By Zak Muscovitch.

I just returned from a remarkable two days in Geneva, where I attended WIPO’s advanced workshop on UDRP disputes. In attendance were numerous WIPO mediators and trademark attorneys. Paul Keating, Nat Cohen, John Berryhill, and Mari Jo Keukelaar, were also in attendance. The WIPO’s UDRP program is run by Erik Wilbers, who is a real gentleman, and tremendous asset to WIPO.

Leading the workshop were two distinguished and very experienced domain name dispute arbitrators and trademark lawyers, David Bernstein and Tony Willoughby. Both Mr. Bernstein and Mr. Willoughby did a fabulous job in leading the workshop and no doubt use their deep experience as complainants’ lawyers to assist them in their duties as panelists. I had the pleasure (and thrill, after so many years of handling UDRP’s) of meeting both, as well as Alan Limbury from Australia, Richard Lyon from Montana, USA, and Bill Towns from Houston, US, Luca Barbero from Turin, Italy, and Andrew Lothian from Scotland, who were all extremely bright, extremely knowledgeable, and a pleasure to meet.

The big issue that I saw, was an apparent substantial divergence of views amongst WIPO panelists on two issues. The first issue is whether Paragraph 2 of the UDRP applies to UDRP disputes, and whether it acts so as to essentially obliterate the requirement of both bad faith registration AND bad faith use. The consensus seemed to be that this approach should not be applied.

Nevertheless, it was the second issue that appeared to be just as, or even more problematic. Some panelists seem to think that a renewal of a domain name amounts to a registration, and as such, can find bad faith registration even when the domain name was registered in good faith to begin with. This approach would let panelists get around the first aforementioned issue in most cases, since most disputed domain names have been renewed at some point.

The other take away from this workshop, is that for those domain name registrants that think opening up the UDRP for improvement is a good idea, they should seriously reconsider. If the UDRP was opened up, it would likely be subjected to major changes that would not be in their favour. For example, the UDRP would likely be amended to require either bad faith use OR bad faith registration, and not both.

By Zak Muscovitch.

What do WIPO UDRP panelists talk about behind the scenes? Well, on October 29, 2013, in Geneva, Switzerland, we shall find out, as I will be attending WIPO's Advanced Workshop on Domain Name Dispute Resolution: Update on Precedent and Practice. This will be the first time that I am attending this annual event, even though I have been practising domain name dispute law since 1999, and have litigated something like 70 domain name dispute arbitrations, numerous court cases, and assisted with probably thousands of domain name disputes which didn't end up in litigation, over the course of my 14-year career.

The Faculty for the WIPO workshop includes some of the very best, brightest, and most experienced WIPO panelists, including David Bernstein and Tony Willoughby, who will be making presentations. In addition, distinguished and experienced Faculty members also include Luca Barbero, Angela Fox, Matthew Harris, Andrew Lothian, Richard Lyon, and Bill Towns, and you may recognize these names from having read their UDRP decisions.

I am particularly looking forward to seeing my good friends and colleagues, John Berryhill and Paul Keating, who will also be attending, and who have attended this event in the past. I am also very much looking forward to seeing Nat Cohen, who is amongst the most knowledgeable non-lawyers one could ever meet, when it comes to the UDRP.

Although it is not yet clear what the specific topics are that will be discussed, I certainly look forward to hearing first-hand, what some of the panelists and other attendees have to say about certain particularly troubling decisions and trends. If you have ever wished to be a fly on the wall while UDRP panelists discuss a case, well, this is the opportunity. Registration remains open, but attendance is limited, so if you are interested in attending, look into it now.

If you have any topics or issues that you would like me to keep an eye out for, please leave a comment.

By Zak Muscovitch.

As a trademark owner you have a great opportunity to take advantage of ICANN's lackadaisical domain name dispute resolution system. Trademark owners are currently free to select one of four ICANN-accredited UDRP domain name dispute resolution providers and each of these arbitration services has their own brand of justice. Selecting your brand of justice can give you the edge that you need to win a UDRP proceeding.

UDRP dispute resolution providers such as the NAF and WIPO have adopted their own "supplementary rules" and these  supplementary rule sets can really affect how cases are run in some important ways. The authority for UDRP dispute resolution providers to enact their own supplementary rules can be found in ICANN's own principal rule set:

"Supplemental Rules means the rules adopted by the Provider administering a proceeding to supplement these Rules. Supplemental Rules shall not be inconsistent with the Policy or these Rules and shall cover such topics as fees, word and page limits and guidelines, file size and format modalities, the means for communicating with the Provider and the Panel, and the form of cover sheets."

