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

Despite the launch of more than 1,200 new gTLDs, .com remains far and away the most popular top-level domain involved in domain name disputes. In 2016, .com domain names represented 66.82 percent of all gTLD disputes at the World Intellectual Property Organization (WIPO), the only domain name dispute provider that publishes real-time statistics. And, as of this writing, the rate is even higher so far in 2017, with .com domain names accounting for 69.78 percent of all disputes.

Not surprisingly, the overall trend since the launch of the new gTLDs shows .com appearing in a smaller percentage of cases under the Uniform Domain Name Dispute Resolution Policy (UDRP). For example, in 2012, when the new gTLD applications were unveiled, .com domain names represented 74.84 percent of all gTLD disputes at WIPO.

Of course, some new gTLDs are appearing in UDRP cases, with 13 new gTLDs represented in 10 or more UDRP cases at WIPO in 2016:

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

But, the discrepancy between .com disputes and others is tremendous (as the chart above shows): WIPO saw 3,120 .com domain names in dispute proceedings last year, but the most-commonly disputed new gTLD -- .xyz --appeared only 321 times.

As I've written before, the large number of new gTLDs probably contributed to a record number of UDRP disputes in 2016. But it's clear that new gTLDs are accounting for relatively few disputes.

Trying to understand why new gTLDs don't appear in more UDRP proceedings is pure speculation, though a couple of explanations seem reasonable:

 

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

Why Cancel a Domain Name in a UDRP Case?

While the most common results of a UDRP proceeding are either transfer of a disputed domain name to a complainant or denial (that is, allowing the respondent to retain it), there is another possible outcome: cancellation. I'm always surprised to see a UDRP decision in which a domain name is cancelled. True, many trademark owners don't really want to obtain control of a disputed domain name (and, instead, they simply want to get it taken away from a cybersquatter). Plus, maintaining a domain name incurs an ongoing expense as the result of renewal fees, and many trademark owners already have large (and, therefore, costly) domain name portfolios.

But, the cancellation remedy means that a UDRP victory may be short-lived, because cancelled domain names become available for registration by anyone, including another (or even the same) cybersquatter.

A trademark owner that files a UDRP complaint incurs real expense (through filing fees and legal fees) -- payments that rightly could be seen as an investment. Allowing a domain name to be cancelled instead of transferred seems like a wasted investment.

Here's one way of looking at the math:

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

Under this scenario, why would a trademark owner risk having a domain name fall into the hands of another cybersquatter if it could keep the domain name for itself and avoid having to file a second UDRP complaint?

The risk is real, as domain names cancelled in UDRP proceedings don't necessarily remain cancelled for long. For example, although the pharmaceutical company Sanofi won a UDRP complaint last year for 21 domain names, 20 were quickly re-registered (by multiple registrants) after they were cancelled and are being used in connection with websites that most trademark owners would consider problematic.

True, not many trademark owners request the cancellation remedy. At WIPO (the most popular UDRP service provider), only 1.69% of all cases have resulted in cancellations. But, the number of cancellations is on the rise, reaching 2.16% in 2015 and 2.09% in 2016.

What explains this (slight) increase in cancellations? One reason could be the arrival of cybersquatting in the "new" gTLDs. For example, some recent UDRP decisions that resulted in cancellations involved the top-level domains .support, .xin, .engineer, .istanbul, .host, .accountant and .bid. Perhaps the prevailing trademark owners felt that these domain names would not be attractive to other cybersquatters after they were cancelled.

Whatever the reason, trademark owners should think long and hard about whether to request the cancellation, rather than transfer, of a disputed domain name in a UDRP proceeding. It would seem that a domain name worth pursuing is worth keeping.

 

How to Get a Domain Name Transferred Under the URS

The Uniform Rapid Suspension System (URS) is designed to get a domain name suspended, but in some cases this dispute policy can be used to help get a domain name transferred. It's an uncommon result but one that trademark owners may want to keep in mind. The suspension remedy is often viewed as the greatest limitation of the URS. Trademark owners that want to have a domain name transferred typically file a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) instead of the URS -- but, the UDRP is more expensive and time-consuming.

Still, in some cases, trademark owners have been able to obtain the transfer of a domain name as the result of a URS proceeding. While the URS itself doesn't provide for a transfer remedy, the issue can arise if a trademark owner and domain name registrant agree to a transfer after a URS complaint has been filed but before a determination has been issued.

In other words, a settlement under the URS can result in the transfer of a disputed domain name.

