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Archive for the 'Brand Protection' Category

Caroline Valle, Legal Adviser


The Uniform Domain Name Dispute Resolution Policy, commonly known as the UDRP, was first introduced on October 24, 1999, by the Internet Corporation for Assigned Names and Numbers (ICANN). The UDRP is incorporated by reference into Registration Agreements for all generic top-level domain names (gTLDs) and some country-code top-level domain names (ccTLDs).

The Policy sets out the legal framework for resolving disputes between a domain name registrant and a third party over the registration and use of a specific domain name. Over the last twenty years, the number of registered domain names has dramatically increased, reaching over 354 million registrations this year. The UDRP has become the primary route to resolve domain names disputes.

The World Intellectual Property Organisation (WIPO) is one of the main providers for domain disputes and has processed over 45,000 cases to date. Besides gTLDs which all fall under the UDRP, WIPO provides domain dispute resolution services for 76 ccTLDs. In total, six accredited providers administer UDRP complaints, the Forum being the second-largest provider.

The Evolution of the UDRP

The purpose of the UDRP is to combat cybersquatting, which, according to the US Anticybersquatting Consumer Protection Act (ACPA) is defined as,


registering, trafficking in, or using an Internet domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else”.

Since the very first case under the UDRP, World Wrestling Federation Entertainment, Inc. v. Michael Bosman, WIPO Case No. D99-0001, which was decided by Panelist M. Scott Donahey, the UDRP has dealt with many complex issues involving a significant number of domain names. Indeed, WIPO has administered over 45,000 cases involving over 83,000 domain names since the UDRP’s creation. The top 2 industry sectors in terms of Complainant activity are retail, and the banking and finance industry, which respectively amounts to 10.36% and 10.05%.

The UDRP has also seen Complainants and Respondents coming from countries all around the world. Complainants in the United States account for almost 35% of cases filed, followed by France (12.48%) and the United Kingdom (8.10%). However, while domain registrants primarily reside in the United States with over 30% of cases filed, People’s Republic of China is the second-ranked country where registrants are based, amounting to 11.22% of cases filed since 1999.

When filing UDRP cases, Complainants need to rely on UDRP jurisprudence to build their cases. Although Panelists are under no obligation to follow past decisions, case precedents form a significant part of the UDRP which have helped the Policy to develop over the years. With the high number of decisions decided each year, the growing need to identify consensus in UDRP jurisprudence became even more vital.

WIPO Overviews and the UDRP Jurisprudence

Since the creation of the UDRP, law practitioners have always expressed the need for a document summarising consensus views among the UDRP Panelists. Based on this request, WIPO introduced Version 1.0 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions in 2005. In 2011, WIPO Overview 2.0 launched, which examined 46 issues in UDRP decisions. WIPO Overview 2.0 was in use for six years, and it was only on May 23rd, 2017 that WIPO launched the third version (WIPO Overview 3.0). This version discussed 64 issues with more than 1,000 decisions cited.

Key changes took place between the two versions. Between 2011 and 2017, the emergence of new gTLDs impacted the importance of the domain suffix. TLDs such as “.clothing” or “.tech” for example, now have more weight when assessing bad faith. One of the pioneer cases which discussed this issue is Canyon Bicycles GmbH v. Domains By Proxy, LLC/ Rob van Eck, WIPO Case No. D2014-0206, where the Panel held that,


given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed, there is nothing in the wording of the Policy that would preclude such an approach”.  

As a result, the use of new gTLDs which imply a link to the trademark owner can add to Internet user confusion, and for this reason, is considered under the first element, as well as the third element when assessing bad faith. Internationalised domain names (IDN) are also becoming more popular in recent years, with Internet users registering non-Latin or symbolic domain names. UDRP Panelists have adapted to this change and now consider translations or transliterations of domain names in their deliberations.

Through the years, the UDRP has tackled various issues, but some decisions are cited more than others. The case of Telstra Corporation Limited v. Nuclear Marshmallows, WIPO Case No. D2000-0003 remains the most cited case, with a frequency of 8,088 times. This decision, the fourth case ever decided by a UDRP Panel, tackled the issue of inactive domain names. The decision set out conditions by which the passive holding of a domain name still amounted to bad faith use. Since the decision in Telstra, trademark owners continue to rely on the principles outlined in this case when addressing a domain name that fails to resolve to active content. Though passive holding of a domain name can amount to bad faith use, trademark owners must not forget that they still have the burden to prove registration in bad faith.

