What We Can Learn from URS Decisions (Hint: Not Much)

In addition to being rarely invoked, the Uniform Rapid Suspension System (URS), when utilized, is providing trademark owners and domain name registrants with little guidance about this domain name dispute policy. URS determinations typically offer no insight into the reasons behind an expert's decision, regardless of whether the determination was in favor of the trademark owner (to temporarily suspend the disputed domain name) or the domain name registrant (to allow the registrant to retain the domain name without interruption).

Although the URS rules require that a determination must "provide the reasons on which it is based," most determinations fail to offer much discussion. (The URS itself does not require an expert to explain a determination, stating only that "[i]f the Complainant satisfies the burden of proof, the Examiner will issue a Determination in favor of the Complainant" or "[i]f the Complainant does not satisfy the burden of proof, the URS proceeding is terminated and full control of the domain name registration shall be returned to the Registrant.")

As a result, URS determinations -- unlike decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) -- are typically very short and provide no analysis.

For example, in two recent decisions denying the complainant trademark owners' request to suspend disputed domain names, experts at the Forum simply concluded without any substantive discussion that "[t]he facts as asserted with respect to bad faith do not rise to the level of 'clear and convincing' under the URS proceedure" (denial of suspension for <mil.haus>) and that "the facts presented with respect to bad faith do not rise to the level of 'clear and convincing' under the URS" (denial of suspension for <arcelormittal.lol>).

URS determinations in favor of trademark owners are also typically lacking in analysis.

As a URS expert myself, I tried to offer detailed explanations in some of the earliest determinations under this new domain name dispute policy. For example, in one of the first URS cases, I referred to "the early nature of these URS proceedings" and the need for discussion "above and beyond that which [I]would expect in such a decision," before offering a substantive explanation of how the URS applied to the facts of the case.

The more recent trend, in the relatively few URS determinations that are being published, is not to address substantive issues of law or fact in any detail. This is not surprising, given the following:

• URS proceedings, by design, are expedited. An expert's determination is supposed to be rendered with three business days.  (By comparison, panelists under the UDRP have 14 days to issue their decisions.)
• Filing fees for URS proceedings are minimal -- and experts, of course, receive only a portion of the fee as compensation for their services. At the Forum (the most popular URS service provider), the base URS filing fee is $375.  (By comparison, the base filing fee for a UDRP complaint at WIPO -- the most popular UDRP service provider -- is $1,500.)
• Documents filed in URS proceedings face significant restrictions. For example, URS complaints are limited to an "explanatory statement of no more than 500 words." (By comparison, UDRP filings at WIPO are limited to 5,000 words of substantive discussion.)

As a result, the lack of insight offered by most URS determinations offers parties no guidance about the newest domain name dispute policy and instills little confidence in the system, ensuring that the URS is unlikely to gain popularity and solidifying the UDRP as the domain name dispute policy of choice for most trademark owners.

Clinton and Trump Don't Have Their Candidate-Running Mate Domain Names. So What?

Four years ago, after Republican presidential nominee Mitt Romney picked (now Speaker of the House) Paul Ryan as his running mate, I wrote a blog post titled, "Romney and Ryan Don’t Have RomneyRyan.com. So What?" Now, other bloggers are reporting that Republican presidential nominee Donald Trump and his running mate Mike Pence apparently don't have the domain name TrumpPence.com and that Democratic presidential nominee Hillary Clinton and her running mate Tim Kaine don't have the domain name ClintonKaine.com.

The TrumpPence.com domain name is registered to a privacy service and (as of this writing) redirects to a website for a company that buys and sells domain names. It was registered on February 22, 2016 -- almost five months before Trump picked Pence.

The ClintonKaine.com domain is also registered to a privacy service and (as of this writing) redirects to a "Disqualify Hillary Clinton" page on the official Trump website (using the domain name donaldjtrump.com). It was registered on August 8, 2011 -- almost five years before Clinton picked Kaine.

The fact that neither campaign appears to be in control of its corresponding .com domain name may seem odd -- and, in the case of the ClintonKaine.com domain name that is being used against the Democratic candidates, perhaps embarrassing.

But, just as I said four years ago: So what?

In 2012, I observed that "having a .com domain name that matches the candidates’ names is far from essential to a successful campaign" and that, in any event, the campaign couldn't rely on a domain name dispute under the Uniform Domain Name Dispute Resolution Policy (UDRP) to remedy the situation. The same is true today.

