WIPO’s UDRP ‘Overview’ Gets Bigger (and Better)

Just as the number of domain names and domain name disputes have expanded significantly in recent years, so, too, has WIPO's "Overview," which has been updated to address the growing complexity of cases under the Uniform Domain Name Dispute Resolution Policy (UDRP).

WIPO has just published the third edition of its "WIPO Overview of WIPO Panel Views on Selected UDRP Questions" -- commonly referred to as "WIPO Jurisprudential Overview 3.0." The document addresses some of the most common, important and difficult issues that frequently arise in UDRP cases.

WIPO Overview 3.0 is the first update to this document in six years -- a time period in which a lot of changes have come to the domain name system, including the arrival of more than 1,200 new generic top-level domains (gTLDs) and a new domain name dispute policy (the Uniform Rapid Suspension System, or URS).

"Following a review of thousands of WIPO panel decisions issued since WIPO Overview 2.0, this edition has been updated to now include express references to over 800 representative decisions (formerly 380) from over 250 (formerly 180) WIPO panelists," according to an introduction to WIPO Overview 3.0. "The number of cases managed by the WIPO Center has nearly doubled since its publication of WIPO Overview 2.0; as a result, the number of issues covered in this WIPO Jurisprudential Overview 3.0 has significantly increased to reflect a range of incremental DNS and UDRP case evolutions."

New and Expanded Topics

New or expanded topics addressed in WIPO Overview 3.0 include the following:

  • The relevance of a top-level domain name -- a topic I have written about before. The Overview says: "Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity (e.g., for a hypothetical TLD '.mark' and a mark 'TRADEMARK', the domain name <trade.mark> would be confusingly similar for UDRP standing purposes)."
  • The relationship between the UDRP and the URS -- another topic I have written about before. Citing a decision in which I successfully represented a trademark owner in both a URS and a UDRP proceeding, the Overview says, "There have... been UDRP proceedings filed where the same domain name was previously subject to a URS case. In such event, the UDRP complaint should make this clear."
  • WIPO's role in implementing a UDRP decision -- an issue that occasionally arises when a registrar fails to transfer a domain name despite a UDRP order to do so. In my experience, this is often attributable to ignorance, not defiance, but in either case enlisting WIPO's assistance can be helpful. Although the Overview makes clear that WIPO's role "normally ends upon notification of a panel decision to the parties and registrar," it also says that parties may "raise such implementation matters to the WIPO Center’s attention."

The Role of the Overview

In any event, WIPO Overview 3.0 should be helpful to any party filing or defending a UDRP complaint. Not only does the document explain the consensus view on many issues, it also provides numerous citations to relevant decisions, which can provide a useful resource for additional research.

Still, as the Overview itself makes clear, not all UDRP issues are entirely settled, and (as in all legal proceedings) the facts of each case will be important.

As the Overview states, the document "cannot serve as a substitution for each party’s obligation to argue and establish their particular case under the UDRP, and it remains the responsibility of each party to make its own independent assessment of prior decisions relevant to its case."

Therefore, parties would be wise to consult the newly expanded and even more helpful Overview -- but, they still must conduct appropriate research and analysis to prepare and present the strongest possible arguments in a UDRP case.

GigaLaw.com is Now Giga.Law: Behind the Launch of a New Domain Name

GigaLaw

The GigaLaw website – available at the domain name gigalaw.com for more than 17 years – now has a new home, and it’s at a new generic top-level domain (gTLD): giga.law.

Dot-law is one of more than 1,200 new gTLDs that have become active since ICANN revealed the applications almost five years ago for the largest expansion of the domain name system. Many (if not most) of the new gTLDs have failed to gain much traction, so why would I – a domain name attorney – choose to start using one?

The answers are simple:

  • Dot-law makes sense for GigaLaw. There would be no reason to register the “GigaLaw” name in another gTLD, such as .xyz or .top or .win (which are currently among the most popular of the new gTLDs). No other new gTLD is relevant, but dot-law clearly is. Not only does dot-law help describe the content of the website associated with the giga.law domain name, but it actually forms a part of the name itself – something that has been referred to as “spanning the dot” (as in some interesting domain name cases such as those involving b.mw and tes.co).
  • The giga.law domain name is short. The entire domain name is now only eight characters (including the dot itself), down from 11. And the all-important second-level domain (“giga”) is now only four, instead of seven. In the world of domain names, shorter is sweeter.
  • Dot-law domain names are restricted. That is, only applicants that meet certain criteria – namely, “legal professionals” – are eligible to register dot-law domain names. Because the GigaLaw website is the home of my legal practice’s online presence, the dot-law gTLD is entirely appropriate and, perhaps, adds a degree of credibility or authenticity to the domain name.