The second most popular UDRP decision is, without a doubt, the case of Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D20001-0903. Here, the Panelist David H. Bernstein raised the difficult question of whether an authorised sales or service agent of trademarked goods could use the trademark at issue in its domain name. In his decision, the Panel held that specific conditions must be met by the reseller to justify a legitimate interest in using a domain name containing the trademark’s owner brand. Though this decision was published in the early stages of the UDRP in 2001, reseller cases still apply the Oki Data decision when assessing if a reseller can justify a legitimate interest in its domain name.

Following this decision, uncertainty arose over whether this case also applied to unauthorised resellers. The decision, Volvo Trademark Holding AB v. Auto Shivuk, WIPO Case No. D2005-0447 clarified this, finding that the Oki Data decision could apply to both authorised and unauthorised resellers.

The two decisions cited above are among the most popular cases used in UDRP disputes, but several more Panel decisions have helped shape UDRP jurisprudence. This includes, among others, the issue of proving common law or unregistered trademark rights, which led to several well-known decisions, such as Uitgerverij Crux v. W. Frederic Isler, WIPO Case No. D2000-0575 (discussing this for the first time), and the case of Israel Harold Asper v. Communication X Inc., WIPO Case No. D2001-0540, which clarified that rights in a personal name are recognised under the UDRP if the name has been used in a commercial manner, which the complaining party, a Canadian businessman and lawyer, had failed to establish.

For trademark owners and legal practitioners, WIPO Overview 3.0 remains the ultimate resource when filing domain disputes. With more than 1,000 cases listed, Panelists always advise trademark owners to use the cases cited in the Overview.

Following the guidelines provided can also help to prevent trademark owners from being found guilty of Reverse Domain Name Hijacking (“RDNH”).

RDNH is when a trademark owner attempts to use the UDRP to deprive a registered domain name holder of a domain name. 2016 saw a record number of RDNH in UDRP cases with 37 complainants found to have abused the UDRP Policy. This surpassed the previous record with 31 RDNH decisions issued in 2015. Complainants are found guilty of RDNH for various reasons. One reason often found is that the Complainant knew or clearly should have known at the time that it filed the complaint that it could not prove one the essential elements required by the UDRP, perhaps because the domain name was registered many years before it acquired rights in a mark. This has led many Respondent to claim that such cases be barred based on the doctrine of laches.

Doctrine of Laches – Time to Reconsider?

Traditionally, the question of timing was a factor to consider when assessing whether a complaining party had a legitimate right to bring a claim against another entity on the grounds of trademark infringement. Under the US doctrine of laches, a trademark claim is barred if a defendant can show that a prolonged period has passed between the registration of the plaintiff’s trademark and the alleged infringement. That said, when it comes to domain names, the doctrine does not apply. WIPO Overview 3.0, Guideline 4.17 states that:


“Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits”

Panels noted that the UDRP remedy is injunctive and the principal concern is to avoid future abuse/damage, and not provide equitable relief. Panels have also recognised that trademark owners cannot reasonably be expected to monitor every instance of potential trademark abuse or to enforce each instance as they arise. For these reasons, Panels have declined to adopt the doctrine of laches or its equivalent in UDRP cases.

Even so, some Panels have taken account of the delay of a Complainant to bring a complaint under the UDRP when making their decision. In the case of Board of Trustees of the University of Arkansas v. FanMail.com, LLC, WIPO Case No. D2009-1139, the doctrine of laches was discussed at great length. Though the decision rejected the use of laches, the Panel held that


the delay and lack of explanation for it strengthen Respondent’s cases for a right or legitimate interest in the Domain Name and negate Complainant’s case that the Domain Name has been used in bad faith. That is so because the unchallenged evidence is that Complainant by inactivity encouraged Respondent to continue to use the Domain Name in the way in which Complainant knew it was being used”.

Still, finding for the Respondent based on laches alone is not possible under the UDRP, and Panels would only deny complaints if Complainants have failed to establish the substantive grounds required under the Policy. For example, in the recent case of The Pennsylvania State University v. Mark Lauer/ Keystone Alternatives, NAF Claim FA1847529, July 29, 2019, the Panel denied the complaint as the trademark owner failed to prove that the registrant had no legitimate interest in the domain name, and consequently, did not act in bad faith. The Respondent, in this case, relied on the doctrine of laches and asked for the complaint to be denied on those grounds, but the Panel held that it was unnecessary to decide whether the proceeding would or should have been denied on the ground of laches alone.

