UDRP

Trademark Owners’ Rights to Corresponding Earlier Registered Domain Names

As I pointed out in last week's essay, having trademark rights that come into existence later than registrations of corresponding domain names only gets complainants to first base; they have standing but no actionable claim. I also noted a nuance (not a difference in substance) in standing requirements between the Uniform Dispute Resolution Policy (UDRP) and the Anti-Cybersquatting Consumer Protection Act (ACPA). However, standing depends upon the specific facts of the case... more

Quintessential and Other Acts of Bad Faith in Acquiring Domain Names

There are two essential differences between the Uniform Dispute Resolution Policy (UDRP) and the Anti-Cybersquatting Consumer Protection Act (ACPA), one procedural and one substantive. The procedural difference is quite minor, a mere quirk that Panels adopted by consensus in the early days of the UDRP and deserves no more than a footnote. Under the UDRP, complainants have standing on proof that they have trademark rights when they file their complaints... more

Split UDRP Decisions on (Almost) Identical Domain Names

A company called Rocketgate PR LLC, which owns a U.S. registration for the trademark ROCKETPAY, filed two UDRP complaints on the same date against two different domain name registrants - for the domain names and . (The only difference is that the latter domain name is plural.) In both cases, the disputed domain names were associated with inactive websites. The UDRP cases were assigned to two different panelists, who issued their decisions one day apart. more

No Barrier to Reading Across the Dot with New TLDs and Trademark Infringements

Even before the introduction of new top level domains in 2014, Panels had grappled with the before and after the dot issue with country code suffixes. The traditional procedure is to compare the characters of the accused domain names with the characters of trademarks for identity or confusing similarity. But this did not exclude the possibility of reading across the dot. more

Running the Gamut: Commentary, Criticism, Tarnishment, Disparagement, and Defamation

The two bookends of speaking one's mind are commentary and criticism, which is indisputably acceptable as protected speech, and (in order of abuse) tarnishment and disparagement. Defamation, which is a stage beyond disparagement, is not actionable under the UDRP, although tarnishment and disparagement may be. In ICANN's lexicon, tarnishment is limited in meaning to "acts done with intent to commercially gain" (Second Staff Report, October 24, 2009, footnote 2). more

The Growing Threat of Cybersquatting in the Banking and Finance Sector

The apparent cyber heist of of $81 million from the Bangladesh central bank's U.S. account may cause some people to question the security of online banking. While the online theft prompted SWIFT - a cooperative owned by 3,000 financial institutions around the world -- to make sure banks are following recommended security practices, the incident also could have ramifications for banking customers worldwide. 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

Registering and Monetizing Personal Names

At the top of WIPO's list of the most cybersquatted trademarks for 2015 (issued on March 18, 2016) is "Hugo Boss" with 62 complaints. The report also reveals that the fashion industry led other commercial sectors with 10% of complainant activity. Not surprisingly, in this sector companies (couturiers extending their services to the general public) are branded with the personal names of their founders. Why any registrant would intentionally target well-known personal names in the fashion industry is a mystery because there's no future in it. In fact, complaints are never answered and always successful. more

What is the Intellectual Property Constituency (IPC)?

As a longtime member of ICANN's Intellectual Property Constituency (IPC), I'm impressed by the important work that this group does on behalf of trademark owners worldwide (as I've written before). While some die-hard IPC members spend countless (and, often, thankless) hours working virtually and in-person (at ICANN's global meetings) for the constituency, I find it very educational and worthwhile to participate on an ad-hoc basis. more

Charter Approved to Review All Rights Protections Mechanisms in All Generic TLDs

On March 9th, 2016, during its final open meeting at ICANN 55 in Marrakech, Morocco, the Generic Names Supporting Organization (GNSO) Council approved a motion that I proposed to adopt the Charter of the Policy Development Process (PDP) to Review all Rights Protections Mechanisms (RPMs) in all Generic Top-Level Domains. I serve on the Council as one of the two representatives of ICANN's Business Constituency, and my fellow Councilors have designated me to serve as the GNSO's Liaison to the Working Group (WG), and as its Interim Chair. more

Overreaching Trademark Owners and the Misguided Better Right Theory of Domain Name Ownership

In Blogs devoted to news from the domain name industry and domainers, there is great glee in reporting about overreaching trademark owners. The reason for the glee, I think, is that it's a form of collective sigh from domainers and the domain industry that the UDRP is working as it should, which means that Panels are careful in their assessments of parties' rights. more

Senate Letter to ICANN Board Showcases Critical Misunderstanding of What ICANN Is

Today's new U.S. Senate letter to ICANN - the latest in a series of letters on the work of the ICANN technical communities - is disturbingly well crafted. If taken at face value, it even seems to lend credence to the idea that ICANN is potentially a perpetuator of the limiting of free speech, and it could be seen as a break in the narrative that i2Coalition perpetuates, that the IANA transition is a positive step in strengthening multistakeholderism over dangerous multilateralism when it comes to Internet governance. more

Is the URS Dying?

The much-maligned Uniform Rapid Suspension System (URS) is not only failing to catch on -- it's actually starting to fade. Once envisioned as a popular rights-protection mechanism for trademark owners under the new generic top-level domain names (gTLDs), the URS instead is seldom used. In fact, despite the growth in new gTLD registrations, the URS is in decline. more

Newly Released “Domain Name Arbitration” Book Offers Guide for Navigating UDRP

Legal Corner Press, LLC recently announced the publication of Domain Name Arbitration: Asserting and Defending Claims of Cybersquatting Under the Uniform Domain Name Dispute Resolution Policy, authored by Gerald M. Levine, intellectual property attorney, with Foreword by Hon. Neil A. Brown QC, former member of the Australian Parliament and a UDRP panelist. more

The Mission Has Already Crept

ICANN's mission, and the avoidance of "mission creep", is currently the subject of intense debate in the Internet community. Multiple cross-community working groups are dealing with the proposal by an agency of the United States government, NTIA, to give up the last vestiges of its control of the IANA function. Many of the new organizational structures under consideration purport to deal with ICANN's expanding mission. more