The World Intellectual Property Organization (WIPO) recorded a 12% increase in Uniform Domain-Name Dispute Resolution Policy (UDRP) cases filed in 2018. In fact, WIPO saw a total of 3,447 cases that covered 5,655 domain names. What this implies is that brand and trademark owners are reacting to the increasing number of cybersquatting or domain name hijacking — the act of registering domain names related to popular companies and brands in hopes of reselling them at much higher prices.
UDRP cases are well and good as they help trademark owners gain ownership of domains that should rightfully be theirs. However, the same policy can also be abused or misused by the same people that it aims to protect. When this happens, the arbitration panel may rule certain UDRP cases as instances of reverse domain name hijacking (RDNH).
In this article, we delve into the UDRP case filed by Vudu, Walmart’s video streaming subsidiary, explore the basis of WIPO’s ruling, and scrutinize Vudu’s possible motivation behind filing the dispute. We also examine how trademark owners can avoid legal complications by using domain research and monitoring tools such as WHOIS Search and Brand Monitor.
Vudu and the RDNH Finding
On September 16, 2019, Vudu’s legal team filed a UDRP case against the registrant of vudo[.]com, contending that the domain name is “confusingly similar to its VUDU marks.” Vudu’s domain name is vudu[.]com.
The Arbitration and Mediation Center of WIPO, however, ruled against the complainant and tagged the case as an RDNH attempt. The timing of events was key to the ruling. It was clear that vudo[.]com existed way before Vudu came about as a brand. To quote part of WIPO’s ruling:
“Even without glancing at the WIPO Overview 3.0, counsel for the complainant should have recognized from the plain language of the policy that at the time of registration, the respondent could not have been attacking a trademark that did not exist and was not in contemplation for years to come.”
Our Investigative Tools: WHOIS Search and Brand Monitor
Using WHOIS Search, we examined the key events around Vudu’s trademark registration as well as the domain registration of both vudo[.]com and vudu[.]com.
1. Vudu, the complainant registered its trademark in 2011. As the below shows, the Vudu trademark registration was finalized on March 22, 2011, even if the application was submitted on February 21, 2007.
2. The respondent established ownership of vudo[.]com back in 1999, as reflected in the domain’s WHOIS record:
3. Interestingly, the complainant said vudu[.]com was created in 1995, which was correct based on its WHOIS record. WIPO, however, categorized this last detail as irrelevant as Vudu did not own the domain until 2007.
4. As such, the respondent was not found at fault of using vodu[.]com in bad faith, as he owned the domain name since 1999 and even purchased similar domains such as ivudu[.]com and voodu[.]com at around the same time. We actually ran both ivudu[.]com and voodu[.]com on WHOIS Search, and the creation dates were indeed close to that of the disputed domain name vudo[.]com:
* * *
Summing up the above events, Vudu filed the case as vudo[.]com is very similar to vudu[.]com. The company surely wants to protect its brand from typosquatting, which is valid. However, WIPO’s finding was that there was no typosquatting involved — the disputed domain existed way before the brand did.
While Vudu can’t do anything about vudo[.]com anymore, this isn’t true for other typosquatting vectors. We ran Vudu on Brand Monitor, and the tool generated multiple domain variants possibly worth registering if not legitimately owned by someone else. In fact, to avoid future legal complications, Vudu (and any brand for that matter) can use the tool to check all possible typos that can be used by threat actors in bad faith. Companies can also prevent using brands that sound like already-existing ones with the help of tools like WHOIS Search.
