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Common Defenses to a Domain Dispute

By Eric Misterovich

As domain dispute attorneys, we are often asked whether someone should defend against a UDRP proceeding or domain dispute. Typically, the person served with the complaint asks whether 1) it is worth the money to defend the domain? 2) Can I win? 3) what are the common defenses to a domain dispute? Basically, you want to know “do I have a defense?”

What Are My Defenses to a Domain Dispute

The reality is that so many possible defenses exist it is hard to summarize them all. Every case stands on its own facts, however, there are a few main areas ripe for defending a domain name dispute.

  1. The Complainant’s trademark rights

The first step is usually reviewing the complainant’s claimed trademark rights in the mark at issue. Many times companies or individuals will overreach on their purported trademark rights. This is especially true if the complainant is basing its claims on unregistered or common law trademark rights.

Experienced attorneys will be able to pick through the complainant’s claims and get to the heart of the matter: does the complainant even have trademark rights to protect? If not, they cannot prevail in a domain dispute.

  1. Establishing Your Legitimate rights to use the domain

If a complainant makes a prima facie case that the respondent lacks rights and legitimate interests in the domain name under Policy ¶ 4(a)(ii), the burden shifts to respondent to show it does have rights or legitimate interests.  See Hanna-Barbera Prods., Inc. v. Entm’t Commentaries, FA 741828 (Nat. Arb. Forum).

For the respondent to meet this burden, it should provide evidence of its bona fide use of the domain for as long as possible. Further, establishing facts that prove the respondent has been commonly known by the domain name may be enough to establish legitimate rights. Finally, while it is only an available defense in limited cases, if you are making a legitimate noncommercial or fair use of the domain, without an intent for commercial gain, you likely have legitimate rights in the domain.

  1. Rebut the Claim of Bad Faith

The complaintant is required to establish the respondent’s bad faith in registering and using the domain at issue. The following circumstances are evidence of such bad faith:

(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

As the respondent, you will need to establish facts to rebut these elements. Because these claims are highly fact dependent, it is highly recommended you consult with an experience Internet attorney to defend a domain dispute.

Defending Your Domain

Responding to domain name disputes is a complex process that requires the assistance of experienced Internet attorneys. To contact Revision Legal, simply complete the form on this page or call 855-473-8474.

Put Revision Legal on your side