Are You The Master of Your Domain?

III. ICANN Uniform Dispute Resolution Policy

The UDRP is not a law; rather, it is a policy which is enforced through a contractual agreement, i.e., via the registration agreements entered into by each person who registers a domain name with a registrar (“Registrar”).

The UDRP is designed to give trademark owners an alternative to litigation against cybersquatters. Upon a Registrar’s receipt of a complaint from a third party (“Complainant”) that a registered domain infringes upon the Complainant’s trademark rights, the UDRP requires the registrant of the domain name at issue (“Respondent”) to submit to a mandatory administrative proceeding. A neutral administrative panel (“Panel”) is appointed by an ICANN-approved dispute resolution service provider, such as the World Intellectual Property Organization (“WIPO”), to attempt to resolve the dispute.

Importantly, only disputes that involve top-level domains ending in .com, .net, and .org are covered by the UDRP. Other country code domains, such as .co.uk for the United Kingdom or .ru for Russia, are not governed by the UDRP. Accordingly, as it currently stands a trademark owner whose rights are infringed by a domain ending in anything other than .com, .net, or .org must enforce its rights through other avenues, such as litigation.

During the pendency of an administrative proceeding, neither the Complainant nor Respondent are prevented from instituting court proceedings in a court of mutual jurisdiction, defined as a court in the location of (a) the principal office of the Registrar (provided that the Respondent submitted to the jurisdiction of the courts where the Registrar is located in the Respondent’s agreement with the Registrar), or (b) the domain-name holder’s address as shown in the WHOIS database at the time the complaint is submitted.

A. Elements Of A Claim Under The UDRP

The burden of proof is on the Complainant. A Complainant must prove each of the following elements in the mandatory administrative proceeding:

(1) the domain is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(2) the Respondent 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.

1. Evidence Of Bad Faith Registration and Use Under The UDRP

To prove evidence of registration and bad faith, the Panel may take into consideration each of the following:

(1) circumstances indicating that the Respondent has registered or 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

(2) the Respondent has 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 the registration has engaged in a pattern of such conduct; or

(3) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(4) By the using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondent’s website or other on-online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation or endorsement of the Respondent’s website or location or of a product or service on the Respondent’s website or location.

2. Evidence Of Legitimate Interest In Domain Name

The Panel may consider any of the following circumstances by the Respondent to demonstrate the Respondent’s rights and legitimate interests in the domain name:

(1) before any notice of the dispute, the registrant’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain in connection with a bona fide offering of goods or services; or

(2) the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark right; or

(3) the Respondent 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.

B. Remedies Under The UDRP

The Panel is vested with only limited authority—it can require either the cancellation of the domain name or the transfer of the domain name to the Complainant. If the Panel determines that a Respondent’s domain name registration should be canceled or transferred, the Respondent has 10 business days within which to file a lawsuit and provide evidence of the filing to ICANN, such as a file-stamped copy of the complaint. If within the 10-day period ICANN receives evidence that a lawsuit has been filed, ICANN will take no further action until it has received (1) evidence satisfactory to ICANN that the parties have settled the lawsuit, or that the case has been dismissed, or (2) a copy of a court order dismissing the lawsuit or ordering that the Respondent no longer has the right to use the domain name. If no lawsuit is filed during the 10-day period, ICANN will implement the Panel’s decision.

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