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Course Details

Course Information
  • smart_display Format

    On-Demand

  • signal_cellular_alt Difficulty Level

    Intermediate

  • work Practice Area

    Trademark and Copyright

Date & Time
  • event Date

    Tuesday, September 19, 2023

  • schedule Time

    1:00 p.m. ET./10:00 a.m. PT

  • timer Program Length

    90 minutes

Credit Information

  • This 90-minute webinar is eligible in most states for 1.5 CLE credits.

$347.00
CLE
ALL

This CLE course will guide counsel on the relative advantages and disadvantages of the Uniform Domain Name Resolution Policy (UDRP), the Uniform Rapid Suspension (URS) system, and the Anticybersquatting Consumer Protection Act (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.

Faculty

Brian J. Winterfeldt
Principal
Winterfeldt IP Group, PLLC

Mr. Winterfeldt advises clients on the creation of global trademark and branding strategies. He also develops programs to register and enforce clients’ IP rights and protect against infringement of their trademarks and other branding elements in the U.S. and internationally, including domestic and international trademark counseling, clearance, prosecution and enforcement. In addition, Mr. Winterfeldt advises clients on trade dress, copyright, internet governance and domain name issues, including domain name disputes such as UDRP. He regularly counsels global leaders across a broad variety of industries. As a prominent voice in the IP arena, Mr. Winterfeldt has written numerous articles on trademark law and is a frequent speaker at industry events on topics such as trademark law, internet governance and social media. He is an active member of the INTA is currently serving a three-year term on INTA’s Board of Directors.

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Jonathan S. Jennings
Partner
Pattishall, Mcauliffe, Newbury, Hilliard & Geraldson LLP

Mr. Jennings protects brands, copyrighted works and domain names throughout the world. As part of his practice, he represents plaintiffs and defendants in a wide variety of disputes involving trademark, copyright, trade secret, right of publicity, breach of contract, unfair competition and false advertising claims. Mr. Jennings teaches a course on right of publicity and privacy law at the John Marshall Law School.

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Description

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 URDP 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 GDRP data privacy protections make it more challenging to identify domain name owners.

Listen as our authoritative panel of trademark attorneys guides trademark counsel on the advantages and disadvantages of various rights protection mechanisms and strategies, including the UDRP, URS, and ACPA. The panel will examine the considerations in determining how to develop and implement a successful domain name enforcement strategy, how to select the best dispute resolution mechanism, and how to manage a domain name portfolio as new gTLDs continue to be added to the domain name landscape.

Outline

  1. UDRP vs. URS vs. ACPA
    • Pros and cons of using them
    • When it makes sense to use each
  2. Recent court decisions/proceedings
  3. Strategies for navigating the dispute resolution mechanisms and potential court action

Benefits

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?