28 November 2015

Defending your Domain Name in the UDRP

Partial View of the Internet
Author The Opte Project
Source Wikipedia
Creative Commons Licence



























Whenever you apply to register, or to renew the registration of, a generic top level domain name such as one ending in ".com", ".org" or ".biz" you represent and warrant to the registrar that:
(a) the statements that you make in your agreement with the registrar are complete and accurate;
(b) the registration of the domain name will not to your knowledge, infringe upon or otherwise violate the rights of any third party;
(c) you are not registering the domain name for an unlawful purpose; and
(d) you will not knowingly use the domain name in violation of any applicable laws or regulations.
It is your responsibility and not the registrar's to determine whether your domain name registration infringes or violates someone else's rights.

What Rights might be violated or infringed?

These are usually registered trade marks and the rights to bring an action for passing off or equivalent cause of action in other legal systems. 

Trade marks do not exist in a vacuum but are registered with a national or intergovernmental trade marks registry for specified goods or services. The trade marks registry for the United Kingdom is the Intellectual Property Office in Newport. It is also possible to register a trade mark for the whole of the European Union at OHIM (the Office for Harmonization in the Internal Market) in Alicante. The US Patent and Trademark Office ("USPTO") is the trade marks registry for the United States of America. You can find the websites or other contact details of almost every trade marks registry in the world from the member states page of the World Intellectual Property Organization ("WIPO") the UN specialist agency for intellectual property.

In most countries of the world a trade mark is infringed if you use a sign that is the same or similar to a registered trade mark in respect of goods or services that are the same or similar to those for which the mark is registered. However, there are some marks that are so well known that their use in respect of any type of goods or services could amount to an infringement. Examples that spring to mind include Rolls Royce and Microsoft.

"Passing off" is misrepresenting one supplier's business or its goods or services as those of another by the use of the same or similar trade name, trade mark or other get-up. In some other countries it is called "unfair competition" or "concurrence déloyale" but it amounts to very much the same thing.  A complainant has to prove that he or she has goodwill or a reputation in the market place in relation to goods or services by reference to a trade mark, trade name or other other get-up, that someone has used or threatens to use a similar name, mark or get-up that has induced or is likely to induce the complainant's customers to do business with the other party in the mistaken belief that they are dealing with the complainant.

How to you find out whether you are infringing or violating the Rights of a Third Party

Most trade mark registries have searchable databases  that can be searched by members of the public. In addition, the WIPO keeps a database of trade marks that are registered or sought to be registered for more than one country. There is probably a duty to make a search of your own and perhaps other leading trade mark registries' databases. In respect of well-known marks or marks with a reputation you will probably know of them from everyday experience. 

It is important to stress that the registration of a domain name that is the same or similar to a registered trade mark is not necessarily an infringement or violation of a third party's rights. Some trade marks can be registered quite legitimately by different entities for different goods and services. Lloyds, for example, is the name of a clearing bank, a corporation of insurers and a chain of pharmacies in then UK. Each of those businesses is entitled to register a domain name that includes the name Lloyd.

What happens if you infringe or violate the Rights of a Third Party?

Clause 3 of your registration agreement reserves the right for the registrar to cancel, transfer or make changes to your domain name registration in certain circumstances. These include an order of a court or arbitrator or a decision of an administrative panel in an administrative proceeding under the UDRP (Uniform Domain-Name Dispute-Resolution Policy)

The UDRP

Paragraph 4 (a) of your registration agreement provides:
"Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure,
that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present."
A "mandatory administrative proceeding" is a form of alternative dispute resolution ("ADR") provided by one of five dispute resolution service providers. One of those service providers is the WIPO.  It is a documents only adjudication before one or three panellists who must decide whether the three elements listed above are present. If they find that they are they must order the cancellation of your domain name or its transfer to the complainant. Most of the panellists are intellectual property lawyers or patent and trade mark attorneys. You can find out more about the process from my Introduction to Domain Name Dispute Resolution 21 Nov 2015.

How will you know if you have to respond?

Some complainants or their lawyers or other representatives send letters before claim to intended respondents but for many the first inkling of a complaint will be a COMPLAINT TRANSMITTAL COVERSHEET similar to the one that can be downloaded here.  If you get one of these forms you must move very quickly for you have only 20 days in which to respond.

Essential Reading

If you are not familiar with the UDRP you should read the following documents carefully:
As I explained above there are five domain name dispute resolution service providers to which you can take your dispute and they all have their own rules of procedure which supplement the UDRP and the Rules. It is the complainant who chooses the service provider. Whichever service provider is chosen, you should also read the WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP), its Domain Name Dispute Resolution Resources and in particular its Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition ("WIPO Overview 2.0").

Two or three Member Panel

Unless the complainant has asked for the complaint to be decided by a 3 member panel you must consider whether you want the case to go before a single panellist or a 3 member panel.  If you choose a 3 member panel you are entitled to suggest 3 names on the dispute resolution service provider's list from which one will be chosen. On the other hand, you must bear one half the costs of the proceeding.  You do not have to pay anything if you are content for the case to go before a single panellist.

Completing your Response

Your response should be on the model form prescribed by the dispute resolution service provider. For example you can download WIPO's model response from the WIPO's UDRP Model Response and Filing Guidelines page or complete it on-line.

Your best chance of defeating a claim for the transfer or cancellation of your domain name lies in your showing that you have rights or legitimate interests in the domain name.  The best evidence of rights or legitimate interests is a trade mark registration anywhere in the world that is the same as, or similar to. the domain name. If you have a registration certificate you should produce a facsimile or at least a printout of the particulars of registration from the relevant trade marks registry. A corporate name that is the same or similar to the domain name is almost as good provided that you did not adopt the name after the dispute arose. The best evidence is your certificate of incorporation.

Paragraph 4 (c) of the UDRP lists a number of circumstances which if found to be present may show that you have rights or legitimate interests in the disputed domain name:
"(i) before any notice to you of the dispute, your use of, or demonstrable 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
(ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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."
If any of those  circumstances or if any similar circumstance applies, it is up to you to produce evidence of it. The complainant does not have to prove a negative. All he or she needs to do is to assert that the complainant never licensed or authorized you to register the domain name and that none of the circumstances in paragraph 4 (c) applies.

Complainants are assisted by paragraph 4 (b) which provides that the following circumstances shall be evidence of registration and use in bad faith:
"(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."
Such evidence is not conclusive and if you can rebut the evidence or explain the circumstances then you should do so.

You should be careful to avoid unnecessary citation and prolixity. Noting irritates a panellist more than having his or her time wasted and repetition and case references on obvious points are very annoying.

Challenging a Decision

If the decision goes against you then you may be able to suspend its implementation by launching proceedings in the courts of the jurisdiction to which the complainant has submitted. However, you have ti be quick because the registrar will wait only 10 business days before implementing the panel's decision. For advice on how to challenge a UDRP decision see my article How to challenge a UDRP Decision 25 Oct 2015.4-5 IP.

Conclusion

Should you wish to discuss this article or domain name disputes generally, he or she should call me on +44 (0)20 7404 5252 during office hours or message me through my contact form.

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