Many years ago we represented a Belgium chocolatier who had built a reputation for producing the finest chocolate in the world. But, as they soon found out, often the sweet taste of success is followed by the bitter realization that others will try and capitalize off of your hard work and dedication.
As fate would have it such misfortune was bestowed upon our client. Over a period of months they slowly noticed their online sales declining. First by a little. Then by more. It finally got to the point that they realized it was not simply a minor market fluctuation. Something was causing them to lose business, but what?
It did not take long to realize that their chief competitor had registered and was using a domain name that was confusingly similar to our client’s trademark. Even worse, search results on the Internet for our client brought up both our client’s web site as well as the competitor’s infringing site side-by-side.
This had to stop. They had to stop it. But what could they do? How could they stop their competitor from stealing their clients?
The answer was simple. They hired The Trademark Company to institute a domain name dispute against their competitor to force the transfer of the infringing domain name. The result? In less than 45 days we had secured the transfer of the domain name to our client allowing them to remove the infringing website from the Internet.
How? By instituting a domain name dispute under the Uniform Domain-Name Dispute-Resolution Policy or UDRP.
In short, the UDRP requires that all registrants of domain names submit to binding arbitration concerning the continued ownership of a domain name whenever a challenge to that ownership is brought by and through an authorized forum.
To establish a domain name dispute against a purported cyber squatter one generally needs to establish three elements:
1. Prior Trademark Rights: First, you must establish that you had rights in the alleged infringed trademark, either through a trademark registration or at common law (i.e., by having used the trademark in commerce), prior to the registration of the domain name at issue;
2. Confusingly Similar: Second, you must establish that the domain name that was registered is confusingly similar to the trademark in which you have prior rights. This element can typically be established if the domain name is similar to the trademark at issue (e.g., your trademark is WIDGET and the domain name is wydget.com) or incorporates the trademark at issue in the domain name even if additional matter is added thereto (e.g., your trademark is WIDGET and the domain name is floridawidget.com); and
3. Bad Faith: Third, you must establish that the registrant of the domain name registered and is using the domain name in bad faith. Originally, this was the easiest of the factors to establish. If the domain name was registered by a competitor bad faith would typically be found as a matter of course. However, recent decisions have tightened this requirement so that to establish this element one may need to show actual evidence of malicious intent on the part of the domain name registrant like an attempt to sell the domain name to the trademark owner for profit or that the domain name registrant has registered multiple other domain names that are confusingly similar to the registered trademarks of others.
If you can establish these elements, you generally should be successful in your domain name dispute.
One final note, two defenses that were originally considered lesser considerations to such claims have recently been gaining more widespread acceptance: Free Speech under the First Amendment to the U.S. Constitution and Legitimate Use.
In regard to Free Speech, if a domain name has been registered as an expression of an individual’s right to free speech (e.g., your trademark is WIDGET and a former disgruntled client of yours registers widgetstinks.com) such may be permissible under the First Amendment.
Likewise, if a domain name registrant establishes a legitimate interest in the domain name (e.g., although you have prior trademark rights they establish that they have been commonly known by the same name for years) this may be considered a viable defense.
Domain Name Disputes remain a powerful and cost-effective weapon in trademark owners’ arsenals to protect the online abuse of their brands. Although the remedy is limited to the transfer of the disputed domain name, in the Internet era that is often sufficient to end if not eliminate any negative ramifications to your trademark and businesses as a whole by and through another’s infringing use of a domain name that is confusingly similar to your trademark.