Insights, analysis, and commentary on international arbitration, domain name disputes, and related legal developments.
Under the UDRP’s third element, complainants must prove that a domain name was registered and used in bad faith, reflecting the Policy’s focus on cybersquatting. Bad faith requires intent at registration and use, including passive holding, and may arise from targeting trademarks, seeking profit, or creating confusion for commercial gain.
Under the UDRP’s second element, complainants must show the respondent lacks rights or legitimate interests in the domain name. After a prima facie case, the burden shifts to the respondent, who may rely on bona fide use, being commonly known by the name, or legitimate noncommercial or fair use defenses.
Under the UDRP’s first element, complainants must prove trademark rights and that the disputed domain name is identical or confusingly similar. This requirement serves as a standing threshold. Rights may be registered or unregistered, but must be evidenced, while confusing similarity is assessed broadly, focusing on recognizability within the domain name.
My take on the interpretation of articles 34(2)(a)(i), respectively 36(1)(a)(i) of the Model Law (likewise on article V(1)(a) NYC), which, as mentioned, are generally considered to apply to the substantive validity of the arbitration agreements as well, is that the likely intention of the legislator was to consider parties’ choice for the law of the main contract as an implied choice for the law applicable to the arbitration agreement.
The Registry operating the country code Top-Level-Domain (ccTLD) for .ro (Romania) has just adopted a variation of the UDRP to apply to ADR procedures to settle disputes relating to the registration of domain names. The…
In this post I analyse recent UDRP decisions were delay in bringing claims was addressed, and what consequences it might have on a claim. General aspects UDRP provides for a swift resolution of cybersquatting, namely…
In this post I analyze the most recent decisions of the Bucharest Court of Appeal (between June 2024 and June 2025) in cases where the setting aside of arbitral awards issued under the rules of the Court of…
In this post I analyse recent UDRP decisions in case of refiled UDRP complaints, addressing the exceptional circumstances where panels accepted a refiled claim and whether they came to a different outcome than in the…
Banks and other financial institutions often find that their trademarks are targeted in the online environment by means of domain names redirecting to their websites or resolving to websites purporting to offer…
Respondents sometimes claim to be making genuine commercial use of the domain name in dispute to prove rights or legitimate interests for succeeding against allegations of abusive domain name registration. I will…
Respondents often claim to be commonly known by the domain name in dispute to prove rights or legitimate interests and to succeed against allegations of abusive domain name registration in UDRP claims. This post…
I will analyse in this post recent UDRP decisions at WIPO reflecting how panels address the issue of respondents being engaged in a pattern of conduct and whether this aspect is sufficient for a finding of bad faith or…
In its judgement of 21 May 2025, the EFTA Court ruled that “ greenhouse gas emissions that will be released from the combustion of petroleum and natural gas extracted as part of a project listed in point 14 of Annex I…
To succeed in a cybersquatting case, a complainant must demonstrate rights in a trademark. The trademark might be registered or unregistered. I will analyze in this post recent UDRP decisions at WIPO looking at how…
As discussed in previous posts, the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) is a swift method for the solving of disputes concerning abusive registration of Internet domain names…
As discussed in previous posts, the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) is a swift method for the solving of disputes concerning abusive registration of Internet domain names. To succeed…
UDRP provides for a swift resolution of cybersquatting, namely abusive registration of Internet domain names in breach of trademark rights. The procedure generally takes about 2-3 months, with only one round of written…
UDRP provides for a swift resolution of cybersquatting, namely abusive registration of Internet domain names in breach of trademark rights. The procedure generally takes about 2-3 months, with only one round of written…
As Uniform Domain-Name Dispute-Resolution Policy (“ UDRP ” or the “Policy”) has matured in its almost 25 years of life, jurisdiction objections are rarely raised by respondents. Nevertheless, a recent UDRP case at WIPO…
“UDRP jurisprudence recognizes that the use of a domain name for fair use such as noncommercial free speech, would in principle support a respondent’s claim to a legitimate interest under the Policy.” ( WIPO Overview…
As discussed in previous posts, the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) is a swift method for the solving of disputes concerning abusive registration of Internet domain names. To resist…
