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Not infrequently mark owners in disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) claim that respondents should have been aware that the domain names they registered corresponded to their marks; and from this, urge panelists to draw the inference that the registrations were designed to take advantage of their goodwill and reputation. To test this premise, we need to take a… → Read More
While Panels under the UDRP and judges under the ACPA draw upon a similar body of principles in determining infringement -- both mechanisms, after all, are crafted to combat cybersquatting -- and though arbitration panels and judges undoubtedly view alleged tortious wrongdoing by abusive registrations of domain names through similar lenses and apply laws that may be outwardly similar, each… → Read More
UDRP Paragraph 4(c) states as a preamble that "ny of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interest to the domain name for purposes of Paragraph 4(a)(ii)." Three nonexclusive circumstances are listed. → Read More
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 of the virtues of the actual but… → Read More
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 are two possible reasons for their use;… → Read More
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 a person who would have been a defendant" in the… → Read More
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 all decisions must be delivered to the… → Read More
Either because of laxness on the part domain name holders or cunning on the part of thieves, registrars have been duped into transferring domain names to fraudsters' accounts. I discussed the matter last year in Recovering Domain Names Lost to Fraudulent Transfer. These cases are mostly filed in the Eastern District of Virginia, Alexandria Division, for the good reason that the registry for dot… → Read More
It, perhaps, does not have to be said that cybersquatting is an intentional tort. No one would expect the respondent to admit unlawful intention, but complainant's proof must nevertheless support that contention. The Panel in Hästens Sängar AB v. Jeff Bader / Organic Mattresses, Inc. FA2005001895951 (Forum July 31, 2020) reminds us that it takes more than bad faith use of a domain name to find… → Read More
The word "confusion" in the Uniform Domain Name Dispute Resolution Policy (UDRP) signifies two separate states of mind. The first in ¶4(a)(i) appears in the phrase "identical or confusingly similar to a trademark or service mark in which the complainant has rights." It is a test to determine whether the mark owner has standing to maintain a UDRP proceeding. → Read More
The ordinary run of cybersquatting cases is neither "exceedingly close nor difficult." Quote from Harvest Dispensaries, Cultivations & Production Facilities, LLC v. Rebecca Nickerson / Rock City Harvest, FA2004001892080 (Forum June 26, 2020) which is one of those rare cases in which the case was exceedingly close and difficult. For 90% of the docket (the percentage has been creeping up since… → Read More
The case I'm reporting on today has garnered attention from a number of quarters. One commentator, Andrew Allemann tells us that "[he's] struggling with this UDRP decision" and Nat Cohen of Telepathy Inc. in a couple of Tweets and a private conversation is concerned that the holding could be a Trojan Horse by erasing the distinction between merely confusing and confusingly similar. The problem… → Read More
Having trademarks (registered or unregistered) is the prerequisite for maintaining a UDRP, but having one is not conclusive of either rights or legitimate interests or registration and use in bad faith. The cautionary tale in many of these cases, especially for the Complainant who has the burden of proof, is that it has to satisfy each of the elements in the three subsections of ¶4(a) of the… → Read More
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. In a forum that has adjudicated… → Read More
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; there must be evidence of infringement. When complainants… → Read More
Panels adjudicating cybersquatting claims, defenses, and rebuttals under the Uniform Domain Name Dispute Resolution Policy (UDRP) expect parties to prove their contentions, and this means having a working understanding of what this entails. There is, first, a set of fundamental rules or principles -- such as pending applications for a mark do not constitute a right, or recognizing unregistered… → Read More
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... Bad actors employ a palette of stratagems, such as combining marks with generic qualifiers, truncating or varying marks… → Read More
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 of competent jurisdiction before a UDRP decision… → Read More
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 and generally don't even bother to respond. But within the 10%, there are serious… → Read More
Two Uniform Domain-Name Dispute-Resolution Policy (UDRP) decisions posted this month involved domain names registered 20 and 21 years ago, David Duchovny v. Alberta Hot Rods c/o Jeff Burgar, 21 years and Commonwealth Bank of Australia v. Registration Private, Domains By Proxy, 20 years. Complainants prevailed in both cases. The domain names stand out as being the oldest to have been found… → Read More