Gerald M. Levine

Gerald M. Levine

Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP
Joined on March 9, 2016 – United States
Total Post Views: 369,300

About

Gerald M. Levine is an attorney practicing in New York City. He is the managing partner of Levine Samuel, LLP, located near the United Nations. Further information about the firm can be found on the Firm’s website at iplegalcorner.com.  Mr. Levine has a litigation and counseling practice representing clients in Intellectual Property rights and management, Internet and Cyberspace issues, domain names and cybersquatting, as well as a diverse range of legal and business matters from working with client to resolve commercial disputes to copyright and trademark counseling and registrations. He is on the panel of neutral arbitrators for the American Arbitration Association for commercial and IP disputes and a mediator for the Commercial Division of the New York Supreme Court, New York County; and the United States District Court for the Southern District of New York. Mr. Levine can be reached at gmlevine@researchtheworld.com or 212.596.0851.

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration: A Practical Guide to Asserting and Defending Claims of Cybersquatting Under the Uniform Domain Name Dispute Resolution Policy (Legal Corner Press 2015); Supplement and Update (2017). His numerous articles and essays have appeared in the New York Law Journal, the New York Bar Association Journal and IP and Arbitration Section Journals, as well as online business journals. He has participated as speaker and panelist at the Fordham International IP Conference, and The Domain Conference. He earned a PhD from New York University and a J.D from Brooklyn Law School.

Featured Blogs

Artful Misrepresentations of UDRP Jurisprudence

The jurisprudence applied in adjudicating disputes between mark owners and domain name holders under the Uniform Domain Dispute Resolution Policy (UDRP) is essentially a system that has developed from the ground up; it is Panel-made law based on construing a simple set of propositions unchanged since the Internet Corporation for Assigned Names and Numbers (ICANN) implemented them in 1999. Its strength lies in its being a consensus-based rather than dictated jurisprudence. more

Long-held Domain Names Transferred to Complainants

There has lately been a number of long-held investor registered domain names transferred to complainants under the Uniform Domain Name Dispute Resolution Policy (UDRP). Two of the domain names were registered 23 years ago. This has provoked several commentators to complain that the UDRP is tilted in favor of mark owners and trademark-friendly panelists expressing hostility to the domain industry. I think we have to dig deeper than this. more

Vulnerabilities of Weak Marks and Uncurated Websites

Dictionary words, alone, combined as phrases, modified by other parts of speech, and single letters that function as marks also retain in parallel their common associations that others may use without offending third-party rights. As a rule of thumb, generic terms are not registrable as marks until they perceivably cross a threshold to suggestive and higher classifications. more

Losing a UDRP Case: Questionable Decision or Questionable Submission?

Complainants naturally want to prevail on their claims of alleged infringing conduct and respondents (when they appear) naturally do their best to resist having their domain names taken from them in proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP), but their success depends on their submitting the right constituents of fact and proof. In a forum that has adjudicated over 60,000 cases, it would be surprising if there were no questionable or badly reasoned decisions. more

Trademark Rights Paramount to Contract Rights for Domain Names

UDRP decisions come down from providers (principally from WIPO and the Forum) at the rate of 7 to 10 a day. Complainants mostly prevail; this is because in 90% of the cases (more or less that percentage) respondents have no plausible defense and generally don't bother appearing, although default alone is not conclusive of cybersquatting; there must be evidence of infringement. When complainants do not prevail, it is not because they lack rights... more

Principles, Factors, and Elements that Promote or Undermine the Outcome of UDRP Cases

Panels adjudicating cybersquatting claims, defenses, and rebuttals under the Uniform Domain Name Dispute Resolution Policy (UDRP) expect parties to prove their contentions, and this means having a working understanding of what this entails. There is, first, a set of fundamental rules or principles -- such as pending applications for a mark do not constitute a right, or recognizing unregistered marks as constituting rights... more

Abusive and Malicious Registrations of Domain Names

When ICANN implemented the Uniform Domain Name Dispute Resolution Policy (UDRP) in 1999, it explained its purpose as combating "abusive registrations" of domain names which it defined as registrations "made with bad-faith intent to profit commercially from others' trademarks... Bad actors employ a palette of stratagems, such as combining marks with generic qualifiers, truncating or varying marks or by removing, reversing, and rearranging letters within the second level domain (typosquatting). more

