Tag Archives: UDRP

“Domain Name Arbitration”: An Old Testament for a New Body of Law


The new UDRP Bible.

Internet law, “we” used to say, is a young man’s game.  We stopped saying it though — not because political correctness mandates that we say “young person,” though it does.

But no, “we” stopped saying it when we got old.  Wine ages well, but do lawyers?

Funny you should ask.

Now what we say (and we say it in all sincerity) is that lots of young lawyers get the Internet, but they’re still only young lawyers. On the other hand, an old, experienced, battle-scarred, been-there-done-that lawyer who also gets the Internet?  That’s a lawyer you hire!

I mean me, of course.  But how can I stand before Gerald M. Levine, master of UDRP domain name arbitration, who has just released the definitive guide to that topic?  It’s called Domain Name Arbitration: A practical guide to asserting and defending claims of cybersquatting under the Uniform Domain Name Dispute Resolution PolicyIt’s self-published, just like LIKELIHOOD OF CONFUSION, which means it’s a lot less expensive than if it were somebody-else published.  But it’s a darned fine book of words all the same.

That’s no surprise. Gerry Levine has been at this for a while; he was admitted to practice in New York the year I became a bar mitzvah.  That could in theory make him only little more than ten years older than your blogger, which is, yeah, old, for an “Internet lawyer.”  But actually Gerry’s way older than that — before law school Gerry he had already received a Ph.D in English Literature from NYU and taught for several years at Queens College at City University in New York.

Gerald M. Levine UDRP Expert

Veteran, yes, but not half as crusty as your blogger.

While I’m not sure why Gerry, who had been practicing litigation and ADR and working as an arbitrator for years before there was even such a thing as an Internet — heck, it may even have predated Al Gore’s bar mitzvah! — decided to develop a focus on UDRP practice in the middle of his second career, I’m glad he did. Read More…

The domain game

I don’t do enough domain-name dispute resolution work under the UDRP to even pretend to be a UDRP maven, but I do know a couple of them, and one of them is Paul Raynor Keating.  Paul is a redoubtable and erudite contributor to the e-Trademarks list and pretty much “the guy” for domain name litigation in the EU, or at least if your main language is English.  (Oddly enough, but entirely characteristically, if Paul “has a webpage” at which he flogs his services to the world the way, um, certain others of us do, I’ve never been able to find it; hence, no official link to him.  But here’s his stuff.)

Paul is very animated these days about what he describes as abuses of the UDRP system, and has taken to the Intertubes, big time, to promote his thesis.  Two articles have appeared under his byline in the last couple of days and in a number of venues, and I am excerpting them here and providing links so we can all figure out what’s going on out there.

The first piece is entitled, “Why UDRP Panel Certification is Important: HardwareResources.org,” published in TLD Magazine, in which Paul explains:

Although the UDRP has functioned for over a decade, the evidence continues to mount in favor of a certification process so all can be assured that panelists have the proper legal knowledge and address claims seriously. Examples abound of panel errors but I have seen few that competes with the likes of Hardware Resources, Inc. v. Yaseen Rehman, Claim Number: FA1201001423229 (HardwareResources.org), a recent decision by NAF-favored panelist Atkinson (see the related study by Zak Muscovitch).

In Hardware Resources, the panelist was so absorbed with the Complainant’s assertions that he failed to examine even the most basic aspects of the claim. . . .

Mr. Atkinson next finds bad faith because Respondent offered to sell the domain to the Complainant for a whopping $40.00. Surely this is a joke. . . . While it is possible that $40.00 was more than the out-of-pocket costs, the rule in this regard is tied to the concept of targeting and registering domain names for the purpose of holding them ransom to a known trademark holder. This case fails the mark by any stretch and by even mentioning the issue Mr. Atkinson opens both himself and the UDRP process to ridicule.

Yet again showing his preference for complainants, Mr. Atkinson finds bad faith registration based upon PPC [pay per click] use with websites that “have featured pay-per-click links, some relating to Complainant’s competitors and some being simply generic” and some that “displayed information about Complainant“. Mr. Atkinson thus finds that the respondent must have registered the domain “to attract consumers and create confusion for its own profit“. This is lumped together with the $40-issue to support a finding of bad faith. . . .

