No censure attaches to having domain names registered by proxy/privacy services. However, while the practice has become routine for protecting privacy and sensitive information, registering in the name of a proxy is still taken into account in assessing intention, and even circumstantial evidence without contradiction or explanation can tip the scale in complainant's favor. more
In the discussions proceeding the World Intellectual Property Organization (WIPO) publishing The Management Of Internet Names And Addresses: Intellectual Property Issues (Final Report, April 30, 1999) that ultimately led to the ICANN implementing the Uniform Domain Name Dispute Resolution Policy (UDRP) (1999) commentators considered three remedies to combat cybersquatting: suspending, cancelling, and transferring infringing domain names. more
On the question of reselling domain names on the secondary market, a dissenting panelist in a 2005 case observed that "[t]here is no doubt Respondent is in the business of being a reseller of domain names that consist of common English words" and then suggested that the "fundamental question before the Panel is whether or not such a business should be allowed under the UDRP." He concluded that such a business should not be allowed... more
Having trademarks (registered or unregistered) is the prerequisite for maintaining a UDRP, but having one is not conclusive of either Respondent’s lack of rights or legitimate interests or that it registered and is using the domain name in bad faith. The cautionary tale in many of these cases, especially for the Complainant who has the burden of proof, is that it has to satisfy each of the elements in the three subsections... more
Doug Isenberg notes in a recent CircleID essay that two records in domain name disputes were broken in 2017, namely number of cybersquatting claims (3,036 in 2016, 3,073 in 2017) and number of domain names implicated (5354 in 2016, 6370 in 2017). Fairly consistently from year to year, approximately twenty percent of filings are terminated (withdrawn): whether by settlement or nolo contendere we don't know. (All of these statistics come from the World Intellectual Property Organization (WIPO). more
Daniel Marti was nominated to become the new White House "IP Czar" in August 2014 to replace Victoria Espinel. His predecessor, in yet another illustration of Washington's "revolving door" shuffling key individuals between the government and private sector, departed the post a year earlier to become head of BSA/The Software Alliance, the leading trade group for the software industry. more
As I've written before, domain name disputes involving multiple trademarks sometimes raise interesting issues, including whether a panel can order a domain name transferred to one entity without consent of the other. While panels typically have found ways to resolve this issue, one particularly troubling fact pattern arises when a panel denies a complaint simply because a disputed domain name contains trademarks owned by two different entities. more
Two Uniform Domain-Name Dispute-Resolution Policy (UDRP) decisions posted this month involved domain names registered 20 and 21 years ago, David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, 21 years and Commonwealth Bank of Australia v. Registration Private, Domains By Proxy, 20 years. Complainants prevailed in both cases. The domain names stand out as being the oldest to have been found registered in bad faith, and transferred. more
Dialogue is the only way to end cybersquatting. Distrust between brand owners and domain owners (with an assist from some cockeyed business incentives) has turned a problem into a very expensive vicious cycle. Now that ICANN is about to launch new top-level domains (TLDs), negotiations must start immediately or both sides will pile up further loses. Here's how the problem plays out now. more
The Uniform Domain Name Dispute Resolution Policy (UDRP) was designed as a quicker and less-expensive alternative to litigation. Although the UDRP policy and rules provide strict timelines for various stages of a UDRP case, how quickly a dispute is actually resolved can vary based on numerous factors. A typical UDRP case results in a decision in about two months, but the facts of each case -- including actions both within and outside the control of the parties -- may shorten or extend that timing. more
The threshold for an actionable claim under the Uniform Domain Name Dispute Resolution Policy (UDRP) is a trademark in which complainant has rights. "Rights" means a trademark that could have been newly minted a moment before filing the complaint. This is different from the Anticybersquatting Consumer Protection Act (ACPA) in which trademark owners must have a "mark that is distinctive at the time of registration of the domain name." The difference is important... more
The Internet has provided an unprecedented number of opportunities while raising far-reaching legal issues. It has created a complex matrix of national laws, global circumstances and new definitions -- or, at least, definitions in progress. The turmoil over Brexit and the international implications of the EU General Data Protection Regulation are signs of the times; as are issues surrounding domain names. more
A discussion is presently underway about the Uniform Rapid Suspension System (URS) (and in Phase 2 next year of the Uniform Domain Name Resolution Policy (UDRP)), whether it is performing as intended. The URS is less than five years old, and there are not an overwhelming number of decisions. Since 2013, rights holders have filed less than one thousand complaints (with three providers, the Forum being the most active), which translates into less than 170 decisions annually... more
When in the Fall of 1999 the Internet Corporation for Assigned Names and Numbers (ICANN) implemented the Uniform Domain Name Dispute Resolution Policy, it did not come with a fully formed jurisprudence. Panelists were essentially on their own in creating it. They had some guidance from a lengthy and detailed report published by the World Intellectual Property Organization ... and a basket of principles derived from trademark law, but panelists had to build the jurisprudence from scratch. more
Headline in TheDomains.com, June 18, 2016: "Wow: 20 Year Old Domain Name WorldTradeCenter.com Lost in UDRP." For those who don't follow UDRP decisions carefully this may elicit, how can this be? Well, surprised or not, and assuming complainant has priority in the string of characters that is both a domain name and a trademark... delay is not a factor in prevailing on cybersquatting claims when there is an alignment of other factors... more
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