Post-UDRP, ACPA Actions Challenging Awards

The Uniform Domain Name Dispute Resolution Policy (UDRP) is not an exclusive remedy for cybersquatting, but it is by far the preferred forum. Direct actions in courts of competent jurisdiction, the Anticybersquatting Consumer Protection Act (ACPA) in the U.S. are minimal in comparison, and it is rare for respondents to remove disputes to a court of competent jurisdiction before a UDRP decision (paragraph 4(k) of the Policy). Less rare (but not copious) are post-UDRP challenges under the ACPA. more

Proving and Protecting Rights to Domain Names

At their best, UDRP panelists are educators. They inform us about the ways in which parties win or lose on their claims and defenses. What to do and not do. In addressing this issue, I'm referring to less than 10% of cybersquatting disputes. For 90% or more of filed complaints, respondents have no defensible answer and generally don't even bother to respond. But within the 10%, there are serious disputes of contested rights (contested even where respondent has defaulted). more

No Time Bar, No Laches under the UDRP

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

Do Trade Names Qualify as Trade Marks for Purposes of the UDRP?

Naming is the first imperative. It precedes the launching of new lives as much as it does new businesses. Names secure a presence, and for businesses in the marketplace names can grow into trademarks, if they function like one. Are we not sometimes made aware that not all names are equally distinctive, and that some of them are distinctly commonplace? more

New Standard for Reverse Domain Name Hijacking

Uniform Domain-Name Dispute-Resolution Policy (UDRP) Rule 1 defines Reverse Domain Name Hijacking (RDNH) as "using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name"... There has been a mixed history in granting and denying this remedy for overreaching rights. Some Panels consider RDNH regardless whether it has been requested (even if respondent defaults in responding to the complaint); others will only consider the issue if requested. more

Building a Case for Cybersquatting Under the UDRP

A number of recent UDRP decisions remind trademark owners (and counsel) that cybersquatting cases have to be built from the ground up. Each stage has its evidentiary demands. The first two demand either/or proof; the third, the most demanding, requires proof of unified or conjunctive bad faith registration and bad faith use of the accused domain name. Priority, which intuitively would be thought a factor under the first stage (as it is under the ACPA) is actually a factor under the third stage. more

Charting the Balance between Trademark Owners and Domain Name Holders: A Jurisprudential Overview

Efforts to combat cybersquatting began in earnest in 1998 when the World Intellectual Property Organization (WIPO) (at the request of the United States Government supported by all member states) began an extensive process of international consultations "to address cross-border trademark-abusive domain name registrations." ... The extensive process concluded in the Spring of 1999 with WIPO publishing a detailed report... more

Core Principles of Domain Name Law Created in UDRP Proceedings

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

What It Takes to Prove Common Law Rights in UDRP Complaints

The Uniform Domain Name Dispute Resolution Policy now has seventeen years of history. A high percentage of disputes are indefensible and generally undefended. As the history lengthens, early registrants of dictionary word-, common phrase-, and arbitrary letter-domain names have been increasing challenged in two circumstances, namely by businesses who claim to have used the unregistered terms before respondents registered them and later by emerging businesses with no history prior to the registrations of the domain names. more

Balancing Rights: Mark Owners, Emergent Businesses, and Investors

Is there any act more primary than naming? It comes before all else and makes possible what follows. For the most part, names are drawn from cultural assets: collections of words, geographic locations, family names, etc. They can be valuable, which is why they are guarded, protected, and hoarded. The balancing of rights among those competing for names is a deliberate feature of the Uniform Domain Name Dispute Resolution Policy (UDRP). more

Commodifying Words and Letters in the .Com Space

Words (and by extension their constituent letters) are as free to utter and use as is the air sustaining life. No one owns them. There is no toll fee to be paid to dictionary makers who curate them. There are, however, two carve-outs from this public domain, namely words and letters businesses use as designations of origin for their marketplace presence, protected by trademark law; and words and letters arranged expressively by authors, protected by copyright law. more

In Whose Language? Cybersquatting by Foreigners

There are no gatekeepers to prevent registrants from acquiring domain names incorporating marks that potentially violate third-party rights. Anyone anywhere can acquire domain names composed of words and letters in languages not its own through a registrar whose registration agreement is in the language of the registrant. For example, a Chinese registrant of a domain name incorporating a Norwegian mark as in <statoil.store> in which Complainant requests the proceeding be in English notes that Chinese is not an official language in Norway. more

