Is the DMCA an Effective Way to Take Down Infringing Content?

As promised at an end-of-the-year (2015) announcement, the U.S. Copyright Office has now launched a comment submission process about the "safe harbor provisions" of the Digital Millennium Copyright Act (DMCA). The DMCA is often used by copyright owners to get infringing content -- images, text, videos, music, even software -- removed from problematic websites.

Section 512 of the DMCA, commonly referred to as the "safe harbor" or "take-down" provision of the law, provides an incentive for "service providers" such as website hosting companies and online publishers (including those who accept user-generated content) to remove infringing content posted by their customers under certain circumstances, including a proper notice from the copyright owner.

Since the arrival of the DMCA in 1998, website operators can avoid liability for their customers' infringing activities if, among other things, they appoint an agent to receive notices and "expeditiously... remove, or disable access to, the material that is claimed to be infringing."

Through the years, Section 512 of the DMCA has been both praised and criticized by just about everybody -- copyright owners, website operators, publishers, bloggers and more.

There's no doubt that Section 512 is frequently invoked by copyright owners. For example, Google has reported that it receives 2.2 million take-down notices every day.

But also, a controversy over music in a personal video on YouTube has been litigated for years, with the U.S. Court of Appeals for the Ninth Circuit ruling last year that copyright owners must consider the "fair use" doctrine before submitting a take-down notice.

A lot has changed since the DMCA was enacted 18 years ago. Indeed, in a Federal Register notice about the comments, the Copyright Office said:

Today, copyright owners send takedown notices requesting service providers to remove and disable access to hundreds of millions of instances of alleged infringement each year. The number of removal requests sent to service providers has increased dramatically since the enactment of section 512....

While Congress clearly understood that it would be essential to address online infringement as the internet continued to grow, it was likely difficult to anticipate the online world as we now know it...

As a result, website operators can become overwhelmed with take-down notices while copyright owners of all sizes often find the process unpredictable and frustrating.

So, the Copyright Office wants to know (among many other things):

• Are the section 512 safe harbors working as Congress intended?
• How effective is section 512’s notice-and-takedown process for addressing online infringement?
• Does the notice-and-takedown process sufficiently address the reappearance of infringing material previously removed by a service provider in response to a notice?
• How effective is the counternotification process for addressing false and mistaken assertions of infringement?

The Copyright Office is accepting comments on these and other questions until March 21, 2016. The answers it receive could shape the future of fighting infringement on the Internet.

However, unless and until anything changes, copyright owners and website publishers will continue to rely on the DMCA's notice and take-down provisions as a popular method for coping with infringing content online.

When Companies Merge, Cybersquatters Emerge

Big corporate mergers sometimes create big domain name headaches. Aside from increasing the burden and expense of managing a potentially extra-large portfolio of domain name registrations, a prominent merger can alert cybersquatters about new opportunities. This is especially true when the merger is -- as is usually the case -- announced before completion and when the deal is quite large.

For example, the recently announced $15.4 billion deal between Newell Rubbermaid and Jarden will, as The Wall Street Journal reported, combine such high-profile brands as Sharpie markers and Baby Jogger strollers with Rawlings baseball gloves and Mr. Coffee machines. And the $16.5 billion deal between Johnson Controls and Tyco will bring together prominent brands from the automotive and HVAC industries with security and fire-suppression products.

Big corporate mergers are nothing new, of course. But companies are wise to consider important domain name issues as a part of the process.

Many well-known companies have failed to register domain names that contain obvious trademark combinations created by a merger. In many cases, the companies resorted to filing complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP) to obtain control of those domain names:

• Before Chevron and Texaco announced that their merged company would be known as "ChevronTexaco," a cybersquatter registered the domain names <chevrontexaco.info> and <chevrontexaco.org>. In finding that the registrant acted in bad faith, the UDRP panel wrote: "Despite Respondent’s protestations that it had no idea that Complainant was going to choose the name CHEVRONTEXACO for its merged company, Respondent admits that it was fully aware that both marks were registered trademarks of the Complainant. Further, proof submitted by Respondent shows that he closely monitored and was fully aware of the merger activities of the Complainant, and of the likelihood that CHEVRONTEXACO would be used as Complainant’s name and mark."

