By Doug Isenberg

If you could pay several hundred dollars (or even less) for something that often costs thousands of dollars, should you do so? The answer, of course, is, “it depends.” It depends on whether the items are truly comparable — or, is one merely a cheaper imitation of the other?

This is true not only when shopping for consumer goods and services, but also for legal services — even (and, perhaps, especially) in the area of domain name disputes, including the Uniform Domain Name Dispute Resolution Policy (UDRP).

Domain Name Wire, a popular blog for domainers, recently wrote about a $499 service from a company called Domain Skate. The service — on sale “for a limited time” for only $399 — is advertised as a “proprietary web application to prepare and file your own UDRP complaint, quickly and hassle-free.”

While the service may sound appealing, Domain Name Wire issued this caution: “The ideal customer for DomainSkate is someone who hasn’t filed a UDRP before. Which is exactly the type of company that needs a lawyer, since they’re less likely to understand the requirements of winning a case.”

True, many services that once required a lawyer are now being offered by companies online via automated processes. As a law professor just pointed out in The Wall Street Journal, companies such as LegalZoom and RocketLawyer represent “the most significant recent dislocation in the practice of law.”

Some legal services — like drafting incorporation documents or a basic will — may be well-suited to computer-generated documents. But the UDRP is an arbitration process with plenty of nuances.

While a form UDRP filing may work some of the time, it’s also possible to create more problems than it solves. In previous UDRP cases apparently involving form documents, panels have criticized “the apparent carelessness” of the parties; called a complaint “poorly drafted and difficult to read“; and ruled against a party on a critical issue after it ignored “a second opportunity” to respond to an order.

Although many UDRP cases raise similar issues, the facts of every case obviously are different. Plus, many issues can arise after a complaint has been filed — issues that no form generator can address. For example, a change in the registrant’s identity post-filing may require an amendment, with additional research on the newly identified entity. A request to change the language of the proceeding may require an interpretation of the relevant precedent. A response of any kind may raise the possibility of a supplemental filing, based on the issues set forth in the response. An offer to settle must be evaluated on numerous factors. And the list goes on.

Only a human being — ideally, one with significant relevant experience — can make the judgments necessary to handle all of these issues.

When shopping for domain name legal services, like anything else, let the buyer beware.

By Doug Isenberg

Keeping up with domain name law and news is a challenging task, but after nearly 17 years of legal practice in this area, I’ve compiled a short list of “go-to” websites that keep me informed and educated. Here, then, are the best and most important sites I visit on a regular basis (some, daily), which should be of help to anyone interested in this area of law:

1. ICANN’s UDRP Page. This website contains the text of the Uniform Domain Name Dispute Resolution Policy (UDRP), the most important document for resolving domain name disputes. Although I can recite large parts of it verbatim sight-unseen, I still refer to it (and the UDRP Rules linked to it) regularly when advising clients on domain name disputes, drafting UDRP complaints (or, occasionally, UDRP responses) or writing UDRP decisions in my role as a panelist.

2. WIPO’s “Domain Name Dispute Resolution” Page. Probably one of the best sources of information about the UDRP and other domain name dispute policies, the website of the World Intellectual Property Organization (WIPO) offers a searchable database of decisions, statistics about domain name disputes, filing details, information about country-code top-level domains (ccTLDs), model forms and much more.

3. WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition.  Although a part of the WIPO website listed above, the “Overview” is important enough to merit its own spot on my list. I often refer to this document as a “mini treatise” on the most important and challenging issues in UDRP cases. It offers the “consensus or clear majority views” on these issues, based upon thousands of UDRP decisions through the years.

4. National Arbitration Forum’s Page on Domain Name Disputes.  The NAF is the second-most popular provider of domain name dispute services (behind WIPO), and, like WIPO, its website offers a very useful and searchable database of domain name dispute decisions (as well as basic information about the process). As the first approved provider of services under the forthcoming Uniform Rapid Suspension System (URS), NAF’s website likely will become even more important.

5. ICANN’s Microsite for the New Generic Top-Level Domain Program. With more than 1,900 applications for new generic top-level domains (gTLDs) in the pipeline, I am now visiting ICANN’s microsite on a daily basis to review the status of applications, monitor news, and gain access to resources essential to the important objection process.

6. InterNIC. Often overlooked (and quite dated in its appearance), the InterNIC website still offers authoritative information about “whois” domain name records (and a link to report inaccurate listings) and a complete list of ICANN-accredited registrars, with contact information.

