Services

Extrajudicial domain name disputes

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I started analyzing legal issues relating to domain names back in 2003. I created a specialized domain name information site targeting law firms (juris-nd.com). Shortly afterward, I joined a domain name registrar whose business model focused on domain name strategy and portfolio management for brand protection purposes, for which I produced legal content related to domain names for almost nine years (Indom, then Netnames, and finally CSC). I gave lectures on domain name law for several years in France (at the University of Montpellier) and two years in Hong Kong (at the Hong Kong Polytechnic University). On numerous occasions, I have also been invited by law firms to deliver consultations/opinions and draft UDRP/UDRP-like complaints. Since 2018, I have been working with IP Twins (iptwins.com), which offers a full range of brand protection services in the digital environment.

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Preliminary assessment

Each trademark is unique: drafting a complaint requires acquiring knowledge about the brand (its history, strengths/weaknesses, and geographical scope). Each case is different: the success of a complaint relies on a perfect understanding of the facts, a subtle analysis of the case law, and the appropriate use of thorough legal reasoning specific to the case’s factual background. A preliminary matter assessment is necessary to become familiarized with the brand and assess the chances of success of an extrajudicial complaint. A preliminary matter assessment also aims to rule out possible conflicts of interest.

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Languages

The language of the procedure depends on the nature of the Top-Level Domain (TLD). If the TLD is a generic (gTLD like .com or .xyz), the language of the procedure will be the same as the registration agreement of the disputed domain name. However, depending on the circumstances of the case, the third-party decision maker (or panelist) has the power to determine that the procedure will be conducted in another language. If the TLD is geographical (ccTLD as .EU for the European Union or .CN/. 中国 For China), the language of the procedure will most often (not always) be the official language or one of the official languages of the country to which the ccTLD refers. These questions may be raised during the preliminary matter assessment.

Specific costs will apply for a DEUL procedure before the World Intellectual Property Organization. This procedure concerns .eu domain names. DEUL procedures are not common but are sometimes necessary. Since there are 24 official languages in the European Union, the question of the language applicable to the procedure sometimes arises. The purpose of the preliminary step is to answer this question.

These DEUL fees must be added to those due for the procedure on the merits (see below).

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Fees

Flat fees: these costs include contingencies, such as negotiating with the opposing party, any additional submissions or the processing of arguments submitted by the opposing party. These costs do not include those of i) the dispute resolution service provider, and ii) the third-party decision maker(s) (or panelist(s)).