An article published by Thomson Reuters Westlaw Today quotes Doug Isenberg about the unusual situation in which a disputed domain name is cancelled — rather than transferred — in a decision under the Uniform Domain Name Dispute Resolution Policy (UDRP).
The article discusses a recent decision in a UDRP case brought by the pharmaceutical company Sanofi at the World Intellectual Property Organization (WIPO) involving the domain name <sanofi-asia.com>, which contains the “Sanofi” trademark. Although Sanofi won the case, the panel ordered cancellation of the domain name registration rather than transferring it to Sanofi.
“In my view, if a trademark owner is willing to incur the time and expense of filing a UDRP complaint in the first place, then it should always request a transfer of the domain name, to ensure that the domain name can't fall into the hands of another cybersquatter, which is always possible with a cancellation,” the Westlaw article quotes Doug as saying.
“Some trademark owners might make a decision to request cancellation if they don't want to use the domain name for themselves,” Doug adds in the article. “But I think that's very short-sighted, because it's certainly significantly more efficient — and less expensive — to maintain a domain name that has been transferred instead of having to file yet another UDRP complaint for the same domain name if it is picked up by another cybersquatter.”
