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  1. #1
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    The legal/dispute side of domaining - udrp/acpa/drs

    The UDRP

    The udrp is an arbitration process that applies to most gtld registrations (including aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .travel and many other tld's too). If applicable, it is a mandatory part of the registration agreement. Under the udrp the only penalty if the domain holder loses is loss of the domain name - although that's not to say the complainant couldn't then go on to court and try and win damages via the legal sysetem.

    It can be viewed in full here:

    http://www.icann.org/udrp/udrp-policy-24oct99.htm

    but these are the important parts:

    4a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that

    (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

    (ii) you have no rights or legitimate interests in respect of the domain name; and

    (iii) your domain name has been registered and is being used in bad faith.

    In the administrative proceeding, the complainant must prove that each of these three elements are present.
    b. Evidence of Registration and Use in Bad Faith. For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

    (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

    (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

    (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

    (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
    Note

    for the first element the rights do not have to be registered - they can be unregistered common law rights.

    although the wording says "registered", it is taken to actually mean the date of acquisition by the current registrant so a domain originally registered in 2000 but acquired by and transferred to the current registrant in 2008 will use the 2008 date for the purpose of the policy.

    ---

    WIPO issued some clarifications on question that had arisen since the launch of the UDRP:

    http://www.wipo.int/amc/en/domains/s...iew/index.html

    These are some of the most common important parts for domainers (snipped parts are relevant cases cited by WIPO):

    What needs to be shown for the complainant to successfully assert common-law or unregistered trademark rights?

    Consensus view: The complainant must show that the name has become a distinctive identifier associated with the complainant or its goods and services. Relevant evidence of such “ secondary meaning” includes length and amount of sales under the mark, the nature and extent of advertising, consumer surveys and media recognition. The fact that the secondary meaning may only exist in a small geographic area does not limit complainant’s rights in a common law trademark. Unregistered rights can arise even when the complainant is based in a civil law jurisdiction.
    Does a respondent automatically have a legitimate interest in a domain name comprised of a generic (dictionary) word(s)?

    Consensus view: If the complainant makes a prima facie case that the respondent has no rights or legitimate interests, and the respondent fails to show one of the three circumstances under Paragraph 4(c) of the Policy, then the respondent may lack a legitimate interest in the domain name, even if it is a domain name comprised of a generic word(s). Factors a panel should look for when determining legitimate use would include the status and fame of the mark, whether the respondent has registered other generic names, and what the domain name is used for (a respondent is likely to have a right to a domain name "apple" if it uses it for a site for apples but not if the site is aimed at selling computers or pornography).

    {snip}

    However: If a respondent is using a generic word to describe his product/business or to profit from the generic value of the word without intending to take advantage of complainant’s rights in that word, then it has a legitimate interest.


    Can bad faith be found if the disputed domain name was registered before the trademark was registered/common law trademark rights were acquired?

    Consensus view: Normally speaking, when a domain name is registered before a trademark right is established, the registration of the domain name was not in bad faith because the registrant could not have contemplated the complainant’s non-existent right.

    {snip}

    However: In certain situations, when the respondent is clearly aware of the complainant, and it is clear that the aim of the registration was to take advantage of the confusion between the domain name and any potential complainant rights, bad faith can be found. This often occurs after a merger between two companies, before the new trademark rights can arise, or when the respondent is aware of the complainant’s potential rights, and registers the domain name to take advantage of any rights that may arise from the complainant’s enterprises.

    UDRP decisions can be overturned by court decisions.

    4k. Availability of Court Proceedings. The mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of our principal office or of your address as shown in our Whois database. See Paragraphs 1 and 3(b)(xiii) of the Rules of Procedure for details.) If we receive such documentation within the ten (10) business day period, we will not implement the Administrative Panel's decision, and we will take no further action, until we receive (i) evidence satisfactory to us of a resolution between the parties; (ii) evidence satisfactory to us that your lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing your lawsuit or ordering that you do not have the right to continue to use your domain name.
    ---

    Database of positive wording:

    This contains extracts from past cases that help support/defend the ownership of domains names:

    http://www.domainstate.com/custom.php3?action=positive

    (the full case wording can be viewed using the udrp decision lookup boxes at the the top and bottom of that page)
    Last edited by safesys; 2008-07-23 at 07:38 PM.

