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The Uniform Domain Name Dispute Resolution Policy (UDRP), which came into force in 1999, is still the preferred route for domain name dispute resolution. This
inexpensive and expedited procedure permits parties to seek the transfer or cancellation of domain names which are not only identical or confusingly similar to a trademark, but which have been registered and used in bad faith.

The World Intellectual Property Organisation (WIPO), which administers UDRP proceedings, states that it has processed more than 30,000 cases since its inception, encompassing over 58,000
domain names. In 2015 alone WIPO administered 2,754 cases – a 5% increase on the previous year, which was partially triggered by the emergence of new generic top-level domains (gTLDs) in 2013.

Micah Ogilvie
Head of Legal

Micah Ogilvie is head of legal at Safenames Limited and manages the IP department. He has advised both global enterprise clients and smaller e-commerce and internet companies on brand protection, domain name dispute proceedings and cases of trademark infringement on the Internet. He has represented companies in more than 100 disputes through various international arbitration bodies, including the World Intellectual Property Organisation, the Czech Arbitration Court and the Hong Kong International Arbitration Centre. Safenames is a leading global domain name registration company that specialises in corporate domain portfolio management and online brand protection services.

There is no doubt that the UDRP offers many benefits to trademark owners, with owners prevailing in approximately 90% of all cases; but does it go far enough in addressing the ever-pressing issue of cybersquatting? Is there a need for a complete overhaul of the UDRP or can we rely on the current consensus that has been established over the years? This chapter addresses some of these questions, examines alternative rights protection mechanisms and considers whether lessons can be learned from other self-administered dispute providers.

Alternative rights protection mechanisms
The UDRP was designed to tackle the unique circumstances resulting from a rapidly growing domain name system, while focusing on a narrow class of cases: clear cases of abusive registration and use.

With the launch of new gTLDs in 2013, the Uniform Rapid Suspension (URS) procedure was introduced in order to provide rapid relief to rights holders for clear-cut cases
of infringement. The mechanism, which is administered by the National Arbitration Forum (NAF) and the Asian Domain Name Dispute Resolution Centre, promised a lower cost ($375) and a faster resolution for trademark owners who could prove their cases with clear and convincing evidence. However, the URS was not designed to replace the UDRP, but rather to complement it by allowing rights holders to suspend the offending domain name for the remainder of the registration period, rather than seeking transfer of the domain.

The URS has better benefits than the UDRP when dealing with the most egregious forms of trademark infringement (eg, the online sale of counterfeit goods). Further, in such cases an affected rights holder will want the issue resolved quickly, so the URS – which can resolve issues quickly (within 12 to 18 days) – may be the more viable option. Moreover, the URS remedy of suspension rather than transfer or cancellation may be a better alternative for rights holders which are wrestling with the expense of ever-increasing domain portfolios. Although cancellation requests under the UDRP have seen a slight increase over the years, this has never been a popular remedy among rights holders, as it risks the domain name falling back into the wrong hands once it is released for general registration. On the other hand, suspension, which applies only to new gTLDs, allows rights holders to balance the cost between enforcement and monitoring. Trademark owners can limit the recovery of domain names which are desirable through the UDRP while using the cost-effective URS mechanism to suspend and monitor less
desirable domain names.

Only time will tell whether the URS is a valuable mechanism for rights holders. At present, many still question whether it complements the UDRP. WIPO, which has not implemented the URS, has called it “relatively overburdened”, suggesting that the process is trying to do “too much for too little”. This raises the question of whether the UDRP itself could be adjusted to meet the demands of the expanding domain name system.

Can lessons be learned from self administered dispute providers?
Although many countries which provide alternative dispute resolution services have adopted the UDRP, some administer their own policies. One example is the award winning UK Dispute Resolution Service (DRS) administered by NOMINET, the UK internet registry that operates the ‘.uk’ extension.

The DRS not only allows for the informal mediation of a dispute before the appointment of an expert panel, but has also implemented a default-based model, allowing complainants to request a summary decision at a reduced cost in the absence of a filed response. The summary decision is composed of a simple tick box process to confirm whether the complainant has successfully established its case.