• On the same date that information leaked about a merger between Thermo Electron and Fisher Scientific, a cybersquatter registered the domain names <thermofisherscientific.com> and <fisherthermo.com>. In their UDRP complaint, the companies argued that the registrant of the domain names was "opportunistically engaged in bad faith registration," and the panel agreed -- calling the timing of registration "a compelling indication of bad faith."

• Not all merger-related domain name issues involve well-known global corporations. In 2005, according to a UDRP decision, the Nordic media "widely reported" that a company in Finland known as Orion Corporation  "planned to demerge into two separate companies, one of which would be Oriola-KD Corporation" -- which promptly encouraged one cybersquatter to register the domain name <oriola-kd.com>. The UDRP panel said the domain name registration was nothing more than "an opportunist act by an alert entrepreneur with a view to making a profit."

These same issues arise not only during corporate mergers but also when information about highly anticipated products is leaked. For example, a cybersquatter registered the domain name <amazonfirephone.us> only "days after publication of an article on the tech website BGR under the headline, 'Insider reveals launch timing and specs for mysterious Amazon smartphone,' and the same day on which Complainant filed applications to register the trademark AMAZON FIRE with the USPTO [U.S. Patent and Trademark Office]."  (Disclosure, I represented Amazon.) The dispute panel called this "opportunistic bad faith."

While all of these disputes ultimately resulted in transfers of the relevant domain names to their trademark owners, the legal proceedings created expenses and delays.

Of course, it's impossible to anticipate every possible trademark combination, typo and top-level domain name that will lead to a dispute; so, it's impossible to avoid every potential cybersquatting problem created by a merger or new product. Fortunately, when those problems inevitably arise, trademark owners can use the UDRP and other dispute policies to reclaim their domain names.

WIPO Domain Name Dispute Filings Rise 4.5% in 2015

The number of domain name complaints climbed by 4.5 percent in 2015, reaching the third-highest level since the launch of the Uniform Domain Name Dispute Resolution Policy (UDRP) in 1999. Although the total number of disputed domain names in those complaints actually dropped -- by more than 22 percent -- the decrease was largely due to one unusually large case in 2014 (a single eBay dispute with 1,152 domain names) that skewed the numbers. As a result, the average number of domain names per complaint decreased to 1.58 from 2.13.

These statistics are from the World Intellectual Property Organization (WIPO), the largest of the four ICANN-accredited domain name dispute providers. (As I've noted before, the other providers -- the Forum, the Czech Arbitration Court and the Asian Domain Name Dispute Resolution Centre -- don't provide the same type or frequency of filing data.)

The increase in the number of complaints filed at WIPO is consistent with current trends, as both WIPO and the Forum reported a steady or slight increase in filings the previous year. The total number of domain name disputes at WIPO has been rising (though not consistently) since 2003.

Importantly, the WIPO statistics do not include filings under the Uniform Rapid Suspension System (URS), which applies to the new top-level domains. (That's because WIPO is not a URS service provider.) Perhaps some trademark owners selected the URS over the UDRP, a factor that actually may have kept the number of UDRP filings from increasing even more than 4.5 percent.

Here are a few other data points from domain name dispute filings at WIPO last year:

• The number of .com domain names dropped significantly, from 3,341 the previous year to 2,732. Still, .com remains by far the most popular TLD in a domain name dispute. (With 262 disputed domain names, .net placed a distant second.)
• At 62 disputed domain names, .xyz represented the new gTLD that appeared most often in a UDRP complaint. (The .xyz domain became popular because of an early free-registration program, and Google's new parent company, Alphabet, brought attention to it by registering abc.xyz.)
• Other popular new gTLDs that were subjected to UDRP complaints included .club (24 domain names), .email (20), .website (15), .online (15), .pub (13), .moscow (11) and .paris (10).

Although the limited popularity of most new gTLDs and their staggered launch dates probably means it's too early to know what impact they'll ultimately have on the dispute system, it's clear that domain name disputes overall are on the rise.

In any event, the increase in UDRP complaints indicates that trademark owners must remain vigilant about protecting themselves online, because cybersquatting remains a problem.

