Doug Isenberg

Doug Isenberg

Attorney & Founder of The GigaLaw Firm
Joined on February 8, 2016
Total Post Views: 279,175

About

An attorney and founder of The GigaLaw Firm, Doug Isenberg is a recognized leader on Internet law; a domain name arbitrator; a frequent author and speaker on Internet legal issues; and an adjunct professor of computer and cyberspace law.

Featured Blogs

Fighting Phishing with Domain Name Disputes

I opened an email from GoDaddy over the weekend on my phone. Or so I initially thought. I had recently helped a client transfer a domain name to a GoDaddy account (to settle a domain name dispute), so the subject line of the email -- "Confirm this account" -- simply made me think that I needed to take another action to ensure everything was in working order. But quickly, my radar went off. 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»

.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»

Where to Search UDRP Decisions

Searching decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) is important - for evaluating the merits of a potential case and also, of course, for citing precedent when drafting documents (such as a complaint and a response) in an actual case. But, searching UDRP decisions is not always an easy task. It's important to know both where to search and how to search. Unfortunately, there is no longer an official, central repository of all UDRP decisions that is freely available online. more»

When a Domain Name Dispute is 'Plan B'

While having a backup plan is usually a good idea, it's often not an effective way to obtain someone else's domain name - at least not when Plan B consists of a company filing a UDRP complaint with the hope of getting a domain name to which it is not entitled and could not acquire via a negotiated purchase. "Plan B" as a derogatory way of describing an attempted domain name acquisition usually arises in the context of a domain name that is not protected by exclusive (or any) trademark rights, or where the complainant clearly could not prevail in a UDRP proceeding. 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»

The URS Also Applies to These Top-Level Domains

The Uniform Rapid Suspension System (URS) is often described as a domain name dispute policy that applies to the new gTLDs. While that's true, the URS is actually broader than that. The URS (a quick and inexpensive policy that allows a trademark owner to obtain the temporary suspension of a domain name) applies to more than just the new gTLDs, that is, those top-level domains that are a part of ICANN's 2012 domain name expansion. more»

After 21 Years, Actor David Duchovny Wins His Domain Name

While plenty of UDRP decisions have made clear that a trademark owner's delay in bringing an action against a cybersquatter (often referred to as "laches") is typically not a defense, actor David Duchovny's decision to file a UDRP complaint nearly 21 years after the domain name davidduchovny.com was registered may set a record for the longest wait in a domain name dispute. more»

How to Dispute a Third-Level 'Country-Code' .com Domain Name (Such as nike.eu.com)

Shortly after I recently wrote about WIPO's new role as a domain name dispute provider for the .eu ccTLD, the Forum published its first decision on another type of "eu" domain name: eu.com. The decision involved the domain name nike.eu.com. What makes this case interesting is that it represents one of the few .com domain name disputes that includes a country-code in the second-level portion of the domain name. 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»

These Countries Have Adopted the UDRP

The Uniform Domain Name Dispute Resolution Policy (UDRP) is certainly the most frequently used tool to combat cybersquatting -- but, it is not always an option. Many countries have adopted their own domain name dispute policies -- or none at all -- in lieu of the UDRP. For example, domain names in the United Kingdom's .uk country-code top-level domain (ccTLD) are subject to Nominet's Domain Dispute Resolution Service, which applies a different test... more»

WIPO's UDRP 'Overview' Gets Bigger (and Better)

Just as the number of domain names and domain name disputes have expanded significantly in recent years, so, too, has WIPO's "Overview," which has been updated to address the growing complexity of cases under the Uniform Domain Name Dispute Resolution Policy (UDRP). WIPO has just published the third edition of its "WIPO Overview of WIPO Panel Views on Selected UDRP Questions" -- commonly referred to as "WIPO Jurisprudential Overview 3.0." more»

A Lesson from the Environmental Protection Agency (EPA) in Domain Name Disputes

While the U.S. Environmental Protection Agency (EPA) has been making news as the result of controversial changes brought about under the new Trump administration -- including the planned removal of "several agency websites containing detailed climate data and scientific information" -- the EPA also has generated some (lesser-known) domain name news: The agency won a decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) for the domain name noattacks.org. more»

Dot-Com is Still King - of Domain Name Disputes

Despite the launch of more than 1,200 new gTLDs, .com remains far and away the most popular top-level domain involved in domain name disputes. In 2016, .com domain names represented 66.82 percent of all gTLD disputes at the World Intellectual Property Organization (WIPO), the only domain name dispute provider that publishes real-time statistics. And, as of this writing, the rate is even higher so far in 2017, with .com domain names accounting for 69.78 percent of all disputes. more»

Why Cancel a Domain Name in a UDRP Case?

