03/31/2010

UDRP Attorney Tips | How To Respond To An UDRP Complaint?

Do you know what to do if you feel your trademark rights are being violated by another party? What if you get a notice that someone else thinks you are infringing on their trademark rights and intellectual property online? UDRP Attorney Brian Hall discusses the ins and outs of UDRP complaints with Damien Allen on today's program.

  • The UDRP (Uniform Domain Name Dispute-Resolution Policy) is process that was established by ICANN or Internet Corporation for Assigned Names and Numbers, for the resolution of disputes regarding the registration and/or use of internet domain names.
  • UDRP, is a process that allows somebody who believes they have trademark rights to go out and enforce those trademark rights as it relates to domain names.
  • UDRP is not a lawsuit, it’s not filed in a court of law, and no monetary damages are available under the UDRP.
  • Filing a UDRP does not preclude the complainant from filing a lawsuit for monetary damages or some other type of relief, injunctive or otherwise.

Announcer:  Welcome to Domain Name Law Radio brought to you by Traverse Domain Name Law, internet lawyers specializing in complex litigation and domain law issues such as Domain Disputes, Cybersquatting, Domain Monetization, UDRP and Anticybersquatting Consumer Protection Act cases worldwide.  Now here’s your host, Damien Allen.

Damien Allen: Good morning and welcome to Domain Name Law Radio.  My name is Damien Allen.  Today we’re discussing how to respond to a UDRP complaint with Brian A. Hall of Traverse Legal, PLC.  Good morning and welcome to the program, Brian.

Brian A. Hall:  Good morning, Damien.

Damien Allen:  Brian, what is the Uniform Domain Name Dispute Resolution Policy, more commonly known as the UDRP?

Brian A. Hall:  Well, the UDRP is process that was established by ICANN or Internet Corporation for Assigned Names and Numbers, which is a body that handles these types of matters, and it was really established for the resolution of disputes regarding the registration and/or use of internet domain names.  So, when we’re looking at a UDRP, It’s really a process that allows somebody who believes they have trademark rights to go out and enforce those trademark rights as it relates to domain names.  So, what happens essentially is that the trademark owner can draft and file a complaint with different arbitration panels that administer these types of UDRP proceedings.  For example the National Arbitration Forum out of Minneapolis or the World Intellectual Property Organization out of Switzerland has divisions that handle UDRP disputes, and it allows a complainant to file a complaint with that panel.  The complaint is transmitted to the respondent which is essentially the registrant of the domain name and/or domain names, and that respondent is given an opportunity to respond to the complaint.  Thereafter, a panel is assigned and that panel can be a one-person panel or three-person panel depending upon what the complainant and respondent elect, and then usually within about 45-60 days, although it can be longer, of the time of filing a complaint, a decision is rendered. That Decision will be one of two things.  It’ll either be that the complainant prevails and a transfer order will be issued, meaning that the registrar will be forced to transfer the domain name from the respondent or registrant to the complainant.  In the alternative, the complaint will be denied and, if that happens, the respondent or registrant gets to keep the domain(s) and at that point the complainant needs to decide whether or not he or she would like to pursue the matter further via a lawsuit.  But it’s important to understand that a UDRP is not a lawsuit, it’s not filed in a court of law, and no monetary damages are available under the UDRP.  That being said, filing a UDRP does not in any way preclude the complainant from thereafter filing a lawsuit for monetary damages or some other type of relief, injunctive or otherwise. 

Damien Allen:  How would one know if he or she was a respondent to a UDRP, Brian?

Brian A. Hall:  That’s a great question, Damien?  Basically, the respondent, which like I said is the registrant of the domain name would receive a notice of the complaint to the address, email address and any other contact information provided alongside that domain name registration.  So once they get the notice of complaint, there’ll be cover sheet on top of that from the particular arbitration forum with instructions as to what they need to do to respond, a time period within which a response must be received and, most obviously, there will also be the actual complaint and any exhibits, also known as annexes, that are attached to it for the respondent to review. 

Damien Allen:  Does a respondent to a UDRP need an attorney?

Brian A. Hall:  Well, obviously, I’m biased, Damien.  I’m a domain name attorney myself but what I would say is that the actual answer is no.  They do not have to have an attorney to respond to a UDRP.  That being said, the UDRP is a very specific policy whereby understanding the rules, understanding the law and understanding how to navigate around both of those is absolutely critical.  I hear very often that somebody receives a UDRP complaint and they take it on their own, the respond via letter or phone call or something and say, look, I’ll simply be willing to transfer the domain name for X amount of dollars. Well, that in and of itself could be evidence of bad faith that can then be used as additional evidence against them in the UDRP.  So there is so many pitfalls, there’s so many roadblocks that an individual who’s unfamiliar with this process can run into that I would highly recommend at least consulting with a domain name attorney and, if possible, retaining a domain name attorney to handle the response.

Damien Allen:  Are there common defenses to these?