Settlements under the UDRP are not uncommon, but doing so under the URS is much more unusual and challenging, largely because of the expedited nature of URS proceedings.

While URS case files are not made public, it's interesting to note that a number of URS complaints have been withdrawn and the disputed domain names are now registered by obvious trademark owners -- a likely indication that the parties settled their disputes.

Indeed, at the Forum (the largest provider of URS services), 37 of 685 complaints -- about 5.4% -- have been withdrawn. In two cases withdrawn earlier this year, for <interbrand.design> and <astonmartin.forsale>, the current registrants are, respectively, Interbrand Group and Aston Martin Lagonda, which own the respective trademarks.

A trademark owner that wants to use the URS to encourage a transfer needs to act quickly, given that URS proceedings typically result in a determination within about three weeks of filing a complaint.

The URS rules anticipate the possibility of a settlement between the parties. Rule 16 of the URS states: "If, before the Examiner's Determination, the Parties agree on a settlement, the Examiner shall terminate the URS proceeding." And the Forum's Supplemental Rule 7 outlines a process where the parties can request a one-time stay of up to 45 days -- a pause in the URS proceeding that the parties can use to negotiate or perhaps even implement a settlement such as a transfer of the disputed domain name.

Of course, if a trademark owner can obtain the transfer of a disputed domain name as the result of filing a URS complaint, then it likely will have done so less expensively and more quickly than if it had filed a UDRP complaint.

But, given the relatively low number of URS proceedings that have been withdrawn (and not all withdrawals have been accompanied by transfers), the URS is primarily most effective only for its intended purpose, that is, domain name suspensions. Still, a URS-related transfer is an intriguing exception to the rule.

[Webinar Replay] How to Dispute a .us Domain Name: Transferring and Suspending Domains Under the usDRP and the usRS

Click above for a replay of the GigaLaw webinar, “How to Dispute a .us Domain Name: Transferring and Suspending Domains Under the usDRP and the usRS.” The webinar was originally presented on March 29, 2017.

In this webinar, Doug Isenberg of GigaLaw and Renee Fossen of FORUM provide information about the two dispute policies that are available to trademark owners under the .us country-code top-level domain (ccTLD): the usTLD Dispute Resolution Policy (“usDRP”) and the usTLD Rapid Suspension Dispute Policy (“usRS”).

The webinar provides an overview of the usDRP (which allows a trademark owner to seek the transfer or cancellation of a .us domain name) and the usRS (which allows a trademark owner to seek the temporary suspension of a .us domain name). The webinar discusses the substantive elements of these two policies and how they differ from the larger and more well-known Uniform Domain Name Dispute Resolution Policy (UDRP) and Uniform Rapid Suspension System (URS). The webinar also explains how to file a usDRP or usRS complaint and explore some important decisions under these two policies.

Playing time is approximately one hour.

Related links:

How Long Does a URS Case Take?

The Uniform Rapid Suspension System (URS) -- which allows a trademark owner to suspend certain domain names, especially those in the "new" gTLDs -- was designed as a quicker and less-expensive alternative to the Uniform Domain Name Dispute Resolution Policy (UDRP). As I've written frequently before, there are significant differences between the URS and the UDRP. One of those differences is how long a typical proceeding lasts. Like the UDRP, the URS procedure and rules provide strict timelines for various stages of a case. But, unlike the UDRP, URS cases are usually resolved much more quickly -- often in less than three weeks (although reviews and appeals may prolong the life of a URS proceeding).

Here’s how a common URS case proceeds:

Step 1 (Filing of Complaint):

As with a UDRP complaint, a trademark owner has discretion in deciding when it wants to file a URS complaint. Nothing in the URS procedure or rules requires that a complaint be filed within a specified period of time, and -- to my knowledge as of the date of this writing -- no URS decision has addressed the issue of laches, that is, whether a URS complaint would be barred by a undue lapse of time between the trademark owner's discovery of the disputed domain name and the date on which it files a complaint.

Step 2 (Administrative Review):

The URS procedure requires that a dispute service provider conduct an "Administrative Review" within two business days of the date on which the complaint was submitted to the provider. (Currently, there are three URS service providers: the Forum, the Asian Domain Name Dispute Resolution Centre and MFSD.) The procedure makes clear that this review is simply "to determine that the Complaint contains all of the necessary information."

Step 3 (Notice and Locking of Domain):

The URS service provider must immediately notify the registry operator after the service provider has completed the administrative review, and the registry operator is required to lock the disputed domain name within 24 hours. Then, within another 24 hours, the service provider must notify the registrant of the disputed domain name of the complaint, providing both electronic and hard copy notices.

