Different ways for a trademark owner to claim back a domain name (gTLD)

22/01/2014 16:29

If you are a trademark owner, and you find that someone else has registered a domain name identical or confusingly similar to your own trademark, you may consider filing a domain name dispute before a special arbitration centre (or before a regular court).

 

Uniform Domain-Name Dispute Resolution Policy (UDRP) for domain name disputes

 

UDRP (short for Uniform Domain-Name Dispute Resolution Policy) is the adequate dispute resolution scheme for the so-called “generic top-level domains” (gTLDs). These domains include the following domains: .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .post, .pro, .tel, and .travel.

 

Under the UDRP policy, trademark-based domain name disputes must be resolved either by agreement between the parties, by court action or by arbitration, before a registrar can cancel, suspend or transfer the domain name.  In case of an – allegedly – abusive registration of a domain name (for instance, a case of cybersquatting), the holder of the trademark may file a complaint with an approved dispute-resolution service provider (this is a special arbitration centre, approved by ICANN[1]; see below for more details).  In other cases (for instance, there is no abusive registration or some other rules of the UDRP are not satisfied), a court action or an amicable settlement will be a more proper way to settle the domain name dispute.

 

When deciding the case on an allegedly abusive registration of a domain name, the dispute-resolution service provider must follow the UDRP rules that are backed by ICANN. You can find a full copy of the UDRP rules here. Note however that each dispute-resolution service provider may supplement the ICANN UDRP rules with its own rules (but in case of conflict, the ICANN UDRP rules will prevail).

 

Main aspects of UDRP domain name dispute resolution

 

An UDRP arbitration procedure for domain name disputes is generally preferred over a regular court case, because of the speed and effectiveness of the UDRP procedure. Also, the costs related to an UDRP procedure are relatively low. However, note that not all complaints will be successful in a UDRP procedure, and that in some cases, a regular court procedure or an amicable settlement may be the preferred method to obtain a transfer or cancellation of a disputed domain name (see below).

 

Under the UDRP rules, an independent arbitrator (sometimes called a ‘panellist’) or a number of different arbitrators will decide on the domain name dispute. Only complaints based on a trademark will be successfull (if the complaint is based on a prior tradename, company name, family name, etc., the complaint will not be successfull). The arbitrator(s) will reach a decision after a close examination of the three main elements of the ICANN UDRP rules, as listed below. Note that all three elements must be satisfied together before a domain name can be cancelled or transferred to the complainant. The claim will be denied if one or more of the three elements are not satisfied. The three elements that need to be established by the complainant are:

 

§  The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

§  The person or company that holds the domain name has no rights or legitimate interests in the domain name; and

§  The domain name has been registered and is being used in bad faith.

 

In other words, if one of the above elements is not present (for instance, the arbitrator finds that the holder of the domain name also has some rights in the domain name, e.g. based on a trademark registration in a different country), the complaint will be denied and the domain name will not be cancelled or transferred to the complainant. It may be that in such cases, a complainant will have greater chance of success in a regular court case, but that ultimately depends on the specific rules for each country.

 

As concerns the last element (bad faith), the arbitrator(s) may consider several factors to assess bad faith, including the following factors:

·       Whether the holder of the domain name registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark; or

·       Whether the holder of the domain name registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, if the domain name owner has engaged in a pattern of such conduct; or

·       Whether the holder of the domain name registered the domain name primarily for the purpose of disrupting the business of a competitor; or

·       Whether the holder of the domain name has intentionally attempted to attract, for commercial gain, internet users to his or her own website, by creating a likelihood of confusion with the complainant's trademark.

 

Remedies available: cancellation or transfer of the domain name

 

The remedies available to a complainant are the cancellation of the domain name registration or the transfer of the domain name registration to the complainant. Compensation for damages or costs (such as lawyers’ fees) are not part of the UDRP policy and rules. You should start a legal procedure before a regular court if you want to obtain compensation for damages or costs.

 

Different dispute-resolution providers

 

UDRP dispute processes for gTLD domain names (such as .com names) are not based on jurisdiction or location of the parties. This means that you can submit your complaint to a dispute-resolution service provider anywhere in the world. The following dispute-resolution service providers have been approved by ICANN. In other words, if you have a complaint about an abusive registration of a domain name, you can submit your complaint to any of the following organisations.

 

WIPO Arbitration and Mediation Center

 

WIPO (WIPO Arbitration and Mediation Center): This arbitration and mediation centre of the “World Intellectual Property Organisation” provides UDRP dispute resolution services for the following gTLD domain names: .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and .travel.

 

The WIPO Arbitration and Mediation Center also provides domain name dispute resolution services for 69 country code Top-Level Domains (ccTLDs). These include the following domain names; .ae (United Arab Emirates), .am (Armenia), .au (Australia), .bo (Bolivia), .br (Brazil), .ch (Switzerland), .co (Colombia), .cy (Cyprus), .ec (Ecuador), .es (Spain), .fr (France), .ie (Ireland), .ir (Iran), .ma (Morocco), .mx (Mexico), .nl (the Netherlands), .pa (Panama), .pe (Peru), .ph (Philippines), .pk (Pakistan), .pl (Poland), .pr (Puerto Rico), .qa (Qatar), .ro (Romania), and .ve (Venezuela).[2]

 

Finally, the WIPO Arbitration and Mediation Center provides domain name dispute resolution services for a number of third-level domain name registrations (under the so called “CentralNic Dispute Resolution Policy”).[3]

 

For an overview of the fees that apply to domain name disputes administered by WIPO, see here.