Of course, the fact that my legal practice is largely about domain names also made the leap to using a new gTLD an intriguing idea. While I have often been critical of the new gTLDs (and my trademark clients largely oppose them, often with my assistance), the reality is that they are here. So, participating in the modern domain name system seems like an appropriate decision.

Challenges in Changing Domain Names

Still, using a new gTLD is not without some concerns. For example, many people are unaware that new gTLDs even exist, so telling someone that my website is at “giga.law” may take some explaining. Plus, it seems as if some tools that automatically create hyperlinks from domain names (such as Gmail) are struggling to do the same with certain new gTLDs.

Also, converting a website that has been using one domain name for 17 years to a new domain name is not the simplest task. This is especially true for GigaLaw, where I have been posting multiple “Daily News” items about Internet legal issues five days a week since the turn of the century.

I’ve learned a lot about creating “redirects” during this process – something that anyone considering a switch to a new gTLD must consider – and I’ve done some things to make the process work well. But some technical challenges have prevented me from being able to do it flawlessly, and I know some links (especially to older GigaLaw Daily News posts) are broken.

A New Website – Not Just a New Domain Name

As seen at Facebook

Finally, I took advantage of the switch from gigalaw.com to giga.law to launch a newly designed website for GigaLaw as well. The new site is much more modern and attractive (as I hope you’ll agree!).

The GigaLaw site has had a number of face-lifts through the years – migrating from a hand-coded site when I launched it in 2000 to one that partially used Blogger to one running fully on WordPress. Now, GigaLaw is powered by Squarespace, which was recommended by my amazing designer/developer, Jon Mitchell of Ablaze Interactions.

Not only is the new GigaLaw site visually more appealing, it is also easier to maintain, faster and much more secure – qualities that are of obvious importance.

I'll continue to work on fixing the broken links, and many other parts of the new site will be tweaked and improved. While it's tempting to wait for a new website to be "perfect" before launching, that only means it would never take off. I think this photo of a poster I took several years ago while attending a meeting at Facebook says it best: "Done Is Better Than Perfect." (Or, as Voltaire said, "Perfect is the enemy of good.")

Do You Like It?

I would love to know what you think about the new GigaLaw – the site and the domain name – so please tell me. You can reach me at, naturally, this handy new email address: Doug@Giga.Law
 

A Lesson from the EPA in Domain Name Disputes

While the U.S.A. Environmental Protection Agency (EPA) has been making news as the result of controversial changes brought about under the new Trump administration -- including the planned removal of "several agency websites containing detailed climate data and scientific information" -- the EPA also has generated some (lesser-known) domain name news: The agency won a decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) for the domain name <noattacks.org>.

Although UDRP complaints filed by governmental entities are not unprecedented, they are not common. Indeed, governments don't even make an appearance on WIPO's list of the types of trademark owners that file UDRP complaints.

That may be because government agencies are not typically thought of as trademark owners. But sometimes, they are.

In the EPA case, the trademark at issue, NO ATTACKS (which the EPA used in connection with anti-asthma campaigns), apparently was not registered. But as the UDRP panel noted, "There is no requirement under the UDRP that a complainant must show registration of a trademark to demonstrate its rights therein. Rights may be shown by persuasive evidence of common law trademark rights in a mark."

Fortunately for the EPA, the UDRP panel agreed that it had established common law trademark rights in NO ATTACKS -- as the result of its "public use of such mark over a period of 15 years" and an investment of "$450 million in advertising" related to the mark.

Interestingly, the EPA previously had registered the <noattacks.org> domain name but, like many other domain name registrants that find themselves filing UDRP complaints, the EPA allowed it to lapse "[t]hrough inadvertence." The new registrant used the domain name in connection with a pay-per-click (PPC) website and also offered it for sale for $25,000, according to the UDRP decision. The panel found this sufficient to establish the required bad-faith element.

In many ways, the EPA case is like many other domain name disputes: A domain name owner creates a domain name, invests significant sums of money promoting it, fails to protect it by pursuing a relevant trademark registration, and then lets its expire. The UDRP decision doesn't explain why any of this happened, but it should be a warning to other trademark owners to take domain name management seriously.

(Interestingly, before the UDRP decision for <noattacks.org> was implemented and the domain name transferred back to the EPA, the "No Attacks" website was posted at a different address, which contained this notice: "Due to technical difficulties with the URL www.noattacks.org, this website is temporarily hosted at http://noattacks.scgcorp.com/". I'm not so sure "technical difficulties" is the most accurate label.)