Step 4 (Response):

A registrant has 14 days after notification to submit a response to a URS complaint. The URS provider may grant "a limited extension of time to respond... if there is a good faith basis for doing so." If the registrant does not submit a response, the proceeding is considered to be a "Default," which is relevant for purposes of a later possible "de novo review" or appeal (see below) and does not automatically result in a determination in favor of the complainant.

Step 5 (Determination):

Although supplemental filings are not uncommon in UDRP cases, a URS examiner "may not request further statements or documents from either of the Parties," and -- to my knowledge as of the date of this writing -- no URS examiner has consider a supplemental filing from any party, because doing so would complicate and delay what is supposed to be a simple and rapid process.

The examiner appointed to decide a URS case (and all URS cases have only a single examiner) is expected to issue his or her determination "on an expedited basis, with the stated goal that it be rendered within three (3) Business Days from when Examination began." Under "extraordinary circumstances," an examiner may not issue a determination until five days after the response was filed. If the determination was an order to suspend the disputed domain name, the the registry operator is required to do so "[i]mmediately upon receipt of the Determination" from the URS service provider.

Complications:

The process outlined above may seem very straightforward and quick -- and, in most cases, it is -- but the URS provides multiple opportunities to extend the course of a URS proceeding. For example, among other things, a losing domain name registrant that did not submit a response during the 14-day period may "seek relief from Default via de novo review by filing a Response at any time up to six months after the date of the Notice of Default" -- and is even "entitled to request an extension of an additional six months if the extension is requested before the expiration of the initial six-month period." Plus, either party can file an appeal within 14 days of a default or final determination.

In addition, a settlement could shorten or lengthen the course of a URS proceeding. For example, the Forum's supplemental rules allow the parties to "jointly request a stay for a one-time period of forty-five Calendar Days."

How Long Does a UDRP Case Take?

How Long Does a UDRP Case Take?

Although the UDRP policy and rules provide strict timelines for various stages of a UDRP case, how quickly a dispute is actually resolved can vary based on numerous factors. A typical UDRP case results in a decision in about two months, but the facts of each case -- including actions both within and outside the control of the parties -- may shorten or extend that timing.

When Two Trademarks Aren't Confusingly Similar to One Trademark

As I've written before, domain name disputes involving multiple trademarks sometimes raise interesting issues, including whether a panel can order a domain name transferred to one entity without consent of the other. While panels typically have found ways to resolve this issue, one particularly troubling fact pattern arises when a panel denies a complaint simply because a disputed domain name contains trademarks owned by two different entities. The situation presents itself when a panel considers whether a domain name containing two trademarks is "identical or confusingly similar" to a single trademark -- that is, the trademark owned by the complainant -- as required by the first factor of the Uniform Domain Name Dispute Resolution Policy (UDRP).

In one odd case, a UDRP panel confronted the issue when a complaint was filed by the owner of the trademark NSK, but the disputed domain name also contained the trademark SKF -- "which is a third-party brand of bearing products which competes with Complainant." Therefore, the panel was faced with the question of whether the domain name <skfnsk.com> was confusingly similar to the complainant's SKF trademark.

Many UDRP panels apply this first UDRP factor liberally. Indeed, the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, says, "The first element of the UDRP serves essentially as a standing requirement."

And, many UDRP panels have adopted the position that “the fact that a domain name wholly incorporates a complainant’s registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy.”

Still, the panel in the <skfnsk.com> case saw things differently, writing:

The Panel finds that Complainant has not met its burden regarding confusing similarity. Complainant has adequately alleged its interests in and to the NSK mark; however, Complainant has no rights or interests in the SKF mark. Complainant alleges no nexus between it and the owner of the SKF mark. As such, Complainant essentially has standing to bring this claim regarding the NSK mark but not the SKF mark.

As a result, the panel denied the complaint, allowing the respondent to retain registration of the disputed domain name even though it contained the complainant's trademark.

Amazingly, two days after the decision in the <skfnsk.com> case had been published, the Forum published another UDRP decision in a similar case also filed by the owner of the trademark NSK and also containing the SKF trademark. And the panel in that case reached a different conclusion! In that case, the panel found <nsk-fag-skf-ntn.com> confusingly similar to the NSK trademark, writing that "the Panel agrees that the additions Respondent has made to the NSK mark are insufficient to overcome Policy ¶ 4(a)(i)."

