Do you run a business that holds a trademark? Have
you gone to yourbusiness.com, only to find someone else has registered
the domain? If the domain is parked or is for sale, this may be what is known as
‘cybersquatting’.
Cybersquatting is where someone registers a domain
name they know is (or contains) a trademark, with the intent of selling it to
the trademark holder at an inflated price. Cybersquatting also includes any
other bad faith intent to profit from the use of a domain, containing a
trademark. There are practices similar to cybersquatting, such as typosquatting,
which is registering variants of popular trademarks or typos of trademarks
(hence the name).
So what can you do about it?
If you
believe the owner is cybersquatting on your trademark, you do have legal rights
to claim the domain from the registered owner. There are several methods of
launching a dispute against the owner; the most common is using the Uniform
Domain Name Resolution Policy (UDRP) process.
The UDRP process, often
referred to as WIPO (a popular arbitration service), was developed by the
Internet Corporation for Assigned Names and Numbers (ICANN). People generally
opt for the UDRP method, as it is usually quicker and less expensive than taking
the dispute to court.
If you are a smaller business and are not sure if
you can afford the UDRP service fees, you can first try contacting the domain
owner to purchase the domain. The issue with this approach is that the
cybersquatter will be profiting from sale, thus getting exactly what they
want.
Do I have a case?
When making a UDRP claim, you need
to demonstrate the following:
1. the domain name is identical or confusingly
similar to a trademark or service mark, to which you have rights; and
2.
the domain owner has no rights or legitimate interests in respect of the domain
name; and
3. the domain name has been registered and is being used in bad
faith.
You must be able to prove all three, otherwise you will loose the
case. If the domain is being parked and is a trademark you have rights to, then
you can prove 1 and 3, but 2 can often be more difficult. For example, if it is
the owner’s name or business name, the owner has a legitimate reason for owning
the domain.
If the domain is not parked, and the owner is trading using
the name and selling products, this may also make 3 difficult to
prove.
How a the UDRP process works
Firstly, the trademark
holder (known as the complainant) submits a claim to the UDRP arbitration
service, stating why they believe you hold the trademark and why the current
owner (known as the respondent ) is using the domain with bad faith intent. Fees
for this service are paid upfront, regardless of the outcome of the
claim.
Firstly, the complaintant fills out a UDRP claim against the
current owner (registrant). The arbitration service notifies the the complainant
and the respondant, that a UDRP claim has been filed. The registrar (domain
registration service) must lock the domain, so that it cannot be transferred or
modified by the owner, and also verify the owner’s details.
If the domain
owner fails to respond to the UDRP, generally they will default (lose). If the
complainant wins the claim, it is not transferred to them immediately. It will
typically be held for a 10 days, allowing the respondent a chance to pursue the
dispute in court. A court ruling can override a UDRP.
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