Greenspoon Marder Intellectual Property Blog: Dusting Off the UDRP (Uniform Domain-Name Dispute-Resolution Policy)

Apr 11, 2019

By: Justin McNaughton, Esq.

“Sooner or later, everything old is new again.” – Stephen King, The Colorado Kid.

In the early 2000’s, Razr phones and Internet cybersquatting was everywhere. Search engines had not yet become sophisticated enough to ignore cybersquatting and Razr phones were useless in that realm without mobile browsing, and yet it seemed like every company had a problem with people registering misspellings of their websites. The options for dealing with cybersquatting leading up to that time were about as fun as dialup internet; sometimes you could find what you needed but man it took forever.

The Uniform Domain-Name Dispute-Resolution Policy (UDRP), a masterpiece in hyphenation-practice, was adopted on October 24, 1999. That same year, the Anticybersquatting Consumer Protection Act was adopted to provide additional remedies to U.S. trademark owners. The next ten years were filled with UDRP proceedings; clients of all sizes spent money recovering these domain names from unscrupulous actors. All of the pent up frustration of the prior decade was unleashed on these URL pirates. Then, it kind of stopped. Sure there were still many, many of these proceedings every year, but I’d say they fell a bit out of fashion.

For those of you that don’t remember, UDRP is a proceeding that was set up through the Internet Corporation for Assigned Names and Numbers (ICANN). It is a relatively easy arbitration proceeding that a trademark owner could use to recover an infringing domain name. It didn’t work for everything, but in the situations where is worked, it resolved the difficulty of resolving certain website disputes when the squatter lives somewhere in Timbuktu.

Recently, many of our clients are seeing a recent resurgence in typosquatting and domain squatting.

Here is a quick refresher on UDRPs (you can study the long version on ICANN’s website):

The proceeding is done entirely on paper.
The proceeding is conducted by an independent panel.
The result is typically transfer of the domain name (if merited).
Grounds for transfer are: (1) the challenged domain name is identical or confusingly similar to the complainant’s trademark; (2) the owner of the challenged domain name has no legitimate rights in it; and (3) the challenged domain name was registered in and is being used in bad faith.
If filed through the World Intellectual Property Organization, the filing fee is typically $1500.
Typically a decision issues within 60 days of filing.
The registrar implements the transfer (if awarded) in accordance with the decision.

The key consideration is whether or not the domain name was registered in bad faith. For example, if the domain name was registered before you obtained rights in the trademark, it is unlikely that you will be able to show it was registered in bad faith.

On the other hand, here are some examples of bad faith:

The domain owner registers the domain and then tries to sell it to you for a bunch of money.
The domain name is being used to disrupt your business.
The domain is actively being used to create confusion.
The website at the domain copies your content.
The domain forwards to a competitor’s website.

Of course every situation is different, but sometimes a UDRP proceeding is the fastest, cheapest, best way – even in today’s flip-phoneless world.

It might just be time to dust off your old iPod, take back a pesky domain name, and order an all new Razr Phone. And you wouldn’t even be surprised to find out that Stephen King’s book is being released again in May 2019 with all new illustrations.

About Greenspoon Marder

Greenspoon Marder LLP is a full-service law firm with over 225 attorneys and more than 20 office locations across the United States. With operations from Miami to New York and from Denver to Los Angeles, our firm attracts some of the nation’s top talent in key markets and innovation hubs. Our core practice areas include Real Estate, Litigation, and Transactional Services, complemented by the capabilities of a full-service firm. Greenspoon Marder has maintained a spot on The American Lawyer’s Am Law 200 as one of the top law firms in the U.S. since 2015, and our goal is to provide exceptional client service by developing a thorough understanding of each client’s business needs and objectives in order to provide strategic, cost-effective solutions.

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Greenspoon Marder Intellectual Property Blog: Dusting Off the UDRP (Uniform Domain-Name Dispute-Resolution Policy)

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