If another person or company has registered a domain name that consists of your trademark, you may be in a position to avail yourself of an effective administrative procedure called the Uniform Domain-Name Dispute Resolution Policy (often referred to as the “UDRP”). All registrars must follow the UDRP. Under this policy, most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name.
The UDRP is typically a 2-month procedure to be used against cybersquatters, the abusive registration of domain names that copy or play off of trademarks owned by other companies, and similar disputes.
A UDRP proceeding is initiated when the holder of trademark rights files a complaint with a dispute resolution service provider approved by ICANN (Internet Corporation for Assigned Names and Numbers). In order to succeed (a successful outcome being the panel ordering transfer of the domain name to the complainant), a 3-part test must be met:
- the respondent’s domain name is identical or confusingly similar to a TM or SM in which the complainant has rights;
- the respondent has no RIGHTS OR LEGITIMATE INTERESTS in respect to the domain name; and
- the respondent’s domain name has been REGISTERED and is being USED IN BAD FAITH.
The Respondent (the party that allegedly registered the domain name in bad faith) is deemed to have rights or legitimate interests in domain name if, before receiving notice of the dispute, it has used, or has made demonstrable preparations to use, the domain name or a name corresponding thereto in connection with a BONA FIDE offering of goods/services.
If you have any questions relating to trademarks, domain names, copyrights, trade secrets, or any other intellectual property issues, please call Darren Geliebter or Mathew Lombard at 212-551-1755.