Cybersquatting involves the registration, use, or sale of a domain name that is identical or confusingly similar to an existing trademark with the intention of profiting from it. Well-known trademarks and companies are frequently targeted by cybersquatters, requiring businesses to incur increased costs to monitor and enforce their trademark rights. A UDRP proceeding can be a cost-efficient and effective method of combatting cybersquatting.

What Is a UDRP Proceeding?

A Uniform Domain Name Dispute Resolution Policy (UDRP) complaint may be filed by a trademark owner who is involved in a domain name dispute.

Cybersquatters register a domain name that includes a party’s trademark solely to profit from the reputation and goodwill associated with the trademark. A UDRP complaint can be filed against cybersquatters to obtain remedies, including the transfer of the infringing domain name to the trademark owner.

When to Use UDRP to Combat Cybersquatting

To determine if a UDRP complaint should be filed in response to a cybersquatter’s actions, it is important to understand the elements of a UDRP complaint and the scope of remedies a favorable decision can provide.

Three Elements of a UDRP Complaint

There are 3 main elements that must be demonstrated in a UDRP complaint to be successful. 

1. The trademark owner must demonstrate that it owns the trademark and that the domain name in question is identical or confusingly similar to the trademark. 
2. The trademark owner must demonstrate that the domain name holder has no rights or legitimate interests in the trademark. It is important to ensure the domain name holder cannot demonstrate any valid rights or interests in the trademark themselves.
3. The trademark holder must demonstrate that the domain name holder acted in bad faith in using its trademark. Cybersquatters by definition are acting in bad faith, with an intent to profit off of another party’s trademark. They frequently purchase domains that incorporate third-party trademarks and then offer them for sale to trademark owners at a high cost. Evidence of bad faith can sometimes be found in the communications between the domain name holder and the trademark owner. For example, cybersquatters may send trademark owners emails offering to sell them the domain names for high prices. There may also be evidence that a particular cybersquatter has a pattern of registering domain names of well-known trademarks. A showing of bad faith is required. 

When Is UDRP Not Appropriate

A UDRP proceeding provides specific remedies to a dispute involving the use of a trademark in a domain name, where the three required elements can be sufficiently demonstrated. If a petitioner is successful, they may be able to cancel the domain name in dispute or have ownership of the domain name transferred to them. However, a UDRP proceeding cannot reward any monetary damages to the prevailing party.

If a trademark owner is involved in a domain name dispute with a third party that has a legitimate business interest in the trademark, a UDRP proceeding may not be the best approach because one of the elements of the proceeding may not be met. Similarly, if there is no bad faith on the part of the domain name registrant, a trademark owner may not be successful in a UDRP proceeding.

UDRP proceedings are solely decided based on written submissions by the parties. If a particular case is very complex and would benefit from more extensive review, other options for enforcement should be considered by trademark owners.

A New York City Trademark Attorney Can Help You

If you are a trademark owner dealing with a cybersquatter, filing a UDRP proceeding may be an efficient and expedient way to obtain a resolution. Our IP attorneys are experienced in handling all types of intellectual property and trademark matters, including UDRP matters. We can help you draft a UDRP complaint and offer guidance throughout the process. We can also provide guidance on best practices to help prevent cybersquatting in the future. Feel free to schedule a consultation with an IP attorney at our firm or give us a call at 212 520 7881.