While the most common results of a UDRP proceeding are either transfer of a disputed domain name to a complainant or denial (that is, allowing the respondent to retain it), there is another possible outcome: cancellation. I'm always surprised to see a UDRP decision in which a domain name is cancelled. True, many trademark owners don't really want to obtain control of a disputed domain name (and, instead, they simply want to get it taken away from a cybersquatter). more»

How to Get a Domain Name Transferred Under the URS

The Uniform Rapid Suspension System (URS) is designed to get a domain name suspended, but in some cases this dispute policy can be used to help get a domain name transferred. It's an uncommon result but one that trademark owners may want to keep in mind. The suspension remedy is often viewed as the greatest limitation of the URS. Trademark owners that want to have a domain name transferred typically file a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) instead of the URS - but, the UDRP is more expensive and time-consuming. more»

How Long Does a URS Case Take?

The Uniform Rapid Suspension System (URS) -- which allows a trademark owner to suspend certain domain names, especially those in the "new" gTLDs -- was designed as a quicker and less-expensive alternative to the Uniform Domain Name Dispute Resolution Policy (UDRP). As I've written frequently before, there are significant differences between the URS and the UDRP. One of those differences is how long a typical proceeding lasts. more»

How Long Does a UDRP Case Take?

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»

Early Disclosure of UDRP Complaints

Under the previous rules for the Uniform Domain Name Dispute Resolution Policy (UDRP), domain name registrants that had a complaint filed against them were supposed to be notified of the complaint by the trademark owner that filed it. Then, a revised set of UDRP rules that went into effect in 2015 eliminated the complainant's obligation to notify the respondent. Instead, the new rules only require the UDRP service provider (such as WIPO or the Forum) notify the respondent, presumably after the registrar has locked the domain name, preventing any transfers. more»

When Two Trademarks Aren't Confusingly Similar to One Trademark

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»

Thoughts on the Proposed Copyright Alternative Dispute Resolution Policy

A proposal from the Domain Name Association (DNA) would provide copyright owners with a new tool to fight online infringement -- but the idea is, like other efforts to protect intellectual property rights on the Internet, proving controversial. The proposed Copyright Alternative Dispute Resolution Policy is one of four parts of the DNA's "Healthy Domains Initiative" (HDI). 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»

When a 'Response Fee' is Required in a URS Case

Although filing fees in domain name disputes are usually paid for by the trademark owner that files a complaint, the Uniform Rapid Suspension System (URS) contains a little-noticed provision that, in large cases, requires the domain name registrant to pay a fee to defend itself. The so-called "Response Fee" is only required in URS cases that include 15 or more disputed domain names. more»

When to Consider 'Both Sides of the Dot' in a Domain Name Dispute

In the case, filed by Michelin, the panel found the domain name 'tyre.plus' confusingly similar to the trademark TYREPLUS. Specifically, the panel wrote: "If one ignores the 'dot' between the Second-Level Domain ('tyre') and the Top-Level Domain ('plus'), the mark and the Domain Name are identical..." It's an issue that's arising with increasing frequency -- just as I had predicted. more»

Differing UDRP Decisions Show That Facts Matter

"Past performance does not necessarily predict future results." That's what the U.S. Securities and Exchange Commission requires mutual funds tell investors. But it's also true about domain name disputes. Cases in point: In four recent proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP), the operator of a large bank won two decisions but lost two others, despite a track record of having won more than 30 previous UDRP disputes. 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»

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»

Here's the Largest URS Complaint Ever Filed

A complaint under the Uniform Rapid Suspension System (URS) may -- like the Uniform Domain Name Dispute Resolution Policy (UDRP) -- include more than one domain name, but few URS complaints have done so. Now, one new URS case just changed everything. In the largest URS case ever filed, an expert at the Forum ordered the suspension of 474 domain names in a single proceeding. more»

