Preparing UDRP Complaints: Determining Registrant Rights, Providing Evidentiary Support of Bad Faith Registration and Use

Course Details
- smart_display Format
On-Demand
- signal_cellular_alt Difficulty Level
Intermediate
- work Practice Area
Trademark and Copyright
- event Date
Monday, November 25, 2024
- schedule Time
1:00 p.m. ET./10:00 a.m. PT
- timer Program Length
90 minutes
-
This 90-minute webinar is eligible in most states for 1.5 CLE credits.
This CLE course will provide trademark counsel with guidance for filing complaints under the Uniform Domain Name Resolution Policy (UDRP). The panel will discuss the factors that should be considered when preparing a complaint, including registrant rights and bad faith registration and use, and provide best practices for maximizing success when filing UDRP complaints.
Faculty

Mr. Gallagher has deep experience in trademark clearance, investigation, prosecution, as well as client counseling and management of domestic and international trademark portfolios. He also has significant experience assisting clients with trademark enforcement, opposition and cancellation proceedings; brand protection programs; trademark, unfair competition and false advertising disputes and litigation; internet domain name disputes and proceedings (UDRPs); and trademark licensing. He provides tailored advice for handling IP issues involving social media; IP due diligence and IP licensing; copyright counseling, registration, protection and litigation; Digital Millennium Copyright Act (DMCA) notice and take down procedures; and domain name acquisition.

Mr. Uffelman practices trademark, domain name, and internet law. In particular, he works on a broad range of internet and cyber law issues, including on-line brand enforcement and the Uniform Domain-Name Dispute Resolution Policy (UDRP) proceedings. Mr. Uffelman handles a variety of on-line brand enforcement issues including gray-market goods, trademark and copyright infringement, and cybersquatting. He has successfully handled numerous UDRP cases on both the complainant and respondent side, and his practice spans a wide spectrum of industries.

Mr. Trachtenberg has over 20 years of experience handling intellectual property, domain name, internet, and other technology-related issues. He represents clients of all sizes in matters involving promotion and protection of their IP, both online and in the brick-and-mortar world. In this capacity, Mr. Trachtenberg advises clients and helps them implement comprehensive strategies to protect their IP rights, identifies threats to their online brand presence, including through domain name and social media abuse, and aggressively enforces these rights on their behalf. He has recovered or shut down thousands of problematic domain names, social media accounts, email addresses, and content using platform-specific takedown processes, dispute resolution processes like the UDRP, and civil litigation remedies including the Anticybersquatting Consumer Protection Act. Mr. Trachtenberg has actively participated in ICANN for over 20 years and regularly advises some of the largest registries, registrars, e-commerce, social media, search engine, and other online platform providers.
Description
To increase a complainant's likelihood of success, it is important to have a strong UDRP complaint and support the factual arguments asserted. To obtain relief under ICANN a complainant must prove: (1) the domain name is registered by the respondent and is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the respondent has no legitimate interest in the domain name; and (3) the domain name has been registered and used in bad faith.
For example, Chris Pearson, creator of the "Thesis" WordPress theme, filed a UDRP compliant against Automattic, the company that held the domain name Pearson sought. While Pearson demonstrated that the domain name was identical or confusingly similar to his trademark and that Automattic did not have rights or interest in the domain name, he failed to provide evidence that Automattic registered and used the domain name in bad faith.
Several factors should be considered when preparing a UDRP complaint, including interests in a domain name, non-commercial or fair use, pattern of conduct, demonstrating disruption of competitor's business, and more.
Listen as our authoritative panel of trademark attorneys examines the issues trademark owners and their counsel should consider when preparing a UDRP complaint, including analyzing confusion, bona fide offerings, fair use, and bad faith registration and use. The panel will offer best practices for maximizing success when filing UDRP complaints.
Outline
- Considerations when preparing a UDRP complaint
- Rights and confusing similarity
- Interests in a domain name
- Bona fide offerings
- Non-commercial or fair use
- Bad faith registration and use
- Intent to sell
- Pattern of conduct
- Demonstrating disruption of competitor's business
- Best practices for maximizing success when filing UDRP complaints
Benefits
The panel will review these and other key issues:
- What factors should counsel consider when determining how to address an infringing domain name?
- How can bad faith be demonstrated?
- What strategies should counsel employ to increase the likelihood of success when filing a UDRP complaint?
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