UDRP

The Suitable Defendant Rule: In Rem Jurisdiction under the ACPA

The Anticybersquatting Consumer Protection Act (ACPA) creates two distinct avenues by which mark owners may seek a remedy for cybersquatting. A person who is a suitable defendant under 15 U.S.C. §1125(d)(1)(A) is one over whom the court has in personam jurisdiction. However, if the mark owner is "not able to obtain in personam jurisdiction over a person who would have been a defendant" in the ACPA action, then "[t]he owner may file an in rem civil action against a domain name in... more

Disclaimer in Trademark Registration Sinks UDRP Action

A trademark owner who notices that someone else has registered a domain name incorporating the owner's mark can file an arbitration action under the Uniform Domain Name Dispute Resolution Policy (UDRP for short). This often serves as a quicker and less expensive alternative to pursuing the cybersquatter in court. To be successful under the UDRP, the "Complainant" has to show all of the following three elements... more

ICANN and the Hyper-Aggressive Trademark Owners: The “Monster Test”

We read and hear a lot of complaints from trademark interests about allegedly rampant cybersquatting and other forms of trademark infringement, but it's rare to see a story about reverse domain name hijacking and other abuses committed by them. That's what made it so refreshing to see an article in the Saturday, April 4th Wall Street Journal titled "The Scariest Monster of All Sues for Trademark Infringement – Fancy Audio-Cable Outfit Defends Its Brands; A Mini Golf Course Fights Back". more

Domain Names as Second-Class Citizens

A new book by Dr. Konstantinos Komaitis (Lecturer in Law at the University of Strathclyde) provides a passionate yet legalistic and well-researched overview of the legal, institutional and ethical problems caused by the clash between domain names and trademarks. This is really the first decent book-length treatment of what is now a decade and a half of legal and political conflict between domain name registrants and trademark holders. more

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

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

Only Bad Actors Should Worry About the URS

With DNS abuse a topic of increased concern throughout the community, any controversy over adopting the Uniform Rapid Suspension System (URS) for all generic top-level domains (gTLDs) seems misplaced. The URS was designed as a narrow supplement to the Uniform Domain-Name Dispute Resolution Policy (UDRP), applicable only in certain tightly defined circumstances of clear-cut and incontrovertible trademark infringement involving the registration and use of a domain name. more

Dead Ends: The Achievement of Consensus in UDRP Jurisprudence

Like the Internet Corporation for Assigned Names and Numbers (ICANN), the Uniform Domain Name Dispute Resolution Policy (UDRP) is consensus-driven; from the bottom up, not the top down. The result is a jurisprudence of domain names that develops in common-law fashion through Panel decisions that over time and through "deliberative conversations" among panelists resolve into consensus. more

How Ignorance Can Lead Mark Owners Astray in UDRP Proceedings

The great problem with ignorance is that it leads to disaster when one acts in the belief that he (and not infrequently a corporate "it") is invulnerable to error. The Uniform Domain Name Dispute Resolution Policy (UDRP) is fundamentally a straightforward rights protection mechanism, but as in all clearly written laws, ignorance of its application and of its evidentiary demands can (and generally does) lead to disaster. more

ICANN New gTLD Program SWOT Analysis: WEAKNESSES (Part 2)

The SWOT analysis (alternatively SWOT Matrix) is a structured planning method used to evaluate the Strengths, Weaknesses, Opportunities, and Threats involved in a project or in a business venture. The following is an attempt to apply the SWOT Analysis to ICANN's new gTLD program. 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

Smells like Cybersquatting? How the UDRP “Smell Test” Can Go Awry

The UDRP has the form of a substantive Policy, but it operates as a "smell test".1 If the evidence smells bad, the panel will likely order a transfer. If it doesn't, the panel won't. An aim of this article is to help improve UDRP panels' sense of smell when it comes to differentiating between domain name investors and cybersquatters. I will provide some insight into the business of domain name investing that I hope will be helpful to UDRP panelists in making more accurate inferences in disputes involving investors. more

Opting for UDRP Over URS

The Internet Corporation for Assigned Names and Numbers (ICANN) implemented the Uniform Rapid Suspension System (URS) in 2013 together with three other rights protection mechanisms for trademarks. It "is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse"... It was designed to afford rights holders claiming abusive registration of domain names with new gTLD extensions an even faster route to remedy than the Uniform Domain Name Dispute Resolution Policy (UDRP). more

URS Is a Bad Fit for .ORG, Says EFF

The online digital rights group, Electronic Frontier Foundation (EFF) on Tuesday published a post warning ICANN's latest move requiring the use of Uniform Rapid Suspension (URS) for .org domain names is a "bad fit." more

ICANN Turning 25 - It’s the People that Make a Difference

Ali's invitation to post reflections on the past 25 years of ICANN is very welcome. No doubt, some will write about major shifts in how ICANN is governed, for example, the end of United States government oversight. While others will write about changes to the industry that ICANN has catalyzed, for example, the 2012 round of new gTLDs and the upcoming next application process. more