Tuesday, April 16, 2013

When to Defend a Domain Name, and When to Transfer a Domain Name

Perhaps the greatest domain name dispute related skill that I am able to offer my clients, is to properly counsel them on their chances for winning a domain name dispute.

After having helped thousands of clients with domain name dispute issues since 1999, I have developed a pretty good nose for gauging the chances of winning or losing a domain name dispute. Once in while a "curve-ball" is thrown, and once in a while the case falls within a small "grey area", but for the most part, I feel comfortable telling a client, in advance, whether they will win or lose a case.

I am able to do this because I am very familiar with cases that have come before and have already been decided, and have a good feel for what facts are insurmountable and will nearly inevitably lead to the decision that will be made.

For example, when I am contacted by a brand or trade-mark owner, I research the domain name that they are targeting, and determine whether they have "no chance", absent a careless UDRP panelist, because simply, the targeted domain name was registered prior to the brand even being a twinkle in the eye of the trademark owner. It is the domain name attorneys who do not do this important service for their clients, that end up getting "Reverse Domain Name Hijacking" decisions made against them.

Similarly, when a domain name owner contacts me about a pending domain name dispute notice that he or she received notice of, I research the trademark rights belonging to the complainant, and am usually able to tell the client right away, whether this is a "winnable" case, or whether there is "no hope". If for example, a domain name owner registered a domain name years after a famous brand was registered as a trademark, and was using the domain name in an infringing manner, and admits to being aware (or was obviously aware) of the pre-existing trademark, then there is no hope of winning the case, absent an errant decision.

There are some cases that fall into a grey area, but I am usually able to also give the client good advice on these cases too. Not every "potentially" winnable case deserves to be defended. One must take into account the costs, the importance or value of the domain name in dispute, and the risk of having a decision go against you.

Accordingly, when a client comes to me with a domain name dispute, I will simply not accept the case unless it is a winnable case, and if it is in the client's best interest to defend. I hope that this also helps my clients because Panelists will realize that I do not bring frivolous complaints or responses.

So, if I take your case, it means that you have an excellent chance of winning your domain name dispute.


Zak Muscovitch

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