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Domain Name Disputes: A UDRP Primer

August 09, 2017
Post by Brandon W. Clark

Has someone registered a domain that is identical or strikingly similar to your brand name or trademark? What rights do you have and what legal remedies are available if you or your company find yourself in a dispute over a domain name? This article is intended to serve as a brief overview of domain name dispute resolution proceedings.

ICANN, the Internet Corporation for Assigned Names and Numbers, was formed in 1998, and describes itself as a not-for-profit public-benefit corporation with participants from all over the world dedicated to keeping the Internet secure, stable and interoperable. In 1999, ICANN adopted the Uniform Domain Name Dispute Resolution Policy (“UDRP”) which has now been agreed to and adopted by all accredited domain registrars. UDRP proceedings are often the most effective way of gaining, or regaining, access to a domain name that you believe you have legitimate rights to.

A UDRP proceeding is an administrative proceeding very much like arbitration. UDRP proceedings are handled through ICANN accredited providers (“Providers”), such as the National Arbitration Forum and WIPO. Instead of a judge and/or jury, the matter is heard by one person or a panel of three decision makers that ICANN calls “Panelists”. 

UDRP proceedings begin with a Complaint being filed with an ICANN Provider. The person or entity initiating the domain dispute proceeding is called the Complainant and the person or entity whom the action is filed against, is the Respondent. At the time of filing, the Complainant must pay the required filing fees, which range from approximately $1,300 – $4,000 depending on the Provider selected, the number of domain names at issue, and the number of Panelists selected. 

The parties may choose a single-person panel or a three-person panel. In a single-person panel, the Provider chooses the Panelist. Alternatively, if the parties choose a three-person panel, one panelist is chosen by the complainant, one by the respondent, and the third panelist is selected by the Provider. 

Generally, in a domain name dispute proceeding, the complainant must prove three elements:

  • The complainant has a trademark, personal name, or service mark and the offending domain name is identical or confusingly similar to that mark;
  • The respondent does not have any rights or legitimate interests in the domain name; and
  • The domain name has been registered and is being used in “bad faith”.

While questions sometimes do arise as to whether the complainant has valid trademark rights to enforce, the more common legal issues turn on the second and third factors, being the “legitimate interests” and “bad faith” elements. Among the facts that a Panel will consider are:

  • Does the complainant have a registered trademark?
  • The strength or weakness of complainant’s trademark rights.
  • Did the respondent register the domain name primarily for the purpose of selling, renting, or exploiting the domain name?
  • Does the respondent use the domain name and, if so, to what extent?
  • When was the domain name registered?
  • Is the respondent a business competitor or other who might have reason to disrupt the complainant’s business or goodwill?
  • Is the respondent using the complainant’s mark or goodwill for commercial gain, to create consumer confusion, or for driving internet traffic to the respondent’s website?
  • Has the respondent engaged in a pattern of registering domain names with malicious intent?

In many situations UDRP proceedings can provide many benefits and generally, they are much cheaper and faster than civil litigation. Each party bears its own costs and legal fees which are usually minimal relative to federal trademark actions. Additionally, reasoned decisions are generally delivered within 45 days of filing a complaint. However, the only remedies available to a successful complainant are either cancellation or transfer of the domain name to its own name; monetary damages are not available.

Depending on your specific situation and goals, UDRP proceedings can be an extremely valuable tool used to protect your trademark rights. Additional information can be found at www.icann.org but if you find yourself in a domain name dispute it is best to seek specific and tailored legal advice for your situation.

Brandon W. Clark is the Chair of the Copyright, Entertainment, and Media Law Practice Group at McKee, Voorhees & Sease, PLC. For additional information please visit www.ipmvs.com or contact Brandon directly via email at brandon.clark@ipmvs.com .


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The attorneys of McKee, Voorhees & Sease, P.L.C. designed this blog as an informational and educational resource about intellectual property law for our clients, other attorneys, and the public as a whole. Our goal is to provide cutting-edge information about recent developments in intellectual property law, including relevant case law updates, proposed legislation, and intellectual property law in the news.

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