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Author Archive | Gerald M. Levine

Why Getting Awards Wrong Undermines the Integrity of the UDRP

The integrity of any legal system depends on the quality of mind of those appointed to administer it. There are expectations that the one judging the facts and applying the law knows what the facts are and what law to apply. Panels appointed to adjudicate disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) […]

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Parsing Predatory and Parasitical from Innocent and Good Faith Registrants

When the World Intellectual Property Organization began deliberating in 1998 and 1999 about creating an arbitral regime  that the Internet Corporation for Assigned Names and Numbers transformed into the Uniform Domain Name Dispute Resolution Policy the curse words of choice were “predators” and “parasites” to describe cybersquatters. (In an early UDRP decision a Respondent who […]

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Tracking the Line that Separates Cybersquatting from Trademark Infringement

The Uniform Domain Name Dispute Resolution Policy (UDRP) is a rights protection mechanism crafted by the World Intellectual Property Organization (WIPO) and adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) for trademark owners to challenge the lawfulness of domain name registrations. Cybersquatting or abusive registration is a lesser included tort of trademark […]

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What’s So Outrageous Asking High Prices for Domain Names?

Panels appointed to hear and decide disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) have long recognized that three letter domains are valuable assets. How investors value their domains depends in part on market conditions. Ordinarily (and for good reason) Panels do not wade into pricing because it is not a factor on […]

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Trademarks vs Domain Names: Dictionary Words, Common, Combinations, and Arbitrary Letters

The typical daily accounting of decisions filed in disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) may include an award or two dismissing complaints (three is particularly noteworthy: <weddingfleamarket.com>, <dme.com>, and <scheduleflow.com> from the Forum for January 20, 2018), but overwhelmingly complaints are granted not dismissed. Let us imagine a trademark or service […]

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The Rise of a Secondary Market for Domain Names: A Tale of Competing Interests

This essay appeared in Bright Ideas, a publication of the Intellectual Property Law Section of the New York State Bar Association in its Winter 2017 Edition, published January 2018. Introduction The Trademark Act of 1946 defines trademarks and service marks to include “any word, name, symbol, or device, or any combination thereof.”[i]  Marks composed of […]

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In Memoriam: UDRPsearch.com

I have hesitated in writing this memorial for <udrpsearch.com> because I did not want to announce a demise that may not be true, or the fear that my saying it will make it so. The website went dark for a short period in 2017, before being restored after a brief shutdown, and (I thought) it […]

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Lawful Registrations of Domain Names

Doug Isenberg notes in a recent circlid.com essay that two records in domain name disputes were broken in 2017, namely number of cybersquatting claims (3,036 in 2016, 3,073 in 2017) and number of domain names implicated (5354 in 2016, 6370 in 2017). (John Berryhill reminds me in a twitter after this essay was posted that […]

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Noteworthy Domain Name Decisions for 2018

Noteworthy Domain Name Decisions is a running collection of annual decisions that taken together provide insight into the jurisprudence applied in UDRP disputes. More detailed analytical discussions of decisions can be found in recent and archived essays posted on the website and republished on circleid.com. Noteworthy Domain Decisions for 2015 can be found here, 2016 […]

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The Emergence of Consensus in the UDRP

The modus operandi of the Internet Corporation for Assigned Names and Numbers (ICANN) is achieving consensus. This also holds true for the principal rights protection mechanism that emerged from a two-year round of debates organized by the World Intellectual Property Organization (WIPO) that ICANN implemented in 1999 as the Uniform Domain Name Dispute Resolution Policy […]

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So, You Claim to Have an Unregistered Mark! Is there Cybersquatting?

Complainants have standing to proceed with a claim of cybersquatting under the Uniform Domain Name Dispute Resolution Policy (UDRP) if the accused “domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights” (4(a)(i) of the Policy). Quickly within the first full year of the Policy’s implementation […]

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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) […]

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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 […]

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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 […]

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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. […]

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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; […]

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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 […]

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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 (e.g., cybersquatting and cyberpiracy).” (The full statement can be found in the Second Staff Report on […]

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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 […]

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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 […]

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