The Uniform Domain Name Dispute Resolution Policy (UDRP) may be the best and most popular way for trademark owners to fight cybersquatters – but it’s not the only option. In fact, a domain name dispute filed by a large law firm on its own behalf provides a good lesson about the pros and cons of going to court instead of filing a UDRP complaint.
In the second quarter 2022 edition of GigaLaw's Domain Dispute Digest, something unusual happen: A significant spike in the number of decisions not only under the Uniform Domain Name Dispute Resolution Policy (UDRP) — but also under the Uniform Rapid Suspension System (URS). However, while the number of URS cases was up, trademark owners didn't fare so well, winning only only 69.1 percent of URS cases in the quarter, as compared with a more than 95 percent success rate under the UDRP.
Getting a winning decision in a Uniform Domain Name Dispute Resolution Policy (UDRP) case is obviously what every trademark owner wants when it files a complaint — but the decision itself is not the end of the process. Instead, an order to transfer a domain name simply kicks off what should be the last stage of the dispute, but still, every trademark owner needs to be aware of at least three important issues to ensure that the domain name is actually transferred.
Why does Doug Isenberg publish videos about domain name disputes for his GigaLaw website — and how does he create them? Doug answers those questions (and provides a lot of other behind-the-scenes details about his legal practice) in this documentary, a highly personal project where viewers can see what Doug looks like and what he does “off camera.”
In this video, I discuss a UDRP decision in which the disputed domain name was registered 26 years before the complainant obtained a trademark registration. While that timeline usually makes it impossible to establish "bad faith," this case was more complicated because the registrant of the domain name changed hands, so the panel discussed whether it was subject to "an unbroken chain of possession."
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.
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.
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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.
