From the GigaLaw Blog:
Here's another apparent limitation of the Uniform Rapid Suspension System (URS), the domain name dispute policy that applies to the new generic top-level domains (gTLDS): Proceedings are unlikely to unmask cybersquatters hiding behind privacy or proxy services.
A popular podcast that launched its new season with a profile on the domain name industry focused on how one well-known opportunist, Rick Schwartz, made riches by registering, using and selling domain names -- starting in 1995 -- that consisted of or contained generic words such as porno.com, candy.com and servicedepartment.com. But the podcast ignored an important -- and dark -- side of the domain name industry: Cybersquatting.
As phishing scams seem to be getting more common and more sophisticated, trademark owners should recognize the importance of domain name disputes and how companies can use the Uniform Domain Name Dispute Resolution Policy (UDRP) and other tools to combat phishing.
The Uniform Domain Name Dispute Resolution Policy (UDRP) is known as an inexpensive alternative to litigation (and that's true), but some proceedings can end up costing a trademark owner more than it may have expected.
Despite the launch of more than 1,200 new generic top-level domains (gTLDs) in recent years, .com remains -- far and away -- the top-level domain that appears most frequently in decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP). But, some new gTLDs are attracting more disputes, including .site, which has become the new gTLD that, so far this year, has appeared in the most UDRP decisions.
Searching decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) is important -- for evaluating the merits of a potential case and also, of course, for citing precedent when drafting documents (such as a complaint and a response) in an actual case. But, searching UDRP decisions is not always an easy task.
While having a backup plan is usually a good idea, it's often not an effective way to obtain someone else's domain name -- at least not when Plan B consists of a company filing a UDRP complaint with the hope of getting a domain name to which it is not entitled and could not acquire via a negotiated purchase.
The UDRP has never required that a complainant own any trademark registrations to succeed in a domain name dispute, given that common law trademark rights (if properly established) are sufficient. But, as a pair of recent UDRP decisions reminds us, even some registrations are insufficient, such as those on the "Supplemental Register" at the U.S. Patent and Trademark Office (USPTO).
The Uniform Rapid Suspension System (URS) is often described as a domain name dispute policy that applies to the new gTLDs. While that's true, the URS is actually broader than that.
While plenty of UDRP decisions have made clear that a trademark owner's delay in bringing an action against a cybersquatter (often referred to as "laches") is typically not a defense, actor David Duchovny's decision to file a UDRP complaint nearly 21 years after the domain name <davidduchovny.com> was registered may set a record for the longest wait in a domain name dispute.