Passive Holding of Domain Names and the Argument for Bad Faith or Forfeiture

There is a misconception among some trademark owners and their counsel that passive holding of domain names alone or combined with lack of rights or legitimate interests supports abusive registration. Thus, Respondent's inactive use of the disputed domain name demonstrates bad faith. Respondent also had actual knowledge of Complainant's YOU ASKED FOR IT mark as Complainant has attempted to buy the domain from Respondent... more

Trademarks and Domain Names Composed of Common Terms

The lexical material from which trademarks are formed is drawn from the same social and cultural resources available to everyone else, which includes domain name registrants. Since trademarks are essentially a form of communication, it is unsurprising that a good number of them are composed of common terms (dictionary words, descriptive phrases, and shared expressions) that others may lawfully use for their own purposes. more

Sanctionable Conduct for Abusing the UDRP Process

To claim a superior right to a string of characters mark owners must (first) have priority (unregistered or registered) in using the mark in commerce; and secondly, have a mark strong enough to rebut any counter argument of registrant's right or legitimate interest in the string. A steady (albeit small) number of owners continue to believe it's outrageous for registrants to hold domain names earlier registered than their trademarks and be permitted to extort amounts far "in excess of [their] documented out-of-pocket costs directly related to the domain name." more

Diversity of View or Unacceptable Inconsistency in the Application of UDRP Law

The general run of Uniform Domain Name Resolution Policy (UDRP) decisions are unremarkable. At their least, they are primarily instructive in establishing the metes and bounds of lawful registration of domain names. A few decisions stand out for their acuity of reasoning and a few others for their lack of it. The latest candidate of the latter class is NSK LTD. v. Li shuo, FA170100 1712449 (Forum February 16, 2017)... It is an example of inconsistency in the application of law. more

Timing Is All: Cybersquatting or Mark Owner Overreaching?

Admittedly, timing is not altogether "all" since there's a palette of factors that go into deciding unlawful registrations of domain names, and a decision as to whether a registrant is cybersquatting or a mark owner overreaching, is likely to include a number of them, but timing is nevertheless fundamental in determining the outcome. Was the mark in existence before the domain name was registered? Is complainant relying on an unregistered mark? What was complainant's reputation when the domain name was registered? What proof does complainant have that registrant had knowledge of its mark? Simply to have a mark is not conclusive of a right to the domain name. more

Identical or Confusingly Similar to Trademarks but Noninfringing Domain Names

Domain names may be confusingly similar to trademarks or even identical or but not infringing. This is particularly true of trademarks acquired later than the allegedly infringing domain names ArcBest Corporation v. Domains By Proxy, LLC, Registration Private / Vernon Troupe, D2016-2381 (WIPO January 13, 2017) (<arcbest.com>, in which "ark" is a contraction of "Arkansas"), but it can also apply to marks composed of common element that predate domain name registration... more

Counterfeit Marks and Counterfeit Goods: Pretense in Cyberspace

The term "counterfeit" is defined under U.S. trademark law as "a spurious mark which is identical with, or substantially indistinguishable from, a registered mark." 15 U.S.C. § 1127 (Lanham Act, Sec. 45). Used as a noun, domain names ultimately found to have been registered in bad faith make their registrants cybersquatters by definition. But more commonly we encounter counterfeiting as an adjective as it applies to spurious goods (counterfeit goods) -- "made in exact imitation of something valuable or important with the intention to deceive or defraud." more

Parsing Domain Names Composed of Random Letters for Proof of Cybersquatting

The Respondent's cry of pain in AXA SA v. Whois Privacy Protection Service, Inc. / Ugurcan Bulut, axathemes, D2016-1483 (WIPO December 12, 2016) "[w]hat do you want from me people? I already removed all the files from that domain and it's empty. What else do you want me to do???" raises some interesting questions. "A," "x," and "a" is an unusual string of letters but unlike other iconic strings such as "u," "b" and "s" and "i", "b" and "m" for example that started their lives as the first letters of three-word brands AXA is not an acronym. more

Using Domain Name Privacy/Proxy Services Lawfully or to Hide Contact Information and Identity

Privacy/proxy services carry no per se stigma of nefarious purpose, although when first introduced circa 2006 there was some skepticism they could enable cybersquatting and panelists expressed different views in weighing the legitimacy for their use. Some Panels found high volume registrants responsible for registering domain-name-incorporating trademarks. Others rejected the distinction between high and low volume as a determining factor. more

