What do you do when someone challenges your right to use your Internet domain? How about a situation in which someone has registered a domain incorporating your trademark? Can the UDRP be utilized to assist?

Using the Internet to augment the reach of your business to new customers and markets can sometimes feel like being in the Wild, Wild West. Competitors infringe upon one another; masquerade as dissatisfied customers; and engage in all sorts of less-than-honorable means of overwhelming the competition. Sometimes this takes the form of one business usurping another’s domain name. Is there a legal remedy?

The Role of the UDRP in Resolving Disputes Over Domain Names

Fortunately, there is such a remedy, and it usually does not involve going to court (sigh of relief). ICANN (Internet Corporation for Assigned Names and Numbers) is an international organization that likewise serves an international governing body overseeing domain name registrations. It provides accreditation to both domain name registrars (those companies that seek to issue and sell domain names) as well as dispute resolution service providers.

In 1999, ICANN adopted its UDRP (Uniform Domain Name Dispute Resolution Policy). This policy generally reflects the “rules of the road” for domain name registrations. All accredited domain registrars are required to abide by this policy and require that their consumers (those entities or persons who are buying the domain name) likewise agree to the terms and conditions of the UDRP.

Among other things, by agreeing to the UDRP, a consumer represents that the potential domain name

• is being registered in good faith;
• does not infringe upon another’s rights;
• is being obtained by a consumer that agrees to subject themselves to the UDRP process if there is a dispute.

WIPO, which stands for the World Intellectual Property Organization, was the first dispute resolution service provider to be accredited by ICAAN and is the leading provider of these services. WIPO sits separate and apart from the judicial systems of individual countries. For example, it is feasible that an infringer could both (a) improperly register a domain name incorporating Company X’s trademark and (b) sell counterfeit products on a website that infringes upon Company X’s trademark and/or copyrights. The former infringement would be subject to WIPO’s enforcement of the UDRP protocols, but the latter infringement would not. Instead, it would generally be left to the judicial system to adjudicate that dispute under the intellectual property laws of the specific jurisdiction(s) involved.

The main takeaway is that ICAAN’s reach—and WIPO’s application of the UDRP process—is largely limited to the registration and ownership of certain domain names. Indeed, WIPO generally does not have any authority to grant financial awards or “damages”; its sole role is to evaluate the proper ownership of a domain name and effectuate its cancellation or transfer based upon those findings.

On the other hand, there are many ways in which individual countries’ intellectual property laws may be in confluence with the ICAAN and WIPO rules and regulations. For instance, the primary standard upon which WIPO arbitrators will evaluate a claim of infringement is (a) whether or not the registrant bought and registered a domain name that is “identical or confusingly similar to” the complainant’s trademark, and (b) if that was done in bad faith. If the complainant has secured a trademark under United States law (or the law of the country in which it is using the mark), that can strengthen its legal position with WIPO.

WIPO Does Not Protect Certain Domain Names

One of the interesting twists is that the types of domain names that are protected are generally “top level” ones. The typical example is gTLD (Generic Top-Level Domains) extensions. These are ones that we encounter every day, e.g. .com, .org, .net and so forth.

WIPO handles the overwhelming majority of domain disputes. However, there are some exceptions. For example it does not have jurisdiction over certain country code top-level domains, e.g. extensions that relate to the country in which the person or business is located. An example would be domain names ending with .us (which obviously would apply to the United States). These country code top-level domains are often (but not always) overseen by independent governing bodies. The dispute resolution process for .us domain names, for example, is governed by an overarching procedure dubbed the usDRP. While it significantly parallels the standards, processes and procedures established by WIPO respecting enforcement of the UDRP, they are distinct.

The Nissenbaum Law Group’s Legal Services Regarding Domain Disputes

The Nissenbaum Law Group provides legal representation in a variety of areas concerning disputes between businesses relating to the use of domains in commerce. This includes

• WIPO arbitrations through the UDRP;
• .US arbitrations through the usDRP;
• legally evaluating competing claims to the same domain name;
• litigating trademark disputes in the United States federal court system;
• analyzing the intersection of United States trademark law with WIPO protocols;
• addressing the relationship of cyber-squatting to general domain name infringement claims; and
• participating in mediation relating to infringement disputes.

Please Contact Us if You Need Help

Please contact the Nissenbaum Law Group to schedule an appointment at 908-686-8000 or feel free to use the form to e-mail us. Kindly include as much information as possible to ensure that we are able to handle your request as quickly as possible.