Before filing a Complaint involving a domain name dispute, a complainant should be familiar with the rules governing domain name arbitrations. The Uniform Domain Name Dispute Resolution Policy ("UDRP") is a policy adopted by ICANN (Internet Corporation for Assigned Names and Numbers) and it provides a procedure for trademark owners to obtain domain names from "cybersquatters". Please click on the following link to view the Policy:
https://www.icann.org/resources/pages/policy-2012-02-25-en
Please click on the link below to view the Rules governing the arbitrations:
https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en
Lastly, a complainant should also review the provider's Supplemental Rules which are posted on the provider's website.
If a complainant prevails in the arbitration, the administrative panel will instruct the registrar of the domain name to cancel, transfer, or make changes to the domain name registration. If the complainant loses, the domain remains with the respondent and essentially the circumstances remain status quo. The arbitration rules do not allow money damages to be awarded.
A complainant can choose to initiate an arbitration with any one of the approved dispute resolution service providers: (1) World Intellectual Property Organization; (2) The National Arbitration Forum; (3) Asian Domain Name Dispute Resolution Centre; (4) The Czech Arbitration Court Arbitration Center For Internet Disputes; or (5) Arab Center For Domain Name Dispute Resolution. The complainant also chooses to designate between 1-3 administrative panelists. The filing fee paid to the provider will vary based on how many panelists are appointed.
The Rules (see the link above) set forth what is necessary to include in the Complaint and how to properly notify the Respondent. Typically the following method discharges the notification duty: (1) sending the Complaint via postal mail to the address listed in the Registrar's Whois database for the registered domain name holder, the technical contact, the administrative contact, and the contact for billing information and (2) sending the Complaint via email (assuming emails are provided in the Whois data base) to the same listed contacts, and if the domain name resolves to a website to any listed email addresses listed on the website.
The Complaint must specify three mandatory elements (1) the manner in which the trademark and domain name are identical or confusingly similar; (2) why the Respondent has no rights or legitimate interests in the domain name; and (3) the manner in which the domain name was registered and used in bad faith. All three of these elements must be proven for the Complainant to prevail.
Regarding the first mandatory element, if a complainant only has common law rights, a mark on the supplemental register, or a mark on the principal register and the entire literal portion of the mark is disclaimed, he may have to demonstrate acquired distinctiveness to satisfy the first element which is a standing requirement. If the mark is unregistered and descriptive then there will be a heavy burden to produce compelling evidence of secondary meaning. The analysis for identical features, comparing similarities between the domain name and the mark is similar to the evaluation for a 2(d) analysis for likelihood of confusion.
The second element will require the Complainant to make a prima facie case and then the burden shifts to the Respondent. To prove a legitimate interest in the domain name, a respondent can show that he or she or their business was known by the domain name, or before notice of the dispute the respondent was preparing to use the domain in connection with a bona fide offering of goods or services, or that the respondent is using the domain for noncommercial purposes that are considered fair use.
If a Complainant proves elements one and two, element three "bad faith" still must be demonstrated. The following list is not exhaustive, but any of the four circumstances will be considered evidence of bad faith: (1) the respondent acquired the domain primarily for the purpose of selling, renting, or transferring the domain to the complainant or a competitor of the complainant for consideration in excess of the amount paid when obtaining the domain; or (2) respondent registered the domain to prevent the trademark owner from purchasing it and there is a pattern of this type of conduct; (3) respondent registered the domain for the primary purpose of disrupting a competitor's business; or (4) respondent's use of the domain is for commercial gain and respondent intentionally attempted to attract Internet users to its website or other online location while simultaneously creating a likelihood of confusion with the complainant's mark.
If you wish to discuss a domain name dispute, please feel free to contact our office for a courtesy consultation or consult our blog post entitled, When Is It Appropriate To File A UDRP Complaint.