Shortly after I recently wrote about WIPO's new role as a domain name dispute provider for the .eu ccTLD, the Forum published its first decision on another type of "eu" domain name: eu.com.
I've said many times that winning a domain name dispute under the URS is much more challenging than under the UDRP. But, that doesn't mean trademark owners should take the UDRP for granted. One complainant learned that lesson an especially hard way – first by losing a URS determination and then by losing a UDRP decision on the same domain name.
WIPO, the leading provider of domain name disputes under the UDRP, has been appointed as a service provider for .eu disputes, as of June 1, 2017. Previously, the only provider of dispute services for the .eu top-level domain was the Czech Arbitration Court (CAC) -- also a UDRP provider -- which has handled about 1,200 .eu disputes since 2006.
The Uniform Domain Name Dispute Resolution Policy (UDRP) is certainly the most frequently used tool to combat cybersquatting -- but, it is not always an option. Many countries have adopted their own domain name dispute policies -- or none at all -- in lieu of the UDRP.
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 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.
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)."
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:
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:
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:
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.
The Uniform Rapid Suspension System (URS) is designed to get a domain name suspended, but in some cases this dispute policy can be used to help get a domain name transferred. It's an uncommon result but one that trademark owners may want to keep in mind. The suspension remedy is often viewed as the greatest limitation of the URS. Trademark owners that want to have a domain name transferred typically file a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) instead of the URS -- but, the UDRP is more expensive and time-consuming.
Still, in some cases, trademark owners have been able to obtain the transfer of a domain name as the result of a URS proceeding. While the URS itself doesn't provide for a transfer remedy, the issue can arise if a trademark owner and domain name registrant agree to a transfer after a URS complaint has been filed but before a determination has been issued.
In other words, a settlement under the URS can result in the transfer of a disputed domain name.
Settlements under the UDRP are not uncommon, but doing so under the URS is much more unusual and challenging, largely because of the expedited nature of URS proceedings.
While URS case files are not made public, it's interesting to note that a number of URS complaints have been withdrawn and the disputed domain names are now registered by obvious trademark owners -- a likely indication that the parties settled their disputes.
Indeed, at the Forum (the largest provider of URS services), 37 of 685 complaints -- about 5.4% -- have been withdrawn. In two cases withdrawn earlier this year, for <interbrand.design> and <astonmartin.forsale>, the current registrants are, respectively, Interbrand Group and Aston Martin Lagonda, which own the respective trademarks.
A trademark owner that wants to use the URS to encourage a transfer needs to act quickly, given that URS proceedings typically result in a determination within about three weeks of filing a complaint.
The URS rules anticipate the possibility of a settlement between the parties. Rule 16 of the URS states: "If, before the Examiner's Determination, the Parties agree on a settlement, the Examiner shall terminate the URS proceeding." And the Forum's Supplemental Rule 7 outlines a process where the parties can request a one-time stay of up to 45 days -- a pause in the URS proceeding that the parties can use to negotiate or perhaps even implement a settlement such as a transfer of the disputed domain name.
Of course, if a trademark owner can obtain the transfer of a disputed domain name as the result of filing a URS complaint, then it likely will have done so less expensively and more quickly than if it had filed a UDRP complaint.
But, given the relatively low number of URS proceedings that have been withdrawn (and not all withdrawals have been accompanied by transfers), the URS is primarily most effective only for its intended purpose, that is, domain name suspensions. Still, a URS-related transfer is an intriguing exception to the rule.
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The GigaLaw Firm helps companies of all sizes protect their brands online, using domain name dispute policies – such as the Uniform Domain Name Dispute Resolution Policy (UDRP) – and other legal tools available to copyright and trademark owners on the Internet.
