Attorney Doug Isenberg, founder of The GigaLaw Firm, was quoted in an article from Thomson Reuters Westlaw Today, “Domain expert opines on why L'Oreal moved to cancel domains en masse.”
The article examines a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), in which the panel ordered the cancellation of 705 domain names in a cybersquatting case filed by L’Oreal.
The article says:
L'Oreal sought a mass cancellation, an option that only about 1% of those filing UDRP complaints seek, according to GigaLaw's Domain Dispute Digest, a quarterly publication by attorney Doug Isenberg.
Isenberg speculated that the exceptionally large number of domains contributed to L'Oreal's decision.
"Some companies have become very mindful of the sizes of their domain name portfolios, which require annual renewal fees paid to their registrars, so adding hundreds of domain names in a single batch could be seen as a considerable expense not worth incurring," he said.
"On the other hand, I almost always advise my clients to seek the transfer, not cancellation, of domain names in UDRP cases to avoid the real possibility that another cybersquatter might register a canceled domain name, at which time a trademark owner could choose to file a second UDRP complaint for the same domain name, which would be much more expensive than if the trademark owner had the domain name transferred in the first place."
Isenberg noted that the current form of the UDRP does not allow for "true" cancellations, meaning a panel can only remove a disputed domain from the current registrant's control, not prohibit that registrant or another from re-registering the domain.
"WIPO and the Internet Commerce Association recently said that true cancellation is something that ICANN should consider as a remedy in any review of the UDRP, and I would see it as a welcome change," he said, referring to the Internet Corporation for Assigned Names and Numbers, the organization that adopted the UDRP in 1999 to streamline the resolution of domain disputes.
