What If the Registrar Refuses to Transfer the Domain Name to Your Control after a Successful Transfer Order is issued by a UDRP Panelist?

It does not happen very often but there are instances where a trademark holder successfully brings and complaint under the Uniform Dispute Resolution Policy (UDRP)-achieving a panel finding of bad faith cybersquatting- and yet still has trouble securing their domain.  After a transfer order is issued, the registrar typically has ten day to work with the trademark holder to transfer the subject domain to the trademark holder’s control.  If the registrar being used by the cybersquatting in the first instance fails to transfer the domain, the next step is to work with ICANN who can enforce the registrar’s contractual obligations to fully comply with the provisions of the UDRP.  ICANN recently issued a draft advisory regarding registrar best practices to protect registrants upon initiation of the Uniform Domain Name Dispute Resolution Policy complaint at its contractual compliance web page found here. 

Law Firm Loses UDRP Domain Dispute Decision Over Use of Drug TRACLEER

K&L Gates : Newsstand : K&L Gates represents pharmaceutical company in precedent-setting WIPO domain name victory

On September 10, 2007, a three-member panel of the World Intellectual Property Organization (“WIPO”) found in favor of ... Pharmaceuticals, Ltd (“Actelion”), that the use of its trademarked drug name TRACLEER by a law firm for the purpose of soliciting clients for litigation was improper under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). The Panel’s decision, a clear departure from previous precedent, represents a positive outcome for trademark owners, especially those in the pharmaceutical industry, whose trademark rights are being improperly used by lawyers and law firms to attract litigation clients.

Before Actelion, the seminal WIPO case involving use of a pharmaceutical company’s trademarked drug name by a law firm was decided in favor of the products liability lawyer. See Pfizer, Inc. v. Van Robichaux , WIPO Case No. D2003-0399 (July 16, 2003).

Read the WIPO decision here.

Protecting Your Trademark In Light of ICANN's New Generic Top-Level Domain Names

Domain names have become an important part of our commercial lives.  They act as designators of products and services and serve as shortcuts to reduce consumer search costs.  That is why trademark owners must be vigilant in protecting their trademark rights on the Internet.  On June 24, ICANN gathered to discuss adding new generic top-level domain names, or gTLDs, to the spectrum of available domain name suffixes.  When ICANN adds gTLDs, you can be sure that cybersquatters and typosquatters are watching because it presents them with a new opportunity to register the trademark of another to profit off of the goodwill and Internet traffic associated with the mark.  Domain name disputes inevitably follow the addition of TLDs, so it is important to hire an attorney that is proactive in monitoring the use of your trademarks on the Internet.

Register.com Alleges Cybersquatting & Files UDRP Case against DomainIt

Domain Name Wire » News » Register.com Goes After Register.cc - The Domain Industry's News Source

Domain registrar Register.com has filed a UDRP against another ICANN-accredited domain registrar, DomainIt, for its use of Register.cc. DomainIt, which manages 22,354 domains according to RegistrarStats, currently forwards register.cc to its main web site. This is an interesting case on a couple grounds. First, it’s rare to see two ICANN-accredited registrars on opposing sides of a UDRP arbitration. Second, it’s a .cc domain, which is not a popular domain and not commonly disputed under UDRP. Is Register.com right to go after this name? Here’s what I dug up.

Register.com’s history with arbitration at National Arbitration Forum doesn’t make this a clear cut case. The company won a slam dunk case for wwwregister.com. It also won a case for a number of domains including 101register.com, webpage-register.com, and website-register.com. The panel decided these were confusingly similar, perhaps because the owner created web sites very similar to Register.com’s. But then it lost a case for ComRegister.com in 2006, as the panelist wrote “The addition of the term “com” to the beginning of Complainant’s mark is sufficient to distinguish Respondent’s comregister.com domain name from Complainant’s mark.”

This will be a difficult cybersquatting case for Register.com to win. Register has many non-infringing uses and is a very weak trademark. DomainIt can argue that it was registered for its pure generic value to describe the services it offers, which happen to be the same as Register.com.

