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

UDRP and the Law: Should Cybersquatting be the Default View?

I have returned to the subject of the title on a number of occasions and it is worth revisiting. Like judicial proceedings, the substance of disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) and Panel determinations are publicly available. The Internet Corporation for Assigned Names and Numbers (ICANN) mandates in its Rules that all decisions must be delivered to the parties within "three business days" of their receipt of the decision and posted on providers' websites. more

Assessing Intent to Cybersquat

It, perhaps, does not have to be said that cybersquatting is an intentional tort. No one would expect the respondent to admit unlawful intention, but complainant's proof must nevertheless support that contention. The Panel in Hästens Sängar AB v. Jeff Bader / Organic Mattresses, Inc. FA2005001895951 (Forum July 31, 2020) reminds us that it takes more than bad faith use of a domain name to find cybersquatting. more

Confusingly Similar But No Likelihood of Confusion in UDRP

The word "confusion" in the Uniform Domain Name Dispute Resolution Policy (UDRP) signifies two separate states of mind. The first in ¶4(a)(i) appears in the phrase "identical or confusingly similar to a trademark or service mark in which the complainant has rights." It is a test to determine whether the mark owner has standing to maintain a UDRP proceeding. 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

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

Asserting but Not Proving Cybersquatting Under the UDRP

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

Recent Case in Federal Court Shows Inefficiencies of Anticybersquatting Consumer Protection Act

A recent case1 from a federal court in Kentucky shows why the Anticybersquatting Consumer Protection Act (15 U.S.C. 1125(d) - the "ACPA") can be - when compared to the Uniform Domain Name Dispute Resolution Policy ("UDRP") - a relatively inefficient way of resolving a domain name dispute. Here is a quick rundown of the facts. Defendant owned a business directly competitive to plaintiff ServPro. Plaintiff had used its mark and trade dress since the 1960's... more

Cybersquatting and Reverse Domain Name Hijacking: UDRP to ACPA

Trademark owners in the U.S. have a choice in suing for alleged cybersquatting: either the Uniform Domain Name Dispute Resolution Policy (UDRP) or the Anticybersquatting Consumer Protection Act (ACPA). Of the two, the UDRP is far and away the forum of choice for a very good reason: it is speedy, efficient, and inexpensive. Complaint to award can be concluded in less than 45 days. more

How Companies Can Use the UDRP to Combat Rising COVID-19-Related Phishing

Straightforward out-of-court domain name proceeding can provide efficient relief against fraudulent websites and email. Google has seen a steep rise amid the Coronavirus pandemic in new websites set up to engage in phishing (i.e. fraudulent attempts to obtain sensitive information such as usernames, passwords and financial details). Companies in all industries - not just the financial sector - are at risk from this nefarious practice. But one relatively simple out-of-court proceeding may provide relief. more

False Expectations: Attorney’s Fees and Statutory Damages in ACPA Actions

There is a degree of dread in the investor community that prized domain names will be forfeited to trademark owners in proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP). Since the UDRP has no internal appeal mechanism to correct errors of law or judgment, the sole recourse is an action in a court of competent jurisdiction as spelled out in UDRP paragraph 4(k). In the U.S., this would be a district court under the Anticybersquatting Consumer Protection Act (ACPA). more

Unfamiliarity and Unpreparedness in Proceedings Under the UDRP

There is a difference, of course, between asserting a claim that cannot possibly succeed in an administrative proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) and being unprepared to prove a claim that may have merit with the right evidence. Still, there is also an overlapping similarity in that complainants are either shockingly unfamiliar with UDRP procedures and jurisprudence... more

Revisiting Reverse Domain Name Hijacking

The conduct that reverse domain name hijacking (RDNH) was crafted to punish is "using the [Uniform Domain Name Dispute Resolution Policy] in bad faith to attempt to deprive a registered domain-name holder of a domain name." There are several variations ranging from the plain vanilla, claims that should never have been brought – mark owners whose rights postdate the registration of the challenged domain name as in Vudu, Inc. v. WhoisGuard, Inc. / K Blacklock, D2019-2247... more

Challenging Domain Names for Abusive Registration: UDRP and ACPA

There are predatory-domain name registrants, and there are registrants engaged in the legitimate business of acquiring, monetizing and reselling domain names. That there are more of the first than the second is evident from proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP). "Given the human capacity for mischief in all its forms, the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to enumerate all its varieties exhaustively. 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