'Adult' Domains Pose New Challenges for Trademark Owners

The launch of new adult-related top-level domains is reminiscent of the early days of cybersquatting, when domain name registrants created pornographic websites that contained trademarks owned by well-known brands. The new TLDs -- .adult, .porn, .sex and .sexy -- pose new threats for trademark owners online, especially for those who don't want their brands associated with the adult industry.

(To be clear, by "adult," I am referring here of course not to the definition of the word as "fully developed and mature" but instead to the definition as "dealing in or with explicitly sexual material.")

Already, cybersquatters using the new adult TLDs have begun to target trademark owners online -- and, in some cases, the trademark owners are fighting back.

For example, complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Uniform Rapid Suspension System (URS) have been filed over the domain names <audi.sexy>, <citibank.porn>, <ibm.sexy>, <linkedin.sex> (disclosure: I represented the complainant), <marlboro.sexy> and <verizon.porn>. All of the reported decisions have been in favor of the trademark owners.

In one UDRP case, simply associating the .porn TLD itself with a well-known trademark -- even in the absence of a website using the domain name -- was sufficient for the panel to find bad faith (one of the three requirements in every UDRP proceeding). In that case, the panel wrote:

Complainant argues that Respondent’s use of Complainant’s CITIBANK mark in combination with the “.porn” gTLD tarnishes the CITIBANK mark through falsely implying that Complainant is somehow connected to the adult entertainment industry. The Panel agrees and finds that Respondent has demonstrated bad faith.

This conclusion is an unusual -- but increasingly popular -- reference to the relevance of the TLD in a domain name dispute. (See "When is the Top-Level Domain (TLD) Relevant in a Domain Name Dispute?")

Still, the <citibank.porn> decision is consistent with numerous other UDRP cases involving adult-themed websites, even before the arrival of the new TLDs. Indeed, nearly 2,000 WIPO and more than 700 Forum decisions contain the word "pornographic."

For example, in a 2005 decision involving the domain name <holidayinnmanassas.com>, one UDRP panel wrote that "[i]t is well established that using another’s well-known mark to attract Internet users to a pornographic website constitutes bad faith use of the domain name." (Disclosure: I represented the complainant.)

Another 2005 decision involved the domain name <gapclothing.info>, which was linked to  websites "displaying pornography and other adult content as well as links to other sexually explicit sites." In that case, the panel found bad faith even though it was obvious that the content was not related to the owner of the GAP clothing trademark, due to the trademark doctrine of "initial interest confusion." The panel said:

The present case involves the deliberate diversion of Internet users who intend to access a website connected to the Complainant and the taking of unfair advantage of the Complainant’s goodwill. It is the case that internet users who visit the Respondent’s website would be unlikely to be confused into believing that it was the Complainant’s website. However, in the view of the Panel and in line with other decided cases under the Policy, the deliberate creation of “initial interest confusion” and the consequent diversion of internet traffic is sufficient to establish bad faith on the Respondent’s part.

Interestingly, the new adult TLDs are not the first adult TLDs. As domain name watchers and many trademark owners know, .xxx was launched in 2011 (five years after ICANN first rejected it). But, .xxx has never proven very popular, and only 36 UDRP disputes for .xxx domain names have been filed at WIPO and the Forum in the past 4+ years. All but one of the decisions resulted in a transfer to the trademark owner.

So, if .xxx is any indication, .adult, .porn, .sex and .sexy might not create too many problems for trademark owners online. On the other hand, the existence of five adult-themed TLDs instead of just one certainly offers more opportunities for cybersquatters.

In any event, the UDRP (which allows a disputed domain name to be transferred) and the URS (which allows a disputed domain name to be suspended) are effective legal tools for any company that finds its trademarks registered in the new adult TLDs. If past decisions offer any lessons for the future, trademark owners generally should be successful in fighting these cybersquatters.

Top 10 Internet Law News Stories of 2015

For 16 years, I've tracked important Internet legal news on my GigaLaw website, and I'm still amazed at the important and interesting developments that continue to arise almost every day. While selecting the most important news from more than 1,100 items is obviously a highly subjective undertaking, I think it's clear that my top-10 list represents significant decisions, changes and impacts in Internet law for 2015. I hope you'll agree -- but, if not (or, if you think I've overlooked something vital), please let me know.

