In this post, Nat Cohen makes the argument that damage caused by the UDRP outweighs its benefits.
Why are we weakening ownership rights throughout the entire Internet space and subjecting millions of dollars of domains to attempted seizures each year so that mostly low value cybersquatted domains can be removed from circulation?
The UDRP is gaining popularity as a means for companies to seize valuable domains without paying for them. So many companies are now using the UDRP to target valuable domains that it raises the question of whether the primary function of the UDRP today is to combat cybersquatting, or instead to enable companies to seize valuable domains without paying for them. If so, the UDRP, as currently administered, is doing more harm than good.
The UDRP puts every .com, .net. and .org domain in existence at risk of loss through an administrative proceeding. The rationale for undermining the rights of nearly all domain owners is that the UDRP is necessary to combat blatant cybersquatting.
What good does the UDRP do?
Looking at UDRP complaints by total volume, the vast majority of them result in the transfer of a cybersquatted domain. Proponents of the UDRP will point to these numbers to demonstrate that the UDRP is working as intended. They’ll cite recent cases such as the one where Gucci won 182 .org domains in a single dispute, or one where Hermes went after another 182 .org domains.
Yet the volume of complaints doesn’t tell the whole story. Mike Berkens commented about the Gucci cybersquatted domains, “I can safely say there is not one of these .org domain names that is even worth the registration fee”. As for the Hermes complaint, he said it was “a huge waste of money” and “not sure any of these domains are worth the $8 a year to register or renew”. In other words, while these domains are used to pad the stats of those who trumpet the problem of cybersquatting, the domains themselves are worse than worthless – they have negative value.
Some typo domains receive substantial traffic and some cybersquatted domains are developed for bad faith uses. These sorts of domains would certainly be worth going after in a UDRP dispute. Yet a review of UDRP decisions shows that the domains that are targeted in UDRP disputes are rarely ones that are likely to receive a high volume of type-in traffic, for example domains such as Gieco.com or Verzon.com or GoDady.com. Now that the UDRP is in its 15th year, the big brands have had years to go after the highest value typo squats of their domains. Indeed these typos are already owned by Geico, Verizon, and GoDaddy, respectively. Nor are many of the domains that are targeted in UDRP complaints that contain well-known trademarks developed. These domains are primarily inactive or parked.
The domains that are targeted in UDRP disputes tend to be ones that don’t seem to justify the filing fees much less the registration fee. Recent examples are typical – petrobrasnigeria.info, onlineaccutanemall.com, ermenegildo-zegna-2013.com, swarovskischmuck-outlet.com, xenical-without-prescription.com and allover30freepics.com. These disputes are making money for the lawyers bringing these actions but are likely a waste of money for the brand owners. These domains are so obscure that they bring to mind a variation of the question, “If a tree falls in a forest and there is no one nearby to hear it, does it make a sound?” If a typo-squatted domain gets no traffic, does it do any harm?
A 2012 Internet Commerce Association analysis found that “for each million domain registrations there are about 41 domains alleged to be cybersquatting in UDRP cases” over the course of a year. Less than 0.01% of registered domains in a given year generate enough concern among brand holders that they will prompt a UDRP complaint.
There are 118 million registered dot-com domains which is not much less than the 129 million people in the combined populations of France and the United Kingdom. On any given day, there are around a dozen new UDRP complaints filed against dot-com domains. Anyone can file a UDRP complaint at any time. The fee is small. The forms are online and easily filled out. You don’t need a court order or a detective. There are no obstacles to file, and yet brand owners file only around a dozen disputes on average each day.
If across France and Britain on an average day a dozen people were charged with misdemeanor offenses, would strong new laws or procedures be required to combat this “crime wave”? Rather, France and Britain would be utopian paradises that would be by far the safest places on earth. (The UN reports annual total crimes in France and the UK at over 10,000,000 per year!) The extreme infrequency of UDRP filings, when compared to the number of registered domains, suggests that the economic harm caused by cybersquatted domains is vastly overstated.