NOMINET’s stats reveal that of the 728 cases filed in 2015, 169 were summary decisions.

The lack of written analysis of procedural matters, party contentions and findings addresses WIPO’s initial concerns regarding the URS, whereby expert lawyers – many of whom work in law firms – must review complaints and provide comprehensive decisions for a relatively small fee.

A large number of UDRP cases go undefended. According to the NAF, of the 1,836 cases filed with it in 2014, the respondent failed to submit a formal response in 56.9% of cases. Therefore, rights holders which file large numbers of complaints would undoubtedly benefit from such a model.

Call for mediation
The call for online mediation as part of the UDRP process is seen as a commercially sensible solution for both parties. The statistics of dispute resolution providers which provide informal mediation as part of their procedures demonstrate that online UDRP mediation should be given serious consideration. Again, NOMINET offers a period of informal mediation after the parties’ submissions have been made under the DRS. In 2014, of the 728 cases filed under the DRS, 160 were settled through mediation. This reduced the length of time that it took to manage the disputes by an average of 44 days, as the amount of complaints which proceeded to the appointment of an expert decreased.

The free mediation process is confidential and conducted on a without-prejudice basis with the assistance of a trained mediator, allowing the parties to explore all options freely and even to reason on the strengths and weaknesses of each other’s cases.

With the limited remedies and narrow class of cases which fall under the UDRP, mediation could also allow for the sort of relief that would not normally be available, such as the resolution of domain name disputes involving parties with existing or past business relationships.

Multiple complainant class complaints UDRP cases such as those involving infamous registrant Yoyo Email Limited illustrate the need for multiple complainant disputes. To date Yoyo, which attracted controversy over the registration of more than 4,000 domain names comprising thirdparty trademarks together with the ‘.email’ gTLD, has been involved in over 50 UDRP and URS cases, with all but one URS case being decided in favour of the complainant. In all cases the alleged abuse and conduct of the respondent were the same; in this type of case, where rights holders have a common grievance against a particular respondent, an express provision for consolidated complaints would be highly beneficial.

The existing UDRP rules make no express provision for multiple complainants to bring proceedings under a single complaint, although for some time UDRP case law has provided principles governing the question of multiple complainant disputes. However, regarding proceedings brought in the Czech Arbitration Court (CAC), Article 4 of the CAC’s UDRP Supplemental Rules expressly provides for proceedings to be brought by multiple complainants. Article 4 designates such proceedings as a class complaint, provided that:

  • the class complaint is based on legal arguments applicable equally, or substantially in the same manner, to all the disputed domain names;
  • the person representing several different complainants joined in the class complaint is authorised to act on behalf of each of the complainants; and
  • the panel orders the transfer of any disputed domain name only to the individual complainant on whose behalf such transfer was requested in the class complaint.

Complainants have repeatedly shown that they are willing to unite their resources and efforts to tackle the issue of cybersquatting (see Fulham Football Club (1987) Limited v Domains by Proxy, Inc, WIPO Case D2009-0331). Giving rights holders the ability to file or join class complaints where the respondent has engaged in common conduct which affected their trademark rights could lead to the more streamlined version of the UDRP for which many trademark owners have called.

Revisiting the UDRP’s conjunctive requirement – ‘and’ or ‘or’?

The UDRP’s conjunctive requirement of demonstrating both bad-faith registration and bad-faith use has been the subject of debate for many years among panellists. Where the majority have interpreted this element of the policy as having two requirements, further limiting the UDRP’s already narrow scope, a number of panellists believe this interpretation to be incompatible with the UDRP objective of tackling cybersquatting.

Cases such as Guru Denim Inc v Abu-Harb (Case D2013-1324, ‘’) highlight the split rules for this element of the policy and provide some justification for adopting a non-conjunctive interpretation.

In Guru Denim Inc the complainant filed against the respondent for the domain name ‘’. The respondent registered the domain in 1998 to promote Islam, four years before the complainant created its True Religion brand.

