Domain name disputes arise when a website’s domain name potentially infringes someone’s intellectual property rights. This happens most often when a trademark appears in a URL without authorization. One type of proceeding under the Uniform Domain Name Dispute Resolution Policy can resolve such disputes. Attorney Tom Galvani represents both trademark owners and domain name registrants in these proceedings.
Domain Names and Trademarks
A trademark is a word, term, phrase, or slogan which represents your company, products, or services.
Certain federal and state laws protect trademarks. This protection gives the trademark owner the ability to prevent others from using a similar mark for similar products or services. Unfortunately, standard trademark law does not clearly prevent the use of trademarks in domain names.
Nevertheless, there are laws and procedures which are specifically useful when a URL uses a trademark without authorization.
The Anticybersquatting Consumer Protection Act is one set of laws which protect trademarks in domain names. The ACPA creates a cause of action for registering, selling, or using a domain name which is confusingly similar to a trademark or a person’s name. Unfortunately, enforcement requires filing a lawsuit, and so the ACPA can be prohibitively expensive for many trademark owners.
Another procedure for resolving a domain name dispute is an arbitration under the Uniform Domain Dispute Resolution Policy of the Internet Corporation for Assigned Names and Numbers (ICANN). This is usually less expensive and faster than an ACPA lawsuit.
Domain Name Disputes under ICANN and the UDRP
ICANN is the entity which helps ensure the Internet works. It coordinates the use of domain names among registrar companies. Its purpose is to keep the Internet secure, stable, and interoperable.
When someone registers a domain name, they agree to ICANN’s standardized rules. Some of those rules are procedures for an administrative dispute resolution program – the Uniform Domain Dispute Resolution Policy or UDRP. Everyone who purchases a domain name agrees that they will submit to arbitration to resolve trademark issues in domain name disputes.
When you register a domain name, you acknowledge that the domain does not infringe someone’s trademark rights, and you agree to arbitrate a domain name dispute in the event that someone thinks it does.
A trademark owner who finds someone using their trademark without authorization in a URL can initiate a domain name dispute by filing a UDRP complaint. The complaint must identify basic information about the trademark owner and the domain name registrant. It must also set forth three elements:
- The domain name is identical or confusingly similar to someone else’s trademark
- The domain name registrant has not rights or legitimate interests in the domain name
- The domain name was registered in bad faith
There are a few administrative bodies which can receive and review a UDRP complaint. The filing fees are different depending on which body you select and what kind of panel you request to review the UDRP complaint. Generally, fees are between $1,000 and $10,000, with most single-trademark complaints sitting at the low end of that range.
Once the UDRP complaint is filed, the domain name registrant has a 20-day window to respond. If the registrant responds, it presents an argument to rebut the complaint. Often times, however, the registrant does not respond.
Once the 20-day response period has passed, a panel is appointed, which may include one or several panelists. The panel decides the arbitration.
The panel substantively weighs the arguments and facts in the UDRP complaint and the response brief, if the registrant filed one. Even if the registrant did not respond, the panel will still substantively review the complaint and rule on it. In other words, a registrant’s failure to respond does not automatically mean the trademark owner wins.
If the panel decides in favor of the trademark owner, it notifies the parties, ICANN, and the applicable registrar. Typically, this means the registrar will cancel the domain name or transfer it to the trademark owner. Money damages are not available under the UDRP.
Domain Name Disputes Attorney
Tom Galvani provides UDRP and domain name dispute services for both trademark owners and domain name registrants. He can advise you on a course of action if you discover someone is using your trademark in their URL or if you receive a notification that a UDRP complaint has been filed against you. Tom has worked in trademark and Internet law since 2009 and uses that experience to guide strategy when clients face cybersquatting and domain name issues. Tom is skilled not just in UDRP policy and rules and but also in the nuances of trademark law; he leverages this to present incisive argument supported by reliable and proven evidence.
If you need assistance from a domain name dispute attorney, feel free to contact Tom Galvani. While most of the firm’s patent and trademark clients are based in the US, Tom can represent clients anywhere in the world on UDRP issues.