GigaLaw Blog

Insights and analysis about domain names and other Internet legal issues – by Doug Isenberg

Why Cancel a Domain Name in a UDRP Case?

Why Cancel a Domain Name in a UDRP Case?

While the most common results of a UDRP proceeding are either transfer of a disputed domain name to a complainant or denial (that is, allowing the respondent to retain it), there is another possible outcome: cancellation. I’m always surprised to see a UDRP decision in which a domain name is cancelled. True, many trademark owners don’t really want to obtain control of a disputed domain name (and, instead, they simply want to get it taken away from a cybersquatter). Plus, maintaining a domain name incurs an ongoing expense as the result of renewal fees, and many trademark owners already have... read more

How to Get a Domain Name Transferred Under the URS

The Uniform Rapid Suspension System (URS) is designed to get a domain name suspended, but in some cases this dispute policy can be used to help get a domain name transferred. It’s an uncommon result but one that trademark owners may want to keep in mind. The suspension remedy is often viewed as the greatest limitation of the URS. Trademark owners that want to have a domain name transferred typically file a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) instead of the URS — but, the UDRP is more expensive and time-consuming. Still, in some... read more

[Webinar Replay] How to Dispute a .us Domain Name: Transferring and Suspending Domains Under the usDRP and the usRS

Click above for a replay of the GigaLaw webinar, “How to Dispute a .us Domain Name: Transferring and Suspending Domains Under the usDRP and the usRS.” The webinar was originally presented on March 29, 2017. In this webinar, Doug Isenberg of GigaLaw and Renee Fossen of FORUM provide information about the two dispute policies that are available to trademark owners under the .us country-code top-level domain (ccTLD): the usTLD Dispute Resolution Policy (“usDRP”) and the usTLD Rapid Suspension Dispute Policy (“usRS”). The webinar provides an overview of the usDRP (which allows a trademark owner to seek the transfer or cancellation... read more

How Long Does a URS Case Take?

The Uniform Rapid Suspension System (URS) — which allows a trademark owner to suspend certain domain names, especially those in the “new” gTLDs — was designed as a quicker and less-expensive alternative to the Uniform Domain Name Dispute Resolution Policy (UDRP). As I’ve written frequently before, there are significant differences between the URS and the UDRP. One of those differences is how long a typical proceeding lasts. Like the UDRP, the URS procedure and rules provide strict timelines for various stages of a case. But, unlike the UDRP, URS cases are usually resolved much more quickly — often in... read more

How Long Does a UDRP Case Take?

The Uniform Domain Name Dispute Resolution Policy (UDRP) was designed as a quicker and less-expensive alternative to litigation. Although the UDRP policy and rules provide strict timelines for various stages of a UDRP case, how quickly a dispute is actually resolved can vary based on numerous factors. A typical UDRP case results in a decision in about two months, but the facts of each case — including actions both within and outside the control of the parties — may shorten or extend that timing. Here’s how a common UDRP case proceeds: Step 1 (Filing of Complaint): A trademark owner has... read more

Early Disclosure of UDRP Complaints

Under the previous rules for the Uniform Domain Name Dispute Resolution Policy (UDRP), domain name registrants that had a complaint filed against them were supposed to be notified of the complaint by the trademark owner that filed it. Then, a revised set of UDRP rules that went into effect in 2015 eliminated the complainant’s obligation to notify the respondent. Instead, the new rules only require the UDRP service provider (such as WIPO or the Forum) notify the respondent, presumably after the registrar has locked the domain name, preventing any transfers. This rule change was designed to combat cyberflight,... read more

Bad Faith and the Essential Importance of Dates Under the UDRP

Two decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) provide an important (but obviously sometimes forgotten) reminder about the need to compare the date on which a complainant obtained its relevant trademark rights with the date on which a respondent obtained its disputed domain name. The comparison is often vital to the issue of “bad faith,” the third of the UDRP’s three-part test. That element requires a trademark owner to convince the panel that the disputed domain name “has been registered and is being used in bad faith.” In general, UDRP panels require that the complainant’s trademark rights... read more

When Two Trademarks Aren’t Confusingly Similar to One Trademark

As I’ve written before, domain name disputes involving multiple trademarks sometimes raise interesting issues, including whether a panel can order a domain name transferred to one entity without consent of the other. While panels typically have found ways to resolve this issue, one particularly troubling fact pattern arises when a panel denies a complaint simply because a disputed domain name contains trademarks owned by two different entities. The situation presents itself when a panel considers whether a domain name containing two trademarks is “identical or confusingly similar” to a single trademark — that is, the trademark owned by the complainant... read more

Thoughts About the Proposed Copyright Alternative Dispute Resolution Policy

A proposal from the Domain Name Association (DNA) would provide copyright owners with a new tool to fight online infringement — but the idea is, like other efforts to protect intellectual property rights on the Internet, proving controversial. The proposed Copyright Alternative Dispute Resolution Policy is one of four parts of the DNA’s “Healthy Domains Initiative” (HDI). It is designed to: construct a voluntary framework for copyright infringement disputes, so copyright holders could use a more efficient and cost-effective system for clear cases of copyright abuse other than going to court and registries and registrars are not forced to... read more
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