Another indication that brand owners see little harm from cybersquatted domains is that big trademark holders, with large legal staffs who aggressively police their trademarks, are letting blatant trademark domains drop without bothering to pay the $10 fee required to secure them. Mike Berkens has several blog posts about this where he highlights recently dropped domains such as WiiConsoles.com, TheYouTube.com, NikonBinoculars.com, PaywithPayPal.com and many others that the brand holders can’t be bothered to register.
If cybersquatted domains were causing serious harm, one would expect to see hundreds, if not thousands, of UDRP cases brought every day on high priority trademark-infringing domains, and trademark holders aggressively buying up the most obvious domains incorporating their trademarks. Instead, we are seeing a relative trickle of cases on mostly low value domains and many trademark holders declining to purchase blatant cybersquatted domains when available.
What harm does the UDRP do?
In contrast to the relative indifference of brand owners in using the UDRP to go after cybersquatted domains, the UDRP is generating excitement among some companies due to its power to order the transfer of domains without any compensation to the domain owners. For these companies, the primary use of the UDRP is not in going after clear-cut cybersquatted domains. Rather, they see the UDRP as a low-cost way to secure desirable premium domains that are on their acquisition wish list and may even be preferable to their corporate domains.
The key to success in a UDRP complaint is to demonstrate that the current domain owner is acting in “bad faith”. This may seem difficult to do, but it can be quite easy. UDRP panels have accepted as sufficient evidence of bad faith the following- that the domain is parked (even without the owner’s knowledge), that the domain is inactive, the the domain is for sale, that the domain owner refuses to sell, that the domain once was used for a business but is no longer, that a domain is used as a criticism site, that the domain is currently used for an operating business (but one that is alleged to be trying to profit from traffic intended for the Complainant). It used to be that a Complainant had to demonstrate that a domain was registered in bad faith, but now if you get a favorable panelist for a complainant, you can win an aged domain simply by pointing out a recent objectionable link on an auto-generated landing page. Also, if at first you don’t succeed with one panelist you can simply refile the complaint less than a year later, and the next panelist may award you the domain (see the Sport2000.com decision from January 1, 2014 or mothersmilk.com from 2009 or others).
With UDRP panels making it so easy to take domains from their owners, especially if the domain is owned by a domain investor or by a small businessperson who is not currently using the domain, trademark owners are discovering that the UDRP is ideally suited for obtaining valuable domains on the cheap. Why waste the power of UDRP panels to order domain transfers on worthless typo squatted domains, when one can go after valuable premium domains instead? Paying for domains is old school. The UDRP thus sanctions this “snatch and grab” approach to domain acquisition.
What do the following domains have in common – YU.com, D1.com, Upbeat.com, Inshape.com, Opulence.com, lgg.com, Croma.com, Scram.com, Rive.com, Wala.com, SteelBuildings.com, SpaBreaks.com, Quirk.com, Reckon.com, Quebec.com, GoldCoast.com, and Palace.com?
The answer is that all these domains, and dozens of similar ones, were targets of UDRP complaints within the past year.
One of these domains, lgg.com, recently sold for $175,000. Others such as YU.com or Palace.com would fetch hundreds of thousands of dollars from investors and are similar in quality to domains that are selling for millions of dollars to end-users. The total value of the premium domains targeted in UDRP complaints in the past year is easily in the millions of dollars.
The owners of the premium domains targeted by UDRP complaints are forced to spend hundreds of thousands of dollars each year in legal fees and administrative costs — and to devote huge amounts of time, trouble and effort — to defend their domains against the false charges of bad faith behavior leveled against them by covetous companies. When the domain owner prevails, he or she recovers not one penny of these costs – even when the Complainant is found guilty of Reverse Domain Name Hijacking.
Sometimes the owner of a premium domain loses a UDRP dispute, even in the absence of solid evidence of any bad faith intent towards the brand owner. Unjust decisions are not a surprising outcome of the UDRP.
The UDRP has many flaws, as discussed elsewhere. It lacks uniform standards; it has a pervasive pro-complainant bias; decisions rely on widely differing and highly subjective views of what is meant by “bad faith”, and the reasoning of some of the panelists is sloppy and inconsistent with the language of the policy.
The challenge is to find a policy that strikes the proper balance between fighting the harm caused by cybersquatted domains against the harm caused by implementing a flawed and inconsistent UDRP that undermines the rights of domain owners and that allows companies to use the UDRP as a cheap tool to wrongly seize valuable premium domains.