The panel's denial in the <skfnsk.com> case also contradicts an earlier decision with similar facts, involving the domain name <skf-nsk-bearings.com>. There, the panel simply wrote: "Complainant argues that the <skf-nsk-bearings.com> domain name is confusingly similar to the NSK mark for the following reasons: 'skf' refers to a third-party brand of bearing products which competes with Complainant, and 'bearings' is a term descriptive of Complainant’s business. The Panel agrees."

The panel's denial in the <skfnsk.com> case is difficult to reconcile with the other decisions, and it seems to be quite unusual. Still, it is not the only time a panel has taken this perspective. In a case involving the domain name <nikegoogle.com>, a panel denied the complaint because it was filed only by Nike, not by Google, and "Complainant has failed to establish rights in or to the GOOGLE mark per" the first requirement of the UDRP.

Interestingly, the <nikegoogle.com> case was refiled soon after the denial, with both Nike and Google as complainants. The second panel ordered the domain name transferred -- to Nike, as the parties requested. (Oddly, the second decision does not address the first decision, which raises the interesting question of whether the second complaint was a proper case for refiling, which UDRP service providers and panels typically accept only in limited circumstances.)

While the <skfnsk.com> and (first) <nikegoogle.com> cases are outliers, the decisions reinforce the importance of joining all relevant trademark owners in a UDRP complaint, or at least ensuring that the record demonstrates their relationship and consent. As in all domain name disputes, nothing should be taken for granted.

Thoughts About the Proposed Copyright Alternative Dispute Resolution Policy

A proposal from the Domain Name Association (DNA) would provide copyright owners with a new tool to fight online infringement -- but the idea is, like other efforts to protect intellectual property rights on the Internet, proving controversial. The proposed Copyright Alternative Dispute Resolution Policy is one of four parts of the DNA's "Healthy Domains Initiative" (HDI). It is designed to:

construct a voluntary framework for copyright infringement disputes, so copyright holders could use a more efficient and cost-effective system for clear cases of copyright abuse other than going to court and registries and registrars are not forced to act as “judges” and “jurors” on copyright complaints.

The concept of the Copyright ADRP appears similar to the longstanding Uniform Domain Name Dispute Resolution Policy (UDRP). But, unlike the UDRP, which applies only to domain names, the Copyright ADRP would apply to what the DNA describes as "pervasive instances of copyright infringement."

While many domain names are used in connection with infringing websites, the UDRP is only available when the domain name itself is identical or confusingly similar to a relevant trademark. As a result, the UDRP is often not available to copyright owners, despite obviously infringing content.

Although the Digital Millennium Copyright Act (DMCA) already is frequently invoked by copyright owners to take down infringing content, it has significant limitations. For example, many website hosting companies (especially those outside the United States) do not participate in the DMCA system, and the counter-notification process for infringers can easily be used to defeat a DMCA claim. In those cases, a copyright owner often has no choice but to accept the infringing website or incur the burdens of fighting it in court.

The Copyright ADRP is a fascinating idea that, if properly drafted and implemented, could help reduce infringing content on the Internet and would complement both the UDRP (and other domain name dispute policies) as well as the DMCA.

Still, the idea of the Copyright ADRP already is meeting resistance. A blog post at Domain Incite expresses concern that the policy could be unfairly applied "in favor of rights holders." The Electronic Frontier Foundation reportedly has called it "ill-conceived" and "the very epitome of shadow regulation." And the Internet Commerce Association is worried about "a chilling effect on the domain leasing and licensing business."

Given the early stage of the proposed Copyright ADRP and the undeniable prevalence of online copyright infringement, the criticism seems premature and/or unwarranted. Like any legal enforcement mechanism, the devil will be in the details -- and, at this point, the details seem to be minimal.

As of this writing, it is unclear how the DNA's proposal would be applied other than a broad statement that it should be limited to instances "where the alleged infringement is pervasive or where the primary purpose of the domain is the dissemination of alleged infringing material." How to define "pervasive" or "primary purpose" (let alone "infringement" -- something with which the courts have long struggled) is far from clear.

Plus, numerous questions remain to be answered. Among the most important: As a voluntary dispute system (not mandated by ICANN), which registries and registrars would adopt the Copyright ADR? And who would administer it?

The answers to all of these questions are worth pursuing because, regardless of whether the DNA's idea is workable, reducing online copyright infringement is a laudable goal that will only strengthen the usefulness of and confidence in the Internet.

The GigaLaw Firm helps companies of all sizes protect their brands online, using domain name dispute policies – such as the Uniform Domain Name Dispute Resolution Policy (UDRP) – and other legal tools available to copyright and trademark owners on the Internet.