 

Czech Arbitration Court

 

Czech Arbitration Court (Arbitration Center for Internet Disputes): This centre of the Czech Arbitration Court provides UDRP alternative dispute resolution services for disputes relating to the following gTLDs: .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel, .travel and .xxx. In addition, this centre also handles disputes related to .co.nl, .co.no and .sx domains (also on the basis of UDRP rules).

 

Note that the Czech Arbitration Court also provides dispute resolution services for .eu domain names. These disputes are decided on the basis of ADR rules, not UDRP rules (ADR rules are a different set of alternative dispute resolution rules). For more information on .eu domain name disputes, see here (website of the Czech Arbitration Court), or see my previous blog post.

 

For an overview of fees relating to gTLD domain names handled by the Czech Arbitration Court on the basis of UDRP, see here. For an overview of fees relating to .eu domain name disputes handled by the Czech Arbitration Court on the basis of ADR, see here.

 

National Arbitration Forum

 

National Arbitration Forum: The US-based National Arbitration Forum is accredited to administer disputes arising from the registration of gTLDs and a couple of other domains. For instance, the National Arbitration Forum administers disputes with regard to the following domains on the basis of an UDRP policy: .aero, .asia, .biz, .cat, .cc, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel, .travel, .tv, .web and .ws.  The National Arbitration Forum also administers disputes with regard to .us domain names (on the basis of usDRP or usNDP rules). The National Arbitration Forum uses various other alternative dispute resolution policies and rules for yet other domain name disputes (such as .xxx, .pro, .agent, .arts, .chat, .church, .game, .inc, .kids, .law, .llc, .love, .ltd, .med, .mp3, .school, .scifi, .shop, .sport, .tech, and .video).

 

For an overview of fees for domain name disputes administered by the National Arbitration Forum, see here.

 

Asian Domain Name Dispute Resolution Centre

 

Asian Domain Name Dispute Resolution Centre: The Asian Domain Name Dispute Resolution Centre (ADNDRC), with offices in Hong Kong, Beijing, Seoul and Kuala Lumpur, handles domain name disputes based on the UDRP (disputes with regard to gTLDs such as .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel, .travel and .tv domains) and a couple of other policies and rules.

 

The ADNDRC was first established by the China International Economic and Trade Arbitration Commission (CIETAC) and the Hong Kong International Arbitration Centre (HKIAC). CIETAC also handles .cn (China) domain name disputes. HKIAC also handles .cn (China) domain name disputes, as well as .hk (Hong Kong), and .ph (Philippines) domain names. Later on, the Korean Internet Address Dispute Resolution Committee (KIDRC) and the Kuala Lumpur Regional Centre for Arbitration (KLRCA) also joined ADNDRC. KIDRC also handles .kr (South-Korea) domain names. KLRCA also administers .my (Malaysia) domain name disputes.

 

For an overview of the fees related to UDRP disputes handled by the ADNDRC with regard to gTLDs domain names, see here.

 

Arab Center for Domain Name Dispute Resolution

 

In 2013, ICANN approved the Arab Center for Domain Name Dispute Resolution (ACDR) as a new UDRP dispute resolution service provider. It is anticipated that the ACDR will open its doors somewhere in the beginning of 2014. The ACDR is a dispute resolution organization jointly established by the Arab Intellectual Property Mediation and Arbitration Society (AIPMAS) and the Arab Society for Intellectual Property (ASIP). The ACDR will be established in Amman, Jordan, and will have competence to administer complaints with regard to the different gTLDs used worldwide. As soon as the ACDR becomes active, we will provide you with more information on its working.

 

 

For more information on .eu domain name disputes (handled by the Czech Arbitration Court based on ADR rules), see my previous blog post on “How to claim back a .eu domain name?”.

 

For more information on .be (Belgian) domain name disputes (handled by Cepani on the basis of ADR rules), see my previous blog post on “Domain name disputes in Belgium: how to claim back a ‘.be’ domain name?”.

 

 

Do not hesitate to contact me for more information.

Author: Bart Van Besien

Finnian & Columba

Belgium

bart@finnian.be

 

Attorney – Lawyer – Brussels – Belgium – European Union (E.U.)

Specialisation in intellectual property law (copyright, trademarks, patents, domain names, etc.) and media law.



[1] The Internet Corporation for Assigned Names and Numbers.

[2] See here for a full list.

[3] More specifically for the following domains: ".ae.org", ".africa.com", ".ar.com", ".br.com", ".cn.com", ".de.com", ".eu.com", ".gb.com", ".gb.net", ".gr.com", ".hu.com", ".hu.net",".jp.net", ".jpn.com", ".kr.com", ".mex.com", ".no.com", ".qc.com", ".ru.com", ".sa.com", ".se.com", ".se.net", ".uk.com", ".uk.net", ".us.com", ".us.org", ".uy.com", and ".za.com". 

 

Contact

Bart Van Besien Finnian & Columba
K. De Deckerstraat 20A
2800 Mechelen, Belgium

+32 486 626 355
+32 15 29 42 57
bart@finnian.be