Why 'Generic' Domain Names are Inappropriate for UDRP Complaints

A domain name that contains only a common or "dictionary" word (sometimes referred to as a "generic domain name" -- though not to be confused with a generic top-level domain) is often a poor candidate for a UDRP complaint, as decisions repeatedly remind us.

Here are some reasons why UDRP decisions involving a single, common word are won by the registrant. That is, the trademark owner who filed the complaint lost, and the registrant was allowed to retain the domain name.

The Complainant lacks trademark rights.

Example: In Inter123 Corporation v. Lawrence darwish / urbbana, NAF Claim No. 1557370, the Complainant argued that it tried unsuccessfully to purchase the disputed domain name <mobile.co> from the Respondent, and that the Respondent reneged after agreeing to sell it for $59,000. The Respondent said that the dispute was not appropriate for the UDRP and that "pending legal proceedings... involve the same issue."

The UDRP Panel found that the Complainant's trademark applications were only pending; were subject to "resistance" and chosen because they were "entirely apt to describe the character of the [Complainant's] services"; and that the Panel was "not able to conclude that Complainant has common law trademark rights." As a result, the Complainant failed the threshold requirement of every UDRP complaint.

The domain name doesn't target the Complainant.

Example: In Barium AB v. CDN Properties Incorporated, WIPO Case No. D2014-1541, the Complainant was a Swedish company that owned the domain name <barium.se>. The Respondent used the disputed domain name <barium.com> to "host[] advertising links" and in the UDRP proceeding referred to "the generic character of the word 'Barium' being a chemical element of the Mendeleev Periodic Table of Elements No. 56 with the 'Ba' code as well as the Latin name for the southern Italian city Bari."

In its decision, the UDRP panel said that it was "unable to find that the Respondent was aware of the [Complainant's] Trademark and/or the Complainant's business when it registered the disputed domain name" and that it was "also unable to find that the Respondent is trying to take advantage of the Trademark in order to draw traffic to its website, especially considering the fact that the disputed domain name does not appear to have been used to offer goods or services which are similar to or compete with the Complainant's services."

The Respondent's domain name registration predates the Complainant's trademark rights.

Example: In Kite Solutions, Inc. v. Brandon Abbey / Escrow.com, NAF Claim No. 1609855, the Complainant claimed that it owned a federal trademark registration for the word KITE for use in connection with "software as a service platform through which parties can identify opportunities to collaborate, find solutions, and implement advertising and marketing campaigns." The Respondent argued that it had registered the disputed domain name <kite.com> 20 years earlier and had been leasing it to an engineering company.

The UDRP panel found that the Respondent had rights or legitimate interests in the domain because "use of the KITE mark and the original registration of the domain name predate Complainant’s rights in the mark."

The dispute is outside the scope of the UDRP.

Example: In Insolvency Services Group, Inc., As Assignee for the Benefit of Creditors of BIDZ.COM, INC. v. Leon Kuperman / LGK Consulting, NAF Claim No. 1580768, the Complainant argued that the disputed domain name <bids.com> was confusingly similar to its "BIDZ.COM mark." The Respondent argued that the "dispute is outside the scope of the UDRP, involving a complex business history."

The UDRP panel, noting that even the Complainant had stated the dispute was with a former employee, said, "many issues have been raised which would require proof more suited to the thorough scrutiny afforded in litigation" and concluded that it was "a business dispute that falls outside the scope of the UDRP," allowing the Respondent to retain the domain name.

As these decisions demonstrate, a Complainant that wants to obtain a domain name containing only a single, common word may face numerous obstacles in a UDRP proceeding. Therefore, a Complainant would be wise to reconsider whether the UDRP process is appropriate for such a dispute.

8 Easy Ways to Protect Your Domain Name

A domain name can be one of a company's most valuable assets. So, whether you've been using your domain name for years or have just acquired it, you should obviously be sure to protect it -- to ensure that you don't lose it due to oversight, deception or illegal activity.

Here are eight simple things every domain name owner should do to protect itself online:

1. Be sure your domain name is registered to the property entity. Typically, a domain name containing a company's trademark should be registered to the same company that owns the trademark (or, at least a company licensed to use the trademark). Allowing an individual to register a company domain name in his or her own name is asking for trouble when the individual stops working at the company, becomes involved in a dispute with the company, etc.

2. Use a reputable registrar. Many large companies work with "corporate registrars" (such as MarkMonitor) that manage domain names excellently. But if you use a "retail registrar" (such as GoDaddy or Network Solutions), be sure to choose one that is well-known, has been in business a long time, is responsive to customers and, perhaps, located in your country. Saving a few dollars on a domain name registration is short-sighted if you need help later and can't get it -- or, if your registrar goes out of business.

3. Lock your domain name.  It's very easy to "lock" a domain name -- a simple setting typically found on a registrar's domain name management page -- and doing so prevents a domain name from being transferred to another registrant or registrar until the domain name is unlocked.

