UDRP lawyers
The domain community is fortunate to have several experienced, high-caliber lawyers who represent domain owners who are on the receiving end of a UDRP complaint. These attorneys have handled dozens, if not hundreds, of UDRP responses. They know the UDRP rules and procedures inside and out, are familiar with the records of many of the panelists, and know which cases to cite as precedence.
Defending against a UDRP complaint can be challenging. There are three factors that the Complainant must demonstrate. To summarize, the Complainant must show that 1) it has trademark rights in a mark that is similar to the Disputed Domain, 2) that the domain owner does not have a legitimate use for the domain, and 3) that the domain owner registered and used the domain in bad faith.
Almost all complainants can show some trademark use and most panelists do not consider domain parking to be a legitimate use. That means many UDRPs involving domainers are decided on the question of bad faith registration and use.
This also is tricky, as some panelists don’t think investing in domain names is a legitimate activity. They believe that domain names can’t have inherent value, but the only value in a domain would be to profit off of someone else’s use. Fortunately these panelists are in the minority, as most recognize that domain investing can be a legitimate business practice.
That is why it is very important to choose a three-person panel if you ever are involved in a UDRP. With a single member panel you could easily get one bad panelist. With a 3-person panel, the odds are much lower that you will get two ‘rogue’ panelists and hopefully you’ll have at least one reasonable panelist who can try to talk some sense into the other two.
It is also tricky to win if your domain is on a parked page, and any link on that page refers to the Complainant or a competitor of the Complainant. Many panelists will see this use as a bad faith use, and will also infer that the domain owner registered the domain in bad faith since he or she put the domain to this use.
It can seem that the odds are stacked against the domain owner when faced with a Complaint, especially if the Complaint is from a powerful company and is represented by a high-priced law firm. It doesn’t help that many of the panelists spent their careers working for those same high-priced law firms aggressively defending the trademark rights of powerful companies. Even worse, some panelists are active IP attorneys who will sit as a panelist on a UDRP case one day, and appear as a Complainant’s attorney the next day – perhaps even citing as a Complainant’s attorney a case as precedent that she earlier favorably decided as a panelist.
But somehow, in spite of the deck being stacked against domain owners, many domain attorneys have very good win rates in UDRP cases. They know how to make the argument that domain investing is a legitimate activity, and that the domainer’s registration and use of the Disputed Domain is consistent with this activity. They also know how to make the argument that just because a company chose to trademark a common word, it doesn’t mean that company gets to own every use of that word. They know how to make these arguments, and they know how to make them stick.
I hope you never need a UDRP attorney, but in case you do, here are some that I have worked with:
- Ari Goldberger at Esqwire.com
- John Berryhill at JohnBerryhill.com
- Howard Neu at NeuLaw.com
- Paul Keating at law.es
- Robert Kain at DefendMyDomain.com
- Zac Muscovitch at DNAttorney.com
Here are some others that I know of by reputation:
- Karen Bernstein at KarenBernsteinLaw.com
- Brett Lewis at LewisHand.com
- Eli Pearlman, at elplawfirm.com
- Stephen Sturgeon at DomainNameLawyers.com
- Carl Oppedahl at Oppedahl.com
- Stevan Lieberman at aplegal.com
- Enrico Schaefer at Traverse Legal
- Peter Mueller at BPM Legal (German speaking)
- Bret Fausett at internet.pro
This isn’t intended to be a complete list, and I apologize if I overlooked an attorney who should be included.
What a great article!
I have just experienced exactly what you mentioned in the article. In that I contacted a law firm to give me advice/represent me after receiving a letter of demand from a certain party.
Instead of helping defend my case, they(the large law firm) pretty much say straight up “You will lose, what you doing is wrong and you are exploiting the rights of the other party which owns the trademark” – basically they don’t like people like me because I give them a hard time! And they fail to see that it’s a purely generic domain!
The only problem I have is that I am a ccTLD investor, and although the process is almost identical to a UDRP in terms of the fact that a complainant must prove all 3 points are in their favour, I don’t think any of the lawyers you listed will have knowledge of trademarks in my country, so they won’t be able to represent me.. I’m really in a sticky situation and it’s really painful to just give in to a large company because they demand a domain once they’ve realised they don’t have it. 🙁
Can you share what country code your domain is in? I’d be surprised if one of these domain lawyers couldn’t help you even if it is a ccTLD dispute and not a UDRP dispute.
