So you want to register a domain name for your company’s registered trademark only to find out, it’s already been claimed by someone other than you. Even worse, someone has incorporated your trademark into his domain name and is intentionally cybersquatting in hopes of either diverting your potential customers to his website or selling it back to you, for a small price, of course. What are your options?
The World Intellectual Property Organization (“WIPO”) has a quick and relatively inexpensive process in place to handle domain disputes across the world – the Uniform Domain Name Resolution Program “(UDRP”). If you have a claim about the improper registration of your trademarked material or the particular phrasing of a domain name, you might be interested in filing a UDRP complaint to contest the ownership of the domain name and seek transfer or cancellation of the improper use of the domain name.
The Internet Corporation for Assigned Names and Numbers (“ICANN”) adopted the UDRP and incorporated it by reference into any registration with a domain name registrar, such that any person or entity who registers a domain name is bound by the UDRP. Thus, the owner of a trademark may seek recourse against a domain name registrant by filing a complaint with an ICANN-approved dispute resolution provider, such as the National Arbitration Forum (“NAF”), WIPO, or others.
The UDRP complaint itself is pretty simple. It must include allegations that (i) the domain name is identical or confusingly similar to your trademark or service mark; (ii) the cybersquatter or registrant has no rights or legitimate interests in the domain name; and (iii) the domain name has been registered and is being used in bad faith.
Showing bad faith typically means providing evidence that (1) the registrant acquired the domain name primarily for the purpose of selling it to the owner of the trademark in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; (2) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or (3) the registrant intentionally attempted to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with your mark. Bad faith is especially common in cases where cybersquatters intentionally transpose letters or misspell words. For instance, a registrant may seek the domain name with an “atuo” spelling rather than “auto” in hopes of catching internet users who carelessly type and land on their domain name instead of yours. Cybersquatters have also recently targeted newer top level domains such as “.app” or “.pro” in anticipation that businesses will want to pay when they realize the need to expand their domain name registrations.
After a UDRP complaint is filed and the arbitration is initiated, the domain name holder or registrant has an opportunity to respond. The cybersquatter must show a legitimate use of the mark or brand and has to submit proof of a business plan, business formation, due diligence, and other preparations to properly use the domain name. In the large majority of cases, the cybersquatter will not have the requisite proof or will simply fail to respond.
A panel of one or three arbitrators reviews the complaint, response, and any supporting documents, including evidence of the cybersquatter’s bad faith such as registering names and not using them, using fake contact information in the registration or privacy protection services, or illegal activity. The panel will then evaluate whether to transfer the domain name, cancel the registration, permit the registrant to keep the domain name, or dismiss the complaint.