I'm busy working on my blog posts. Watch this space!
2014 UDRP Year in Review - How to Lose a UDRP
December 31, 2014
Like most trademark lawyers, I love the UDRP process – it’s quick and highly predictable. Given the number of domain names that are registered and used to profit on the goodwill of trademark owners’ marks, it is no surprise that trademark owners are usually successful. This post does not deal with successes.
This post examines all decisions posted in 2014 by the National Arbitration Forum, one of the two main UDRP providers along with the World Intellectual Property Forum. Please note that this article simply takes all Forum panelist statements and decisions at face value; it does not analyze whether the decisions were “correct,” nor is it an express or implied judgment about the complainants or their counsel.
All data is derived from NAF’s online decision database, limited to the UDRP ruleset and a “DecisionDate” between Jan. 1, 2014 and Dec. 29, 2014 (as of Dec. 29, 2014 – decisions are frequently posted after their “DecisionDate,” so a later search with the same parameters may yield a few more records). My oh-so-complicated methodology consisted of pasting all 2014 decisions into a spreadsheet, sorting by decision type, and using arithmetic.
Complainant win - 1160
Respondent win - 106
Split decision - 3
Withdrawn - 4
The first thing that stands out is how overwhelmingly successful complainants are – defendants prevailed, whether outright or in part, in under 9% of decisions.
The chart below roughly corresponds to the elements in a UDRP complaint, plus a few catch-alls for disputes beyond the scope of the UDRP, disputes resolved on other grounds, etc. “Priority” based decisions turn on the Complainant’s not having rights prior to the Respondent’s registration date of the domain name or other earlier date on which Respondent acquired trademark rights, regardless of which factor the Panel relied on this fact for.
Complainant did not demonstrate rights - 37 (respodent win) 2 (split) 35.7%
Domain not confusingly similar - 5 (R) 1 (S) 5.5%
Respondent had or planned a bona fide use - 34 (R) 0 (S) 31.2%
Respondent was commonly known as domain - 8 (R) 0 (S) 7.3%
Respondent made legitimate noncommercial or fair use - 0 (R) 0 (S) 0%
Not registered in bad faith - 30 (R) 0 (S) 27.5%
Not used in bad faith - 12 (R) 0 (S) 11.0%
Laches - 3 (R) 0 (S) 2.7%
Beyond scope of UDRP - 11 (R) 0 (S) 10.0%
Other - 3 (R) 0 (S) 2.7%
Meta-category: “priority” - 30 (R) 0 (S) 27.5%
Notes: NAF’s standard link format did not work for four relevant decisions; those cases were not considered.
Three fact patterns were the most common.
Priority. If you do not have either registered or common-law rights that predate the registration date of the domain name, you are going to lose.
Common-law rights require detail. If a complaint is based on common-law rights, it needs to provide a lot of detail about the nature of the common-law rights being claimed. This is especially true if priority matters (make sure the use, sales, advertising, etc. details predate the domain registration date) or if the mark is inherently weak (to prove secondary meaning).
Other disputes. Do not file a UDRP if you have an ongoing lawsuit related to the domain issue, or if the essence of the dispute is an infringement claim rather than a domain-name-squatting claim.