In 2009 the site began receiving over 1,000 hits a day due to the popularity of the complainant’s True Religion brand, prompting the respondent to take unfair advantage and monetise the traffic through Google’s Adsense programme. It later emerged that the respondent had offered to sell the domain name for $380,000.

The majority panel held that while there could be evidence of bad-faith use in these circumstances, the complainant could not demonstrate that the domain name had been registered in bad faith as it had been acquired years before the brand came into existence. However, the dissenting panellist stated: “I defy any panellist to show me evidence from any portion of the legislative history or from any other provision of the Policy that would indicate that the drafts persons or the provisions of the Policy as drafted intended that a registrant could use a domain name to target a trademark and profit from its goodwill, so long as the time that the domain name was registered, the registrant had no intention of doing so.”

The case emphasises the limitations of the UDRP and the possible loopholes that can be exploited. Domain owners would argue that the conjunctive requirement offers a vital level of protection in an already biased process in favour of rights holders. On the other hand, rights holders might question whether changes to the bad-faith element would unfairly undermine a domain name owner’s interests. After all, a legitimate domain owner would usually be able to defend the legitimacy of its registration and use under the second element of the UDRP, which discusses rights and legitimate interests.

The majority of national dispute resolution procedures which provide their own variations of the UDRP (eg, Australia’s ‘.au’ Dispute Resolution Policy (aUDRP)) have abandoned a conjunctive requirement in favour of the either/or model – namely, that the respondent either registered or subsequently used the domain name in bad faith. The UK DRS Policy has gone one step further in addressing this controversial subject by instead adopting the term ‘abusive registration’. As defined in Paragraph 1 of the DRS, ‘abusive registration’ covers situations
where a domain name:

  • was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the complainant’s rights; or
  • has been, or is likely to be, used in a manner which takes unfair advantage of or is unfairly detrimental to the complainant’s rights.

This language gives expert panels broad discretion as to what constitutes abuse and allows the complainant to show that the abuse occurred at any time during the life of the
domain name.This scope covers domains that are inherently abusive and is further emphasised in the DRS, which recognises and allows the 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, irrespective of how the domain name is being used. Although this does not result in the automatic loss of the domain name for the respondent, it weakens its position quite significantly.

Many have questioned the morality element of the DRS’s automatic assumption of guilt or the ‘three strikes’ rule. Nevertheless,
it places an ongoing responsibility on domain owners to ensure that their registrations areall legitimate and that, where possible, issues are settled before proceedings. A domain owner with a large portfolio of domain names is less likely to risk proceeding to a DRS where there is a high probability of losing if it knows that decision will count against it in the near future. The provision not only encourages communication between parties, but also attempts to provide a clear distinction between legitimate domain owners and cybersquatters by labelling those who continually show blatant disregard for the rights of trademark owners. The DRS has successfully provided an alternative approach to the much-debated bad-faith schools of thought. Rather than a conjunctive or disjunctive view, as debated under the UDRP, perhaps the DRS’s all-encompassing concept of abusive registration requirement better addresses the range of circumstances that arise in disputes.

As discussed here, rather than relying on the creation of new rights protection mechanisms, lessons can be learned from self-administered dispute providers. The adoption of a default model and a consolidated complaint provision may provide the type of streamlined process that the URS was intended to provide, without the complexity. Voluntary mediation could reduce costs and encourage broader types of resolution, while clear language to reflect an evolving domain name system may provide the consistency that the UDRP needs.

While it is safe to say that the UDRP is an imperfect administrative process which would benefit from some fine-tuning in certain areas, the volume of cases filed since its inception demonstrates that it is functioning as the drafters intended. The UDRP will remain in effect for the foreseeable future, but minor changes to the process could further improve its effectiveness as a protection mechanism for rights holders.

Fraudsters are at it again. There is currently a counterfeit ‘renewal’ email circulating informing domain registrants that their domains(s) is expiring for a search engine listing, domain name listing, and/or SEO listing services.

How do they do this? Fraudulent companies “mine” the WHOIS database and then use the information they gather to send counterfeit emails (in this case, renewal emails) to ‘scam’ unknowing domain registrants into renewing services that do not actually exist. They make the message so confusing that it often works because registrants are lead to believe that their domain(s) is expiring.

