If your business or organization discovers that a third party is using your trademark as a domain name for its website, or using a mark confusingly similar to yours, you may be able to have the domain name cancelled and transferred to you under the Uniform Domain Name Dispute Resolution Policy (“UDRP”). The UDRP is generally considered preferable to court action because it provides for a quicker, easier and less expensive alternative to a lawsuit.
The Uniform Domain Name Dispute Resolution Policy
The UDRP is a procedure established by the Internet Corporation for Assigned Names and Numbers (“ICANN”), the international organization which coordinates the Domain Name System, Internet Protocol (IP) addresses, generic and country code top-level domains and related matters.
ICANN maintains a list of approved administrative-dispute-resolution service providers with whom a trademark owner may file to commence an administrative proceeding for the purpose of having a domain name cancelled or transferred.
All domain name registrars are required to follow UDRP, which provides that domain name disputes are resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name. [ICANN, Uniform Domain-Name Dispute-Resolution Policy]
Mandatory Administrative Proceedings Under UDRP
If you are a trademark owner and discover that someone has registered an Internet domain name that is identical or confusingly similar to your mark, you can use the UDRP Rules of Procedureto compel that person to submit to a mandatory administrative proceeding by properly asserting that:
(i) the domain name is identical or confusingly similar to your mark; and
(ii) the person using the domain name has no rights or legitimate interest in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
Evidence Of Bad Faith
Proving bad faith on the part of the domain name registrant is not as difficult as one may assume, though there are some hurdles to overcome.
Evidence that can prove bad faith under the UDRP includes, among other things, a showing that (a) the domain name was registered primarily for the purpose of selling it to you or one of your competitors for profit, (b) the domain name was registered by a competitor to disrupt your business, or (c) the domain name was registered to attract users to the website for commercial gain by creating a likelihood of confusion.
As previously noted, evidence of bad faith is one of the elements required to obtain an expedited mandatory administrative proceeding that can lead to cancellation or transfer of a domain.
Demonstrating Legitimate Rights To Use
The person who registered a domain name that you are challenging can counter your assertions of improper use and registration by demonstrating a legitimate right to use the domain. As you evaluate your case and decide whether to seek a mandatory administrative proceeding under the UDRP, you need to consider this possibility.
A registrant may establish a legitimate right to use a domain through evidence indicating (a) intent to use such in connection with bona fide goods or services before any notice of dispute, (b) it has been commonly known by the domain name even if it acquired no trademark or service mark rights, or (c) it is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
You and your attorney should investigate these issues. You may own trademark rights in the domain name or a similar name, but if the registrant is selling goods and services under the name, has been using the name, or uses the domain name for a noncommercial purpose (or one that qualifies as fair use), your chances of having the domain cancelled or transferred to you in a UDRP mandatory administrative proceeding are in question.
If so, you may be best served by pursuing your rights in another forum.
Availability Of Court Proceedings In Connection With The UDRP
A mandatory administrative proceeding does not prevent either party from submitting their claim to a court of competent jurisdiction at any time.
In fact, the UDRP requires a waiting period of ten (10) business days after a decision is rendered, and before a domain name can be cancelled or transferred, to allow the registrant to provide documentation (such as a copy of a court compliant file-stamped by the court clerk) showing that litigation has commenced. If official documentation is received timely, the Administrative Panel’s decision will not be implemented until further documentation is received (e.g. lawsuit dismissed/withdrawn, an order of the court, other resolution).
Conclusion
Proceedings under the UDRP can be of great value to trademark owners and should be considered when a third party has registered a domain that is identical or confusing similar to your trademark. But court action is sometimes necessary or preferable, especially if the dispute involves complex trademark issues.
You should consult with an attorney regarding the various options available to you.
Author: Robert F. Zielinski
The Law Offices of Robert F. Zielinski
Philadelphia, USA
www.rfzlaw.com
