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A domain-name can become an important asset for any organization or business interacting through the Internet.  Unlike trademark law, where a single mark can be used in a number of industries, a domain-name is controlled by a single entity per top level domain. (e.g. only one entity can control www.vamospatentlaw.com)

Disputes (including cyber-squatting) over the control of domain-names occur frequently; parties have a number of alternatives to seek out redress.  They can be settled through mediation, litigation, or ICANN promulgated Uniform Domain-Name Dispute Resolution Policy (UDRP) Arbitration Proceedings.

UDRP Arbitration Proceedings offer parties an efficient manner to resolve disputes.  The procedural aspect of these Arbitration Proceedings are outlined by the Rules for Uniform Domain-Name Dispute Resolution Policy. Unfortunately, the Rules tend to favor the party that initiates the Arbitration Proceedings, and the respondents to the Arbitration Proceedings can lose the fight even before reaching the substantive aspects.  The following three issues highlight some of the procedural perils that a respondent can face.  This list is not exhaustive and many other procedural land mines exist.

SERVING THE COMPLAINT

To begin the Arbitration Proceedings, the Complainant sends out its Complaint to the Domain Registrar of the disputed domain name.  The Domain Registrar then looks at the registration information provided by the domain’s owner and sends out a copy of the Complaint via email and snail mail.  If the registration information is not current and the Complaint is sent to a stale address, it is not an excuse for improper notification to the Respondent.  It is incumbent for all domain owners to keep their forwarding information current with their Domain Registrar

ANSWERING THE COMPLAINT

The respondent has 20 calendar days to respond to the Complaint.  The time to answer the complaint starts from the earliest receipt of the Complaint upon the Respondent.  It is understood that if the Domain Registrar sends the Complaint via e-mail that the receipt of the Complaint is instantaneous and the time starts ticking.  It does not matter if the Respondent only becomes aware of the dispute because he saw the mailed copy ten days later rather than the emailed copy.  If you get served by a UDRP complaint, rush to answer the complaint.  Do no think that finding and retaining a competent internet law attorney will be easy or quick.

TIME EXTENSION TO ANSWER THE COMPLAINT

If you find yourself scrambling to respond to the Complaint or trying to find an attorney to deal with this, please note that time extensions are only granted by extenuating circumstances or by agreement with the other party.  You might find that the Complainant will graciously grant you an extension but do not count on it.  They want your domain name and giving you an extra lifeline is really not in their best interests, especially if they are paying expensive attorneys by the hour.  Do not assume that you will get that time extension.

The America Invents Act (AIA), signed on September 16, 2011, brought upon the patent law field, the most comprehensive change in statutory patent law in the past sixty years.

The most controversial of these changes is the switch from a First-To-Invent to a First-To-File priority regime. Prior to the AIA, the inventor who come up with a concept first could get the right to obtain a patent regardless of when he filed the patent application. (subject to certain requirements)  After the AIA, the inventor who filed the patent application first, regardless of who came up with the concept first, could get the right to obtain a patent.

I recently gave a presentation to the University of Arizona College of Engineering Industrial Board, describing these changes and laid out various strategies that inventors could use to manage uncertainty brought upon by these statutory law changes.

Anytime the law changes, especially when it shifts dramatically, it brings about legal uncertainty. Every new word, sentence, and clause will be parsed and litigated for the next thirty years. New regulatory procedures were created by the USPTO to supplement these statutory changes but there is no real track record as how it will play out since they have only recently been implemented. Here is a link to this Presentation