A domain name dispute is a conflict that arises when more than one individual or group believes it has the right to register a specific domain name. Most commonly a domain name dispute would occur when a domain name similar to a registered trademark is registered by an individual or organization who is not the trademark owner. All domain name registrars must follow the ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP).
Types of Domain Name Disputes
Cybersquatting, Reverse-Cybersquatting and Typosquatting these and other domain name dispute terms listed below refer to Internet law violations that result in lost revenue and sales, damaged online and offline reputation, and a host of other issues for business owners whose rights have been violated.
• Cybersquatting: US law defines cybersquatting as “registering, trafficking in, or using a domain name with bad-faith intent to profit from the goodwill of a trademark belonging to someone else.” Cybersquatters typically have no use for these domain names, except to resell them and turn a profit. Businesses are often frustrated to learn that a domain name relating to their business name or trademarks has already been registered and is owned by a cybersquatter.
• Reverse-Cybersquatting: Reverse cybersquatting occurs when a trademark holder attempts to wrestle a domain name from someone that lawfully registered the name at an earlier point in time. For example, if a corporation named “Peter” registered the name “Dewise.com” for use as a website address for a law firm, and Major League Baseball attempted to sue the law firm for trademark infringement and the use of the name, this would be an example of reverse cybersquatting. Since the law firm had nothing to do with baseball, Major League Baseball’s trademarks were not being abused. Major League Baseball could buy the name, of course, but could not recover it in a lawsuit or arbitration proceeding.
• Typosquatting: A typosquatter is a person who registers domain names with common typos of major domain names to attempt to divert traffic to sites that benefit the registrant. For example, “microsotf.com” was created to take advantage of people who intended to visit the Microsoft website, but misspelled the domain name in their web browser. This practice, also known as “URL hijacking” or “webs address hacking” takes advantage of the good name of the domain owner to send visitors somewhere else.
• Second Level Domain Name Disputes: A second-level domain (SLD) on the Internet is the name or text directly below (or typically to the left) of a top-level domain (TLD). For example, if on a webpage named “www.readmypage.com”, the “.com” is the top level domain, and “readmypage” is the second level domain, because is specifies which site to visit of all of the “.com” websites available online.
• Gripe Sites: While there are often related free speech issues, legal action may be taken in cases of so-called “gripe sites” where an unhappy domain name owner registers a name to complain about a particular company and their dissatisfaction with that product or service. While the content explaining the webmaster’s unhappiness is likely protected, the domain name may not be protected by virtue of trademark issues.
• Subdomains: Similar to second level domain names, a subdomain dispute refers to the use of a mark in the very first portion of the domain. For example, if our site used the address xerox.readmypage.com (again, just an example) Xerox would potentially have a claim against Readmypage for use of its name without the right to do so.
• Domain Name Warehousing: This is the practice of “holding” expired domains instead of releasing them back into the public domain. By preventing certain domains from being released, the registrar hopes to resell the domains to the previous registrant or a new registrant at a higher rate than the market price.
• Grace Period Violations: Also known as domain name “kiting” or “tasting,” this practice occurs when a registrant registers a domain name for a temporary purpose, but then takes advantage of the domain purchase grace period to reject more permanent ownership.
Steps For Protecting Your Company’s Domain Name
Pay Attention To The Administrative Details: In connection with registering your domain name, ensure that you are listed as: the “registrant” (the legal owner of the domain name), the “administrative contact” (the individual with rights to alter the domain record) and the “technical contact” (the individual responsible for addressing any technical issues with the domain). It is especially critical that you, the domain owner, do not permit employees, website developers or other third parties to be listed as either the registrant or the administrative contact. Keep in mind that inaccurate information on file with your domain name registrar may automatically result in cancellation of your domain.
Ensure Communications With Your Domain Name Registrar: Protect access to your account with your domain registrar with a strong password. Confirm that emails sent by your domain registrar will not be blocked by your spam filter and be certain to provide the registrar with a permanent email address in case your domain provider needs to contact you.
Lock The Transfer Of Your Domain: Many domain name registrars provide domain lock/transfer lock/register lock to stop your domain name from being deleted, transferred or modified without your prior and explicit permission.
Monitor Expiration Dates: Establish a procedure to monitor the expiration date of your domain name’s registration to ensure you do not unintentionally forget to renew its registration. Domain owners with multiple domains should consider consolidating the expiration dates of all of their domain names to make renewal more methodical and easier to remember. One option is to renew your domain name for multiple years rather than annually.
