Domain Name Dispute Attorney: Everything You Need to Know
A domain name dispute attorney specializes in protecting intellectual property by securing your domain name from misuse and fraudulent purposes.3 min read
2. Advantages of ICANN and UDRP
Updated November 27, 2020:
A domain name dispute attorney specializes in protecting intellectual property by securing your domain name from misuse and fraudulent purposes. If there is a suspected violation, the first step is to review what it will take for the offender to cease and desist from continuing the violations. An attorney is recommended to deal with this type of legal issue, and he or she should specialize in this niche area. This is a way to avoid or properly handle any attempts that are made to misappropriate your intellectual property.
When selecting an attorney, he or she should have experience with cybersquatting and know what legal steps need to be taken to protect domain names. If an understanding of emerging internet technologies is not their specialty, they are not the right attorney for you.
Cybersquatting is when a person attempts to make a profit by purchasing, using, or selling a domain name that belongs to the trademark of another person or company. This can be a name of the business or a product. The poacher will buy domain names related to the business name or trademarks with the intent to profit by selling the domains back to your company.
When this occurs, the business may experience a monetary loss if the website isn't accessible, even for a short time. If the name is just slightly different from yours, but the site directs the users to a website that sells similar products and services, the cybersquatter will most likely attempt to sell the domain to you for a sizable amount of money.
If this occurs, the Anti-Cybersquatting Consumer Protection Act (ACPA) is in place to provide a way for trademark owners to file suit in federal court. They can request a court-ordered domain name transfer, so the domain will be returned to the domain name's rightful owner. In certain situations, the cybersquatter will also be required to pay monetary damages. For this to happen, the following proof must exist:
- Bad faith with the intent to profit from the trademark.
- The trademark, at the time of registration, was clearly recognizable.
- The domain name in question is either identical or so similar to the trademark that it is difficult to distinguish.
- The trademark owner was the first to use the trademark in commerce.
ACPA doesn't always provide trademark owners a victory if the defendant can show there was no malicious intent to sell back the domain and that the domain name was purchased in good faith.
Advantages of ICANN and UDRP
Trademark owners may also attempt to arbitrate their case and have the domains transferred to them by working with ICANN, the Internet Corporation of Assigned Names and Numbers. Arbitration does not require litigation and eliminates the substantial costs that come with it. ICANN arbitration should be used and will be successful if the following elements can be proven:
- If the domain name is either identical or so similar to a trademark or service mark it causes confusion.
- The domain name owner has no rights or legitimate interests related to the domain name.
- The domain name is being used in bad faith and was registered.
In general, arbitration with ICANN is considerably cheaper than ending up in federal litigation. They are also significantly faster to resolve, with some cases taking as few as 60 days.
If a trademark is unregistered, it may be seen as a common law trademark. In this situation, you can use the common law trademark status to submit arbitration complaints to ICANN or federal ACPA. This type of case is common if a domain has been registered and it includes your business name or product name. If it can be proven there is unfair competition, you have a solid case for winning the arbitration.
Internationally, the policy to resolve disputes of domain names is referred to as the Uniform Domain-Name Dispute-Resolution Policy (UDRP). Under UDRP, financial claims may not be made but will be faster than litigation that comes with a federal court lawsuit, which can be seen as a financial bonus. This arbitration process, while not offering monetary damages, may result in the domain name being transferred to the rightful owner.
If you need help with obtaining a domain name dispute attorney, you can post your legal need on UpCounsel's marketplace. UpCounsel accepts only the top 5 percent of lawyers to its site. Lawyers on UpCounsel come from law schools such as Harvard Law and Yale Law and average 14 years of legal experience, including work with or on behalf of companies like Google, Menlo Ventures, and Airbnb.