This presentation discusses the nuts and bolts of filing complaints as well as the elements required to file a UDRP action. In addition, the presentation provides an overview of the UDRP process and practical tips on how to handle the UDRP and URS processes.
2. 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
3. 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
4. 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
5. 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
6. 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
7. 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
8. 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
9. 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
10. 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
11. 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
13. 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
14. 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