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This year marks the 20th anniversary of the Uniform Domain Name Dispute Resolution Policy (the UDRP), a mechanism that sets out the legal framework for resolving domain name disputes in generic top-level domains (gTLDs) (e.g., .com, .net, .org, .biz), as well as a limited number of country-code top-level domains (ccTLDs) (e.g., .cc, .co, .me).

To commemorate the 20th anniversary of the UDRP, WIPO will be hosting a conference at its headquarters in Geneva, Switzerland on Monday, October 21, 2019. The event will discuss relevant internet developments, UDRP jurisprudence, and look ahead to the future of the UDRP and its ability to address evolving bad faith registrations.

The event also provides an opportunity for brand owners, trademark practitioners, party counsel, academics, registrars, ccTLD administrators, and other domain name and Internet stakeholders to meet and discuss the challenges they face.

We welcome the chance to celebrate the success of the UDRP and look forward to meeting you there!


As one of the top-ranking filers of domain name disputes, Safenames specialises in all dispute resolution policies including the UDRP. Since 1999, Safenames has filed over 200 cases and recovered over 500 domain names through the UDRP alone.

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The Chinese Domain Name Dispute Resolution Policy (‘CNDRP’) is an efficient procedure for resolving ‘.CN’ domain name disputes. Even though the CNDRP is based on the Uniform Domain Name Dispute Resolution Policy (‘UDRP’) model, this Policy has special regulations.

To dispute a domain name under the CNDRP, the domain name at issue has to be no older than two years. Article 2 of the CNDRP specifically states that “the Dispute Resolution Service Providers do not accept the Complaint regarding domain names with registration term[s] of over TWO years”.

This time bar is specific to the Chinese Policy and is based on the General Civil Law Rules of People’s Republic of China. However, in 2017, the time bar for general civil claims was extended from two to three years. In line with this change, the China Internet Network Information Centre (‘CNNIC’) issued an amended CNDRP for consultation.

Among those changes, the amended CNDRP proposed to extend the time bar from two to three years. Following the end of the consultation period in early June 2019, the CNNIC has now implemented these changes. As of 18th June 2019, the time bar has been raised to three years.

Brand owners are now able to file ‘.CN’ complaints for domain names which are up to three years old. However, the amended Policy makes no mention as to whether this applies to all domain names, or is only reserved for domain names registered after the changes came into effect.

If this new time bar has a retrospective effect, brand owners may be able to file complaints previously barred under the two-year time bar.

Previously, brand owners could file a complaint for domain names older than two years, if the trademark owner could prove that a change of ownership occurred within two years prior to filing the dispute. Still, this new time bar gives brand owners more flexibility for filing ‘.CN’ domain names disputes.

Brand owners can now reopen previous cases involving ‘.CN’ domain names, and reassess whether they are still barred from filing a dispute with the relevant dispute provider.

Author – Caroline Valle

On March 27, 2019, .inc launched globally. “Inc” is synonymous with business in nearly every part of the world, and .inc is offering businesses the opportunity to get a gTLD that quite literally means business. More than 20 percent of the Fortune 100 Companies and Forbes 100 World’s Most Valuable Brands have already registered .inc domains – including Amazon.inc, Facebook.inc, LinkedIn.inc, Twitter.inc, BMW.inc, Goldman.inc, Infinity.inc, Chanel.inc, and hundreds more. This gTLD is gaining traction around the world with registrations in more than 20 countries.

Early adopters are using .inc domains in many different ways – corporate sites, new ventures, investor relations pages, employee portals. Freshii, a fast casual restaurant franchise, is using Freshii.inc as its corporate site (previously ir.freshii.com). Paul Hughes, Chief Business Development Officer at Freshii says, “we are using Freshii.inc for our investor relations page because .inc means business and this is where our corporate content lives online. We can see this becoming the trend for many more public companies moving forward,”

Collab, a digital design and entertainment studio based in LA, has switched from CollabCreators.com to Collab.inc because their old URL caused customer confusion. The company was mistakenly referred to as “Collab Creators,” rather than its actual name “Collab Inc.” Dave Rosner, EVP Head of Marketing says, “for the past several years we were using the domain collabcreators.com. That led to some confusion since our company name is Collab. The domain Collab.inc solves this problem. Now our company and domain name match perfectly, at Collab, we are always on the hunt for new and better solutions, and we really prefer the shorter .inc url.”

Hundreds of businesses have purchased .inc domains over the past few months and it will be interesting to see how they choose to use them. The opportunities are endless with no restrictions on .inc domains they can be used by any individual or business and are available in the languages of over 190 countries. With extensive naming options available, .inc gives companies the opportunity to take full control of their business name and domain name without compromising on either.

