Basics of Protecting and Recovering Domain Names
Domain names - Internet addresses used to identify websites - are an important marketing tool for companies. A domain name that uses the company's name or well-known product is an easy way for customers to locate that specific company on the ever-expanding Internet. And as the Internet grows, so too do the domain name disputes, fights over who owns specific Internet addresses. Fortunately, there are dispute resolution procedures that do not involve filing a lawsuit. The Internet Corporation for Assigned Names and Numbers (ICANN) has adopted a dispute resolution policy that can be used to challenge domain name registrations without the need for more costly and time-consuming civil litigation. The Uniform Dispute Resolution Policy (UDRP) is an administrative way to resolve domain name disputes and applies to .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .post, .pro, .tel and .travel top-level domains, and some country code top-level domains.
The UDRP has been implemented by the majority of domain name registrars. The policy sets forth basic requirements and understandings between the registrar and the domain-name registrant. As part of the UDRP, the registrant must represent and warrant that "the registration of the domain name will not infringe upon or otherwise violate the rights of any third party" and is not being registered for "an unlawful purpose."
If a company believes that someone is improperly using its domain name, the company may file an administrative dispute, which will be resolved by an administrative-dispute-resolution service provider. There are two parties to the dispute - the complainant (the entity filing the dispute) and the registrant (the person who registered the domain name).
To succeed in a UDRP proceeding, the complainant must show that:
1. The complainant owns the trademark - registered or unregistered - that is the same as, or confusingly similar to, the domain name at issue;
2. The party who registered the domain name has no right or legitimate interest in that domain name; and
3. The domain name was registered or used in bad faith.
Bad faith is a critical - and sometimes - difficult element to demonstrate. Bad faith could include, among other factors: 1) registering the domain name with the intention of selling it to the trademark owner; 2) demonstrating a pattern of similar registrations; and 3) attempting to create confusion for commercial gain.
The registrant may counter claim for bad faith by demonstrating a bona fide use, a recognition that the registrant is commonly known by the domain name, or a legitimate noncommercial or fair use of the domain name. Additional information on domain name litigation is available on our website. Should the complainant succeed, the domain name will be cancelled or transferred to the complainant. Upon ruling, either party may initiate litigation. Thus, an administrative dispute may be a good alternative to litigation as a first step to stop improper registration of domain names.
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