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 […]
Archive | Anticybersquatting Consumer Protection Act
Credibility and Disbelievablity as it Affects Outcomes in UDRP Proceedings
By Gerald M. Levine on April 4, 2019 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
“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. […]
Dictionary Words Alone or Combined Functioning as Trademarks are no Less Dictionary Words
By Gerald M. Levine on February 24, 2019 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
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, […]
Noteworthy Domain Name Decisions for 2019
By Gerald M. Levine on February 5, 2019 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
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 […]
Prudential Settlements for Alleged Cybersquatting/Reverse Domain Name Hijacking Under the ACPA
By Gerald M. Levine on January 22, 2019 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
Given the number of awards endlessly arriving from Panels appointed to decide cybersquatting disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) (ten to fifteen published daily) the sum total of grievants filing de novo challenges under the Anticybersquatting Consumer Protect Act (ACPA) is remarkably small — one or two at most in any […]
Typosquatting as Per Se Cybersquatting Unless Proved Otherwise
By Gerald M. Levine on January 7, 2019 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
The quintessence of typosquatting is syntactical variation: adding, omitting, replacing, substituting, and transposing words and letters. Recent examples include <citizens1loans> (numeral for word), <shiippco.com> (double vowels), <airfrances.com> (pluralizing/possessive), and (reversing letters), and <amazøn.com> (look carefully at the letter following “z”). Since these minor variations are mostly indefensible, respondents rarely respond to complaints, although as I […]
Drawing Inferences from the Record: UDRP/URS Decision-Making
By Gerald M. Levine on December 10, 2018 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
The weighing of evidence involves the connecting of dots, which involves drawing inferences. However, just as there can be false positives, there can be false inferences. The tendency may be to think of inferences as coming in one size, but not all inferences are logically correct. Some are weak and others strong. The reason for […]
Abusive Conduct: Domain Name Registrants and Rights Holders
By Gerald M. Levine on November 25, 2018 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
Abusive conduct or cybersquatting is the essence of disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP), usually by domain name registrants violating their warranties of registration but also (in appreciable numbers) by trademark holders overreaching their statutory rights. The UDRP remedies are asynchronous: there is forfeiture of offending domain names; for abusive use […]
Remedies for Cybersquatting: New gTLD Domain Names
By Gerald M. Levine on October 2, 2018 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
In the discussions proceeding the World Intellectual Property Organization (WIPO) publishing The Management Of Internet Names And Addresses: Intellectual Property Issues (Final Report, April 30, 1999) that ultimately led to the Internet Corporation for Assigned Names and Numbers (ICANN) implementing the Uniform Domain Name Dispute Resolution Policy (UDRP) (1999) commentators considered three remedies to combat […]
Undone! Failure of Persuasion in UDRP Proceedings
By Gerald M. Levine on September 25, 2018 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
A split Panel in an early decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) held that parties deserve more than “[i]t depends [on] what panelist you draw.” Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001). That’s one side of the paradigm; the other side makes demands on the parties to prove […]
What Do UDRP Panels Look for in Assessing Parties’ Rights to Disputed Domain Names?
By Gerald M. Levine on September 4, 2018 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
Panels appointed to adjudicate domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) have written in the region of 50,000 decisions involving over 75,000 domain names (minuscule of course when measured against the number of registered domain names). What may surprise some parties, their representatives, and counsel is that these publicly accessible […]
Limitations, Delays, and Laches as Defenses to Cybersquatting Claims
By Gerald M. Levine on August 19, 2018 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
In passing the baton for combating cybersquatting to the Internet Corporation for Assigned Names and Numbers (ICANN) the World Intellectual Property Organization (WIPO) recommended that “claims under the administrative procedure [should not] be subject to a time limitation” (Final Report, Paragraph 199). ICANN agreed and the UDRP contains no limitation period for making a claim. […]
Challenging UDRP Awards in Federal Court: Recent Outcomes
By Gerald M. Levine on August 13, 2018 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
Challenging UDRP awards in actions under the Anticybersquatting Consumer Protection Act (ACPA) is infrequent though steady. There are currently a number of court filings in U.S. district courts that are in the early stages, most notably the ADO.com case reported on in an earlier essay and several others have either been referred to mediation (the […]
What’s Abusive in Registering Domain Names, and the Reverse?
By Gerald M. Levine on August 7, 2018 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
The two major providers of arbitration services for adjudicating cybersquatting complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP), the World Intellectual Property Organization (WIPO) and Forum, issue daily lists of decisions. In approximately 90% of those disputes the registrations cannot be described as anything less than mischievous in acquiring second level domains incorporating […]
Short Strings of Alphabet Letters in Domain Names: Random to Some, Identifiers to Others
By Gerald M. Levine on July 27, 2018 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
What is the intrinsic (as opposed to trademark) value of short string domain names? It depends, of course. Rights holders have been willing to challenge domain name registrants even if they have no actionable claim for cybersquatting. Delbert R. Terrill Jr. v. Domain Admin / Privacy Protect, LLC (PrivacyProtect.org), FA1803001775784 (Forum April 2, 2018) (<snn.com>). […]
Combinations of Dictionary Words in Domain Names: Common vs. Distinctive Phrases
By Gerald M. Levine on July 2, 2018 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
The lexicon of domain names consists of letters, words, numbers, dots, and dashes. When the characters correspond in whole (identical) or in part (confusingly similar) to trademarks or service marks and their registrations postdate the first use of marks in commerce registrants become challengeable under the Uniform Domain Name Dispute Resolution Policy (UDRP) as cybersquatters. […]
Examiners’ Views of URS Procedure and Rules
By Gerald M. Levine on June 23, 2018 in Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, Uniform Domain Name Resolution Policy
Introduction The Uniform Rapid Suspension System (URS) is one of three rights protection mechanisms (RPMs) implemented in 2013 by the Internet Corporation for Assigned Names and Numbers (ICANN) to protect rights holders from abusive registration of domain names with new gTLD extensions. ICANN states on its website that the URS “complements the existing Uniform Domain […]
Opting for UDRP Over URS
By Gerald M. Levine on June 19, 2018 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
The Internet Corporation for Assigned Names and Numbers (ICANN) implemented the Uniform Rapid Suspension System (URS) in 2013 together with three other rights protection mechanisms for trademarks. It “is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse” (URS Procedure 8.5). It was designed to […]
What Domain Names Get Transferred: Why and Why Not?
By Gerald M. Levine on May 29, 2018 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
Think of trademarks situated on a continuum with famous and well-known at one end and less well-known or unrecognized by average consumers at the other. On one end there is certainty of infringement, Koppers, Inc., Koppers Delaware, Inc. v. Jorge Villalva, D2018-0764 (WIPO May 10, 2018) () as well as other well-known marks such as […]
Making a Strategic Decision: URS or UDRP?
By Gerald M. Levine on May 11, 2018 in Abusive registration, Anticybersquatting Consumer Protection Act, Contracts/Copyright, Cybersquatting, cybersquatting law, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy
A discussion is presently underway about the Uniform Rapid Suspension System (URS) (and in Phase 2 next year of the Uniform Domain Name Resolution Policy (UDRP)), whether it is performing as intended. The URS is less than 5 years old and there are not an overwhelming number of decisions. Since 2013, rights holders have filed […]