At well over 500 pages, Gerald M. Levine who is an attorney, and sits on panels of neutral arbitrators for the American Arbitration Association for commercial and IP disputes, has written the definitive book on the Uniform Domain Name Dispute Resolution Policy, (UDRP).
The book is entitled “Domain Name Arbitration: A Practical Guide to Asserting and Defending Claims of Cybersquatting Under the Uniform Domain Name Dispute Resolution Policy”
Mr. Levine ” describes the book as an important, thorough and incredibly helpful guide for navigating the UDRP” and in my opinion it certain is a must read for anyone in the domain space, including a ton of lawyers who don’t seem to know a whole lot about UDRP law but file or defend complaints.
The book is also described as being is the most comprehensive and in-depth work on the jurisprudence of domain names
The foreword was written by the Honorable Neil A. Brown, Queens Counsel in Melbourne, Australia who is a UDRP panelist.
You might not think that UDRP law is a subject that one could write over 500 pages on, but between 2000 when the first domain name case was decided and 2015, there have been over 45,000 decided cases under the UDRP.
In an interview with Gigalaw.com Mr. Levine shed some additional light on this book and some thoughts on the UDRP process.
Mr. Levine is a big believer in the UDRP system which he describes as affording “any trademark owner, anywhere in the world a remedy against any domain name holder, anywhere in the world. The UDRP transcends territorial legal jurisdictions and that’s what’s so remarkable about it.”
The reason that trademark owners lose UDRP cases fall into three categories.”
“First, are those who fail to understand the evidentiary demands for prevailing under the UDRP and present insufficient or no evidence of bad faith.”
“The second category of owners consists of those with weak trademarks composed of common elements that domain name holders are lawfully allowed to register and use as long as they have not registered the domain names with the intention of taking advantage of the trademark owners. ”
“The third category consists of trademark owners who concede priority or derive their rights from distant jurisdictions but claim to have the “better right” to the disputed domain name because they are offering “real” goods or services whereas the domain name holders are only monetizing their websites. Measuring distances, incidentally, whether temporally, geographically, and by goods/services offered by each of the parties, is a significant factor in determining whether there’s been an abusive registration.”
Mr. Levine insists that even with trademark holders winning 85%+ of UDRP “it’s a common misconception that the UDRP is biased in favor of trademark owners. ”
“There is also a popular misconception that the UDRP isn’t working. This criticism is against panelists who follow their own beliefs of what the law should be rather conforming to established law, and this has happened in some recent cases where panelists take the position that the law doesn’t require them to find conjunctive bad faith, but the domain name can be forfeit in their view if there is bad faith use after renewal of registration. ”
“Again, this is not the law. ”
From his interview, its clear Mr. Levine would prefer if there was a way to appeal a UDRP decision saying “the regret here is that there is no administrative appeal from these decisions, but it’s up to ICANN to amended the UDRP to provide for appeals”.
“If there’s a trademark infringement it belongs in federal court. Some panelists want to remake the UDRP to be an administrative version of the ACPA. This is a huge mistake in my opinion.”
For domain owners, Mr Levine recognizes that the are “cases of abusive process in which newly minted trademark owners are initiating complaints against domain name holders who have years of priority recognizing that the abuse is not always by the domain name holder.”
“It is important to understand that holding domain names for sale or using them to generate revenue as search sites is not unlawful even though they may be identical or confusingly similar to trademarks.”
As for the most contentious issue in UDRP land Mr. Levine said “”has been the attempt by a few influential panelists to change its construction to allow for forfeiture regardless of good faith registration if domain names are subsequently being used in bad faith.
This view, which hasn’t really gotten anywhere and to my mind is a dead end, attempts to bring the UDRP into alignment with the ACPA.
Nevertheless, there are some anomalous decisions sometimes by dissenting panelists that go to great lengths to explain the reasoning behind the view.”
“Another contentious issue is the use of domain names for commentary and criticism. What exactly is protected? Is it the domain name or the speech on the website? Some panelists hold that domain names identical or even confusingly similar to trademarks are not protected speech.
“Domain names may be protected if trademark are incorporated into strings that includes pejoratives such as “sucks.” Other panelists, particularly from the U.S. favor protection of domain names as well as content. Even alleged defamation is not enough to favor forfeiture because adjudicating whether material is defamatory is outside the scope of the Policy”.
To read the entire interview with Mr Levine with GigaLaw.com please click here
GERALD M. LEVINE is the managing Partner at LEVINE SAMUEL LLP, in New York City. He is on the panel of neutral arbitrators for the American Arbitration Association for commercial and IP disputes and a mediator for the Commercial Division of the New York Supreme Court, New York County; and the United States District Court for the Southern District of New York. He has published numerous articles on real estate, arbitration, trademark and cybersquatting. Mr. Levine earned a Ph.D. from New York University and a J.D. from Brooklyn Law School.