Technorati Tags: register.com, domainit.com, register.cc, cybersquatting

CADNA Report on Domain Drop Catching

CADNA has just issues a report on domain name Drop Catching titled "A study on the fate of expiring domains and how the Add Grace Period is leveraged to avert domain name investment risks."

The cyberspace real estate market is booming and domain names are now registered at a faster pace than ever before. One core reason for the expanding marketplace is that domain names can produce monthly cash flow much like rent does in the traditional real estate market. Domainers will tell you that even “bad” names can generate income of $100/year, which is more than 10 times the cost. The ability to monetize domain investments has created increased competition for available and expiring domain names. The reports conclusions are set forth below:

ICANN Unanimously Votes to Change Policy To End Domain Tasting

John Levine has noticed something incredibly important in the latest ICANN Board Meeting minutes. ICANN may make their .20 cent fee for registration non-refundable, subject to both Board approval and registrar approval of this fee.  Currently, tasting domain is free, making it economically viable for  tasters to register large chunks of expiring domains, taste them for 5 days and decide which ones to keep.  Domain tasters do have to pay the initial registration fee so they need to bankroll the initial payment.  But they currently get a full refund for all domains returned within the Add Grace Period (AGP).  The number of domains deleted after the AGP is estimated to be 95%.

GNSO Initial Report on Domain Tasting

ICANN recently issued a report on domain tasting which often results in squatting of trademarked domains. it does appear that ICANN is poised to do something about domain tasting.  The only questions are when ICANN will act and whether it will impose a delete fee or simply end the grace period altogether.  There was no significant support for leaving the current add/grace period in place. Here are some highlights.

Executive Summary
Background: The practice of domain tasting (using the add grace period to register domain names in order to test their profitability) has escalated significantly in the last two years. ICANN community stakeholders are increasingly concerned about the negative effects of domain tasting and in the spring of 2007 the At Large Advisory Committee (ALAC) asked that the domain tasting issue be studied further by the ICANN GNSO. The ALAC request enumerated five areas of potential concern for Internet users:

1. Potential destabilization of the domain name system through excessive operational load on registry systems;
2. Creation of consumer confusion as names quickly appear and disappear, or as users are redirected to advertising or otherwise confusing sites;
3. Potential increased costs and burdens of legitimate registrants and service providers;
4. Facilitation of trademark abuse, where existing dispute resolution mechanisms may not be sufficiently timely or cost-effective for trademark holders to use against short-term infringement; and
5. Facilitation of criminal activity including phishing and pharming.

The Uniform Dispute Resolution Policy (UDRP)

Traverse Legal's lawyers are internet and technology specilists focused on cybersquatting and domain dispute matters. Traverse Legal's attorneys have handled ACPA and UDRP matters involving thousands of domain names, representing both trademark registrants against cybersquatters and on behalf of domain registrants facing claims of trademark infringement and cybersquatting. The primary weapon asserted by trademark registrants agasint cybersquatters is the UDRP, which creates a framework for transferring cybersquatted domains to their rightful owners.

ICANN: Resolving Domain Theft & Cybersquatting Disputes

Uniform Domain-Name
Dispute-Resolution Policy 

General Information

The Internet Corporation for Assigned Names and Numbers (ICANN) is responsible for managing and coordinating the Domain Name System (DNS) to ensure that every address is unique and that all users of the Internet can find all valid addresses. It does this by overseeing the distribution of unique IP addresses and domain names. It also ensures that each domain name maps to the correct IP address.

Here are some ICANN links which will help you better understand the UDRP process and legal standards:

• ICANN - Internet Corporation for Assigned Names and Numbers
• ICANN's Resource Page For Domain Name Dispute Resolution Policies
• Uniform Domain Name Dispute Resolution Policy (UDRP)
• Rules for Uniform Domain Name Dispute Resolution Policy
• Approved Providers for Uniform Domain-Name Dispute-Resolution Policy
• The National Arbitration Forum
• World Intellectual Property Organization