By Steve Levy
As the calendar flips over to a New Year, there’s glitter, candle wax, and Polaroids on the floor. As I’m cleaning up bottles, it’s only natural that my thoughts turn to the past year of domain name disputes and where things are headed in this mercurial relationship between domain names and trademarks.
For starters, there is an increase in cybersquatting and more cases are based on malicious actions like phishing, fraud, credit card theft, counterfeiting, etc. rather than on more traditional and passive things like PPC links, monetized redirects, porn, gambling, splogs (spam blogs), etc. As more and more of the world’s transactions move online and as the public becomes more attuned to avoiding the old-school squatted websites, domain abusers have had to get more creative and aggressive in order to maintain their operations.
Next, from reading hundreds of decisions and from many conversations I’ve had with fellow UDRP panelists, it’s apparent that the overall quality of complaints has declined. More cases are being denied and findings of reverse domain name hijacking remain unfortunately high. This may be related to the increase in cybersquatting which results in a higher number of complaints being filed year-over-year. To handle this volume, more brand owners and their lawyers are using the UDRP for the first time which may mean that they’re filing substandard complaints based on their lack of familiarity with the process.
A related factor is that some complaints are using outdated arguments which are being rejected by UDRP panels. For example, the assertion that a domain renewal acts as a new “registration” for purposes of UDRP par. 4(a)(iii) (bad faith registration and use) is something that has been discussed at great length in decisions from the early 2010s and has been firmly declared to be a dead issue. However, lawyers who are new to the UDRP or unfamiliar with its case history may read some of these old cases and incorrectly believe that they can support arguments in their complaints.
So where might things be going in 2024? I expect the current trends will continue but we may see small changes towards the end of the year based on the new Global Block program being offered by GoDaddy’s Brand Safety Alliance. Through this program, brand owners with the proper credentials (such as the SMD file issued by the TMCH) will be able to block new domain registrations in an anticipated 600 new gTLDs. There are still many details about the program that haven’t been published but, if successful, it could reduce the number of trademark related domains available for cybersquatters to register. Of course, the program won’t affect legacy TLDs like .com and .net and it also excludes domains that are already registered. However, it claims that it will restrict new registrations of existing domains that get dropped. This should be a benefit to subscribed brand owners since, at least in theory, they’ll have fewer cybersquatted domains to go after and they may be able to stop paying renewal fees on some of the domains in their defensive portfolios. However, overall, the Global Block program is likely to be of limited scope and thus have a limited impact on UDRP cases.
One final prediction for the future is that there are rumblings at ICANN and WIPO about resuming an assessment of the UDRP and proposing some updates or procedural changes. As many of you will recall, there was a tortuous 5-year effort to consider changes to such programs as the TMCH and the Uniform Rapid Suspension policy (URS) through Phase I of ICANN’s Rights Protection Mechanisms Working Group. It’s possible that Phase II may finally kick-off in 2024 and address the UDRP itself. There’s also talk of a WIPO-led experts’ group to study the UDRP and a UDRP Exploratory Group was formed last year (disclosure – I’m a group member) which has a list of procedural proposals that are designed to have broad consensus across all UDRP user constituency groups.
The bottom line is that the UDRP continues to be a thriving policy and should be used to help protect brand reputations, customers, as well as business partners from the ever-increasing harms of cybersquatting. Hopefully, when squatters try phishing, all they’ll catch is a summer breeze…