Domain Dispute Digest (Q1 2022): Setting More Records in 2022

Download GigaLaw’s Domain Dispute Digest

The number of decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP), increased 20% in the first quarter of 2022, while the number of actual domain names in those cases rose almost 32%, contributing to an ongoing surge in domain name disputes that is continuing for a ninth consecutive year.

That’s just one of the important takeaways from the newest issue of GigaLaw’s Domain Dispute Digest for the first quarter of 2022, which I discuss in a new YouTube video.

For all of the details, you can download a full copy of the 10-page report from my GigaLaw website.

The Digest captures and analyzes data from most of the UDRP service providers, including WIPO, the largest provider, which was responsible for about 60 percent of the decisions in the quarter.

Not surprisingly, about 95% of all UDRP decisions in the quarter resulted in outcomes favorable to trademark owners, demonstrating that the UDRP remains an incredibly effective tool to use against cybersquatters.

But under the Uniform Rapid Suspension System (URS), fewer than 75% of decisions last quarter favored trademark owners, which proves the point I have been making for years: The URS is a much less desirable dispute policy, and apparently most brand owners agree. Although the number of URS cases was up about 16% in the quarter, there were only 36 URS decisions, as compared with more than 1,700 under the UDRP.

The most commonly disputed top-level domains under the UDRP in the quarter were:

• .com

• .net

• .org

• .online

• .shop

• .xyz

• .store

• .info.

• .club

For more details, data, and lists, watch the video or download the Digest.

18 Years Later, Toyota Gets toyotta.com

In this domain name dispute video, I discuss a decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) in which Toyota won rights to the domain name <toyotta.com> (with two letter t's in the middle) — 18 years after it was registered.

The decision addresses the issue that occasionally arises in domain name disputes when a trademark owner files a complaint after a lengthy delay: Whether the legal doctrine of “laches” bars relief because so much time has passed between registration of the domain name and legal action.

Here’s what the panel wrote in the Toyota case:

The Panel notes that the disputed domain name was created almost twenty years ago. A question has arisen in some UDRP proceedings as to whether lengthy delay in bringing administrative proceedings may somehow disentitle a complainant. It is now generally agreed that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Those cases where a complaint may have failed due to delay have been limited to their own particular circumstances which find no parallel in this undefended case.

As I explain in the video, this outcome is consistent with the WIPO Overview, which says that “trademark owners cannot reasonably be expected to permanently monitor for every instance of potential trademark abuse, nor to instantaneously enforce each such instance they may become aware of.”

Fortunately for Toyota, other than the issue of laches, this UDRP decision was straightforward, because the domain name was obviously confusingly similar to the TOYOTA trademark despite the additional letter and the registrant of the domain name offered it for sale for $99,999!

Still, even though this was an easy victory for Toyota because its delay didn’t have any impact on the outcome of the case, it’s impossible to know how much damage Toyota incurred in the meantime — which is a good reminder that taking on cybersquatters sooner rather than later is usually the best approach.

When to Settle (or Not Settle) a Domain Name Dispute

I don’t think any of my trademark clients file a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) — or any other policy — expecting to settle the case, but it’s always a possibility that should be considered if and when the opportunity presents itself.

In this video, I discuss three reasons why a trademark owner might consider settling a UDRP case:

• Guaranteed Outcome: . Frankly, some cases are stronger than others. So, if a trademark owner sees any weaknesses in its case, it might be willing to settle, to accept a voluntary transfer of the domain name, simply to be guaranteed that it will get the result it initially set out to obtain: control of the domain name. Otherwise, allowing a case to proceed to a decision always involves some degree of risk because a domain name dispute is ultimately a legal proceeding with no guaranteed outcome.

• Timing: Although the UDRP process is very speedy — about two months from start to finish — sometimes a trademark owner will want to use a domain name more quickly than that. A settlement could result in a transfer within a matter of days.

• Money: At the World Intellectual Property Organization (WIPO), if the parties settle a UDRP dispute before the panel has been appointed, then WIPO will issue a partial refund of the filing fee, typically $1,000 of the $1,500 fee that applies in most cases. While not a substantial amount of money, it could be important for smaller clients with more limited budgets, and larger clients sometimes see the refund as something they can apply to their next domain name dispute.

I explain each of these reasons in more detail in the video.

In addition, I talk about how the settlement process works, including the seven-step process required by the UDRP Rules. Since 2015, the UDRP has required parties to use a “standard settlement form.” Although there’s nothing that prevents the parties from entering into other terms and conditions, in my experience most settlements are confined to two simple issues: transfer of the domain name, and termination of the UDRP proceeding.

Finally, I discuss various reasons why a trademark owner might not want to settle a UDRP case, including the benefits of obtaining a published decision, which can be used a precedent in future cases and also perhaps serve to deter other cybersquatters.