When two parties have a dispute over who has the right to a particular domain name, the domain name trademarkdispute is usually submitted to an Arbitrator under the Uniform Dispute Resolution Policy (UDRP). The UDRP was established by ICANN, the International Corporation for Assigned Names and Numbers in 1999.
ICANN then authorized various organizations to administer the Domain Name arbitration program, notably the World Intellectual Property Organization (WIPO) in Geneva, Switzerland, and the National Arbitration Forum (NAF) in Minneapolis.
When a Trademark holder believes it has the right to a certain domain name that has been registered by someone else, it can file a UDRP Complaint with WIPO, NAF or one of the other administrative bodies. In order to prevail against the domain name and trademarkholder in the dispute, the Complainant must show:
1. The disputed domain name is identical or confusingly similar to Complainant’s trademark;
2. The domain name registrant has no rights or legitimate interests in the domain name; and
3. The domain name holder registered AND used the domain name in bad faith.
Usually, the Complainant will meet the first requirement by providing evidence of a Trademark registration, but there are other ways to show rights in a trademark. For the second requirement, the Complainant must make a case that the Respondent has no right to use the domain name; this is partly accomplished by citing the “WHOIS” record, showing that the Respondent’s name is not related to the domain name.
The Complainant usually states that the Respondent is not affiliated or licensed by the Complainant to use its trademark. The Respondent must then come forward and show how it does have a legitimate interest in the domain name. Unfortunately, in the vast majority of the cases filed, the domain name registrant does not respond at all to the Complaint.
In cases where the Respondent does file a Response, it must show that it has made a bona fide offer of goods or services using the domain name, or has an intention to do so. It can also demonstrate that it is making a legitimate noncommercial or “fair use” of the trademark.
Finally in a domain name trademark dispute, the Complainant has to show that the Respondent registered and used the domain name in bad faith, which entails a showing that the Respondent intended to benefit from the use of Complainant’s trademark. The Complainant argues that the Respondent is making money of the traffic being redirected from Complainant to Respondent and/or is trying to sell the domain name to the Trademark owner for an excessive cost.
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Tags: disputes, domain name, trademark
