MARCH 3, 2003 - You have spent valuable resources developing and protecting your company's trademark, only to discover that someone (a competitor, disgruntled former employee, cybersquatter) has incorporated it into his domain name, and now your potential customers are being diverted to his website. What is your recourse?
A simple, quick, and relatively inexpensive recourse is to file a complaint in accordance with the Uniform Domain Name Dispute Resolution Policy ("UDRP").
A domain name is the portion of the Internet Protocol address that follows the "www." For example, in the address www.pblutah.com, "pblutah.com" is the domain name. Each domain name concludes with a generic top-level domain such as ".com," ".info," ".net," ".org," ".tv," ".gov," etc.
When one registers a domain name with any domain name registrar, she is bound by the UDRP.[1] The UDRP was adopted by the Internet Corporation for Assigned Names and Numbers ("ICANN")[2], and is incorporated by reference into any registration agreement with a domain name registrar. The UDRP sets forth the terms and conditions in connection with a dispute between the registrant and any other party over the registration and use of a domain name registered by registrant. See UDRP § 1.
Under the UDRP, a registrant represents, among other things, that to his knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. See UDRP § 2. Nevertheless, in violation of this section, registrants commonly incorporate registered trademarks of third parties into domain names, such as by slightly altering the spelling of the mark ("neimanmarkus.com"), by adding extra words to the mark ("supportnovell.com"), or by including "www" into the domain name ("wwwchevron.com").
The owner of the trademark may seek recourse against such a domain name registrant by filing a complaint with a dispute resolution provider approved by ICANN. Approved providers include the National Arbitration Forum ("NAF"), the World Intellectual Property Organization ("WIPO"), CPR Institute for Dispute Resolution ("CPR"), and eResolution.[3] Each provider follows the UDRP as well as its own supplemental rules.
Under the UDRP a complaint must allege that (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements is present. See UDRP § 4(a).
Evidence of bad faith includes, but is not limited to, showing that (1) the registrant acquired the domain name primarily for the purpose of selling it to the owner of the trademark for consideration 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 the complainant's mark.
Once the complaint is filed and the arbitration is initiated, the registrant has an opportunity to respond. A panel of one or three arbitrators, depending on the request of the parties, reviews the complaint, response, and any supporting documents. The panel then decides to transfer the domain name, cancel the registration, permit the registrant to keep the domain name, or dismiss the complaint.
A very high percentage of complaints results in the domain name being transferred to the complainant. For example, out of 6648 complaints filed under the UDRP to date, 5239 (78.8%) of those have resulted in transfer to the complainant, while only 1319 have resulted in a decision for the registrant, the remaining decisions being split between the parties or cancellations of the registration. See Statistical Summary of Proceedings Under Uniform Domain Name Dispute Resolution Policy at http://www.icann.org/udrp/proceedings-stat.htm.
Decisions for the registrant most often occur when the registrant has a legitimate interest in the domain name (See Case No. D2001-0787, "scorpions.com"), or when bad faith cannot be demonstrated (See Case No. D2000-0596, "sting.com").
[1] Domain names ending in .biz are bound by the Restrictions Dispute Resolution Policy ("RDRP").
[2] ICANN is "the non-profit corporation that was formed to assume responsibility for the IP address space allocation, protocol parameter assignment, domain name system management, and root server system management functions previously performed under U.S. Government contract by the Internet Assigned Numbers Authority ("IANA") and other entities." See http://www.icann.org.
[3] Not accepting proceedings commenced after November 30, 2001.