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Blog Archive for May 2011

What Must a Trademark Owner Prove to Win a UDRP Arbitration?

A complainant must prove each of the following elements to win a UDRP arbitration:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

2. The domain name owner does not have any rights or legitimate interests in respect of the domain name; and

3. The domain name owner registered the domain name and is using it in "bad faith."

For more information regarding trademark or copyright please contact us directly.

How Much Time Does A Domain Name Owner Have To Answer A UDRP Complaint?

The respondent has twenty days from the date the Provider forwards the complaint to the respondent to submit a written response to the Provider selected by the complainant.

So what will happen if the domain name owner does not file a timely response to the complaint? If the respondent does not submit a timely response, in the absence of exceptional circumstances, the administrative panel will decide the dispute based upon the complaint. If the respondent fails to respond timely, the administrative panel has the discretion to grant the relief requested in the complaint, by default. In the vast majority of UDRP arbitrations as of April 24, 2001, the panels have ruled for the complainant when the respondent failed to file a response.

For more information regarding trademark or copyright please contact us directly.

Who Is The Judge and Who Is The Jury In A UDRP Arbitration?

An administrative panel of one or three members acts as judge and jury in all UDRP actions. The trademark owner (called the "complainant") who files the UDRP complaint designates in the complaint a one or three member arbitration panel. If the complainant designates a single-member panel, the domain name owner (the "respondent") may elect to have the dispute heard by a three-member panel, however, they are then responsible for the additional costs.

For more information regarding trademark or copyright please contact us directly.

How Much Does It Cost To File A UDRP Complaint?

Each provider sets a fee for filing the complaint based on the number of panelists and the number of domain names subject to the UDRP. The fees as of April 24, 2001, ranged from as low as $950 for a single panel single domain name to $6,000 for a three panel dispute involving five domain names.

When the dispute involves a large number of domain names, the fee must be determined by consulting with the provider before filing the complaint. The provider's fees paid by the party that files the complaint unless the domain name owner requests a three member panel, in which case the two parties are each responsible for one half of the fee. Attorney's fees and costs are in addition to the complaint filing fees payable to the provider.

For more information regarding trademark or copyright please contact us directly.

How Do You Begin A URDP Arbitration?

A trademark owner that believes it can prove a case of cybersquatting initiates a UDRP arbitration by filing a UDRP complaint with one of the following four organizations called a dispute resolution service provider:

1. CPR Institute for Dispute Resolution

2. Asian Domain Name Dispute Resolution Centre

3. The National Arbitration Forum

4. World Intellectual Property Organization

Each Provider has forms and supplemental rules that apply to UDRP proceedings under its jurisdiction.

For more information regarding trademark or copyright please contact us directly.

Is The Dispute Resolved If The Domain Name Owner Wins The UDRP Arbitration?

Like many questions in this area of the law the answer is, maybe. The party that filed the UDRP complaint and lost may bring a number of other legal actions against the domain name owner. For example, under the Anticybersquatting Consumer Protection Act (âACPAâ). In fact, if the trademark owner believes it has a strong case, it may sue the domain name owner under the ACPA seeking a court order to transfer the domain name to the trademark owner and monetary damages for trademark infringement. The result of the UDRP is that trademark owners have two chances to obtain a disputed domain name.

For more information regarding trademark or copyright please contact us directly.

What Are The Possible Results Of A UDRP Arbitration?

If the complaining party wins the arbitration (party challenging the registration), the winner will get an award from an administrative panel instructing the registrar of the domain name to cancel, transfer or otherwise make changes to domain name registration. If the domain name owner wins the arbitration, nothing happens. Note: Only the party that brings a UDRP action can benefit from it.

For more information regarding trademark or copyright please contact us directly.

Lawsuit Filed To Halt Release of Hangover 2 Over Depiction Of Mike Tyson Tattoo

On April 28, 2011, a lawsuit was filed in federal court in Missouri seeking to halt the release of Warner Brothers latest film, the Hangover 2, accusing the company of copyright infringement. The plaintiff is seeking damages and an injunction restraining the tattoo's display, both in the movie and otherwise.

It arises from, of all things, the tattoo on Mike Tysonâs face. While in Las Vegas, the plaintiff in this action, S. Victor Whitmill applied an original tattoo to the side of boxer Mike Tyson's face. Mr. Whitmill registered a copyright of the tattoo, and Mike Tyson signed a release acknowledging that all artwork, sketches, drawings and photographs related to the tattoo were Mr. Whitmill's property.

However, recently, Mr. Whitmill learned that the Hangover 2 features a virtually exact reproduction of the tattoo on one of the main characters of the film. In the movie, the tattoo appears on the upper left side of the Stu Price character's face, played by actor Ed Helms. The tattoo is also prominently featured in the movie's marketing and promotional materials, including movie posters.

Tattoo

Also attached to the complaint itself, are several important documents, including Whitmill's copyright registration and a signed release by...

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Who Is Subject to ICANN’s UDRP?

All owners and registrants of all .com, .net and .org domain names are subject to the Uniform Dispute Resolution Policy ("UDRP") by virtue of: (1) the registration agreements agreed to with their registrars at the time of acquiring their domain names, or (2) asking ICANN to maintain or renew a domain name registration.

For more information regarding trademark or copyright please contact us directly.

What Is ICANN and what can it do for me?

ICANN is an acronym for the Internet Corporation for Assigned Names and Numbers, a private nonprofit organization. It was formed in October of 1998 by a coalition of internet business, technical, academic, and user communities. ICANN is responsible for the management of the Internet domain name system. It coordinates the assignment of internet domain names, IP address numbers and protocol parameter and port numbers. ICANN also is responsible for the stable operation of the internet's root server system.

What Is ICANNâs Uniform Domain Name Dispute Resolution Policy (UDRP)?

The Uniform Domain Name Dispute Resolution Policy (UDRP) is a policy adopted by ICANN that provides a mechanism for trademark owners to obtain domain names from "cybersquatters." All domain name registrars that have the power to grant .com, .net, and .org generic top level domains must follow the UDRP. The UDRP provides that before a domain name registrar will cancel, suspend, or transfer a domain name that is the subject of a trademark based dispute, it must have 1) an agreement signed by the parties, 2) a court order, or 3) an arbitration award. The UDRP created a streamlined "cyber arbitration" procedure to quickly resolve domain name ownership disputes...