Protect Your Trademark from Cybersquatters

04/30/2015 by Attorney Jane D. Tucker

Authored by attorney Jane Tucker 

What can you do if someone is using your trademark as a domain name without any legitimate rights to that name (i.e. a cybersquatter)?

Filing suit for trademark infringement can be impractical (for example, registrant is in a foreign country) and/or cost-prohibitive (trademark infringement litigation, whether in U.S. or in a foreign country, can be expensive).

As an alternative, you can take advantage of the international arbitration system created by the Internet Corporation of Assigned Names and Numbers (ICANN).  Currently there are two arbitration procedures available to trademark owners who seek to stop a cybersquatter:

1.  Uniform Domain Name Dispute Resolution Policy (UDNDRP)
Under UDNDRP an action can be brought by any person who complains (referred to the “complainant”) that:

  • a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  • the domain name owner has no rights or legitimate interests in the domain name; and
  • the domain name has been registered and is being used in bad faith.

All of these elements must be established in order for the complainant to prevail.  If the complainant prevails, the domain name will be canceled or transferred to the complainant.

The fees charged by the arbitrator for a UDNDRP proceeding are generally between $1300 and $2600.

2. Uniform Rapid Suspension System (URS)
URS offers a lower-cost and faster path to relief for trademark owners who have a clear case of trademark infringement where there are no disputed questions of material fact.  It is available for claims against domain name registrants in one of the new generic top level domains (gTLD) created after June 2011.  These are those domains created by registrants with their own invented suffixes, such as .lawyer, .tech, .youtube, etc.  This procedure is not available for domain names registered on the .com, .net and .org gTLD’s.

The main requirements are the same as for a proceeding under UDNRP.  The complainant must show that:

  • a domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  • the domain name owner has no rights or legitimate interests in the domain name; and
  • the domain name has been registered and is being used in bad faith.

If the complainant prevails, the domain name will be suspended for the remainder of the registration period.  Unlike with the UDNDRP, the domain name will not be cancelled or transferred to the complainant.

The fees charged by the arbitrator for a URS proceeding are generally between $300 and $500.

If you have any questions about the above, or any other related matters, please contact Jane Tucker at jtucker@vanblk.com or by phone at 757.446.8625.

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