UDRP
Uniform Domain Name Dispute Resolution Policy
| 5447 Roswell Road, Suite 302 |
| Atlanta, Georgia 30342 |
| Phone (404) 593-2612 |
| Fax (404) 264-1149 |
Under the first prong of the UDRP, a Complainant has to show that they have rights in a mark that is being unfairly used by the domain name at issue. This doesn’t mean that the Complainant has to be the actual owner or originator of the mark at tissue, they could be a licensed user of the mark (as in the case of a distributor or retail seller of the product/service) or simply someone who bought the mark. But they do have to show evidence of how they acquired the rights, and if they are merely a licensed user then they have to show that the actual mark owner approves of, or is included in, the UDRP filing.
I was interviewed today by someone from ManagingIP, a London-based company that wanted my opinion on the proposed UDRP review which has been bandied about by those in the community, both for and against. I’m fairly neutral on the topic, and I’m not sure that I was of much help, but it made me want to dive into the issue in a bit more detail.
Konstantinos Komaitis has a blog where (among other things) he discusses the reasons the UDRP should be reviewed, as he sees it:
In my book, ‘The Current State of Domain Name Regulation: domain names as second-class citizens in a mark-dominated world’, I have identified some issues within the UDRP that contribute to… Continue reading
There is a bit of a disconnect between the physical world of business and trademark, and the Internet world of domain names and, importantly, search. In the physical world, everything hinges on branding, recognizability, fame — a “mark” that is generic or descriptive in nature, like “Tissues,” is generally speaking not a mark at all, because it could refer to a huge number of different products made and sold by different businesses.
But in the Internet world, where domain names act as the real estate where business and commerce happen, there’s real value in these words. Why? Because people are often using these generic words when they’re searching for something through one of the many search engines. A user might… Continue reading
For the most part, UDRP denials are the most interesting decisions to read and analyze. However, a recent transfer by a WIPO panel is worth noting here, because it involved a 3-letter gTLD domain name: ppd.com.
On the surface, a 3-letter domain name would seem to be so susceptible of generic reference that it would be almost immune to attack under the UDRP. Unless the company is on the scale of an IBM, a 3-letter domain name could be used as a reference for a whole host of things, almost an infinite number of combinations of words. PPD would seem to me to stand for “post paid” but that’s just me.
In any event, the Complainant here was successful… Continue reading
I’ve been dreading writing about this, but I ought to cover it because it’s important and interesting. I recently represented a client as a complainant in a UDRP that was not successful, unfortunately. The reason the UDRP was unsuccessful, according to the Panel, was because we were unable to show rights in a mark at issue, the first prong of the UDRP. The problem was the client did not have a registered mark.
Although it is possible to file a UDRP on the basis of a common law mark, it can be difficult to prove. A business may not even have much in the way of records to support this sort of argument, because this just isn’t the sort… Continue reading
I’ve begun a collaboration with Evan Brown, a well-known (and highly respected) lawyer based out of Chicago who focuses on Internet law. You can find him on Twitter @internetcases, as well as Facebook, etc. I hope you’ll hop on over there and take a look! Here’s the link to my first post there: http://udrptracker.internetcases.com/2011/06/servair-loses-udrp-on-serv-air-com/
For the most part, the Internet is a wilderness of free speech, properly so, I think. Sites like RipOffReport.com and the legion of consumer advocacy sites like it offer consumers a place to vent their frustrations about the companies they’ve dealt with, whether those complaints or gripes are really justified or not. That’s been businesses’ chief complaint about this activity — at worst, unfounded complaints can be fostered by competitors to tarnish or damage their brand and business, and the sites that host the complaints are both shielded from liability for the content and offer corporate sponsorship services (for a substantial fee) to help a company maintain control over its image, clean up the complaints, what have you. I’m not… Continue reading
It is always the Complainant’s burden to prove out its case under the UDRP that the Respondent (1) registered a domain name that is identical or confusingly similar to the Complainant’s rights in a mark, (2) that the Respondent has no rights or legitimate interests in the domain name at issue, and (3) that the Respondent registered and is using the domain name in bad faith. What that means is that you cannot simply fill in a few blanks of the templates that the various UDRP arbitration providers have posted on their websites for your use, and expect to receive a good result, even where the Respondent doesn’t respond.
Take this recent NAF case for example. I’m not sure if… Continue reading
A recent WIPO decision covering the randallsisland.com domain name has some great language about geographic places contained within a domain name.
Generally speaking, it is difficult for a Complainant to prevail, even where they do have a mark that contains the geographic identifier, against a domain name that is purely a geographic place name. This is because geographic places are by nature generic references to some physical place, which probably has a lot of businesses contained within it. It would appear to be highly unlikely that anyone would ever be confused about a generic place domain name, so long as it was being used in some generic, non-confusing fashion. And since confusion is really the touchstone of any trademark infringement… Continue reading
It is fairly common for people to register domain names involving their name, to use as a blog, for e-mail purposes, to share photos with friends and family, or even for a business. And because lots of us have common names, there’s naturally going to be a lot of overlap.
In the registration/development context, is there anything wrong with registering a domain name around a common surname, or last/family name, even if you don’t share that name? It seems like it would be exceedingly difficult to prevail against such a registrant, and here’s a recent case that illustrates exactly why that is so.
The owner of a mark on HINKLEY LIGHTING filed a UDRP over hinkley.com, and lost. The… Continue reading