All About the Copyright Office's New DMCA System

Website publishers that want to protect themselves against claims of copyright infringement must participate in a new online registration system created by the U.S. Copyright Office for the Digital Millennium Copyright Act ("DMCA") -- even if they have participated previously. The new program, launched on December 1, 2016, offers a mandatory online registration system for the DMCA that replaces the original (and clunky) "interim" designation system, which was created in 1998. more»

Don't Fall for This Domain Name 'Expiration' Scam

If, like me and my clients, you ever receive an email about a domain name expiration, proceed with great suspicion -- because many of these "notices" are a sham. They're designed to sell you services you don't need or to trick you into transferring your domain name to another registrar. Usually, the emails can safely be ignored. Here's an example: As shown, an important-looking email from "Domain Service" refers to a specific domain name in the subject line. more»

The Strength of Top-Level Domains in UDRP Decisions

Another domain name dispute decision -- this one for '24hour.fitness' -- has highlighted the increasing (potential) relevance of the top-level domain (TLD) under the Uniform Domain Name Dispute Resolution Policy (UDRP). As I have written before, the proliferation of new TLDs is having an impact on whether and how UDRP panels consider the TLD in their decisions. more»

8 Facts About 3-Member Panels in UDRP Cases

Proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP) can be heard by either a one- or three-member panel. Here are eight important facts that every complainant (trademark owner) and respondent (domain name registrant) should consider when deciding whether to select one or three members... Either party - complainant or respondent - has an opportunity to select a three-member panel... more»

Understanding 'Reverse Domain Name Hijacking' Under the UDRP

"Reverse Domain Name Hijacking" (RDNH) is a finding that a panel can make against a trademark owner in a case under the Uniform Domain Name Dispute Resolution Policy (UDRP)... While neither the UDRP nor the Rules provide any further details or guidance, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, provides some insight into the circumstances in which panels have found RDNH. more»

When 'Confusing Similarity' in UDRP Cases Gets Confusing

The first element of the Uniform Domain Name Dispute Resolution Policy (UDRP) requires a complainant to prove that the disputed domain name "is identical or confusingly similar to a trademark or service mark in which the complainant has rights." It's unusual for a complainant to fail on this first of three prongs, but one recent case demonstrates just how uncertain the UDRP can be sometimes. more»

A Record Year for Domain Name Disputes?

With just a little more than three months left in 2016, the number of domain name disputes filed at the World Intellectual Property Organization (WIPO) appears to be headed for a record year. According to public data published on the WIPO website, the current number of domain name disputes filed this year (as of this writing, September 27, 2016) is 2,228 - which would indicate that the total might reach 3,011 cases by December 31. more»

Benefits and Challenges of Multiple Domain Names in a Single UDRP Complaint

How many domain names can be included in a single complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP)? Neither the UDRP policy nor its corresponding rules directly address this issue, although the rules state that a "complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder." more»

What We Can Learn from URS Decisions (Hint: Not Much)

In addition to being rarely invoked, the Uniform Rapid Suspension System (URS), when utilized, is providing trademark owners and domain name registrants with little guidance about this domain name dispute policy. URS determinations typically offer no insight into the reasons behind an expert's decision, regardless of whether the determination was in favor of the trademark owner (to temporarily suspend the disputed domain name) or the domain name registrant (to allow the registrant to retain the domain name without interruption). more»

The Impact of Reverse Domain Name Hijacking on Supplemental Filings in UDRP Cases

In another blog post, I wrote about the sometimes confusing circumstances in which domain name dispute panelists will consider supplemental, or additional, filings from the parties (in addition to a complaint and response) in cases under the Uniform Domain Name Dispute Resolution Policy (UDRP). I quoted the WIPO Overview, which states, in part, that supplemental filings may be appropriate where a party can "show its relevance to the case and why it was unable to provide that information in the complaint or response." more»

The Truth About Supplemental Filings in UDRP Cases

A typical proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) consists of a complaint and, sometimes, a response. UDRP Rule 12 makes clear that "further statements or documents from either of the Parties" are appropriate only if "the Panel... request[s], in its sole discretion." In practice, however, such supplemental or additional filings are not uncommon, with the leading UDRP service providers - WIPO and the Forum - issuing guidance about when they may be appropriate. more»

'Pokemon' Domain Names are a No-Go

The legal issues surrounding the sudden success of "Pokemon Go" -- one of the world's fastest-growing apps or games -- are popping up as quickly as unhatched Eggs at a PokéStop. Within days of the game's release, the National Safety Council issued a call that "urges pedestrians to exercise caution while playing the Pokémon Go augmented reality game" and "implores drivers to refrain from playing the game behind the wheel." more»

5 Myths About DMCA 'Take-Down' Notices

The so-called notice-and-take-down provisions of the Digital Millennium Copyright Act (DMCA) provide both a very effective tool for copyright owners to get infringing content removed from the Internet as well as an important protection for service providers (such as website hosting companies) that may inadvertently publish infringing material, either directly or via user-generated content. more»

Who Really Cares About New gTLDs?