Our message? Be vigilant and know that your Safenames renewal emails will only ever come from us–and this is likely the same for all domain registrars. If you have any questions about this post, please contact Safenames in the UK at +44 1908 200022 ([email protected]) or in the US at +1 703 574 5313 ([email protected]).

Nominet UK is the official Registry for .uk domain names. It has acquired a good reputation over the years for its Domain Resolution Service (DRS) as being the only Registry to offer an option of free mediation prior to appointing of an Expert who will then decide the case.

Nominet UK published a single revised draft proposal and invited comments between 10 February 2016 and 24 March 2016.

NOMINET’s new policy still known as “Dispute Resolution Service Policy” (DRS Policy) came into effect from 1st October 2016 which can be viewed here-

Some of the major changes are-

  1. The Domain Resolution Service Policy (DRS Policy) and Domain Resolution Service Procedure have been unified into one policy and therefore from 1st October 2016 parties will rely and refer only to the new Dispute Resolution Service Policy (DRS Policy).
  2. The definition of ‘Respondent’ will include privacy services. This has an impact on notifications when a complaint is made. The DRS Policy recognises that a domain name can be registered in the name of a privacy service. When a complaint is filed against such a registrant NOMINET will notify the privacy service and in their discretion if they see fit will allow WHOIS details to be updated will ensure notify the privacy service of such proceedings. (Para 6.1 DRS Policy).
  3. Under the new policy NOMINET will reject a complaint if there are any deficiencies rather than previously where it allowed three (3) days to a Complainant to correct the deficiencies and return the complaint.
  4. NOMINET explained the strict wording to be a reflection of, “….cases where a complaint is repeatedly filed and discontinued in a manner which is borderline harassment, the revised wording now allows the DRS staff to reject such complaints, and we feel the proposed wording gives staff this useful power and should be retained in the final policy” (Para 6.2 DRS Policy)
  5. Annexes should be submitted with clear and descriptive file names and such annexes are purely for the purposes of submitting evidence to support the argument, not to bypass the 5000 word limit (Para 4.3.1 & 4.3.2 of DRS Policy).
  6. The DRS Policy recognises domains to be of an exact match even if they have certain characters (for example- spaces, apostrophes etc) while establishing rights in the context of a trade mark or name (Para 5.1.6 DRS Policy).
  7. The Rules under Para 15 (d) used the following wording, “…the expert finds that the complaint was brought in bad faith, for example in an attempt at reverse domain name hijacking”. The DRS Policy Para 18 has removed the words ‘in an attempt’ as this does not provide any concrete meaning.
  8. Any success and failure of the DRS Policy can only be assessed over the next several months which we will provide an update- so watch this space.
    If you need legal advice on filing a ‘.uk’ domain dispute you can contact Ramya Kumar ([email protected]). If you are an existing customer please contact your Account Manager for further information.

    Author – Ramya Kumar

Operator of the new gTLD,. GDN Registrar, have announced that they have registered 250,000 registrations within the first six months of being in general availability.

The Dubai based operator achieved this milestone on September 22 and has since surpassed that number. The registrations took place in over 100 countries. Of the quarter million of registrations, China accounted for 57%, followed by the USA with 35%. The other 8% was from other countries.

It is not uncommon for new TLDs to enjoy initial success but .GDN’s achievement is unparalleled. This milestone has placed the operator among the top 20 new TLDs.

Commenting on the TLD’s success, General Director, Muhammad Kausar Saleem, said: “We are very proud of this achievement. Within all this short time we learnt China audience like short character extension and gradually we saw .GDN also became popular among USA and Canada registrants. .GDN is easy to remember, which makes it a serious competitor among other TLDs.”

.GDN is an abbreviation for Global Domain Name and is purely generic extension .GDN has no country boundary restrictions and is not limited to specific business categories. This makes. GDN an ideal option for start-ups, small businesses, professionals and just about anyone who wants to have a global online presence.

