UDRPCounsel.com – Tips to help you win your WIPO domain dispute and RDNH claims by Attorney Steve®
What is ICANN?
Who is WIPO?
What is a domain dispute?
What factors must be proven by the Complainant?
What is the likelihood of confusion test?
What if I was just buying domains as an investment?
What is Cybersquatting?
Difference between cybersquatting and the ACPA?
Examples of Reverse Domain Hijacking Findings in Domain Arbitrations. According to Wikipedia:
Examples of such findings include the following WIPO cases:
Ron Paul vs. RonPaul.org (2013)
Webpass, Inc. v. Paul Breitenbach (2010)
Urban Logic, Inc. v. Urban Logic, Peter Holland (2009)
David Robinson v. Brendan (2008), Decal v. Gregory Ricks (2008), Hero v. The Heroic Sandwich (2008)
Poker Host Inc. v. Russ “Dutch” Boyd (2008), FCC Fomento de Construcciones y Contratas v “FCC.COM” (2007)
Liquid Nutrition v. liquidnutrition.com (2007)
Rohl, LLC v. ROHL SA (2006), Her Majesty the Queen (Elizabeth II) v. Virtual Countries, Inc.
Deutsche Welle v. DiamondWare (2000).
What types of claims may be brought in a federal court lawsuit?
Here are some typical causes of action you may see a Plaintiff assert if a federal court lawsuit is filed.
1. Federal Trademark Infringement under Sections 32, 34, and 35 of the Lanham Act 15 U.S.C. §§ 1114, 1116, and 1117
2. Trademark Dilution under Section 43(c) of the Lanham Act 15 U.S.C. § 1125(c)
3. Unfair Competition Under Section 43(a) of the Lanham Act (15 U.S.C. § 1125(a)
4. Anti-Cybersquatting Piracy Act under Section 43(d) of the Lanham Act 15 U.S.C. § 1125(d)
5. Common Law Unfair Competition/Trademark Infringement
6. Violation of California Consumer Protection Act Cal. Bus. & Prof. Code §§ 17200 et seq. (in California cases)
7. Cancellation of the U.S. Registration No.: 4,099,793 15 U.S.C. §§ 1064 and 1119
There can be others depending on the type of case. Make sure to discuss with your domain name legal counsel.
NOTE: Winning in WIPO arbitration is not binding on a federal court:
"The WIPO panelist's decision is not accorded deference on the merits in federal court. Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, (4th Cir. 2003); Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 26 (1st Cir. 2001) (citing April 1999 WIPO report “stating the UDRP administrative dispute resolution procedures ‘should not have (and cannot have) the effect of binding precedent in national courts."
Can I sue for Reverse Domain Hijacking against a Trademark Bully?
Reverse Domain Name Hijacking (15 U.S.C. § 1114(2)(D)(v)) occurs when “trademark owners abusively assert their trademark rights to strip domain names from rightful owners.” Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 17 (1st Cir. 2001). To prevail, the registrant must show:
(1) it is a domain name registrant;
(2) its domain name was suspended, disabled or transferred under a policy implemented by a registrar;
(3) the owner of the mark that prompted the domain name to be suspended, disabled or transferred has notice of the action;
(4) its registration or use of the domain name is not unlawful. 15 U.S.C. § 1114(2)(D)(v); Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 626 (4th Cir. 2003).
The Fourth Circuit Court of Appeals explained ACPA's purpose and the policy concerns addressed by a claim of reverse domain name hijacking under the ACPA, as follows:
In 1999, Congress amended the Trademark Act of 1946 (the Lanham Act) with the Anticybersquatting Consumer Protection Act (ACPA), Pub. L. No. 106-113, § 3001 et seq., 113 Stat. 1501A-545 (codified in scattered sections of 15 U.S.C.), principally for the purpose of protecting trademark owners against cyberpiracy:
The purpose of the bill is [*11] to protect consumers and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark owners by prohibiting the bad-faith and abusive registration of distinctive marks as Internet domain names with the intent to profit from the goodwill associated with such marks—a practice commonly referred to as "cybersquatting."
S. Rep. No. 106-140, at 4 (1999). Although the ACPA was enacted primarily to redress cyberpiracy or "cybersquatting," it also provides limited liability for trademark infringement by registrars who participate in the administration of the registration, transfer, and cancellation of domain names pursuant to a "reasonable policy" that is consistent with the purposes of the trademark laws. See 15 U.S.C. § 1114(2)(D)(i)-(iii). And to balance the rights given to trademark owners against cybersquatters, the ACPA also provides some protection to domain name registrants against "overreaching trademark owners." S. Rep. No. 106-140, at 11; see also 15 U.S.C. § 1114(2)(D)(iv)-(v). Thus, § 1114(2)(D)(v) authorizes a domain name registrant to sue trademark owners for "reverse domain name hijacking." Under that reverse domain name hijacking provision, a domain name registrant who is aggrieved by an overreaching [*12] trademark owner may commence an action to declare that the domain name registration or use by the registrant is not unlawful under the Lanham Act. This section provides that the court may "grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant." 15 U.S.C. § 1114(2)(D)(v).
