Domain Hall of Fame / When someone else holds your name: a short guide to disputes

When someone else holds your name: a short guide to disputes

DOMAINS

3 min read · 718 words

If somebody has registered a domain that infringes your trademark, and appears to be using it in bad faith, there is a process designed to resolve this without going to court: the Uniform Domain-Name Dispute-Resolution Policy, usually called the UDRP. A panel reviews the complaint and, if it is upheld, orders the domain transferred or cancelled.

It is not a general tool for getting a name you want. It is aimed at one specific abuse, and understanding its limits tells you whether to file, negotiate or leave it alone.

The three things you must show

To succeed, you generally must show that the domain is identical or confusingly similar to a mark you hold, that the registrant has no legitimate interest in it, and that it was registered and used in bad faith. All three. The first is the easy one: a panel compares the mark with the domain and mostly ignores the ending. The second is usually argued on the registrant's side: a genuine business with a similar name, a fan site, or a reseller may count as a legitimate interest.

The complainant must show all threeIdentical or confusinglysimilar to a mark you holdPart 1No rights or legitimateinterest for the registrantPart 2Registered AND usedin bad faithPart 3Fail any one part and the complaint fails.
The third part needs both registration and use in bad faith, which is the one most cases turn on.

What bad faith looks like

The third part carries most of the weight. Typical examples are registering the name mainly to sell it to the trademark owner for much more than it cost, registering it to block the owner from having it, setting it up to disrupt a competitor, or using it to attract visitors for profit by creating confusion. A name that happens to match a brand but was registered years before the brand existed rarely qualifies, since bad faith has to exist when the registration was made.

How a case runs

The complaint goes to an approved provider, such as WIPO or the Forum, with evidence of your mark and of the registrant's conduct. The registrar is told to lock the domain, so it cannot be moved while the case runs. The registrant has about 20 days to answer. A panel of one or three decides, normally within about two weeks of being appointed. If the complaint succeeds, the registrar usually waits ten working days, to let the registrant go to court, and then transfers or cancels the name.

Complaintfiled with a providerLockregistrar freezes nameResponseabout 20 daysDecisionpanel, about 14 daysActiontransfer after 10 working daysTypical order of events; timings are approximate and vary by provider.
A whole case usually takes a couple of months, against years for most court proceedings.
The only remedies are transfer or cancellation. A panel cannot award damages, and a loss does not stop you from suing in court afterwards.

Cost, speed and alternatives

It is faster and cheaper than a lawsuit, though not free. Fees depend on the provider and on the choice between one panellist and three, and lawyers add to that. Many country registries run their own similar procedures, with their own rules and sometimes different tests, so a country-code domain may not be covered by the UDRP at all. Check the registry's website for the rules that apply to your ending, and for the name of the body that handles disputes. For a name under a national ending the process can be even quicker, and it is often run in the local language.

Before filing, consider writing to the registrant. A polite letter that identifies your mark often settles things, and it can be used in evidence later if it does not. Buying the name is sometimes cheaper than a case, but bear in mind that paying a large sum can encourage others.

If you are the one being challenged

If you are the one being challenged, keep your records of why you registered the name. Dates, emails, business plans, early drafts of the site, invoices and screenshots all help show that you registered in good faith and have a real interest. Respond within the deadline, because an unanswered complaint often succeeds by default. A complaint brought without a good basis can itself be found to be an attempt to take a name unfairly, and panels have said so.

A ten-minute check

Gather the evidence first: the date the domain was created (whois example.com), the date your mark was registered or first used, archived copies of the site, and any approach to sell. Compare the dates. If the domain is older than your mark, a UDRP complaint is unlikely to succeed.

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