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Posts from the ‘ICANN’ Category and – How to Learn from UDRP Complaints and Cease and Desist Letters

Domain name disputes are nothing new, and as a business you should be monitoring the potential use of your trademarks by those not authorized to use them.  Eventually, the unthinkable will happen and you will find out that someone is using your trademark in their domain name.  At this point you can send a cease and desist letter, pursue a Uniform Domain Name Resolution Policy “UDRP” Complaint, file a lawsuit, or do nothing.  Most folks will not want to pursue a lawsuit due to the costs involved, but at the same time won’t be ignoring this type of infringement.  That leaves you with the two most popular options, which are sending the opposing party a cease and desist letter, or filing a UDRP Complaint.

UDRP Complaints have various criteria that must be met in order for the Complainant to prevail.  Before moving forward with a complaint, you may want to ask yourself if you can satisfy the three main criteria that every Complaint must have in order to be successful.  The ICANN UDRP Policy includes these three main elements that a Complainant must prove, and they are stated within the policy as follows:

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

True Value Company recently filed a UDRP complaint against the registrant of with the National Arbitration Forum “NAF”.  The Complainant undoubtedly has trademark rights in the mark “True Value” as evidenced from its use of the mark in connection with hardware products since 1963 and its registered trademarks and service marks.  The perplexing part of True Value’s complaint is that it claims that there is confusion in the marketplace because the Respondent is offering similar services in connection with  Since True Value Company is a hardware store and offers web hosting services, I really don’t see how this is possible.  Evidently, Complainant does offer web hosting and design services to businesses that are part of its cooperative, but not to the general public.  This is certainly not the strongest argument, but an attempt nonetheless to satisfy a necessary element by illustrating consumer confusion.

The Complainant also argues that the Respondent’s website uses the same color scheme in an attempt to confuse people and make them believe that Respondent is in some way affiliated with Complainant’s business.  A simple glance at the two websites is all you will need to conclude that this an odd claim.  The folks over at have done an excellent job illustrating the oddity of Complainant’s assertions in their article, and I urge you to look at the screenshots that they provided.  The final decision from the NAF, published here, references the three criteria I inserted above.  The NAF decided that Complainant provided enough evidence to satisfy criterion number 1 above, but that it did not prove that Respondent had no rights or legitimate interests in the disputed domain name.  Not being able to satisfy the second criterion, analyzing the third was not necessary.

If you do not want to pursue a UDRP Complaint, perhaps a cease and desist letter is better suited for your needs.  This is a less formal option, but is certainly something to be taken seriously.  If you are considering this approach then it may be worthwhile to review this rather humorous story about a New Jersey Township attorney’s letter to a citizen of West Orange, NJ, who is the owner of  Cease and desist letters should not be issued lightly, and diligent research is a key element to preparing a good one.  In this situation, the West Orange Township attorney, Richard D. Trenk, issued the letter to a citizen who had registered a domain name that included the township’s name with the accompaniment of the “.info” domain extension.  After reviewing the site, it is blatantly clear that there could be no confusion as to whether the site was affiliated with the official government website located at  With that being said, the cease and desist letter was clearly not well thought out or planned.  If you have a few minutes, and are up for a good laugh, then I encourage you to read the entire article referenced above including pro bono counsel’s response to West Orange Township attorney, Richard D. Trenk.

It is important for every business to police its trademarks to the extent possible, and this may involve sending cease and desist letters and filing UDRP complaints when necessary.  If you are thinking of taking action, make sure that the necessary elements are in place prior to jumping the gun.  If you have any questions about this, please feel free to contact one of our Internet attorneys.

