A trademark owner that believes it can prove a case of cybersquatting initiates a UDRP arbitration by filing a UDRP complaint with one of the following four organizations called a dispute resolution service provider:
Each Provider has forms and supplemental rules that apply to UDRP proceedings under its jurisdiction.
Like many questions in this area of the law the answer is, maybe. The party that filed the UDRP complaint and lost may bring a number of other legal actions against the domain name owner. For example, under the Anticybersquatting Consumer Protection Act (âACPAâ). In fact, if the trademark owner believes it has a strong case, it may sue the domain name owner under the ACPA seeking a court order to transfer the domain name to the trademark owner and monetary damages for trademark infringement. The result of the UDRP is that trademark owners have two chances to obtain a disputed domain name.
If the complaining party wins the arbitration (party challenging the registration), the winner will get an award from an administrative panel instructing the registrar of the domain name to cancel, transfer or otherwise make changes to domain name registration. If the domain name owner wins the arbitration, nothing happens. Note: Only the party that brings a UDRP action can benefit from it.
All owners and registrants of all .com, .net and .org domain names are subject to the Uniform Dispute Resolution Policy ("UDRP") by virtue of: (1) the registration agreements agreed to with their registrars at the time of acquiring their domain names, or (2) asking ICANN to maintain or renew a domain name registration.
ICANN is an acronym for the Internet Corporation for Assigned Names and Numbers, a private nonprofit organization. It was formed in October of 1998 by a coalition of internet business, technical, academic, and user communities. ICANN is responsible for the management of the Internet domain name system. It coordinates the assignment of internet domain names, IP address numbers and protocol parameter and port numbers. ICANN also is responsible for the stable operation of the internet's root server system.
What Is ICANNâs Uniform Domain Name Dispute Resolution Policy (UDRP)?
The Uniform Domain Name Dispute Resolution Policy (UDRP) is a policy adopted by ICANN that provides a mechanism for trademark owners to obtain domain names from "cybersquatters." All domain name registrars that have the power to grant .com, .net, and .org generic top level domains must follow the UDRP. The UDRP provides that before a domain name registrar will cancel, suspend, or transfer a domain name that is the subject of a trademark based dispute, it must have 1) an agreement signed by the parties, 2) a court order, or 3) an arbitration award. The UDRP created a streamlined "cyber arbitration" procedure to quickly resolve domain name ownership disputes...
The last case that has arisen recently regarding claims of trademark infringement based on an Internet domain name found the cutting-edge cyberspace magazine entitled Wired complaining about the domain name used by WIRE, a computer network devoted to women's issues. Wired used "wired.com" as its domain name; WIRE used "wire.net." Rather than litigating the issues, WIRE decided that as a start-up company it could not afford to engage in legal maneuvering and that it had to focus on its business instead. The parties settled with WIRE agreeing to change its name to Women's Wire and its domain name to "wwire.net." In return, Wired agreed to pay half the cost of the name change expenses, such as redoing online graphics and identity materials.
Although the Wired case never even advanced as far as a cease and desist letter, it does illustrate two interesting issues. The first is that Wired demanded that WIRE change not only its Internet domain name, but its business name too. Given the fairly close similarity between "wire" and "wired," requiring WIRE to also change its business name to WOMEN'S WIRE which helps to minimize, in the context in which these Internet addresses are used, any likelihood of confusion.
The second interesting...
A former MTV video jockey, Adam Curry, registered the Internet domain name "mtv.com" while working for MTV Networks ("MTVN"). Internet users connected to the "mtv.com" address could find the posting of "MTV's Top Ten Music List," outtakes from MTV Networks ("MTVN") programming, a printout of the text of a dialog between MTVN characters Beavis and Butt-head, and a giveaway of MTV-logo T-shirts to subscribers. Promptly after Curry's departure from MTV Networks, he was sued by MTV Networks for trademark infringement, among other things, because he refused to stop using the "mtv.com" Internet address. Although the court only addressed pre-trial motions before the case settled, two significant points may be deduced from the court's initial decision.
The first is that Curry never argued that the Internet was exempt from trademark law. Instead, Curry argued that the domain name "mtv.com" was not going to be used in a confusing manner. The issue, claimed Curry, was whether MTV Networks has "'some inherent right in mtv.com.'"
The second important point provided by the MTV Networks v. Curry court regarding how it might rule on the key issue succinctly stated by Curry, was located in a footnote, the court explains Internet domain names and...
Princeton Review, Inc. ("Princeton Review"), a test preparation service, obtained the domain name "kaplan.com," which contains the trademark of its commercial rival, Stanley H. Kaplan Educational Centers, Ltd. ("Kaplan"). In what is believed to be the first ruling on this issue, unanimous three person arbitration panel required Princeton Review to relinquish the "kaplan.com" domain name to Kaplan.
The first key fact is that the panel had to assume that Internet addresses can in fact act as trademarks. This is not surprising given the true nature of Internet addresses. Although the name "addresses" conjures up the post office addresses of real-world places, this is only part of the purpose of Internet addresses.
As summarized in the statements of the McDonald's pirate himself: "Domain names are to the Internet what addresses are to the Postal Service. They're more than that, really, since your domain name can tell the online world something about who you are. Domain names are kind of like postal addresses, vanity license plates and billboards, all rolled into one digital enchilada.â
The second key fact about the "kaplan.com" case confirms the ability of domain names to serve as trademarks. To quote the McDonald's pirate again:...
If you find yourself in a dispute over a domain name, the best alternative to pursuing the dispute through the courts is to take advantage of the domain name dispute policies that have been developed by ICANN.
Currently the preexisting non-court resolution policy has now been replaced with a Uniform Domain Name Dispute Resolution Policy created by ICANN and used by all accredited registrars. Under this new policy, a trademark owner can initiate a relatively inexpensive administrative procedure to challenge the existing domain name. In order to prevail, the trademark owner must show:
1. that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
2. that the party that registered the domain name has no legitimate right or interest in the domain name; and
3. that the domain name was registered and used in bad faith.
If the trademark owner successfully proves all three points in the administrative proceeding, then the domain name can either be cancelled or transferred to the prevailing trademark owner. If the trademark owner fails to prove one of these points, the administrative panel will not cancel nor transfer the domain name.
When a dispute occurs over a domain name, such as those described in earlier articles, the parties can always turn to the courts. While courts and judges have the authority to award control and ownership over domain names (just as they have authority to award control and ownership over any other property), the judicial process is slow and costly. Consequently, many parties seek to avoid the courts and turn to the domain name dispute policies of the domain name registrars. Refer to later articles for additional information regarding these policies.
Companies that bring a court action must present valid legal arguments on why a domain name registered to someone else should be canceled or transferred to an organization who wasn't quick enough to register the name first.
These arguments have been traditionally based on trademark law or dilution law (which are discussed in other articles on the TMRoe.com website). It has been difficult to present a strong case under the traditional principals of trademark law, especially when the party seeking to obtain a domain name either could not prove a likelihood of confusion (which is required under trademark law) or was a famous individual who never technically established trademark rights in...