UDRP

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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

Is Booking.com a Generic Term?

A fundamental rule of trademarks is that they have to be distinctive, and that nobody can register a trademark on a generic term like "wine" or "plastic." In a case decided today by the U.S. Supreme Court, the court decided 8-1 that online travel agent Booking.com could register its domain name as a trademark. In this case, I think the majority got it wrong, and Justice Breyer's lone dissent is correct. 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

Celebrating Twenty Years of the UDRP

The Uniform Domain Name Dispute Resolution Policy, commonly known as the UDRP, was first introduced on October 24, 1999, by the Internet Corporation for Assigned Names and Numbers (ICANN). The UDRP is incorporated by reference into Registration Agreements for all generic top-level domain names (gTLDs) and some country-code top-level domain names (ccTLDs). 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

News Briefs

URS Is a Bad Fit for .ORG, Says EFF

WIPO Reports Cybersquatting Cases Grew by 12% Reaching New Records in 2018

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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Conflict of Opinion

ICANN and Its Responsibilities to the Global Public Interest

ICANN is MIA on .XYZ

ICANN's gTLD Proposal Hits a Wall: Now What?

New York Passing New Domain Name Law

Industry Updates

Taking a Closer Look at Reverse Domain Name Hijacking (RDNH) with WHOIS Search and Brand Monitor

Procuring Digital Evidence for Reverse Domain Hijacking Case with Domain Research & Monitoring Tools

ICA Statement on ADO.com UDRP Decision: Overreaching Panelists and Interference With Domain Market

A Re-Examination of the Defense of Laches After 18 Years of the UDRP

Why UDRP Panelists Must Follow the Policy: A Look at the Devex.org Decision

Why the Record Number of Reverse Domain Name Hijacking UDRP Filings in 2016?

UDRP: Better Late than Never - ICA Applauds WIPO for Removing Misguided 'Retroactive Bad Faith'

The Rise and Fall of the UDRP Theory of 'Retroactive Bad Faith'

.pw - The First TLD to Adopt the Uniform Rapid Suspension Rights Protection Mechanism

.PW Registry Extends Sunrise to Provide Additional Cover for Trademark Holders

Recommendations Made to Improve Protections at Second-Level in New gTLDs

.CO Internet Announces Landrush Auctions for .CO Domain Names

Comments on ICANN's IRT Final Report

Identify Infringing Domains to Optimize Online Search Marketing Spend

Participants – Random Selection