Both the Trump and Clinton campaigns have well-established websites at domain names that were registered a long time ago: donaldjtrump.com was created in 1997 (and, curiously, is registered to The Trump Organization, not Donald J. Trump for President, Inc.), and hillaryclinton.com was registered in 2001 (and is registered to Hillary for America). Searching either of the candidates' names on Google ("trump" or "clinton") prominently leads users to the appropriate campaign websites.

So, it probably doesn't cause any measurable harm to either candidate that they don't have their campaigns' corresponding domain names. Anyone who wants to research the candidates online -- to read about their positions on various issues, to make donations, to buy merchandise -- can easily find the correct websites in a matter of seconds.

As I noted four years ago, 2016 is the first presidential election since the expansion of the domain name system. Presidential (and other) candidates can now register domain names using new gTLDs such as .vote, .gop and .democrat. Yet these new top-level domain names appear to be largely ignored (just as is true of most of the new gTLDs).

To be sure, domain names remain important. But political candidates, like companies of all sizes, can't register every possibly relevant domain name. Fortunately for the politicians, campaigns come and go, so even missing out on a potentially attractive domain name may be irrelevant after election day.

On the other hand, companies that want to build their brands and conduct business online for years, without term limits, may want to manage their Internet campaigns differently -- by proactively registering important domain names and by enforcing their rights through the UDRP and other domain name dispute processes.

[Webinar Replay] UDRP Best Practices: Q&A with WIPO’s Head of Domain Name Disputes

Click above for a replay of the GigaLaw webinar, “UDRP Best Practices: Q&A with WIPO’s Head of Domain Name Disputes.” The webinar was originally presented on August 24, 2016.

In this free webinar, Doug Isenberg of GigaLaw talks with Brian Beckham, Head of the Internet Dispute Resolution Section at WIPO’s Arbitration and Mediation Center.

As the leading provider of domain name dispute services, including the Uniform Domain Name Dispute Resolution Policy (UDRP), WIPO’s Arbitration and Mediation Center is supported by 35 international professionals, offering UDRP-related services in more than 2,500 cases annually in recent years. Based in Geneva, Switzerland, with a further office in Singapore, the WIPO Center was established in 1994 to offer Alternative Dispute Resolution (ADR) options for the resolution of international commercial disputes between private parties. An independent and impartial body, the Center forms part of the World Intellectual Property Organization, a self-funding agency of the United Nations, with 188 member states.

This webinar focuses on basic and advanced issues in domain name disputes, including the role of the WIPO Arbitration and Mediation Center, resources for filing and defending UDRP complaints, how to handle settlements of UDRP cases and other important but subtle issues in UDRP proceedings.

Playing time is approximately one hour.

Related blog posts:

• WIPO Domain Name Dispute Filings Rise 4.5% in 2015
• The Truth About Supplemental Filings in UDRP Cases
• The Growing Importance of Language in UDRP Proceedings

The Impact of Reverse Domain Name Hijacking on Supplemental Filings in UDRP Cases

In another blog post, I wrote about the sometimes confusing circumstances in which domain name dispute panelists will consider supplemental, or additional, filings from the parties (in addition to a complaint and response) in cases under the Uniform Domain Name Dispute Resolution Policy (UDRP). I quoted the WIPO Overview, which states, in part, that supplemental filings may be appropriate where a party can "show its relevance to the case and why it was unable to provide that information in the complaint or response." While the facts and circumstances of every case are obviously unique, one situation in which panelists often accept supplemental filings is when a respondent has raised an allegation of "reverse domain name hijacking."

Reverse domain name hijacking (RDNH) is defined as "using the [UDRP] in bad faith to attempt to deprive a registered domain-name holder of a domain name." While the merits and impact of reverse domain name hijacking are better suited for another discussion, a domain name registrant that raises the RDNH issue in a response should be aware that panels typically allow a complainant to respond to such an allegation via an additional filing.

