Our law firm helps clients to protect their brands on the internet so provide a mechanism and legal services regarding domain name disputes and in this article we have mentioned important aspects of the domain name system, how trademark law applies to domain names, what a cyber squatter is and how disputes can be resolved through a relatively quick and inexpensive legal process. If you or your company carry any business online then you’ll find this information important to protect and defend your brand in cyberspace.
Being a technology law firm, we are well positioned to deal with the legal matters that arise for owners of large domain name portfolios. We can provide legal services for your domain name disputes.
Cybersquatting refers to the practice of registering domain names that contain or are confusingly similar to someone else’s trademark and then using those domain names in bad faith.
Bad faith can refer to many different types of activities, for example some cyber squatters register a domain name and then create a website where they sell counterfeit versions of your product other cyber squadrons may simply redirect the domain name to a website where competing goods or services are sold.
Some cyber squadrons may use a domain name to engage in phishing activities which is where they send out emails that appear to be coming from you or your company usually to trick recipients into providing personally identifiable or financial information and in the past many cyber squadrons used domain names in connection with websites that provided pornographic content which was a very profitable business.
Now today probably one of the most common types of cyber squatting activity simply involves using a domain name in connection with the parked web page that contains a list of links for goods or services which are related to a trademark owner but the links are actually advertisements that generate revenue for the cyber squatter and usually send internet users away from your website and to your competitors.
Some cyber squadrons even use their domain names to spread viruses or malware to unsuspecting internet users so it’s easy to see why any of these types of cyber squatting activities might be problematic.
These types of activities can cause you or your company to lose business and they will often frustrate your customers or clients who might blame you for their troubles even if you are not responsible.
Fortunately, there are a number of options to resolve these types of domain name disputes. The most popular is known as the UDRP (Uniform Domain Name Dispute Resolution Policy) which is an arbitration type of process that was created by ICANN in 1999. the UDRP and other domain name dispute policies provide a quicker and less expensive alternative to litigation and they are the most common way of resolving domain name disputes because they are incredibly effective for trademark owners but it’s very important to understand that not every type of domain name dispute gives rise to a legal cause of action, so a very important first step when approaching any domain name dispute is simply evaluating whether the law even provides a remedy if the UDRP or other available legal tools are not appropriate for resolving a particular domain name dispute.
It’s essential to know that up front for many reasons including to save time to save money and of course to avoid the inappropriateness of pursuing a domain name registrant who may have the right to use his or her domain name. In our legal practice, we spend a lot of time simply evaluating domain name disputes for our clients and we advise them about the best approach to resolve their disputes and this type of evaluation is relatively quick and inexpensive.
If you find that someone else has registered a domain name containing your trademark
you might think the best or even the only solution is a lawsuit but litigation can be time consuming and expensive. Fortunately in dealing with cybersquatters, there’s a popular way to avoid going to court to resolve domain name disputes: alternative dispute resolution policies such as the UDRP which is a very effective legal tool for trademark owners to obtain control over domain names that are being abused by others.
The UDRP provides an outline of its important three-part test and you need to file a strong complaint. The UDRP was created specifically to address these issues as a result trademark owners file literally thousands of complaints under the UDRP every year and Corporate Counsel Magazine has even called the UDRP the preferred option for most trademark owners.
The udrp case is typically resolved in only about two months. All of the filings take place online and unlike litigation UDRP proceedings avoid the hassles and expense of motions briefs hearings, discovery and trials also the UDRP is incredibly effective with trademark owners.
1. First, a complainant has to prove that the disputed domain name is identical or confusingly similar to a trademark and service mark in which it has rights.
2. Second, a complainant has to prove that the registrant of the domain name has no rights or legitimate interest in it.
3. Third, a complainant has to prove that the domain name has been registered and is being used in bad faith.
All three of these tests have their own legal definitions and tens of thousands of UDRP decisions through the years have interpreted and applied the language of the UDRP in just about every situation imaginable creating an incredibly useful body of legal precedent. A trademark owner or complainant must prove in its complaint it has met all three of these tests to prevail then a domain name registrant or a respondent will have an opportunity to respond to the complaint and finally a panelist similar to an arbitrator. In other legal contexts, they’ll review the complaint and the response (if there is one) and issue a decision about what should happen with the domain name.
On the one hand, the UDRP proceeding is straightforward and there are a lot of complexities in almost every case. Filing a strong complaint involves a lot more than simply filling out a form because every complaint should contain the strongest possible factual and legal arguments citing relevant authority such as previous UDRP decisions as precedent and anticipating all possible defenses plus trademark owners should be prepared to respond to important issues that may arise during the course of a UDRP proceeding because even a very strong complaint is not always enough to win a case.
A trademark owner can expect to receive a decision in a UDRP proceeding about two months after filing a complaint. It is not immediate relief but compared with the many years involved in a typical lawsuit the UDRP is a very quick process that also happens to be very favorable to trademark owners.
In appropriate cases a typical UDRP proceeding involves seven steps:
1. Complaint Filing:
In every UDRP case a first step is simply the filing of the complaint. There’s no deadline for filing a complaint so you would take as much time as needed to prepare the strongest possible complaint before submitting it to one of the UDRP Service Providers Accredited by ICANN (Internet Corporation for Assigned Names and Numbers).
After the complaint is filed the UDRP service provider submits a verification request to the registrar for the domain name along with a request to lock the domain name. This has to be completed within two business days.
3. Administrative Compliance:
If the domain name has been registered with the privacy or proxy service then it may be necessary to file an amendment to the complaint. At the same time the UDRP service provider reviews the complaint which is called Administrative Compliance to ensure that it meets all of the requirements such as the relevant word or page count, appropriate language and numerous other technical issues. This compliance check can take anywhere from a day to a week. If the compliance check identifies any deficiencies then the trademark owner will have five days to make a correction which may involve filing an amended complaint. A thorough complaint will usually pass the compliance process without any issues which is why you never rush to file a complaint until it’s ready.
