WIPO’s UDRP ‘Overview’ Gets Bigger (and Better)

WIPO’s UDRP ‘Overview’ Gets Bigger (and Better)

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."

A Lesson from the EPA in Domain Name Disputes

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)."

Dot-Com is Still King -- of Domain Name Disputes

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:

  • .xyz
  • .top
  • .club
  • .online
  • .vip
  • .store
  • .website
  • .cloud
  • .site
  • .space
  • .shop
  • .lol
  • .date

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:

 

  • Trademark owners care more about .com domain name registrations and how they are being used. While new gTLDs are bothersome to many trademark owners, their limited appeal makes them less important to dispute.

Why Cancel a Domain Name in a UDRP Case?

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:

  • The least amount of money that a trademark owner could expend on a UDRP complaint is about $500 -- if it files at the Czech Arbitration Court (the least expensive UDRP service provider) and prepares the complaint itself, without outside counsel. (In reality, most UDRP complaints incur total expenses of thousands of dollars.)
  • A popular registrar such as GoDaddy charges about $15 per year to renew a .com domain name.
  • Therefore, a trademark owner could maintain a transferred domain name for more than 30 years for less than the cost of filing the cheapest possible UDRP complaint.

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 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.