Posted on Apr 22 by admin.

Domain Name Dispute Policies

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.

Among the ways that a domain name owner can prove a legitimate right or interest in a domain name is by showing:

use or preparations to use the domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute;

that the domain name owner has been commonly known by the second level domain name; or

that the domain name owner is making legitimate noncommercial or fair use of the domain name, without intent of (i) commercial gain, (ii) misleadingly diverting consumers, or (iii) tarnishing the trademark at issue.

A trademark owner can show that a domain name was registered and used in bad faith in a variety of ways, including but not limited to, showing that the domain name owner:

registered the name primarily for the purpose of selling or transferring the domain name to the trademark owner or a competitor of the trademark owner for a price greater than out of pocket costs;

engaged in a pattern of registering trademarks of others to prevent the use of the domain name by the trademark owner;

registered the domain name primarily to disrupt the business of a competitor; or

is attempting to attract users to a web site for commercial gain by creating a likelihood of confusion with the trademark owner's trademark.

However, please note that the UDRP from ICANN will only resolve ownership of the domain name and will not award damages or attorney fees. For access to those damages the aggrieved party must file a lawsuit under the Anticybersquatting Consumer Protection Act (ACPA) and Lanham Act or other similar law.

For more information regarding trademark or copyright please contact us directly.