Domain name disputes most often present themselves when a trademark owner learns that another individual or company is using a domain name/s that is in some meaningful way, confusingly similar (or even identical) to the trademark. Now, in certain circumstances, this is not necessarily the result of a concerted effort by the domain name holder to profit off of the good will of the trademark holder but rather an honest attempt by the domain name owner to legitimately market its services, which happen to correspond to those, sold by the trademark holder. However, when a “Cyber squatter” has purchased the domain name with the sole objective of promoting the competitor’s services or harnessing the reputation of the trademark owner to sell the Cyber squatter’s services, the trademark holder has a legal case to commence a Domain Name Dispute Proceeding.
DOMAIN NAME DISPUTE POLICIES
While domain name disputes may in theory end up in a court of law, more often than not, they are governed and adjudicated according to a Domain Name Dispute Policy, the most popular of which is the Uniform Domain Name Dispute Resolution Policy (UDRP),which incidentally, is also the most well-established. It applies to gTLDs (including .com, .org,.net etc.) and fundamentally allows a trademark owner to file a complaint against an alleged squatter and transfer, suspend, cancel and/or ultimately acquire by way of transfer the disputed domain name. Proceedings under the UDRP are both much faster and more importantly, much cheaper, to prosecute than cases brought before a court of law.
Less common, but still not entirely unheard of, are domain name disputes brought under the jurisdiction of the Uniform Raid Suspension System (URS) which is a fairly recent domain name dispute policy. It is even cheaper than the UDRP but employs standards, which render it more challenging for the plaintiff to prevail. Critically, Domain Name Dispute Policies effectively require domain registrars to comply with the decision of the tribunal which rules on the proceedings so the plaintiff (who is successful the vast majority of the time) can easily and rather quickly obtain through transfer the disputed domain name.
STEPS TO WINNING A UDRP DOMAIN NAME DISPUTE
UDRP complaints are prosecuted under the auspices of specifically designated service providers including the World Intellectual property Organization (WIPO) and the Forum. As we will see in a later portion of this article, the complainant in a UDRP proceeding has to demonstrate the following three elements to prevail:
- The trademark holder must show that the domain name is identical or confusingly similar to the trademark
- The trademark holder must show that the registrant of the disputed domain name either has no rights or legitimate interests in the use of the disputed domain name
- The trademark holder must show that the domain name was both registered in bad faith and is now being used in bad faith.
If the complainant, or trademark holder can satisfactorily demonstrate that all three of these prongs have been met, he will prevail.
UDRP FUNDAMENTALS: NAMES AND DOMAIN NAME DISPUTES
Section 4(a)(i) of the UDRP dictates that the complainant must demonstrate to the panel that he has existing trademark rights and that the disputed domain name is confusingly similar to the trademark, either by virtue of it being identical or included within the domain name. Trademark rights are conferred either on the federal level with a registration from the United States Patent and Trademark Office (USPTO) or through the use of the trademark in commerce via Common Law rights. The extent to which the trademark is considered a “strong” mark, vis-à-vis descriptiveness issues and dilution will play at list a minor role in determining any bad faith intentions of the Respondent.
In the event that the trademark holder has rights only under common law and not through a USPTO Registration, the trademark holder (who is the complainant) may marshal forth evidence of his rights by alluding to the amount of time the mark has been used in commerce, the amount of money, to date, spent on advertising, media coverage, venture capital raised, sales figures, etc. The complainant should work hard to demonstrate, if possible, a geographically expansive use of the mark and lay claim to as much territory as possible in order to preclude domain name rights and usage by the competitor in different parts of the country.
Remember, the “confusing similarity” feature of this prong does not demand that the trademark and disputed domain name are identical. Rather, the test is whether or not the domain name would pose a sufficient degree of confusion in the minds eye of the public (or consumer depending on specifics) so that the owner of the Mark is disadvantaged and harmed. Of course, the more distinct the trademark, the more “similar” the disputed domain name needs to be in order to lose under this first element. Simply misspelling the trademark and incorporating it into the domain name does not obviate the problem of confusion and therefore, the defendant-domain name holder must meaningfully vary from the trademark in order to defend against this claim.