For example, in the following UDRP proceedings, panels have accepted supplemental filings from complainants, to respond to RDNH:

• Puls Elektronische Stromversorgungen GmbH v. NetIdentity, WIPO Case No. D2002-0205: “In light of the allegation by the Respondent that the pursuit of this administrative proceeding by the Complainant constitutes Reverse Domain Name Hijacking, the Panel takes the view that the Complainant ought to have an opportunity to respond to that allegation and has decided to accept the Complainant’s Supplemental Filing insofar as it is relevant to that issue.”
• Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd., WIPO Case No. D2001-0941: Where a respondent asks a panel to find reverse domain name hijacking, “the Complainant is entitled to defend itself” and, therefore, a supplemental filing from the Complainant along with relevant supporting documents “should be admitted in their entirety.”

The decisions in these cases to accept supplemental filings where RDNH is raised was also adopted in more recent UDRP decisions, including Bryn Mawr Communications, LLC v. Linkz Internet Services, WIPO Case No. D2016-0286; and Impossible BV v. Joel Runyon, Impossible Ventures, WIPO Case No. D2016-0506. (Disclosure: I served on three-member panels in both of these 2016 decisions.) In the Impossible BV decision, the panel wrote that it would consider the parties' additional filings -- "but only to the extent that they address the issue of Reverse Domain Name Hijacking."

These decisions are consistent with the prevailing view that a supplemental filing is appropriate where (as I previously wrote) it is "relevan[t] to the case" and where a complainant "was unable to provide that information in the complaint." In other words, a complainant cannot know that a respondent would assert an allegation of RDNH until the respondent has actually done so. At that point, a complainant is usually able to respond to the allegation via a supplemental filing.

However, some panels have handled the issue differently. For example, in Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653, the panel "disallowed" the complainant's supplemental filing, writing: "The Complainant being the initiator of the proceedings has an obligation to anticipate the possible arguments that the Respondent may put forward as there is no other opportunity to file additional evidence. It is only in exceptional circumstances that a UDRP panel will allow additional evidence to be filed. There is nothing exceptional which justifies the unsolicited filings of the Complainant." (Perhaps what the panel described as "the Complainant’s empty rhetoric, mudslinging, and unsupported factual allegations" convinced it that a finding of RDNH was compelled regardless of anything further the complainant might add.)

(This post was updated on August 17, 2016, to add the discussion of the Patricks Universal Export case.)

The Truth About Supplemental Filings in UDRP Cases

A typical proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) consists of a complaint and, sometimes, a response. UDRP Rule 12 makes clear that "further statements or documents from either of the Parties" are appropriate only if "the Panel... request[s], in its sole discretion." In practice, however, such supplemental or additional filings are not uncommon, with the leading UDRP service providers -- WIPO and the Forum -- issuing guidance about when they may be appropriate.

While WIPO's Supplemental Rules don't explicitly address additional filings, the WIPO "Overview" says:

Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of "exceptional" circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.

The Forum's Supplemental Rules actually address the issue -- in a manner that differs from that described in the WIPO Overview. In particular, the Forum says that "additional written statements and documents" may be submitted within specified time periods, provided that they "must not amend the Complaint or Response" and further provided that, in the case of a submission from the complainant, payment of "an additional submission fee of $400."

Thus, the key differences between WIPO and the Forum on the issue of supplemental filings has often been summarized as: A WIPO panel may accept a supplemental filing, which does not require payment of an additional fee, if it is relevant and pertains to information that was not previously available; while the Forum gives parties the right to submit a supplemental filing but requires a $400 fee from the complainant.

However, as in many areas of domain name disputes, the issue is more complicated than it might at first appear.

While it may seem obvious that is unclear whether a WIPO panel will consider an additional filing in a UDRP dispute, the opposite is not true: That is, despite the Forum's Supplemental Rules, not every Forum panel will consider an additional filing -- even if the party submitting it pays the $400 fee.

Indeed, a recent UDRP decision at the Forum addresses this very issue. In YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC, NAF Claim No.1675141, the panel wrote that it would "disregard the Complainant’s Additional Submission" because it "was nothing more than a standard 'reply' to the Response" that "did not address any new legal principles or facts that could not have been anticipated in the Complaint" and "did not include any new facts or arguments that did not exist at the time of the Complaint or could not have been anticipated."

In other words, although the complainant presumably paid a fee to submit its additional filing, the panel refused to consider it.

How is that possible?

The Forum's Supplemental Rules must be read closely: They give a complainant the right to "submit" an additional filing, for a fee, but they do not require the panel to consider the supplemental filing.