Good Faith and Abusive Registration of Domain Names

Not all domain names identical or confusingly similar to trademarks are actionable. Exhibit 1 are complainants whose trademarks postdate domain name registration. The latest example of this is Insight Energy Ventures LLC v. Alois Muehlberger, L.M.Berger Co.Ltd., D2016-2010 (WIPO December 12, 2016) (<powerly.com>) but there are other, more esoteric examples such as loss by genericide, Shop Vac Corporation v. Md Oliul Alam / Quick Rank, FA1611001701026 (Forum December 10, 2016). more

Appearing Respondents Called Out as Cybersquatters

UDRP complainants prevail in the range of 85% to 90% which approximately correlates with the percentage that respondents default in responding to complaints. The annual number of complaints administered by ICANN providers has been hovering around 4,000 +. Astonishingly, the number has remained steady for a good number of years despite the phenomenal increase... Compared to the whole, there are a relatively small number of contested disputes, perhaps in the annual range of 400 to 500, and of those a larger percentage are called out as cybersquatters. more

Excessive Offers to Sell Domain Names: Evidence of Bad Faith or Bona Fide Business Practice?

Not infrequently heard in domain name disputes are cries of shock and gnashing of teeth that domain name holders may lawfully offer their inventory at excessive prices. Take for example TOBAM v. M. Thestrup / Best Identity, D2016-1990 (WIPO November 21, 2016) (<tobam.com>). Respondent accused Complainant of bullying which Complainant denied... more

UDRP Standing: Proving Unregistered Trademark Rights

The Uniform Domain Name Dispute Resolution Policy is a non-exclusive arbitral proceeding (alternative to a statutory action under the Anticybersquatting Consumer Protection Act) implemented for trademark rights' owners to challenge domain names allegedly registered for unlawful purposes. Policy, paragraph 4(a) states that a registrant is "required to submit to a mandatory administrative proceeding in the event that a third-party... more

Certifying to Merit and Proper Purpose in Alleging and Defending Cybersquatting Claims

Parties to a UDRP proceeding must include a certification similar in U.S. practice to Rule 11 of the Federal Rules of Civil Procedure (and undoubtedly a feature in procedural codes in other judicial jurisdictions) "that the information contained in this [Complaint or Response] is to the best of [Complainant's or Respondent's] knowledge complete and accurate, that this [Complaint or Response] is not being presented for any improper purpose, such as to harass... more

Corresponding to Trademarks, But Nonactionable Claims for Cybersquatting

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 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

Supplementing the Record in UDRP Proceedings; When Acceptable?

The Uniform Domain Name Dispute Resolution Policy (UDRP) limits parties' submissions to complaints and responses; accepting "further statements or documents" is discretionary with the Panel (Rule 12, Procedural Orders), although the Forum (in Supplemental Rule 7) but not WIPO provides for supplementing the record with the proviso that "[a]dditional submissions must not amend the Complaint or Response." For some panelists, Rule 7 contradicts the Policy. more

Noncommercial and Fair Use in Rebutting Claims for Abusive Registration of Domain Names

The UDRP lists three nonexclusive circumstances for rebutting lack of rights or legitimate interests in domain names, which if successful also concludes the issue of abusive registration in respondent's favor. The third circumstance is "you are making a legitimate noncommercial or fair use of the domain name without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue." more

Filing Cybersquatting Complaints With No Actionable Claims

I noted in last week's essay three kinds of cybersquatting complaints typically filed under ICANN'S Uniform Domain Name Dispute Resolution Policy (UDRP). The third (utterly meritless) kind are also filed in federal court under the Anticybersquatting Consumer Protection Act (ACPA). While sanctions for reverse domain name hijacking are available in both regimes, the UDRP's is toothless and the ACPA's a potent remedy. more

Three Kinds of UDRP Disputes and Their Outcomes

There are three kinds of UDRP disputes, those that are out-and-out cybersquatting, those that are truly contested, and those that are flat-out overreaching by trademark owners. In the first group are the plain vanilla disputes; sometimes identical with new tlds extensions (mckinsey.careers> and <legogames.online>); sometimes typosquatting (<joneslang lassale.com> and <wiikipedia.org>); and other times registering dominant terms of trademarks plus a qualifier (<pleinphilipp-shop.com> and <legostarwars2015.com>). more