Although the above-cited ICANN provision apparently restricts the scope of any supplementary rules, since ICANN hasn't enacted any standards for UDRP dispute resolution providers, each has been largely free to create their own rule sets. Accordingly, knowing which UDRP provider offers trademark owners an edge in terms of their respective supplementary rules, can be an important consideration when attempting to use the UDRP to recover a domain name from a cybersquatter, or at least someone who has a domain name that you want for yourself.
Below are some of the supplementary rule provisions that trademark owners can take advantage of in order to get a leg up in legal proceedings:

1. NAF Often Gives Respondents Up to 10% More Time to Respond

Normally a UDRP Response must be filed within 20 days of the commencement of the proceeding. But under NAF's Supplementary Rules, if the due date falls on a Saturday, Sunday, or US federal holiday, then the Respondent will get an automatic extension of time to until the next regular day. This means that by selecting the NAF, you may be unwittingly providing a domain name owner Respondent with an extra 2 days or more, which is a 10% bonus for the Respondent. With such a tight timeline for a Response in the first place, an extra 10% time bonus is a lot, and therefore selecting WIPO over NAF is a good idea if you want to deprive the Respondent of this additional time to respond.

On the other hand, there is nothing quite as surprising to a US-based respondent, as when he tries to file his Response with WIPO on the due date, only to find out that since WIPO is in Geneva, Switzerland, the due date has already passed due to Geneva being 6 - 9 hours ahead. Accordingly, don't write off WIPO just because NAF gives Respondent's a couple extra days on occasion, since the time difference in Geneva can sometimes catch a domain name owner flat-footed.

2. WIPO Rules Don't Let You File an Additional Submission

When it comes to ensuring that the Panel gets to read every last argument and document that you would like to submit, NAF has WIPO beat. The NAF has a supplementary rule that allows a trademark owner to submit not just one filing, but two. Even though the UDRP is supposed to consist of only a Complaint and a Response unless the Panel makes an Order that a party provide further material, NAF has come up with an excellent rule for Complainants since they openly invite "Additional Submissions" for the low cost of $400. This allows you to read the Response and then file a rebuttal that includes everything that you may have forgotten to include in your initial Complaint, and also allows you to respond to all the arguments and documents submitted by the Respondent.
Don't be surprised however if you get a Panel that doesn't agree to consider your Additional Submission, as some Panelists feel that even though the NAF has enacted these supplemental rules, that the Panel doesn't have to, and should not, consider any such additional submissions except in exceptional circumstances. In fact, NAF provides a short warning regarding this, as it tells you on its website that it is really up to the Panel to decide whether to consider your additional submission, even if you have already paid the $400.00. Accordingly, a clever trademark owner will bring its complaint to the NAF so that it at least has a shot of getting in a second submission. $400 is a small price to pay to get this amazing second submission opportunity, especially since nobody knows when ICANN will close this loophole.

On the other hand, some WIPO Panels will let you file an additional submission for little or no reason at all, even without special rules like NAF. Accordingly, by taking a chance and submitting an additional submission to WIPO, you can get lucky and have it admitted since ICANN has not come out against these unwritten practices.

3. NAF Makes it Easier for Respondents to Put Up a Fight

When shopping for the best domain name dispute resolution forum to use, it pays to shop around. Although NAF offers a better deal than WIPO  at $1,300 compared to WIPO's $1,500, for filing a UDRP Complaint, if the Respondent decides to fight back with demanding a three-person panel, WIPO gives Complainants the financial edge. WIPO charges $2,000 to a Respondent for the privilege of demanding a three-person Panel, which is $700 more than NAF charges. Accordingly, by selecting WIPO for your Complaint, you can put the financial pressure on a Respondent since he or she will have to cough up an additional $700.

Sure, it will cost you $2,000 as well if you are a Complainant and the Respondent has demanded the three-person Panel, but as a trademark owner who has decided when to bring such a legal proceeding at a time of your own choosing, you will have greater resources and planning behind you, whereas the domain name owner will be usually have a much tougher time coming up with the money on short notice.

On the other hand, as a Complainant, NAF's fee structure is at least static at $1,300, since at WIPO you get charged an additional $500 (to your original $1500) in the event that a Respondent decides to require a three-member Panel.

By Zak Muscovitch.

