If you have a website, you also have a domain name. Legal issues are numerous with respect to domain names and, among the most pressing, are malicious efforts by criminals to hack or take over your domain name/website or to create fake websites to divert your internet traffic and sales. Another major legal issue concerns claims that a domain name and/or website is confusingly similar to a trademark or that it infringes upon a copyright. For these and other legal issues, UDRP proceedings are an option for resolving these types of legal conflicts. If you find yourself in need of legal services related to any of these issues, contact us here at Revision Legal. We are top-rated internet lawyers.

What is UDRP?

UDRP stands for “Uniform Domain Name Dispute Resolution Policy,” which was created and is administered by the World Intellectual Property Organization (“WIPO”). UDRP proceedings are non-court arbitrations under the Rules and Regulations established by WIPO. Domain name disputes are common — at least 5,000 cases every year — and UDRP proceedings are the least expensive and fastest resolution method. There ARE civil court options under U.S. laws such as the Anticybersquatting Consumer Protection Act. However, civil court cases are typically much more expensive and are much slower. Generally, the goal with respect to domain name disputes is to quickly resolve the legal issues so that the domain name can continue to be used, be transferred, or be taken down. Those are some of the speedy options available through UDRP proceedings. It should be noted that, if money damages are a key goal, then civil litigation may be a better option since significant money damages are not available in UDRP proceedings.

What are typical UDRP legal issues?

Most UDRP proceedings involve allegations of trademark infringement or domain squatting. For trademark claims, the typical issue is whether a given domain name is the same as or confusingly similar to a registered and existing trademark. The infringement claims can relate to the words used for the domain names/websites, but often involve claims related to domain name extensions. So, an infringement claim might be made related to words like BOOKING vs. BOOKINGS and also to domain name extensions like “dot COM” vs. “dot NET” or “dot UK” (which is a country designation). Malicious actors can easily and quickly create websites with similar-looking domain names and extensions that can trick online shoppers into providing personal information and, potentially, transferring money and other valuables.

What about cybersquatting?

Cybersquatting cases are also commonly resolved through UDRP proceedings. Cybersquatting is the registration of a domain name for the purpose of “holding the name hostage.” The goal of the cybersquatter is not to operate a business or a legitimate website but, rather, to wait until some business is willing to pay money to obtain ownership of the domain name. This is illegal, and UDRP proceedings can be used to seize control of domain names that are being held hostage in this manner. As noted, the key proof relates to bad faith registration of the domain name.

Contact the Internet Law Attorneys at Revision Legal

For more information, contact the experienced Internet Law Lawyers at Revision Legal. You can contact us through the form on this page or call (855) 473-8474.

The Three Elements a Complainant Must Prove in a UDRP Proceeding

To succeed in a UDRP proceeding, a complainant must prove all three of the following elements under ICANN’s Uniform Domain Name Dispute Resolution Policy:

• The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights
• The respondent has no rights or legitimate interests in the domain name
• The domain name was registered and is being used in bad faith

All three elements must be proven — failure on any one element results in the complainant losing the proceeding. The third element — bad faith registration AND use — is often the most difficult to establish, particularly against a respondent who claims to have registered the domain for legitimate purposes.

Bad Faith: What It Means and How to Prove It

WIPO’s UDRP Rules provide a non-exhaustive list of circumstances that constitute bad faith registration and use:

• Registration primarily for the purpose of selling the domain to the trademark owner at a price exceeding out-of-pocket costs (“domain squatting”)
• Registration to prevent the trademark owner from reflecting the mark in a corresponding domain name, where there is a pattern of such conduct
• Registration primarily for the purpose of disrupting the business of a competitor
• Using the domain to intentionally attract internet users for commercial gain by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, or affiliation of the website

Respondents can rebut bad faith allegations by demonstrating legitimate use of the domain — for example, use of the domain for a business that predates the complainant’s trademark rights, a legitimate fan site, or fair use commentary. However, maintaining a “passive holding” of a domain that is not actively used is not necessarily a defense to bad faith use.

UDRP vs. the Anticybersquatting Consumer Protection Act

In the US, trademark holders have an alternative to UDRP proceedings: the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d). The ACPA provides a federal cause of action against anyone who registers, traffics in, or uses a domain name with a bad faith intent to profit from another’s distinctive or famous trademark.

Key differences between UDRP and ACPA litigation:

• Remedies — UDRP proceedings can result in transfer or cancellation of the domain; ACPA litigation can also yield money damages of $1,000 to $100,000 per domain name
• Speed and cost — UDRP proceedings are typically resolved in 60-80 days and cost $1,500-$4,000 in filing fees; ACPA litigation is far slower and more expensive
• Discovery — ACPA litigation allows for formal discovery, which can be important when the registrant’s identity or intent is unknown
• Jurisdiction — ACPA litigation requires establishing personal jurisdiction over the respondent; UDRP proceedings have no such requirement

What to Do If Your Trademark Is Being Infringed Through a Domain Name

If you discover that someone has registered a domain name that infringes your trademark, act quickly. The longer the infringing domain remains active, the greater the potential for consumer confusion, diversion of traffic, and damage to your brand. Consider:

• Documenting the infringing website with screenshots before contacting the registrant (websites can disappear quickly)
• Sending a cease-and-desist letter to the registrant demanding transfer of the domain
• Filing a UDRP proceeding if a direct approach fails
• Pursuing ACPA litigation if money damages are important or if the registrant has a pattern of squatting behavior

Contact the Attorneys at Revision Legal

If you have questions or need legal advice, contact the experienced attorneys at Revision Legal. Our team handles internet law and domain disputes matters for businesses and individuals nationwide. Call us at (855) 473-8474 or use the contact form on our website.