It is telling that the only reference to “generic” was in the Complainant’s allegations. The panelist certainly does not mention the word or deal at all with the descriptive nature of the phrase at issue. The use of a descriptive domain for descriptive purposes has repeatedly been found both legitimate and in good faith. It has long been held that the foundational issue is whether the respondent “targeted” the complainant. Here, the Complainant had no trademark in “Hardware Resources”. The domain was used for – guess what – PPC links related to items long considered to be hardware-related. That Complainant may have appeared in any of the PPC links is the fault of the Complainant who voluntarily selected a less-than-stellar trademark.

The most important lesson to be learned here, however, is not that Mr. Atkinson should abstain from being involved in the UDRP process. The important lesson is that decisions such as these destroy the carefully structured balance of the UDRP process as a whole. Respondents are repeatedly told that they can legitimately register and use domain names for descriptive purposes. It instills little confidence in the “system” when panelists such as Mr. Atkinson issue ill-thought out opinions such as this one.

While panelists aren’t earning the salaries of bankers in New York, this case shows that 20 seconds of thought would have produced the correct result. . . .

And, $40 for a domain name? I am not sure who was being sillier; the panelist in using this as bad faith or the respondent who thought it was a good idea to make the offer.

There’s more:  The second article is called “Abusive Supplemental Fillings” and can be found at both Domain News and The Domains and probably a bunch more places. Excerpt:

The recent decision in autoownersinsurance.com is a perfect example of things going from worse to horrible. While the decision itself contains many substantive flaws, my overwhelming issue is with the lack of due-process rights evidenced by this UDRP. Read More…

Trademark clearinghouse — Brilliant, right?

Up on the roof

Arbitrary splash of color; notional opportunity for far-fetched “domain” pun waived

Domain-name stuff makes me dizzy.  It could be all those acronyms. Or it could be the troubling way disputes are handled under the UDRP, at least as described by my friend Paul Raynor Keating.  If you do UDRP work all the time, you already know about the Trademark Clearinghouse.  But if you rely on LIKELIHOOD OF CONFUSION® for all your trademark learning — in which case, we have to talk — it’s time to catch up.  This sounds like a pretty good idea, no?:

[O]ver 1400 new generic top-level domains (gTLDs) should become available on the Internet starting [April] 2013. More than half will be open to register domain names. Given this situation, companies must carefully consider how to adapt their digital strategy and prepare for the new landscape.

The Trademark Clearinghouse (TMCH): what is it?

The TMCH is a centralized database of registered trademarks where rights owners can submit their eligible trademarks prior to and during the launch of new gTLDs.

The TMCH has two distinct functions in the new gTLD program: the Sunrise service and the Trademark Claims service. …

The Sunrise service is a period of at least 30 days that must be offered by all new gTLD registries during which eligible trademark owners can register domain names matching their trademarks before domain names are offered to general public. In order to benefit from the system, trademark owners have to provide proof of use of their trademarks.

The Trademark Claims service is a notification service that provides notice to a potential domain name registrant that a domain name registration matches a trademark in the TMCH. Such notification is not blocking but alerts the applicant that it could infringe trademark. In case of litigation, proof of bad faith by the applicant is facilitated as it will not be in a position to allege that it was unaware of the existence of the trademark’s right. If the registration is completed after all, the trademark owner is notified of said registration during at least the first 60 days of the general registration period of any new gTLD.

At least in theory, it sounds smart, provide not only monitoring but a way to systematically address some of the ridiculous games that end up getting played concerning a domain registrant’s knowledge and bad faith in UDRP proceedings.  As to the Sunrise service,  you can just see the land-rush possibilities afoot here, but the official take on this is the service is being tailored narrowly:

These two services only apply to identical matches that is to say domain names, which consist of complete and identical textual elements of the trademark. The matching rules are strict. Only spaces, punctuations or other IDN-impermissible characters (!, +, =) may be omitted or replaced by hyphens. The signs @ and & may be replaced by a hyphen, omitted or translated into the applicable language(s) corresponding to the language of the trademark’s right jurisdiction.

It’s never really all that simple, though, is it?   Read More…