Domain Name Disputes Post-GDPR:
Navigating URS, UDRP With Reduced
Access to Information
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WEDNESDAY, NOVEMBER 14, 2018
Presenting a live 90-minute webinar with interactive Q&A
Thomas A. Agnello, Attorney, Michael Best & Friedrich, Milwaukee
Jon Jekel, Attorney, Fish & Richardson, Redwood City, Calif.
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Domain Name Disputes Post-GDPRNavigating URS and UDRP Actions with Reduced Access to Information
Presented by:
Thomas Agnello, Michael Best & Friedrich LLP
Jon Jekel, Fish & Richardson P. C.
Introductions: Tom Agnello
• Trademark, Copyright, and Advertising lawyer at Michael Best & Friedrich LLP in Milwaukee
• Extensive experience advising clients regarding domain name matters
• Avid runner
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Introductions: Jon Jekel
• Copyright/Trademark
Attorney in Silicon Valley
• Routinely counsels clients
through domain name
disputes
• Part-time fiction writer
• Part-time record collector
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Relevant Jargon
• Domain Names: website addresses, such as google.com, apple.com, microsoft.com
• Registrant: the person or entity that registers a domain name
• Registrar. An organization accredited by ICANN that sells domain names to the public, such as GoDaddy
• Registry. An organization that manages domain names—creating the extensions, setting rules, and working with registrars to sell the domain names to the public
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Domain Name Disputes
• Domain names are a valuable component of a company’s advertising and internet operations
• Similar domain names can cause consumer confusion (e.g., microsoft.com vs. micros0ft.com, ikea.com vs. ikea.com.cn), leading to domain name disputes
Identical second-level domains (e.g., microsoft.com & microsoft.org) but different top-level domains
Confusingly similar second-level domains (e.g., verizon.com & verazon.com)
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Common Ways to Resolve Domain Name Disputes
• Pre-Filing, i.e., the demand letter procedure
• Litigation under the Anticybersquatting
Consumer Protection Act (ACPA)
• Alternative Dispute Resolution (e.g., UDRP or
URS actions)
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Anticybersquatting Consumer Protection Act (ACPA)
• Requires bad faith use, registration, or trafficking of a
domain name that is identical, confusingly similar, or
dilutive of Plaintiff ’s mark
• Handled in Federal District Court
• Injunctive relief and damages available for in
personam actions; forfeiture, cancellation, or transfer
of the domain available for in rem actions
• Provides for reverse hijacking claim
• Can be costly and time-consuming11
Uniform Domain Name Dispute Resolution Policy (UDRP)
• Mechanism for resolving domain name disputes
• Applies to most domain names
• Standard of Proof = preponderance of evidence
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Advantages of UDRP
1. Cost: often less than $5,000
2. Speed: 2 months to completion
3. Result: termination or transfer of
domain registration
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Disadvantages of UDRP
1. No damages
2. No appeal
BUT, either party may nullify the
result by filing a lawsuit within 10 days
of the ruling
The ruling is entitled to no deference
and is generally inadmissible
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Statistics on UDRP Proceedings
• Total: 42,088
• Jan. 2018–Oct. 2018: 2,907
• Average # of Domains Per Complaint:
YTD 2018: 1.67
2017: 2.07
2016: 1.76
2015: 1.58
2014: 2.13
2013: 2.39
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Add’l Statistics on UDRP Proceedings
• Complainants: 35% from USA
Followed by France (12.5%), U.K. (8%), Germany (6.7%)
• Respondents: 30% of respondents are from USA
Followed by China (11.16%), UK (7.4%), Spain (3.5%)
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Basic Requirements under UDRP
1. Confusing Similarity: the domain is identical
or confusingly similar to the complainant’s
trademark
2. No Legitimate Interest: registrant has no
rights or legitimate interests in the domain name
3. Bad Faith: the domain name was registered and
is being used in bad faith
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Confusing Similarity
1. Registered and unregistered (common law) marks
BUT, common law marks, supplemental registrations, or
registrations that are granted without examination are given
less deference, and may require acquired distinctiveness
2. Jurisdictions where mark is enforceable not relevant
3. Primarily based on side-by-side comparison, but
panels may consider phonetic / aural similarity
4. Low threshold
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No Legitimate Interest
1. Can be difficult to establish—proving a negative
2. Rebuttal Evidence
1. Respondent used or prepared to use the domain for a
bona fide offering of goods/services
2. Respondent is commonly known by the domain name
3. Respondent made a legitimate noncommercial or fair
use of the domain without intent to divert consumers
or tarnish the trademark at issue
4. The domain consists of a common acronym,
dictionary word, or phrase
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Bad Faith
1. Two Elements—bad faith registration and bad
faith use
2. With rare exceptions, no bad faith if domain
was registered before complainant had
trademark rights
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Bad Faith Factors
1. Respondent registered the domain to sell it to
complainant or its competitors for a profit
2. Respondent registered the domain to prevent
complainant from registering it, and engaged in a
pattern of such conduct
3. Respondent registered the domain to disrupt a
competitor’s business
4. Respondent used the domain to divert customers
away from complainant for commercial gain
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Bonus Bad Faith Factor
Any other evidence showing that respondent
seeks to take unfair advantage of, abuse, or
otherwise harm complainant’s trademark
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Uniform Rapid Suspension System (URS)
• Alternative mechanism for resolving domain name
disputes that complements the UDRP
• Applies to new gTLDs launched after June 2013
• Streamlined process (500-word limit for the complaint /
explanatory statement) for open-and-shut cases of
infringement
• Standard of proof = clear and convincing evidence
• Available remedy: temporary suspension of the disputed