  2. #2
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    The ACPA

    US Federal law for domain name disputes - 15 USC 1125(d), this provides for legal remedies unlike the dispute services which are generally limited to transfer of the domain name only. The court has discretion to award damages of not less than $1,000 and not more than $100,000 per domain name.

    This can be viewed in full here:

    http://www.law.cornell.edu/uscode/ht...5----000-.html

    § 1125.d
    Cyberpiracy prevention
    (1)
    (A) A person shall be liable in a civil action by the owner of a mark, including a personal name which is protected as a mark under this section, if, without regard to the goods or services of the parties, that person—
    (i) has a bad faith intent to profit from that mark, including a personal name which is protected as a mark under this section;

    and


    (ii) registers, traffics in, or uses a domain name that—
    (I) in the case of a mark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark;
    (II) in the case of a famous mark that is famous at the time of registration of the domain name, is identical or confusingly similar to or dilutive of that mark; or
    (III) is a trademark, word, or name protected by reason of section 706 of title 18 or section 220506 of title 36.
    (B)
    (i) In determining whether a person has a bad faith intent described under subparagraph (A), a court may consider factors such as, but not limited to—
    (I) the trademark or other intellectual property rights of the person, if any, in the domain name;
    (II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
    (III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
    (IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
    (V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
    (VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
    (VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
    (VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
    (IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c).

    (ii) Bad faith intent described under subparagraph (A) shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.
    Remedies:

    http://www.law.cornell.edu/uscode/ht...7----000-.html

    (d) Statutory damages for violation of section 1125 (d)(1)
    In a case involving a violation of section 1125 (d)(1) of this title, the plaintiff may elect, at any time before final judgment is rendered by the trial court, to recover, instead of actual damages and profits, an award of statutory damages in the amount of not less than $1,000 and not more than $100,000 per domain name, as the court considers just.
    When using google for counts - use double quotes for usage counts for multiword terms and set "match type" to "exact" for all search volume lookups. Click here for more info

  3. #3
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    Nominet DRS

    This is the equivalent of the UDRP for .uk registrations in that it is a mandatory dispute resolution service that all .uk registrants are bound by via the registration agreement. As with the udrp, the DRS is only concerned with the name itself so a loss by the domain holder at DRS will result in the loss of the domain name only - but again, this does not mean the complainant can seek damages via the courts.

    The main differences is that there is a mediation stage which lasts for 10 days and allows the parties to attempt to reach an agreement after the submissions are made but before it goes to the panel for a decision. Communication made during this phase is considered confidential and is not passed on to the panel should that it go that far.

    Unlike there UDRP, there is also an appeals process within the DRS - this is more costly than filing a complaint (currently £3k / ~$6k USD vs £750 / $1,500 USD to file a complaint).

    A new version of the DRS policy is being launched on 29th July 2008 and it this which this post covers. This can be viewed in full here:

    http://www.nic.uk/disputes/drs/?contentId=5239

    Here are the most important parts:

    2a. A Respondent must submit to proceedings under the DRS if a Complainant asserts to us, according to the Procedure, that:

    i. The Complainant has Rights in respect of a name or mark which is identical or similar to the Domain Name; and


    ii. The Domain Name, in the hands of the Respondent, is an Abusive Registration.

    b. The Complainant is required to prove to the Expert that both elements are present on the balance of probabilities.
    4. How the Respondent may demonstrate in its response that the Domain Name is not an Abusive Registration



    a. A non-exhaustive list of factors which may be evidence that the Domain Name is not an Abusive Registration is as follows:

    i. Before being aware of the Complainant's cause for complaint (not necessarily the 'complaint' under the DRS), the Respondent has:
    A. used or made demonstrable preparations to use the Domain Name or a domain name which is similar to the Domain Name in connection with a genuine offering of goods or services;
    B. been commonly known by the name or legitimately connected with a mark which is identical or similar to the Domain Name;
    C. made legitimate non-commercial or fair use of the Domain Name; or
    ii. The Domain Name is generic or descriptive and the Respondent is making fair use of it;
    iii. In relation to paragraph 3(a)(v); that the Respondent’s holding of the Domain Name is consistent with an express term of a written agreement entered into by the Parties; or
    iv. In relation to paragraphs 3(a)(iii) and/or 3(c); that the Domain Name is not part of a wider pattern or series of registrations because the Domain Name is of a significantly different type or character to the other domain names registered by the Respondent.

