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UDRP lawyers

2011 September 14
by Nat

The domain community is fortunate to have several experienced, high-caliber lawyers who represent domain owners who are on the receiving end of a UDRP complaint.  These attorneys have handled dozens, if not hundreds, of UDRP responses.  They know the UDRP rules and procedures inside and out, are familiar with the records of many of the panelists, and know which cases to cite as precedence.

Defending against a UDRP complaint can be challenging.  There are three factors that the Complainant must demonstrate.  To summarize, the Complainant must show that 1) it has trademark rights in a mark that is similar to the Disputed Domain, 2) that the domain owner does not have a legitimate use for the domain, and 3) that the domain owner registered and used the domain in bad faith.

Almost all complainants can show some trademark use and most panelists do not consider domain parking to be a legitimate use.  That means many UDRPs involving domainers are decided on the question of bad faith registration and use.

This also is tricky, as some panelists don’t think investing in domain names is a legitimate activity.  They believe that domain names can’t have inherent value, but the only value in a domain would be to profit off of someone else’s use.  Fortunately these panelists are in the minority, as most recognize that domain investing can be a legitimate business practice.

That is why it is very important to choose a three-person panel if you ever are involved in a UDRP.  With a single member panel you could easily get one bad panelist.  With a 3-person panel, the odds are much lower that you will get two ‘rogue’ panelists and hopefully you’ll have at least one reasonable panelist who can try to talk some sense into the other two.

It is also tricky to win if your domain is on a parked page, and any link on that page refers to the Complainant or a competitor of the Complainant.  Many panelists will see this use as a bad faith use, and will also infer that the domain owner registered the domain in bad faith since he or she put the domain to this use.

It can seem that the odds are stacked against the domain owner when faced with a Complaint, especially if the Complaint is from a powerful company and is represented by a high-priced law firm.  It doesn’t help that many of the panelists spent their careers working for those same high-priced law firms aggressively defending the trademark rights of powerful companies.  Even worse, some panelists are active IP attorneys who will sit as a panelist on a UDRP case one day, and appear as a Complainant’s attorney the next day – perhaps even citing as a Complainant’s attorney a case as precedent that she earlier favorably decided as a panelist.

But somehow, in spite of the deck being stacked against domain owners, many domain attorneys have very good win rates in UDRP cases.  They know how to make the argument that domain investing is a legitimate activity, and that the domainer’s registration and use of the Disputed Domain is consistent with this activity.  They also know how to make the argument that just because a company chose to trademark a common word, it doesn’t mean that company gets to own every use of that word.  They know how to make these arguments, and they know how to make them stick.

I hope you never need a UDRP attorney, but in case you do, here are some that I have worked with:

Here are some others that I know of by reputation:

This isn’t intended to be a complete list, and I apologize if I overlooked an attorney who should be included.

from → Legal, UDRP