Brian A. Hall:  Without a doubt.  Most of them go back to the elements of a UDRP.  So, if we look at those elements there are really three things that a complainant has to establish in order to prevail.  The first is they have to have trademark rights.  So, they need to establish that they’re the owner of a distinctive mark and have used that mark in commerce.  Alongside that first element, they need to show that the domain name that’s subject to the UDRP is confusingly similar to the actual trademark that they have rights in. So, number one is looking at trademark rights and confusing similarity, there’s ways to attack those.  The second element would be legitimate use.  The complainant does not have to establish legitimate use but rather show that the use that’s being made by the respondent is not legitimate.  So, that’s really a ripe area for defense because if there is a way to establish that the respondent’s registration and/or use is legitimate, meaning for a legitimate business, maybe demonstrable preparations to use in connection with a legitimate business, things along those lines.  Then the third element is known as bad faith.  And what’s important to recognize is that under the UDRP, the complainant must establish not only bad faith registration but also bad faith use. Those are two separate factors that sometimes complainants try and analyze as one, but in actuality, any good respondent and domain name attorney representing that respondent, can analyze both of those individually.  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.  Looking at those three elements is really where you can find defenses that are worth pursuing as part of response to the UDRP. 

Damien Allen:  What is reverse domain hijacking, Brian?

Brian A. Hall:  Reverse domain hijacking is really the complainant’s use of the policy in a bad faith attempt to deprive a legitimate registered domain name holder of a domain name.  Put another way, it’s a complainant being overly aggressive with the UDRP in hopes of getting the domain name through the UDRP.  So, respondents and, more often than not, it’s the domain name attorney representing the respondent makes the allegation in the response that this is reverse domain name hijacking.  While that’s important to know, my personal preference is to not waste a lot of time on it and space because there’s word limits, page limits, etc. as part of any response, regardless of the forum, and since reverse domain hijacking does not entitle the respondent to any sort of monetary compensation or really any sort of relief putting it into the UDRP response, it might be worthwhile to simply prove a point to the panel making the decision and to further the respondent’s position, but again, since there’s ultimately nothing that the respondent can achieve by making that allegation, it’s not something worth taking up a lot of space in the response. 

Damien Allen:  Can you settle before a decision is issued? 

Brian A. Hall:  without a doubt.  The UDRP can be suspended and that can be done usually via negotiation between the complainant and respondent. The point behind suspending a UDRP is that it gives time for the parties to actually negotiate.  Obviously, negotiations can go in multiple directions. The goal might be to negotiate simply a resolution and transfer of the domain name.  Other times, it might be to negotiate transfer of that domain name and others.  Other times, there might be to negotiate a resolution via payment of money and transfer of domain names.  So, there’s many different ways that negotiations can go but, ultimately, the UDRP can be suspended for a finite period of time in an effort to ultimately resolve it.  Now, if it’s not resolved, the suspension terminates and the UDRP continues.  So, suspension’s a possibility but ultimately a UDRP can be withdrawn as well.  And it can be withdrawn with prejudice, meaning that another subsequent UDRP pertaining to the same domain name or domain names cannot be filed.  So, usually what happens is if parties get together and decide that they are willing to resolve this before a decision is rendered, a suspension order is put into place and then ultimately a request for withdrawal is filed and likely to be granted by the UDRP panel.

Damien Allen:  We’ve been discussing how to respond to UDRP complaint with Brian A. Hall of Traverse Legal, PLC.  Thank you for joining us today, Brian.

Brian A. Hall:  Thanks a lot, Damien, it was fun.

Damien Allen:  You’ve been listening to Domain Name Law Radio.  My name is Damien Allen.  Everybody have a great afternoon.

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COMMENTS

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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  • Anticybersquatting Consumer Protection Act - Wikipedia
    The Anticybersquatting Consumer Protection Act (also known as Truth in Domain Names Act), a United States federal law enacted in 1999, is part of A bill to amend the provisions of title 17, United States Code, and the Communications Act of 1934, relating to copyright licensing and carriage of broadcast signals by satellite (S. 1948). It makes people who register domain names that are either trademarks or individual's names with the sole intent of selling the rights of the domain name to the trademark holder or individual for a profit liable to civil action.
  • Typosquatting - Wikipedia
    Typosquatting, also called URL hijacking, is a form of cybersquatting which relies on mistakes such as typographical errors made by Internet users when inputting a website address into a web browser. Should a user accidentally enter an incorrect website address, they may be led to an alternative website owned by a cybersquatter.
  • Reverse Domain Hijacking - Wikipedia
    The term reverse domain hijacking refers to the practice of inequitably unseating domain name registrants by accusing them of violating weak or non-existent trademarks related to the domain name.
  • Uniform DomainName DisputeResolution Policy - Wikipedia
    The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP policy currently applies to all .biz, .com, .info, .name, .net, and .org top-level domains, and some country code top-level domains.
  • Cybersquatting - Wikipedia
    Cybersquatting, according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else.

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