Perhaps the EPA could have benefited from one of my previous blog posts, such as this one: "New Year's Resolution: Renew Your Domain Name! (And Other Best Practices for Domain Name Management)."

Dot-Com is Still King -- of Domain Name Disputes

Despite the launch of more than 1,200 new gTLDs, .com remains far and away the most popular top-level domain involved in domain name disputes. In 2016, .com domain names represented 66.82 percent of all gTLD disputes at the World Intellectual Property Organization (WIPO), the only domain name dispute provider that publishes real-time statistics. And, as of this writing, the rate is even higher so far in 2017, with .com domain names accounting for 69.78 percent of all disputes.

Not surprisingly, the overall trend since the launch of the new gTLDs shows .com appearing in a smaller percentage of cases under the Uniform Domain Name Dispute Resolution Policy (UDRP). For example, in 2012, when the new gTLD applications were unveiled, .com domain names represented 74.84 percent of all gTLD disputes at WIPO.

Of course, some new gTLDs are appearing in UDRP cases, with 13 new gTLDs represented in 10 or more UDRP cases at WIPO in 2016:

  • .xyz
  • .top
  • .club
  • .online
  • .vip
  • .store
  • .website
  • .cloud
  • .site
  • .space
  • .shop
  • .lol
  • .date

But, the discrepancy between .com disputes and others is tremendous (as the chart above shows): WIPO saw 3,120 .com domain names in dispute proceedings last year, but the most-commonly disputed new gTLD -- .xyz --appeared only 321 times.

As I've written before, the large number of new gTLDs probably contributed to a record number of UDRP disputes in 2016. But it's clear that new gTLDs are accounting for relatively few disputes.

Trying to understand why new gTLDs don't appear in more UDRP proceedings is pure speculation, though a couple of explanations seem reasonable:

 

  • Trademark owners care more about .com domain name registrations and how they are being used. While new gTLDs are bothersome to many trademark owners, their limited appeal makes them less important to dispute.

Why Cancel a Domain Name in a UDRP Case?

While the most common results of a UDRP proceeding are either transfer of a disputed domain name to a complainant or denial (that is, allowing the respondent to retain it), there is another possible outcome: cancellation. I'm always surprised to see a UDRP decision in which a domain name is cancelled. True, many trademark owners don't really want to obtain control of a disputed domain name (and, instead, they simply want to get it taken away from a cybersquatter). Plus, maintaining a domain name incurs an ongoing expense as the result of renewal fees, and many trademark owners already have large (and, therefore, costly) domain name portfolios.

But, the cancellation remedy means that a UDRP victory may be short-lived, because cancelled domain names become available for registration by anyone, including another (or even the same) cybersquatter.

A trademark owner that files a UDRP complaint incurs real expense (through filing fees and legal fees) -- payments that rightly could be seen as an investment. Allowing a domain name to be cancelled instead of transferred seems like a wasted investment.

Here's one way of looking at the math:

  • The least amount of money that a trademark owner could expend on a UDRP complaint is about $500 -- if it files at the Czech Arbitration Court (the least expensive UDRP service provider) and prepares the complaint itself, without outside counsel. (In reality, most UDRP complaints incur total expenses of thousands of dollars.)
  • A popular registrar such as GoDaddy charges about $15 per year to renew a .com domain name.
  • Therefore, a trademark owner could maintain a transferred domain name for more than 30 years for less than the cost of filing the cheapest possible UDRP complaint.

Under this scenario, why would a trademark owner risk having a domain name fall into the hands of another cybersquatter if it could keep the domain name for itself and avoid having to file a second UDRP complaint?

The risk is real, as domain names cancelled in UDRP proceedings don't necessarily remain cancelled for long. For example, although the pharmaceutical company Sanofi won a UDRP complaint last year for 21 domain names, 20 were quickly re-registered (by multiple registrants) after they were cancelled and are being used in connection with websites that most trademark owners would consider problematic.

True, not many trademark owners request the cancellation remedy. At WIPO (the most popular UDRP service provider), only 1.69% of all cases have resulted in cancellations. But, the number of cancellations is on the rise, reaching 2.16% in 2015 and 2.09% in 2016.

What explains this (slight) increase in cancellations? One reason could be the arrival of cybersquatting in the "new" gTLDs. For example, some recent UDRP decisions that resulted in cancellations involved the top-level domains .support, .xin, .engineer, .istanbul, .host, .accountant and .bid. Perhaps the prevailing trademark owners felt that these domain names would not be attractive to other cybersquatters after they were cancelled.

Whatever the reason, trademark owners should think long and hard about whether to request the cancellation, rather than transfer, of a disputed domain name in a UDRP proceeding. It would seem that a domain name worth pursuing is worth keeping.