Trademark Violation – Challenging a Domain Name
The protections afforded to a trademark owner are not limited to the owner’s business and brand. Those protections extend to the domain name for the website of your business. As a result, if you become aware of another business attempting to use your domain, or strikingly similar, domain, you may be able to file a formal dispute.
Domain Disputes on the Rise
It is becoming increasingly common for businesses to discover domains that are using their company information. In certain circumstances, a third party may have intentionally registered a domain using your business information in an attempt to simply profit from the domain. Basically, they register the domain in the hopes that you will find it and offer compensation in exchange for the third party selling you the domain rights. When this situation arises, trademark owners possess the right to take these domains from third parties engaging in “cybersquatting” (i.e. retaining a domain name in an effort to profit from it).
Domain Name Dispute Resolution Policy
When a domain name is registered, the Uniform Domain Name Dispute Resolution Policy (UDRP) is a mandatory arbitration process that must be utilized by the domain owner. The UDRP enables trademark registration owners to file complaints against domains that are improperly using their trademark. If the dispute is successfully resolved, the domain can then be transferred to the rightful trademark owner.
If you have reason to believe that someone is cybersquatting on a domain name that infringes on your registered trademark, you may be able to initiate legal action to obtain the rights to that domain. Here are some of the steps to file a domain dispute:
- You need to choose the service through which you will file a formal domain complaint (e.g., the World Intellectual Property Organization).
- Once selected, you will need to decide the number of panelists that will review the complaint.
- Pay the necessary filing fees. Please note that the fees for a UDRP complaint fluctuate depending on the resolution service selected and the number of panelists appointed.
Filing a Domain Complaint
A domain complaint typically features three key elements that you must prove in order to be successful:
- The trademark and domain are confusingly similar,
- Why the current domain holder has no rights in the domain, and
- The domain registration was done in bad faith.
Without these key points, the chances of the complainant’s success are slim.
When your complaint is filed with the arbitration service, an initial review will be conducted. The domain holder then has 20 days to file a response to your complaint. If they fail to respond, the panel will proceed with an evaluation of your complaint. If the domain holder does respond, the panel reviews the response and forwards its final decision regarding the matter to the arbitration service within 14 days. Overall, this process will take between 4-5 months to be resolved.
If your complaint prevails, the domain holder will be ordered to modify or release the domain name to you. If your complaint is not successful, the domain remains in the custody of the original registration owner.
Need Help with a Trademark, Copyright or Patent? Contact the Reputable Omni Legal Group Today
If you are concerned about a domain holder cybersquatting, it is imperative that you consult with an experienced and knowledgeable trademark lawyer as soon as possible. Omni Legal Group, is comprised of a highly respected legal team that can help you by conducting the necessary research and steps to protect your intellectual property. For further information or to schedule a consultation please contact Omni Legal Group at 310.276.6664 or visit www.OmniLegalGroup.com to learn more.