Under the UDRP a complaint is generally filed by a trademark owner against the registrant of a disputed domain name. A complaint might also be filed against more domain name registrants if certain conditions are met. In…
An Internet domain name might be used for a legitimate website or email address, or for other legitimate purposes, including for resale under certain circumstances . Nevertheless, given the easy-to-access system of…
The remedies available to complainants in cybersquatting cases are the transfer or the cancellation of the infringing domain name. Sometimes respondents agree with the requested remedy either by agreeing to a formal…
Recent UDRP decisions show that respondents sometimes rely on corporate names to prove rights or legitimate interests in a domain name to succeed against allegations of abusive domain name registration. This post…
In a recent decision under the UDRP , the complainant succeeded in its request for the transfer of several domain names that included its well known BOOKING.COM trademark, despite defence by the respondent that he has…
In the judgement of 29 June 2022, the General Court rejected the application against the decision of the Grand Board of Appeal of the European Union Intellectual Property Office (“EUIPO”) that declared the trademark “La…
Celebrities can and sometimes do register their personal names as trademarks for use in commerce. By way of registration as a trademark, celebrities are able to protect their personal names that are used in an…
Recent UDRP decisions have revived the application of the long standing “Oki Data” precedent. In the cases briefly discussed below, UDRP panels have applied the Oki Data principles in cases where the services offered on…
Sale of counterfeit goods harm the trademark owner, who invested time and money in developing and marketing its trademark. In addition, sale of counterfeit products might also harm consumers, including children, in case…
In a judgement of 20 January 2022, the Second Board of Appeal of EUIPO confirmed the decision of the Cancellation Decision that rejected an application for cancellation for bad faith trademark registration considering…
Trademarks for medicine are subject to specific rules; they need to comply not only with the trademark legislation, but also with the legislation governing the authorising of medicine. For instance, trademarks cannot…
In a recent decision issued under the UDRP, the complainant succeeded in its request for the transfer of a domain name consisting of dictionary terms that was registered for resale by a company that was in the…
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the Arbitration and Mediation Center of the World Intellectual Property Organisation (WIPO), a panel has declined the request…
The background of the EWCA decision is well known: Sky Ltd. (“Sky”), a renowned satellite TV broadcaster filed a claim for trademark infringement against SkyKick UK Ltd. (“Sky Kick”), who in turn filed for cancellation…
We have witnessed many RDNH findings in recent UDRP decisions, that merit reminding when such findings are reached and how to avoid these. Reverse Domain Name Hijacking: an Overview The UDRP (Policy) is a successful…
The World Intellectual Property Organisation (WIPO) has recently amended its Arbitration and Expedited Arbitration Rules. The changes reflect current trends and challenges in international arbitration concerning the use…
In its decision of 18 May 2021, the Cancellation Division of EUIPO invalidated a figurative trademark partially depicting one of the famous graffiti works of Banksy for bad faith registration. In a nutshell, Banksy…
In the recent judgement of 21 April 2021, the General Court rejected the application of Hasbro against the decision of the Second Board of Appeal of the European Union Intellectual Property Office (“ EUIPO ”) that…
In commercial arbitration it is argued that reliance on non-national legal systems fails to provide predictable result. However, this appears to be the best option in the specific area of domain name dispute resolution.…
The pandemic has seen a major swich to online presence. For trademark owners this meant an increased risk for their online business, that was targeted by cybersquatters. Keeping an online safe presence for the customers…
This article was first published on the Kluwer Arbitration Blog on 11 October 2020 In its recent decision of 9 October 2020 in Enka Insaat Ve Sanayi AS v OOO “Insurance Company Chubb” & Ors [2020] UKSC 38 ( Enka ),…
This article was first published on the Kluwer Arbitration Blog on 5 May 2020 In the recent ruling of 29 April 2020, the England and Wales Court of Appeal, departing from Sulamérica, has held the seat of arbitration…
The blog is for informational purposes. The articles published on this blog, current at the date of publication set out above, are for reference purposes only and do not constitute legal advice. Specific legal advice about your specific circumstances should always be sought separately before taking any action.
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