Cybersquatting & Domain Dispute Attorneys / Lawyers

Cybersquatters Beware

The current Uniform Domain Name Dispute Resolution Policy (UDRP) offers a relatively quick and cost effective mechanism to independently resolve disputes that arise from the abusive registration of trademarks as domain names.  Under the UDRP, a complainant must show that the domain name in dispute is identical or confusingly similar to its trademark, that the respondent does not have a right or legitimate interest in the domain name, and that the respondent registered and used the domain name in bad faith.

However, the UDRP is not without its share of problems.  The first major problem of the UDRP is that it is only a curative solution, meaning it provides relief after a violation has already occurred.  For example, a cybersquatter can register an IP owner's identifiers forcing the aggrieved owner to use the UDRP.  In essence, the UDRP seeks to return the damaged IP owner to as good as a position as he was before the cybersquatting.  Second, the UDRP has no preventative measure to protect trademark holders from cybersquatters.  Theoretically, the only way IP owners can protect themselves as new gTLDs are introduced is by registering their entire trademark portfolio.  In essence, IP owners compete with cybersquatters for their own trademarks.  Third, no provisions exist to deal with the situation where IP owners want to protect their trademarks in sponsored gTLDs but are restricted because the TLD is reserved for those entities that qualify in the particularized and specialized space.

“Is Pornosquatting Enough to Win my Domain Name Dispute?”

In order to successfully assert a domain name dispute complaint under the UDRP you have to show that the domain name in dispute is identical or confusingly similar to your trademark, that the respondent does not have a right or legitimate interest in the domain name, and that the respondent registered and used the domain name in bad faith.  One of the more common issues relates to pornosquatting.  In its simplest form, pornosquatting occurs when your trademark is used as part of a domain name for a website containing pornographic material.  Regardless, pornography alone may not be enough to show bad faith.

A classic case of "pornosquatting" will, however, suffice.  Pornosquatting has been held to be clear evidence of bad faith when: (1) a trademark the pornosquatter does not own is used; (2) the site to which the user is redirected is clearly pornographic; (3) the site is commercial, (i.e. you must pay in order to access further pornographic images); and (4) there is a "mouse-trapping effect" making it more difficult for the casual Internet user to leave the pornographic website.

Domain Name Disputes: The Importance of Knowing Your UDRP Panelists at WIPO or NAF

The golden rule for a trial attorney is "know your judge." This maxim also applies to domain name disputes where the UDRP Panel, who acts as the judge, can determine whether or not you win. As such, parties involved in domain name dispute resolution should be aware of how the panels work, how you have the right to select how many panelists handle your case, and how you can ultimately affect which particular panelist is selected.

The most common misunderstanding with those unfamiliar with the UDRP is how selecting a three person panel, as opposed to a single panelist, may affect the outcome of the decision. Intrinsic in the three-member panel is the process affording each party the right to select one panelist with the third being selected by the provider from a list approved by both parties. Regardless, it is important to be able to recognize which prior decisions are favorable to your particular facts and circumstances and then identify the panelist(s) that delivered those decisions. Just as important, if not even more critical, is the ability to shield panelists with views opposed to your position from serving on the panel handling your particular domain dispute. It is important to note that should you decide to select three panelists and pay the additional fee, you can change your mind and select one panelist and get a refund if done in a timely and proper way. While both WIPO and NAF provide a list of panelists, the key is being able to understand where those panelists stand on particular issues that arise within a domain dispute; an issue that may control whether or not your goals are achieved. See the list of panelists at both WIPO and NAF below:

WIPO’s list of panelists. http://www.wipo.int/amc/en/domains/panel.html#1

NAF’s list of panelists. http://www.domains.adrforum.com/panel.aspx

Ultimately, law firms experienced in the UDRP are more educated and better-equipped to select a list of panelists that will best serve your purpose given the unique set of facts. In addition, they can also advise you as to the amount of risk, which may affect choosing a three person panel over a single panelist, given your particular situation. You can contact us today if you would like us to assist you in filing a complaint, responding to a complaint, or simply navigating your way through the UDRP.

Which UDRP Service Provider Should I Choose?

Some call it forum shopping. Others call it preparation. Given the choice, wouldn’t you choose the latter. You should since you are allowed to and there are readily available ways to choose which forum, or service provider, is best for your case. The two most popular domain name dispute resolution providers are WIPO (World Intellectual Property Organization) and NAF (National Arbitration Forum). Although both UDRP providers, WIPO and NAF have different fee structures, decision turn-around times, and other nuances explained in their respective supplemental rules. Regardless, the number one consideration when deciding whether to choose WIPO, NAF, or one of the other service providers should be based upon a review of how Panels decided cases similar to yours. Both WIPO and NAF provide access to their decisions at:

WIPO http://arbiter.wipo.int/domains/cases/index.html

NAF http://www.arbforum.com/domains/decisions.asp

With the ever-increasing number of decisions available, it is important to be able to form an educated prediction as to how a particular service provider’s panel would resolve your case. Looking at prior decisions can help, but it would be even easier if you knew both the majority and minority views on particular issues that commonly arise in the UDRP. This is where a law firm specializing in domain name disputes can help. Ideally, you should choose a law firm with background knowledge of both trademarks and the UDRP. In the end, it is not asking the law firm too much to do an initial review of your case, peruse decisions issued by both service provider’s on the particular issue, and ultimately provide a risk assessment of your case. You can contact us today to provide such a service, and if you so choose, assist you in filing a complaint, responding to a complaint, or simply navigating your way through the UDRP.