The importance of claiming and protecting domain names associated with your business cannot be overstated. Losing the rights to such domain names provides an opportunity for competitors to capitalize on your reputation and for those who want to hurt your business to reach your market. In fact, unscrupulous businesses and individuals often buy up domains associated with well-known personalities or businesses in hopes that the businesses or celebrities will be willing to pay what amounts to ransom for those domains. This practice is commonly known as “cybersquatting”.
Domain Name Dispute Resolution
There are multiple possible ways to address a domain name dispute, depending upon the generic top-level domain (gTLD), the nature of the dispute and the importance of the domain to the business. Some most common dispute resolution options are discussed below.
ICANN Domain Dispute Resolution Procedures
The Internet Corporation for Assigned Names and Numbers (ICANN) has established procedures for managing domain name disputes, the best-known of which is the Uniform Domain Name Dispute Resolution Policy (UDRP).
The UDRP provides for mandatory arbitration when a complaint claims that:
- The domain name is identical or confusingly similar to the complainant’s mark; and
- The registrant has no legitimate right to or interest in the domain name; and
- The domain name was registered and is being used in bad faith.
More recently, ICANN has established the Uniform Rapid Suspension System (URS). The URS system is more limited than UDRP and applies only to domains registered in 2013 or later, but offers a streamlined alternative for cases in which trademark abuse may be clearly established.
Unlike the UDRP, the URS offers protection only for marks that have been registered or otherwise legally established. Thus, the URS process is not appropriate for all claims.
The advantage offered by the URS process is that when a URS complaint is filed, the domain name registrar automatically freezes the domain. This must take place within 24 hours, and only after the domain is frozen does the domain name registrant receive notice and opportunity to respond.
In addition to the expedited process, the URS proceeding is less expensive than a UDRP proceeding. However, a successful URS complaint results only in the suspension of the domain, whereas UDRP arbitration may result in the transfer of the domain.
Determine Which Domain Name Protection Process is Right for You
There are multiple factors to consider in determining whether to pursue UDRP arbitration, file a URS complaint, or opt for federal civil litigation. Our experienced intellectual property attorneys can help you determine which approach is best suited to your claim and your goals.
Anticybersquatting Consumer Protection Act (ACPA)
The Anticybersquatting Consumer Protection Act (ACPA) was enacted to protect both consumers and businesses from the confusion that could be caused by bad faith registration of distinctive marks, and provides a federal civil cause of action for trademark owners.
In order to prevail under the ACPA, the claimant must demonstrate:
- That the claimant holds a mark that is distinctive or famous, though the mark may be established through common law usage; and
- The registrant’s domain is identical or confusingly similar to the mark; and
- The defendant registered, used or trafficked in the domain name in bad faith, and with the intent to profit from the claimant’s mark.
Pre-Emptive Domain Registration Strategies
Not long ago, it was common practice for a brand to purchase all domain names directly related to its trademark, even though only one of those domains was likely to be used. For example, Sally’s Cupcakes might have purchased SallysCupcakes.com for use as its main website, but also locked down SallysCupcakes.net and SallysCupcakes.biz.
With the number of top level domains increasing rapidly, it is increasingly difficult to pre-empt purchase of domain names that may be confused with an organization’s trade name as new options become available. However, that difficulty and expense must be weighed against the risks of bad faith use of those domains, particularly with top level domains like the recent .sucks option available.
An experienced intellectual property attorney can help you devise a strategy for protecting your trademark in the online arena, including domain name registration and defense.
KPPB’s Experienced Domain Name Attorneys are Here to Help
From pre-emptive action to prosecution of bad faith registration and use of infringing domain names, our experienced intellectual property attorneys are here to help. Your reputation and identity are key to the success of your business. Make the investment to protect them now, before problems arise. Contact KPPB LAW for more information.