3 Things to Consider Before Filing a Domain Name Dispute

We are often asked what our customers can do when someone else begins use of a domain name that is similar to their trademark(s) and, as a result, web site traffic – and business along with it – is being stolen by a new, competing new web site. In many instances the answer is clear: Initiate a Domain Name Dispute against the owner of the new site.

How is this done? The answer is simpler than you may believe.

Most domain names, including the ownership thereof, are controlled by the Internet Corporation for the Assignment of Names and Numbers or ICANN. By registering a domain name with any approved domain name registrar (e.g., GoDaddy.com, Register.com, etc.) the registrant of the domain name is required to agree to ICANN’s Uniform Domain-Name Dispute Resolution Policy or UDRP.

The UDRP allows you to enforce your trademark rights against registrants of confusingly similar domain names and force them to transfer those domain names to you where:

(1) the domain name is identical or confusingly similar to your trademark;

(2) the domain name owner has no rights or legitimate interests in respect of the domain name; and

(3) the domain name has been registered and is being used in bad faith.

Having successfully prosecuted domain name disputes in our experience here are the three (3) questions you should ask when considering whether you should initiate a domain name dispute against the registrant of domain name you feel is likely to cause confusion with your trademark:

(1) Trademark Rights. Did you have rights in your trademark through use, a Trademark Application, or a Trademark Registration, prior to the other person’s registration of the domain name at issue? If yes, continue to inquiry number 2. If no, you generally cannot maintain a Domain Name Dispute against the other party.

(2) Legitimate Interest. Does the owner of the domain name have some legitimate interest in respect to the domain name (e.g., the domain name owner is commonly known by the domain name even if they have acquired no trademark rights therein, the domain name is being used for legitimate non-commercial use)? If the answer is no continue to inquiry number 3. If the answer is yes you generally cannot maintain a Domain Name Dispute against the other party.

(3) Bad Faith. Was the domain name at issue registered and is it being used in bad faith (e.g., registered primarily to sell the same for a profit (aka domain name trafficking), to disrupt the business of a competitor, to divert customers away from a competitor by creating confusion with their trademark)? If the answer is yes you may be able to successfully maintain a domain name dispute against the other party and have the disputed domain name transferred to your ownership.

As always, a fact-specific analysis of your rights vis-à-vis the alleged cybersquatter should be conducted by someone experienced in the field. However, the above-referenced information should give you a fairly simple overview of whether enforcement may be possible if another registers a domain name which is confusingly similar to your trademark.

The Trademark Company