Internet eviction. Using the UDRP to launch cybersquatters | Jaburg Wilk
Cybersquatters often exploit brand owners by demanding a large payment for a domain name similar to the brand owner’s trademark. Cybersquatters can also benefit from redirecting Internet traffic to a brand owner’s website to compete with the brand owner, gain attention for different offerings, or disrupt their competitor’s business.
Brand owners have various options for dealing with cyber attackers. One of the most effective options is to use the Unformed Domain Name Resolution Policy (or “UDRP”), which is included in every domain name registration agreement. The UDRP is an alternative dispute resolution mechanism that allows parties to present arguments and evidence in very short proceedings, limiting the costs and time to a fraction of those incurred in a normal court process. But the UDRP is effective only in specific circumstances. This article addresses cases in which a trademark owner may consider using the UDRP and outlines the basics of UDRP proceedings.
The scope of UDRP proceedings is limited. It is not a forum for resolving typical trademark infringement claims. It’s not even a forum for resolving legal domain name disputes. It’s a fast-track method for dealing with specific cases of abusive cyberbullying.
To prevail in a UDRP action, a complainant must prove three elements:
First, the complainant must show that the domain name is confusingly similar to a trademark or service mark to which the complainant has rights. is a federally registered trademark prima facie proof of this element, which may be difficult to overcome in evidence in UDRP proceedings. An appellant may also rely on common law trademark rights, but sufficient evidence is required to prove such rights.
Secondly, the complainant must demonstrate that the domain name registrant has no rights or legal interest in the domain name. In other words, there can be no realistic dispute as to whether the registrant has a legal right to use the mark or domain name. If the domain name appears to be registered for the purpose of conducting a legitimate business, the registrant is in the clear, at least for purposes of UDRP proceedings (in which case, a lawsuit would be the appropriate forum to address the registrant’s infringing use of the domain name).
Thirdthe complainant must show that the domain name is registered and: used impolitely. It should be both. If a registrant acquires a domain name in good faith and only later starts using it in bad faith (when they see value in using the mark), it will not meet the requirements of the UDRP.
There are various scenarios that demonstrate unfriendliness under the UDRP. One such scenario involves when the registrant has registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complaining trademark owner. Notably, this does not include those in the business of buying and selling domain names. Another involves cases where the registrant has registered the domain name to prevent the appellant trademark owner from displaying the mark in the corresponding domain name if the registrant has engaged in such conduct. Another scenario involves when the registrar registered the domain name primarily with the intent of disrupting a competitor’s business. Another involves cases where the registrant has used the domain name in an attempt for commercial gain to attract Internet users to the registrant’s website, creating a likelihood of confusion with the complainant’s mark. This scenario is closest to trademark infringement, but evidence must show that the domain name was registered to trade on the goodwill of the complaining trademark owner, which can be challenging without disclosure. An example of this scenario would be when a registrant uses a domain name that clearly mimics a well-known mark while offering unrelated products or services (day., a misspelling of “Goldman Sachs” referring to an adult website).
The most common UDRP providers are The Forum (formerly known as the National Arbitration Forum) and the World Intellectual Property Organization (WIPO). The UDRP process begins with filing a complaint, detailing the relevant facts, and presenting supporting evidence. The registrant then files a response, attaching its evidence. There is no discovery, no hearing, no argument. UDRP proceedings are usually resolved by a single arbitrator, but either party may request that the case be heard by a three-member panel. Generally, the arbitrator/panel members will make a decision within 14 days of their appointment. Absent exceptional circumstances, all UDRP proceedings must be completed in less than 60 days.
The successful complainant may choose to cancel the subject domain name or cancel the domain name. Once a decision is made, the domain name registrar will implement the decision ten business days after receiving notice of the decision. The losing party can prevent the transfer and challenge the decision by filing a lawsuit within those ten days in federal district court, either in the location of the defendant or in the location of the domain name’s registrant or registry. Because it may be unclear where the defendant is located, or because the defendant is located outside the United States, it is common to file such lawsuits where the domain name’s registrant or registry is located. Federal courts in Arizona (home of several popular registrars such as GoDaddy and Namecheap) and Virginia (home of Verisign, the registry for most .com domain names) are frequent for such lawsuits.
With this abbreviated procedure, the UDRP offers a quick, cost-effective tool for brand owners to combat cyberattackers.