1. FCC Votes to Regulate Internet as Public Utility: The Federal Communications Commission voted to regulate broadband Internet service as a public utility, a milestone in regulating high-speed Internet service into American homes. The new rules, approved 3 to 2 along party lines, are intended to ensure that no content is blocked and that the Internet is not divided into pay-to-play fast lanes for Internet and media companies that can afford it and slow lanes for everyone else. (Source: The New York Times)

2. U.S. Delays ICANN Transition for At Least One Year: The U.S. Commerce Department delayed for at least a year its plans to give up oversight of a key component of Internet governance. The department said it would renew its contract with the Internet Corp. for Assigned Names and Numbers (ICANN) for one year. (Source: The Wall Street Journal)

3. Obama Urges More Sharing to Fight Cyber Attacks: President Barack Obama asked U.S. executives for closer cooperation in defending against hackers after high-profile attacks on companies like Sony that exposed weaknesses in America’s cyber defenses. Speaking at Stanford University, Obama told Silicon Valley and financial services CEOs that they needed to share more information more quickly both with each other and with his administration. (Source: Reuters)

4. EU Accuses Google of Antitrust Violations: The European Union’s antitrust chief formally accused Google of abusing its dominance in web searches to the detriment of competitors and began official proceedings into whether its Android smartphone software forces phone makers to favor the company’s own services and applications. “If the investigation confirmed our concerns, Google would have to face the legal consequences and change the way it does business in Europe,” said Margrethe Vestager, the European Union competition commissioner. (Source: The New York Times)

5. Court Says Copyright Owners Must Consider Fair Use in DMCA Notices: A Federal court ruling on a copyright case from the early days of YouTube could have a sweeping impact on how media companies police online video. And it could give a boost to Facebook, which is just starting to navigate the video copyright waters that Google has traversed for years. (Source: Re/code)

6. Supreme Court Reverses Conviction for Facebook Threats: The Supreme Court threw out the conviction of a Pennsylvania man convicted for making violent threats on Facebook and said the government must do more than prove that a reasonable person would find the postings threatening. Chief Justice John G. Roberts Jr. said the conviction would have held up if the jury found Anthony Douglas Elonis knew he was making a threat or should have known it would be seen that way. (Source: The Washington Post)

7. FCC Says Hotels, Others Can’t Block Wi-Fi: In a public advisory, the FCC said it is “aggressively investigating and acting” against businesses that illegally interfere with Wi-Fi. The agency’s Enforcement Bureau said it has noticed a “disturbing trend” in which hotels and other businesses block personal Wi-Fi hot spots. (Source: The National Journal)

8. Appeals Court Dismisses Google Book-Scanning Lawsuit: A federal appeals court in New York dismissed a lawsuit brought by an authors’ group that accused Google Inc. of copyright infringement over its digital copying project. A unanimous three-judge panel of the Second U.S. Circuit Court of Appeals concluded that Google’s scanning millions of copyrighted books wasn’t infringement because what the company makes viewable online is so limited. (Source: The Wall Street Journal)

9. Google Pays Record $25M for ‘.app’ Top-Level Domain: Google paid $25 million to control the “.app” top-level domain, according to the Internet Corporation for Assigned Names and Numbers, a non-profit group which maintains much of the technical plumbing of the Internet. The price is more than three times as much as the previous record for a new top-level domain, the $6.8 million paid by Dot Tech LLC in September for the “.tech” top-level domain. (Source: The Wall Street Journal)

10. Sex Cheating Network Hacked; 37 Million Users at Risk: Casual sex and cheating network Ashley Madison has reportedly been hacked, compromising the user databases, financial records, and private details of the service’s owners and 37 million users. Security researcher Brian Krebs first reported the leak, which was subsequently confirmed by Noel Biderman, the CEO of Avid Life Media. (Source: The Verge)

And, finally, here's one bonus Internet law news item from the past year, included not necessarily because it's important (though perhaps it's too early to tell) but simply because it seems like it will be published in a future edition of my young son's favorite book, "Weird But True!":

Woman Gets $32,000 Award for Suffering from Wi-Fi Allergy: A French court awarded a woman more than $32,000 in compensation for suffering wrought by an allergy to Wi-Fi, reports Britain’s The Times. It’s the first time any court has recognized the markedly modern condition as a legitimate disability, potentially setting a precedent for future claims. (Source: Houston Chronicle)

The year 2016 surely will bring many more new and important Internet law news stories. Be sure to follow all of them by subscribing to my GigaLaw email newsletter.

