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Author Archive | Gerald M. Levine

Speculating in Domain Names: Pricing War(e)s

Speculation in one form of another has an ancient and honorable history. It not only creates entrepreneurial activity but fuels markets for selling wares and offering services, but also generates competition for consumers, and wars over loyalty. The commercialization of the Internet in the 1990s which extended market activity into virtual (cyber) space has many […]

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UDRP’s Younger Sibling: Rapid Suspension of Cyberquatting Domain Names under the URS

I. Introduction When the Internet Corporation for Assigned Names and Numbers (ICANN) was formed in 1998, there were three business extensions: .com, .net, and .org, and 2,154,634 registrations (led by .com with 1,879,501).1 The earliest registrations of generic top-level domains (gTLDs) date to 1985: a .net in January and a .com in March.2  Between 1998 […]

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“Objective” and “Objectivity” in UDRP Decision Making

No one will disagree that disputes before arbitral tribunals and courts should be determined on the merits. I have noticed that some Panels appointed under the Uniform Domain Name Dispute Resolution Policy (UDRP) have employed the words “objective” and “objectively” in  their  recent decisions. In pondering these linguistic choices it seems to me that there […]

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The Suitable Defendant Rule: In Rem Jurisdiction under the ACPA

The Anticybersquatting Consumer Protection Act (ACPA) creates two distinct avenues by which mark owners may seek a remedy for cybersquatting. A person who is a suitable defendant under 15 U.S.C. §1125(d)(1)(A) is one over whom the court has in personam jurisdiction. However, if the mark owner is “not able to obtain in personam jurisdiction over […]

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UDRP and the Law: Should Cybersquatting be the Default View?

I have returned to the subject of the title on a number of occasions and it is worth revisiting. Like judicial proceedings, the substance of disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) and Panel determinations are publicly available. The Internet Corporation for Assigned Names and Numbers (ICANN) mandates in its Rules that […]

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Noteworthy Domain Names for 2020

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 this website and republished on circleid.com. Noteworthy Domain Decisions for 2015 can be found here, 2016 […]

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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 […]

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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 […]

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Unfamiliarity with / Unprepared for 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; but there is also an overlapping similarity in that complainants are either shockingly […]

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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 […]

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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 […]

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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 […]

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Recovering Domain Names Lost to Fraudulent Transfer

Domain Names composed of generic terms and combinations–dictionary words, random letters, and short strings–have achieved ascending values in the secondary market. DNJournal.com (Ron Jackson) reports on his year to date chart, for example (just a random sampling from the charts) in August 2019 <joyride.com> was sold for $300,000,  in June <voice.com> sold for $30 million, […]

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Satisfying the Evidentiary Demands of the UDRP

It continues to surprise that some counsel in proceedings under the Uniform Domain Dispute Resolution Policy (UDRP) are unaware or oblivious of its evidentiary demands, by which I mean they file and certify complaints with insufficient evidence either of their clients’ rights or their claims. Because the UDRP requires conjunctive proof of bad faith registration […]

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The Question of Fairness in UDRP Decision-Making

In disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) parties should be able to rely on Panels delivering predictable, consistent, and legally reasoned decisions. In large measure, this depends on Panels analyzing the facts objectively through a neutral lens and applying principles of law consistent with the jurisprudence. But the results are not […]

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Words and Descriptive Phrases as Trademarks Registered as Domain Names

In a trademark context, who owns or controls, or would prevent others, from using words and phrases commonly available to speakers in a language community, is in persistent tension. While common words alone or combined may become protected from infringing uses under trademark law, their protection is contingent on factors such as linguistic choices and […]

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UDRP Complaint: Actually, a Motion for Summary Judgment

This essay expands a talk presented at the 27th Fordham International IP Conference on April 26, 2019. Trademark owners (and here I’m talking about those with U.S. registrations even if they are foreign entities) have a choice of forum for challenging alleged cybersquatting domain names. They can either sue in district court under the Anticybersquatting […]

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Credibility and Disbelievablity as it Affects Outcomes in UDRP Proceedings

“Credibility” in English comes through Middle French from a Latin word signifying trustworthiness and reliability in business and personal transactions (allegations, contentions, statements, promises, etc.). Where the goal is persuasion, exaggerating, embellishing, withholding, and falsifying evidence or accusing the adverse party of some heinous crime is not a winning strategy for proving claims or defenses. […]

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Dictionary Words Alone or Combined Functioning as Trademarks are no Less Dictionary Words

By definition “[a]ny word” or “any combination [of words]” can function as trademarks, but whether alone or combined for that purpose no use can overrule their ordinary meanings, support their removal from the public domain, or prevent speculation or use of identical or confusingly similar words by businesses other than rights holders. The fact is, […]

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Noteworthy Domain Name Decisions for 2019

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 this website and republished on circleid.com. Noteworthy Domain Decisions for 2015 can be found here, 2016 […]

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