As of 2018, 339.8 million domain names have been registered worldwide.[1]

Of those 339.8 million domain names, 3,452 were involved in UDRP (Uniform Domain-Name Dispute Resolution Policy) cybersquatting disputes handled by the WIPO (World Intellectual Property Organization) in 2018 alone, a number that continues to increase year after year.[2]

 

How domain names are regulated

All domain names must be registered through a registrar (e.g., GoDaddy.com LLC), an organization that manages the registration of domain names.[3] These registrars are bound by the UDRP of the Internet Corporation for Assigned Names and Numbers (“ICANN”), a nonprofit organization that is responsible for overseeing the procedures and maintenance of databases of the Internet.[4]

ICANN adopted the UDRP in 1999 to provide a mechanism to resolve cybersquatting disputes.[5] Cybersquatting is the bad faith registration of another’s trademark in a domain name, such as registering a domain with the primary purpose of selling the domain name to a competitor of the trademark owner.[6]

 

Resolving cybersquatting disputes

Under “the Rules” for the UDRP, a certified designated service provider may appoint administrative panelists to resolve cybersquatting disputes.[7] WIPO was the first approved dispute resolution service provider and “the Forum” was the second approved provider.[8] A list of designated service providers can be found on ICANN’s website.[9] The Rules, along with the service provider supplemental rules, govern the administrative proceedings of cybersquatting disputes; such rules give ICANN the power to either transfer or cancel the disputed domain name in accordance with the panelist’s decisions.[10]

In order to enjoin a cybersquatter’s use of a trademark, a trademark owner (“the Complainant”) commences an administrative pleading by filing a complaint with one of ICANN’s designated service providers. The Complainant must prove the following in his/her complaint in order for the Panel to return a favorable decision:

  1. The manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights
  2. Why the Respondent (domain-name holder/cybersquatter) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/ are the subject of the complaint
  3. Why the domain name(s) should be considered as having been registered and being used in bad faith.[11]

 

Proving “bad faith”

The last element, registration and use in bad faith, has become one of the most difficult elements to prove. The Rules list four circumstances which shall be evidence of registration and use of a domain name in bad faith. However, such circumstances can be very fact-specific.[12] Factors such as the nature of the domain name and the distinctiveness of the trademark are just a few factors that are relevant to a Panelist’s inquiry.[13] Other findings which have supported Panelists’ findings of registration and use in bad faith include:

  • Respondent’s knowledge of complainant’s trademark rights
  • A pattern of abusive registrations by Respondent
  • Threats to sell to a third party
  • Hiring a domain broker to sell for an amount in excess of Respondent’s out-of-pocket costs directly relating to the domain name[14]
  • Displaying copyrighted images on the domain name’s website which belong to Complainant.[15]

However, even if a Complainant proves one of the above-listed circumstances, Panelists have found that such evidence, taken alone, is not enough to support a finding of bad faith in registration and use of the disputed domain name. Therefore, it is recommended that Complainants submit extensive evidence in their complaint in order to sufficiently support a finding of bad faith, and thereby enjoin the cybersquatter’s use of the domain name.[16]

Suiter Swantz IP is a full-service intellectual property law firm providing client-centric patent, trademark, and copyright services. If you need assistance with a cybersquatting or intellectual property matter and would like to speak with one of our attorneys, please contact us at info@suiter.com.

 

Elizabeth Foley is a technical advisor and law clerk with Suiter Swantz IP. She received her B.S. in Chemistry and a minor in Business Administration from Creighton University.

Elizabeth currently attends Creighton University School of Law and is expected to receive her Juris Doctor in May 2020.

 

 

 


[1] Internet Grows to 339.8 Million Domain Name Registrations in the Second Quarter of 2018 (August 16, 2018)

[2] WIPO Domain Name Dispute Resolution Statistics
(January 22, 2018)

[3] Domain name Registrar (August 9, 2018)

[4] Domain name (August 9, 2018)

[5] Timeline for the Formulation and Implementation of the Uniform Domain-Name Dispute-Resolution Policy (August 9, 2018)

[6] About Cybersquatting (August 9, 2018)

[7] Rules for Uniform Domain Name Dispute Resolution Policy (August 9, 2018)

[8] Timeline for the Formulation and Implementation of the Uniform Domain-Name Dispute-Resolution Policy (August 9, 2018)

[9] List of Approved Dispute Resolution Service Providers (August 9, 2018)

[10] Rules for Uniform Domain Name Dispute Policy (August 9, 2018)

[11] Id.

[12] Id.

[13] WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (August 9, 2018)

[14] See Mediacom Communications Corp. v. Kim Yung Jung, Case No. 14 WL38965 (July 2014).

[15] J. Crew International, Inc. v. Susanna Manukyan, WIPO Case No. D2018-1245 (July 2018).

[16] WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (August 9, 2018)