UDRP

What Is the Uniform Rapid Suspension System (URS) and What Is It Good For?

The Internet Corporation for Assigned Names and Numbers (ICANN) launched the Uniform Rapid Suspension System (URS) (2013) in anticipation of the marketing of new gTLDs that became available from November 2013. It is one of four new rights protection mechanisms (RPMs) designed to combat cybersquatting. It is not intended for legacy gTLDs, and for new TLDs, it is planned only for that class of dispute colloquially referred to as a "slam dunk." more

Does ICANN’s UDRP Preserve Free Speech and Allow Room for Criticism?

The phenomenal growth of the Internet has resulted in a proliferation of domain names. The explosion of '.com' registrations coincided with an increase in domain name disputes, and with it the legal branch of intellectual property devolved into virtual mayhem. ICANN's Uniform Domain-Name Dispute-Resolution Policy (UDRP) was created... The UDRP was brought into force in October 1999, and it can be said that it has contributed handily to the resolution of domain name disputes. However, deeper investigation into the UDRP paints a different picture. more

WIPO Reports Cybersquatting Cases Grew by 12% Reaching New Records in 2018

According to a report from the World Intellectual Property Organization (WIPO), trademark owners filed a record 3,447 cases under the Uniform Domain Name Dispute Resolution Policy (UDRP) with WIPO's Arbitration and Mediation Center in 2018. 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

Resolving the ICANN-Proposed TLDs Debate

The Internet Corporation for Assigned Names and Numbers (ICANN) has recently decided to allow any entity to register a top-level domain name (TLD). The best mechanism for valuing this decision, a mechanism that outperforms crowdsourcing, blogs, and committee decisions, is the legal and easy-to-implement solution known as prediction markets.
In handing down its TLD decision, ICANN never identified the problem it was trying to solve... 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

Words and Descriptive Phrases as Trademarks Registered as Domain Names

In a trademark context, who owns or controls, or would prevent others, from using words and phrases commonly available to speakers in a language community, is in persistent tension. While common words alone or combined may become protected from infringing uses under trademark law, their protection is contingent on factors such as linguistic choices and strength or weakness of marks in the marketplace. more

12 Common Mistakes Made By Bad Faith Cybersquatters

Some cybersquatters register domains in bad faith as part of a business plan to monetize domains by leveraging famous trademarks and high-traffic web sites. Some cybersquatters just don't understand the law. In this this tongue-in-cheek post, we provide a real world case study of the most common mistakes made by cybersquatters when registering trademark protected domains in bad faith. more

Microsoft Files Three More Cybersquatting Cases

Microsoft has filed 3 cybersquatting cases at the beginning of September 2007, as reported in an Inside Indiana Business article. I took the liberty of accessing the cases via the PACER system, and posted the major documents... It looks like they're stepping up efforts to defend their trademarks, and seeking big damages in court, rather than go the way of the UDRP. These cases demonstrate that new TLDs should not be a priority with ICANN until the problems in existing TLDs are addressed. more

Limitations and Laches as Defenses in Domain Name Cybersquatting Claims

UDRP Paragraph 4(c) states as a preamble that "[a]ny of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interest to the domain name for purposes of Paragraph 4(a)(ii)." Three nonexclusive circumstances are listed. more

Why WIPO’s Proposed Fast-Track UDRP Process is Flawed

In the midst of ICANN's decision to ask the Generic Names Supporting Organization (GNSO) to create proposals on trademark protection mechanisms, the World Intellectual Property Organization (WIPO) announced that it will launch a fast-track UDRP process... The WIPO move is flawed and creates various problems. Here is an account. more

What Due Diligence Satisfies Domain Name Registrant’s Representations (UDRP)?

Not infrequently mark owners in disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) claim that respondents should have been aware that the domain names they registered corresponded to their marks; and from this, urge panelists to draw the inference that the registrations were designed to take advantage of their goodwill and reputation. To test this premise, we need to take a step back for a quick look at UDRP provisions. All it takes to acquire a domain name is to sign a registrar’s registration agreement. more

Multistakeholderism Is Working: A Short Series of Articles

I was in a conversation with a close friend the other day, you know the kind where you have been friends for so long that you have endured each other experimenting with changed politics, evolving religion, and if you are unlucky, flirtations with multilevel marketing. We were discussing politics that day, which is not unusual given our ancient friendship and the recent change at the helm of the United States. more

Notice, Takedown, Borders, and Scale

I was on the front lines of the SOPA wars, because SOPA touched on two matters of strong personal and professional importance for me: protecting the Internet infrastructure, and protecting the economy from Internet related crime. I've continued to study this field and advise industry participants in the years since then. The 2017-02-20 paper by Annemarie Bridy entitled Notice and Takedown in the Domain Name System: ICANN's Ambivalent Drift into Online Content Regulation deserves an answer, which I shall attempt here. more

Challenging Domain Names for Abusive Registration: UDRP and ACPA

There are predatory-domain name registrants, and there are registrants engaged in the legitimate business of acquiring, monetizing and reselling domain names. That there are more of the first than the second is evident from proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP). "Given the human capacity for mischief in all its forms, the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties exhaustively. more