One interesting trend in my legal practice in recent years has been the rise of trademark dispute cases over domain names – the catchy, easy-to-remember online address of a business, like “southwest.com.”
Perhaps this is not surprising, as much of our commerce these days resides online in one form or another, whether it is a restaurant with online ordering or a consulting agency booking clients through their website. One can see how domain names have grown in their power as an almost inextricable part of trademark and brand strength.
Unfortunately, the rise of that power has been followed by the practice of cybersquatting, where someone buys a domain name in bad faith – that is, without the intention of using it for a legitimate business. Often, cybersquatters hope to sell the trademark to the business who actually needs it. An extortion of sorts. Other times, cybersquatters may actually pose as the business, hoping to scoop up confused customers. This more closely resembles traditional trademark confusion.
Adding to the mire of faceless internet squatters is the fact that anyone anywhere can purchase a domain name. This means domain name disputes can easily end up spanning international jurisdictions. Does this sound so expensive and complicated that you would be tempted to just give in to the cybersquatter’s demands? You are not alone.
However, it does not have to work this way. If a business discovers a trademark infringement through a domain name, how can they best dispute it?
Meet WIPO
The World Intellectual Property Organization (WIPO) took on the responsibility of sorting out these types of cases in the late ‘90s at the behest of the U.S. government. After they conducted some Internet Domain Name Process tests, they consolidated their streamlined administrative hearings into the Uniform Domain Name Dispute Resolution Policy (UDRP).
When businesses submit a trademark dispute to UDRP, they can complete the entire process within two months, paying fixed, moderate fees. The proceedings are online, which eases international dialogue and eliminates travel expenses for business owners.
Submitting a UDRP complaint does not preclude legal action in other spheres, either. Your business can still file a lawsuit before, during, or after the UDRP proceeding, although hopefully that expense will not prove necessary.
What to Know about UDRP Proceedings
How do you know if your business’s dispute qualifies? Here are the three main criteria:
- The domain name in question is confusingly similar to your registered trademark (sometimes identical)
- The domain name registrant does not demonstrate legitimate interest or rights in the trademark or related business
- Basically, the registered domain name is being used in “bad faith”
Bad faith falls somewhat in the “I know it when I see it” vein. Someone may accidentally step on the toes of a business’s trademark when they register a domain name on a whim, but that has a different texture from somebody who registers a domain name explicitly to profit from someone else’s brand. It is part of the UDRP panel’s responsibility to discern this.
How do these types of proceedings typically go? I will list a simple summary from WIPO’s domain name dispute guide, but I suggest you consult the guide (and a legal professional) to learn about all the stages:
- File the complaint
- The complaint is reviewed for compliance (see above criteria)
- The proceeding commences
- The domain name registrant files their response
- WIPO creates a panel for the case of one or three arbitrators
- The panel administers a decision
- The registrant and complainant are notified of the decision
- The decision goes into effect
If the Complainant wins, WIPO notifies the registrar to turn the domain over to the Complainant within a specific period of time.
Exponential Growth in Domain Name Disputes
WIPO recently released a report detailing the exponential growth of UDRP cases from 2013 to 2023, highlighting the fact that more and more businesses are having to deal with domain name disputes.
Is taking the WIPO UDRP route right for you? Maybe. Maybe not. Consulting with a trusted IP attorney is always recommended before you take any action. Understanding the pros and cons of a UDRP proceeding and a lawsuit filed in federal court is extremely important. Filing complaints pro se can cost you more time and money in the long run.