Nels Lippert
Nels Lippert, Managing Partner of the New York office of Hale and Dorr, presented at FindLaw's IP Strategies Seminar an in-depth discussion on the Uniform Domain Name Dispute Resolution Policy (UDRP), an administrative procedure for the protection of trademarks.
The UDRP pertains to the following basic scenario: You have a company trademark, and suddenly discover that someone else has used that mark or a similar mark in a domain name that resolves to a website that is competitive or contains unsavory content. When faced with such a situation, counsel can either file a civil action under the ACPA, or may use the UDRP. The results are often very similar.
"Why should one use the UDRP?" Mr. Lippert asked. "Because it's fast, and the simplified procedure takes about two months." The process is also inexpensive, as the filing fees are $1,500 and include a number of domain names, if you have a cybersquatter who has registered multiple names containing your marks.
A further reason to use the UDRP is that the judgments are directly enforceable. If successful, you can choose between two possible results: 1) the registrar will transfer the domain name to you; or 2) the registrar will cancel the domain name. These are the only two remedies available, unlike the ACPA where there are damages available. As a practical matter, Mr. Lippert recommends seeking transfer of the domain as opposed to cancellation, because once it is cancelled, the domain name goes right back to the public and somebody can pick it up again.
The UDRP applies to all top level domains, such as .com, .net, .org names. For the most part, country codes are not included within the domain name resolution policy. All registration agreements for domain names now have an agreement to be governed by the UDRP.
Mr. Lippert next discussed the elements of the UDRP procedure, the main reason why the UDRP is so timely and inexpensive. Basically, there is a three-step procedure: complaint, answer and decision. There is a possibility of filing a reply to the answer, but it is discretionary and very rarely used. Decisions are not appealable, thus, Mr. Lippert warns, "You've got to put everything into the complaint and get it right the first time, otherwise you risk losing the case."
To be successful in a UDRP proceeding, one must show: 1) the trademark is identical or confusingly similar in the domain name; 2) the respondent had no rights or interest in the domain name; and 3) the domain name has been registered in bad faith and used in bad faith.
Mr. Lippert again emphasized the importance the complaint. When preparing the complaint, assess your case's strongest points as well as the most damaging elements of the respondent. "Because the complainant has the burden of proof, you have to put everything before the panelist." There are no appellate level panels, and panelists are not bound by prior decisions.
Some common problems arise when the complaint fails to properly establish ownership in the trademark. Bad faith registration is another problem area in the UDRP. Criticism sites, commonly known as "sucks sites," are very problematic for large companies. This is where someone who registers a company name with the word "sucks" at the end, and then uses it as a means to criticize the company. Some panelists find this to be fair use, while others do not. In the UDRP, there's a common theory that the content of a website is protected speech, while the domain name is not.
As for number of panelists, one can request either one or three panelists to decide the case. If you have a particularly sticky issue, such as a parody or criticism site, where there's a fair speech type of issue on the bad faith use and registration prong, three panelists may be advisable. However, statistics have shown that three panelists are tougher than one.William DiSalvatore
William DiSalvatore, Senior Partner in Hale and Dorr's New York office, presented "Identifying and Effectively Protecting Trade Secrets." He began by outlining some factors that dictate the best form of intellectual property protection, such as economics, competitive, and the type or form of information.
Mr. DiSalvatore noted a common challenge that his clients encounter is choosing between U.S. patent protection and trade secret. An entity seeking to protect information or technology must consider costs, the type of product and its market, the form of the technology, and the ability to maintain the secret.
A patent is a bargained for exchange. "While you get the right to exclude others, there's always a risk that proving infringement can be very difficult, or that the disclosure in your patent will give someone enough information to design around it." Mr. DiSalvatore explained.
On the trade secret side, you have to make sure that the information is kept secret. Mr. DiSalvatore stressed the need for corporate counsel to carefully track how the company protects its secrets. Enforcement against former employees is often difficult, and a third party can use your trade secret if it has obtained the information through proper reverse engineering. As a company, one of the best ways to protect trade secrets is to create contemporaneous documents that show the judge or jury which appropriate protection steps were taken.
A trade secret owner must take reasonable precautions to keep the information secret, however the owner need not make all conceivable efforts. Basic protection methods are to limit the amount of people who get to see the information, provide contractual protection (NDAs), and physical protection, such as locks, guards, passwords and trash shredding.
43 states have enacted the Uniform Trade Secrets Act, which provides the recovery of damages from the misappropriation, as well as multiple and punitive damages. DiSalvatore recommends caution in this area however, because each state act has its own nuances.
Mr. DiSalvatore concluded by urging counsel to learn the practice of the client in their particular field. "Find out what gives your clients and their competitors what they believe is their economic advantage." Once a piece of information has been identified as a trade secret, make sure the client takes reasonable precautions to protect it.