A Trademark may be used within a domain name such as www.Pepsi.com or www.Kraft.com. If the use of the domain name incorporates a trademark of another, or if the web site content associated with the domain name unlawfully and illegally utilizes the trademark or service mark of another, the domain maybe transferred or cancelled under the rules of the Internet.
On October 24, 1999, the Internet Corporation for Assigned Names and Numbers (ICANN) adopted the Uniform Domain Name Dispute Resolution Policy (UDRP). ICANN is a nonprofit organization that has assumed the responsibility for IP address space allocation, protocol parameter assignment, domain name system management and root server system management functions previously performed under U.S. Government contract. The UDRP is part of the Registration Agreement that Internet users sign to register domain names in the global top-level domains. Trademark owners may elect to file a complaint under ICANN’s UDRP. The UDRP is a fast-track procedure under which a victorious trademark owner receives an order from an arbitration panel that the domain name be cancelled or transferred to the trademark owner.
Administrative Procedure for Disputes
The UDRP established an administrative procedure for speedy, low-cost resolution of a specific category of disputes: those arising from abusive, bad faith registrations of domain names. In such cases, which are commonly called “cybersquatting” cases, a holder of trademark rights initiates the administrative procedure by filing a complaint with an approved dispute-resolution service provider. The arbitration is performed by one of several international arbitration organizations, which the complainant may select. The arbitrators are not bound to follow any rules of evidence but must promise to treat the parties equally. The arbitration is designed to take less than two months. Parties remain free to litigate their dispute, and a remedy under the UDRP will not be implemented if a lawsuit is begun within 10 business days of an arbitrative determination.
Elements of a Complaint
In order to have the domain name transferred or cancelled, the trademark holder must establish the following:
that he or she has a legally recognized trademark in a name that is identical or confusingly similar to the domain name;
that the current registrant of the domain name has no legitimate rights in the name; and
that there has been some evidence of bad faith or abuse.
Evidence of Registration and Use in Bad Faith
The UDRP sets forth a nonexclusive list of “circumstances” that are evidence of registration and use in bad faith. The circumstances are as follows:
the domain name was acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name;
the domain name has been registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided the registrant has engaged in a pattern of such conduct;
the domain name has been registered primarily for the purpose of disrupting the business of a competitor of the registrant; or
by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, Internet users to the registrant’s Web site or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s web site or location or of a product or service on the registrant’s Web site or location.
Defenses to a Complaint Under the UDRP
The UDRP also sets forth a nonexclusive list of circumstances that, if any is proved, demonstrate a registrant’s rights or legitimate interests in a domain name that is the subject of a complaint under the UDRP. The circumstances are the following:
that before any notice to the registrant of the dispute, the registrant used, or can demonstrate preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
that the registrant has been commonly known by the domain name, even if the registrant has acquired no trademark or service mark rights; or
that the registrant is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Remedies under the UDRP are limited to cancellation or transfer of the domain name. Most complainants seek transfer as a remedy.
In disputes other than those arising from abusive, bad faith registration, the UDRP provides that they must be resolved by traditional means such as voluntary negotiation and lawsuits. Without a court order or consent of the registrant, a registrar will not cancel, suspend or transfer a domain name.