The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve disputes regarding the registration of internet domain names outside of Court proceedings.
Domain name disputes may arise when certain individuals engage in cyber squatting, for example to register names of trademarks or businesses in which they have no connection. Subsequently cyber squatters can put the domain names up for sale directly to the company or person involved. Alternatively, they can keep the registration and use the good name of the person or business associated with that domain name to attract business for their own sites.
When a registrant chooses a domain name, the registrant must “represent and warrant,” among other things, that registering the name “will not infringe upon or otherwise violate the rights of any third party,” and agree to participate in an arbitration-like proceeding should any third party assert such a claim.
Under the UDRP a trademark owner can institute an administrative procedure to challenge the existing domain name. If the trademark owner successfully prevails in the administrative proceeding, then the domain name may either be cancelled or transferred to the trademark owner.
Background
The general problem trying to solve is when someone registers a domain name that is someone else’s trademark. There is also an issued when someone registers a domain name that is very similar to someone else’s trademark. For example, someone registers microsuft.com (which as a trademark is likely to be confused with Microsoft), but it can be registered as domain name because the abstract use of it as a domain name not a trademark and if there is no use of the site there is no suit. There are many people who buy many domain names that are other companies’ trademarks, or close to them, and then sell them to those companies to make a profit.
There are two main ways to challenge these types of activities. 1) Anti-Cybersquating Consumer Protection Act (ACPA) and 2) Uniform Dispute Resolution Procedure (UDRP).
ACPA
The ACPA is in Lanham Act (the Act that covers trademark law) under Section 43(d), and can be found under15 U.S.C. 1125(d). It is federal statute that is enforced in federal court through a federal law suit. Generally, it is used when someone registers a domain name similar to someone’s trademark. The court weighs the nine bad faith factors in order to determine whether cybersquatting has occurred. The nine factors include:
(I) the trademark or other intellectual property rights of the person, if any, in the domain name;
(II) the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person;
(III) the person’s prior use, if any, of the domain name in connection with the bona fide offering of any goods or services;
(IV) the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name;
(V) the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site;
(VI) the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services, or the person’s prior conduct indicating a pattern of such conduct;
(VII) the person’s provision of material and misleading false contact information when applying for the registration of the domain name, the person’s intentional failure to maintain accurate contact information, or the person’s prior conduct indicating a pattern of such conduct;
(VIII) the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and
(IX) the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection (c).
Factors that, based on case law, seem to be the most important are the ones that discuss offers to sell the domain name, the number of domain names that the defendant owns, and the defendant’s intent to divert consumer from the trademark owner’s domain name to his own site. In actuality, the ACPA is rarely used in practice because it is expensive.
UDRP
The UDRP is a compulsory, non-judicial domain dispute resolution that is comparable to arbitration and is usually done based on a contract that website owner agreed to UDRP by registering for website. Generally the UDRP forums are the World Intellectual Property Association (WIPO) and the National Arbitration Forum (NAF).
To start the process a plaintiff fills out a one form complaint. There are three elements to the complaint: 1) plaintiff alleges that the defendant’s domain names is identical or confusingly similar to a trademark owned by the complainant, 2) allege that the registrant of the domain name has no rights or legit interest in domain name, and 3) allege that the defendant’s registration and use of the domain is in bad faith. Then the Defendant gets to respond, and then the arbitrator gets case and makes a decision. It is usually relatively fast. However, it is only for .com websites (for ccTLDs one needs to follow that country’s procedures).
Key Differences Between UDRP and ACPA
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Pointers and Strategy Suggestions
A common strategy is for a trademark owner is to register the domain names that are close to their trademark that they care about the most. Then the plaintiff can police the truly harmful or confusing domain names and ignore the others. This is because policing everything is impossible since for every domain name, there are an extremely large number of typosquating variations.
When deciding whether to try to negotiate with a domain name owner verses filing a claim, one should remember that negotiating can lead to a letter that might lead to useful information, but it can also tip off owner who might transfer the domain name or just take it down. Many people file a claim first because when they do, the Registrar of the domain locks the website so that it cannot be transferred and it is held in escrow until a decision is made. If the plaintiff wins, then the Registrar transfers the domain name to the plaintiff. Additionally, it is important to remember that one can file against all possible infringers at once.
ICANN (Internet Corporation for Assigned Names and Numbers)
ICANN is also private organization that manages Registrars, and has taken over general top level domain (TLD, ex: .com, .edu, .net) responsibilities. It provides standardized regulation agreements and requires mandatory submission to the UDRP. (www.icann.org)