4. Commencement of Proceedings:
Next the UDRP service provider officially commences the case giving the domain name registrant about 20 days to submit a response. Though some extensions to this due date are possible as in our experience many domain name registrants never bother to submit a response but it’s still necessary to wait for the deadline before proceeding to the next step.
Once a response has been filed or after the deadline for the response passes the UDRP service provider will appoint a panel to decide the case. The panel selected by the provider has to formally accept the case and for various reasons this process can take anywhere from a few days to a week or more.
After the panel has been appointed, its decision is due to the provider within 14 days. The panel is required to act expeditly but the UDRP allows a panel to extend this deadline if there are exceptional circumstances so there may be a delay between the due date and the date on which the parties are actually notified of the decision.
7. Transfer of Domain Name:
Finally once the parties are notified the registrar is required to transfer the domain name to the trademark owner after a waiting period of 10 business days assuming the decision is in order to transfer. This waiting period allows a losing domain name registrant an opportunity to go to court to stop the decision from being implemented. Although this is an exceedingly rare occurrence, it’s an important issue to keep in mind. But on the other hand if the panel denies a transfer or orders the domain name
canceled, the lock is lifted and the domain name either remains with the current registrant or is cancelled by the registrar.
This process takes about two months but there are a number of exceptions to this rule as many of which are not uncommon and can result in delays.
So here are a few of these additional steps that sometimes arise, for example, a UDRP service provider may require extra time to address important administrative issues such as the language of the proceeding or whether it’s appropriate to include multiple domain names or multiple registrants in a single case.
This process may require additional written arguments from the parties and also a trademark owner or domain name registrant which is called a supplemental filing (such as a response to the response or a further response) delaying the process. This is
something that should be considered sparingly.
Occasionally, a panel may issue a procedural order directly asking the parties to address specific factual or legal issues that are unclear or were not addressed in the complaint or the response.
Further, the parties may seek to settle their UDRP dispute before a decision by suspending the case for a period of time to explore whether a settlement is possible. There are various reasons to consider a settlement, one of which is that it may be an easy way to end the whole process even more quickly. Hence, in comparison to the court litigation, UDRP is an incredibly fast legal process that allows a trademark owner to take control of a domain name in a relatively short period of time putting a prompt end to the damage caused by cybersquatting.
The UDRP or Uniform Domain Name Dispute Resolution policy was created as a tool for trademark owners to fight back against cyber squatters on the internet so indeed the policy is only available to trademark owners and only under certain circumstances but what type of trademark is sufficient to invoke the UDRP and is a trademark registration required?
A fundamental issue in the first of the UDRP’s Three-Part Test which relates to trademark rights. The first element of the UDRP says that “a complainant, which is the person or company, filing the dispute must prove that the domain name at issue is identical or confusingly similar to a trademark or service mark in which the complainant has rights”. Interestingly this single test actually consists of two parts:
● First, the complainant must have rights in a trademark; and
● Second the domain name and dispute must be identical or confusingly similar to that trademark. The most common question being asked by our client is whether a trademark is required?
In the first part, trademark rights, UDRP says nothing about where those trademark rights have to exist. In other words a trademark owner can have rights in the United States or European Union and that’s regardless of where the parties to a UDRP dispute are located. For example the domain name registrant is located in China, the UDRP doesn’t care if the complainant only has trademark rights in the United States. This is also made clear in WIPO Overview which is a publication about the UDRP from the World Intellectual Property Organization, a leading provider of UDRP services.
The WIPO Overview says noting in particular the global nature of the internet and domain name system the jurisdiction where the trademark is valid is not considered relevant to panel assessment under the first element. So all that matters is the complainant actually has trademark rights.
There’s at least one important exception to this rule which is Trademark Registrations on State Level in the United States. In other words a registration only within a specific state and not at the federal level with the U.S patent and trademark office state trademark registrations are usually insufficient for purposes of the UDRP.
It is because many U.S states automatically grant trademark registrations upon application without providing a substantive review and also one UDRP panel wrote that because state registrations are issued with no examination so therefore it is not acceptable.
The state registration does not give rise to the same presumptions of validity and ownership as does the federal. It is also to be noted that the date of a trademark registration may be highly relevant. Most sophisticated companies and smart business owners as well as many individuals understand the importance of trademark registrations but not everyone does.
Trademark registrations can take a long time to obtain typically a couple of years in the U.S depending on the jurisdiction.
The other question is if a company or person has never applied for a trademark registration or has applied but the application is still pending, does that company or person own trademark rights for purposes of filing a UDRP complaint?
The answer is “it depends”.
It depends on whether the company or individual has actually obtained trademark rights and whether it can establish to the satisfaction of the UDRP panel that it has done so because unlike with a trademark registration there is no registration number to cite or a single document to provide to establish trademark rights.
The WIPO Overview says a complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and or services and then the WIPO Overview lists five types of evidence that can demonstrate.
This required type of distinctiveness or what’s called secondary meaning in trademark law:
1. First the duration and nature of use of the mark.
2. Second, the amount of sales under the mark.
3. Third, the nature and extent of advertising using the mark.
4. Fourth the degree of actual public recognition such as among consumers within a specific industry or in the media; and
5. Fifth is consumer surveys.
Now there’s no specific way to apply these factors so whether a complainant can actually prove that it owns common law trademark rights, will depend on the specific facts and the strengths of the legal arguments in each case. In appropriate cases proofing trademark rights should not be a difficult task but failing to do so will be fatal to a UDRP case.