Cybersquatting & Domain Dispute Lawyer Attorney Law Firm

Reverse Domain Hijacking Decisions

As the years pass and the number of (UDRP) Uniform Domain Name Dispute Resolution Policy arbitrations occur, more and more decisions are addressing reverse domain hijacking. Put simply, reverse domain hijacking occurs when a complainant uses the policy in bad faith to attempt to deprive a registered domain name holder of a domain name. It is typically the respondent that makes a request of the panel for a finding of reverse domain hijacking; although it is possible the panel may make such a finding on its own. Regardless, a panel must be satisfied that the complainant knew of the respondent's unassailable right or legitimate interest in the domain name where the clear lack of bad faith registration in use and nevertheless brought the complaint in bad faith; or that the complaint was brought in knowing disregard of the likelihood that the respondent possessed legitimate interest; or that the complainant knew it had no rights in the trademark or service mark in which is relied and nevertheless brought the complaint in bad faith. While there are an ever growing number of decisions by both the national arbitration forum and world intellectual property organization, there are still some uncertainty as relates to reverse domain hijacking.

While a finding of reverse domain hijacking does not necessarily allow the respondent to recover the resources it had to invest in defending the UDRP complaint, it is a finding that simply does not look good for a complainant. While the UDRP may not allow for recovery of attorney's fees or other filing fees for a respondent when a finding of reverse domain hijacking is made, other ccTLD (country-code top-level domain) dispute resolution providers may indeed allow for such recovery. Regardless, respondents are well served to make the request for reverse domain hijacking when they believe it exists. Doing so forces the complainant to explain its case further and also allows the panel the opportunity to understand whether or not this is truly a matter that should be subject to a UDRP .

Ultimately, a domain name attorney with experience in the UDRP can advise a complainant as to the strength or weakness of its case. Similarly, a domain name attorney can advise a respondent who is subject of a UDRP complaint of the likelihood of a successful defense and or finding of reverse domain hijacking. Reverse domain hijacking should not be an afterthought in today's domain name disputes.

Comic Book Company Recovers Stolen Domain Name Under UDRP

Superman recovers stolen domain name from cybersquatter under UDRP:

As reported by The Register last week, DC Comics successfully recovered the domain name manofsteel.com in a decision handed down by the National Arbitration Forum (NAF) under the UDRP.  DC Comics has owned trademark rights to “MAN OF STEEL” since 1999, and “THE MAN OF STEEL” since 1987. The stolen domain name “manofsteel.com” was registered in 2001. 

After panel review, NAF concluded that the stolen domain name was:

Cybersquatting Hotel Names: Findings of Trademark Infringement and Cybersquatting Under the UDRP Against Media Insight.

Domainfight.net reports the following cybersquatting complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP) against Respondent Media Insight aka Media Insights brought by major hotel chains.  Cybersquatting domain name trademarks owned by hotels and resorts has continued to increase over the last several years.

UDRP: Know Your Arbitrator

We have expressed the importance of knowing your UDRP panelists in any Uniform Domain Name Dispute Resolution Policy (UDRP).  A recent UDRP arbitration decision has received attention after an arbitrator chose not to exercise his discretion and, therefore, did not consider a response filed within one hour of the response deadline.  Not only has the merit of the decision itself been called into question, but the action of the arbitrator himself has been discussed as well in an article entitled: UDRP Arbitration: A Case of Laziness?. 

Cybersquatting and the UDRP: The US and .com Lead the Way

UDRP Update:

The World Intellectual Property Organization (WIPO) has issued a recent report concerning the number of filed cybersquatting complaints filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) over the last ten years.  According to an analysis done by CircleID Reporter titled “Latest Cybersquatting Stats from WIPO”, the U.S. ranked the highest at 43.81% out of the top 15 countries represented for having the greatest number of filed UDRP complaints in the last ten years.  From December 1999 to December 2008, approximately 14,663 UDRP cases have been filed involving more that 26,000 domain names. Of the domain names included in the report, .com domains was reported to be the most prevalent domain extension involved in cybersquatting claims filed under the UDRP. See the results of the report below:

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.

Domain Dispute Arbitration Panel Finds Authorize.net Waived Rights to Complain of Trademark Infringment After Over 10 Years of Use

File a UDRP case quickly or potentially lose your rights: 

Our friends over at domainnamewire.com recently picked up on an interesting case out of the World Intellectual Property Organization (WIPO).  This case involves the waiver doctrine and the effect of permission on a domain name dispute.  Authorize.net, credit card payment service provider and owner of the AUTHORIZE.NET trademark, filed a proceeding with WIPO against Cardservice High Sierra for the use of the AUTHORIZE.NET trademark in their registered domain name at authorized.net.

Passive Holding Is Enough to Satisfy Bad Faith Use Requirements Under the UDRP?

A recent UDRP decision again explains how much use of a domain name is required in order to satisfy the UDRP.  Recall, a Complainant must establish not only a bad faith registration of a domain name under the UDRP, but it must also establish a bad faith use of the domain name under the UDRP.  Paragraph 4(b) of the Policy sets forth the four factors that that shall be evidence of registration and use of a domain name in bad faith, including:

Transfer Order For Traverse Legal's Clients under the UDRP

Traverse Legal attorney and cybersquatting specialist Brian Hall successfully represented our client American Wealth Alliance, Inc., which owns and operates breedersclub.net, a networking and information web site for pet breeders against Respondent Katarzyna Bieniek in a domain arbitration brought under the UDRP.  Traverse Legal's attorneys successfully achieved transfer of the domain by filing a UDRP cybersquatting complaint before the National Arbitration Forum.

The decision is significant because (a) our client did not have  trademark registration with the US Trademark Office and (b) our attorneys had to overcome Respondent's expected argument that 'breeders club" was a generic or simply descriptive term.

The client enjoyed a tremendous return on their investment, taking control of a extremely valuable domain with established traffic, solidifying their common trademark rights based on secondary meaning and securing the customers and advertisers who were being diverted by the cybersquatter in question.

If you have a domain name dispute, trademark infringement or cyber-squatting issue, you need the help of domain name dispute experts. Traverse Legal will provide you an attorney who specializes in cybersquatting arbitrations under the UDRP and anti-cybersquatting lawsuits under the ACPA.   Read the full decision below ....

Another Cybersquatting Victory For Traverse Legal and Its Clients

We have several internet law attorneys from our office who specialize in UDRP proceedings.  We recently won a National Arbitration Forum decision where a religious group registered the domain name of my client specifically to preclude registration by another religious group.
Complainant, Gospel for Asia (GFA), is a nonprofit missionary organization which provides services concerning missionary activities in Asia via books, audiotapes, periodicals and other media. Respondent registered the  the domain names after GFA was using the names in commerce. Respondent has made no original use of the domain names since registration.

 

Traverse Legal cybersquatting specialists were able to establish trademark rights by our client in the suject domain name, Respondents lack of legitimate use rights in the domain name and bad faith registration and use of the domain name by the Respondent

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.