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

Recording of a 90-minute CLE webinar with Q&A


Conducted on Tuesday, November 22, 2016

Recorded event now available

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Program Materials

This CLE webinar 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.

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.

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Outline

  1. Considerations when preparing a UDRP complaint
    1. Rights and confusing similarity
    2. Interests in a domain name
    3. Bona fide offerings
    4. Non-commercial or fair use
    5. Bad faith registration and use
    6. Intent to sell
    7. Pattern of conduct
    8. Demonstrating disruption of competitor’s business
  2. 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?

Faculty

Sarah Bro, Esq.
Sarah Bro, Esq.

McDermott Will & Emery

Ms. Bro focuses her practice on trademark prosecution and trademark enforcement, as well as copyright, right of...  |  Read More

Jonathan D. Goins
Jonathan D. Goins

Partner
Lewis Brisbois Bisgaard & Smith

Mr. Goins’ practice is focused on establishing and enforcing IP rights for a wide range of clients in a variety...  |  Read More

Jamie E. Platkin
Jamie E. Platkin

Counsel
Cantor Colburn

Ms. Platkin provides counsel on obtaining domestic and foreign trademark protection, develops strategies to protect IP...  |  Read More

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