In this case study video, I talk about the unusual remedy of “cancellation” (instead of “transfer”) in decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP).
As I explain, about 95 percent of all UDRP cases are decided in favor of the trademark owners that file complaints against cybersquatters, but not every winning decision results in an order transferring the disputed domain names. In some cases, UDRP panels order that a disputed domain name be cancelled instead of transferred.
A trademark owner can choose when filing a complaint whether it wants to have the domain name transferred or cancelled. If a trademark owner elects to have a domain name cancelled instead of transferred, then the registrar will do just that – cancel the domain name registration after the waiting period expires.
After a domain name has been cancelled, it will become available for registration again by anyone, subject only to whatever rules, if any, might apply to the specific top-level domain in which it was registered. In the case of .com domain names, which make up the majority of UDRP disputes, a cancelled domain name will be available again on a first-come, first-served basis, allowing another cybersquatter (or even the same losing cybersquatter) to pick it up at any time.
For this reason, cancellation seems like a poor remedy for a UDRP case. As I often tell my clients, if you go to the time and expense of filing a UDRP complaint, you might as well seek a transfer of the domain name even if you don’t want to use it, simply to keep it off the market and out of the hands of future cybersquatters. Otherwise, you might find yourself in the same position again and have to decide whether to incur the additional time and additional expense of filing yet another UDRP complaint for the same domain.
In this video, I provide more details about the cancellation remedy and discuss a number of UDRP cases in which it has been applied.
In any event, I can’t think of a case in which I would recommend filing a UDRP complaint to seek the cancellation of a domain name, because transfer always seems to be the better option.