'Phonetic Similarities' in Domain Name Disputes

Is a domain name that sounds -- but doesn't look -- like a trademark confusingly similar to the trademark? As cybersquatters push the boundaries, it's a question that raises some interesting issues.

Traditional U.S. trademark law has addressed this topic for some time, resulting in a test often referred to as "sound, sight and meaning." As Professor McCarthy has said in his treatise on trademarks: "Marks may sound the same to the ear, even though they may be readily distinguishable to the eye."

Sound, Sight and Meaning in Trademark Cases

For example, Professor McCarthy has noted that courts have found the following trademarks confusingly similar (outside the scope of domain name disputes):

• COCA-COLA and CUP-O'-COLA
• PORSCHE and PORSHA
• SEIKO and SEYCOS
• S.O. and ESSO

Importantly, because these trademarks sounded alike (even if not exactly the same), the courts said that they were confusingly similar in part on the basis of phonetic similarity. This phonetic similarity is what became known as the "sound, sight and meaning" trilogy -- where, as described by Professor McCarthy, "the conflicting marks are to be compared with respect to similarity of pronunciation, appearance and verbal translation."

This "sound, sight and meaning" trilogy occasionally arises in domain name cases as well, where the first test for any trademark owner in a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) is to show that the disputed domain name is "identical or confusingly similar" to a trademark in which the complainant has rights.

While many, if not most, UDRP cases involve domain names that contain a complainant's trademark, or a simple misspelling (or typographical variation), in its entirety, occasionally a UDRP dispute involves a domain name that only sounds like a trademark.

Aural Comparisons in UDRP Cases

For example, in a dispute over <clicknloan.org>, Quicken Loans Inc. argued that the domain name was confusingly similar to its QUICKEN LOANS trademark -- "because of phonetic similarities." As the UDRP panel wrote:

Complainant provides documentation from the Trademark Trial and Appeal Board..., as well as information from US courts..., to show that such authorities have recognized phonetic similarities as a basis to find a likelihood of confusion. Complainant argues that the phonetic similarities between the QUICKEN LOANS mark and the phrase “clicknloan” include the number of syllables, the hard “k” sound, and the pattern of stressing syllables.

The UDRP panel agreed. Its conclusion is reminiscent of a pre-Internet trademark case (involving the marks DRAMAMINE and BONAMINE) in which a court said that "[s]light differences in the sound of similar trademarks will not protect the infringer."

The <clicknloan.org> UDRP case is not the only domain name dispute to adopt this reasoning. Indeed, the WIPO Overview states: "Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name."  (Emphasis added.)

In various decision, for example, UDRP panels have found <bunsandnoble.com> confusingly similar to the trademark BARNES & NOBLE; <onetwotrick.com> confusingly similar to the trademark ONE TWO TRIP!; and <eltour.net> confusingly similar to the trademarks L’TUR and LTUR.

In the <eltour.net> decision, the panel said that it was "prepared to accept that phonetic similarity can constitute confusing similarity for the purpose of" the first element of the UDRP and that it was "mindful of the fact that in most systems of trademark law provision exists for infringement by way of phonetic similarity."

Here Come the New gTLD Domain Name Disputes

Much of the attention on domain name disputes among the new generic top-level domain names (gTLDs) has focused on the new dispute policy that arrived with them -- the Uniform Rapid Suspension System (URS). But, an increasing number of new gTLD registrations are being decided under the pre-existing (and well-entrenched) Uniform Domain Name Dispute Resolution Policy (UDRP). Recent UDRP decisions have included domain names using the following new gTLDs: .center, .club, .international, .lawyer, .online, .rentals, .repair, .site, .wang and .xyz.

The most popular new gTLD that has been subject to UDRP disputes appears to be .xyz, which has seen 67 domain names in proceedings at WIPO. (WIPO is the only UDRP service provider that publishes real-time, extensive data on its domain name cases, so the numbers in this blog post are drawn solely from WIPO unless otherwise specified.)

