UDRP

Do “brandsucks.com” Names Really Have a “Destructive Potential”?

"'Sucks.com is the rightmost anchor of nearly 20,000 domains registered today. Two thousand domains have 'stinks.com' on the right and about the same number of domains begin with the term 'boycott'," write the authors of the recently released paper The Power of Internet Gripe Sites. According to their (interesting) study, 35% of the "brandsucks" domains are owned by the brand while 45% are available for registration. They thus advise brand owners "to take a serious look at the traffic that these names garner and the kind of unique marketing opportunity they can afford." ...I do not fully agree with their conclusions... more

BMW Goes After BMW.cat

In one of the first (if not the first) UDRP cases for .cat, the auto giant BMW appears to have filed a WIPO case over the BMW.cat domain name. Other prospective new TLD operators have tried to suggest in ICANN meetings that these new TLDs do not cause problems with cybersquatting or defensive registrations... Obviously, given the above WIPO case, that statement is false. more

Dot-Com is Still King - of Domain Name Disputes

Despite the launch of more than 1,200 new gTLDs, .com remains far and away the most popular top-level domain involved in domain name disputes. In 2016, .com domain names represented 66.82 percent of all gTLD disputes at the World Intellectual Property Organization (WIPO), the only domain name dispute provider that publishes real-time statistics. And, as of this writing, the rate is even higher so far in 2017, with .com domain names accounting for 69.78 percent of all disputes. more

Commodifying Words and Letters in the .Com Space

Words (and by extension their constituent letters) are as free to utter and use as is the air sustaining life. No one owns them. There is no toll fee to be paid to dictionary makers who curate them. There are, however, two carve-outs from this public domain, namely words and letters businesses use as designations of origin for their marketplace presence, protected by trademark law; and words and letters arranged expressively by authors, protected by copyright law. more

‘Pokemon’ Domain Names are a No-Go

The legal issues surrounding the sudden success of "Pokemon Go" -- one of the world's fastest-growing apps or games -- are popping up as quickly as unhatched Eggs at a PokéStop. Within days of the game's release, the National Safety Council issued a call that "urges pedestrians to exercise caution while playing the Pokémon Go augmented reality game" and "implores drivers to refrain from playing the game behind the wheel." more

UDRP and Article 92(b) of EUROPEAN COUNCIL REGULATION (EC) No 40/94

It has been over a year since I posted "The Non-Parity of the UDRP", how little did I know then compared to now! Since that posting, the corporations and their lawyers have given me a crash course in the law and I have learned much. There are many tricks that corporations will play on a domain name registrant in order to silence criticism of the corporation and to violate the registrants right of freedom of expression without frontiers. The UDRP Administrative Proceedings is one such trick... more

The Spontaneous Development of the Domain Name Market

If we traveled back in time, we would discover that unauthorized squatting on someone else's property is an ancient tort, but in cyberspace, it dates from the mid-1990s. Its emergence brought together governments and intellectual property stakeholders to demand a rights protection mechanism devised to deal with this new form of squatting. In 1999 the World Intellectual Property Organization (WIPO) completed its work on a proposal for an online rights protection mechanism which ICANN crafted into the Uniform Domain Name Dispute Resolution Policy (UDRP). more

ICANN 55, Marrakech: Witnessing a Historic Event, Community Empowered Work Continues

Earlier this month, MarkMonitor representatives were privileged to witness, at the first ICANN meeting of 2016 in Marrakech, Morroco, the historic presentation of the plan to transfer the stewardship of key internet functions (IANA) from the United States Government to a community and consensus-based model of governance through ICANN (Internet Corporation for Assigned Names and Numbers). more

Dublin.tel Grabbed by Lantec

During the sunrise period for .eu domains there was quite a bit of controversy, as a number of high profile names were grabbed by companies that had no legitimate right to them. One of the domains that caught my attention at the time was dublin.eu (see Irish Times article). So what about the .tel sunrise?
Were companies like Lantec, who grabbed the dublin.eu domain, actively seeking high profile names this time round? more

TLD Rights Protection Mechanisms

Potential trademark Rights Protection Mechanisms (RPM) at the 2nd level can be divided into three main areas -- each defined by their time relative to Top-Level Domain (TLD) launch... Of these, we believe the third, "After Launch," is the most fruitful path to explore. We believe it offers the most potential to protect the rights of trademark holders, the best balance between TM rights and the legitimate rights of others who may want to register names , and the most benefit to the trademark community at the lowest cost to them... more

Understanding ‘Reverse Domain Name Hijacking’ Under the UDRP

"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

Here’s the Largest URS Complaint Ever Filed

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

The Emergence and Consolidation of a Jurisprudence of Domain Names

One of the fallouts of disruptive inventions is the need for new laws to counter their unexpected consequences. As it concerned the Internet, these consequences included a new tort of registering domain names identical or confusingly similar to trademarks and service marks with the intention of taking unlawful advantage of rights owners. Prior to 2000 the only civil remedy for "cybersquatting" or "cyber piracy" was expensive and time-consuming plenary actions in courts of competent jurisdiction under national trademark laws. more

Challenging UDRP Awards in Courts of Competent Jurisdiction

The Uniform Domain Name Dispute Resolution Policy (UDRP) is not an exclusive forum for the resolution of domain names accused of cybersquatting even though registration agreements use the word "mandatory" in the event of third-party claims. The UDRP is mandatory only in the sense that respondents are "obliged by virtue of the [registration] agreement to recognize the validity of a proceeding initiated by a third-party claimant." more

What It Takes to Prove Common Law Rights in UDRP Complaints

The Uniform Domain Name Dispute Resolution Policy now has seventeen years of history. A high percentage of disputes are indefensible and generally undefended. As the history lengthens, early registrants of dictionary word-, common phrase-, and arbitrary letter-domain names have been increasing challenged in two circumstances, namely by businesses who claim to have used the unregistered terms before respondents registered them and later by emerging businesses with no history prior to the registrations of the domain names. more