Imagine a website pops up with your business’s name in the domain (or a common misspelling of your name). The page starts to show up on the front page of Google when customers search for your business and upon first glance looks like your website, easily confusing your customers. Maybe the purported owner of this new domain contacts you offering to sell you the domain if you pay an exorbitant sum of money. Or, maybe the new domain is simply diverting your traffic to a fake website. What do you do?
Cybersquatting Before the UDRP
Typically, an issue regarding the improper use of one’s business name invokes trademark law (if the name is in fact protectable as a trademark). In the past, if someone improperly used a business’s name and refused to comply with demands to stop using it, a business would usually need to file a lawsuit, often in federal court. However, given the surge of “cyber-squatters” in recent years, the Internet Corporation for Assigned Names and Numbers (ICANN) created a cost effective and efficient policy for dealing with the improper use of trademarks in domain names – the Uniform Domain-Name Dispute-Resolution Policy (UDRP).
How It Works
This policy must be followed by all ICANN-accredited registrars (any registrar offering .com’s, .info’s, .net’s, and .org’s, among others) and is part of the agreement between the domain name registrar and the customer who buys the domain name. Anybody who buys a domain name from one of these accredited registrars agrees to submit to mandatory administrative proceedings in the event a third party (like a business that feels a domain is infringing upon its trademarks) alleges the following three elements:
- The registered domain name is identical or confusingly similar to a trademark or service mark in which the third party has rights; and
- The person who registered the domain name has no rights or legitimate interests in respect to the registered domain; and
- The domain name was registered and is being used in bad faith.
The proceedings are conducted by certain third party arbitration providers (listed here: http://www.icann.org/en/help/dndr/udrp/providers) and are significantly less costly and time consuming than traditional litigation. Rather than spending tens of thousands of dollars and waiting potentially years for a resolution, a business can file a complaint with a UDRP arbitration provider and have the infringing domain transferred to them, cancelled, or changed within a matter of weeks. A similar policy, the Uniform Rapid Suspension System (URS), has been developed for the new generic top level domain names (gTLD’s) and provides an even faster and cheaper system than the UDRP.
A number of businesses continue to use the UDRP to their advantage. WordPress recently used the policy to get www.wordprress.org (misspelling intentional) transferred to them. Orbitz recently used the UDRP to get cheaptickeis.com, cheaptickeyts.com, cheoptickets.com, cheraptickets.com, gheaptickets.com, norbitz.com, and ocheaptickets.com transferred to them all in the same proceeding. For a further list of proceedings, check out the National Arbitration Forum’s database here: http://domains.adrforum.com/decision.aspx. Note – the National Arbitration Forum is only one of several providers that conduct UDRP proceedings.
As you can see, the UDRP is an effective tool for quickly dealing with cyber-squatters on the internet. However, the pleading process is similar to a lawsuit and necessarily involves making legal arguments, especially those related to trademark law. Therefore, if you encounter a situation where you think a third party is infringing upon your trademark rights in their domain name, contact one of our attorneys to find out if the UDRP is a tool you can use to protect your business’s goodwill.
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