An analogy may be helpful in thinking about how to find that proper balance. Let’s say you own a stable that boards valuable racehorses but the stable is also home to swarms of mosquitos. You fumigate the stables to try to kill the mosquitos. You discover that the pesticide is only partially successful in eradicating the mosquitos and has the unfortunate side effect of sickening and killing some of your racehorses. What would you do?
The mosquitos in this analogy are the cybersquatted domains, and the racehorses the valuable premium domains. The stable is the Internet and the pesticide is the UDRP. A racehorse is sickened when it is attacked in a UDRP and it is killed when it is wrongly ordered transferred by a UDRP panel.
Common sense would tell you that the highest priority would be to stop sickening and killing the racehorses by switching to a safer version of the pesticide that did not put the racehorses at risk.
To make the analogy more accurate, you’d need to add that some people are intentionally using the pesticide to sicken and to kill the racehorses. The need for a safer pesticide then becomes even more evident.
If you don’t care at all about the fate of the racehorses, and your single-minded focus is to kill as many mosquitos as possible, then you would recommend increasing the potency of the pesticide to make it even more deadly. CADNA, a lobbying group for corporate trademark interests, advocates just that position in pushing for penalties to increase in the Anti-Cybersquatting Protection Act and the UDRP. My view is that such a policy wouldn’t deter cybersquatting, as the UDRP already has a nearly perfect success rate in ordering the transfer of domains that are obvious cyber squatted domains. Instead, increasing penalties would make the ACPA and the UDRP an even more effective club for large companies to bully smaller companies into giving up their domains by threatening them with not only the loss of the domain but also severe monetary penalties if they end up on the wrong side of the outcome.
But what would domain owners have to fear from higher penalties if they are doing nothing wrong?
If the UDRP was properly and impartially implemented, then the domain owners may not have anything to fear from greater penalties. Unfortunately, the UDRP providers are acting without oversight and, left to their own devices, have developed a system that is riddled with bias and relies on panelists that often have, at best, a lack of knowledge of the domain industry and, at worst, are actively hostile towards domain investors.
Let’s not forget that many UDRP panelists earn their living and have spent their careers representing large brand owners. Their perspective on trademark matters comes from decades spent aggressively asserting the rights of trademark owners.
Let’s not forget that many UDRP panelists do double duty and also represent complainants before the UDRP. One day a particular lawyer, let’s call her Anne, will argue on behalf of a complainant before one of her colleagues, let’s call him Bill, who is the Panelist. The next day they can switch roles. Anne will become the Panelist for a different dispute while Bill is now the attorney for the complainant. Bill’s arguments on behalf of his complainant may sound familiar to Anne, as his arguments are likely to be the same ones she made the day earlier when she was representing her complainant. When Anne as a Panelist weighs the arguments made by Bill against the ones made by the respondent, what are the chances that she will reject the arguments made by Bill which are also the same ones she is relying on to win her dispute, in favor of the contrary arguments made by the respondent? It’s a very cozy arrangement. It is not one that leads to fair outcomes for respondents.
Being a UDRP panelists is a privilege that attorneys who specialize in representing domain owners are currently not allowed to enjoy, as none of them have been accredited as UDRP panelists. Only attorneys who specialize in representing trademark holders are apparently seen by WIPO and NAF and the other UDRP providers as sufficiently impartial to be entrusted with the role of UDRP panelist.
Remarkably, the same eagle-eyed Panelist who is so talented at seeing bad faith in circumstances where no one else can, is blind to the evident conflicts of interest that arise from his own behavior in acting as an advocate and as a so-called “neutral” in the same forum.
On such a shaky foundation as what passes for justice in the UDRP do the livelihoods of domain investors rest.
That a very valuable domain can be lost in a poorly decided UDRP decision is not mere speculation. Three recent prominent casualties of the UDRP are Vanity.com, Canary.com and Ovation.com. All were ordered transferred through, in my view, egregiously flawed UDRP decisions. These three domains alone are worth more than thousands of the nearly worthless cybersquatted domains that have been ordered transferred by the UDRP in the past year.
