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 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!)the rules policy supplemental rules 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, 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