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]”

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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.

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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.

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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

taagnello@michaelbest.com

Jon Jekel, Fish & Richardson P. C.

jekel@fr.com

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