Written by Zak Muscovitch

Nothing is more frustrating for a trademark owner than paying expensive domain name dispute arbitration fees to a domain name dispute resolution provider such as NAF or WIPO, and paying an expensive lawyer to file a complaint for you on top of it, only to later learn that it was all a giant waste of time and money. Unfortunately  this happens all to often to unwary brand owners.

Domain name attorneys are lawyers who practice exclusively or primarily in domain name dispute law, and regularly appear before various online arbitration service providers such as the National Arbitration Forum (NAF), the World Intellectual Property Organization (WIPO), the Czech Arbitration Court Centrer for Internet Disputes (ADR.eu), (and the Asian Domain Name Dispute Resolution Centre (ADNDRC) , in connection with a Uniform Domain Name Dispute Resolution (UDRP) or similar dispute resolution regimes.

Hiring a domain name attorney who is experienced in the intricacies of such procedures and is also up-to-date on case law developments, is crucial for avoiding mistakes and avoiding throwing away money. Experienced domain name dispute lawyers are often different from general litigators and intellectual property lawyers, as they work within the niche of domain name disputes. Accordingly, hiring a generalist, even if it is an excellent and reputable lawyer, can be a mistake if it turns out what you really needed was an expert in domain name disputes. With short time periods, often arcane rules and procedures, and unique policy aspects, an expert domain name attorney can guide you in the right direction from the start, and will often counsel you to not wade into a dispute that you cannot win.

Perhaps the greatest domain name dispute related skill that I am able to offer my clients, is to properly counsel them on their chances for winning a domain name dispute.

After having helped thousands of clients with domain name dispute issues since 1999, I have developed a pretty good nose for gauging the chances of winning or losing a domain name dispute. Once in while a “curve-ball” is thrown, and once in a while the case falls within a small “grey area”, but for the most part, I feel comfortable telling a client, in advance, whether they will win or lose a case.

I am able to do this because I am very familiar with cases that have come before and have already been decided, and have a good feel for what facts are insurmountable and will nearly inevitably lead to the decision that will be made.

For example, when I am contacted by a brand or trade-mark owner, I research the domain name that they are targeting, and determine whether they have “no chance”, absent a careless UDRP panelist, because simply, the targeted domain name was registered prior to the brand even being a twinkle in the eye of the trademark owner. It is the domain name attorneys who do not do this important service for their clients, that end up getting “Reverse Domain Name Hijacking” decisions made against them.

Similarly, when a domain name owner contacts me about a pending domain name dispute notice that he or she received notice of, I research the trademark rights belonging to the complainant, and am usually able to tell the client right away, whether this is a “winnable” case, or whether there is “no hope”. If for example, a domain name owner registered a domain name years after a famous brand was registered as a trademark, and was using the domain name in an infringing manner, and admits to being aware (or was obviously aware) of the pre-existing trademark, then there is no hope of winning the case, absent an errant decision.

There are some cases that fall into a grey area, but I am usually able to also give the client good advice on these cases too. Not every “potentially” winnable case deserves to be defended. One must take into account the costs, the importance or value of the domain name in dispute, and the risk of having a decision go against you.

Accordingly, when a client comes to me with a domain name dispute, I will simply not accept the case unless it is a winnable case, and if it is in the client’s best interest to defend. I hope that this also helps my clients because Panelists will realize that I do not bring frivolous complaints or responses.

So, if I take your case, it means that you have an excellent chance of winning your domain name dispute.

Zak Muscovitch

As a domain name attorney, I see it happen all the time in ICANN UDRP's; the Complainant has registered a descriptive domain name and then complains when someone else registers a similar descripitve domain name. It is a fundamental principle of trademark law, which ultimately governs domain name disputes, that one cannot have a monopoly on a descriptive term as that would prevent people from adequastely describing their goods or services in the most apt language.

In this India High Court decision reported by The Times of India, the Judge eloquently pointed this out in his ruling for the registrant of IndiaProperty.com in a complaint brought by the owner of the pre-existing IndiaProperties.com:

"To provide service/business on estate property, houses and/or related business in India, the domain name referring to words `India' and `property' are very common. No right can be claimed on these words,'' said Justice Anoop Mohta. "Such words cannot be said to be trademark or brandable names. They cannot be claimed/treated as coined names.''

According to the Times of India, the court said there was no question of confusing between the two websites except when using the sites for the first time. "The internet domain name is nothing, but an internet protocol, electronic specified address and a unique identification. Unlike telephone numbers, such IP address basically consists of groups of numbers. Everybody knows the effect of dialling one wrong number,'' said the judge. "The user/customer who wants to do business online, is usually aware of the effect of misspelling a word while opening a site.''

This is a general argument that has succeeded for me in ICANN UDRP's and court cases in Canada, but the 'telephone number' spin is a great new and logical addition. Congratulations to the domain name lawyer who succeeded with this case in India!