You’ve expended time, money, blood, sweat and tears branding your products and services.  You are finally ready to take the next logical step, setting up a web site to establish your presence on the Internet.  You set about to register your trademark as a domain name and you find that a trademark pirate has beaten you to the punch!  Not to worry, there is a fairly straight-forward remedy that is quick and less costly than traditional litigation.

When you or a third party registers a domain name, you certify that you are not infringing another’s trademark rights, and you agree, in the event of a dispute, to submit to ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP).  Under this policy, if a trademark holder determines that another party (the registrant) has registered the holder’s trademark as a domain name, it may file a complaint with either the World Intellectual Property Organization or the National Arbitration Forum.  Damages are limited to transfer or cancellation of the domain name.  The process typically takes less than 90 days from start to finish and deadlines are strictly enforced.

To prevail in an ICANN proceeding, the trademark holder has the burden of proving ALL of the following:

(a)  that it has valid trademark rights,
(b)  that the domain name is confusingly similar to its valid trademark,
(c)  that the registrant has no legitimate right or interest in the domain name,
(d)  that the registrant registered the domain name in bad faith AND
(e)  that the registrant is  using the domain name in bad faith.

A well drafted complaint is invaluable to the ability of a trademark holder to win transfer of the domain name and to then establish an online business presence- a vital part of marketing and sales in today’s consumer market.  If you need assistance in such a matter, please do not hesitate to contact us.

— Debra A. Logan, Esq.