UDRP

Undone! Failure of Persuasion in UDRP Proceedings

A split Panel in an early decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) held that parties deserve more than "[i]t depends [on] what panelist you draw." Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001). That's one side of the paradigm; the other side makes demands on the parties to prove their contentions, either of cybersquatting (one element of which is proving that respondent lacks rights or legitimate interests) or rebutting the claim (one element of which is respondent demonstrating it has rights or legitimate interests). more

Exceedingly Close and Difficult UDRP Cases

The ordinary run of cybersquatting cases is neither "exceedingly close nor difficult." Quote from Harvest Dispensaries, Cultivations & Production Facilities, LLC v. Rebecca Nickerson / Rock City Harvest, FA2004001892080 (Forum June 26, 2020) which is one of those rare cases in which the case was exceedingly close and difficult. For 90% of the docket (the percentage has been creeping up since 2016), even when Respondent appears (which it mostly does not), there is neither a defense nor merit to Respondent's contentions. more

Charting the Balance between Trademark Owners and Domain Name Holders: A Jurisprudential Overview

Efforts to combat cybersquatting began in earnest in 1998 when the World Intellectual Property Organization (WIPO) (at the request of the United States Government supported by all member states) began an extensive process of international consultations "to address cross-border trademark-abusive domain name registrations." ... The extensive process concluded in the Spring of 1999 with WIPO publishing a detailed report... more

ICANN and Free Speech

Upon being appointed as ICANN's new CEO in Sydney, Rod Beckstrom gave a rousing speech in which he stressed the vital importance of free expression on the Internet... Many ordinary, powerless people are indeed willing to fight and die. But is ICANN going to help them? Or at very least make sure that their decisions won't help those who want to muzzle them? more

When is Similarity Confusing? Cybersquatting and Abusive Registration

The case I'm reporting on today has garnered attention from a number of quarters. One commentator, Andrew Allemann tells us that "[he's] struggling with this UDRP decision" and Nat Cohen of Telepathy Inc. in a couple of Tweets and a private conversation is concerned that the holding could be a Trojan Horse by erasing the distinction between merely confusing and confusingly similar. The problem centers on the Panel's holding that everyfamily.org is confusingly similar to EVERYTOWN... more

.site Domain Names Eclipse .xyz in Dispute Proceedings

Despite the launch of more than 1,200 new generic top-level domains (gTLDs) in recent years, .com remains - far and away - the top-level domain that appears most frequently in decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP). But, some new gTLDs are attracting more disputes, including .site, which has become the new gTLD that, so far this year, has appeared in the most UDRP decisions. The rise of .site represents a change from last year, when .xyz was the most-often disputed new gTLD. more

Rewiring Internet Governance: Step One Is About ICANN (Part 1)

It is time for some straight talk about governance. The word "governance" used here means authority. It does not merely mean rules, or coercion, or any other weasel-worded definitions that deflect our attention from the art of good governance as distinct from self-serving opportunism and illusory power sharing. Politics, as Theodore Lowi reminded us, is ultimately about "who gets what". Quibbling with endless essays about who rules the root is useful, but not demonstrative. more

Trademarks and Domain Names Composed of Common Terms

The lexical material from which trademarks are formed is drawn from the same social and cultural resources available to everyone else, which includes domain name registrants. Since trademarks are essentially a form of communication, it is unsurprising that a good number of them are composed of common terms (dictionary words, descriptive phrases, and shared expressions) that others may lawfully use for their own purposes. more

Thinking Carefully About New gTLD Objections: Community (3 of 4)

My third installment regarding gTLD objections - and understanding exactly what's required for an objector to prevail - moves to the more complex community-based objections. For those getting their first exposure to this unwieldy beast, pull up a chair and get comfortable. The community objection involves multifaceted elements, each having its own set of defining factors and often using similar terminology in different contexts. As such, it can be very confusing and one can easily lose track of the bigger picture. more

Abusive Conduct: Domain Name Registrants and Rights Holders

Abusive conduct or cybersquatting is the essence of disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP), usually by domain name registrants violating their warranties of registration but also (in appreciable numbers) by trademark holders overreaching their statutory rights. The UDRP remedies are asynchronous: there is forfeiture of offending domain names; for abusive use of the process there is reverse domain name hijacking (RDNH), essentially a shaming remedy that substitutes for a monetary penalty. more

Excessive Offers to Sell Domain Names: Evidence of Bad Faith or Bona Fide Business Practice?

Not infrequently heard in domain name disputes are cries of shock and gnashing of teeth that domain name holders may lawfully offer their inventory at excessive prices. Take for example TOBAM v. M. Thestrup / Best Identity, D2016-1990 (WIPO November 21, 2016) (<tobam.com>). Respondent accused Complainant of bullying which Complainant denied... more

ICANN - Dispenser of Internet Justice

The following is a paper presented as a keynote speech at Studienkreis 2013 in Pisa, Italy last week. ICANN is beginning to look more and more like a government. It assesses taxes, it has amassed an enormous treasury, it passes laws with international effect, and it has developed an ad hoc judiciary system to enforce its laws. This paper will take a look at that judiciary system and ICANN as dispenser of Internet justice. more

It’s Official: 2016 Was a Record Year for Domain Name Disputes

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

Domain Name Disputes Break Two Records in 2017

The year 2017 turned out to be a record-setting year for domain name disputes, in two ways: The number of complaints filed as well as the total number of domain names in those complaints. Specifically: The number of cases at WIPO crept up to 3,073 from 3,036 in 2016 (the previous record), a modest gain of just over 1 percent. Those cases included 6,370 domain names, up from 5,354 in 2016 (also a record-setting year), a spike of nearly 19 percent. more

dot DO or dot DIE?

ICANN has started dot name evaluations and charging ahead at their full speed. Mathematically it can be proven that any reasonable success of the current 1500 proposed dot names will result in tens of thousands of additional applications in the subsequent rounds. It is estimated that by the year 2020 there will be 10,000 dot names in operation and by 2025 the number would easily double. Such forecasts are not based on technological advances more