A few months ago one of my colleagues here at BrandProtect, Jamila Hunte, wrote a piece entitled That’s my Trademark, But Why is it in your Domain Name? Is the UDRP for me?. I am not going to go into the specifics of how to file one, but the answer that she arrives at is that if a dispute over a trademarked domain meets the specific criteria for a UDRP filing (e.g. the criteria that are outlined by ICANN) then a UDRP is an excellent choice for remediation because of its effectiveness and cost efficiency as compared to formal legal proceedings. However, it can’t be stressed enough that abusing the UDRP will very likely do irreparable damage to one’s reputation vis-à -vis any potential filings in the future. For success to be achieved you need to follow the rules.
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!