Legal Matters: Keep It in Your Domain
It’s important to note, however, that some so-called country code top-level domains — like .ca (Canada) and .cn (China) — don’t participate in the UDRP process. These domains are governed by rules established by national registrars in the various countries, and those jurisdictions have different rules and standards for recovering domain names.
Plead Your Case
Of the two procedures — federal court litigation and the UDRP procedure — the UDRP is far more frequently used because of the modest cost and relative ease of administration. A trademark owner may initiate a UDRP by filing a petition with one of several private dispute resolution service providers. The petition filed by the trademark owner must establish three elements:
- First, the trademark owner must demonstrate that the domain name is identical to, or confusingly similar to, a trademark in which the complaining party has rights. Common misspellings or typographical errors are typically sufficient to satisfy this requirement.
- Second, the trademark owner must prove the cybersquatter has no legitimate rights to the trademark. Lack of use of the domain name, offering the domain for sale or the use of the domain in connection with a competitive service is usually sufficient to satisfy
- Third, the trademark owner must show that the domain name was registered and is being used in bad faith. Typical examples of bad faith registration include use of the domain name for fraudulent purposes, such as click fraud or to direct traffic to a competing Web site.
UDRP proceedings typically take place through electronic submission of documents (i.e., no in-person hearing) and may involve a single arbitrator or a panel of three arbitrators.
Fees differ among the various service providers, ranging from $1,500 to $7,500 depending upon the number of domain names at issue and the number of arbitrators. A successful UDRP proceeding results in the transfer of the domain name to the trademark owner.