This is the second part of a series on trademark and cybersquatting. In the first part, I wrote about the Trademark Clearing House, an essential resource for trademark owners who want to protect their interests. Today I am writing about the Uniform Domain Name Resolution Policy, also known as UDRP.
The UDRP was established in 1999 by ICANN, the nonprofit organization that oversees the internet’s domain name system. UDRP is a system for resolving disputes about domain name registrations. It applies to all generic top-level domains, some country code top-level domains, and some legacy top-level domains.
When someone registers a domain name, he also represents and warrants that the domain name will not infringe upon or violate the rights of a third party, and agrees to submit to arbitration if a third party does bring a claim. The party bringing an infringement claim has to establish three things:
- That the domain name is identical or confusingly similar to a trademark that he has rights to;
- That the registrant does not have any rights or legitimate interests in the domain name; and
- The domain name has been registered and is being used in bad faith.
In the UDRP proceeding, the panel will look at a variety of factors to determine bad faith:
- Did the person register the domain name primarily for the purpose of selling or renting the domain name registration to the trademark owner?
- Did the person register the domain name to prevent the trademark owner from using the trademark in a corresponding domain name, and has the domain name owner engaged in a pattern of such conduct; and
- Whether the person registered the domain name primarily for the purpose of disrupting the business of a competitor; or
- Whether by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant’s website, by creating a likelihood of confusion with the trademark owner’s mark.
If a party loses a UDRP proceeding, it can still challenge it in court, under the Anti-Cybersquatting Consumer Protection Act. However, if the domain name registrant loses the UDRP proceeding, it must file a lawsuit within 10 days to avoid having the domain name transferred to the other party.
In upcoming posts, I will write about the Uniform Rapid Suspension system (URS) and the Donuts Domain Protected Marks List (DPML). At that point, I will be out of acronyms, and will move on to something else. Thanks for reading!
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