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Someone Filed a UDRP Against Me - Now What?

By Brett Lewis, Attorney, Lewis & Lin LLC 

Editor's Note: If you find yourself asking the question in our headline, this guest article by veteran Internet legal counsel Brett Lewis of Lewis & Lin LLC is for you! 

Being on the receiving end of a UDRP Complaint can be unnerving and worrisome for some clients, while others receive it as a declaration of war.  Many factors will influence whether a domain name registrant chooses to fight back and file a response, including the value of the domain name, the registrantís ability to fund a defense, and the odds of successfully defending the domain name.

Although the odds are generally stacked against registrants statistically, statistics can be misleading. Many times respondents should expect to lose, because they are engaged in conduct that runs afoul of the dictates of the UDRP and governing law. The odds for respondents in contested proceedings are far better Ė perhaps in part because the Respondents are represented by counsel, and in part because the domain names in question are worth defending.  

Disputes over generic terms and dictionary words  

Brett Lewis
Lewis & Lin LLC
 

where Complainants grasp to smear a respondent with the taint of bad faith are common.  In some cases, a history of registering other trademarked domain names may be evidence of bad faith, while on other cases involving generic, geographic or other descriptive dictionary words, such inferences may not so readily be drawn.  It is incumbent upon the respondent and his or her attorneys to bring all relevant information to the Panelís attention.   

Over the years, my firm has taken on a number of cases at the stage where the respondent had lost a UDRP decision; in each case the respondent had been represented by counsel who omitted to mention and failed to include key facts in their papers. In each such case, the respondent should have prevailed at the UDRP level, rather than having to file papers in Court to stop the transfer of a legitimately registered domain name.  

Cyber law image from Bigstock

For most clients, losing a UDRP is the end of the line. Although there are still decisions in which panels rule subjectively, it is possible to cut down on subjective rulings substantially by hiring an expert in domain name law. Complicating that choice is the fact that not all domain name attorneys are created equal. Some of the glaring mistakes I alluded to above were committed by other domain name attorneys Ė so-called experts (none of them named Ari Goldberger, John Berryhill or Zak Muscovitch - or Brett Lewis for that matter)! Poor advice will do more damage to a UDRP defense than a well-worded complaint.  

Most domain name attorneys will take on cases on a flat fee basis Ė be wary of those who do not Ė and some even handle defenses on a full or partial contingency. If an attorney wonít agree to work on a partial contingency basis (i.e., for a fixed fee plus a success fee, instead 

of for one larger up-front fee), that may be an indication that the attorney does not believe that your case is meritorious, but is, nonetheless, willing to take your money. Far too many meritless papers are filed.  Taking cases on a partial contingency gives both parties some skin in the game, so to speak, and sets the incentives where they should be.  

Another important factor is whether to opt for a single member or three-member panel. Cost aside, there are very few cases where I would ever recommend that a respondent choose a single-member panel.  Single panelists are randomly assigned, which introduces significant risk into the decision-making process.  Not all panelists are created equal and some have less experience adjudicating domain name disputes, or an inherent bias in one direction or the other.  This is not only a matter of opinion, but also of statistical fact.  For whatever reason, respondents fare better with three-member panels than with single panelists.  

In conclusion, if you find yourself served with a UDRP complaint, seek out the advice of a trusted domain name attorney, or better yet, speak to several of them.  The good ones tend to turn up in conversation and merit mentions on blog posts for the right reasons.  Make sure that they have your best interests at heart and arenít just interested in collecting a fee.

If the attorney doesnít ask you whether the domain name is worth more than the cost of defending it, he or she probably isnít going to care whether you win or lose, or whether you spend more money defending a domain than what itís worth.  Most of all, try to separate emotion from the business decision 

Legal expense image from Bigstock

on whether to spend the money on a domain name defense Ė many UDRP issues raise issues of fairness, but unless you can spare the money on principle, try to be dispassionate in your decision making.

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(Article published February 1, 2013)


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