Legitimate Interests in a Domain Name:
Next, the Complainant must demonstrate to the panel that the Respondent/Defendant does not actually have any legitimate interest in the domain name. The idea here is that if the defendant does not have a legitimate purpose for its use, he must only have registered it for the illegitimate purpose of harming (in some manner) the trademark holder. This is a challenging burden to meet and therefore, the Complainant does not have to prove this definitively but rather only make a prima facie case showing that this is likely. Once the complainant makes this prima facie case, the burden shifts to the respondent to demonstrate that he does have a legitimate interest in the domain name. So, what qualifies as a “legitimate interest”? Fortunately, the UDRP takes at least some of the guesswork out of the equation and provides three fundamental scenarios under which a respondent can show that he has a legitimate right or interest in the disputed domain name:
Section 4(c)(i): Here, the respondent (registrant) makes a concerted effort to use the disputed domain name for the purpose of a bona fide offering of goods or services
Section (c)(ii): Here, the respondent (registrant), either in its capacity as an individual or business has been “commonly known” by the domain name, despite not yet obtaining trademark rights
Section (c)(iii): Here, the respondent (registrant) 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.”
It is worthwhile to delve a bit deeper into each one of these points:
Bona Fide Offerings:
Again, there are several variables that the panel will consider here but fundamentally, the question will turn on if/when the registrant had notice of the dispute and whether the registrant can show that it has already provided the offering of goods/services or if it can demonstrate that it has real and meaningful plans to provide goods/services in the near future. In the event that it becomes apparent that the registrant has provided good/services but with the purpose of trading on the complainant’s trademark and goodwill, it will not be considered “bona fide offerings.” Again, it is not enough for the registrant to say that he intends to sell goods/services, he must provide meaningful evidence of this intent.
Registrant’s Fame and Association with Disputed Domain Name:
Perhaps the easiest way to demonstrate the “commonly known” standard is by showing that the business name is the same or sufficiently similar to the disputed domain name. How can you tell? Well, the complainant simply needs to investigate the WHOIS record of the domain name and see if the personal or business name, establishing proprietorship, is the same or sufficiently similar to the domain name itself. So, if the domain name is “Alphazerox” and it turns out the the WHOIS records shows that the owner of the domain name is Alpha Zero X, Inc., it can be said, at least superficially, that the registrant is commonly known by the domain name.
Non-Commercial and/or Fair Use:
Fair Use is a legal doctrine which suggests that while the registrant may very well be using a domain name which is very similar to the trademark, there is never the less a legitimate reason to do so including; for example, the registrant has built a website containing a legitimate critique of complainant’s website. The doctrine of fair use is predicated on 1st amendment law which seeks to maximize an individual’s right to express his opinion and free speech.
Remember, it is incumbent on the Complainant to at least provide a prima facie case that Respondent does not have a “legitimate interest” in the disputed domain name so it would be prudent for the Complainant to conduct the necessary research to ascertain that at least a prima facie case can be made before filing the complaint.
Bad-Faith Registration and Use:
The Bad-Faith standard has a bit of a, “you know it when you see it”, character and the idea is here is that a registrant should not be able to register a domain name using the trademark of another with the intent and effect of profiting off of the hard work and fame garnered by another’s mark.
The UDRP provisions which cover this element specifically include the following list of examples of “bad-faith” in action”:
“(i) circumstances indicating that you have registered or you have 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
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Please note, these four examples encompass both an emphasis on intent and use. The degree to which one or the other or both, Intent and use are required is not obvious and will likely be weighed by panelists according to the facts of the case.
WHAT IS A DOMAIN NAME?
A domain name represents a web address that allows Internet users to locate websites. Each domain name is unique to its site. Therefore, you cannot use one domain name for more than one site. Common extensions that are used for domain names include .com, .net, and .org.