20 years after the creation of the UDRP, Panels will see more and more cases brought with domain names registered 15 to 20 years ago, and the delay in bringing a complaint by a trademark holder may have more significance to a Respondent than ever before.

Another significant event already having a tremendous effect on the UDRP is the implementation of the new European data protection law in 2018.

GDPR and its effect on the UDRP

Since the new European data protection law (General Data Protection Regulation 2016/679) came into force on May 25th, 2018, the number of UDRP disputes has increased. Indeed, with GDPR coming into effect last year, law practitioners have seen changes in the disclosure of WHOIS details. Before GDPR, the WHOIS Registry was publically accessible, and trademark owners and their representatives could identify a domain name owner before filing a dispute. Now, however, GDPR has made it more challenging to engage with domain registrants. With most information unavailable, it seems that more practitioners now file cases in an attempt to disclose registrant information. Once revealed, Complainants have the opportunity to amend the dispute to reflect the Respondent’s correct details.

Furthermore, GDPR has made UDRP consolidations even more challenging. The UDRP allows trademark owners to include multiple domain names in a single complaint. The limitations placed on WHOIS information prevent trademark owners from identifying additional domain names owned by the same cybersquatter. This is likely to lead to trademark owners needing to file more single complaints, which is more expensive and time-consuming.

The UDRP element most affected by the GDPR is the third circumstance that deals with bad faith. Showing an abusive pattern of conduct has become more complex, and trademark owners have more of a difficult task of finding past cybersquatting activity. The tools previously available to investigators to analyse a registrants’ previous dispute record or portfolio have become less effective with the arrival of GDPR. While an investigator’s job has become more challenging, the UDRP remains one of the most effective tools to combat cybersquatting in the Internet world.

What is next for the UDRP?

A lot has changed since the creation of the UDRP, and with new issues arising, the Policy has evolved to be in line with the fast-pacing change of the Internet. The new generation of TLDs contributed to the rise of UDRP filings but “.com” domain names still amount to 79% of cases filed. The ccTLD “.co” assigned to Colombia is the most popular ccTLD using the UDRP with 56 cases filed this year.

Nevertheless, despite the increase in filings, after two decades, some practitioners/groups believe that some essential elements of the UDRP are due for reform. In 2015, ICANN issued a Preliminary Issue Report to review all Rights Protection Mechanisms (RPMs) in all gTLDs followed up by a working group which was established to review and possibly reform RPMs, including the UDRP, which is yet to be reviewed.

In the meantime, the UDRP continues — 20 years after its creation — to be the most effective tool to combat cybersquatting, saving time and money to trademark owners.

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On October 21, 2019, WIPO organises a conference to commemorate this milestone. This event, where over 100 UDRP Panelists will attend, will look back at the UDRP jurisprudence, and look ahead on the future of the UDRP, Internet developments and other topical items. As one of the top-ranking filers of domain name disputes with WIPO, Safenames’ Legal Department will be attending this event, which will be held at WIPO’s headquarters in Geneva, Switzerland.

Safenames specialises in all dispute resolution policies including the UDRP. Since 1999, We have filed over 200 cases and recovered over 500 domain names through the UDRP alone.

September 19, 2019

The top level .AR domain names are now available for registration.

The .AR TLD is currently in a preference registration stage, meaning if you’ve registered domain names in the .com.ar, net.ar, int.ar or tur.ar TLDs, prior to 1st December 2015 you have until 9th of November 2019 to request the registration of the .AR equivalent domain names before the TLD goes into general public availability.

At the end of the preference registration stage, if only one request is received for the domain name, the domain will be registered to that applicant. If multiple applications are received, the priority to register the domain will be resolved through a raffle made by the City of Buenos Aires Lottery. Safenames will inform any customers if this is the case with their particular application(s).

With more than 500,000 registrations currently in place, we believe Argentinian domains still prove to be very popular. We would highly recommend any clients operating under com.ar, net.ar, int.ar or tur.ar proceed with the application of the equivalent .AR domain name within the preference registration stage, helping to prevent any cybersquatting whilst also enhancing user experience through the use of a shorter domain name.

Act now, contact your Safenames account manager:
UK: +44 (0)1908 200022 | US: +1.703.574.5313
and minimise the potential of brand abuse.

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

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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