UDRP

Fair Use Registration of Domain Names for Artists and Hobbyists

There is in the Anticybersquatting Consumer Protection Act a provision not expressly found in the UDRP (at least, not in so many words) but the concept is nevertheless present in the Policy by construction... The term "fair use" is typically associated with protected speech (criticism and commentary), fan websites, and nominative use of domain names but it is not limited to those uses. It's a flexible principle in both trademark and copyright law. more

The Importance of Protecting Credibility: Claiming and Rebutting Cybersquatting

The Uniform Domain Name Dispute Resolution Policy (UDRP) is an online dispute resolution regime. While panelists technically have discretion under Rule 13 to hold in-person hearings if they "determine[ ] ... and as an exceptional matter, that such a hearing is necessary for deciding the complaint" no in-person hearing has ever been held. Rule 13 exists to be ignored. more

Confusing Similarity of Domain Names is Only a ‘Standing Requirement’ Under the UDRP

WIPO's newest overview of the Uniform Domain Name Dispute Resolution Policy (UDRP) succinctly states what decisions have made clear through the years: The UDRP's first test is only a "standing requirement." Standing, under the law, simply means that a person or company is qualified to assert a legal right. It does not mean or imply that one will necessarily prevail on any claims. The UDRP includes a well-known three-part test that all trademark owners must satisfy to prevail, but the first element has a low threshold. more

Beware of Extra Fees in UDRP Proceedings

The Uniform Domain Name Dispute Resolution Policy (UDRP) is known as an inexpensive alternative to litigation (and that's true), but some proceedings can end up costing a trademark owner more than it may have expected. There are generally two additional types of expenses that can arise during the course of a UDRP proceeding: (1) extra filing fees for certain aspects of a case filed at the Forum, and (2) an increased filing fee if the domain name registrant wants a three-member panel to decide the case. more

Reverse Domain Hijacking Where Complainant Knew but Did Not Disclose Geographic Significance of Mark

In the case of Oy Vallila Interior Ab v. Linkz Internet Services, a 3-member WIPO Panel denied the Complainant's efforts to have the disputed domain name vallila.com transferred because the Complainant did not prove that the Respondent registered and used the disputed domain name in bad faith. The Complainant is in the business of providing fabrics and interior design services and claimed trademark rights in its registered mark VALLILA in the European Union. more

In Response to CADNA: Cybersquatting is Not Criminal But a Civil Matter

The Coalition Against Domain Name Abuse (CADNA) recently released a statement that implied that cybersquatting is a criminal activity. It said, "CADNA has been working diligently to further international and national policies that combat the practice of cybersquatting... As brands continue to learn about the prevalence and practice of online criminal activities..." While, Internet Commerce Association (ICA) vigorously opposes cybersquatting, it is important to note that cybersquatting is a civil matter, not a criminal one. There is a good reason that cybersquatting is a civil matter... more

How a ‘Defensive Registration’ Can Defeat a UDRP Complaint

A company that registers a domain name containing someone else's trademark may be engaging in the acceptable practice of "defensive registration" if (among other things) the domain name is a typographical variation of the registrant's own trademark. That's the outcome of a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), a case in which the domain name in dispute, idocler.com, contained the complainant's DOCLER trademark -- but also contained a typo of the respondent's DOLCER trademark. more

Thinking Carefully About New gTLD Objections: Limited Public Interest (Part 2 of 4)

The second installment in my four-part series on New gTLD objections will focus on the limited public interest ("LPI") variety. The overarching theme however is essentially the same: new gTLD objections are generally more complicated (and costly) than UDRP actions and need to be approached with care. In fact, LPI represents one of the best examples of the tough climb that would-be objectors are likely to face. Understanding exactly what is required beforehand - and whether or not you can deliver - is absolutely critical. more

Trademark Owner Loses Two Domain Name Disputes - On Same Domain Name

I've said many times that winning a domain name dispute under the Uniform Rapid Suspension System (URS) is much more challenging than under the Uniform Domain Name Dispute Resolution Policy (UDRP). But, that doesn't mean trademark owners should take the UDRP for granted. One complainant learned that lesson an especially hard way -- first by losing a URS determination and then by losing a UDRP decision on the same domain name. more

Trademark Registrations on the ‘Supplemental Register’ Don’t Count (in Domain Name Disputes)

The Uniform Domain Name Dispute Resolution Policy (UDRP) has never required that a complainant own any trademark registrations to succeed in a domain name dispute, given that common law trademark rights (if properly established) are sufficient. But, as a pair of recent UDRP decisions reminds us, even some registrations are inadequate. The issue relates to the first element of every UDRP complaint, which requires the party seeking relief to prove that the "domain name is identical or confusingly similar to a trademark... more

When a UDRP Panel Infers Bad Faith from An Asking Price

In the Converse.co dispute, a three-member UDRP panel unanimously ordered the transfer of the disputed domain name to the Complainants, All Star C.V. and Converse, Inc., owners of the well-known brand CONVERSE for shoes and apparel. The panel drew the inference that the Respondent, by setting of an asking price of around $300,000 after having acquired the domain name for $306, was primarily motivated by a bad faith intent to target the Complaint. more

Creating, Protecting and Defending Brand Equity - Part 2

In the second of three posts about how brand owners can protect their trademarks from misuse, I will focus on two concepts: the role of "use" and registration in protecting your brand, and domain names -- specifically acquisition and protection. Internet domain names have emerged as a major battleground for brand promotion and protection. While it is easier than ever to register and promote your name on the internet, it is also easier for others to trade on another brand's equity. more

Challenging UDRP Awards in Federal Court: Recent Outcomes

Challenging UDRP awards in actions under the Anticybersquatting Consumer Protection Act (ACPA) is infrequent though steady. There are currently a number of court filings in U.S. district courts that are in the early stages, most notably the ADO.com case reported on in an earlier essay and several others have either been referred to mediation (the IMI.case) or settled or discontinued. more

ICANN to IP Experts: Come Back With a Solution for Internet Trademark Protection

Trademark issues are emerging with the upcoming introduction of new generic top-level domains on the internet, and the board members of the body introducing the names has passed the ball back to intellectual property experts to find answers. The Intellectual Property Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN) has been asked to work out a viable solution "no later than 24 May 2009." Trademark issues have been defined as one of four overarching issues still to be solved before ICANN can finalise the application procedure for the next hundreds or thousands of top-level domains from .eco to .music. more

How to Suspend a .US Domain Name

Although rarely used, the usTLD Rapid Suspension Dispute Policy (usRS) allows a trademark owner to seek the suspension of a domain name in the .us country-code top-level domain (ccTLD). The usRS has many things in common with the Uniform Rapid Suspension System (URS), which applies to domain names in the new generic top-level domains (gTLD). more