The National Arbitration Forum (NAF) recently proposed amendments to its Supplemental Rules governing the resolution of domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN). The changes, if approved, will go into effect on November 1, 2007, and could materially affect trademark owners’ strategies for challenging so-called “cybersquatters.”

Aliases. Perhaps the most important proposed change for trademark owners concerns the filing of a single UDRP complaint against a respondent who uses multiple aliases. Proposed Supplemental Rules 1(d)(i), 4(f), and 17(a)(i) would allow a complainant to file a single UDRP complaint against multiple respondents and allege that a single entity is using aliases to register the disputed domain names. If the complainant does not meet its burden of proving that a single respondent is using various aliases, the arbitration panel (the Panel) will exclude the unrelated domain names from the case. A UDRP complaint alleging multiple aliases would be subject to an increased filing fee; however, no portion of the filing fee will be refunded if the Panel determines that some of the disputed domain names are not owned by the same registrant and, therefore, should not be included in the proceeding. If approved, this change will allow trademark owners to spend less money and file fewer UDRP complaints against recidivist cybersquatters that use various aliases.

Defining “Submit.” The proposed amendments would also include a definition of “submit,” a term that is currently used, but not defined, in the NAF's Supplemental Rules. Under proposed Supplemental Rule 1(f), a document that must be submitted in hard copy and electronic copy would be deemed “submitted” when both the hard copy and the electronic copy are received by the NAF. In addition, electronic mail would be deemed submitted when it is received by the NAF's mail server. Facsimiles would be deemed submitted when the entire fax is received by NAF and postal mail would be deemed submitted when received by NAF.

Page Limits. Finally, in proposed Supplemental Rules (4)(a) & (5)(a), the NAF has recommended increasing the page limits for both the complaint and the response from ten to fifteen pages.

The full text of the proposed Supplemental Rules is available at: http://www.icann.org/correspondence/dorrain-to-jeffrey-21sep07.pdf. These proposed changes could have a material effect on a trademark owner’s ability to challenge cybersquatters in a cost-effective manner. It is important, therefore, to follow the progress of these proposed amendments and, if they are implemented, carefully consider their relevance to your enforcement efforts.

For more information, please contact:

James R. Davis
davis.jim@arentfox.com
202.857.6169

Halle B. Markus
markus.halle@arentfox.com
202.857.6113

Matthew R. Mills
mills.matthew@arentfox.com
202.715.8582