You can also use a domain name for other web applications, such as email correspondence and (ftp) file transfers. For example, the domain name of our law firm is www.cohnlg.com, and our client’s contact us directly at firstname.lastname@example.org when they have a legal question about domain name disputes.
What IS A DNS?
A DNS is an acronym that stands for domain name system. This system is used to locate and translate domain names to Internet Protocol or IP addresses. You can also translate IP addresses to domain names using a DNS. IP addresses represent physical points on the web. Because IP addresses are long and can be hard to decipher, a domain name is used to make it easier for people to locate a website.
WHAT IS A GENERIC TOP-LEVEL DOMAIN AND HOW IS IT USED?
A generic top-level domain, or gTLD, represents the top-level domain of a web address. Examples of gTLDs include .net, .com, or .org. On November 16, 2000 ICANN (the Internet Corporation for Assigned Names and Numbers) included seven additional gTLDs. These seven domains include the following:
- .aero – for aviation businesses
- .info (for unrestricted use)
- .museum (for museum domain use)
- .biz – (for businesses)
- .coop – (for cooperatives)
- .pro (for professionals, such as accountants)
- .name (for the use of people using their personal name)
WHAT IS A COUNTRY CODE TOP-LEVEL DOMAIN AND HOW IS IT USED?
A country-code top-level domain is represented by the letters ccTLD, and is used for domain names that include codes for countries, such a .us for the U.S. or .mx for Mexico. These domains are overseen separately and make up the database listing of the ISNA, or the Internet Assigned Numbers Authority.
WHY DO MOST DOMAIN NAME DISPUTES HAPPEN?
Most disputes over domain names arise when a cybersquatter registers a domain name in bad faith with the explicit purpose of profiting off of the registered trademark of another. Clearly, this is both commercially and ethically problematic. Why? The essential business model of the Cyber Squatter is to wait until a trademark holder has built a strong brand name and then build a website designed purely to profit off of the trademark holder’s reputation and success.
WHAT IS ICANN’S ROLE IN THE DISPUTE RESOLUTION PROCESS?
The Internet Corporation for Assigned Names and Numbers (ICANN) is the nonprofit organization which manages gTLDs, such as .com and .net. Fundamentally, it is responsible for the promulgation and stewardship of domain names and naturally has a very large role to play in this story. In the late 1990’s, ICANN determined that domain name conflicts and disputes would only increase as the internet became more powerful and prevalent and therefore, in 1999, ICANN officially adopted and instituted the Uniform Domain Name Dispute Resolution POLICY (UDRP). Under the policy, WIPO serves as ICANN’s leading domain name resolution provider although the Forum is becoming an increasingly popular resolution provider as well.
WHAT IS THE UDNRP’S PRIMARY ROLE?
The Uniform Domain Name Resolution Policy (UDNRP), adopted by ICANN, on August 26, 1999, is the governing policy, which mandates the procedural and substantive protocols for handling domain name disputes. Under this policy, trademark holders who believe that Cybersquating is disputants who believe a domain name registration infringes upon their trademark can begin a proceeding under the UDNRP. Legally, a registrant must take part in the proceedings, per the terms and conditions for gTLD domain name registration.
FILING A DOMAIN NAME COMPLAINT WITH WIPO
What Should You Include in Your Domain Name Complaint?
The UDNRP allows anyone filing a complaint to use a resolution service company. WIPO is undoubtedly the most popular resolution provider and requires only a few fundamental items to commence the process.
To file a complaint, the following information must be included among the submitted documents:
- The domain name (or domain names if multiple domains are in dispute)
- The holder of the domain or the respondent
- The domain name registrar
- A detailed showing that the complainant has a trademark implicated by the disputed domain name
- A detailed reason arguing why the respondent does not have any rights or legitimate interests in the domain name
- A detailed reason arguing why the domain name was registered and is now being use din bad faith
HOW ARE WIPO CASES DECIDED?
