Defending your trademark on the Internet
It’s a common issue – you have an established brand name and internet presence, but you find out that others are using either exact or confusingly-similar domain names for their businesses. These could be legitimate uses (in a totally different type of goods, perhaps), but often they are parties out there trying to trade on your brand’s goodwill and catch unsuspecting Internet users.
Cybersquatting, as it’s known, is defined as “registering, trafficking in, or using an Internet domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else.” US law and international dispute resolution regulations have made this practice a no-no, which is a far cry from the Wild West days of the 1999’s Internet.
So what can you do? How do you fight against cybersquatting when it happens to you?
Enter the UDRP
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a policy established by ICANN, the organization that oversees domain name registration, in December 1999. It is an international arbitration procedure for the resolution of domain name disputes, made mandatory by the fact that when you register a domain name, you agree to the following:
- You are not registering the domain name for an unlawful purpose; and
- You won’t use the domain name in a way that knowingly violates any applicable laws or regulations
An interesting point about the UDRP is that it is a non-exclusive remedy. This means that you can also bring your domain name dispute under other laws, like the Anticybersquatting Consumer Protection Act in the US. If you attempt a UDRP dispute and lose, you can still seek relief under the ACPA in US federal court. This is fairly rare, as a federal lawsuit is expensive, but still a viable option depending on the value of the domain name and the strength of the case.
What do you need to prove?
In order to win a UDRP claim, you need to be able to prove the following things:
- That the infringing domain name is either the same or confusingly-similar to a trademark that you have rights to;
- That the infringer doesn’t have rights to that trademark;
- That the infringing domain name was registered and is being used in bad faith.
That third one is the real crux of the issue – you need to show that they entered into the domain name purchase and use in bad faith. There needs to be intent. For example, they registered a domain name for one of your games, with the intention to sell it back to you or hold it hostage. This could be proven by the fact that they did, indeed, offer to sell it back to you. If they were aware of your existing trademark when they bought it, this could be grounds for returning the domain to you.
For the most part, these are very fact-specific arguments that must be made in the complaint. Proper procedure is also very important in these actions, so I wouldn’t recommend that you proceed without an attorney.
A simple process (relatively)
The best thing about a UDRP claim is its relatively simplicity versus a full-on lawsuit. Think about it:
- You have one arbitrator that decides your case
- You only file one complaint, and
- The other side only files a single response to your complaint.
That’s basically it. If the other side doesn’t bother responding, you will win by default, as long as you’ve proven the three things I listed in the previous section.
The fee for bringing a UDRP complaint can vary depending on the organization that you file it through. WIPO, for instance, charges a $1500 fee for up to 5 domain names at issue. Add on the attorney fees for drafting the complaint, and you’re coming in at a lot less cost than you would with a lawsuit.
The only drawback to the UDRP is that the only damages available are the return of the domain name or names to you. There’s no way to get monetary damages from the infringer through this procedure. So if that’s what you’re looking for, it may be a better idea to file an ACPA claim in US Federal Court. The expense for that, as I said, is much, much greater.
In the next post about domain name disputes, I’ll discuss why it’s important to have a registered trademark as soon as you can, in order to fight against domain name hijacking.