Tuesday, May 28, 2013

How to Win a UDRP Domain Name Dispute


By Zak Muscovitch.

1. Smell The Case

I would have to say that the single most important way of winning a domain name dispute, is knowing when not to try defending a UDRP complaint. Some cases are just not winnable. Some are winnable but not worth bothering. When confronted with a UDRP complaint, you must smell it inside and out, in order to determine whether this is a case worth fighting, and more importantly, whether it is a case worth winning. A good UDRP nose is not easy to develop. It usually takes years of experience, constantly following case law developments, and having good instincts.

Obviously, some cases don't pass the smell test right of the bat, such as when someone registered a domain name "because it only costs 10 bucks", and thought that they could "sell the domain name to a famous company for a million dollars", since it is so close to their trademark. On the other hand, some cases smell like roses from the moment you open them. A good example of this is when a complainant takes a wild shot at hijacking a domain name that has been owned by the registrant before the complainant's trademark was even a twinkle in the complainant's eye.

But it is the cases that fall in between these two extremes where a good sense of UDRP smell is crucial. For example, I often see cases where sure, there is a defence, but not what I would consider a "winning" defence. In other words, it is the kind of defence that is vigorously made, and then you lose. For example, sure, KFC can stand for "knives, forks, and cups", and maybe the domain name owner claims he has never heard of Kentucky Fried Chicken, but really, does this defence really stand a chance?

Other cases however, are indeed winnable, but are not "sure things" either. For example, a complainant may present a convincing case that it has trademark rights which long-preexisted the domain name registration, and that the domain name has never been used for anything other than "Pay Per Click" advertising, and that the domain name owner advertised the domain name for sale. That however, is not always the end of the story, since none of those factors in and of themselves should normally result in a loss to the domain name owner.

If the domain name owner can show that he did not "target" the trademark owner, and perhaps also show that the domain is a generic dictionary word or term, for example, then the case will often boil down to what was the domain owner's "state of mind" when he registered the domain name. Accordingly, it is precisely this type of case where things are not clear-cut, and a good sense of UDRP smell will reveal that there is hope, with the a vigorous defence.

2. Weigh The Money

Sometimes a case is winnable, but it will simply take too much time and effort to win. Some people might say that winning a UDRP domain name dispute gives you the upper hand in a subsequent negotiation with the complainant, who has clearly demonstrated that it really wants the domain name. But that is not always, or even often, the case. For example, many trademark owners will launch a UDRP complaint just to "police" their trademark rights, and if they lose, hey, they did their job, their lawyer made money, and they could not care less about you owning a remotely similar domain name to theirs, in a second or third-rate TLD. Even when you own a good quality domain name, winning does not by any means ensure that the losing complainant will want to buy your domain name. Sounds strange, I know, but it happens often.

So, if you paid $10 for a domain name, and it will cost you $2,000 for a three member panel, plus legal fees, and at the end of the day, it is not a domain name that you think you can sell or that you want to develop for yourself, it may just not be worth it to win.

Sometimes a solution is to try defending the domain name yourself without having to pay for a domain name lawyer. Sometimes the solution is to just forego the three-member panel option, and go with the free single member panel. In every case however, one must weigh the costs and the potential upside, or lack thereof, before defending against a UDRP complaint.

3. Take a Walk

Having a record as a cybersquatter doesn't help win subsequent domain name disputes. Sometimes taking a walk is the best way of "winning", since it protects your reputation. Protecting your reputation means not getting a record as a cybersquatter by either winning your case, or by settling a case where the outcome is somewhat less than certain. In this manner, you can "win" even when you walk away from your domain name, since by settling, you have avoided a potentially harmful record as a cybersquatter.

On the other hand, there is nothing like winning a case and getting a Reverse Domain Name Hijacking decision under your belt, or even preemptively suing, to sent the message to potential claimants that you are not to be trifled with. That being said, unfortunately, this is seldom enough to discourage potential complainants, as usually their counsel will not be diligent enough to review your past good record, or will not care enough to not take a shot anyhow.

4. Don't Be Lucky

It is true that sometimes a domain name owner will not even defend against a complaint, and yet still win the case. Sometimes a domain name owner will represent themselves and win. Sometimes a domain name owner will hire an inexperienced or incompetent lawyer and win. Sometimes you get lucky with a particular panel or a particularly poor complaint. All of this is good luck, but don't count on luck to win a domain name dispute. Being successful on a consistent basis, i.e. repeating your success in defending a domain name, take more than luck; it takes hard work. A thorough investigation, an extensive and well researched Response, a careful selection of panelists, and a well thought out approach, are all far more important than luck, because you can rely on these factors every time.

5. Stay Out of Trouble

And finally, staying out of trouble is the surest way of winning a domain name dispute, since you will have avoided one altogether by not registering domain names which attract complaints. Searching trademarks, getting legal advice before acquiring, and using your domain name for a developed website, are all great ways of staying out of trouble. Of course, even with the best of intentions, you can still find yourself on the receiving end of a UDRP Complaint, but the odds of this happening are of course much less if you have conscientiously avoided potentially contentious domain names.







4 comments:

eh said...

Nice article.

The UDRP process seems so unreliable and open to individual interpretation.
It seems as if though, the outcome is dependent on which members are on the panel.

Thanks for writing.

AbdulBasit Makrani said...

Thanks. Great article :)

Anonymous said...

It would be a good idea to say what legal fees are (at least some range)...

Louise said...

Thanx for the article - one to bookmark for future reference. There were a couple nuggets of practicality and wisdom burried in the otherwise common knowledge-type suggestions . . . My portfolio is laboriously devoid of trademark, mainly made up of dot com, and points to a landing page I set up with robots text blocking crawlers, EspressoCloud.com as parking while they exist in the queue for development, of which there are about 20 or so. The whole POINT of my little portfolio seems to be avoid UDPR, but you never know, so I appreciate these observations from a seasoned professional, such as yourself!

Again, thanx!