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That's my Trademark, but why is it in your Domain Name? Is the UDRP for me?

  

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You have a business, you want to take advantage of the opportunity to reach out and communicate with your customers, attract potential new customers and perhaps provide the ability to increase your revenue through e-commerce by providing user-friendly transactions online. So, you purchase a domain name in your company name, create a website and it becomes an international success – VERY profitable.  Your business thrives for 10 years with the addition of your website.  Then one day you receive a report informing you that someone else has registered your domain name in the .net extension.  They have placed a monetized link page on that domain.  You are livid. You have worked so hard to establish your business and reputation and someone, with very little effort, has registered a domain name for $5.99 and reap all the benefits of someone mistakenly typing a “.net” into their browser and clicking on a random link that will provide the registrant with the money that you should be getting.  Or worse, in an attempt to get the domain back you attempt to reach out to the registrant in hopes that they will transfer it to you once they see the error in their ways and they respond by saying they know how valuable the name is and that they will transfer it to you for $200,000 since you are a billion dollar company and can afford it.  So what do you do? Do you sue, let it go and hope that not much traffic goes to that domain or dispute the domain through the Uniform Domain Name Resolution Policy (UDRP). Regardless of your approach there is one thing that is certain, this is totally unfair!

This hypothetical story is actually a very real dilemma that brand owners face on a daily basis.  It is not uncommon for a client to approach us on almost a weekly basis with a domain issue and guidance on how to remedy it.  Unfortunately, the law is not always fair and tends to base their decision on precedents and rights.

There are different avenues one can take to dispute a domain name if it is felt that your trademark rights have been violated.  You can opt to use specific country laws like the Anti-Cybersquatting Consumer Protection Act.  Unfortunately registrars (who many believe should be just as liable as the registrant) are not usually a part of these cases.  There are also trademark and unfair competition laws that one can turn to, but both parties have to be under the same jurisdiction.  The aforementioned options involve going to court which means spending a lot of money on legal fees and other resources on a process that can be dragged out for months or years especially if there are appeals.  If none of these choices appeal to you, there is the option of utilizing the UDRP process under ICANN.  So to UDRP or not to UDRP, that is the question…

The UDRP is an arbitration-like process that all owners or registrants of gTLDs (.com, .biz, .net, .info etc.) are subject to.  For many brand owners it has been their next course of action after a letter to the registrant was undeliverable or ignored and has been proven to be a more cost effective way to deal with these issues.  Many brand owners are resorting to the UDRP process through an ICANN approved provider, The World Intellectual Property Organization (WIPO) to settle their domain disputes.  According to an article on Domain Name Wire, in 2009 almost 90% of the cases were found to be in favour of the complainant.  This was also echoed by a colleague, who specializes in UDRP cases, when I attended a meeting at the International Trademark Association (INTA) conference in Boston this year.  The newly established electronic filing system and the speed at which the administrative panel renders their decision are the reason that she and many other IP attorneys choose WIPO as their dispute provider. 

The National Arbitration Forum (NAF), with headquarters in Minneapolis, MN, is another ICANN approved provider.  There is a wealth of information on both the WIPO and NAF websites so please check them out for more details to determine which provider is right for you.  For those of you concerned with ccTLDs and resolving those domain disputes, WIPO does have a domain name dispute resolution service for some ccTLDs.   There is also a comparative study on ccTLDs and gTLDs which is a great resource on the different domain dispute resolution processes around the world.

Besides the cheaper cost and speed of the proceedings, the process is more “informal than litigation and the decision-makers are experts in such areas as international trademark law, domain name issues, electronic commerce, the Internet and dispute resolution. It is also international in scope: it provides a single mechanism for resolving a domain name dispute regardless of where the registrar or the domain name holder or the complainant are located,” according to WIPO. 

So let’s say you decided to file a complaint under the UDRP.  The cost and timely nature of the proceedings appeal to you, but what does it take to win a case?  Firstly you will have to prove that the domain is identical or confusingly similar to a trademark where the complainant has rights.  Secondly, the registrant cannot have any rights or legitimate interests.  Lastly and almost most importantly, the domain name was registered and used in “bad faith”.  Despite the majority of cases being found in favour of the complainant, the administrative panel does not look too kindly on complainants who file a UDRP just because they are not happy that someone has used a name similar to theirs.  The complainant must ensure, before they file, that their evidence satisfies the requirements outlined in the policy.  The complainants that have been found to abuse the system will not only have their request denied, but also run the risk of being called out by the panel and have the decision made available for all to see on the internet.  The displeasure of one panellist was demonstrated in a recent case involving Credit Europe Bank who failed to prove that they had rights over the registrant.  A recent article in Domain Name Wire reported that the lawyer for Credit Europe Bank openly stated that “his client’s interests are more important than the domain owner’s, so they should get the domain name.”  Not only did these words not prove his case but also, according to WIPO panellist Richard Lyon, this lawyer who was probably paid a lot of money failed to understand the UDRP process.  Not surprisingly, this did not fair well for Credit Europe Bank or their lawyer.  Many speakers at the INTA conference forewarned us that, one negative ruling in UDRP proceedings can hurt your reputation and follow you if there are plans for future filings.  In fact, the information on Credit Europe Bank was the topic of many Tweets which is how I came to know this case.  I even received the decision in my WIPO domain name decision email alerts.

Lyon also accused Credit Europe Bank of Reverse Domain Name Hijacking, a term reserved for a complaint that was filed in bad faith.  According to ICANN’s UDRP rules, Reverse Domain Name Hijacking is found when a complainant is found to use the UDRP process in an “attempt to deprive a registered domain name holder of a domain name” which “constitutes an abuse of the administrative proceedings.”  Just as quick as you can file a UDRP, the tables can turn.

So, to UDRP or not to UDRP?  There are many factors to consider, but in my opinion, if the domain name has false or hidden registration information and after consultation with your legal team, marketing team and those with a vested interested in that trademark on the value of that domain to your business or if there is a risk of confusion to your customers or potential customers and you have strong evidence to show that the name was registered by the registrant in bad faith, I say proceed.  It is the faster and cheaper way to dispute a domain name and many brand owners/complainants have found this an appropriate way to remedy the situation.