When a complaint is filed, the WIPO, as an arbiter service, appoints one or more panelists who decide if the domain, in question, is transferrable. These panelists effectively serve as judges and consider the merits, substantive and procedural, of the complaint and the response. If the defendant does not provide a response, the complainant does not automatically win but stands a much better chance of prevailing. Domain Name Disputes through WIPO can be settled in a matter of months.
WHAT ARE THE POSSIBLE OUTCOMES IN A DOMAIN NAME DISPUTE WITH WIPO?
Remember, the core of any domain name dispute is the evaluation of the three-prong test:
- Does the Complainant have a Trademark, which is identical or confusingly similar to the domain name?
- Does the Respondent have a legitimate interest in the domain name?
- Was the domain name registered and now used in bad faith?
If the panelists determine that the answer to all three of these questions is “Yes”, the Complainant will prevail and the domain name will be transferred. However, please note, the Complainant WILL NOT be awarded monetary damages or court-ordered relief even upon winning a UDNRP domain name dispute.
ARE WIPO DECISIONS FOR CASES POSTED ONLINE?
Once the WIPO registers a case, it is posted online. The decisions for cases are also posted online once the parties in a dispute receive word of the outcome. This is supremely valuable in that it ensures that future Complainants and Respondents have resources available to compare and contrast the merits of their own cases and evaluate the likelihood of success given precedential decisions
FILING A DOMAIN NAME COMPLAINT WITH THE FORUM
Similar to WIPO, the FORUM is a dispute resolution company, which is charged with the mandate by ICANN to manage and adjudicate disputes involving domain names. Substantively, the FORUM considers the same three-prong test as WIPO (the existence of a relevant trademark, legitimacy of respondent’s use in the domain name, the extent to which the domain name was registered and used in bad faith) but procedurally, it is slightly different and arguably more nuanced.
THE FORUM PROVIDES EXCELLENT CUSTOMER CARE AND SERVICE
Once a complainant files a complaint, he/she will be assigned a case coordinator. While the case coordinator may not legal advice (at least on a substantive level), he can help with any procedural questions. Some of the questions you can ask your case coordinator include the following:
- Where do I obtain a specific form?
- How long will this part of the process take?
- Do I need to Serve the other party with a document?
- How much will Petition X cost to file?
While the FORUM does not have a “hotline” per se, the Complainant and indeed respondent can email directly with the case coordinator and expect a response fairly quickly.
COMMON QUESTIONS ABOUT FILING WITH THE FORUM
Can a decision be removed in its entirety once it has been posted on the domain resolution website?
No. Once a decision is made, it must be posted in its entirety with few and rare exceptions. This includes the addition of the Complainant’s Name and the Respondent’s.
If I lose, may I appeal the decision?
Yes. Either of the two parties in a dispute case may bring an action prior, during, and following a domain dispute case. If you are a losing respondent, you can appeal the case within 10 business days of a decision.
Does a copy of a complaint need to be served on the registrar?
Possibly. In some instances, the Supplemental rules state that a complainant must serve a copy of the complaint on the registrar. Because policies vary, you need to check with your case coordinator.
Can I obtain an extension of time to file an amended complaint?
Kind of. If you require more time to amend the complaint, you will need to first withdraw the complaint and then refile it.
Do digital copies of the complaint suffice or are hard copies required?
Most policies do not mandate that hard copies be sent. Confirm if you need to send hard copies with the coordinator for your case.
How should I submit the paperwork?
When possible, the UDRP, recommends that all documentation be filed and submitted by electronic means. Please email the case coordinator with detailed questions.
Is it possible to file a complaint with a .com domain name and .net domain name if the respondent is the same?
No. In this instance, you must file a separate complaint for each name, as the standards/rules vary for each.
Can a Filing Fee Ever be refunded?
Unfortunately not. The Forum as a matter of policy will not return monies.
HOW MUCH DOES IT COST TO FILE A UDRP COMPLAINT?