By Taylor Hume

Recent UDRP Decision Shows that Domain Name Transfers Are Not Always an Easy Decision

In a recent UDRP proceeding, the popular X-Sports manufacturer Vans, Inc. tried to gain the rights to the domain name <> from the company, Military and Rescue Supply. Despite the evidence provided by both sides, a team of three Panelists decided that this dispute is not the type covered by the UDRP and should be resolved by the courts. Due to this decision, the domain name for now rests with Military and Rescue Supply. Read more

James Brown doesn’t “Feel Good” after losing rights to

In a recent UDRP decision, the Estate of James Brown submitted a Complaint requesting that they be transferred the rights to the domain name from the Respondent, Owned by LAC Music, represented by Gregory J. Chamberlain. A three-member Panel was chosen to resolve the dispute; the result being that the domain name rights were not transferred and currently reside with Owned by LAC Music. Read more

Recent UDRP decision confirms ICANN’s three step policy

In a UDRP decision last week, the Panel ordered that the rights to the domain name remain with the respondent, Capital Marketing Rock Hill. This ruling was issued after only examining the first of three elements in determining if a domain name should be transferred or canceled: “(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which the Complainant has rights.”  Nowhere in the Complaint does the Complainant, Vacation Center, LLC,  allege, much less provide evidence to prove, that it has rights in a trademark or service mark which is identical or confusingly similar to the disputed domain name. Read more

Recent UDRP Proceedings: Don’t Buy Misspelled Domains

In several cases decided recently, the UDRP transferred the rights to several domain names using common misspellings to the complainant. For example, in one decision dated September 30, Google Inc. gained the rights to 37 domain names from Zhou Murong. These 37 domain names ranged from common misspellings to domain names actually containing the word Google. Examples include:;;; and my personal favorite,

Other sites have had similar problems with common misspellings of their websites being used to steal traffic from their actual site. Other examples where the rights to the domains were transferred to the owner of the correctly spelled name are:

  • Etsy, Inc. received the rights to
  • Enterprise Holdings, Inc. received the rights to

With all three of these cases, there have been two things in common. First, the respondent has not responded to the filed complaint. And secondly, each misspelled website was simply a host for third party links, occasionally featuring competitor links for the website they were misspelling.

As discussed with other similar cases, the case for transference of the domain rights is a lot easier to make when the respondent does not respond to the complaint. Thus making it a lot easier to establish that the three points necessary for transference:

(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights;

(2) Respondent has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

In each case, it was fairly easy to prove all three points due to the nature of the website and fact that the respondents did not respond to the complaint. Because of the common misspellings of the websites in question and the fact that each company had trademarks for their names, it was easily shown that each website was registered in bad faith and was simply created to steal potential traffic from the correctly spelled website. Each case also resulted in the rights to the domain name being transferred to the owner of the domain they were misspelling.

You can read the actual decision for Google, Etsy, and Enterprise by clicking on their names.

Do not fight larger battles in UDRP proceedings

Interesting decision from the UDRP shows that bigger disputes need to be taken elsewhere.

Read more

The New TLDs – What Does it Mean to Your Company?

The Internet Corporation for Assigned Names and Numbers (better known as ICANN) approved the use of 100’s of new customizable top-level domain names a few months ago.  Since that time, companies and internet prognosticators alike have been debating the ramifications of such a dramatic change.  Here are the basics:

  • Applicants (who pay $185,000) will be able to apply to, in essence, become a registry of a new TLD of their choosing.
  • Applicants can request a generic word such as “.pizza” or a trademarked word such as “.Dominos.”
  • There will be an opportunity for the public at large to object to an application (but such an opportunity could be costly).
  • Based on how the system is set up, there will probably be a rush to file for new extensions – especially with generic words.
  • ICANN promises to evaluate applications and not award top level domains subject to another company’s trademark.

These new TLD extensions could open a can of worms the internet has not seen for awhile.  First, what happens if multiple companies hold the same trademark (think Delta Airlines and Delta Faucets) and both apply for .delta?  What happens if Pizza Hut and Dominos both apply for the generic “.pizza” at the same time?  ICANN has a process and evaluation factors to resolve these issues, but they do not seem to be specific enough yet to answer these questions.

I would not be surprised to see trademark suits spawning from the new TLDs.  We will have much more on this in the coming months.

What are your thoughts?

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