The UDPR has proven effective in transferring predominantly low-value cybersquatted domains. The UDRP has also proven effective, due to its serious flaws, in wrongly ordering the transfer of valuable premium domains and as a result encouraging many more frivolous disputes seeking the transfer of other valuable premium domains.
On balance, the UDRP, as currently administered, is doing more harm than good.
Thanx for that – it was a fast read! 🙂
Raymond Hackney says
That was a great article Nat and I read every word, but what are the alternatives you seek ?
With no UDRP what does a brand do ? Say the Gucci case for the 182 .org domains ? Are they going to have to spend more money to make the matter a much bigger deal ?
If there is no UDRP, I still believe that companies are going to go after domains, so the small registrant or small company may have to spend more to defend it.
I think there needs to be a system where if the company goes after the name in a UDRP and lose, they pay the domainers expenses. If they are found to be Reverse Domain Name Hijacking then they pay a penalty to the domainer. For each new RDNH against a specific company it goes up, so if they lost one UDRP and the panelist found RDNH the domain owner would receive $25,000, if that company went after another domain down the line and it was RDNH again it would be $35,000 to that domain owner.
I think there is always going to be demand for some type of uniformed system, maybe not the current iteration of the UDRP, but something that is consistent.
Nat Cohen says
Raymond – thanks for your comment. I’m not suggesting that we scrap the UDRP, but that the flaws in the UDRP be corrected. The UDRP makes it too easy to seize (steal) premium domains, and does not provide adequate protections to domain owners.
A process where a trademark owner hand picks the forum, and the forum hand picks panelists who are largely active trademark attorneys, and the panelist simultaneously acts as an advocate and a panelist, and the key criterion is to guess at the intention of the domain owner when he/she registered the disputed domain perhaps a decade or more ago – is not going to produce just outcomes. The rights of most domain owners rest on this shaky foundation.
Simple steps that can begin to address these flaws include –
* giving the domain owner an equal say in selecting the forum
* not allowing a panelist to also act as an advocate
* putting in place some sort of quality control to ensure that panelists adhere to the UDRP as written, and removing those who are prove themselves unfit
* recognizing that owning a domain that has substantial inherent value is a defense to a claim of bad faith registration
* establishing a sufficient penalty for RDNH that it will act as a deterrent to frivolous claims.
If these changes are enacted it would go a long way towards addressing the flaws in the UDRP. Many of these are procedural or administrative changes that would not require any changes to the UDRP policy.
Andrew Allemann says
I think the point that Raymond is bringing up is one I’ve heard from lawyers before: UDRP is cheaper for complainants, but also for respondents, when compared to a lawsuit.
There are some common sense reform ideas, such as requiring the complainant to check a box certifying that their trademark was used prior to the respondent registering the domain.
@ Raymond Hackney & @ Nat Cohen,
Why can’t obvious trademarks be nipped in the bud at the Registrar level, such as current litigation against Godaddy? Godaddy wasn’t happy AMPAS brought Joe Presbrey as an expert witness, who created software to detect trademark infringement on domain names. These exist, as evidenced if you check:
on Valuate.com – all get flagged about obvious trademark infringement against, respectively, eBay, Godaddy, and Gucci . . .
It would diminish short-term profits of the Registrars, but be good for the internet long-term, and save corporations time and $$ if infringing domains can be flagged on registration.
It’s a cartel between ICANN, Verisign, and the Registrars to maintain the status quo, imo.
I like the idea of getting compensation for the time and money a domain owner has to spend.
There are 2 requirements I would like to see a Complainant have to show/prove before a UDRP is issued. (1) A trade mark that existed prior to the registration of the domain (2) Use of the domain by the Respondent that prime facie shows a violation of those trade mark rights by use of the domain . The way the UDRP has been peverted over the past decade leaves it with no resemblance to the UDRP that was envisaged .Mainly it has been abused by lawyers on their clients behalf.
Kevin Murphy says
This article seems to ignore the fact that many of these domains are being used for phishing and counterfeiting.
That’s why the brand owners file the UDRPs.
The 182 Gucci domains cited, for example: all used to sell counterfeit Gucci goods. Same for the Hermes case.
The domains may get no type-in traffic, but so what? That’s not the only way to get someone to go to a web site.
