UDRP

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The Hidden Perils of Filing a Baseless UDRP Complaint

When properly used, the UDRP enables trademark owners to take control of abusive domain names. Yet sometimes the UDRP itself is misused by trademark owners to try to seize desirable domain names to which they have no legal entitlement. Is there a downside to misusing the UDRP to attempt a domain name hijacking? Unscrupulous companies at times misuse the UDRP by improperly invoking its power to compel a transfer of ownership in order to seize inherently valuable, non-infringing domain names that the companies desire for their own use. more

Drawing Inferences from the Record: UDRP/URS Decision-Making

The weighing of evidence involves the connecting of dots, which involves drawing inferences. However, just as there can be false positives, there can be false inferences. The tendency may be to think of inferences as coming in one size, but not all inferences are logically correct. Some are weak and others strong. The reason for talking about both kinds is that so much depends on the quality of their making. more

Abusive Conduct: Domain Name Registrants and Rights Holders

Abusive conduct or cybersquatting is the essence of disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP), usually by domain name registrants violating their warranties of registration but also (in appreciable numbers) by trademark holders overreaching their statutory rights. The UDRP remedies are asynchronous: there is forfeiture of offending domain names; for abusive use of the process there is reverse domain name hijacking (RDNH), essentially a shaming remedy that substitutes for a monetary penalty. more

Addressing Infringement: Developments in Content Regulation in the US and the DNS

Over the course of the last decade, in response to significant pressure from the US government and other governments, service providers have assumed private obligations to regulate online content that have no basis in public law. For US tech companies, a robust regime of "voluntary agreements" to resolve content-related disputes has grown up on the margins of the Digital Millennium Copyright Act (DMCA) and the Communications Decency Act (CDA). more

Remedies for Cybersquatting: New gTLD Domain Names

In the discussions proceeding the World Intellectual Property Organization (WIPO) publishing The Management Of Internet Names And Addresses: Intellectual Property Issues (Final Report, April 30, 1999) that ultimately led to the ICANN implementing the Uniform Domain Name Dispute Resolution Policy (UDRP) (1999) commentators considered three remedies to combat cybersquatting: suspending, cancelling, and transferring infringing domain names. more

The Emergence and Consolidation of a Jurisprudence of Domain Names

One of the fallouts of disruptive inventions is the need for new laws to counter their unexpected consequences. As it concerned the Internet, these consequences included a new tort of registering domain names identical or confusingly similar to trademarks and service marks with the intention of taking unlawful advantage of rights owners. Prior to 2000 the only civil remedy for "cybersquatting" or "cyber piracy" was expensive and time-consuming plenary actions in courts of competent jurisdiction under national trademark laws. more

Undone! Failure of Persuasion in UDRP Proceedings

A split Panel in an early decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) held that parties deserve more than "[i]t depends [on] what panelist you draw." Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001). That's one side of the paradigm; the other side makes demands on the parties to prove their contentions, either of cybersquatting (one element of which is proving that respondent lacks rights or legitimate interests) or rebutting the claim (one element of which is respondent demonstrating it has rights or legitimate interests). more

What Do UDRP Panels Look for in Assessing Parties' Rights to Disputed Domain Names?

Panels appointed to adjudicate domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) have written in the region of 50,000 decisions involving over 75,000 domain names (minuscule of course when measured against the number of registered domain names). What may surprise some parties, their representatives, and counsel is that these publicly accessible decisions have fueled the emergence and development of a jurisprudence of domain names. more

WIPO Updates GDPR Guidance for UDRP

Three months after implementation of the European Union's (EU) General Data Protection Regulation (GDPR), the World Intellectual Property Organization's (WIPO) Arbitration and Mediation Center has expanded and updated its already helpful web page with important questions and answers about how the GDPR is impacting the Uniform Domain Name Dispute Resolution Policy (UDRP). more

Limitations, Delays, and Laches as Defenses in Cybersquatting Claims

In passing the baton for combating cybersquatting to the Internet Corporation for Assigned Names and Numbers (ICANN) the World Intellectual Property Organization (WIPO) recommended that "claims under the administrative procedure [should not] be subject to a time limitation" (Final Report, Paragraph 199). ICANN agreed and the UDRP contains no limitation period for making a claim. The absence of a limitation period does not necessarily forego applying equitable defenses for delay, but the consensus of Panels appointed to decide disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) is that they are not applicable in countering cybersquatting claims. 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

Combinations of Dictionary Words in Domain Names: Common vs. Distinctive Phrases

The lexicon of domain names consists of letters, words, numbers, dots, and dashes. When the characters correspond in whole (identical) or in part (confusingly similar) to trademarks or service marks and their registrations postdate the first use of marks in commerce registrants become challengeable under the Uniform Domain Name Dispute Resolution Policy (UDRP) as cybersquatters. more

Opting for UDRP Over URS

The Internet Corporation for Assigned Names and Numbers (ICANN) implemented the Uniform Rapid Suspension System (URS) in 2013 together with three other rights protection mechanisms for trademarks. It "is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse"... It was designed to afford rights holders claiming abusive registration of domain names with new gTLD extensions an even faster route to remedy than the Uniform Domain Name Dispute Resolution Policy (UDRP). more

What Domain Names Get Transferred: Why and Why Not?

Think of trademarks situated on a continuum with famous and well-known at one end and less well-known or unrecognized by average consumers at the other. On one end there is certainty of infringement... at the other end, certainty of having the complaint denied either for lack of proof or overreaching... At some point along the continuum, it becomes uncertain whether respondents registered accused domain names in bad faith, and the question has to be answered by examining the facts. more

Making a Strategic Decision: URS or UDRP?

A discussion is presently underway about the Uniform Rapid Suspension System (URS) (and in Phase 2 next year of the Uniform Domain Name Resolution Policy (UDRP)), whether it is performing as intended. The URS is less than five years old, and there are not an overwhelming number of decisions. Since 2013, rights holders have filed less than one thousand complaints (with three providers, the Forum being the most active), which translates into less than 170 decisions annually... more

News Briefs

ICANN Releases Temporary WHOIS Specification Plan for GDPR Compliance With Deadline Two Weeks Away

WIPO Reports Rise in Cybersquatting Cases, Triggered by New gTLDs

Newly Released "Domain Name Arbitration" Book Offers Guide for Navigating UDRP

Vox Populi Registry Says "Enough" About .SUCKS Accusations

WIPO Taking Screenshots of Filed UDRPs

Paper on Civil Society Involvement in ICANN

FORUM Reports Steady Domain Dispute Filings in 2009, Also Issued Largest Single Decision on Record

WIPO Reports Decrease in Cybersquatting Complains But Warns of TLD Expansion

Study Suggests Introduction of New gTLDs Will Cost Less than $.10 for Each Trademark Worldwide

Study Finds Some 4000 Domains Expired After Being Won in Court, Some Disputed Again by Same Company

ICANN Should be Reformed Before "Privatization", Says New Study

Latest Cybersquatting Stats from WIPO

1770 Domain Disputes Filed with National Arbitration Forum in 2008, Over 12K Since 1999

Tom Cruise Wins TomCruise.com, Hardly Unpredictable

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