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 […]
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 […]
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 […]
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) and Supplement and Update (2017). Learn more about the book and Supplement at Legal Corner Press. […]
Two UDRP decisions posted this month involved domain names registered 20 and 21 years ago, David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, FA1706001734414 (Forum July 4, 2017) (<davidduchovny.com>, 21 years) and Commonwealth Bank of Australia v. Registration Private, Domains By Proxy, LLC / Ravindra Patel, gbe, D2017-0807 (WIPO July 6, 2017) (<bankwest.com>) (20 […]
Naming is the first imperative. It as much precedes the launching of new lives 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 […]
UDRP Rule 1 defines RDNH as “using the Policy in bad faith to attempt to deprive a registered domain name holder of a domain name” (further defined in Rule 15(c)). 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 […]
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 […]
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.” I’m quoting from WIPO’s newly released Third Edition of the Overview of […]
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 […]
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 words-, common phrases, and arbitrary letter-domain names have been increasing challenged in two circumstances, namely by businesses who claim to have used the unregistered […]
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 […]
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 […]
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 […]
There is a misconception among some trademark owners and their counsel that passive holding of domain names alone, Sandy Frank Film Syndication, Inc. v. Ralph Zita, FA1612001706714 (Forum February 14, 2017) (<youaskedforit.com>), or combined with lack of rights or legitimate interests, Harow v. Future Media Architects, Inc., D2017- 0134 (WIPO March 6, 2017) (<harow.com>), supports […]
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 […]
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 […]
The general run of 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 […]
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 […]
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”), […]
