Top Menu

Archive | Cybersquatting

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 […]

Continue Reading 0

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. […]

Continue Reading 0

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; […]

Continue Reading 0

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 […]

Continue Reading 0

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 […]

Continue Reading 0

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 […]

Continue Reading 0

Noteworthy Domain Name Decisions for 2017

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 archival essays posted on the website and republished on udrpsearch.com and circleid.com. Noteworthy Domain Decisions for 2015 can be found […]

Continue Reading 0

No Time Bar, No Laches under the UDRP

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 […]

Continue Reading 0

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

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 […]

Continue Reading 0

New Standard for Reverse Domain Name Hijacking

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 […]

Continue Reading 0

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 […]

Continue Reading 0

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.” I’m quoting from WIPO’s newly released Third Edition of the Overview of […]

Continue Reading 0

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 […]

Continue Reading 0

What It Takes to Prove Common Law Rights

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 […]

Continue Reading 0

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 […]

Continue Reading 0

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 […]

Continue Reading 0

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 […]

Continue Reading 0

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, 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 […]

Continue Reading 0

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 […]

Continue Reading 0

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 […]

Continue Reading 0

Follow

Get every new post delivered to your Inbox

Join other followers:

4/xVVyQrMpFFp6VcOTT2qD9g.0oyCn-dWDJ0cJvIeHux6iLYvgUztkQI
%d bloggers like this: