Access to domain recovery services is an important component of an overall domain management program as no business is immune to some level of domain name infringement.

Watch the recorded webinar to learn about:

  • UDRP and where it can fit into an overall brand protection approach.
  • Thoughts about when to file and when not to file.
  • Artificial Intelligence and its effects on filings and cases.
  • UDRP metrics and more!

Webinar Q & A

1. Moving forward with the UDRP process, how can we ensure that the registrants are providing the correct details? Many registrant details received are made up names (incorporating the place they are selling) and when an almost identical UDRP reappears we are back to the same issue of filing a UDRP complaint. Although we have the extra “tick” of continuous bad faith, offline action would be more desirable rather than going 4 or 5 WIPO rounds. Any thoughts?

Brian Beckham (WIPO): Try to find out if there are multiple domain names registered by the same person(s) and file a consolidated complaint; see WIPO Overview section 4.11. 

2. What if domain registered before a TM but transferred to a 3rd party after TM registration? Can the transfer to a new registrant be considered a “registration” in bad faith?

Brian Beckham (WIPO): Yes, see WIPO Overview 3.8.

3. Why are so many new TLDs being sunrised all the time? It seems that this is causing more issues than legitimate usability. Is there anything that can be done collectively to prevent these sunrises?

Chris Niemi (Markmonitor): ICANN’s New gTLD Program launched an application window for new gTLDs in 2012. With about 1,000 new gTLDs now put in the root since then, there have been many sunrise periods over the past 11+ years. At this time there is no way to formally “prevent” these sunrises. 

4. Does the panel have experience with the mutual jurisdiction being ignored by the Registrant and being pulled into foreign courts? Any thoughts or practice tips on handling. (In my experience the registrars will freeze the domain regardless and you’ll have to deal with the foreign case).

Brian Beckham (WIPO): It may be possible to highlight for the registrar that the local court filing does not satisfy the Mutual Jurisdiction clause so the domain name should be transferred to the prevailing complainant; that said, the Mutual Jurisdiction is for “appeals” purposes, but there is nothing preventing a registrant from filing a local court action at any time (e.g., for a declaratory judgement of non-infringement).

5. Is passing along filing fees to bad actors gaining any traction? Once we’ve proven bad faith registration and use, it seems the fees should pass to the infringers.

Brian Beckham (WIPO): This is a policy point for the UDRP review. 

6. I didn’t see Vietnam on the list of cctlds for UDRP – are .vn and available for UDRP action?

Chris Niemi (Markmonitor): The dispute resolution policy for .vn is listed here. The ccTLD does not formally fall under the UDRP.

7. Cybersquatters usually hide behind privacy shields that ignore identity requests to find out the owner of the domain name. When there are many ccTLDs under the same brand, where the owner is not known, would it be possible to still bundle them up in one UDRP proceeding and see whether it is the same owner?

Brian Beckham (WIPO): As long as the UDRP applies to those ccTLDs; see also for consolidation, WIPO Overview 3.8.

8. What would be the approach in the case where the website reproduces the trademark and it is being used for scam/phishing, but it does not contain the trademark in the domain name itself (which then makes it not possible to file a UDRP)?

Brian Beckham (WIPO): Not presently; this would be a point to raise in the UDRP review. 

9. What would be the information that we should include in the C&D letter? Should we request the transfer of the domain even if the letter is being sent to the Registrar (and the domain owner is not public available)?

Doug Isenberg (The GigaLaw Firm): What to include in a C&D letter may be very fact-specific, and registrars generally will not transfer a domain name in response to a demand and instead will refer trademark owners to the UDRP. If a registrant’s contact information is not publicly available, the registrar should provide a method to contact the registrant, such as an email alias address or website contact form. Of course, many domain name registrants simply ignore demand letters, and sending one could result in “cyberflight,” where the registrant transfers the domain name to another entity in an attempt to avoid liability.

10. Is URS available for .finance?

Chris Niemi (Markmonitor): Yes, the URS applies to all new gTLDs from the ICANN’s New gTLD Program’s 2012 application round.

11. We are challenged with the enforcement of domains. We have found that the registrar is no longer responsible for the domain, and they are passing the issues over to the hosting and ISP providers, but we are not getting responses. What is our next plan of action? Any insight will be helpful.

Doug Isenberg (The GigaLaw Firm): If there is a trademark issue regarding a domain name, then the responsible parties will almost always refer a trademark owner to the UDRP. Registrars, hosting providers and ISPs are very reluctant to take action when the UDRP is an option.