As with all legal matters, there are both required filing fees and legal service fees to calculate. Concerning the filing fees, depending on the number of domain names that are in dispute and the number of panelists involved in the adjudication process, the price will very. If there are anywhere from one to five domain names and only one panelist on the panel, the filing fee will be under $2000. However, if there are more than five domain names in dispute, with 3 panelists, the filing fees will be closer to $5000. Similarly, depending on the complexity of the case, the legal fees will vary. Please note, if there is only one panelist, it is incumbent on the Complainant to pay rather than the respondent.
Principally, you will only pay a fee when filing your dispute (as the Complainant). However, be forewarned and prepared, as you could pay more in costs, depending on the provider you choose, the nature of the dispute, and the number of administrative “judges” you choose to have on the Administrative panel which will decide your case.
HOW MUCH DO PROVIDERS CHARGE FOR THE REQUIRED FILING FEE?
As this article has already covered, UDRP complaints can only be filed in a qualified and designated arbitration body. Whether the Complainant chooses to avail himself of the Forum or World Intellectual Property Organization (WIPO), there is an initial filing fee that is prima facie incumbent upon the Complainant to burden.
The WIPO filing fee begins at $1,500 for filing a Complaint and covers as many as five domain names, and a single-member panel. The filing fee for filing the initial Complaint with the Forum starts at $1,300 and covers up to two domain name registrations and again, allows for a single-member panel.
Other dispute providers charge filing fees as follows:
- The ADNDRC (Asian Domain Name Dispute Resolution Centre) requires a filing fee of $1,300 for a Single Panelist and $2800 for Three Panelists;
- The ACDNDR (Arab Center for Domain Name Dispute Resolution) charges a minimum fee of $1,500; and
- The Czech Arbitration Court has a slightly more dynamic process for assigning the fee schedule.
Remember, if you are the Complainant, you have the power to select the venue that you believe to be most favorable to your case. Typically, this means that you will either be filing the complaint before WIPO or the Forum. However, just because you have the power to request a single-member panel, that does not mean that the Respondent does not have the right to request a 3-member panel. In this case, the financial burden actually shifts to the Respondent who is now required to pay for half of the fee for the newly requested and granted, 3-member panel. This is true irrespective of which service provider the Complainant has chosen to initially file the complaint; WIPO, FORUM, ADNDRC etc.
Other Possible Fees through the Forum
If you choose the Forum in which to file your UDRP complaint, you may invariably be subject to additional fees.
The Forum charges an additional fee if a respondent or complainant includes additional paperwork to their response or complaint. This may happen when either party wants to respond to the other party’s supplemental filing. Because the right to provide additional responses is not expressly granted under UDRP Policy, the Forum has the right, and indeed avails itself of that right, to charge additional filing fees. Please note, submitting the additional fee is no guarantee that the panel adjudicating the case will necessarily take the filings into consideration when issuing a final verdict.
While the Forum does not charge any additional fee for an extension of time request for 4 days, the Forum does charge an additional payment of $100 which allows for an extension request of up to 20 additional days. Typically, this $100 is well worth the price and allows the Respondent to gather his/her resources and put together a more developed Response.
WHICH COUNTRIES HAVE ADOPTED THE UDPR?
If you are reading this article from America, you may very well have taken for granted that all countries have adopted the UDRP. This is of course, not the case, and depending on which country the Complainant is in, the UDRP may or may not be an option. Most relevant to this audience and North America in particular is the example of Canada’s .ca ccTLD. The critical difference (although there are of course more than just a few) between the UDRP and other policies is the extent to which the three factors of the Cybersquating test are required to be met. Presently, just over 40 different countries have offically adopted the UDRP as the governing policy and consequently, complainant’s in any of these countries have the right to file complaints under the UDRP with any UDRP designated service provider including WIPO and the Forum.
|Antigua and Barbuda||.ag|
|Congo, Democratic Republic of the||.cd|
|Federated States of Micronesia||.fm|
|Lao People's Democratic Republic||.la|
|Venezuela, Bolivarian Republic of||.ve|
|Virgin Islands (British)||.ve|