UDRP Complaints: Getting it Right the First Time; Second Chance With New Facts

UDRP complainants are expected to get it right the first time, and if they don't there's a narrow window for a second filing. Evidence previously available but overlooked will not support a new complaint, although this does not preclude the possibility of one being accepted on evidence of new facts. In Haru Holding Corporation v. Michael Gleissner / NextEngine Ventures LLC the Panel concluded that the time between registration of the domain name and the filing of the complaint was too short for bad faith use... more

Masking Identity with Proxy/Privacy Services

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

Trademark Overreaching and Faux Cybersquatting Claims

Trademarks can be strong in two ways: either inherently distinctive (arbitrary or fanciful marks), or composed of common elements that have acquired distinctiveness (descriptive or suggestive marks). Trademarks can also be weak in two ways: either composed of common elements, or lacking significant marketplace presence other than in their home territories. Panelists have seen them all, even by respondents alleging trademark rights registered later in time to complainant's. more

Challenging UDRP Awards in Courts of Competent Jurisdiction

The Uniform Domain Name Dispute Resolution Policy (UDRP) is not an exclusive forum for the resolution of domain names accused of cybersquatting even though registration agreements use the word "mandatory" in the event of third-party claims. The UDRP is mandatory only in the sense that respondents are "obliged by virtue of the [registration] agreement to recognize the validity of a proceeding initiated by a third-party claimant." more

Reselling Domain Names on the Secondary Market: Bona Fide Offering, or Not?

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

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

Losing and Reclaiming Domain Names

For registrants who are not trademark owners losing their domain names can be an irretrievable loss; and for trademark owners, perhaps not irretrievable but fraught with uncertainties of recovery. ICANN attempted to solve the problem of inadvertent lapses of registration in the Expired Registration Recovery Policy (ERRP) and its companion the Expired Domain Name Deletion Policy (EDNDP), implemented in 2013. more

Astronomical Increases in Domain Names: Low Constancy of Abusive Registrations

When ICANN implemented the Uniform Domain Name Dispute Resolution Policy (UDRP) in 1999, the number of registered domain names were in the low eight digits. Registered domain names passed the first million in 1997. Today, they are in the first third of nine digits, and continuing to grow. In its newly released publication gTLD Marketplace Health Index (Beta) (July 21, 2016) ICANN offers through a couple dozen metrics a picture of the multiple parts that corporately go into making a healthy marketplace. It's "Beta" because the Health Index is a work in progress. more

Fair Use Incorporating Trademarks in Domain Names

The paragraph 4(c)(iii) safe harbors of the Uniform Domain Name Dispute Resolution Policy are construed from a five word phrase, "legitimate noncommercial or fair use." "Noncommercial" like "identical" in paragraph 4(a)(i) has a defined meaning; it does not include domain names inactively held (for any alleged purpose), although non-use is not necessarily fatal to rights or legitimate interests. "Fair use" has a larger canvass; it includes nominative (commercial) use that is fair and Constitutionally protected speech. more

Domain Names Identical to Trademarks But No Likelihood of Confusion

Confusion is a basic element in both cybersquatting and trademark infringement. It appears twice in the UDRP; once in paragraph 4(a)(i) in the adjectival phrase "confusing similarity", and once in paragraph 4(b)(iv) in the phrase "likelihood of confusion." Each use of the distinctive phrases is directed to a different observer. More of this in a moment. The first relates to standing; the second to infringement. Unless a party has standing it can have no actionable claim. more

Cyber Infringement of Trademarks by Typosquatting

A fabled, serial cybersquatter of the early Internet argued that typographical errors in domain names were not cybersquatting at all because they had their own distinct identities. Moreover, "I have" (he argued) "just as much right to own the [misspelled] Domain Names as the person who owns the correct spelling of [a] domain name." That dispute involved and <wallstreet journel.com>. Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, D2000-0578 (WIPO September 10, 2000). more

No Time Bar for Cybersquatting Claims Under UDRP

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

Statutory Remedies for UDRP Grievants

The U.S. is unusual in that grievants of a UDRP award have a statutory remedy from an adverse UDRP award, namely an action for declaratory judgement under the Anticybersquatting Consumer Protection Act (ACPA). The action is not an appeal, but a de novo assessment of the parties' rights, either that the domain name holder is cybersquatting or its registration was lawful. Under U.S. law UDRP awards are not treated as arbitration awards subject to the Federal Arbitration Act but as new disputes. more