Nat Cohen says
Kevin, That’s a good point. When I spot checked domains that were recently the subject of UDRP disputes, while there were some that were developed for an infringing use, the majority were undeveloped or parked.
But as you say there are some squatted domains that may not receive a lot of type-in traffic that still do enough harm to a brand owner that filing a UDRP complaint is a net economic benefit to the brand owner.
It is likely impossible to definitively answer whether the UDRP does more harm than good. It would require a major study and a huge amount of research and reliance on many questionable valuation assumptions to analyze whether the harm caused by Complaints that wrongly target domains and the harm caused by the wrongful transfer of premium domains is greater than the benefit provided by the transfer of cybersquatted domains.
The point of the post is not to conclusively prove that the UDRP is doing more harm than good. Even if one believes that the UDRP does far more good than harm, I think the main thrust of the post is valid.
I used the question of harm vs. benefit to frame the post as a way to highlight the larger point that the UDRP as currently implemented is inflicting a lot of unnecessary harm and is increasingly being usurped by trademark owners who are using it to try to seize premium domains. When, in addition, one sees that many of the cybersquatted domains that are targeted in UDRP complaints are worthless then these circumstances suggest the question of whether the primary purpose of the UDRP is now to combat cybersquatting or is instead as a tool to seize premium domains.
Kevin Murphy says
I bet if you compile the stats (I haven’t in any formal way) you’ll see that the number of RDNH cases (and cases that *should* have been RDNH) is tiny compared to the number of genuine cybersquatting cases handled by UDRP.
Bloggers pick up on the outrageous cases, like vanity.com, because they’re good copy, but I’d be surprised if they’re more than a drop in the ocean, statistically speaking.
That doesn’t mean something shouldn’t be done about abuse, but I think the small number of cases would be relevant to any cost/benefit analysis.
Nat Cohen says
It is a matter of Quantity vs. Quality The harm done by the UDRP is obscured because it is concentrated in a few cases.
If the wrongful transfer of Vanity.com is counterbalanced by the rightful transfer of xenical-without-prescription.com, then yes, the problem cases would be a drop in the ocean.
But since Vanity.com is likely worth thousands, if not tens of thousands, of domains like xenical-without-prescription.com, then the harm caused by the wrongful transfer of Vanity.com could outweigh a month’s worth of UDRP transfers of cybersquatted domains. Then it would only take a few cases such as Vanity.com for the harm caused by the UDRP to outweigh the good.
The harm isn’t only created by the wrongful transfer of valuable domains. It is also demonstrated by every “Claim Denied” decision in cases where the domain owner filed a response, as that means a domain owner was needlessly put to considerable time, effort and expense to defend a domain that he or she was rightfully entitled to own.
The surge in RDNH cases and the large number of premium domains targeted in recent years demonstrate the UDRP is increasingly being usurped for the illegitimate purpose of seizing premium non-distinctive (generic) domains. This indicates the harm caused by the UDRP is on the rise.
On the other side, the fall in parking payouts has likely done more then the UDRP to reduce cybersquatting by making many typosquatted domains uneconomical to renew. Brand owners have had 15 years to go after the high profile typosquatted domains. Certain brands – Lego and Swarovski come to mind – nevertheless appear to be going after every domain that incorporates their brand – no matter how remote the likelihood of harm. UDRP disputes on domains such as klocki-lego.info pad the stats but I believe provide no benefit to the brand owners.
What’s left when you get rid of the worthless domains that are being pursued in UDRP complaints? What remains will be a much smaller number of domains than the total number of domains that are the subject of a UDRP complaint each year. The remaining domains, even ones that are well worth pursuing in a UDRP, will on average be worth much less than the premium domains (YU.com, D1.com, LGG.com, Palace.com, etc.) that are targeted in unfounded UDRP complaints.
One of the goals of my post is to refute the notion that the harm done by the UDRP is just a drop in the ocean compared to the good done by the UDRP. I think it is a much closer call than that.
Whether or not the harm outweighs the good, there is substantial harm being done. And for no necessary reason.
Valuable premium domains do not need to be put at risk in order for the UDRP to fulfill its function of transferring clear-cut cybersquatted domains.