Dent v. Lotto Sport Italia SpA, No. CV-17-00651-PHX-DMF, 2020 U.S. Dist. LEXIS 42050, at *10-12 (D. Ariz. Mar. 10, 2020)
A claim of reverse domain name hijacking is based on the provisions of 15 U.S.C. § 1114(2)(D)(v), which provides:
(2) Notwithstanding any other provision of this chapter, the remedies given to the owner of a right infringed under this chapter or to a person bringing an action under section 1125(a) or (d) of this title shall be limited as follows:
(D)(v) A domain name registrant whose domain name has been suspended, disabled, or transferred under a policy described under clause (ii)(II) may, upon notice to the mark owner, file a civil action to establish that the registration or use of the domain name by such registrant is not unlawful under this chapter. The court may grant injunctive relief to the domain name registrant, including the reactivation of the domain name or transfer of the domain name to the domain name registrant.
AIRFX.com v. AirFX LLC, No. CV 11-01064-PHX-FJM, 2012 U.S. Dist. LEXIS 120285, 2012 WL 3638721, at *6 (D. Ariz. Aug. 24, 2012).
must show (1) registration of a domain name; (2) that has been "suspended, disabled, or transferred under a policy implemented by a registrar as described in 15 U.S.C. § 1114(2)(D)(ii)(II);" (3) "that the owner of the mark that prompted the domain name to be suspended, disabled, or transferred has notice of the action;" and (4) "that [the plaintiff's] registration or use of the domain name is not unlawful." Ricks v. BMEzine.com, LLC, 727 F. Supp. 2d 936, 959 (D. Nev. 2010) (citing Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 625 & n. 1 (4th Cir. 2003)); see also 15 U.S.C. § 1114(2)(D)(v).
Dent v. Lotto Sport Italia SpA, No. CV-17-00651-PHX-DMF, 2020 U.S. Dist. LEXIS 42050, at *12-13 (D. Ariz. Mar. 10, 2020)
For his registration or use to be “not unlawful”, David would need to demonstrate “either (1) he did not register, traffic, or use a domain name that is identical or confusingly similar to a distinctive mark, or (2) he did not have a bad faith intent to profit from that mark. 15 U.S.C.A. § 1125(d)(1)(A).” (Id. at p.5)
Hoe long does it take the panel to reach a final decision?
Generally, about 60 days after the case is submitted.
What happens if I lose my UDRP case?
The decision of the UDRP arbitration panel is NOT final and is not binding on federal courts. You can still bring a federal court action to defend your domain.
Tips to help you respond to a WIPO domain complaint
Here are a few of my tips to help you respond if you have a trademark bully seeking your domain name:
1. Document everything.
2. Screenshot all relevant evidence and use the calendar on your computer to document the time and date.
3. Make sure you respond to every allegation in your initial pleading. You can try to file a "supplemental pleading" but the arbitration panel is not required to hear it.
4. Attach all your evidence and exhibits in your first pleading
5. Make sure to ask for a finding of reverse domain name hijacking if their complaint is being brought in bad faith and to abuse the administrative proceeding (ex. to bully a domain name from you when they have no legal rights to it).
Domain Name Disputes & Cybersquatting
Our internet law practice provides comprehensive legal services to help companies protect and defend their intellectual property.
- Representing and defending clients in Anti-cybersquatting Consumer Protection Act ("ACPA") cases and RDNH cases (especially those with jurisdiction in Arizona where GoDaddy is located.
- Legal counsel in regard to brand and domain names and social media handles
- Trademark cancellation proceedings
- Conduct web scans to identify potential domain name infringers
- Filing arbitration through ICANN's Uniform Domain Name Dispute Resolution Policy (UDRP) with WIPO and NAF
- Buying and selling domain names and websites
- Typo-squatting cases
- Sample online WIPO domain complaint form
- UDRP decisions
- ICANN domain arbitration rules
- WIPO domain dispute guidebook
Contact a UDRP domain dispute Internet Lawyer
If you need legal services related to trademarks or domain names contact us at (877) 276-5084 to discuss your case. We have been in business since 2014. You can also leave a message through our contact form and we will contact you.