What question/questions can be asked to prevent UDRPs on domains that are not intentionally infringing?

[Mize]

Relative to:

Domain Name Investing “Universally Accepted” by UDRP​

https://www.internetcommerce.org/ud...lly-accepted-by-udrp-ica-udrp-digest-vol-3-9/

I put in a comment there but would also like feedback here:

For the Redfield case:

From my perspective (and I’m trying to figure this out because it would be nice to be able to prevent UDRPs on domains that are not intentionally infringing):

It should not matter if registrant is a domain investor or not.

If the domain and or website is not intentionally infringing on a trademark [(both mark and usage) or (if the trademark is famous, not causing dilution/blurring/tarnishing)] then this question should be asked:

Does the domain have usage/value outside of the trademark rights of the complainant?

If that answer is yes, and the complainant continues with the UDRP, then it would seem to be attempted theft. The complainant actually needs to answer that question before the UDRP is filed to potentially prevent wasted time/money.

Any input on correcting or making the above stronger is appreciated.

(in the Redfield case, Redfield should have at least offered what was paid for the domain instead of UDRP. They may have gotten the name back and avoided wasted time/money of many people.)

Edit: added title of article/link

 

[karmaco]

UDRP has to show two things: Confusingly similar and bad faith registration or purchase. Most UDRP’s seem to hang their hat on the first as their trademark given right to challenge you.

Bad faith the lander, the date of trademark versus date of registration versus date you acquired it come into play. First in use also matters.

Anyone holding a mark has a right to raise a UDRP even when many times they shouldn’t.

If its viewed as a plan b attempt to get a name or other egregious factors a finding of reverse domain hijacking sometimes happens.

So to answer your question they can go straight to UDRP on the advice of bad counsel or good as sometimes people are infringing or regged in bad faith.

You can do everything right and still get hit with one.

 

[Mize]

UDRP has to show two things: Confusingly similar and bad faith registration or purchase. Most UDRP’s seem to hang their hat on the first as their trademark given right to challenge you.

Bad faith the lander, the date of trademark versus date of registration versus date you acquired it come into play. First in use also matters.

Anyone holding a mark has a right to raise a UDRP even when many times they shouldn’t.

If its viewed as a plan b attempt to get a name or other egregious factors a finding of reverse domain hijacking sometimes happens.

So to answer your question they can go straight to UDRP on the advice of bad counsel or good as sometimes people are infringing or regged in bad faith.

You can do everything right and still get hit with one.

Thank you for the input Karmaco.

I'm thinking/hoping that as a group, we should be able to come up with with a question that would help a complainant gain better understanding.

For example: Does the domain have usage/value outside of the trademark rights of the complainant?

Something like that....where if the complainant answers yes, the UDRP should not be filed or stopped.

Something to get a complainant to think about if the registrant has rights to usage/value that are outside of complainant's trademark rights and thus what they are attempting could be viewed as theft.

 

[Mize]

One possibility is instead of asking the question, go ahead and give the answer. AI will be able to make this much easier so that the answer can be produced before a UDRP is filed. For example: Your trademark has rights in this area(s)…A, B, C. The domain does not have rights in areas A, B, C but does have rights in D, E, F…anything outside of A, B, C.

This answer could also help a potential buyer of the domain avoid buying the domain if their use is in the areas of A, B, C (to avoid infringing on the rights of trademarks holders)

Many one word domains already have maybe 5 or many more exact match trademark areas (good and services) that need to be avoided.

Any thoughts?