Do these things and you’re less likely to receive a UDRP on your domain.
I’ve been buying and selling domains since the late 1990s and, so far, haven’t been hit with a single UDRP filing. I’ve received a few emailed complaints, but nothing has ever progressed to the UDRP stage.
While some of it is luck (you never know when a misguided company will file a UDRP), I also do things to prevent UDRP filings. I just went back and listened to DNW Podcast #170 with attorney John Berryhill, in which we discuss some of the things you can do to reduce the chances of a UDRP. This post takes information from that conversation and some things I’ve observed into account. (In other words, if anything is wrong, don’t blame Berryhill.)
Here are four things you can do to minimize the chance of receiving a UDRP.
1. Don’t register obvious trademarks
Is this an obvious one? Maybe, but some people don’t get the message.
The U.S. Patent and Trademark Office is not the sole arbiter of trademarks. Companies also have trademarks in other jurisdictions. And common law trademarks that companies have “earned” over time without formal filings are harder to track. If the first five pages of Google results for a keyword are all about one company, take it as a warning sign.
Yes, all good dictionary words are trademarked somewhere by some company. That doesn’t mean you have to avoid them. You can put Apple in your domain for a site about red apples but not a site about phones, computers, or music.
At the end of the day, ask yourself, “Why did I register this domain?” Your answer shouldn’t be “Because company XYZ uses the brand.”
2. Park smart
I hear many people say you shouldn’t park domains because of the legal risk. Always is a strong word, and there are cases in which parking your domains makes sense and could actually help you.
For example, the domain you own with Apple in it (but that has nothing to do with anything Apple has a trademark for) could benefit from a parked page showing ads for ordering apples. This could show rights or legitimate interests in the domain for advertising purposes and show that you aren’t targeting the big company (Assuming you aren’t actually targeting it!).
That said, you need to keep in mind that your domain will show different ads to different people in different countries. Letting the algorithm pick the ads (and change them at will) is a risk. I’m aware of one parking platform that lets you set a category keyword in your dashboard: Uniregistry. Take a minute to park any great domain there and assign a category if you think it might be targeted by a trademark owner. (I hope other parking companies will add this feature when Uniregistry is ultimately closed down.)
What about For Sale pages? Use a provider like Dan or SquadHelp that lets you add custom sales text on your lander. If your domain is ideal for a particular topic, but a company might also claim a trademark for it, put a message on your sales page that explains why you think the domain is valuable (e.g., because of the generic or descriptive use, not the trademark).
3. Be careful when someone inquires about your domain
I’ve read enough UDRPs to know that a purchase inquiry can be a trap. It could be a lawyer or company representative on a fishing expedition. With this in mind, when responding to inquiries, you should:
– Explain why the domain has value, e.g., the generic or descriptive value of the domain.
– If you know the company inquiring has a trademark that postdates your registration, mention how long you’ve owned it
– When responding, start with “In reply to your inquiry about buying my domain.” This is something Berryhill mentioned that makes it harder for UDRP complainants to selectively leave out the fact that they inquired about buying the domain instead of you making the overture.
– Take notes if you have a phone conversation about a domain. Keep the notes or send an email to yourself. Better yet, email the conversation recap to the other party.
– Be polite even if the other person is a jerk. Set your emotions aside.
4. Keep your domain prices in check
Why do some domainers who don’t trade in trademark domains get hit with more UDRPs than others? The higher you price your domains, the more likely you’re going to face a UDRP. A company that’s frustrated that a domain is outside of its budget is more likely to file a UDRP than someone is to file a UDRP against a domain priced for $2,000 because they’ll have to pay more than that for the UDRP.
Of course, it would be ridiculous to sell a great domain for a couple of thousand dollars. The point here is that the more valuable your assets (or your perceived value of them), the more likely you are to be on the receiving end of UDRPs. So take some extra time on #2 and #3 to protect your most valuable domain assets.
These four tips should help you minimize the chance of having to defend in a UDRP.
Domo Sapiens says
#2 Should be ‘Don’t Park”
Why risk your domain over a few pennies (Unless they suck)… in addition your earmarking the domain with a red-flag for the SEO ranking algos… and that takes along time to be removed.
Andrew Allemann says
Did you read it? In some cases it can actually help to park your domains. Numerous UDRP panels have found parking to be a legitimate interest; you just need to make sure the ads relate to the words of the domain, not a trademark.
Roberto Fernandez says
I did, why take the risk? Numerous cases? Premium domains?
How may premiums have been lost because of a parked page?
Unleash the real lawyers…
Andrew Allemann says
But it can **help** you as a UDRP defense if you park the domain. It’s not just about the revenue. It’s about establishing legitimate interests and your interest in the descriptive/dictionary nature of the domain, not a trademarked use of the name.
Domo Sapiens says
Would a strict “sales landing page” (no ads) achieve the same? (to me ‘parking’ means a page with ads)
Honestly, this is the first time I hear anybody suggesting to “park” your domains to protect/make them safe(r) from an UDRP/WIPO…
Risk – Reward
Andrew Allemann says
John Berryhill has suggested cases in which this is the case, and I’ve read decisions where the panel found legitimate interests based on the ads on the page.
Parking as I write about it in this post includes both PPC and parked pages, which is why I mention adding text on your for sale page explaining what the domain can be used for.
Roberto Fernandez says
Thank you again.
John Berryhill says
“ Honestly, this is the first time I hear anybody suggesting to “park” your domains to protect/make them safe(r) from an UDRP/WIPO…”
I’ve been saying it for close to 20 years now. Monetizing a dictionary word or phrase domain name consistent with its primary meaning is a legitimate use under the UDRP. A ‘for sale” page is not.
It is literally in the WIPO UDRP FAQ:
https://www.wipo.int/amc/en/domains/search/overview3.0/#item29
Panels have recognized that the use of a domain name to host a page comprising PPC links would be permissible – and therefore consistent with respondent rights or legitimate interests under the UDRP – where the domain name consists of an actual dictionary word(s) or phrase and is used to host PPC links genuinely related to the dictionary meaning of the word(s) or phrase comprising the domain name, and not to trade off the complainant’s (or its competitor’s) trademark.
——-
There are many UDRP cases in which the factor that saved the domain name was the targeted parking.
Roberto Fernandez says
Thank you, so very much JB.
I save this: “dictionary word or phrase domain name consistent with its primary meaning is a legitimate use under the UDRP. A ‘for sale” page is not.”
Now I am just wondering which company offers such a service: “ads exclusively consistent with the primary meaning” (only)
Andrew Allemann says
That would be the one I mentioned in the article – Uniregistry. They let you pick a category for the domain but not a keyword. Others might do it but you probably have to email their support, which is asking a lot.