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Trademarks: Resolving a Domain Name Dispute UDRP Proceedings

By John DiGiacomo

To drive sales and market share, trademark owners create websites that use their trademarked words or phrases as the internet domain name. However, many times some third person or business has already registered a domain name that is the same as or is very similar to the trademarked word/phrase. If this is done in bad faith and without a legitimate business purpose, this is called cybersquatting. Cybersquatting is banned by the federal Anticybersquatting Consumer Protection Act (“ACPA”) and violates policies established by the international body that governs domain name registrations.

A trademark owner facing this situation has two alternatives — begin litigation in federal court under the ACPA or file a proceeding under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). Filing in federal court has the advantage of allowing a trademark owner to recover money damages, but the process can be slow, cumbersome and expensive. By contrast, a UDRP proceeding can be completed quickly, in as few as 60 days. However, no money damages are allowed.

This article provides information on how to resolve a domain name dispute through a UDRP proceeding. Challenging an infringing domain name registration is almost mandatory under trademark law. Trademark law requires that a trademark owner monitor and police use of the trademark. Allowing another to possess and use an infringing domain name creates a risk that the trademark can be challenged in court and lost. If you are a trademark owner involved in a domain name dispute, you will need to retain an attorney with deep experience in trademark and internet law.

Domain name assignment is accomplished through a private international organization called the Internet Corporation for Assigned Names and Numbers (“ICANN”). For disputes over who has the right to possess and use a domain name, ICANN established dispute resolution procedures. As noted above, these are called the Uniform Domain Name Dispute Resolution Policies. UDRP is applicable to all top level domains (.com, .net, .org, etc.) and to many country code top-level domain names.

Dispute resolution under UDRP is a form of arbitration. This is the reason that a dispute can be resolved quickly. A trademark owner files a written complaint with a UDRP service provider such as the National Arbitration Forum or the World Intellectual Property Organization. ICANN has a list of approved providers here.

When initiating a UDRP complaint, a trademark owner can choose from one to three arbitration panelists and must pay filing fees and some costs upfront. Fees depend on how many panelists are selected. To win its UDRP proceeding, the complainant must prove three legal elements:

  • Ownership of a trademark that is the same as the third-party’s domain name or confusingly similar to the domain name
  • That the third party has no legitimate interests or rights to the domain name and
  • That the domain name was registered and/or used in bad faith

The procedures involve a limited exchange of information between the parties and presentation of evidence before the panel on one or more days. Some of the facts that might be used to prevail in a UDRP proceeding include the following:

  • When was the infringing domain name registered?
  • Whether the third party made efforts to “blackmail” the trademark owner — offering to sell the domain name to the trademark owner in exchange for money or value
  • Extent of the domain name’s use (if any use at all) — non-use is the essence of cybersquatting
  • Extent of the legitimate business use of the domain name
  • The registration by the infringer of multiple domain names that are similar to the trademark
  • Any pattern of similar conduct by the alleged infringer
  • And more

If successful, the arbitration panel has the power to cancel or transfer a domain name registration to the claimant. However, as noted, the panel does not have the power to award any sort of money damages or attorneys’ fees. For more information or if you have questions about cybersquatting and/or about protecting your trademarks, contact the trademark lawyers at Revision Legal at 231-714-0100.

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