Businesses can register any .inc domain, including single-letters and single-numbers, for a premium flat fee. Rather than pricing .inc at $10/year and watching many of the best names get taken immediately, .inc has priced their domain at a premium in hopes of avoiding cybersquatsers allowing businesses to register the .inc domain they want – even if that search is performed 5 or 10 years from now.

To make this domain even more compelling to businesses, .inc has partnered with popular brands like LegalZoom, 99designs, WeWork, and Delta Air Lines to include more than $2,500 worth of free member benefits with every domain. These services make .inc a unique domain ending that appeals to budding entrepreneurs and SMBs, as much as global enterprises.

Author – Intercap Registry

Five year ‘Right of Registration’ reservation period ends June 25th

26th March, OXFORD: .UK domain registrants with a third-level domain (.co.uk, .org.uk, .me.uk, .net.uk, .plc.uk or .ltd.uk) are today reminded that they have less than three months left to secure the shorter second level (.uk) equivalent, before it is made available to the public.

The deadline closes at 05:00 UTC on the 25th June, the end of a five year ‘Right of Registration’ period set aside by Nominet in June 2014 to allow third-level domain registrants ample time to consider whether they would like to register their second-level equivalent.  

Those with .co.uk registrations before midnight on 28 October 2013 were given five years to decide whether to register the corresponding .uk ending as well as, or instead of, their existing registration.  If a .co.uk was not registered at that time, rights would have passed to the .org.uk then the me.uk domain. Registrants can check if they have rights at www.theukdomain.uk/do-i-have-uk-rights/

After the deadline closes, all previously reserved but unregistered domains will become generally available in July.

Of the original 10 million domains who had their rights reserved in June 2014, there are now 3.2 million domains that have not registered the corresponding shorter .uk equivalent. Over 2 million .uk domains have been registered.

Nominet and its registrars have been in touch with registrants over the course of the five year Right of Registration period, through direct contact, webinars, regular promotion and registrar initiatives.  

To remind rights holders of the deadline, an advertising campaign is planned for May.

Commenting on the Right of Registration entering its final three months, Eleanor Bradley, COO, Nominet, said: “We have given registrants a long period of time to consider their options. As the deadline approaches, an advertising campaign will remind rights holders that time is running out.  For some companies, they will really want to secure the shorter domain, for their own use, now or in the future, or to guarantee nobody else can use it. They need to take action quickly to avoid missing out.  Others are happy with the domain they have, and don’t want to register or use another.  It’s important to stress to those people that the existing domain will continue as normal, and no action is required.’  

It is a feature of the global domain name system that the same set of characters before the dot – known as the ‘string’ – can appear in names with different suffixes.  So for example, ilovedomains .co.uk  ilovedomains.org.uk and  ilovedomains.com might all be registered to different people. Ellie Bradley said; “In the vast majority of cases, very similar domains co-exist with no problems.  But for the rare cases where someone is abusing their domain or using it for illegitimate purposes, we have safeguards in place so action can be taken swiftly.”

For more information on the .UK domain name or to discuss with an expert please email [email protected] or call 01908 200022.

Article by Micah Ogilvie

The recent case of Pret A Manger Limited v. Jack Tang; D2018-2059 (concerning the domain name “pret.app”) highlighted the importance of credibility under the Uniform Domain Name Dispute Resolution Policy (UDRP). Whilst the courts are better equipped to evaluate the Parties’ credibility in a dispute, much can be ascertained from the Parties’ submissions as regards their background, intentions and motive.

In the above case, the Complainant was the international sandwich shop commonly referred to as “Pret” which operates over 500 stores world-wide. The Complainant holds approximately 480 trademarks which incorporate the term PRET and in December 2017 the Complainant launched an app for smartphones and tablets in the United States of America (“United States”).

The Respondent referred to himself as an “Internet entrepreneur”, who claimed that he registered the domain name to launch a French website to help students in France find work opportunities.

As the burden of proof rests with the Complaining party, they have considerable control over how the Respondent will be perceived in a UDRP dispute. He has the task of demonstrating to a panel that the Respondent possesses the prototypical characteristics found in a “Cybersquatter”, namely, that his intentions were to take unfair advantage of Complainant’s trademark, and the driving force behind such actions was financial or otherwise.

