For registrants who are not trademark owners losing their domain names can be an irretrievable loss; and for trademark owners, perhaps not irretrievable but fraught with uncertainties of recovery. ICANN attempted to solve the problem of inadvertent lapses of registration in the Expired Registration Recovery Policy (ERRP) and its companion the Expired Domain Name Deletion […]
Archive | Trademarks and domain names
Astronomical Increases in Domain Names: Low Constancy of Abusive Registrations
By Gerald M. Levine on July 26, 2016 in Abusive registration, Cybersquatting, Domain name law, Protecting rights, Trademarks, Trademarks and domain names, udrp law, Uniform Domain Name Resolution Policy
When ICANN implemented the Uniform Domain Name Dispute Resolution Policy (UDRP) in 1999 the number of registered domain names were in the low eight digits. Registered domain names passed the first million in 1997. Today, they are in the first third of nine digits, and continuing to grow. In its newly released publication gTLD Marketplace Health […]
Statutory Remedies for UDRP Grievants
By Gerald M. Levine on June 20, 2016 in Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, Trademarks and domain names, udrp proceedings, Uniform Domain Name Resolution Policy
The U.S. is unusual in that grievants of a UDRP award have a statutory remedy from an adverse UDRP award, namely an action for declaratory judgement under the Anticybersquatting Consumer Protection Act (ACPA). The action is not an appeal, but a de novo assessment of the parties’ rights, either that the domain name holder is […]
Disputes Falling Outside the Scope of the UDRP
By Gerald M. Levine on June 13, 2016 in Abusive registration, Contracts/Copyright, Cybersquatting, cybersquatting law, Domain name law, Trademarks, Trademarks and domain names
The UDRP is a forum of limited jurisdiction designed for trademark owners to combat a certain kind of tortious (sometimes tipping to criminal) conduct by which registrants register domain names with the bad faith intent of taking economic advantage of owner’s marks and injuring consumers by beguiling them to disclose personal information. The forum is […]
Declaring and Declining to Find Reverse Domain Name Hijacking
By Gerald M. Levine on June 6, 2016 in Abusive registration, Cybersquatting, cybersquatting law, Protecting rights, Trademarks, Trademarks and domain names, udrp law, World Intellectual Property Organization
What to one panelist is clearly bad faith conduct in filing a UDRP complaint, to another is excusable for lack of proof. The disagreement over reverse domain name hijacking centers on the kind of evidence necessary to justify it and the nature of the burden. RDNH is defined as “using the UDRP in bad faith […]
Unlawful Targeting of Trademarks and Consumers in Registering Domain Names
By Gerald M. Levine on May 31, 2016 in Abusive registration, Anticybersquatting Consumer Protection Act, cybersquatting law, Trademarks, Trademarks and domain names, Typosquatting, udrp law, udrp proceedings
Unlike trademark applications which go through a lengthy examination process before advancing to registration, anyone (anywhere in the world) can register a domain name identical or confusingly similar to a trademark—instantly and no questions asked, at least, in the traditional space (the legacy gTLDs)! With the new gTLDs registrants will receive notice of possible infringement […]
Earlier Registered Domain Names, Later Acquired Trademarks
By Gerald M. Levine on May 18, 2016 in Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, Protecting rights, Trademarks, Trademarks and domain names, udrp law, World Intellectual Property Organization
The Rise of Cyber-Entrepreneurs Trademarks have a long history; domain names are of recent origin. Trademarks were “invented” to “identify and distinguish [one person’s] goods . . . from those manufactured or sold by others and to indicate the source of the goods. Domain names are merely function elements “invented” to identify and link locations […]
To What Extent May Panels Perform Independent Research?
By Gerald M. Levine on April 11, 2016 in Cybersquatting, cybersquatting law, Trademarks, Trademarks and domain names, udrp law, udrp proceedings
Panels are sworn to neutrality, but there has developed under the UDRP space for them to perform independent research “if it deems this necessary to reach the right decision” (WIPO Overview 2.0, paragraph 4.5). It ranges from the minimal such as examining official trademark databases and reviewing past history of domain names on IA’s Wayback […]
Running the Gamut: Commentary, Criticism, Tarnishment, Disparagement, and Defamation
By Gerald M. Levine on April 4, 2016 in Abusive registration, Cybersquatting, cybersquatting law, Renewal of registration, Trademarks, Trademarks and domain names, udrp law, udrp proceedings
The two bookends of speaking one’s mind are commentary and criticism, which is indisputably acceptable as protected speech, and (in order of abuse) tarnishment and disparagement. Defamation, which is a stage beyond disparagement, is not actionable under the UDRP, although tarnishment and disparagement may be. In ICANN’s lexicon, tarnishment is limited in meaning to “acts […]
Transfers of Domain Names Contemporaneous with Complaint: Cyberflight?
By Gerald M. Levine on March 28, 2016 in Cybersquatting, cybersquatting law, Trademarks and domain names, UDRP Commentaries, udrp law
Cyberflight (defined as strategically transferring accused domain names to another registrar or registrant upon receipt of a complaint) was a sufficient irritant by 2013 for the Internet Corporation for Assigned Names and Numbers (ICANN) to adopt recommendations to amend the Rules of the Uniform Domain Name Dispute Resolution Policy (UDRP). Effective July 1, 2015 the […]