As a panel in an old (2000) Forum UDRP decision, Electronic Commerce Media, Inc. v. Taos Mountai, NAF Claim No. 0095344, wrote: "[T]he Supplemental Rule could not require Panels to accept these supplemental filings because that would violate Uniform Rule 12 of the ICANN Policy, which vests the discretion to request and accept supplemental materials solely with the Panel. No provider’s Supplemental Rules can override the Policy or Uniform Rules and the discretion they vest in the Panels appointed thereunder."

While it may be unusual for a Forum panel to disregard an additional filing in a UDRP case, it is clear that paying a fee under the Forum's Supplemental Rules does not guarantee that an additional filing will be considered. In other words, at least some Forum panels require a complainant to establish the appropriateness of an additional filing, just as in UDRP cases at WIPO.

Because it's impossible to know if a supplemental filing is going to be considered until after its has been submitted, parties in UDRP proceedings should include all of their factual and legal arguments in the only document they are entitled to file (that is, the complaint or the response) -- even, in the case of the complainant, proactively addressing those issues that the respondent is likely to raise.

An Overview of the Uniform Rapid Suspension System (URS)

ICANN’s newest domain name dispute policy, the Uniform Rapid Suspension System (URS), is proving to be an unpopular enforcement tool for trademark owners, despite the growth of registrations in the new generic top-level domains (gTLDs) to which it applies. Instead, trademark owners are relying on the proven Uniform Domain Name Dispute Resolution Policy (UDRP). The reasons are likely attributable to a number of factors, including lack of familiarity, a high burden of proof, and a limited remedy. When the URS was first implemented in 2013, it was envisioned as a quicker and less expensive alternative to the UDRP -- which, when it went into effect in 1999, was envisioned as a quicker and less-expensive alternative to litigation. While the UDRP has proven to be the preferred option for most trademark owners to resolve domain name disputes and has resulted in tens of thousands of cases, the URS is seldom invoked. As a result, the URS has failed to gain traction and is often overlooked.

URS and UDRP by the Numbers

A review of the number of URS cases filed since 2013 demonstrates its decided lack of popularity. At the Forum (formerly the National Arbitration Forum), the leading provider of URS services, only 529 cases were filed in the past three years. By comparison, the Forum reported that it handled 1,557 UDRP disputes in just one year (2014). Other providers of the URS include the Asian Domain Name Dispute Resolution Centre (ADNDRC), which has published a grand total of 31 URS determinations, and Italy’s MFSD, which has published only six determinations. See ADNDRC URS Determinations (last visited July 12, 2016) and MFSD URS Determinations (last visited July 12, 2016).

Notably absent as a URS provider is the World Intellectual Property Organization (WIPO), which helped draft the UDRP and today handles more domain name disputes than any other entity. WIPO has criticized the URS since before its launch, stating in 2012 that the URS would be “significantly more complex than the UDRP procedurally, offering a lighter remedy (reversible on appeal), for a price target of less than a third of the UDRP. This is neither realistic nor optimal.” WIPO’s absence as a URS provider likely has contributed to its lack of popularity, at the very least because the leading domain name dispute provider is not promoting it.

A Comparison of the URS and UDRP

The URS applies to all of the so-called “new” gTLDs, that is, those launched following ICANN’s 2012 application process. It does not apply to the popular “legacy” gTLDs such as .com, although at least one country-code registry, .pw (Palau), has adopted it, and .us (United States) has adopted a variation of it. See Forum Country-code TLDs (ccTLDs), (last visited July 12, 2016). Plus, at least three of the so-called older “sponsored” TLDs -- .cat, .pro, and .travel -- have adopted the URS in the recent renewals of their registry agreements. See, e.g., .cat Registry Agreement, (last visited July 12, 2016). In any event, the URS is not the only dispute policy that applies to the new gTLDs, as the UDRP remains an option for those as well.

The substantive test for the URS is similar, but not identical, to the UDRP. To prevail in a URS proceeding, a trademark owner must prove all three of the following:

• the registered domain name is identical or confusingly similar to a word mark: (i) for which the complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
• that the registrant has no legitimate right or interest to the domain name.
• that the domain was registered and is being used in bad faith.

URS Procedure, Paragraph 1.2.6 (Mar. 1, 2013).

The key difference between the URS and the UDRP test can be found in the first element: while the UDRP applies broadly to any trademark or service mark in which the complainant has rights, the URS is much more limited.

