In WIPO Case No. D2024-4253, Pixabay Inc. successfully obtained the transfer of the domain name <pixabay.net>, registered in 2015, five years after the launch of its now-famous image-sharing platform. The complaint was uncontested by the registrant. This decision reinforces the principle that the passage of time does not necessarily weaken the effectiveness of the UDRP. It also highlights the crucial importance of vigilance and prevention in combating cybersquatting.
1. Time
The lack of a statute of limitations in most domain name dispute resolution procedures is a significant advantage for trademark owners. However, this rule is not absolute. For instance, common law principles like the doctrine of laches introduce nuances, while other jurisdictions, such as China, impose strict filing deadlines.
1.1. UDRP: a presumably timeless shield
The UDRP offers several advantages: enforceability without the need for court approval, speed, and cost-effectiveness. Another key benefit is the absence of a statute of limitations. Unlike other legal systems, the UDRP allows trademark owners to initiate proceedings years after the registration of a disputed domain name without risking dismissal due to delay. This was pivotal in the <pixabay.net> case, where the complaint was filed nearly nine years after the domain’s registration in 2015.
Numerous cases have underscored this principle. Notable examples include <pabloescobar.com> (transfer after 20 years: iptwins.com, 2019-10-16), <stevejobs.com> (transfer after 20 years: iptwins.com, 2019-12-20) and <mandela.org> (transfer after 19 years: iptwins.com, 2019-07-27). These decisions demonstrate that the passage of time does not necessarily weaken a trademark owner’s rights in UDRP proceedings, especially when bad faith is evident, often facilitated by the trademark’s global renown.
Nevertheless, caution is warranted. Implicitly allowing a third party to retain a domain identical or similar to a trademark carries risks. Over time, the registrant may acquire legitimate rights through active use of the domain, even if such activities appear legitimate only on the surface. Cybersquatters are often adept at exploiting legal loopholes to their advantage. Such scenarios can significantly complicate the recovery of a domain that could eventually play a strategic role in the trademark owner’s business. Continuous monitoring and prompt action are essential to avoid these pitfalls.
It is also important to note that the absence of a statute of limitations under the UDRP is not universally guaranteed. It may be challenged in certain jurisdictions or when competing legal principles are applied.
1.2. The Doctrine of Laches
The doctrine of laches, originating from Anglo-Saxon law and based on principles of equity, establishes the following principle: if a party unreasonably delays asserting its rights, such inertia may be interpreted as an implicit waiver, particularly if the delay causes unjust prejudice to the defendant, for example, by leading them to believe over an extended period that no legal action would be taken against them.
The doctrine of laches is regularly invoked in UDRP jurisprudence. Each year, its proponents attempt to gain broader recognition. The current status of this doctrine in UDRP case law was reaffirmed in the recent case D2024-3893 concerning a domain name registered 23 years before the filing of the complaint (WIPO Case No. D2024-3893, Jakob Ruben van Gelder v. Tech Ops, SyncPoint, Inc., November 4, 2024):”
“This doctrine is an equitable principle in Anglo-American law. Certain other legal systems operate according to broadly similar principles. As far as the Policy is concerned, Panels have widely recognized that mere delay between the registration of a domain name and the filing of a complaint neither bars a complainant from filing such case, nor from potentially prevailing on the merits. Panels have declined to specifically adopt concepts such as laches or its equivalent in UDRP cases. WIPO Overview 3.0, section 4.17. Nevertheless, as this section goes on to note, certain delays in filing a UDRP complaint may make it more difficult for a complainant to establish its case on the merits, particularly where the respondent can show detrimental reliance on the delay”.
In other words, the principle of time-bar is dismissed, allowing a trademark owner to take action against the holder of a domain name identical or similar to their trademark, even if it was registered decades earlier. However, the passage of time can work in favor of the registrant, potentially strengthening their claim to legitimate rights or interests in the domain name.
1.3. Chinese law: a strict time limitation
Disputes concerning Chinese domain names (.CN or .中) are governed by the China ccTLD Dispute Resolution Policy (cnDRP). Article 2 of the cnDRP specifies:
“The Policy is applicable to disputes resulting from the registration or usage of domain names. However, the Dispute Resolution Service Providers do not accept complaints regarding domain names with a registration term of over THREE years”.
This three-year limitation period requires trademark owners to act promptly to avoid losing their rights to pursue action against a disputed domain name.
2. Prevention
Prevention plays a pivotal role in addressing domain name abuse. While disputes have risen with the proliferation of new generic top-level domains (gTLDs), many conflicts can be avoided with proactive strategies and tools. From defensive domain name registrations to mechanisms like the Trademark Clearinghouse (TMCH) and innovative solutions such as GlobalBlock, trademark owners now have effective measures to safeguard their rights.
2.1. Domain name identical to the trademark
In WIPO Case No. D2024-4253, the domain name <pixabay.net> reproduced the PIXABAY trademark in its entirety, creating an obvious risk of confusion. Disputes involving domain names identical to trademarks under the .NET extension have become increasingly rare. However, the introduction of new gTLDs authorized by ICANN in 2012 has led to a significant surge in UDRP cases involving identical domain names.
Notable recent examples include: WIPO Case No. D2024-2202, Electrolux AB v. Undisclosed, electrolux.partners, Terminated ; WIPO Case No. D2024-2232, Monster Energy Company v. Гетьман Алёна/Getman Alena, monster-energy.store, Transfer ; WIPO Case No. D2024-2235, Federation Francaise De Tennis (FFT), Soboleva V Tatyana, rolandgarros.pro, Transfer ; WIPO Case No. D2024-2243, Antonio Lupi Design S.p.A. v. 于青青 (yu qing qing), antoniolupi.xyz, Transfer ou encore WIPO Case No. D2024-2437, Association des Centres Distributeurs E. Leclerc – A.C.D. Lec v. Tudor Luca, leclerc.fan and leclerc.fans, Transfer).
The identical nature of the domain to the trademark, coupled with the trademark’s notoriety, often simplifies proof of bad faith. Nonetheless, preventive measures can help trademark owners avoid legal action altogether.
2.2. Avoidable Situations
Defensive Registrations – Legal advisors often recommend registering key domain names under primary extensions like .COM, .NET, and .ORG, as well as any relevant industry-specific extensions, during the trademark creation process. This minimal strategy can protect the brand and enhance its value in mergers or acquisitions. For instance, registering <pixabay.net> could have strengthened the PIXABAY brand before its acquisition by Canva in 2019.
Trademark Clearinghouse (TMCH) – The TMCH allows trademark owners to register domains during the sunrise period of new gTLD launches and provides automatic notifications for attempts to register identical domain names. While effective, its scope is limited to new gTLDs, excluding legacy domains like .COM or .NET. Additionally, the TMCH does not cover variations of trademarks, which remains a vulnerability.
GlobalBlock – Launched in 2024, GlobalBlock blocks the registration of identical domain names across over 600 extensions, with GlobalBlock+ extending protection to similar names. This tool has quickly become indispensable in combating abusive domain registrations.
Conclusion
The UDRP provides a robust mechanism for reclaiming domain names, but trademark owners must remain vigilant. While the absence of a statute of limitations under the UDRP is a key advantage, delays in taking action can still complicate recovery efforts. In some jurisdictions, explicit filing deadlines apply, such as under Chinese law. Ultimately, proactive measures—defensive registrations, participation in the TMCH, and tools like GlobalBlock—are essential for effective brand protection and enhancement. By integrating monitoring, preventive registrations, and blocking tools, trademark owners can safeguard their rights and maximize the value of their brands.