Chinese domain name registrants are taking a strong second place after the United States, in being named as respondents in WIPO domain name disputes.

Since 2000, Chinese complainants have only brought a handful of UDRP Complaints to WIPO, with about an average of only 7 per year or so. On the other hand, Chinese domain name registrants are being increasingly named as respondents in WIPO UDRP proceedings.

Although Chinese complainants have only filed 98 WIPO complaints since 2000 (only .38% of all WIPO UDRP complainants), Chinese respondents have been named in a whopping 2,258 WIPO cases, and make up nearly 9% of all WIPO respondents. 

Although Chinese respondents were only named 43 times in 2000, that number has gradually increased all the way to 501 in 2012. Although United States respondents hold a strong first place with nearly 35% of all WIPO cases being made against them, if the numbers continue their trajectory, we will see increased involvement of Chinese domain name registrants in UDRP's. 

ADNDRC to Become Larger UDRP Player?

What is interesting, is that for some reason, complainants, even when based outside of Asia, are using the ADNDRC particularly where the registrant is located in Asia. Even though such proceedings are often in English, it is apparent that intellectual property counsel are often choosing the ADNDRC to deal with Asian-based cybersquatters, even though they may also use WIPO, NAF, or even the CAC in  many such circumstances. 

Although the Asian-based ADNDRC (Asian Domain Name Dispute Resolution Centre) with offices in Beijing  Hong Kong, Seoul, and Kuala Lumpur, was accredited by ICANN in 2001 as a UDRP dispute resolution provider (shortly after Geneva-based WIPO, Minnesota-based NAF, and the now defunct Canadian-based eResolution), it has not, to-date enjoyed a particularly high profile amongst either North American or European complainants or respondents. 

Nevertheless, according to data from published ADNDRC decisions, it appears to have adjudicated  over 1100 domain name disputes amongst its four offices. In 2012 alone, it adjudicated about 186 domain name disputes. 

From reviewing the domicile of the listed complaints, it appears that although complainants are from all over the world, a disproportionate number are Asian. Furthermore, the vast majority of named respondents in these cases are from Asia and from mainland China, in particular.

Remarkably, some of the world's major brands are using the ADNDRC for their domain name disputes. Major corporations such as 3M, Apple, Zippo, Seiko Epson, Otis Elevator, Bose, and Siemens, to name but a few, have all used the ADNDRC as complainants. In addition, a wide range of large and small Asian and Chinese companies have used the ADNDRC as well, including such major brands as ZTE, Changi Airport Group, Shangri La Hotels, and Cathay Pacific. 

One possible explanation is that the head offices of many non-Asian multinational companies are referring cases involving Asian cybersquatters to IP counsel in Asia, to deal with. Another more likely explanation, is that where a domain name was registered with a Chinese registrar and the language of the registration agreement is Chinese, for example, pursuant to Rule 11 of the UDRP Supplemental Rules, the UDRP proceeding must be brought in the language of the registration agreement.

From the foregoing, it appears that UDRP domain name disputes will increasingly relate to, and involve Asian, and particularly Chinese-based parties. We can therefore expect the ADNDRC to become increasingly prominent in UDRP case adjudication. When the International Trademark Association has their annual meeting in Hong Kong in 2014, we can also expect to see a more prominent role taken by the ADNDRC as a result.

With the application for ICANN accreditation by Middle Eastern-based domain name dispute provider, The Arab Center for Dispute Resolution (ACDR), if approved, we will perhaps also see an increase in Middle Eastern based complainants as well, although probably not to an extent comparable with the ADNDRC in the short term. 

Since the language of the domain name registration agreement appears to play a significant role in the reason why complaints are brought to the ADNDRC, and since Asian registrars are more common than Middle Eastern ones, the volume of domain name disputes sent to the ACDR once approved by ICANN, would probably not not be comparable to the other regional dispute resolution provider, at least not until greater registrar penetration is achieved throughout arab speaking countries. For example, the only ICANN accredited registrars in the Middle East are in Jordan (1) and the UAE (1). In comparison, there are 32 in China. 

It will be interesting to watch to see if the UDRP continues to greater involve Asian-based parties, and even Middle Eastern-based parties in the future.


Written by Zak Muscovitch

When a three-member Panel is selected by either the Complainant or the Respondent in UDRP proceeding at WIPO or the National Arbitration Forum (NAF), for example, each party gets to nominate one of the members to the Panel, and each party also gets to provide some input into the selection of the third member of the Panel, who will also act as the Chair of the Panel.