Much of the harm now caused by the UDRP is due to panelists who undermine registrants’ protections by advancing aggressive interpretations of the UDRP to allow the UDRP to address outlier situations with rare fact patterns that would otherwise fall outside the purview of the UDRP.
The prime example of this is panelists who are frustrated that the UDRP as written did not allow the transfer of domains that were registered in good faith but then repurposed to take advantage of a more recent trademark. So to address this rare situation, they adopted an interpretation of the UDRP that allows them to disregard the ‘registered in bad faith’ criterion, putting at risk hundreds of millions of dollars worth of investment grade domains and leading to egregious decisions like the one to transfer Ovation.com.
Left to its own devices, given that trademark owners have all the influence in the UDRP process, from selecting the venue to enrolling panelists from the ranks of their own attorneys, the UDRP will grow ever more unbalanced and will continue to spiral out of control.
For example if ‘YourPack’ is a registered trademark is it possible for ‘YourPackKit’ to become a subject of a UDRP complaint even though these words are generic? If so, it would indeed seem most confusing despite trademark checking say through NameCheck.com!
Nat Cohen says
Thanks for the comment. Yes, my sense is that “YourPackKit” would almost certainly be found by a Panel to pass the test of being ‘confusingly similar’ to “YourPack”. Panels have found MaddHattEntertainment to be confusingly similar to MADD, UniProtein to be confusingly similar to Universal, and most famously, Bodacious-Tatas to be confusingly similar to Tata.
As you suggest, this means that it can be very difficult if not impossible for domain owners to know which trademarks owners may claim rights to their domains, especially since a Complainant can rely on a trademark that is valid anywhere in the world, and even rely on unregistered, common law trademarks.
Many panels, though fortunately not all, refuse to find RDNH no matter how frivolous the case if the panel determines that the Complaint passes the ‘confusingly similar’ test. As John Berryhill has pointed out, RDNH is intended for companies who misuse their trademark rights in an attempt to seize a domain they are not entitled to. A company has to have trademark rights in order to misuse them.
In his words:
“a requirement of being found liable for trademark mis-use is possession of a trademark to mis-use. Finding otherwise is similar to demurring a finding of armed robbery on the grounds that ‘defendant had a gun'”.
Panels engage in a perverse double-think when they use passing the ‘confusingly similar’ test as a rationale for refusing to find RDNH.
Thanks for your interesting reply but Madd & Tatas are not generic i.e. they can’t use UDRP cases on too generic words such as Face, Life or Health unless they combine of two words e.g. DiscoveryHealth which is already registered or trademarked.
Matt Brown says
This is a very interesting article and I would also agree that something needs to be done about the growing level of frivolous filings especially when represented by counsel. Only recently we found two separate Complainant’s guilty of RDNH both represented by the same law firm! These decisions were only three months apart so clearly this firm did not learn anything! Now I understand that the UDRP provides no compensation for the unnecessary legal costs imposed on Respondents for these types of cases, especially where RDNH is found but i feel more should be done to deter trademark owners from making such filings. NOMINET’s DRS policy states that there is a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three or more DRS cases in the two years before the Complaint was filed. Perhaps there should be a presumption of RDNH if there is proof Complainant has been DENIED in three or more UDRP’s, perhaps even barring them for a period of time in circumstances where RDNH has been found.
Nat Cohen says
Congrats on obtaining RDNH findings in the Croma.com and RPGlife.com disputes, as well as your victories and Calibers.com and Scram.com. As you saw, I highlighted Croma.com and Scram.com as prime examples of cases where the UDRP is being misused as a means to seize valuable domains.
I like your idea of exploring non-monetary penalties for RDNH, as it may be difficult to develop a consensus around monetary penalties for RDNH.
The downside in a “three strikes” approach is that RDNH is rarely a repeat offense for Complainants. A Respondent may own thousands of cybersquatted domains, but a Complainant who is guilty of RDNH is usually going after one particular domain that is of special value to that company.
Since a cybersquatter may own thousands of cybersquatted domains, and be on the receiving end of multiple complaints, he may soon have multiple decisions against him.
