Cybersquatting & Domain Dispute Attorneys / Lawyers: UDRP Attorney Tips | How To Respond To An UDRP Complaint?

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03/31/2010

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These are very informative. For me, having UDRP is a good thing because it provides an order in the world of websites and domain names. Any world where there is no order comes chaos.
https://members.optimalhosting.com/domainchecker.php

If you registered your domain name prior to the UDRP complaint and achieving trademark rights, you should win your UDRP arbitration. Keep in mind that the complaint and any UDRP proceeding has to prove that you registered the domain name with the bad faith intent to profit from the trademark. If you registered the domain name before there were any trademark rights, you could not possibly have had a bad faith intent to profit from that trademark. In some cases, an attempt through the UDRP to secure a domain name when the trademark came after the domain registration can constitute reverse domain name hijacking. Contact a domain name dispute attorney for more information.

Brian A. Hall says:
" If at the time that the domain was registered, the complainant didn’t even own a trademark, common law or otherwise, then there can’t be any bad faith registration and the complaint must fail. "

Yes that's the way it's supposed to be but anyone that follows UDRP decisions has seen Panelists many times consider Bad Faith Use as evidence of Bad Faith Registration.

Here's an example from last December 2009:

"...does the absence of bad faith intent by the respondent at the time of acquisition of the disputed domain name inevitably preclude the complainant from succeeding under the Policy, even though the respondent has subsequently used the domain name in bad faith?

In this Panel’s view, the answer to that question is ...“no”"

Source:
http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1716.html

To make matters even worse, in the Sporto.com decision which is one of the worst UDRP decisions this layman has read, the Panelist decided that Renewal of a domain name was evidence of Bad Faith.

Renewal NOT registration.

With this type of "reasoning" no one is safe.

Excerpts:
"...Respondent’s pre-2008 use of the disputed domain name may have established a defense to the charge of no rights or legitimate interest..."

but a different view is to:

"...treat “registered and used the domain name in bad faith” as a “unified concept”.

Under this method of analysis...a panel may determine that registration in bad faith...may be established “retroactively” by subsequent bad faith use."

And the worst part:

"...not only imposes a duty on the part of the registrant to conduct an investigation at the time of registration
...but also includes a representation and warranty by the registrant that it will not now or in the future use the domain name in violation of any laws or regulations.

This effectively imposes on the registrant a continuing duty to ensure that the domain name is not used in violation of another’s rights...

This representation and warranty is not limited to the moment at which the registrant registers the domain name; rather, it extends to any use of the domain name in the future.”"

Source:
http://www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1688.html

Good luck everyone!

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