When your brand is on the line we can fight for your rights. When you trademark is being hijacked by a cybersquatter, we’ve got your back and we can help you in a UDRP domain name arbitration proceeding.
One of the biggest problem facing corporations today in all fields of business is internet domain name disputes. With the global expansion of domain names, the internet universe is opening wide, and registrants of domain names are battling it out against trademark owners over internet domain names such as:
1. Domain names dealing with company names that are federally registered trademarks (for example, trademarks that have been registered with the USPTO)
2. Domain names that incorporate trademarked company products (ex. product names that have trademarks, whether federally registered or common law trademark rights)
3. Domain names that incorporate company service marks (service marks can be registered as trademarks)
4. Domain names that incorporate corporate slogans that have been federally registered as a trademark or which has common law trademark rights.
5. Domain names that incorporate personal names and nicknames that are protected by trademark rights
The are the kinds of domain names that cybersquatters are purchasing with the hopes of selling them in bad faith to the owners of the trademark.
While you have to applaud the entrepreneurialism of those buying, registering and selling the domain, you also have to look at the “bad faith aspects” of registering marks of the trademark owners in an attempt to hold the domain hostage and forcing you to buy these domain, often through the use of a “domain name broker” who will also want a commission to help you obtain the domain name which you feel you might be rightly entitled to as a matter of law.
Welcome to the world of domain name disputes and this is what usually triggers a domain name complaint and UDRP proceeding (which is basically on online arbitration to a WIPO domain name arbitrator, or in front of the National Arbitration Forum.
What you need to prove to get your domain from a cybersquatter through the UDRP complaint process.
The complainant in a UDRP domain name dispute needs to prove THREE THINGS:
1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The party filing a UDRP arbitration with WIPO or National Arbitration Forum has the burden to show they have trademark rights. Trademark rights can be show by:
(a) showing “common law” trademark rights – basically rights you have in using your trademark in commerce even though you don’t have a federally registered trademark, or
(b) showing a valid federal trademark registration.
If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights. The only remaining question is whether the domain name is identical or confusingly similar to complainant’s trademark. F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629.
2. The trademark holder needs to show that the domain name registered by the cybersquatter who has no legitimate interest in the domain.
The Complainant bears the general burden of proof under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests in the domain. See: Neusiedler Aktiengesellschaft v. Kulkarni, WIPO Case No. D2000-1769; see also Dow Jones & Company and Dow Jones LP v. The Hephzibah Intro-Net Project Limited, WIPO Case No. D2000-0704.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) using the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii). Accor v. Eren Atesmen, WIPO Case No. D2009-0701.
3. The complainant needs to show the domain name registrant registered and is being used the domain in bad faith.
The domain name arbitration panel may consider several different types of factors to consider whether or not there was bad faith in registering the domain name. For example, a complainant’s strong trademark, respondent’s lack of evidence of good faith use, and respondent’s attempt to conceal its identity are indicators of bad faith.Telstra Corporation Limited v. Nuclear Marshmallows D2000-0003.
Registering a domain name primarily to disrupt a competitor’s business constitutes evidence of bad faith. In Bragg v. Condon (plasticdocshop.com, cosmeticdocshop.com) FA0092528, the respondent registered two domain names using a competitor’s trademark soon after learning of the competitor’s confidential business strategy; and in Easyjet Airline Company Ltd v. Steggles (easyjet.net) D2000-0024, the respondent’s web site used the disputed domain name to link to two of the complainant’s competitors.
A domain holder may act in bad faith if its primary intent was to sell the domain name to the trademark owner or one of its competitors for a price in excess of out-of-pocket expenses related to the name. See UDRP 4(b)(i). In addition, in Mondich v. Brown (americanvintage.com) D2000-0004, the Panel determined that simple failure to make good faith use of the domain name indicated that the respondent’s primary intent was to sell.
These are just some factors that might be considered. There are others.
Do I have a right to skip the UDRP and sue for a federal trademark infringement?
Yes, but this will be much more time consuming and costly. It is quicker and much less expensive to hire a UDRP law firm to file a domain name dispute arbitration than it is to pursue a federal trademark infringement action, or a ACPA lawsuit (Anti-Cybersquatting Consumer Protection Act).
What is the ACPA?
As articulated in DSPT Intern., Inc. v. Nahum (9th Cir. 2010) 624 F.3d 1213, 1218-19:
Contact a Domain Dispute Attorney
When you feel that you may the victim of cybersquatting, user-squatting (person who is registering user names that infringe your trademarks) or typo squatting (misspelling domains that capitalize on your trademark and divert traffic to the cyber-squatters website) you should contact an internet domain name lawyer. We can help you decide whether to file a federal lawsuit alleging trademark infringement or a violation of the ACPA, or to simply move forward with the more efficient UDRP arbitration process.
We can help you prove the registrant of the domain name registered the domain in bad faith and for the sole purpose and with the intent take advantage of your brand and trademarks. If the WIPO arbitration panel agrees, we can seek to order the registrar to transfer the domain back to you. If we decide to pursue federal trademark or ACPA litigation we will seek all monetary and equitable remedies available. We also defend UDRP and Federal Trademark actions.
Call one of our litigation attorneys today at (877) 276-5084 or fill out the form below. We offer low flat rate fees for UDRP arbitration cases. We look forward to working with you.