4. Use a strong registrar password and protect it diligently.  This should be treated with as much care as a password for an online bank account or any other highly sensitive website. Failing to do so could allow someone else to access your domain names -- which they could unlock and transfer behind your back.

5. Go ahead and register (or renew) your domain name for the longest period possible. Many domain names can be registered for up to 10 years, and doing so now makes it less likely that your domain name will lapse simply because you forgot to renew it.

6. While you're at, choose your registrar's "auto renew" option so your domain name registration should renew before it expires. Just be sure you always keep a current payment method (or two!), such as a credit card, on file; and update your payment information when your credit card expires.

7. Be smart about the contact information you provide in your registration, and keep it current. For example, consider using different contacts for the "registrant," "admin" and "tech" contacts, so your registrar will have multiple ways to reach you. And don't use an e-mail address containing the domain name that is the subject of the registration -- if there's a problem with the domain name, then your registrar might not be able to contact you at that e-mail address.

8. Be aware of domain name scams. Unfortunately, unscrupulous registrars and other bad guys online often try to trick domain name registrants into paying unnecessary fees or to transfer their domain names unknowingly. When in doubt, delete or ignore suspicious e-mails about domain names and contact your registrar directly with any questions or concerns.

Following these eight steps will help to avoid many of the problems that can arise with domain name registrations, eliminating costly (and sometimes fatal) disruptions in business.

Domain Name Dispute Filings Rise as New gTLDs Launch

Buried in a recent WIPO press release was news that "cybersquatting case filings" increased 2 percent in 2014, to 2,634 cases. This spike, although only slight, is especially interesting because it follows a year in which the number of cases had declined by about 10 percent.

The 2014 increase may be attributable to two factors related to ICANN's new global top-level domain (gTLD) program:

• First, the distractions and expense associated with the application and objection process that consumed much of trademark owners' time in 2013 has now passed.
• Second, the actual launch of some new gTLDs has created more opportunities for cybersquatting that brand owners are pursuing.

As a result, the number of domain name dispute filings may continue to rise in 2015 and could even surpass WIPO's peak in 2012, when 2,884 cases were filed.

Indeed, if filings under the new Uniform Rapid Suspension System (URS) -- which applies to the new gTLDs -- are included, the increase this year could be significant. However, because WIPO does not accept URS filings (the only providers are the National Arbitration Forum (NAF) and the Asian Domain Name Dispute Resolution Centre (ADNDRC)), WIPO's statistics will not convey the complete picture.

Interestingly, while .com remains the most popular TLD in domain name disputes, a number of the new gTLDs already are showing up in UDRP cases. For example, in 2014, 36 .email domains were represented in WIPO UDRP filings, as well as 20 .club domains, 11 .clothing domains and 11 .company domains. So far in 2015, .email and .club remain among the most popular new gTLDs in UDRP proceedings.

Some Domains Are Full of Junk

So, you know the expression, "When you're holding a hammer, everything looks like a nail"? Apparently, the same is true when you're a domain name attorney. Sometimes, it's easy to forget that the word "domain" existed long before the Internet (which, itself, hasn't really been with us for too long).

The Merriam-Webster dictionary includes 10 definitions for "domain" -- beginning with "complete and absolute ownership of land" and covering such obscure (to me) entries as "any of the small randomly oriented regions of uniform magnetization in a ferromagnetic substance." The tenth and last entry relates to Internet domain names.

In law school, I studied "eminent domain" -- the right of a government to take private property for public use.

And, in a classic episode, the characters on the Seinfeld television show tried to become masters of their domains. (Consult the Urban Dictionary, if necessary.)

Still, I automatically think of the Internet when I hear the word "domain," since I've been working in this area of the law for more than 17 years

But a recent encounter reminded me yet again that the word has other meanings -- as the accompanying advertisement to "Reclaim Your Domain" makes clear. When I saw that headline, the first thing I thought of was the UDRP -- the Uniform Domain Name Dispute Resolution Policy. (Never mind that the ad was posted inside a restaurant restroom.)

But, as the ad from Junk King declares, this company's services take place entirely offline: "a full range of junk removal services."

Well, considering all of the junk that exists on the Internet, maybe these two domains aren't entirely unrelated after all.

(One more thought before I go. It's too bad that Junk King hasn't cleaned up its own [Internet] domain problem: The company uses junk-king.com (with a hyphen), while junkking.com (without a hyphen) is registered to someone else.)

What Happens When Mark Zuckerberg Wants to Buy Your Domain Name

By Doug Isenberg Question: How much is a domain name worth?

Answer: Whatever someone is willing to pay for it.

Really, I'm not being facetious. I've told clients and others the same thing many times. Because, unlike almost every other type of property and asset, domain names are unique, and their resale prices vary wildly.

So, one of the most difficult things to know in the sale of any domain name is what a prospective buyer is really willing to pay.