For example, trademark owners have frequently prevailed in UDRP disputes involving common law trademarks, but unregistered marks are unacceptable in URS proceedings unless they have been “validated through court proceedings” or are protected by an applicable statute or treaty. URS Procedure, Paragraph 1.2.6.1. As a result, the URS proceeding is often unavailable to the owners of unregistered trademarks.

The larger challenges for trademark owners in bringing a URS proceeding are procedural. First, the burden of proof in a URS proceeding is “clear and convincing evidence,” as the URS is only intended for use in “clear cases of trademark abuse.” URS Procedure, Paragraph 8.5.

In contrast, prior UDRP decisions have established a much lower evidentiary standard: “The general standard of proof under the UDRP is ‘on balance’ – often expressed as the ‘balance of probabilities’ or ‘preponderance of the evidence’ standard.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (last visited July 12, 2016). “Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true.” Id.

In addition to the URS’s higher burden of proof, trademark owners face a 500-word limit to any explanatory statement submitted with the complaint. See URS Procedure, Paragraph 1.2.7. In contrast, WIPO UDRP complaints may be up to 5,000 words. See World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, Paragraph 10 (July 31, 2015). The extremely short word limit for URS proceedings means that trademark owners will have difficulty crafting factual and legal arguments of any substance.

Further, while UDRP providers and panels sometimes allow “supplemental filings” (such as a submission from a complainant replying to a response), the record in a URS proceeding is strictly limited to the contents of the complaint and response. See URS Procedure, Paragraph 9.1. Finally, while inadequacies in UDRP complaints are often corrected before formal notification, the URS provides no such opportunity to correct inadequacies in the complaint. See URS Procedure, Paragraph 3.3.

The Limited URS Remedy

Perhaps the greatest limitation of the URS is its remedy. Unlike the UDRP, where a successful trademark owner can have a disputed domain name canceled or transferred, the URS only allows for the temporary suspension of a disputed domain name until the expiration of the current registration period, with the option to extend the registration period for one additional year. See URS Procedure, Paragraphs 10.2–10.3.

As a result, a trademark owner cannot obtain control of a disputed domain name in a URS proceeding. Once the suspension period expires, the disputed domain name becomes available for registration again on a first-come, first-served basis, potentially allowing another cybersquatter to register it before the trademark owner.

Advantages of the URS

Despite its limitations, the URS offers some advantages over the UDRP. Unlike the UDRP, the URS includes a system for appealing decisions. Under Paragraph 6.4 of the URS Procedure, a losing registrant who fails to file a response can seek de novo review for up to six months (plus an additional six-month extension), and under Paragraph 12 either party can seek a de novo appeal of the determination within 14 days.

In addition, the URS includes important provisions to deter inappropriate complaints. While the UDRP allows panels to find that a trademark owner has engaged in “reverse domain name hijacking” if it used the UDRP in a bad faith to attempt to deprive a registered domain-name holder of a domain name, such a finding is without consequence other than, perhaps, public embarrassment. See Rules for Uniform Domain Name Dispute Resolution Policy, Paragraph 1 (approved Sept. 28, 2013).

Under the URS, however, a trademark owner found to have abused the process may be barred from using the URS for one year or even permanently. See URS Procedure. To date, though, it appears as if this punishment has never been handed down.

The most notable advantages of the URS are the low cost and speed with which decisions are issued. For example, the Forum’s fee schedule for a URS complaint starts at $375, compared to $1,300 for the UDRP. See Forum Glossary and FAQ (last visited July 12, 2016). URS determinations are being issued much more quickly, typically 17 days after filing, compared with approximately two months for UDRP decisions.

While the URS and UDRP are often thought of as separate (“either-or”) legal remedies, they can be used in conjunction. Specifically, Paragraph 13 of the URS Procedure states that “[t]he URS Determination shall not preclude any other remedies available to the appellant, such as UDRP.”

At least one trademark owner has invoked both dispute policies against the same registrant with respect to the same domain names by first filing a URS complaint to have the domain names at issue suspended (see Yves Saint Laurent v. Khita Kongsansatien, NAF Claim No. 1565626 (July 23, 2014), followed by a UDRP decision ordering transfer of the domain names. See Yves Saint Laurent v. Khita Kongsansatien, WIPO Case No. D2016-0496 (April 18, 2016). In this respect, the URS can provide an effective complement to the UDRP where fast action is required to protect brand owners and consumers from potential harm.