But even companies and businesses that already have other domain names can register a .GDN to help drive traffic to their .com or .net website. One satisfied. GDN registrant said: “GDN is a short alternative to .com, well run and can be useful for registrant who can’t get the .com or don’t want to pay a lot of money for great one words.”

For further information about .GDN or to register, please contact your Safenames account manager or visit:

It’s difficult to believe that it’s only been a couple of years since new domain extensions (also known as New Generic Top-Level Domains or gTLDs) changed the internet forever. With literally hundreds of new options, from .LIVE to .SOCIAL, .ROCKS to .CONSULTING, brands of all sizes and across all industries are embracing the creativity and branding potential.

Increase Customer Engagement with a Branded Short Link

Though Twitter is a valuable marketing platform, you still have to make the most of its limited digital space, making URL shorteners an essential tool. While some platforms help generate a generic short link for use in social media posts, many companies prefer branded content, even when it comes to link shorteners. Fortunately, new domain extensions are perfect for this purpose. By utilizing a branded short link, businesses can maintain brand consistency across multiple social media platforms with a call to action customers can trust. A Bitly study published in 2016 also states that branded link shorteners increase audience engagement, resulting in a 34% increase in click-through rates.

The Seattle Times - Secret Life of Pets

For example, The Seattle Times, Washington state’s largest daily newspaper, utilizes to create branded short links that visually connect their brand to all stories they share via Twitter.

Rightside utilizes as a branded link shortener across multiple social media accounts including Facebook, Twitter, and LinkedIn. After registering a unique branded domain like, brands have the opportunity to create customized text after the backslash to present a more descriptive call to action. For example, a recent blog entry with a full URL of “” was compressed to the concise “” once we posted it to Twitter.

About Rightside: Rightside® inspires and delivers new possibilities for businesses and consumers to define and present themselves online. The company, with its affiliates, is a leading provider of domain name services, offering one of the industry’s most comprehensive platforms for the discovery, registration, usage, and monetization of domain names. Rightside’s strong portfolio of 40 TLDs offers a wide selection of business-focused TLDs perfect for Brands.

Guest blog by Rightside

A new promotion from Donuts Inc. will enable brand owners to protect more trademarks at a lower annual cost for up to 10 years. The Domains Protected Marks List Plus (DPML Plus) program, available for subscription between October 1 and December 31, 2016, allows trademark owners to protect their marks and related terms across all of Donuts’ new generic top-level domains (gTLDs) at a fraction of what it would cost to defensively register the same terms. Available since 2013, the popular legacy DPML service is employed by thousands of subscribers, including Fortune 500 brands like Verizon, Target, Costco, Apple, HP, Microsoft and Amazon.

The standard DPML service works by “blocking” a string of characters from registration at the second level (the characters before the dot). The string may be an exact match of the mark or may contain the mark within it (the mark may be at the beginning, end or anywhere in the applied-for label, so long as it is contiguous).

The limited-time DPML Plus promotion enhances the current DPML program by allowing brand owners to widen protections, including, for the first time, common misspellings of their marks. Brand owners also are able to:

  • Block their marks and mark-related terms from registration for an initial 10-year term.
  • Block one exact match term and three additional strings (legacy DPML covers one string) that contain a mark or common misspellings of the mark (further “contains” or misspellings of terms beyond these three strings are available to block for an additional fee).
  • Also for the first time, block a mark in premium second-level domains across all Donuts’ gTLDs.

DPML Plus blocks are not subject to overrides by other parties with the same trademark. DPML Plus subscribers may submit unlimited overrides of their own blocked terms (for no wholesale override fee) if they elect to register and use a previously blocked term.

The DPML program was developed in consultation with intellectual property experts and has been extremely well received by the trademark community as a mechanism that mitigates infringement risk with one simple step and at significant cost savings.

The company further disclosed that effective January 1, 2017, the price of its standard DPML service will be increased in order to better align the service’s benefits with its marketplace value. Existing DPML subscribers can renew their subscriptions at current pricing before January 1.

DPML applications may be submitted here. More information is available via the company’s DPML Plus Overview and FAQs.


Guest blog by Mason Cole
VP Communications & Industry Relations – Donuts Inc.