Register Your Domain Name As A Trademark: If your domain name identifies your goods or services, it may be possible to register your domain name as a trademark or service mark with the United States Patent and Trademark Office. Registration of your domain name with this agency may prevent other parties from utilizing similar domain names.
Implement Extensible Provisioning Protocol: EPP requires that a particular code be provided to a new domain name registrar before a transfer, and provides an extra layer of security. By implementing EPP for your domain name, you greatly reduce the risk of it being improperly transferred.
Obtain Similar Domain Names: Domain name holders should consider registering similar domain names as well as domain names with alternative top-level domain names such as .biz, .net and .org and domain name variations based on misspellings and the plural version of the domain name.
How the Domain Name Dispute System Works
In order to process the types of domain disputes, the Uniform Domain Name Dispute Resolution Policy (UDRP) was born. This policy was created by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve disputes where multiple parties claim the right to a specific domain. If you find that somebody else is using a domain that infringes on your trademark or you believe the current holder has bought the domain in bad faith, then you might be able to file a UDRP to start a dispute proceeding. While it may sound subjective, bad faith is an important factor in determining the outcome of a UDRP proceeding. It can include cases of cybersquatting and typosquatting or instances when the domain holder appears to have the intention of disrupting or inconveniencing the trademark holder. Bad faith can also refer to instances where the domain owner profits off the trademark. For example, if you managed to purchase the domain mcdonalds.com and used it to redirect traffic to your competing hamburger restaurant’s website, that would be a clear case of bad faith. In contrast, there are cases where a disputed domain is found to be bought in good faith. This could occur if the owner has a legitimate reason for using the domain. When a domain dispute is opened, it will be looked at by an independent arbiter accredited by ICANN. It’s important to note that these arbiters can only resolve disputes regarding top-level domains that are registered with ICANN. In addition, a UDRP proceeding may not be enough to settle certain disputes, and you might still need to engage in negotiation with the other party or settle the matter in court. Finally, some countries do not adhere to the UDRP rules. Instead, they have different ways of dealing with domain disputes. So make sure you understand what rules and policies apply in your region before going down this route. While the upfront cost of purchasing your ideal domain can seem daunting, it’s important to consider the risks of not buying it.
What You Need to Do Before Starting a Domain Dispute
For your domain dispute to succeed, you’ll need to be able to substantiate your claim. As such, you’ll have to supply proof that supports your right to the domain in question.
According to the policy as outlined by ICANN, a claimant must be able to prove all of the following:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
The domain owner has no rights or legitimate interests in respect of the domain name.
The domain name has been registered and is being used in bad faith.
Other Preparations to Make Before Filing a UDRP Claim
First and foremost, you’ll need to be aware of the fees for submitting a dispute claim. For example, if you submit your case to World Intellectual Property Organization (WIPO), one of ICANN’s approved dispute resolution service providers, the cost will vary depending on the number of domains that are included in the claim. For 1–5 domains, you’ll need to pay $1,500, which is split between the panelist who deals with your claim and the WIPO. Bear in mind that you will have to provide payment when submitting your claim. For that reason, you need to make sure you can pay the full amount before you proceed with any other aspect of the process.
How to Begin a Domain Dispute
At this point, you should have a case ready to submit. Fortunately, WIPO has made the process a lot easier by providing a Model Complaint form. This is effectively a template you can use to submit your claim, which will ensure that you include all the necessary information in the required format. The form itself consists of several sections with the required fields clearly marked. However, any information you can provide that will support your claim should be included, regardless of whether it’s listed as required or not. Remember that you need to have a strong, waterproof case, so don’t skip over anything at this stage. The first section of the form lays out the basic details for the complainant, respondent, and disputed domains. The remaining sections are shorter and simpler:
Mutual Jurisdiction: This indicates a court jurisdiction, which could be either the principal office of the registrar or the domain name holder’s address at the time the complaint is submitted.
Other Legal Proceedings: This enables you to specify other legal actions that are related to the disputed domains.
Communications: Here, you’ll need to confirm that you have made the domain owner aware of the complaint.
Payment: In this section, you’ll confirm that you have submitted payment for the claim, along with which method you used.
Certification: This is a purely informative section, asking you to confirm that the details you have provided are correct to your best knowledge.