Here are the top 10 new gTLDs represented in UDRP disputes thus far:

1. .xyz
2. .email
3. .club
4. .name
5. .wang
6. .company
7. .website
8. .clothing
9. .online
10. .pub

There are some explanations why as to why certain new gTLDs appear more likely to result in disputes. For example, registrations in .xyz were initially free, which made it an easy target for abuse. The .club gTLD has simply proven popular, which means disputes are inevitable. And .email attracted one particularly aggressive cybersquatter who didn't hesitate to register many well-known trademarks as domain names.

As more of the new gTLDs launch and attract attention, the list above surely will change. For example, because many trademark owners are particularly sensitive to having their brands associated with adult content, it is possible that <.porn>, <.sex> and <.sexy> will generate more UDRP disputes.

Many of the new gTLD UDRP cases involve "traditional" types of cybersquatting -- that is, where the second-level domain name is identical (not just confusingly similar) to the complainant's trademark. For example: <siemens.online>, <michelin.club>, <marlboro.site>, <choicehotels.xyz> and <capitalone.financial> -- all of which have resulted in transfer decisions.

Indeed, such flagrant instances of cybersquatting may be what's prompting some trademark owners to file UDRP, not URS, complaints. A successful UDRP complaint allows a trademark owner to obtain the transfer of a disputed domain name (while a domain name in a URS proceeding can only be temporarily suspended). Given ongoing concerns about the worthiness of the URS -- including the limited suspension remedy and the challenges in actually winning a URS case, as demonstrated by some high-profile decisions -- the UDRP may become a more popular option for trademark owners that face cybersquatting in the new gTLDs.

Still, while the new gTLDs are resulting in more UDRP proceedings, they represent only a small fraction of the total number of UDRP disputes. For example, as of this writing, the top 10 gTLDs account for 185 total domain names at WIPO in 2015. By comparison, .com disputes remain the most popular, with 2,524 domain names during the same period.

It's likely that as the new gTLDs grow in popularity, so, too, will the number of related UDRP decisions.

When a Disputed Domain Name Contains Multiple Trademarks

A domain name that includes more than one trademark raises some interesting issues in proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP). Among them: If the trademarks are owned by different entities, can a UDRP panel order the domain name transferred to one entity without consent of the other?

As one panel that addressed the issue observed, the question "does not arise frequently." The panel spent nearly half of its discussion addressing this issue, in Kabbage, Inc. v. Oneandone Private Registration et al., WIPO Case No. D2015-1507. (Disclosure: I represented the complainant.)

In that case, the panel ordered all six disputed domain names containing the KABBAGE trademark transferred to the complainant -- but only after issuing a procedural order to the parties on the multiple-trademark issue and providing a history of similar cases. The issue arose because two of the disputed domain names, <kabbage4amazon.com> and <kabbage4etsy.com>, contained not only the complainant's KABBAGE trademark but also trademarks owned by third parties (that is, AMAZON and ETSY).

Transfer Without Consent

Among the cases cited by the panel as part of the current "trend" on how to handle UDRP proceedings that involve multiple trademarks:

• Guccio Gucci S.p.A. v. Brenda Hawkins, WIPO Case No. D2013-0603: The panel ordered the transfer of numerous domain names to Gucci, including two that contained the trademark IPAD (owned by Apple), noting that "the fact that the third party trademark 'IPAD' is included in the disputed domain names <gucciipadcase.net> and <gucciipadcases.com> does not eliminate the similarity between the Complainant’s trademark and such domain names." The panel didn't discuss Apple's lack of participation in the proceeding other than to note that its decision to transfer the domain names was "without prejudice to any rights that might be asserted by Apple Inc."

• Decathlon SAS v. Nadia Michalski, WIPO Case No. D2014-1996: In ordering transfer of the domain name <decathlon-nike.com> to the owner of the DECATHLON trademark -- where the owner of the NIKE trademark apparently had not consented -- the panel said that "[i]t is the consensus view among UDRP panelists that neither the Policy nor the Rules expressly require the consent of a third party and previous panels have accepted complaints request that a domain name may be transferred to the complainant."

• F. Hoffmann-La Roche AG v. Bob, WIPO Case No. D2006-0751: Similarly here, the panel ordered transfer of the domain name <viagra-xenical-pharmacy.com> to the complainant, which owned the XENICAL (but not the VIAGRA) trademark, saying that "while in good practice neither the Policy nor the Rules expressly require... consent" of a trademark owner that is not a party to the UDRP proceeding.

