By Doug Isenberg
Google recently won a UDRP complaint that resulted in a decision ordering the transfer of a staggering 763 domain names.
The decision is notable not only because of the large number of domain names in dispute but also because many of them contained the GOOGLE trademark plus another trademark (such as <googlewellsfargo.com>, <googlekmart.com> and <googleburgerking.com>).
The decision is also interesting because it notes that the Respondent “has filed a cancellation petition with the [U.S. Patent and Trademark Office] stating that the term ‘google’ is generic and cannot be protectable as a trademark” — a bold maneuver that has attracted some media attention.
But clearly, the sheer size of the case is its most notable aspect. Especially because the average number of domain names in a typical UDRP case is fewer than two.
Having filed the largest UDRP complaint to date (resulting in the transfer of 1,519 domain names), I know first-hand the technical demands that cases of this magnitude place on trademark owners and, of course, their counsel. But the cases are usually worthwhile. Indeed, as the panel wrote in my case:
[D]espite the extremely large and unprecedented number of disputed domain names, it would be procedurally efficient to deal with all matters in the one proceeding given the almost identical facts among them…. The present case presents a text book example of the type of bulk registration strategy to which UDRP process and jurisprudence is having to adapt in order to keep pace with the broader developments and registration trends within the domain name system.
Clearly, the UDRP allows for such large cases, because the Rules (paragraph 3(c)) specifically state: “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.”
Still, although it is tempting for a trademark owner to try to kill so many birds with one stone, a number of practical issues must be considered. Among them:
- Larger cases will incur larger UDRP filing fees.
- Despite the number of domain names involved, word or page limits still apply to the size of the complaint (as set forth in the UDRP service providers’ supplemental rules).
- What will the trademark owner actually do with the domain names, assuming that an order to transfer them is the outcome of the case?
Trademark owners that adequately address these issues may find great efficiencies in identifying large-scale cybersquatters and targeting them through the UDRP process.