7. IANA’s “Root Zone Database.”  Now a department of ICANN, the Internet Assigned Numbers Authority (IANA) offers a simple and complete list of information about ccTLDs and is often my first stop when I want to learn about registration requirements and dispute details for a ccTLD I don’t often encounter.

8. DomainTools. This website boasts that it has “the most comprehensive collection of domain name ownership records in the world,” and it is very useful (though often for a fee) for finding historical whois records, related domain names and other information helpful for domain name disputes.

9. Internet Archive’s “Wayback Machine.” This website says that it offers “over 240 billion web pages archived from 1996 to a few months ago” — all for free. I often use it to discover how domain names were used in the past, which can be quite helpful in negotiating domain name sales or preparing filings for domain name disputes. It is often referred to in UDRP decisions (including at least one by yours truly) as “a reputable source for tracking the history of some content on the Internet.”

10. Domain Incite. There are many websites that offer news about domain name developments, but I especially like Domain Incite because of its breadth and fairness. I also enjoy DN Journal, which offers weekly updates on domain name sales; and Domain Sherpa, which offers excellent video interviews with domain industry players and a weekly news roundup.

This list is certainly not comprehensive, as many other sites offer great resources on domain name news and law, but I consider these among the most helpful. If you have others to suggest, please drop me a note.

By Doug Isenberg

Although ICANN’s recently launched Trademark Clearinghouse (TMCH) boasts that it will help you “protect your trademark online,” the truth is that while it offers some important protections, it also has significant limitations. And, despite all of the recent webinars, news articles and client alerts, a number of misunderstandings persist.

To be certain, the TMCH is an important part of the new top-level domain (gTLD) program, and trademark owners would be foolish not to participate in it. But, no one should be lured into a false sense of online brand security simply because they have submitted their trademarks to the TMCH.

Yes, by registering your trademarks with the TMCH in a timely manner, you will be able to participate in appropriate “sunrise” periods as new gTLDs come online. And, for limited periods of time, others will be alerted of your rights.

But, keep in mind the following shortcomings of the TMCH:

Registering a trademark with the TMCH does not entitle you to any domain names. Rather, if you have participated in the TMCH, you will be allowed to participate in the sunrise period offered by each new gTLD registry — which means only that you will have an early opportunity to pursue registration of (and payment for) a domain name that corresponds to your trademark.

TMCH participants are not guaranteed domain name registrations even during the sunrise periods. Each new registry is required to have a Sunrise Dispute Resolution Policy (SDRP), which will “allow challenges” to registrations. Plus, there may be instances in which multiple TMCH registrations have been filed for the same mark, as in the case of dictionary terms (think Delta or United) or competing trademark owners (think Playtex or Scrabble). Indeed, ICANN has clearly passed the buck on this issue, saying: “If two different rights holders try to register the same mark as a domain name in the same TLD, the registry has a process for working that out.”

The TMCH’s “Trademark Claims Service” won’t prevent cybersquatting. For a limited time after each sunrise period, prospective domain name registrants will be notified when they seek to register domain names that correspond to marks registered in the TMCH — but, such registrants will be allowed to proceed if they simply acknowledge the notice.

The TMCH’s attenuated protections are limited to “exact matches” and other narrow criteria. Fortunately, ICANN recently agreed to broaden the scope of a trademark owner’s rights from “exact matches” of its registered marks to those “that have been found to be the subject of abusive registrations (for example, as a result of a UDRP or court proceeding).” But even this expansion won’t offer any protection to trademark owners against blatant (but previously unenforced) forms of cybersquatting.

In light of all of these limitations, trademark owners must remember that reactive enforcement (including via the URS and the UDRP) — not just proactive protection via the TMCH — will remain an important strategy for online brand protection as new gTLDs launch.

By Doug Isenberg

As I noted in an earlier post, WIPO received a record number of domain name disputes in 2012. Now, in a report and press conference, WIPO not only has confirmed this statistic, but it has provided some interesting new insights into the trends surrounding cybersquatting.

WIPO Director General Francis Gurry (left) and Arbitration and Mediation Center Director Erik Wilbers (right)

For example, WIPO’s report tells us:

• “Parties settled around one out of five WIPO cases before reaching panel decision.” This  is a significant number and, as far as I know, this is the first time that data about settlements has been released by any UDRP service provider. It’s an especially important data point at WIPO, which routinely offers partial refunds to complainants in UDRP proceedings terminated by the parties prior to the appointment of a panel.