After citing these decisions, the panel in the Kabbage case concluded:

This Panel recognizes that to the extent practicable, the Policy should be interpreted in a consistent manner. The Panel also believes that the remedy of cancellation, for sound reasons, is disfavored by UDRP panels and should be avoided when possible. Particularly where Complainant has fulfilled all the elements of Policy paragraph 4(a), expressed a strong preference for transfer over cancellation, and demonstrated to the satisfaction of the Panel that it is cognizant of its obligations to respect the rights of third-party trademark holders, the Panel is willing to reach a result different from that embraced in the Panel's decision three years ago in Incase Designs Corp. v. Rogenie LLC, Rogenie Cordero [in which the panel ordered a domain name cancelled instead of transferred]....

On balance, the Panel rules, therefore, that it is appropriate and consistent with the summary nature of the UDRP to grant transfer of all the disputed domain names in the instant case.

Aside from the decisions cited by the panel in Kabbage, other decisions under the UDRP have reached the same conclusion under similar circumstances, including Chevron Corporation v. Young Wook Kim, WIPO Case No. D2001-1142 (transfer of <chevron-texaco.com>); MasterCard International Incorporated v. Abadaba S.A., Administrador de dominios, WIPO Case No. D2008-0325 (transfer of <chasemastercard.com>); and MasterCard International Incorporated v. Michael J Yanda, Indy Web Productions, WIPO Case No. D2008-1999 (transfer of, among other domain names, <amazonmastercard.com>).

Update (December 11, 2015): A Forum panel cited the Kabbage decision favorably, in awarding transfer of eight domain names containing the complainant's TARGET trademark plus the third-party CVS trademark: "The disputed domain names all contain both Complainant's trademark and the trademark of a company that is not a party to this proceeding. While it may be preferable for a complainant to obtain the consent of a third-party rights holder before seeking transfer of a domain name, such consent is not necessary, and the alternative remedy of cancellation is properly viewed with disfavor."

Transfer With Consent

As many of the above decisions have observed, while obtaining consent from the third-party trademark owner is not necessary, it certainly could be helpful. Indeed, this has occurred in previous cases, such as:

• Western Union Holdings, Inc. v. Private Whois Escrow Domains Private Limited et al., WIPO Case No. D2008-1675 (Disclosure: I represented the complainant): The panel ordered transfer of the domain name <westernunionmastercards.com>to the owner of the WESTERN UNION trademark where, according to the decision, the complainant contended as follows: "Complainant has obtained from MasterCard a license to the domain name <westernunionmastercards.com> providing Complainant with the right to pursue the [domain name] <westernunionmastercards.com> in this proceeding and to maintain the registration of it thereafter. (A copy of this confidential license agreement is available to the Panel upon request.)” While the panel said that it "would have much preferred (and other panels may require) more fulsome evidence of the other mark's owners consent, a statement contained in a complaint can in appropriate circumstances be treated as evidence for the purposes of these proceedings."

• Six Continents Hotels, Inc. v. Trasporto di Networ and Pro Intel, WIPO Case No. D2004-0246 (Disclosure: I represented the complainant): The panel ordered the transfer of eight domain names that contained the complainant's CROWNE PLAZA and HOLIDAY INN trademarks, including one that contained the RAMADA trademark owned by another hotel company. In that case, as the decision makes clear, the complainant included with its complaint written consent from the owner of the RAMADA trademark.

Rights After Transfer

Fortunately, the Kabbage case and other recent UDRP decisions make clear that a panel may order a domain name transferred to a complainant even if the domain name contains a third party's trademark. This is both efficient and appropriate -- where the complainant has otherwise satisfied the UDRP's three-part test that applies to all proceedings.

Of course, all trademark owners must be aware of the complexities that can arise from controlling a domain name that contains someone else's trademark, especially if the other trademark owner has not consented: Every trademark owner that wins the transfer of a domain name in a UDRP case must agree with the representations set forth in paragraph 2 of the UDRP, including that the complainant’s “registration of the domain name will not infringe upon or otherwise violate the rights of any third party.”

In other words, a UDRP transfer does not give the winning complainant any rights to the third party's trademark other than the right to become the registrant of a particular domain name.