Domain Disputes

Overview of UDRP Procedures

6/5/2015

Domains = $$$$

• dellfinancialservices.com• kodak.ru: 1 year + 20

lawsuits later• myverizonwireless.com,

iphoneverizonplans.com,and verizon-cellular.com: $33 million later. . .

• scartletjohansson.com: Scam sweepstakes to collect e-mail addresses

• BBC.com: Had to win back its domain

Why Dispute/Defend a Domain?

• Domain Hijacking (“Cyber Squatting”): Register to resell

• Typo Squatting: Registering common misspellings of famous domains to resell or confuse consumers

• Reverse Domain Hijacking: Making false cyber squatting claim to force domain transfer

• Confusion: Domain is like TM and site markets similar products

UDRP Nuts and Bolts• Uniform Domain-Name Resolution Policy (UDRP)• Jurisdiction: Why UDRP?

– Registrant must "represent and warrant", registering "will not infringe upon or otherwise violate the rights of any third party”

– Registrant agrees to participate in UDRP process• Who Can File: Any legal entity

– Owning a registered trademark– Licensed to use a registered trademark– Able to establish rights in a well known prior

trademark, or– show an unregistered use

UDRP Nuts and Bolts: Cont.• Available Relief:

– The transfer of the domain name: No opportunity to recover damages

– top level domain names ("gTLDs": e.g. .com; .info; .biz; .mobi; .net; .org)

– names corresponding to the codes of countries ("ccTLDs")which have adopted the UDRP

– Countries not adopting UDRP handled locally• Cost: Depends on Forum and Panel Size

– WIPO Arbitration Center: $1500/$4000– National Arbitration Forum: $1300/$2600– Budget $1500 to $5000 (or more) attorney time

depending on complexity

UDRP Nuts and Bolts: Cont.

• Timing: Complaint through final Decision– Average around 60 days, less if no response– Extensions of time available for “extenuating”

circumstances– Actual domain transfer estimate additional 2-4

weeks• Losing Domain holder has 10 days after

decision to file a lawsuit before transfer• Must request transfer! Not automatic

The Complaint: Prove Three Elements

• Domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights

• Domain name holder has no rights or legitimate interests in respect of the domain name

• The domain name has been registered and is being used in bad faith

The Complaint: Identical or Confusing

• Only similarity between the trademark and the domain name is considered

• The panel makes a visual and verbal comparison taking the trademark's distinctive nature into account.

• Panel does not consider the products or services (in this step) – not a substantive likelihood of confusion analysis

The Complaint: No Legitimate Interest

• Must try to prove a negative• Offer evidence of lack of rights:

– Parked domain: Not using it?– Content of site: Is it a real company doing

business?– Passing off?– Commonly known by domain name?

• Burden of proof then on domain holder to dispute complainant's evidence and show legitimate interest

• Not an exclusive list: Bring any evidence

The Complaint: Used in Bad Faith• Sell/rent to the Complainant/TM owner or to a competitor

for value beyond out-of-pocket costs directly related to the domain

• Prevent the Complainant/TM owner from reflecting the mark in a corresponding domain name (must show pattern of such conduct)

• Trying to disrupt the business of a competitor• Trying to intentionally attract, for commercial gain, Internet

users by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement

• Can show other evidence: Not an exclusive list

The Response: Disprove Only One Element• Domain name is not identical or confusingly

similar: Sometimes tough to do.• Have rights or legitimate interest:

– Put on proof of business activity using the mark– More time is better

• Not registered in bad faith– No need to prove bad faith if shown legitimate

interest in the mark– Argue it, but Panel may stop at legitimate interest

• Laches: A recent defense but effective one.– Complainant new about the domain and did nothing

until now. Longer is better! (ex. <15 years)– Harm to legitimate interest of domain holder very

helpful

Overview of UDRP process

Practice Tips

• Read the rules and the policy! (and supplemental rules for your forum!)

• Start with current copy of model complaint/response

• Threaten registrar to give up domain holder’s info: May be able to resolve early

• Understand the issues and try to resolve early• Not a Trademark lawsuit: Stay on point• Use past UDRP cases in arguments• Exhibits: Include them! More is better

Uniform Rapid Suspension (URS) • Quicker/Cheaper: $350-$500, 20-25 days• Applies only to new gTLDs, or ccTLDs adopting URS• Additional defenses written into URS:

– Domain is descriptive, and making fair use– Domain is operated as a tribute or criticism in FU– Domain not part of a pattern

• No opportunity to amend complaint• Higher Standard of Proof:

– Complaint denied where Panel finds contestable issue– lack of clear and convincing evidence

• Cannot assert common law TM Rights• Domain is suspended, not transferred• Why use it? Registered TM vs. clear cybersquatting