Domain Name Disputes

A domain name dispute typically arises when there is a conflict over the ownership, use, or similarity of domain names, especially in relation to trademark rights. The Internet Corporation for Assigned Names and Numbers (ICANN) manages domain name registrations globally and has implemented the Uniform Domain-Name Dispute-Resolution Policy (UDRP) to provide a streamlined process for resolving such disputes outside of traditional court proceedings.

Our team of intellectual property attorneys is skilled in handling these domain name disputes by assessing each case and conducting comprehensive searches to determine if the disputed domain name infringes upon existing trademarks or involves cybersquatting(registering domain names in bad faith to profit from trademarks owned by others).

Our attorneys assist clients by preparing and filing complaints under the UDRP, presenting compelling arguments supported by evidence of trademark rights and potential harm caused by the disputed domain name. We also explore negotiation strategies, aiming to secure favorable settlements or licensing agreements that protect our clients’ intellectual property while avoiding costly litigation.

If negotiations fail, our team is prepared to represent clients in UDRP proceedings or federal court, advocating for the transfer or cancellation of the disputed domain name, seeking damages for trademark infringement or cybersquatting, and defending against unwarranted claims. Our ultimate goal is to safeguard our clients’ trademarks and business interests, ensuring they maintain exclusive use of their brands online and mitigate risks associated with unauthorized domain name use.

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:

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

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)