This presentation discusses the nuts and bolts of filing complaints as well as the elements required to file a UDRP action. In addition, the presentation provides an overview of the UDRP process and practical tips on how to handle the UDRP and URS processes.

1. Domain Disputes
Overview of UDRP Procedures
6/5/2015

2. Domains = $$$$
• dellfinancialservices.com
• kodak.ru: 1 year + 20
lawsuits later
• myverizonwireless.com,
iphoneverizonplans.com,
and verizon-cellular.com:
$33 million later. . .
• scartletjohansson.com:
Scam sweepstakes to
collect e-mail addresses
• BBC.com: Had to win
back its domain

3. Why Dispute/Defend a Domain?
• Domain Hijacking (“Cyber Squatting”):
Register to resell
• Typo Squatting: Registering common
misspellings of famous domains to resell or
confuse consumers
• Reverse Domain Hijacking: Making false
cyber squatting claim to force domain transfer
• Confusion: Domain is like TM and site
markets similar products

4. UDRP Nuts and Bolts
• Uniform Domain-Name Resolution Policy (UDRP)
• Jurisdiction: Why UDRP?
– Registrant must "represent and warrant", registering
"will not infringe upon or otherwise violate the rights
of any third party”
– Registrant agrees to participate in UDRP process
• Who Can File: Any legal entity
– Owning a registered trademark
– Licensed to use a registered trademark
– Able to establish rights in a well known prior
trademark, or
– show an unregistered use

5. UDRP Nuts and Bolts: Cont.
• Available Relief:
– The transfer of the domain name: No opportunity
to recover damages
– top level domain names ("gTLDs": e.g. .com;
.info; .biz; .mobi; .net; .org)
– names corresponding to the codes of countries
("ccTLDs")which have adopted the UDRP
– Countries not adopting UDRP handled locally
• Cost: Depends on Forum and Panel Size
– WIPO Arbitration Center: $1500/$4000
– National Arbitration Forum: $1300/$2600
– Budget $1500 to $5000 (or more) attorney time
depending on complexity

6. UDRP Nuts and Bolts: Cont.
• Timing: Complaint through final Decision
– Average around 60 days, less if no response
– Extensions of time available for “extenuating”
circumstances
– Actual domain transfer estimate additional 2-4
weeks
• Losing Domain holder has 10 days after
decision to file a lawsuit before transfer
• Must request transfer! Not automatic

7. The Complaint: Prove Three Elements
• Domain name is identical or confusingly
similar to a trademark or service mark in which
the complainant has rights
• Domain name holder has no rights or
legitimate interests in respect of the domain
name
• The domain name has been registered and is
being used in bad faith

8. The Complaint: Identical or Confusing
• Only similarity between the trademark and the
domain name is considered
• The panel makes a visual and verbal
comparison taking the trademark's distinctive
nature into account.
• Panel does not consider the products or
services (in this step) – not a substantive
likelihood of confusion analysis

9. The Complaint: No Legitimate Interest
• Must try to prove a negative
• Offer evidence of lack of rights:
– Parked domain: Not using it?
– Content of site: Is it a real company doing
business?
– Passing off?
– Commonly known by domain name?
• Burden of proof then on domain holder to
dispute complainant's evidence and show
legitimate interest
• Not an exclusive list: Bring any evidence

10. The Complaint: Used in Bad Faith
• Sell/rent to the Complainant/TM owner or to a competitor
for value beyond out-of-pocket costs directly related to the
domain
• Prevent the Complainant/TM owner from reflecting the
mark in a corresponding domain name (must show
pattern of such conduct)
• Trying to disrupt the business of a competitor
• Trying to intentionally attract, for commercial gain, Internet
users by creating a likelihood of confusion with the
complainant's mark as to the source, sponsorship,
affiliation, or endorsement
• Can show other evidence: Not an exclusive list

11. The Response: Disprove Only One Element
• Domain name is not identical or confusingly
similar: Sometimes tough to do.
• Have rights or legitimate interest:
– Put on proof of business activity using the mark
– More time is better
• Not registered in bad faith
– No need to prove bad faith if shown legitimate
interest in the mark
– Argue it, but Panel may stop at legitimate interest
• Laches: A recent defense but effective one.
– Complainant new about the domain and did nothing
until now. Longer is better! (ex. <15 years)
– Harm to legitimate interest of domain holder very
helpful

12. Overview of UDRP process

13. Practice Tips
• Read the rules and the policy! (and
supplemental rules for your forum!)
• Start with current copy of model
complaint/response
• Threaten registrar to give up domain holder’s
info: May be able to resolve early
• Understand the issues and try to resolve early
• Not a Trademark lawsuit: Stay on point
• Use past UDRP cases in arguments
• Exhibits: Include them! More is better

14. Uniform Rapid Suspension (URS)
• Quicker/Cheaper: $350-$500, 20-25 days
• Applies only to new gTLDs, or ccTLDs adopting URS
• Additional defenses written into URS:
– Domain is descriptive, and making fair use
– Domain is operated as a tribute or criticism in FU
– Domain not part of a pattern
• No opportunity to amend complaint
• Higher Standard of Proof:
– Complaint denied where Panel finds contestable issue
– lack of clear and convincing evidence
• Cannot assert common law TM Rights
• Domain is suspended, not transferred
• Why use it? Registered TM vs. clear cybersquatting