    b. Fair use may include sites operated solely in tribute to or in criticism of a person or business.

    c. If paragraph 3(c) applies, to succeed the Respondent must rebut the presumption by proving in the Response that the registration of the Domain Name is not an Abusive Registration.

    d. Trading in domain names for profit, and holding a large portfolio of domain names, are of themselves lawful activities. The Expert will review each case on its merits.

    e. Sale of traffic (i.e. connecting domain names to parking pages and earning click-per-view revenue) is not of itself objectionable under the Policy. However, the Expert will take into account:

    i. the nature of the Domain Name;
    ii. the nature of the advertising links on any parking page associated with the Domain Name; and
    iii. that the use of the Domain Name is ultimately the Respondent’s responsibility.
    this link outlines the new procedure:

    http://www.nic.uk/disputes/drs/?contentId=5240

    Useful excerpts from DRS cases can be found in our database of positive wording from dispute cases which can be found in the tools section or click the following link:

    http://www.domainstate.com/custom.php3?action=positive
    Last edited by safesys; 2008-07-24 at 01:34 AM.
    When using google for counts - use double quotes for usage counts for multiword terms and set "match type" to "exact" for all search volume lookups. Click here for more info

  4. #4
    Join Date
    Sep 2002
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    placeholder
    When using google for counts - use double quotes for usage counts for multiword terms and set "match type" to "exact" for all search volume lookups. Click here for more info

  5. #5
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    placeholder 2
    When using google for counts - use double quotes for usage counts for multiword terms and set "match type" to "exact" for all search volume lookups. Click here for more info

  6. #6
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    placeholder 3
    When using google for counts - use double quotes for usage counts for multiword terms and set "match type" to "exact" for all search volume lookups. Click here for more info

  7. #7
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    Thanks so much safesys! Very helpful.

  8. #8
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    Thank very much to put this up collectively. It makes cross-referencing much easier in practice.
    I hope it will be a lively sticky tread dealing with the varicose legal requirements on Domains.
    Basically a must read not only for those who are new to Domaining.

  9. #9
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    There are over 11 million registered .de ccTLD’s which place .de on second in registered domain names following .com. Tentative conclusions estimate a close to 30% of all registered .de ccTLD registered in English language.
    As some English generic words and word phrases have found its way into the DE marked, whether this is in marketing or advertisement or product names, these domain names might pose a subject of a DE trademark violation.

    To check if any of your .de ccTLD’ you hold ore you intend to register possibly are ore will be a subject to a violation of an existing DE TM, you can check here on the DE TM Database.

    DPMA/en

  10. #10
    Join Date
    Dec 2008
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    What happens with generic terms that are trademarked, such as "VAMPIRE" or "TROLL"?
    Looking at the USPTO TESS system, these terms are trademarked under various useages, such as a line of foods for "vampire" (believe it or not)

    So are you OK with a domain not specifically trademarked, such as "vampiretoys.com"?

  11. #11
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    There's no such thing as being 100% "ok" with any domain that contains or is similar to someone elses trademark (registered or common law) - it's just a case of the level of exposure to risk with it.

    If someone had a trademark on "vampire" in the classification for toys then vampiretoys.com would carry a high risk of loss via dispute, but if the term directly relates to something descriptive/generic and the panel believe that that is why you registered the domain then they are likely to conclude you didn't register it in bad faith against the mark holder.
    When using google for counts - use double quotes for usage counts for multiword terms and set "match type" to "exact" for all search volume lookups. Click here for more info

  12. #12
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    Oct 2018
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