Take, for example, the recent sale of the domain name <internet.org>. According to a Bloomberg news article, the domain name was sold by a Denver entrepreneur who had registered it in 1993 -- forever ago.

Only after the sale, which apparently was made via a domain name broker, did the seller find out that the buyer is a partnership of top Internet companies led by Facebook's Mark Zuckerberg, whose net worth was recently estimated by Forbes at $16.1 billion.

So, how much did the previous owner of <internet.org> get for the domain name? He only told Bloomberg that it was "far less than $1 million."

Had the seller known that the buyer was backed by a multi-billionaire, perhaps the price would have been much higher.

On the other hand, knowing when to sell a domain name reminds me of that timeless advice about knowing when to sell a stock: "Bulls make money, bears make money, pigs get slaughtered."

Still, in many high-priced domain name transactions, a seller should conduct due diligence about a buyer, because the true value of a domain name cannot be ascertained in the abstract. Well-known buyers in such transactions, however, will understandably do their best to conceal their identity.

So, what's the best way to figure out what a domain name is really worth? If you're a seller, sell it. If you're a buyer, buy it.

(Update: "The Domains" blog has more details about how the <internet.org> domain name transaction occurred, "Internet.org Acquired By Zuckberberg From Domain Investor After He Owned It For Just One Month".)

Attention, New York Times: Renew Your Domain Name. Now

By Doug Isenberg As widely reported, The New York Times website was apparently "hacked" by the Syrian Electronic Army, resulting in widespread outages and warnings within the newspaper to its reporters to avoid sending sensitive e-mail.

The attack appeared to be at one of the highest levels in a website's food chain -- the domain name record itself (in this case, nytimes.com). One large and reputable corporate registrar said that the domain name was "breached and redirected."

Putting aside the issue of how the attack could have happened, I'm amazed by what I saw when I looked at the domain name record itself, that is, the "whois" database. A day after the hacking -- after The New York Times website had recuperated (though not fully) from the attack -- I saw that the nytimes.com domain name is due to expire on January 20, 2014. Less than four months from today.

Many large organizations (including Microsoft and the International Olympic Committee) have failed to renew their domains, as I have previously noted. So, why take a risk with any domain name and allow it to get dangerously close to expiration before renewing it?

Registrars typically offer registrations and renewals for up to 10 years, so there's really no reason to let a domain name linger with less than a year until expiration.

It's cheap, easy and smart to renew an important domain name -- actually, any domain name you want to keep -- long before the expiration date approaches. Renewing a domain name today can avoid problems -- including legal issues -- tomorrow, or a few months from now. That shouldn't be news to anyone, including The New York Times.

Is a Cheap, Computer-Generated UDRP Complaint a Good Idea?

By Doug Isenberg If you could pay several hundred dollars (or even less) for something that often costs thousands of dollars, should you do so? The answer, of course, is, "it depends." It depends on whether the items are truly comparable -- or, is one merely a cheaper imitation of the other?

This is true not only when shopping for consumer goods and services, but also for legal services -- even (and, perhaps, especially) in the area of domain name disputes, including the Uniform Domain Name Dispute Resolution Policy (UDRP).

Domain Name Wire, a popular blog for domainers, recently wrote about a $499 service from a company called Domain Skate. The service -- on sale "for a limited time" for only $399 -- is advertised as a "proprietary web application to prepare and file your own UDRP complaint, quickly and hassle-free."

While the service may sound appealing, Domain Name Wire issued this caution: "The ideal customer for DomainSkate is someone who hasn’t filed a UDRP before. Which is exactly the type of company that needs a lawyer, since they’re less likely to understand the requirements of winning a case."

True, many services that once required a lawyer are now being offered by companies online via automated processes. As a law professor just pointed out in The Wall Street Journal, companies such as LegalZoom and RocketLawyer represent "the most significant recent dislocation in the practice of law."

Some legal services -- like drafting incorporation documents or a basic will -- may be well-suited to computer-generated documents. But the UDRP is an arbitration process with plenty of nuances.

While a form UDRP filing may work some of the time, it's also possible to create more problems than it solves. In previous UDRP cases apparently involving form documents, panels have criticized "the apparent carelessness" of the parties; called a complaint "poorly drafted and difficult to read"; and ruled against a party on a critical issue after it ignored "a second opportunity" to respond to an order.

Although many UDRP cases raise similar issues, the facts of every case obviously are different. Plus, many issues can arise after a complaint has been filed -- issues that no form generator can address. For example, a change in the registrant's identity post-filing may require an amendment, with additional research on the newly identified entity. A request to change the language of the proceeding may require an interpretation of the relevant precedent. A response of any kind may raise the possibility of a supplemental filing, based on the issues set forth in the response. An offer to settle must be evaluated on numerous factors. And the list goes on.

Only a human being -- ideally, one with significant relevant experience -- can make the judgments necessary to handle all of these issues.

When shopping for domain name legal services, like anything else, let the buyer beware.