Annexure: Here, you can supply additional supporting evidence in the form of appendices. You can attach a maximum of 10 annexure with your claim.
Finally, you’ll be asked to sign and confirm your claim.
Uniform Domain-Name Dispute-Resolution Policy
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP currently applies to all generic top level domains (.com, .net, .org, etc.), some country code top-level domains, and some older top level domains in specific circumstances.
A complainant in a UDRP proceeding must establish three elements to succeed:
The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
The registrant does not have any rights or legitimate interests in the domain name; and
The domain name has been registered and the domain name is being used in “bad faith”.
In a UDRP proceeding, a panel will consider several non-exclusive factors to assess bad faith, such as:
Whether the registrant registered 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;
Whether the registrant registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, if the domain name owner has engaged in a pattern of such conduct; and
Whether the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
Whether by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant’s website, by creating a likelihood of confusion with the complainant’s mark.
If a party loses a UDRP proceeding, in many jurisdictions it may still bring a lawsuit against the domain name registrant under local law. For example, the administrative panel’s UDRP decision can be challenged and overturned in a U.S. court of law by means of e.g. the Anticybersquatting Consumer Protection Act. If a domain name registrant loses a UDRP proceeding, it must file a lawsuit against the trademark holder within ten days to prevent ICANN from transferring the domain name.
Arbitration: Advantages and Disadvantages
Arbitration is a method of resolving disputes without going to court. Sometimes an attorney will recommend arbitration to a client as the best means to resolve a claim. In arbitration, the dispute is submitted to a third party (the arbitrator) who resolves the dispute after hearing a presentation by both parties. The presentation may be just documents submitted to the arbitrator by each side. More often, in addition to the documents submitted, each side will make an oral argument in person. Usually, each side will have an attorney to make the oral argument for them. Occasionally the presentation also includes witnesses who testify.
Advantages of Arbitration
There are numerous advantages to arbitration as a way to resolve a case.
The parties to the dispute usually agree on the arbitrator, so the arbitrator will be someone that both sides have confidence will be impartial and fair.
The dispute will normally be resolved much sooner, as a date for the arbitration can usually be obtained a lot faster than a court date.
Arbitration is usually a lot less expensive. Partly that is because the fee paid the arbitrator is a lot less than the expense of paying expert witnesses to come and testify at trial. (Most of the time the parties to arbitration split the arbitrator’s fee equally). There are also lower costs in preparing for the arbitration than there are in for preparing for a trial. Partly this is due to the fact that the rules of evidence are often more relaxed than in a trial, so that documents can be submitted in lieu of having a witness come to trial and testify.
Unlike a trial, arbitration is essentially a private procedure, so that if the parties desire privacy then the dispute and the resolution can be kept confidential.
If arbitration is binding, there are very limited opportunities for either side to appeal, so the arbitration will be the end of the dispute. That gives finality to the arbitration award that is not often present with a trial decision.
Disadvantages of Arbitration
If arbitration is binding, both sides give up their right to an appeal. That means there is no real opportunity to correct what one party may feel is an erroneous arbitration decision.
If the matter is complicated but the amount of money involved is modest, then the arbitrator’s fee may make arbitration uneconomical. It may be cheaper to try the case before a judge in General District Court, where medical evidence can be presented by affidavits instead of paying the doctor to testify. However, the amount that can be awarded in that court is currently limited to $15,000.00.
Rules of evidence may prevent some evidence from being considered by a judge or a jury, but an arbitrator may consider that evidence. Thus, an arbitrator’s decision may be based on information that a judge or jury would not consider at trial.
If certain information from a witness is presented by documents, then there is no opportunity to cross-examine the testimony of that witness.
Discovery may be more limited with arbitration. In litigation, Discovery is the process of requiring the opposing party or even a person or business entity who is not a party to the case to provide certain information or documents. As a result, many times arbitration is not agreed to until after the parties are already in litigation and discovery is completed. By that time, the opportunity to avoid costs by using arbitration may be diminished.
If arbitration is mandatory or required by a contract, then the parties do not have the flexibility to choose arbitration only when both parties agree. Mandatory arbitration allows one party to force the other party to use arbitration. In situations where the arbitrator is reliant on one party for repeat business, then the potential for abuse is present and the advantage of impartiality is lost.
Domain Dispute Attorney
When you need legal help from a Domain Name Dispute Attorney, Please call Ascent Law LLC for your free consultation (801) 676-5506. We want to help you.
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