- June 1, 2012
- Posted by: Seth Heyman
- Categories: Business Law, Internet Law
Since the advent of the Internet, companies have struggled with website domain name issues, in which someone else registers a domain name containing their trademark. Sometimes, the party who reserved the domain did so for legitimate reasons (i.e., their business or product has the same name). In other cases, the domain was hijacked in order to force The trademark owner to pay through the nose to get it back, a practice known as cyber squatting.
Whatever the other party’s motives may be, all is not lost. You may be able to obtain the domain, or have it shut down, relatively quickly and inexpensively, with the use of a special process specifically created to resolve domain name disputes: the Uniform Domain Name Dispute Resolution Policy (UDRP), an efficient and cost effective process to resolve domain disputes established by the Internet Corporation for Assigned Names and Numbers (ICANN).
I’ve seen many instances in which domain names were registered in bad faith. In one case, the domain was registered in order to hamper the business of a competitor. The company that registered the domain did so after hiring someone who was a former employee of a competitor. The employee informed his new employer about a new product being developed by his former employer, who immediately reserved multiple domain names containing variations of the new product name, in an effort to divert traffic generated through its competitor’s advertising campaigns to its own website.
Once it got wind of the scheme, the competitor filed a UDRP complaint, which was resolved in its favor in less than two months.
A UDRP complaint is decided within 60 days by a one or three member arbitration panel after each party presents its case. The total cost for resolving a complaint of this nature is only $1,300 for a single-member panel or $2,600 for a three-member panel.
For a complainant to prevail in the UDRP proceedings, it must prove that:
- the registrant’s domain name is identical or confusingly similar to its trademark,
- the registrant has no rights or legitimate interests in the domain name, and
- the registrant has registered the domain name in bad faith.
If the complainant establishes these elements, the panel that arbitrates the UDRP proceedings has the authority to cancel or transfer the registrant’s domain name.
Best of all, while the dispute is pending, the registrant is prohibited from selling or otherwise transferring the domain name. If a UDRP panel decides that a domain name should be cancelled or transferred, the defendant gets it back ten days after the decision is rendered.
Although this informal proceeding is quick and relatively simple, trademark owners are advised to seek the services of a qualified attorney, who can help them establish and present the case in the best manner possible.