Hi Nat,
The country is South Africa, the ccTLD is .co.za – the entire law system here is fairly similar to that of the England in the United Kingdom.
Disputes can be lodged and found at: http://www.domaindisputes.co.za/decisions.php?tag=6 – you may notice that in many cases where the domain is generic, the complaint is refused, but they pages aren’t parked. Mine is, lol.
Other than that it’s very similar to a standard UDRP, and seems to be a very fair and well organised system they have in place. Did I forget to mention that I’m willing to pay quite well, provided that there is someone who actually understands my side aswell, and doesn’t just accuse me of exploiting the rights of the complaining party.
Hi Peter,
I’d think that even if it is a .co.za domain that one of these lawyers can help you. Many have handled ccTLD disputes, so it can’t hurt to ask.
Good luck,
Nat
Very nice list indeed. Bookmarked… 🙂
Good to keep this kind of things handy!
Thanks for share the valuable information.
As apparently you have a huge experience on this I have few questions that may also interest other owners:
– How much does it cost in average to protect a domain that is hitted by an UDRP?
– Generally when one is satisfied of an attorney he doesn’t hire a new one, so what motivated you or what was the main reasons to use so many differents attorneys?
– Is having a domain that just shows a “for sale page” neutral to fight an UDRP or is it a negative point?
– A sale page versus a parking page, what is better to prevent to lost an UDRP?
– Is a pure brandable domain at risk if the author of the UDRP does not own a trademark but the domain is just the name of his company, or product for years?
– In this case does the date the owner register or purchaed the domain is critical?
– What is the percentage of the UDRPs you won versus you lost?
– Did you ever lost an UDRP for a generic domain?
Hi Francois,
Good questions. I was afraid someone would ask them 🙂
I’m not a lawyer, and a lot of your questions are asking for legal opinions, so the best I can do is give you my own non-legal opinion.
You’d have to check with the attorneys but I believe some offer flat rate fees in the $5k-$6k range.
I’ve had to fight many C&Ds, UDRPs and court cases in various jurisdictions over a dozen years, so I’ve wound up using many lawyers.
It won’t help.
Some decisions have found that parking is a legitimate use.
The word does not have to be a registered trademark. Many Complaints have been won on the basis of ‘common law’ usage rights in a mark.
Yes, it can be decisive what trademark rights the Complainant had at the time the domain owner acquired the domain.
I’ve won the great majority. A couple that I lost I took to court and either had a favorable settlement or held onto the domain.
Yes, I lost crew.com to J. Crew in a split decision back in 2000. I might write a separate post about it. This decision was studied at Harvard as an example of how UDRP decisions don’t always follow trademark law principles.
Thanks Nat.
I just came back to suggest you Enrico of TraverseLegal.com but I see you now added in the list. It’s with Howard New I think the only ones who contribute to domaining by blogging about legal issues.
My favorite attorney, as far as ease to work with and knowledge, is Zac Muscovitch. What a great guy!
John Berryhill is a great lawyer also, just a bit quirky (nothing wrong with that, you just have to get to know him to understand him and how he operates).
Both are awesome.
Great article.
If you should ever need a German speaking lawyer I could recommend Peter Mueller at BPM legal (bpm-legal.de). He used to work with the law firm of Torsten Bettinger (WIPO Panelist) in Munich. They did a great job defending cohiba.com against Corporación Habanos S.A.
We charge closer to $3,500 for the response but a 3 member panel request will add to that. The domain needs to be worth the fight. If you decide to turn over the domain, make sure you try to obtain a release of liability.
Nice post. I am tweeting now (even though I did not make the list ;-).
Hi Enrico,
Sorry for the oversight. You are now added to the list.
Thanks,
Nat
Very helpful article, Nat.
I would like to suggest you add Bret Fausett (www.internet.pro) to this list. He has represented us on dozens of UDRP cases (and other domain legal threats and lawsuits) over the last 5+ years, and our track record of winning is well known.
Really enjoying your new blog. Keep up the great work!
Thanks Bill. I wasn’t sure whether to add Bret because I didn’t know how much of his practice involved UDRP proceedings, but thanks to your comment I have added him now. Nat