Review of the URS and All Rights Protection Mechanisms

At this time, the long-term future of the URS is unclear, not only because of its failure to be invoked with much frequency by trademark owners, but also because it is currently under review by an ICANN working group. The Generic Names Supporting Organization (GNSO) Council is conducting a “Policy Development Process (PDP) to Review All Rights Protection Mechanisms (RPMs) in All Generic Top-Level Domains (gTLDs)." See http://newgtlds.icann.org/en/reviews/cct/rpm (last visited July 12, 2016).

Brand owners and trademark counsel who are interested in helping to shape the review of all RPMs (including the URS) are encouraged to volunteer for the recently formed working group. Additional information about the working group is available at http://www.icann.org/news/announcement-2016-03-21-en.

This blog post was originally published as "URS vs. UDRP: The Heavyweight Is Winning" in the August 1, 2016, edition of the International Trademark Association's INTA Bulletin.

'Pokemon' Domain Names Are a No-Go

The legal issues surrounding the sudden success of "Pokemon Go" -- one of the world's fastest-growing apps or games -- are popping up as quickly as unhatched Eggs at a PokéStop. Within days of the game's release, the National Safety Council issued a call that "urges pedestrians to exercise caution while playing the Pokémon Go augmented reality game" and "implores drivers to refrain from playing the game behind the wheel." A U.S. senator sought clarification from the game's creator about "data privacy protections, amid concerns the augmented reality hit was unnecessarily collecting vast swaths of sensitive user data." The Miami police department released a video about "possible dangers" in the game, while police in Spain issued safety guidelines after "two Japanese tourists were rescued from a motorway tunnel in Barcelona... where they had wandered in search of Pokemon characters." (Two men also fell down a cliff in Encinitas, California, while playing the game.)

The legal issues even reached China, where a conspiracy theory raised concerns that the Pokemon Go game could help the U.S. government "work out where Chinese military bases are by seeing where users can't go to capture Pokemon characters."

And surely it won't be long before the Federal Communications Commission is asked to investigate whether T-Mobile's offer of free high-speed data for Pokemon Go players runs afoul of "net neutrality" regulations.

Among the other legal issues that are likely to arise: cybersquatting.

Already, one blogger observed that nearly 4,000 .com and .net domain names containing the "Pokemon" trademark had been registered in a seven-day window -- and I see now that the total has topped 7,000 so far this month. Surely some of the new gTLDs -- such as .app, .game, .games, .play, .fan, .help, .party and .store (just to name some) -- also will be appealing to opportunistic domain name registrants.

Indeed, the same blogger reported that the domain name <pokemongo.net> sold for $20,950 -- a staggering sum considering what was calmly described as "some legal risk" associated with actual use of the domain name.

If history is any indication, the owner of the Pokemon trademark won't hesitate to pursue some of the registrants of Pokemon domain names. A search of filings under the Uniform Domain Name Dispute Resolution Policy (UDRP) shows that Nintendo of America Inc. has filed 13 complaints for 20 Pokemon domain names through the years, including pokemon2000.com (in the year 2000), pokemontradingcard.com and even pokefan.com.

In all of the reported UDRP decisions, panels ordered transfer of the Pokemon domain names to Nintendo.

While it appears as if Nintendo has not filed any UDRP complaints since the Pokemon Go game was launched, I expect we'll see some soon.

Out of necessity, I suspect that Nintendo will have to be selective about the domain names that it pursues. If they act like many other trademark owners, Nintendo may choose to prioritize those Pokemon domain names that it either wants to use for itself or that are actually causing damage or confusion.

For example, in one of the previous Pokemon disputes, a UDRP panel transferred the domain name pokemonl.com (what the panel called "a likely misspelling by typists of pokemon.com") after the registrant apparently used it first in connection with a pornographic website, then in connection with gambling websites and later to transmit computer viruses to unsuspecting Internet visitors. In finding bad faith under the UDRP, the panel said that the domain name registrant was "a commercial free rider at the expense of Nintendo," noting that a previous panel (in a UDRP dispute over pokemonpikachu.com) had called the Pokemon trademark "highly distinctive and fanciful."