The most important consideration in nominating a panelist is to ensure that your nominees do not include someone who is known for having issued errant or totally unsupportable decision. What this means, in other words, is that if a particular panelist previously ordered the transfer of a domain name, or dismissed a case, when there was no logical or rational explanation for having done so, then you should make every effort to exclude this person from the selection process, as otherwise, rationality predictability will be out the window, at least insofar as that person’s input is concerned.

Nevertheless, even having such a person on the Panel may not be the end of the world, since there are two other members who tend to ameliorate and moderate such a person’s views. That is the beauty of a three-person Panel.

The second most important consideration is to match the subject matter with the Panelist. In cases that involve complex trademark law, one may prefer to nominate a panelist with extensive trademark knowledge. Conversely, if the case involves intricate UDRP Policy issues, perhaps someone who has written scholarly articles on the subject is most appropriate.

The third most important aspect is to nominate panelists who have a track record of making good decisions. This does not mean however, that they tend to side with one side over the other. Most panelists will receive cases which are mainly obvious cybersquatting cases, so if they side with the complainant in these cases, it is no indication at all that they will not give a respondent a fair hearing. Conversely, panelists who have ruled in favour of a respondent domain name registrant on many occasions are likewise not necessarily bad panelists, as they may have been selected by registrants who paid for the three-member panel, and did so because they had a very strong defense, thereby making it unsurprising that the respondent succeeded in such cases.

The main objective is of course to get a fair hearing, and by and large, the panelists are very experienced and fair, at both WIPO and NAF, which are the dispute resolution providers which hear the majority of domain name dispute cases. Retaining a domain name dispute attorney who is experienced in the panel selection process, can be a good idea as it will enable you to better evaluate your nominees to the Panel.

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 (, (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

Could Chris Bosh Be a Future ICANN UDRP Respondent at WIPO or NAF?

So I read the news item where Toronto Raptors NBA star Chris Bosh won a judgment for $120,000 against a domainer, Luis Zavala ( for registering The judgment apparently came down in April, but now Bosh's lawyers reportedly convinced the judge to order that the domainer's 800 other mainly sports and celebrity domain names domains be handed over to Chris Bosh as well, since the defendant wasn't likely to pay the $120,000 judgement...

Bosh's lawyer reportedly stated, that "the Raptors’ star has no intention of holding onto any of them except his own. “He’s not trying to make any money here. He just wants to give these players their names back.".

So let me get this straight....Chris Bosh sues a guy for cybersquatting and then takes 800 cybersquatted domain names as booty? And Bosh's lawyers are apparently going to decide for themselves, who deserves the domain names: “We are notifying the world that anyone whose name is on this list that has a legitimate right to the domain name, Chris will transfer it to them for free,” said Brian Heidelberger, one of three lawyers who represented Bosh." Wow. So the Judge gave up the court's jurisdiction to a sports star and his lawyers to determine who has the rights to particular domain names...Amazing. Here is the actual text of the lawyers' terms for handing over the domain names - a kind of screwy para-UDRP process entirely within the discretion of a basketball star and his lawyers:

Chris Bosh and Max Deal offer the return of the domain name free of charge as a courtesy to the celebrity named herein, provided that such person promptly requests the return of such domain name in writing from Max Deal. Domain names will not be returned without a direct written request from an authorized person to [email protected]. Prior to transferring any domain name on this list, Chris Bosh and Max Deal reserve the right to require documentation in their reasonable discretion to support the requester's rights in the domain name. Domain names on this list may or may not be renewed at Chris Bosh and Max Deal's sole discretion. Chris Bosh and Max Deal reserve the right to at any time in their sole discretion to delete or cancel domain names on this list. Chris Bosh and Max Deal will not charge any fees for the transfer of domain names on this list. All third party costs relating to transfer of any domain name on this list to an authorized rights holder, including but not limited to transfer fees charged by the requester's registrar, are the sole responsibility of the party requesting transfer. Chris Bosh and Max Deal make no representations express or implied regarding any domain name on this list. By requesting or accepting the transfer of a domain name, you hereby release Chris Bosh and Max Deal from any and all liabilities in connection therewith.

But wait...WHO IS MAX DEAL? Good question! Its a social networking site associated with/owned by Chris Bosh. According to Bosh's press release, "Max Deal is a social media company that allows brands to increase their reach". How does that fit in? This is what Chris Bosh has to say according to his press release:

"I will offer the return of the domain names free of charge, but I'd also love the opportunity to show their owners how Max Deal can help."

