by Richard Keyt, Domain Name Law attorney
A trademark owner that believes it can prove a case of cybersquatting initiates a UDRP arbitration by filing a UDRP complaint with one of the following four organizations called a dispute-resolution service provider:
- Asian Domain Name Dispute Resolution Centre
- The National Arbitration Forum
- World Intellectual Property Organization
Each Provider has forms and supplemental rules that apply to UDRP proceedings under its jurisdiction.
A complainant must prove each of the following elements to win a UDRP arbitration:
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- The domain name owner does not have any rights or legitimate interests in respect of the domain name; and
- The domain name owner registered the domain name and is using it in “bad faith.”
The UDRP lists the following nonexclusive circumstances as evidence of bad faith in the registration and use of a domain name:
- Circumstances indicating that the domain name owner registered the domain name or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
- The domain name owner registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the domain name owner has engaged in a pattern of such conduct; or
- The domain name owner registered the domain name primarily for the purpose of disrupting the business of a competitor; or
- By using the domain name, the domain name owner has intentionally attempted to attract, for commercial gain, internet users to the domain name owner’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the domain name owner’s web site or location or of a product or service on the domain name owner’s web site or location.
The domain name owner/alleged cybersquatter should win the UDRP proceeding if the domain name owner can show that the domain name owner has rights or legitimate interests to the domain name. If any of the following circumstances can be shown by the domain name owner to exist, the domain name owner should win the UDRP arbitration:
- Before any notice to the domain name owner of the dispute, the domain name owner’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
- The domain name owner (as an individual, business, or other organization) has been commonly known by the domain name, even if the domain name owner has not acquired any trademark or service mark rights; or
- The domain name owner 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.
Whenever a domain name owner is first challenged or threatened by a trademark owner who alleges trademark infringement and/or cybersquatting, and if the domain name owner wants to keep the domain name, the domain name owner should immediately hire an experienced domain name lawyer. It is a fundamental principal of law that statements made by a domain name owner can and will be used against the domain name owner in court and/or in a UDRP arbitration. This is one important reason why the domain name owner needs an attorney to act as an intermediary rather than the domain name owner attempting to negotiate with the trademark owner’s attorney.
With the right facts, it is possible to defeat a claim of cybersquatting. There is a concept known as “reverse domain name hijacking,” which means using the Uniform Domain Name Dispute Resolution Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name. If you have good facts, you need an attorney to prepare your response and simultaneously prepare to file a lawsuit to challenge a possible adverse UDRP decision.
Domain Name Dispute Attorney
If you have a dispute involving a domain name, call me, Thomas W. Galvani, a patent, trademark and domain name dispute attorney, at 602-281-6481. Because domain names can be very valuable assets, you should not be penny wise and pound foolish when it comes to protecting a domain name.