Nintendo's success in pursuing cybersquatters via the UDRP should provide sufficient warning to cybersquatters seeking to capitalize on the success of the new game, as the trademark owner may start to make some of the newly registered Pokemon domain names go away.

5 Myths About DMCA 'Take-Down' Notices

The so-called notice-and-take-down provisions of the Digital Millennium Copyright Act (DMCA) provide both a very effective tool for copyright owners to get infringing content removed from the Internet as well as an important protection for service providers (such as website hosting companies) that may inadvertently publish infringing material, either directly or via user-generated content. But, the DMCA is neither a perfect weapon or shield. It cannot be invoked in every instance of online infringement -- and, even when it does apply, the DMCA is not always productive.

Here are five (of many!) myths and truths about limitations on the DMCA take-down notice process:

1.

Myth: A service provider is required to take down allegedly infringing content if it receives a proper notice under the DMCA.

Truth: The DMCA does not require a service provider to take down allegedly infringing content. Instead, the DMCA gives service providers an incentive to do so by providing that they "shall not be liable for monetary relief" if they comply with a proper DMCA notice. Not all service providers have opted into the DMCA system, and even those who have opted-in are not obligated to take down content.

2.

Myth: Service providers are required to take down infringing content within 24 hours of receiving a proper DMCA notice.

Truth: The DMCA does not specify a timeline for a service provider to take down allegedly infringing content. Instead, the DMCA requires only that service providers "act[] expeditiously to remove, or disable access to, the material." In practice, however, service providers familiar with the DMCA often take down infringing content within 24 hours.

3.

Myth: Every U.S.-based service provider is obligated to comply with the DMCA process.

Truth: Service providers (in the United States and elsewhere) must opt-into the DMCA system if they want to avail themselves of its protections -- and many fail to do so. The DMCA protections apply "only if the service provider has designated an agent to receive notifications of claimed infringement." A list of agents is available at the U.S. Copyright Office.

4.

Myth: If a service provider has not appointed a DMCA agent at the U.S. Copyright Office, there's no reason for a copyright owner to send a take-down notice.

Truth: Many service providers that have not opted into the DMCA system nevertheless act in accordance with the DMCA. In other words, a copyright owner may find it worthwhile to submit a DMCA take-down notice to a service provider even if the providerhas not appointed an agent, because the service provider may remove the infringing content upon receipt of the notice.

5.

Myth: Once a service provider has taken down infringing content in response to a DMCA notice, the content will be permanently removed.

Truth:  An alleged infringer can file a "counter notification" in response to a copyright owner's take-down notice. If that occurs, the service provider may, under certain circumstances, restore access to the allegedly infringing content and remain exempt from liability.

Who Really Cares About New gTLDs?

ICANN's recent announcement of what it called "an exciting milestone in the evolution of the domain name system" -- the delegation of the 1,000th new generic top-level domain (gTLD) -- went largely unnoticed. While that's consistent with the new gTLD program in general (at least from the perspective of the general public), that doesn't mean trademark owners should forget about them. I can't think of a single new gTLD that I've seen promoted in a mainstream advertisement or any company's marketing materials.

Of course, as a domain name attorney, I'm well aware of the new gTLD program in general, as well as some specific adoptions, such as <abc.xyz> by Google's parent Alphabet; <badgerbank.bank> by a small bank in Wisconsin; and <global.canon> by the camera company.

The nTLDStats website reports that more than 26 million new gTLDs already have been registered. And a $70 million offer from one registry operator (Donuts) to another (Rightside) clearly says something about the size and scope, if not the perceived future importance, of the domain name business.

But most people with whom I talk outside the domain name industry seem fully unaware of any of this.

The sheer number of new gTLDs means that most of them are struggling for recognition. Indeed, excluding the top five most-popular new gTLDs (.xyz, .top, .wang, .win and .club), no new gTLD accounts for more than 2% of the market, according to nTLDStats.

Many of the new registrations are speculative, defensive or infringing -- none of which seems to be sustainable.

As I've written before, new gTLDs are appearing with increasing frequency in domain name disputes. Indeed, of the top 10 most-disputed top-level domains in proceedings at the World Intellectual Property Organization (WIPO) so far this year (through June 28, 2016), half are new gTLDs (.xyz, .top, .club, .online and .cloud). Trademark owners are usually finding it pretty easy to win proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP), depriving domain name registrants of any benefits they have sought in registering in the new gTLDs.