Against a defaulting Respondent, the effects can be damaging, leading to the loss of his domain name and the label of “Cybersquatter”. In the event the Respondent decides to defend himself, he has the task of vindicating his name, demonstrating to the Panel that the Complainant’s allegations are false/ misplaced, or that he, in fact, does have a right or legitimate interest in the disputed domain name.

The Panel then has to decide the case on the merits of both Parties arguments and which presentation of the facts it believes to be more credible.

In cases where the evidence against the Respondent is overwhelming, it would be difficult for a Respondent to defend against the Complainant’s arguments (in these cases it is less likely a Respondent would submit a response), but where the facts are less clear, credibility can play a vital role in determining legitimate interest and bad faith. In such cases, the UDRP becomes a balancing act, whereby inferences can be drawn which tip the scale in favour of one of the Parties.

The Panel in Pret had such a decision to make. Even after the submission of both arguments the case was finely balanced. The Panel then directed its attention to the Respondent, stating:

“Much therefore hinges on the general credibility of the Respondent.”

In other words, the Panel had to decide whether the Complainant had done enough to establish the Respondent as a “Cybersquatter”, or is the image portrayed by the Respondent to be believed?

The Panel examined the various articles produced by the Respondent which showed his entrepreneurial acumen in previous ventures and found:

“Taken together, these various articles appear to project the image the Respondent has claimed, namely of an Internet entrepreneur who has launched a successful student job search website, followed by a successful visiting massage website, both of which have been profitable and, in the latter instance, has raised millions of Euros in venture capital.

The Respondent now seeks to repeat the success of the student job search venture, or similar, but in France, and with an app for the purpose. The credibility of his choice of France is supported by his demonstrated business presence in France through Urban Massage France SARL, of which he is a director.

On the totality of the evidence, and on balance, the Panel finds no reason to doubt the credibility of the Respondent or to doubt his explanation of the registration of the disputed domain name as having been for the purpose of an app for his French student job search venture.”

It is no coincidence that a finding of legitimate interest on the part of the Respondent often translates to a Panel finding no evidence of bad faith registration or/and use. This is because Complainant’s insufficient evidence leaves a significant lacuna where the benefit of the doubt tends to favour Respondent. This is true even in cases where a higher standard exists for high volume registrants. For example, a search conducted on the website www.udrpsearch.com reveals that the online media company, Name Administration (BVI) have been involved in upwards of 50 domain disputes, with success in all but one.

These numbers demonstrate that high volume registrant + high volume disputes do not automatically mean that the Respondent is bound to lose its domain name in all cases. In fact, Respondent’s such as Name Administration (along with carefully selected legal representation), have made the most out of their unfortunate circumstances to build up a level of credibility in UDRP cases. The numerous cases filed against Name Administration have led to it becoming well-known among UDRP panels who have come to accept the company’s legitimate business structure.

Credibility in UDRP disputes can also work the other way, with a Complainant’s credibility being called into question when confronted with a request for Reverse Domain Name Hijacking (RDNH).

Factors which can affect a Complainant’s credibility in UDRP disputes include:

  • Providing misleading or incomplete information to the Panel (see; Tupelo Honey Hospitality Corporation v. Ritchie Taylor; Claim No. FA1705001732247), finding “The Panel finds that Complainant knew or should have known that it was unable to prove that Respondent registered the disputed domain name in bad faith.”)
  • Utilizing counsel who ‘should know better’ (see; Pet Life LLC v. ROBERT RIESS / blue streak marketing llc; Claim Number: FA1810001810870, finding; “Given PET LIFE’s trademark registration date and first use in commerce date being years after Respondent’s registration of <petlife.com>, Complainant –who is represented by competent counsel– knew or should have known at the time it filed the instant complaint that it would be unable to prove each of the three elements of Policy ¶ 4(a) necessary to prevail.”)
  • The manner and motive in which a complaint is filed i.e. following a failed acquisition (see; Bernina International AG v. Domain Administration (BVI) Case No. D2016-1811, finding; “In the Panel’s view, this is a classic “Plan B” case, i.e., using the Policy after failing in the marketplace to acquire the disputed domain name. This stratagem has been described in several earlier UDRP cases as “a highly improper purpose” and it has contributed to findings of RDNH”).

A trademark owner who is considering filing a UDRP complaint should not dismiss the role of credibility in its case. Trademark owners should file complaints confident that they have provided enough evidence to satisfy their burden. For example, although the second element only requires a Complainant to make out a prima facie case, more time should be spent on trying to anticipate the Respondent’s reply to ensure there are no surprises. The use of a pre-action enforcement notice to the registrant not only allows for possible resolution but also an insight into the merits of a registrant’s possible arguments.

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