Domain names are a valuable commercial asset for many companies and an important element of their IP portfolios. However, protecting domain name rights requires knowledge of completely different enforcement systems, such as the WIPO UDRP, as Volha Parfenchyk explains.
Domain names that are based on or incorporate elements of the company’s registered trademarks make it easier for consumers to identify official websites, such as e-commerce sites. In this way, domain names further strengthen the relationship of trust between the consumers, the company and the goods and services the company provides.
Many companies seek to register domain names, therefore, that contain, fully or in part, their registered trademark. Unfortunately, they may find that the desired domain name has already been taken by a third party.
When is domain name registration infringement?
Prior registration of a domain name incorporating another company’s brand or trade name is not necessarily a case of trademark infringement, as domain names are registered on a ‘first-come, first-served’ basis. This means a brand owner who has registered that same trademark in a different market or for different goods or services may have simply got there first.
In other cases, the (earlier) registration of the domain name may be in conflict with law, as with cybersquatting, domain name parking, lookalike sites and other forms of domain name infringement.
How to challenge domain name registrations
What can a trademark owner do if they think the respective domain has been registered unlawfully by a third party? One of the most well-known and accessible procedures to solve disputes between a domain name owner and a trademark holder is the so-called Uniform Domain Name Dispute Resolution Policy (UDRP) administered by the World Intellectual Property Organization’s (WIPO) specialist Arbitration and Mediation Center.
Using the WIPO UDRP to solve domain name disputes
The WIPO UDRP administrative procedure was created to solve – often international – conflicts arising between a domain name registrant and a trademark holder. What makes this procedure particularly advantageous is its speed. Usually, the procedure usually lasts not more than two months, which is significantly shorter (and cheaper) than litigation at national courts.
The WIPO UDRP procedure is available for disputes in which a party (usually a trademark holder) claims an abusive (bad faith) registration of a domain name by another party. It is possible to challenge a domain name on these grounds if:
- a) the registered domain is identical or confusingly similar to a registered trademark; and
- b) the domain name proprietor has no rights or legitimate interests to the domain name; and
- c) the domain name has been registered and is being used in bad faith.
For the purposes of the UDRP, bad faith can mean, for instance, the registration of the domain name by the registrant exclusively to force the trademark holder to buy the respective domain name rather than to use it for their own (commercial) interests (i.e. cybersquatting). It can also be deemed to exist if the registrant is seeking to profit from, or free ride on, the well-known and reputed name of the trademark holder by registering a domain name with the same or confusingly similar trademark (e.g. passing off). Should the owner of the domain name wish to disturb or in any other way negatively influence the commercial practice of the trademark holder by registering the respective domain name, this can also lead to the conclusion of bad faith on the part of the domain name owner (e.g. domain name parking).
What domain names are subject to the WIPO UDRP?
The WIPO UDRP applies to two types of domain names. Firstly, the trademark owner can file a complaint against the registration of a domain name on one of the generic top level domains (gTLDs) that support this procedure, such as .com, .net, .org, .biz. Secondly, it is possible to file a complaint against a domain name in the country code level domains (ccTLDs) of countries that have adopted the UDRP.
This includes, among others, the domains .NL (Netherlands), .FR (France), and .CH (Switzerland). Other countries have equivalent policies, such as the Dispute Resolution Service (DRS) Policy administered by Nominet for .uk (United Kingdom).
How are disputes adjudicated?
UDRP disputes around domain names are adjudicated by an ad hoc panel convened by the WIPO Arbitration and Mediation Center. This panel consists of one or three independent and impartial experts in the area of domain names. The exact number of panel members depends on the preferences of the involved parties. The choice of experts is left to the WIPO Center, however, the preferences of the parties can be taken into account.
The fees depend on the number of domain names that are subject to the dispute and the number of members of the panel involved.
What can the panel decide?
The UDRP panel can decide in favour of the complainant (trademark owner) and order that the domain name be transferred to them or cancelled, or decide in favour of the domain name registrant.
Should any of the parties be unhappy with the result taken by the WIPO UDRP panel, they can submit the case to the national court of a competent jurisdiction. In this case, local laws shall be applicable to the case. It is also possible to submit the case to the national court before using the UDRP administrative procedure.
For more advice on domain names and how Novagraaf can support you with domain name monitoring, management and enforcement services, speak to your attorney or contact us below.
Volha Parfenchyk works in Novagraaf’s Knowledge Management department. She is based in Amsterdam.