In some UDRP decisions, the new gTLD is even making a trademark owner's case stronger. For example, in ordering transfer of the domain name <premierleague.club> to The Football Association Premier League Limited, one UDRP panel wrote:

In the Panel’s view, the inclusion of the TLD “.club” does not diminish the confusing similarity. To the contrary, this Panel finds that the inclusion of the descriptive term “club” reinforces the confusing similarity between the PREMIER LEAGUE trademark and the disputed domain name because the teams that compromise Complainant’s league are commonly referred to as clubs.

(See also my earlier blog post: "When is the Top-Level Domain (TLD) Relevant in a Domain Name Dispute?")

Still, in many cases, trademark owners are simply choosing to ignore the new gTLDs because they don't value them for themselves and they sometimes don't care what a cybersquatter is doing in a gTLD that no one knows about.

But trademark owners cannot ignore the new gTLDs entirely. Some gTLDs may be more important than others, due to their popularity or their relevance to the trademark owner's business. And some domain names using new gTLDs may be particularly problematic, based on how they are being used.

Ultimately, it seems as if a relatively small number of the now 1,000+ new gTLDs are likely to gain much traction. Trademark owners would be wise to monitor their popularity and selectively enforce their rights when doing so is necessary or important to protect their brands.

The Popularity of .co (not .com) Domain Name Disputes

One of the most popular top-level domains under the Uniform Domain Name Dispute Resolution Policy (UDRP) is not even a gTLD (generic top-level domain). It's a ccTLD: .co, the country-code top-level domain for Colombia, in South America. Based on statistics at WIPO as of this writing, 29 .co domain names have been the subject of UDRP disputes this year, making it the most-disputed ccTLD under the popular domain name dispute policy.  The same has been true every year since 2010, when .co domain names apparently first became subject to the UDRP -- 11 years after the UDRP itself went into effect. Despite its late entry into the UDRP system, .co is in fact the most-disputed ccTLD ever under the UDRP (at least at WIPO), with 388 domain names in dispute.

(Granted, the number of .co UDRP disputes pales in comparison with the number of .com UDRP disputes: As of this writing, 1,464 .com domain names have been the subject of UDRP disputes this year at WIPO.)

At least 38 ccTLD operators, including .co, have adopted the UDRP, but only .co appears with any regularity in UDRP proceedings. Only the ccTLDs for Tuvalu (.tv) and Romania (.ro) rank in the top 10 among all ccTLDs for which WIPO administers domain name dispute policies.

So, why is .co (relatively) popular among disputed domain names?

The answer is probably obvious: .co is the top-level domain name that is most similar to .com. (While .cm, the ccTLD for Cameroon, is also only one character "off" from .com, the .cm registry has not adopted the UDRP.)

As a result, some cybersquatters find .co domain names attractive, hoping to catch Internet users who commit a typo by omitting the letter "m" when entering a website address.

For example, the following domain names, all of which have been the subject of UDRP disputes since last year, contain well-known trademarks:

• <autodesk.co>
• <traderjoes.co>
• <novonordisk.co>
• <7eleven.co>
• <publix.co>
• <skechers.co>
• <altria.co>
• <philips66.co>

In each case, the trademark owner that filed the UDRP complaint prevailed.

In one case, involving the domain name <sanofi.co> and the trademark SANOFI, a UDRP panel noted the obvious: "The Domain Name is identical to the Complainant’s mark… but for the suffix '.co', which the Panel accepts is to be disregarded for the purposes of the present test. Accordingly, the Complainant has established that the Domain Name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights."

Not only is .co obviously similar to .com, but several years ago, when Colombia granted a third party the right to manage its ccTLD, .co suddenly became the subject of an intense marketing campaign, the result of which was "to spread awareness about .CO domain names within a community of frequent domain purchasers," one writer said in 2012. The ccTLD even made an appearance in a GoDaddy Super Bowl TV ad "urging people to register a .CO domain before someone else snatches it up and gets rich doing so," Adweek reported in 2013.

The arrival of hundreds of new gTLDs (a few of which have proven moderately popular) has since taken over most of the publicity around domain name availability. But .co remains a quiet threat to trademark owners, who obviously are filing UDRP complaints with success to recover these problematic domain names.