ICANN's recent announcement of what it called "an exciting milestone in the evolution of the domain name system" - the delegation of the 1,000th new generic top-level domain (gTLD) - went largely unnoticed. While that's consistent with the new gTLD program in general (at least from the perspective of the general public), that doesn't mean trademark owners should forget about them. more»

The Popularity of .co (not .com) Domain Name Disputes

One of the most popular top-level domains under the Uniform Domain Name Dispute Resolution Policy (UDRP) is not even a gTLD (generic top-level domain). It's a ccTLD: .co, the country-code top-level domain for Colombia, in South America. Based on statistics at WIPO as of this writing, 29 .co domain names have been the subject of UDRP disputes this year, making it the most-disputed ccTLD under the popular domain name dispute policy. more»

The DotBible Litmus Test for Domain Name Dispute Panelists

A dispute policy for the new '.bible' top-level domain name requires panelists who agree to hear cases to affirm that they "enthusiastically support the mission of American Bible Society" and that they "believe that the Bible is the Word of God which brings salvation through Christ." The DotBible Community Dispute Resolution Policy appears to be the first domain name dispute policy that requires panelists to take a religious oath - or, for that matter, an oath other than anything related to maintaining neutrality. more»

Using the URS as a Preliminary Injunction for Domain Name Disputes

As I've written before, the Uniform Rapid Suspension System (URS) - the domain name dispute policy applicable to the new generic top-level domains (gTLDs) - is just not catching on. Whether because of its limited suspension remedy, high burden of proof or other reasons, the URS remains unpopular among trademark owners. However, there's one interesting use to which the URS can be put. more»

Cybersquatting & Banking: How Financial Services Industry Can Protect Itself Online (Webinar)

Businesses in the financial services sector are among the most frequent targets of cybersquatters. In this free webinar, I will be joining Craig Schwartz of fTLD Registry Services to provide important information about how domain name fraud is affecting the financial services industries, including banking and insurance, and what businesses and consumers can do to protect themselves online. more»

The Future of Domain Name Dispute Policies: The Journey Begins

A just-launched ICANN "working group" (of which I am a member) will - eventually - help to determine the future of the Uniform Domain Name Dispute Resolution Policy (UDRP), the 17-year-old domain name arbitration system that has been embraced by trademark owners and criticized by some domainers; as well as the Uniform Rapid Suspension System (URS), the new (and limited) arbitration process that applies to the new gTLDs. more»

Even Lawyers Have Domain Name Problems

No industry is immune from cybersquatting - not even the legal industry. In three recent (and unrelated) UDRP decisions, law firms won decisions ordering the transfer of domain names that contain their trademarks. One of the cases involved Alston & Bird, the large law firm where I began my legal career and first learned about domain name disputes 20 years ago. As the UDRP decision describes it, Alston & Bird is a well-known law firm founded in 1893 with offices throughout the world. 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»

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»

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»

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»

The Growing Importance of Language in UDRP Proceedings

An increasing number of domain name disputes are being conducted in languages other than English, a trend that presents a new challenge for some trademark owners. In 2015, 85.77% of all domain names disputes at the World Intellectual Property Organization (WIPO) were conducted in English - down from an all-time average of 88.01% and a record high (in 2000) of 99.84% (disregarding 1999, the first year of the UDRP, because only one case was filed - in English -- that year). more»

Is the DMCA an Effective Way to Take Down Infringing Content?

As promised at an end-of-the-year (2015) announcement, the U.S. Copyright Office has now launched a comment submission process about the "safe harbor provisions" of the Digital Millennium Copyright Act (DMCA). The DMCA is often used by copyright owners to get infringing content - images, text, videos, music, even software - removed from problematic websites. more»