Domain Name Dispute Settlement
In the internet era, domain names are increasingly becoming a crucial conveyance of brand messages and brand image. Domain names are granted on a ‘first come, first served’ basis, and the registration is inexpensive and convenient. Rampant domain name squatting and website counterfeits have given rise to domain name disputes now and then.
The dispute of domain name is a conflict that arises when more than one individual or group believes that they have the right to register a particular domain name. Most frequently, a domain name dispute would arise when a domain name comparable to a registered trademark is registered by an individual or association who or that is not the trademark holder. All domain name registrars must follow the ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP).
Uniform Domain Name Dispute Resolution Mechanism
Uniform domain name dispute resolution mechanism is carried out according to the Uniform Domain Name Dispute Resolution Policy and its supporting implementation rules. Article 4(a) of the policy allows the complainant to demand the transfer or cancellation of the controversial domain name if the complainant can prove that the following three conditions are met:
- The controversial domain name is the same as or misleadingly resembling the trademark or logo first enjoyed by the complainant;
- The respondent does not enjoy the rights and interests related to the controversial domain name; and
- The domain name is registered or used maliciously.
The respondent in the dispute is entitled to a plea. Article 4(c) of the policy lays downsome conditions under which the respondent enjoys rights or legitimate interests in the controversial domain name, including, but not limited to:
- The respondent has been using the controversial domain name, or the corresponding name, for honest goods or services;
- Although without trademark or service logo, the respondent is widely known for the controversial domain name; and
- The domain name is being used legally or reasonably, not for profit, and without the intent of misleading.
In practice, the respondent might also be a trademark squatter, countering the complainant on the plea that the trademark is a legitimate right.
Requirements to Initiate Action under UDRP
(1) Identical to or confusingly similar: The domain that is in question must be identical to or confusingly similar to a name, trademark, or service mark in which you have rights. Note that this can cover unregistered trademarks such as names of well-known personalities.
(2) No legitimate rights or interests: The registrant must not have any legitimate right or interest of his own in the questioned domain name. Legitimate use is roughly when the domain name is being used (or planned to be used) in connection with a bona fide offering of goods and services before the registrant of the trademark is aware of such a dispute.
Lawful distributors or licensees have been said to have legitimate rights, with unlawful users or those claiming to be an authorized site not having legitimate interests. Other tricky domains concerning legitimate interests are fan sites for celebs. These are usually considered to be legitimate except the ones that are being used for commercial advantage.
(3) Bad faith: The rival domain must have been registered and used in bad faith. Both these essentials of bad faith must be established. The UDRP has set out a non-exhaustive list of what constitutes bad faith. These consist of redirecting users to other websites by creating an opportunity for confusion; if the registrant has several domains registered (a means of demanding money from the party that would be interested in the domain name and demanding excess money for it); passive holding of a domain was held to establish bad faith if the impression that the domain was being open for sale was given and boards are progressively concluding that the domains are being held for sale; offering to sell the domain on an auction site has been interpreted as being in bad faith. However, occasionally, the fact that a registrant has offered to trade the domain by auction or accepted to negotiate a price when communicated about the dispute does not by itself establish bad faith for UDRP – being difficult to interact with or untraceable has been interpreted as bad faith.
An appellant in a UDRP proceeding must establish the following three elements to succeed:
- The domain name is indistinguishable or confusingly similar to a trademark or service mark in which the appellant has rights;
- The registrant does not have rights or legitimate interests in the domain name;
- The domain name has been registered and is being used in ‘bad faith.’
In a UDRP proceeding, a board will consider numerous non-exclusive aspects to assess bad faith, such as:
- Whether the registrant registered the domain name mainly for selling, leasing, or otherwise handing over the domain name registration to the appellant who is the holder of the trademark or service mark;
- Whether the registrant registered the domain name to avoid the owner of the trademark or service mark from imitating the mark in a corresponding domain name, if the domain name holder has involved in an arrangement of such conduct;
- Whether the registrant registered the domain name chiefly to disturb the business of an opponent;
- Whether by using the domain name, the registrant has deliberately attempted to draw, for commercial improvement, internet operators to the registrant’s website by generating a probability of confusion with the plaintiff’s mark.
The objective of the UDRP is to create an efficient process for the resolution of such disputes. It was intended that this process should be faster and more economical than a typical lawful challenge. The costs to hire a UDRP supplier to handle a complaint are between US$1,000 to 2,000.
If a party loses a UDRP proceeding, in many jurisdictions, it may still get a claim against the domain name registrant under local law. If the registrant of a domain name loses a UDRP proceeding, he or she must file a complaint against the trademark owner within ten days to avoid ICANN from transferring the domain name.
Due to the expansion of business over the internet, it has become exceedingly crucial to safeguard the trademark of a business on the internet. Domain name disputes have evolved like internet Trademark Infringement. At the same time, it has become easier to identify trademark infringement over the internet for the proprietors of the trademark rather than identifying physical infringement as the website can be accessed across the globe. UDRP enables the complainant to obtain a favorable decision in a short amount of time. It is not only reinforcement for the confidence of the rights owner but also a practical and effective way to battle the infringers. ✅ For more visit: https://www.kashishipr.com/