A website is often a natural extension of a business’ offline presence. A domain name that reflects a business name or trademark serves as an important tool to attract customers and build brand recognition. As a result, domain name registration is typically part of a branding and marketing strategy.

Abusive registrations of domain names by third parties to monetize on the goodwill and recognition of a trademark can have a negative impact on the value of the reputation and goodwill associated with a trademark and business.

There are options available to businesses to help resolve such domain name disputes and acquire the domain name for their trademarks.

What is a Domain Name Dispute?

Domain name disputes occur when a trademark or service mark holder’s mark is registered as a domain name by another party to sell the same goods or services as a trademark rights holder or otherwise profit from the use of the trademark in bad faith. This is commonly referred to as cybersquatting.

If someone registers a domain name that is identical or confusingly similar to your trademark and begins to sell products identical to the ones sold under the trademark, it can cause customers to be confused into believing that the domain and products are associated with you.

Cybersquatters can purchase domain names that utilize your trademark and then offer to sell them to you for a higher price or use your trademark to attract others to their own website. 

How Are Domain Name Disputes Handled? 

While you may have the option to file a lawsuit to resolve a domain name dispute, a far more cost-effective and efficient way to proceed is a Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding. 

A UDRP proceeding is commenced by submitting a complaint with one of several organizations that provide this dispute resolution service, such as the World Intellectual Property Organization (WIPO). In the complaint, you can request that the domain name be canceled and/or transferred over to you, as the trademark holder. There are three main elements that need to be shown to be successful in a UDRP proceeding. When you file a complaint, you must demonstrate that:

1. You own the trademark
2. The domain name registrant has no rights or legitimate interests in the mark
3. The domain name registrant acted in bad faith. 

A one or three-member panel of independent panelists will be appointed by WIPO (or another dispute resolution service) to review the complaint and any response by the domain name registrant to issue a decision. 

Who Can Help With Domain Name Disputes? 

An intellectual property and trademark law attorney can provide you with information on domain name disputes, cybersquatting and help you navigate the UDRP process.

Timeline For Domain Name Disputes 

When there is ongoing harm to a business due to the use of a trademark in a domain name, time is of the essence.

A decision in a UDRP proceeding is typically received within about 60 days from the date the complaint is filed. If the decision includes a transfer of the domain name to the trademark owner, it may take a few additional weeks to complete the transfer process. The timeline for a UDRP proceeding is much quicker than a lawsuit, which involves more time and expense.

How to Avoid Domain Name Disputes 

There are some steps you can take to avoid domain name disputes and also help to enforce your rights if a dispute does arise.

If you own a trademark, obtaining a federal trademark registration can be very helpful in enforcing your rights against any type of infringement, including the use of your trademark in a domain name. We have detailed information on all aspects of trademark registration available here.

If you are looking to register a domain name, conducting a search to check if there are any existing uses of the same name as a trademark for a third party could alert you to any potential future risk of conflicts. Obtaining this information prior to registering a domain name can help avoid the time and expense of defending in a future challenge of your domain name registration.

Consult With a New York City Trademark Attorney

If you have a domain name dispute, have had a UDRP proceeding filed against you, or would like guidance on steps you can take to avoid these types of disputes in the future, please contact us.

Our attorneys are experienced in handling all types of intellectual property and trademark matters and can help you enforce, defend as well as prevent domain name disputes.