Tackling Domain Disputes

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN). Established in 1999, it was set up to help people resolve domain name disputes. Since its inception, more than 60,000 domain complaints have been filed with the UDRP. Domain name disputes, specifically as it relates to unauthorized trademark usage has become a growing problem over the years. Often, companies will start out buying the most valuable top level domain name (TLD), such as a .com. But, they will frequently forego variations of that TLD due to budgeting constraints. As their brand grows, other users will sometimes snap up these other domain names and use the goodwill associated with the original company’s brand to generate revenue for themselves. Unapproved domain names such as these can be used to promote pay-per-click, competing for websites, inappropriate content, viruses, and even employment scams. All of these potential situations can end up damaging the reputation and/or goodwill of the legitimate business and brand owner. Without UDRP actions, a website owner is essentially stuck chasing a domain owner that can effectively dodge services and continue to wreak havoc. This is where the UDRP comes in handy.

 

The UDRP allows owners to file a complaint, and if successful, have a domain name transferred, canceled or suspended fairly inexpensively. The policies in place are typically favorable to the original trademark owners and are the oldest and most popular policies. When disputes arise, trademark owners have won more than 85% of their cases.

Prior to UDRP, the majority of trademark-based domain-name disputes had to be resolved by agreement, court action, or arbitration before a registrar would agree to cancel, suspend, or transfer a domain name. Disputes that arise from abusive registrations of domain names (For example, cybersquatting, where an individual holds the rights to a well-known name for no other reason than a potential resale profit) may be addressed by expedited proceedings. The trademark holder initiates this by filing a complaint with an approved dispute-resolution service provider.

To utilize the policy, a trademark owner should either

 

  1. file a complaint in a court of proper jurisdiction against the domain-name holder
  2. in instances of abusive registration submit a complaint to an approved dispute-resolution service provider

 

A trademark attorney experienced in UDRP complaints can help resolve these matters for you. For example, if someone is cybersquatting your domain, an attorney can locate the registrant and resolve their competing practices with determination. They can also sue under the Anti-Cybersquatting Consumer Protection Act (“ACPA”). They can also use ICANN and avoid litigation by, any person that alleges that a domain name is identical or confusingly similar to a trademark or service mark where they have rights. This also applies when the domain name owner has no legitimate interest in the domain name, and the domain was registered and is being used in bad faith.

 

 

While the frustration of a domain dispute can feel overwhelming, consulting legal advice can ease the process. Intellectual property legal counsel will advise you on the best course of action to protect and defend the assets you worked hard to create.