UDRP, URS, ACPA, and Beyond: Domain Name Enforcement, Brand Protection Strategies, Recent Decisions

Trademark owners and their counsel must understand the benefits and limitations of the UDRP, URS system, and the ACPA to ensure that they are adequately protecting their trademarks in the evolving domain name space. As the domain name space expands, enforcement efforts against infringing domain names are essential. The UDRP has become an important weapon for brand owners, but there are times, albeit relatively rare given the cost, when a domain name infringement may warrant a federal suit under the ACPA.

Evaluating the effectiveness of the URS proceeding, introduced in connection with ICANN's new gTLD program, involves consideration of cost-effectiveness and unique outcomes. Among the advantages of the URS are quicker adjudication and lower cost. However, the URS has disadvantages that should be carefully considered, including the lack of a transfer remedy. Overall, the URS has not been widely used, and we will examine why that is the case and whether this reality may change going forward.

The implementation of the GDPR has added a layer of complexity to what in the past had been easier to connect the abusive registrations to their owners. The GDPR data privacy protections make it more challenging to identify domain name owners.

Jonathan S. Jennings, Partner at Pattishall McAuliffe Newbury Hilliard & Geraldson and Brian J. Winterfeldt, Principal at Winterfeldt IP Group, will guide counsel on the relative advantages and disadvantages of the UDRP, URS system, and the ACPA. The panel will examine the considerations in determining which action should be pursued under different scenarios when challenging infringing domain names and offer strategies to navigate the options.

The panel will review these and other crucial issues:

  • How has the domain name space evolved since the launch of the gTLD program? How do these changes impact overall enforcement concerns at the present time?
  • What are the relative 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 UDRP, URS, ACPA, and other means of achieving a satisfactory resolution of a domain name dispute?

Please register through Strafford using the link below.

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