Wednesday , August 5 2020

All things UDRP an interview with Gerald M. Levine

Gerald M. Levine is the author of a critically acclaimed treatise on trademarks, domain names, & cybersquatting, Domain Name Arbitration, and the creator of a widely read Blog on domain name disputes and cybersquatting arbitrated under the UDRP and URS implemented by the Internet Corporation of Assigned Names and Numbers and analyzing the jurisprudence that has developed in that area of the law. Gerald was also co-founder of “Writers, Readers and Publishers,” a monthly Special Interest Group at the Princeton Club of New York, inviting speakers from the publishing industry including literary agents, writers, editors and consultants.

You can find Gerald at his website iplegalcorner.com

Gerald was kind enough to give me some time for an interview on the topics of UDRP, ACPA and Cybersquatting.

Gerald M. Levine

1) Can you tell us how long you have been dealing with legal issues pertaining to domain names?

Answer: My interest in domain name issues began slowly in 2004 or 2005 through a professor friend whose client, well-known in the religious magazine field, discovered that its trademark had lapsed. It also complained that cybersquatters had incorporated the mark in a number of domain names and were fraudulently targeting consumers. I prepared a memorandum describing the remedies under the UDRP, although ultimately, the client simply paid the registrants and took possession of the domain names. The subject interested me, and the memorandum, independent of that client, blossomed into a number of essays and ten years later developed into the first edition of Domain Name Arbitration (2015).

2) If a domain investor has a UDRP filed against one of its domain names, what is the first thing they should do?

Answer: Let me answer this question with a little explanatory context about trademark rights. Trademark strength is measured by its position on a continuum from generic and descriptive on one end to arbitrary and fanciful on the other. The burden of proof in a UDRP proceeding is on the mark owner. Where a mark is positioned on the continuum is a critical factor in weighing rights to the disputed domain name. The weaker the mark the greater the evidentiary demand to prove cybersquatting; the stronger the mark, the lesser the demand.

To the extent a challenged domain name mimics a well-known or famous mark, the greater the demand on the registrant to explain its choice. In this light, investors (as distinguished from cybersquatters) must take a careful look at its domain name and be prepared (if it decides to rebut complainant’s contentions) to marshal its reasons for the choice. So, for example, if the domain name was registered earlier than the earliest date the mark was in commerce, the likelier complainant will be charged for reverse domain name hijacking. The reverse is also true: if the choice cannot be justified, the domain name will be forfeited to the mark owner.

Dictionary words alone or combined into common phrases, and acronyms where registered for their semantic value have proved particularly valuable. But where there are questionable motives, registrants cannot avoid explaining their choices, and if they cannot explain will lose their domain names. This segways into the next question.

3) Can a domainer successfully defend a UDRP without a lawyer, and is this a prudent action to take?

Answer: This is a tricky issue. Registrants have successfully defended their rights without lawyers and sometimes complaints have been dismissed even where respondents have failed to appear, but where the dispute arises in more factually complicated circumstances, it is prudent to have counsel experienced in UDRP jurisprudence to marshal the evidence in support of good faith and lawful registration.

4) Many domain investors think taking a risk on a clearly infringing domain is no big deal. Some have made jokes others have talked about earning parking revenue until they get a UDRP. I have mentioned to them someone could go the ACPA route. Should domainers be more concerned with any UDRP especially since it’s not a given and they could get an action under the ACPA initiated?

Answer: The question must be rephrased to read “many domain cybersquatters” may think it not a “big deal.” Cybersquatters can take the “no big deal” position because the worst remedy under the UDRP is losing the domain name. That’s why they could care less. Genuine investors acquire noninfringing domain names for their semantic connotations and brand possibilities and are far removed from being cybersquatters.

The ACPA would be a very expensive alternative to the UDRP and less efficient. Only occasionally do mark owners employ the federal statute and generally to assert an additional claim for trademark infringement.

Domain name registrants have challenged UDRP awards in ACPA actions with mixed success. Where the merits of a case favor an investor, it is not always certain the judgment will include attorney’s fees and damages. But, where mark owners have sued directly or by counterclaim, they have been more successful with attorney’s fees and damages.

5) In your opinion what should someone do if the complainant threatens a domain name holder with a federal action under the ACPA?

Answer: Be very careful! The costs for defending a claim can be prohibitively expensive, but if there is merit to the defense and concrete proof, it should be presented to the mark owner for use later to assert attorney’s fees and damages, or in a UDRP context, reverse domain name hijacking. See D’Agostinos Markets, Inc. d/b/a D’Agostino Supermarkets v. Louise Murphy / WebSiteText, FA2003001889900 (Forum April 29, 2020) (One of my cases as a Panelist, citing John Berryhill’s response to Complainant’s cease-and-desist letter).

6) What are your thoughts on including the following on a landing page.We are aware of our intellectual property rights in this domain name and will defend them vigorously” I found a registrant doing exactly that. Do you think that can help to avoid some of the frivolous or reaching UDRP filings?

Answer: It’s a terrible idea to attract attention in this way and invite a response, unless there is a genuine defense to an overreaching claim and then follow the advice in the preceding answer.

7) Are there certain cases a domain investor should bookmark and always refer back to where the panelist found owning domain names for resell is a legitimate business?

Answer: The are many cases to bookmark. The Panel in a recent case, without citation to other decisions, noted that “generally speaking, the business practice as such of registering domain names for subsequent re-sale – even for profit – is not by itself a bad faith use. This is only so, when a disputed domain name was in fact also registered in bad faith in the name of the respondent,” Algorand, Inc. v. Kabir S Rawat, FA2006001900213 (Forum July 22, 2020).

The UDRP does not condemn acquiring, holding, and reselling domain names acquired for their semantic value. Many cases can be cited that confirm reselling is a legitimate business. What the UDRP does condemn is acquiring domain names for their trademark value. In ninety percent or more of the cases on the UDRP docket, the respondents have no defense and the registrations are either cancelled or the domain names transferred.

There is a sharp divide between operating a legitimate business of reselling domain name and acquiring domain name for the purpose of targeting trademarks which have magnetic power in attracting consumers.

One is lawful and the other cybersquatting. The view is well summarized in Insider, Inc. v. DNS Admin / Contact Privacy Service, FA1912001874834 (Forum February 3, 2020) a dispute on the phrase “business insider”, : [W]here it is found . . . that a respondent’s modus operandi can be summarized as registration of a domain name that is confusingly similar to the mark of another followed by exploitation of the domain name for profit while awaiting its eventual sale, the ‘reseller’ label will not serve to avoid a finding of bad faith in the registration and use of the domain name.”

8) Do you see penalties ever being awarded for findings of RDNH? I have heard some say domainers don’t want that because every time they legitimately lose, they would then have to pay a penalty.

Answer: It is very unlikely that ICANN will amend the UDRP to include monetary awards. In one instance to my knowledge, a prevailing respondent having been awarded RDNH commenced an ACPA action for attorney’s fees and damages but the matter was quickly resolved, both parties recognizing that the costs would be prohibitive.


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