Editor’s Note: Angela P. Doughty is a member of the Business Section and Intellectual Property Practice Group at Ward and Smith, P.A.

As a business owner, you recognize that intellectual property can be as valuable as your real estate and other tangible business assets. For this reason, you have invested a substantial amount of time, money, and resources into developing and creating a recognizable trademark. Consumers have come to identify your high quality goods and services with your trademark.

To further exploit your trademark, you have decided to register a domain encompassing your trademark to make it easier for consumers to find your business online. However, the registrar informs you that you will have to choose an alternate domain name because another individual or entity already has registered a domain with your trademark.

Is there anything you as the trademark owner can do to regain control of your trademark that is being used in a domain owned by someone else?

ICANN

In the late 1990s, the Internet was exploding, and the first-come, first-served basis on which domain names were, and are, assigned without regard to the intellectual property rights of third parties caused disputes between domain registrants and trademark owners.
These disputes prompted the U.S. Department of Commerce to develop the Internet Corporation for Assigned Names and Numbers ("ICANN"), a private-sector nonprofit organization tasked with regulating the registration of domain names (namely, those generic top-level domains ending in .com, .net, and .org).

ICANN is responsible for the management of the Internet domain name system. It coordinates the assignment of domain names and IP addresses. In order to improve domain name registration and dispute resolution, ICANN adopted the Uniform Dispute Resolution Policy (“UDRP”) which provides a mechanism for trademark owners to dispute the ownership of a domain name with the domain registrant and registrar.

UDRP Jurisdiction

ICANN has the authority to grant registrars the ability to register domains on behalf of applicants. One of the criteria for a registrar to become accredited through ICANN is to incorporate the standard ICANN provision into the registrar’s registration agreement. This ICANN provision requires the domain registrant to submit to all UDRP proceedings. Therefore, all registrants of generic top-level domains are subject to the UDRP by virtue of their registration agreements with their registrars and their applications to ICANN to maintain or renew a domain name registration.

UDRP Relief

Under the UDRP, trademark-based domain disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain. Therefore, in the event a trademark owner considers a domain name registration to be an infringement of the owner’s rights, the owner may try to reach an agreement with the domain registrant, file suit under the Anticybersquatting Consumer Protection Act, or initiate an arbitration proceeding under the UDRP.

There are many variables to consider when deciding which option is appropriate:

• Agreements between parties are typically the quickest and least expensive, but they may be hard to reach without the assistance of an impartial third party.

• Lawsuits tend to be expensive and lengthy, but they commonly provide for the greatest amount of relief, such as monetary damages.
• The UDRP generally provides a quick, relatively inexpensive option for resolving domain disputes via a neutral third party, but remedies are limited to the cancellation or transfer of the disputed domain.

These options are not exclusive of each other. Trademark owners first may attempt to reach an agreement with the domain name registrant, and, if no agreement can be reached, they then may commence a proceeding under the UDRP or file suit in court. Along the same lines, if a trademark owner loses under the UDRP, or uses the UDRP as a quick way to shut down the domain, the UDRP proceeding does not prevent the trademark owner from also proceeding with a lawsuit.

UDRP Process

A trademark owner (“Complainant”) may file a UDRP complaint (“Complaint”) with any ICANN-approved dispute resolution service provider ("Arbitrator") against the domain registrant of the domain the trademark owner believes infringes upon the owner’s trademark rights (“Respondent“).

The UDRP requires the Complainant to assert three elements in the Complaint: (1) the domain name is identical or confusingly similar to the Complainant’s trademark or service mark, (2) the domain name holder has no rights or legitimate interests in the domain name, and (3) the domain name has been registered and is being used in bad faith.

After the Complaint is filed, the Arbitrator performs a deficiency check to determine whether the Complaint complies with the requirements of the UDRP. If there are deficiencies, the Complainant will be provided the opportunity to correct them.
If there are no deficiencies, the proceeding will commence and the Arbitrator will forward a copy of the Complaint to the Respondent.

Upon receipt of the Complaint, the Respondent has 20 days to respond ("Response"). The Respondent can defeat the Complaint by showing that the Respondent has legitimate rights and interest in the domain. To do this, the Respondent must show: (1) a bona fide offering of goods or services, or demonstrable preparations to offer the goods or services, via the domain by the Respondent prior to any notice of dispute over the domain; (2) the Respondent is commonly known as the domain, even if the Respondent has not acquired any trademark or service mark rights; or (3) the Respondent is making legitimate, noncommercial, or fair use of the disputed domain.

Within five to 15 days after receiving the Response, the Arbitrator will appoint the arbitration panel ("Panel") based on the parties’ Complaint and Response. The Panel will review the Complaint and Response and will issue its decision within 14 days as to whether or not to cancel the domain or transfer the domain to the Complainant. Unless the parties pursue one of the alternate proceedings discussed above or reach some other agreement, the Panel’s decision is final and binding on the parties.

Summary

Without ICANN, the Internet would be like the lawless wild West. With well-defined dispute resolution procedures, ICANN can help trademark holders sleep easier knowing that there is a procedure in place to help protect one of their most valuable assets.

© 2008 Ward and Smith, P.A.

Ward and Smith, P.A. provides a multi-specialty approach to the representation of technology companies and their officers, directors, employees, and investors. Angela Doughty’s practice focuses on the representation of clients with intellectual property matters, including the preparation and filing of copyright and trademark applications; the design and use of trademarks; and the sale, transfer, and licensing of intellectual property rights. Comments or questions may be sent to apd@wardandsmith.com.

This article is not intended to give, and should not be relied upon for, legal advice in any particular circumstance or fact situation. No action should be taken in reliance upon the information contained in this article without obtaining the advice of an attorney.