domain name until expiration of registration period
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Advantages of URS
1. Cost: $375 to file a complaint
2. Speed: decisions typically issued within 22
days of filing
Administrative review within 2 business days
Domain “locked” within 24 hours of
administrative review
3. Appeal: either party can seek a de novo review
within 14 days
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Disadvantages of URS
1. Limited Application: Only applies to new TLDs—not popular legacy gTLDs Not applicable to unregistered/common law marks,
unless “validated through court proceedings”
2. Limited Filings: complainant’s 500-word explanatory statement and registrant’s response
3. Limited Providers: not including WIPO
4. Higher Burden of Proof: clear and convincing evidence
5. Limited Remedy: no transfer or termination—only suspension until the domain registration expires
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Statistics on URS Proceedings
• Total: 931 decisions issued by the
Forum (formerly NAF) since 2013
• YTD 2018: 129 decisions
Suspensions: 123
Denials: 5
Split Decisions: 1
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Basic Requirements under URS
1. The registered domain name is identical or
confusingly similar to a word mark that:
i. Is the subject of a valid national or regional registration
in current use;
ii. Has been validated through court proceedings; or
iii. Has been specifically protected by statute or treaty in
effect at time of URS complaint
2. Registrant has no legitimate right or interest to the
domain name
3. Domain was registered and is being used in bad faith
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Similarities Between UDRP / URS
1. Similar elements—respondent has “no legitimate interest” and registered/used the domain in bad faith
2. Bad faith is determined according to the same non-exhaustive list of factors
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Key Differences Between UDRP v. URS
1. Unlike UDRP, URS is only available if complainant has:
1. An active trademark registration;
2. An unregistered mark that has been validated by a
court order; or
3. A mark that was specifically protected by a
statute or treaty when the complaint was filed
2. URS has a higher burden of proof, requiring clear and
convincing evidence
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General Data Protection Regulation (GDPR)
• EU-wide regulation dealing with data privacy
• Extraterritorial reach
• Strict requirements regarding storage, use, and
processing of data, reporting of breaches, etc.
• Often requires consent to use or process data
• Penalties up to 4% of annual revenue or €20
Million (whichever is greater)
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Immediate Impact of GDPR: No More WHOIS
• As of May 25, 2018, GDPR prohibits the processing of
“personal data” absent specified grounds
• GDPR enforcement has resulted in less WHOIS data
for domain registrants, including the Registrant’s:
Name;
Email address; and
Telephone number
• Technically, does not apply to entities (only natural
persons)
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Immediate Impact of GDPR:
No More WHOIS
11/5/18 screenshot from ICANN WHOIS page for <google.com> domain name
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ICANN Temporary Specification
• Registrars MUST provide access to non-
public WHOIS data if the requesting party
has a “legitimate interest” in having access to
that information
• Exception: balanced against “the interests or
fundamental rights and freedoms of the
[registrant]”
33
Common Issues for Domain Name Disputes
• Pre-Filing. Difficult (often impossible) to resolve
the dispute through the demand letter procedure
• Drafting Complaint.
Identifying Defendant: Thankfully, not necessary
Rights/Legitimate Interests: Difficult to establish if you
can’t identify the registrant
Bad Faith: How do you establish a pattern of bad faith
conduct? How do you show intent to divert to a
competitor?
Consolidation: Little to no consolidation of claims.
34
Alternatives to WHOIS:Investigative Work
1. About Us: May be able to identify contact
information for registrant on an “About”
or “Contact Us” page
2. Terms of Use: consult the terms or
privacy policies applicable to the site,
which often identify the registrant
3. WHOIS Archives: Private services have
historical WHOIS data available, typically for a
fee (e.g., DomainTools, Whoisology, Reg.com,
SecurityTrails, whoixsmlap.com)
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CQ Counter
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American Registry for Internet Numbers
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ViewDNS.Info
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Blacklist Check from MXToolBox
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Anonymous Email
• Temporary Specification requires registrars to
provide an anonymous email address or web
form for each website.
• Often a response will not be received, and there
is no way to confirm messages to the
anonymous email have been received.
40
Request Whois Info
• Registrars are required to maintain a designated
email address for reporting abuse (typically,
Abuse@____.com)
• Example: Google.com
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Request Whois Info
• Per the Temporary Specification, registrars are
required to provide access to non-public WHOIS
information for a “legitimate interest”
• If there is any illegal activity on the domain, the
registrar is also required to investigate and take
appropriate action
• Our experience, not successful
• Report noncompliance to ICANN
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Archive WHOIS Data
• Available for purchase online
• Varying levels of cost, quality, and consistency
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Whoisology
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Reg.com
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SecurityTrails
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Initiate Legal Action
Options include:
• Lawsuit against a DOE (unknown) defendant
• In rem action against the domain in the registrar’s jurisdiction
• UDRP or URS action
• Complainant will receive registrant’s contact information as a matter of course in any of the above
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Thank You!
Thomas Agnello, Michael Best & Friedrich LLP
Jon Jekel, Fish & Richardson P. C.
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