• “Applying UDRP jurisprudence, WIPO panels in 2012 found evidence of cybersquatting in 91% of all decided cases.” This is also an enlightening number, as it seems to indicate that more disputes are ending in favor of trademark owners, which historically have obtained transfers in just over 85% of all domain name disputes at WIPO.

• “By the ICANN-established deadline of March 13 of this year, parties had filed 71 LRO [legal rights objection] cases with WIPO.” Details about most, but not all, of these cases have been published on WIPO’s website. In the coming months, we’ll learn for the first time how these unprecedented disputes will be resolved.

To watch comments from top WIPO representatives on these domain name issues, fast-forward the video above to about the 7:35 mark.

By Doug Isenberg

ICANN recently announced that it had “developed and added” a set of Rules for the forthcoming Uniform Rapid Suspension System (URS) — “to provide guidance on all aspects of the URS proceedings.”

Although the Rules came as somewhat of a surprise (I had never heard anyone mention them previously, and ICANN’s announcement says nothing about the process that led to their creation), they are relatively straightforward. Still, they contain a few interesting insights into how the URS process will work. For example, the Rules state the following:

“The Complaint shall be submitted in English.”  (Rule 9(a))

Previously, the only reference to a language requirement was in the URS itself (now referred to as the “Procedure”), which said that the “Notice of Complaint” (sent by the URS service provider) had to be in English and “the predominant language used in the registrant’s country or territory.” The Procedure itself was (and is) silent on the language required for the actual Complaint, so the English mandate in the Rules is welcome news for a number of reasons. First, it provides clarity. Second, it is consistent with other ICANN language preferences. And third, although it may pose a challenge for non-English-speaking Complainants, it eliminates the language games played by some cybersquatters who have frustrated UDRP proceedings as the result of a different requirement under the UDRP Rules (which refer to “the language of the Registration Agreement”).

URS service providers can set “word and page limits” (Rules, definition of “Supplemental Rules”)

The Procedure makes clear that Complaints may contain “up to 500 words of explanatory free form text” and Responses “shall be be no longer than 2,500 words.” But, by giving the dispute providers (the first of which is the National Arbitration Forum) the ability to set word limits in their supplemental rules, it will be interesting to see whether these parameters are changed. While any supplemental rules must “not be inconsistent” with the Procedure and Rules themselves, one implication of this rule is that service providers could further limit the size of complaints and responses — something that would not seem unreasonable given the expedited nature and low fees associated with the URS.

“URS Complaints may only be filed against domain names registered in a New gTLD.”  (Rule 3(f))

Although this rule seems obvious, it makes clear that the URS will not apply to any of the existing 246 million domain names such as .com or any other existing top-level domain. Therefore, even should the URS become a popular tool for trademark owners, the UDRP will remain an essential form of domain name dispute resolution for many years to come, as I have said before.

Dispute providers and their examiners will have discretion over how to treat privacy services

Specifically, the Rules state:

• “The Provider’s Supplemental Rules will specify how the Respondent shall be identified in cases where the domain name is registered with a privacy/proxy service.”  (Rule 3(h))
• “If one or more domain names are registered with a privacy or proxy service, or the nominal registrant changes after the complaint is filed, it shall be the sole discretion of the Examiner to determine if the respondents are sufficiently related and to dismiss the Complaint with respect to any unrelated domain names.”  (Rule 8(d))

On the one hand, it’s reassuring to know that the URS Rules actually contemplate the use of privacy and proxy services, something that neither the UDRP Policy nor UDRP Rules directly addresses. On the other hand, the absence of any guidance in the URS Rules about how to treat privacy and proxy services means parties will be left wondering how this issue will be resolved — at least until Supplemental Rules or a body of case law has developed (as it has with the UDRP).

 “[T]he Examiner may not request further statements or documents from either of the Parties.”  (Rule 10(h))

This Rule makes sense, given the “rapid” nature of the URS, but it is a clear difference from the UDRP, which gives a panelist authority to conduct disputes “in such manner as it considers appropriate,” occasionally resulting in administrative orders requesting additional information from the parties.

“There shall be no in-person hearings…” (Rule 11)

This rule also makes sense in light of how all domain dispute policies are designed to operate. However, it, too, is different than the UDRP, which expressly allows for in-person hearings if “the Panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint.” (To my knowledge, no panel has made such a determination since the UDRP went into effect.)