute Resolution Policy (UDRP) and the Anti-Cybersquatting Consumer Protection Act (ACPA). However, standing depends upon the specific facts of the case... more

Quintessential and Other Acts of Bad Faith in Acquiring Domain Names

There are two essential differences between the Uniform Dispute Resolution Policy (UDRP) and the Anti-Cybersquatting Consumer Protection Act (ACPA), one procedural and one substantive. The procedural difference is quite minor, a mere quirk that Panels adopted by consensus in the early days of the UDRP and deserves no more than a footnote. Under the UDRP, complainants have standing on proof that they have trademark rights when they file their complaints... more

Split UDRP Decisions on (Almost) Identical Domain Names

A company called Rocketgate PR LLC, which owns a U.S. registration for the trademark ROCKETPAY, filed two UDRP complaints on the same date against two different domain name registrants - for the domain names and . (The only difference is that the latter domain name is plural.) In both cases, the disputed domain names were associated with inactive websites. The UDRP cases were assigned to two different panelists, who issued their decisions one day apart. more

No Barrier to Reading Across the Dot with New TLDs and Trademark Infringements

Even before the introduction of new top level domains in 2014, Panels had grappled with the before and after the dot issue with country code suffixes. The traditional procedure is to compare the characters of the accused domain names with the characters of trademarks for identity or confusing similarity. But this did not exclude the possibility of reading across the dot. more