The URS, UDRP, ACPA and Beyond: Domain Name Enforcement in the gTLD Era

Strategies for Brand Protection, Leveraging Recent Decisions, Weighing the Pros and Cons

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


Conducted on Tuesday, March 7, 2017
Recorded event now available


This CLE webinar will provide guidance to trademark counsel on the advantages and disadvantages of the Uniform Rapid Suspension (URS) system, the Uniform Domain Name Resolution Policy (UDRP) and the Anticybersquatting Consumer Protection Act (ACPA). The panel will examine the considerations in determining which dispute resolution mechanism or court action makes sense to use when challenging infringing domains and offer strategies to navigate the systems.

Description

The URS system is a rights protection mechanism introduced in connection with ICANN’s new gTLD program that provides trademark owners with an alternative in domain name disputes to the UDRP. Among the advantages of the URS are quicker adjudication and lower cost. However, the URS has disadvantages that should have trademark owners carefully considering which system to use.

For example, seven days after filing a complaint, a major brand owner successfully challenged domain names registered using new gTLDs, and those names were suspended. A disadvantage of URS is that it does not provide for the transfer of the domain name in question, and the brand owner cannot use the domain name during the suspension period.

Trademark owners and their counsel must understand the benefits and limitations of both the URS, UDRP and the ACPA to ensure that they are adequately protecting their trademarks online in the evolving domain name space.

Listen as our authoritative panel of trademark attorneys provides guidance to trademark counsel on the advantages and disadvantages of various rights protection mechanisms and strategies, including the URS, UDRP and ACPA. The panel will examine the considerations in determining how to develop and implement a successful domain name enforcement strategy, how to select the best dispute resolution mechanism, and how to manage a domain name portfolio as new gTLDs continue to be added to the domain name landscape.

Outline

  1. URS vs. UDRP vs. ACPA
    1. Pros and cons of using them
    2. When it makes sense to use each
  2. Recent court decisions/proceedings
  3. Strategies for navigating the dispute resolution mechanisms and potential court action

Benefits

The panel will review these and other key issues:

  • How has the domain name space evolved since the launch of the new gTLD program, and how do these changes affect overall enforcement concerns?
  • What are the advantages and disadvantages of the URS? The UDRP? The ACPA?
  • What factors should counsel consider when determining how to address an infringing domain name?
  • What strategies should counsel employ to successfully navigate the URS, UDRP, ACPA and other rights protection mechanisms or forums?

Faculty

Debra L. Innocenti, Partner
Innocenti Jones, San Antonio

Ms. Innocenti maintains a diverse transactional and litigation practice for emerging companies in the technology and internet-related industries, and she uses her tech acumen to assist non-tech clients in navigating the complex, new-world legal issues presented by emerging technologies. Prior to her legal career, Ms. Innocenti was a professor at St. Mary’s University.

Jonathan S. Jennings, Partner
Pattishall McAuliffe Newbury Hilliard & Geraldson, Chicago

Mr. Jennings protects brands, copyrighted works and domain names throughout the world. As part of his practice, he represents plaintiffs and defendants in a wide variety of disputes involving trademark, copyright, trade secret, right of publicity, breach of contract, unfair competition and false advertising claims. Mr. Jennings teaches a course on right of publicity and privacy law at the John Marshall Law School.


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