What are domain name disputes? How can the UDRP handle domain name disputes?
Domain names are intended to be easily identifiable, easy to remember, and eventually act as business identifiers for an online business. Thus, some online businesses use existing trademarks as their domain names to attract potential customers to their websites. Third parties often try to profit from this practice by preemptively registering domain name incorporating the trademarks by third parties and then sell those domain names to the highest bidder. This practice is known as cybersquatting.
Every year, cybersquatters exploit the system and register numerous potentially valuable domain names and often put the domain names up for auction, or offer them for sale directly to the company or person involved. Other cybersquatters keep the registration and use the domain name to attract business to their own sites using the goodwill associated with the other person’s business. In such cases, businesses may file a complaint under the Uniform Dispute Resolution Policy (UDRP) to gain ownership of the cybersquatted domain name.
UDRP Proceedings and Domain Name Disputes
The UDRP was originally conceived by ICANN and includes a set of rules aimed at resolving ownership disputes over a particular domain name namely global top level domains such as :.aero, .biz, .com, .coop, .info, .museum, .name, .net, and .org. In most cases, the UDRP does not generally apply to country-code top-level domains. Registrants of global top-level domains agree to the terms of the UDRP as a prerequisite of the domain name registration agreement. UDRP enables trademark holders to retrieve domain names without having to go through a lengthy and expensive legal process through the court system. Instead, the UDRP governs an administrative or arbitration procedure before one of four of the following organizations: (1) the World Intellectual Property Organization (WIPO) in Switzerland; (2) the National Arbitration Forum (NAF) in the U.S.; (3) eResolution in Canada; and (4) the CPR Institute for Dispute Resolution (CPRADR) in theU.S.
Under UDRP procedures, the trademark owner must file a complaint with one of the four organization described above and prove: (1) that the domain name is identical or confusingly similar to a trademark in which it has rights; (2) the current domain name holder has no rights or legitimate interests in the domain name; and (3) the domain name has been registered and is being used in bad faith. In most cases, the arbitration body will issue a ruling within a few months. To initiate a UDRP proceeding, a trademark owner should select a dispute-resolution provider from the list above, and then follow the requirements and instructions on the provider's website to submit a complaint. Advice of intellectual property counsel is prudent when preparing UDRP complaints.
Resolving Domain Name Disputes through Anticybersquatting Consumer Protection Act
In addition, the trademark owner could bring an action in a U.S. federal court under the Anticybersquatting Consumer Protection Act. This Act generally prohibits using a domain name containing another's trademark with an intent to profit. Under this Act, anyone who in bad faith uses, sells, or tries to sell a domain name that infringes another's trademark, may be subject to penalties of up to $100,000 per domain name abuse incident. The use of a domain containing another's trademark also may also violate other trademark and unfair competition laws. Advice of intellectual property counsel is prudent when assessing the best avenue of protection afforded to a trademarkowner.
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