Disputes Falling Outside the Scope of the UDRP

The UDRP is a forum of limited jurisdiction designed for trademark owners to combat a certain kind of tortious (sometimes tipping to criminal) conduct by which registrants register domain names with the bad faith intent of taking economic advantage of owner's marks and injuring consumers by beguiling them to disclose personal information. The forum is not open to trademark owners whose claims are outside its scope, even though they may include allegations of cybersquatting. more

Declaring and Declining to Find Reverse Domain Name Hijacking

What to one panelist is clearly bad faith conduct in filing a UDRP complaint, to another is excusable for lack of proof. The disagreement over reverse domain name hijacking centers on the kind of evidence necessary to justify it and the nature of the burden. RDNH is defined as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name." Rule 1, Definitions. more

Unlawful Targeting of Trademarks and Consumers in Registering Domain Names

Unlike trademark applications which go through a lengthy examination process before advancing to registration, anyone (anywhere in the world) can register a domain name identical or confusingly similar to a trademark - instantly and no questions asked, at least, in the traditional space (the legacy gTLDs)! With the new gTLDs registrants will receive notice of possible infringement if the brands are registered with the Trademark Mark Clearing House, but notices do not function as injunctions to block registrants from registering infringing names. more

Strategic Use of Screenshots from the Wayback Machine

Internet Archive contains a vast library of screenshots of websites that its Wayback Machine captures sporadically over the course of domain names' histories. While it doesn't compile daily images it opens a sufficient window to past use which is unique, invaluable, and free. (There are also subscription services, but they come at a hefty cost!). How it's used (and why the Wayback Machine should be in a party's toolkit) for supporting and opposing claims of cybersquatting is illuminated in a number of recent UDRP cases. more

Proving Common Law Rights Predating Domain Name Registration

The trademark rights required for standing under paragraph 4(a)(i) of the Uniform Dispute Resolution Policy (UDRP) refer to both registered and unregistered rights. Complainants with registered trademarks satisfy the requirement by submitting their certificates of registration. However, and not surprisingly, complainants with unregistered trademarks have to demonstrate that the alleged marks qualify as such, which requires that complainants prove both secondary meaning of the marks and their distinctiveness prior to the registration of the domain name. more

Who Contacts Whom: A Material Factor in Selling Domain Names Corresponding to Trademarks

Acquiring domain names for the purpose of selling them to complainants is the second most heavily invoked of the four circumstances that are evidence of abusive registration. Because no self-respecting domain name reseller will ever admit to acquiring domain names "primarily for the purpose" of selling them to complainants "for valuable consideration in excess of [their] documented out-of-pocket costs directly related to the domain name" evidence of bad faith is typically deduced by other factors. more

Warranties and Representations on Purchasing Domain Names: What are they Worth?

The WIPO Final Report published in April 1999, from which sprung the UDRP the following October, is useful in shedding light on what the assembled constituencies had in mind in agreeing to particularly contentious issues. One of those issues was whether registrants had to actively search trademark records before purchasing domain names. Other than paragraph 2 of the Policy which codifies registrants' representations, there is no guidance as to what registrants must do... more

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

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

Transfers of Domain Names Contemporaneous with Complaint: Cyberflight?

Cyberflight (defined as strategically transferring accused domain names to another registrar or registrant upon receipt of a complaint) was a sufficient irritant by 2013 for the ICANN to adopt recommendations to amend the Rules of the Uniform Domain Name Dispute Resolution Policy (UDRP). Effective July 1, 2015 the Rules now include a requirement for locking the domain as well as a change in the timing of transmitting the complaint to respondents. Before the amendment there had been no uniform approach to locking. 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

Proving and Rebutting Respondent Lacks Rights or Legitimate Interests in Accused Domain Names

Paragraph 4(a)(ii) of the Uniform Domain Name Dispute Resolution Policy requires complainants to offer evidence conclusive by itself or sufficient from which to infer that respondents lack rights or legitimate interests in the accused domain names. As I've pointed out in earlier essays (here and here) the standard of proof is low and relies on inference, for good reason; beyond the visual proof and what may be obtainable from on- and offline research, respondents control evidence of their choices. 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