The Uniform Domain Name Dispute Resolution Policy (UDRP) may be the best and most popular way for trademark owners to fight cybersquatters – but it’s not the only option. In fact, a domain name dispute filed by a large law firm on its own behalf provides a good lesson about the pros and cons of going to court instead of filing a UDRP complaint.
The case — which I discuss in a new video on YouTube — involves Debevoise & Plimpton, a New York-based law firm with 800 attorneys in nine offices across three continents.
In October 2021, the firm found itself to be the victim of a cybersquatter. While the firm uses the domain name <debevoise.com>, a cybersquatter was using the domain names <debevoise-law.com> and <debevoise-laws.com>, which were registered in September and October 2021. According to a magistrate judge’s report in a lawsuit filed by Debevoise, one of the domain names was being used in connection with a landing page filled with ads for legal services, while the other domain name was used to send phishing emails imitating a partner at the firm.
Although, as I have discussed before, an increasing number of law firms are being targeted by cybersquatters and filing UDRP complaints on their own behalf, Debevoise chose a different path here and instead filed a complaint under the Anti-Cybersquatting Consumer Protection Act (ACPA).
On the one hand, the ACPA route seems to make sense, because Debevoise obtained a preliminary injunction — something not available under the UDRP — in only three days.
But, the ACPA has some limitations compared with the UDRP, as I discuss in the video:
UDRP complaints typically involve only a single filing and are limited in time and, therefore, are often less expensive than the ACPA.
UDRP complaints are filed online at any of six ICANN-approved UDRP service providers, but ACPA complaints must be filed in court (specifically, for “in rem” complaints, in the U.S. District Court for the Eastern District of Virginia), which is not always convenient.
UDRP complaints are typically resolved in about two months, but ACPA proceedings can take much longer. In the Debevoise case, although the firm quickly obtained a preliminary injunction, it took about eight months to receive a final judgment.
While ACPA or trademark complaints in federal court may be appropriate for some trademark owners, the UDRP remains the best option in most cases because it is quick, inexpensive and relatively simple.
