Cancellation has always been a very unpopular remedy under the Uniform Domain Name Dispute Resolution Policy (UDRP), and my analysis of last year’s cancelled domain names shows why I think trademark owners should never pursue this result — as I explain in a new YouTube video.
As GigaLaw’s Domain Dispute Digest shows, the overwhelming majority of all UDRP decisions result in orders to transfer the disputed domain names to the trademark owners who filed the complaints. In the second quarter of 2022, for example:
More than 95 percent of all cases ended up with transfer decisions.
Only a little more than 4 percent were denied.
But that means there was a small sliver of decisions, about 1 percent, in which trademark owners essentially won their cases but saw the disputed domain names cancelled instead of transferred.
The UDRP specifically allows a trademark owner to elect one of these two remedies when it files a complaint. As set forth in paragraph 4(i) of the UDRP:
The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of [a] domain name or the transfer of [a] domain name registration to the complainant.
But in reality, few trademark owners choose cancellation, and, frankly, it’s never once been a remedy that I’ve recommended for any of my clients in more than 20 years of handling domain name disputes. That’s because my perspective is that any domain name worth pursuing through the UDRP is worth obtaining, if for no other reason than to keep it out of the hands of a future cybersquatter.
I know that many of my clients already have large domain name portfolios, sometimes numbering in the thousands, and they’re really not interested in adding more domain names to the mix, especially because every domain name has to be managed and renewed with an annual registration fee.
But, as I have always cautioned, there’s a risk in cancelling – instead of transferring – a domain name, because a cancelled domain name simply becomes available for registration again by anyone. Which means that the time and expense incurred by a trademark owner in filing a UDRP complaint may have to be repeated if the domain name is picked up by another cybersquatter.
And that’s exactly what my analysis shows.
I took a look at all of the domain names that were cancelled via UDRP decisions last year, in 2021, and – although there weren’t many of them – I found that as of this recording, in August 2022, about 38 precent of them were being used in some way, which indicates these domain names were re-registered even after they were cancelled as the result of UDRP proceedings.
In my video, I show exactly how these previously cancelled domain names are now being used.
Given the frequent re-registration of domain names cancelled under the UDRP, I really just don’t understand why a trademark owner would incur the time and expense of filing a UDRP complaint and seek any remedy other than transfer of the disputed domain names. I have to wonder if some trademark owners are under the mistaken belief that cancellation means a domain name will be permanently suspended, but that’s not the case. A cancelled domain name simply means that the current registration is cancelled, but the domain name then becomes available again for registration by anyone.
