Although the overwhelming majority of domain name dispute decisions won by trademark owners result in transfers of the disputed domain names, the Uniform Domain Name Dispute Resolution Policy (UDRP) includes an alternative remedy that occasionally arises: cancellation of the disputed domain name.
Specifically, paragraph 4(i) of the UDRP provides:
The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of your domain name or the transfer of your domain name registration to the complainant.
Paragraph 3(x) of the UDRP Rules requires a trademark owner filing a complaint to “[s]pecify… the remedies sought” — that is, cancellation or transfer.
Although I have never requested cancellation of a domain name in a UDRP complaint (and, for the reasons discussed below, I cannot imagine ever doing so), every now and then a case results in cancellation. At WIPO, the largest UDRP service provider, only 33 UDRP decisions (out of 3,216) resulted in cancellations in 2019.
And at the Forum, the second-largest UDRP service provider, only two decisions (out of 1,562) resulted in cancellations in 2019.
Why Not to Request Cancellation
So, why is cancellation such an unpopular remedy in UDRP cases? I think the answer is simple: Because cancelled domain names can be registered anew by anyone, a trademark owner that has incurred the expense of a UDRP proceeding is better off keeping the disputed domain name for itself if it prevails (by requesting transfer of the domain name) than risk having someone else pick it up. (A trademark owner can simply redirect the domain name to its own website or, if it prefers, set the nameservers so it does not resolve to an active site at all.)
Given that a trademark owner can maintain a domain name at a retail domain name registrar for about $10 per year, this seems like a small price to pay when compared with a typical UDRP filing fee of $1,500 (plus legal fees, if outside counsel is involved).
Indeed, of the two Forum cases last year that resulted in cancellations, one of the disputed domain names is currently registered again, apparently having been acquired about two months after the decision. So, the trademark owner who won the UDRP case now faces the prospect of having to file (and pay for) another complaint if it wants to keep the domain name from being used in a problematic matter.
And, in at least one UDRP decision at WIPO last year, a cancelled domain name was later registered by the complainant itself — which, I can only guess occurred after the trademark owner regretted not having requested a transfer remedy in the first place.
Why Cancellations Sometimes Occur
In light of these reasons not to request cancellation, why do some trademark owners do so? In some cases, I think they are just ignorant of the reality, wrongly assuming that cancellation will permanently keep a domain name off the market. In other cases, complainants may gamble that a domain name once “tainted” by a UDRP decision will not appeal to another cybersquatter in the future.
And in yet other cases, a trademark owner may not want to maintain a domain name if it contains a third party’s trademark in addition to its own. For example, in a UDRP dispute brought by BMW, the car company requested (and obtained) cancellation of a domain name that contained both the BMW and AUDI trademarks.
In rare cases, panels have even ordered domain names containing two trademarks cancelled even though the complainant requested a transfer, as in a dispute involving the domain name <incasemacbook.com>. In that unusual decision, the panel ordered cancellation rather than transfer (as had been requested by Incase Designs) because “there is no evidence before the Panel that Apple, Inc. would consent to the remedy of transfer the Disputed Domain Name to the Complainant.” (Interestingly, Incase Designs appears to have registered the domain name for itself shortly after cancellation.)
Despite these outlying cases, cancellation of a domain name in a UDRP proceeding remains — as it should — an unpopular remedy that trademark owners should rarely, if ever, consider.