Ahhh, I get it. When someone calls up to get their domain name back off of Chris Bosh, the new owner of the cybersquatted domain names, he will take the opportunity to sell them on how they can use the domain names in connection with his social media business....According to the terms copied above, Chris Bosh can delete or cancel any domain name in his sole discretion. Better be careful or the domain name could get dropped and picked up by another cybersquatter. What happens if Chris Bosh decides to not give back a name because the claimant doesn't meet his criteria? Maybe Bosh takes the position that one of the highschool basketball players or Venezuelan racecar drivers on his list doesnt have common law trademark rights? Could Bosh be the Respondent in a ICANN UDRP? The Complainant could argue that Bosh registered the domain names in bad faith and is using them in bad faith because he won't give them back and registered them with the intention of using them in bad faith as part of his monetization scheme in Max Deal....

Can you imagine if a domainer registered 800 celebrity domain names and his defense was that he would give them back to anyone who convinced him that they were the rightful owner and listened to his pitch that they could do great business together by letting the domainer monetize their name? What would happen to the domainer in a case like that?....

Its great when someone is there to help out his fellow man. Thankfully the Judge realized this when she allowed Chris Bosh and his entourage to "distribute" the ill-gotten domain names.

And I note that at least one of the domain names in the list,, is not a celebrity that I am familair with. I wonder what Chris plans on doing with that name....Will the rightful owner please stand up?

For more information on domain name law please visit

Well, that must suck for Wizz Air, the Hungarian discount airliner…..

Panelist Sebastian Hughes provided an exceptionally well-reasoned and fair decision in a Complaint brought by the airliner against Texas Wizzair critic, Holden Thomas, proprietor of

Although the Panelist found that, “the addition of the word “sucks” as a suffix in the disputed domain name does little to distinguish the disputed domain name from the Trade Marks, and that there is a clear likelihood of confusion between the disputed domain name and the Trade Marks”, the Panel properly denied the Complaint upon analyzing the other two parts of the three-part UDRP test (“legitimate interest” and “bad faith registration and use”).

The Panelist wrote on “Legitimate Interest”: The Panel finds no evidence to suggest the Respondent, in registering the disputed domain name and setting up the Website, has misleadingly diverted consumers to the Website. Other than a bald assertion of tarnishment, the Complainant has not made any submissions nor filed any evidence to suggest that the Website has been set up and used in order to tarnish the Trade Marks. In any event, fair use criticism does not amount to tarnishment and is not proscribed under the Policy (Howard Jarvis Taxpayers Association v. Paul McCauley, WIPO Case No. D2004-0014).

The Panelist wrote on “Bad Faith”: In any event, in all the circumstances, the Panel is of the opinion that the use of the disputed domain name in respect of genuine and non-commercial criticism of the Complainant does not amount to bad faith registration and use.

Having read and reviewed domain name dispute cases for many years, and having represented clients in numerous domain name disputes as a domain name dispute lawyer, I found the Panelist’s decision to be extraordinarily well-balanced, and he applied the UDRP in a precise and comendable manner.

Good to see that free speech on the Internet has been protected by domain name law.

Canada's Globe and Mail reported today that "Edmonton-based blogger Dave Cournoyer pointed out on his blog Thursday night that the website is actually a link to a portal for adult personals, replete with images of women clad in black lingerie and stiletto heels."  *****[The Story seems to have been removed by the  Glober now...weird...Maybe because it was inaccurate or for some other reason??]*****

Upon checking it on Friday morning however, I saw that it is currently just pointed to a standard PPC page. The story also points out that is a lampoon web site about the Canadian Prime Minister.

As a domain name dispute lawyer, I would say that the .org domain name is probably beyond the reach of Stephen Harper, assuming he would even be interested in going after it, since it is likely a non-commercial and fair use, e.g. for the purposes of review, critiscism, and commentary, as understood by the UDRP and by trademark law. The .com however, could theoretically be caught by the ICANN UDRP, if the PM brought a case to WIPO or the NAF, for example, if he was able to provide "trademark rights" in his name, and showed that the registrant had "no legitimate interest" in the domain name, and registered it and used it in "bad faith".

In this Jay Leno case reported by the Calgary Herald, one can see a summary of the WIPO's analysis of the UDRP provisions regarding personal names and common law trademark rights. The actual ICANN UDRP WIPO domain name dispute case can be read here.