The dynamic of frivolous complaints flips those numbers on its head. RDNH cases arise from the thousands of companies that each are targeting one premium domain that is of particular value to them. RDNH is not a primarily a problem of a few bad eggs engaged in multiple offenses, but rather of multiple companies engaged, for the most part, in a single attempt of reverse domain name hijacking.
I don’t think a “three strikes” approach will be effective in dissuading RDNH. It may have a limited effect if applied to law firms, but the law firms will argue that they are just carrying out their client’s wishes, and in any case it is easy enough for a Complainant to switch to a different law firm.
To be effective, given the dynamics that lead to RDNH, I believe that any penalty imposed for RDNH would need to be applied for each occurrence.
Is there any scheduled time at any forthcoming ICANN conferences when the subject of UDRP will be discussed?
Nat Cohen says
Even though we are now approaching 15 years since the launch of the UDRP without, to my knowledge, any substantive review of the UDRP, ICANN has chosen to continue to defer any review of the UDRP.
My understanding is that any review of the UDRP will wait until 18 (?) months after the launch of the URS – I’d have to research the exact time frame – which if so would put the earliest the UDRP would be reviewed sometime late next year.
Andrew Allemann says
My concern about UDRP review and reform is that it results in an even uglier package. Just look at what has happened with rights protections in new TLDs.
Nat Cohen says
Yes, you are right. The domain industry likely should be very concerned about the outcome of any UDRP “reform”. Trademark interests are pushing to remove the hurdle that a domain must be shown to be registered in bad faith before it can be transferred. If this change is made, many old, valuable premium domains would be at much greater risk of loss. They are also proposing a loser pay model and other penalties that would disproportionately burden small business owners and domainers, while being insignificant to large trademark owners.
Trademark interests are tremendously more powerful than domain investors. They are also much more vocal and more engaged with ICANN.
Lacking power or influence, and with its members largely disengaged from ICANN, the domain industry will need to rely on educating those in a position of influence about the inequities in the process. That is one of the aims of this post. Thanks to your publishing it on DNW, you have given it a broader audience that it would have had otherwise.
great stuff and I have two cases in wipo now that are completely bs.. If you park your domains be aware they are likely setting you up and using that trademark ad buy against you so I work my ass off for 18 years and then they can take my asset away is really scary.. SO much for case law.. this topic should be addressed even more with those leaders as it will cause sever damaage to all domains.. thanks.. P..s FUC the socialpoint guys from brazil
Nat Cohen says
Yes, parking domains is extremely risky. By placing ads on your domains that link to a trademark holder or its competitors, Google makes money, the parking company makes money, and you risk the loss of your domain.
When dealing with a valuable, premium domain, the links that Google shows often have little to do with the reason the domain was originally registered.
The UDRP requires evidence that the domain was registered in bad faith before a transfer can be ordered. But many panelists are very sloppy about that requirement. Their reasoning is that they can’t tell what a domain owner’s intention was when he/she registered a domain many years before – the only clue to the domain owner’s intentions is how the domain has been used. So if it has been parked with infringing links, then they’ll say that demonstrates that it was registered in bad faith.
Of course, this reasoning has the effect of negating the ‘registered in bad faith’ requirement and converting it to a ‘used in bad faith’ requirement, which is not how the UDRP is written.
Last week I spoke with a well known domain investor who has pulled his 30,000 domain portfolio off of parked pages because the risk is too high. I have also removed ad links from the landing pages of many of my domains for the same reason.
From what I can see, parking companies have been quite passive when faced with this threat to their business model. They have not been engaging with the UDRP providers or the panelists to inform them that domain owners do not control the links that appear on the parked pages.
How about make it illegal for anyone to register a name that is a match to a known trademark in the first place. Put the control in the hands of the registrars. They could easily search trademark records related to a name that someone is seeking to register. It could be limited to exact match or exact match plus one other word like the ‘YourPackKit’ example. Cuts out a lot of need for UDRP from the get go. Just a thought…
Kevin Murphy says
Because pretty much every word is a trademark somewhere.
Andrew Allemann says
This is sort of what the new Trademark Clearinghouse is for new TLDs, although it is very limited in scope and time.
And, what Kevin said.
Emma Zoe says
Can you provide more research data as to use of UDRP as to its effectiveness? I am doing a research paper for UDRP.