May 6, 2014 By: Jon Cohen, Attorney at Law
So much of modern advertising is impacted by the Internet that it’s natural there would be trademark problems relating to domain name choices. Among the methods of resolving the problem of someone else using your trademark or service mark in a domain name is the administrative remedy offered by the Uniform Domain Name Dispute Resolution Policy (commonly called the “UDRP”) promulgated by ICANN, the Internet Corporation for Assigned Names and Numbers.
The UDRP addresses disputes over domain names ending in all of the generic Top Level Domain extensions (e.g., “.com, .net, .biz, etc.). It is a part of every registration agreement between a domain registrant (the party that purchases a domain name) and a registry (the domain name provider) approved by ICANN.
Pursuant to the UDRP, an internet domain registrant is legally required to submit to an administrative proceeding if a third-party complains to the applicable dispute resolution “Provider” that the domain name obtained by the registrant infringes the third-party’s trademark. The third party must prove that
3. 3. The domain name has been registered and is being used in bad faith.
Let’s revisit the hypothetical “Elegance Interiors.” The owners of this trademark are now ready to create a website to advertise their goods and services on the Internet. However, they are chagrined to learn that “EleganceInteriors.com,” “EleganceInteriors.net,” “EleganceInteriors.biz,” and all of the possible variations that also contain the city name “Cincinnati” are owned by a company not engaged in interior design in any way. In essence, the owner company is squatting on the domains that contain the trademark “Elegance Interiors.”
In order to determine who owns the domains in question, the simple first step is to run a search on http://www.whois.us/ (hereafter, “WhoIs”; there is also a “WhoIs” search available on the ICANN site here). The possibility exists that the registrations may have been made privately by the domain purchasers by using a service such as Domains by Proxy (affiliated with GoDaddy). In a best-case scenario, the registrant of the offending domain names wouldn’t have bothered to get private registrations, but in the real world, that’s probably what would have happened. If the intention in purchasing the subject domain names was to cybersquat, it is likely that the registrations are private and therefore the only information disclosed by the WhoIs database is the name of and contact information for the domain registrar (e.g., GoDaddy).
As Michael S. Gunterdorfer noted in his excellent article, “Unmasking Private Domain Name Registrations,” (Los Angeles Lawyer, April 2006) the easiest method would be for the attorney representing Elegance Interiors to send a cease-and-desist letter to the domain registry whose information appears when the WhoIs search is run. By the terms of their own user agreements, domain registries will disclose the actual registrant when a claim of trademark infringement is brought to the registries’ attention.
Once the identity and contact information of the actual registrant are available, the next step would be the filing of a complaint with the applicable “Provider” as mentioned above, which in this case would be the National Arbitration Forum, since the dispute in our hypothetical is limited to parties in the United States. The NAF will assign an arbitrator or a panel of arbitrators to hear the case (depending on the election and fee paid by the complainant—a three-member panel costs twice what a single arbitrator does).
The arbitrator or panel reviews the parties’ complaint and response and may, in its discretion, consider other material submitted by the parties. Following its deliberation the arbitrator or panel will issue a decision pursuant to which the domain names would be conveyed to the complainant or would remain registered to the respondent. Given the facts of our hypothetical, the owners of the Elegance Interiors mark would prevail and obtain the domain names or at least have the respondent divested of them by the registry that issued them.
Aside from this administrative path to resolution of the problems caused by infringing domain names, there is also a legal one: an action asserting a cause of action under the Anticybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d). I’ll discuss the ACPA in a future post.