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The right way to Navigate Area Identify Disputes

January
27, 2021

9 min read

The opinions expressed by the entrepreneur's contributors are their own.

Domain names have a special characteristic: prices can range from the typical $ X99 per year deals offered by registrars that are still available in the market to staggering amounts for coveted addresses usually run by businesses Those who understand well their value and price them accordingly.

The value of these titles results from the commonality of their words and the reputation that such or similar monikers have earned. The domain's human reputation (how users perceive the title) and algorithmic reputation (how search engines value it) take time, money, and hard work.

Reputable name owners are right to be concerned about similar names as they can ruin their own brand's reputation. The availability of online options is steadily declining and disputes inevitably arise between owners of similar domain names.

The sheriff of the internet

All domain names under top-level domain suffixes are well regulated by the Internet Corporation for Assigned Names and Numbers (ICANN). By registering a top-level domain name, you accept the authority of ICANN and abide by its rules and in particular the UDRP (Uniform Domain Name Dispute Resolution Policy).

The UDRP comes into effect when it is believed that a third party domain is violating their rights. In this case, the UDRP allows the rights holder to take action against the allegedly infringing name by initiating administrative proceedings. If successful, this action can lead to the deletion of the disputed domain, its transfer to the complainant or to the change of the title in another way.

Domain name rights versus trademark rights

A closer look at the UDRP shows that the options for URL embossing are closely related to trademark rights. Domain name rights don't exist without underlying trademark rights, and for good reason. Only the possession of legally acquired trademark rights allows third parties to be barred from using one's trade name (or something similar). A trademark owner does not need to register a domain name as his trademark is sufficient to exercise rights under the UDRP.

However, domain names are not like any other use of a trademark. Trademarks are registered for certain classes of goods or services, and their scope is limited to those goods or services. In contrast, domain name rights are broader in that they allow a trademark owner to take action against similar domain names even if they are used to sell goods or services outside of their trademark protection.

This anomaly is offset by the additional elements of UDRP that must be demonstrated in the trademark owner's, appellant, proceedings and that are not required in standard trademark infringement proceedings.

Related: Now you can register domain names for less than $ 1 a year

Three steps to success

The first element required to substantiate the grounds for a UDRP administrative proceeding is to show that the domain name is confusingly similar to the complainant's trademark.

Similar to the trademark laws in most industrialized countries (which are members of the TRIPS Agreement), the trademark law requirement in the UDRP is not only met by a registered trademark, but also by an unregistered well-known trademark. This theoretically enables an owner of a reputable domain name to establish his rights without registering a trademark if he can demonstrate that "his trademark has become a unique identifier that consumers associate with the complainant's goods and / or services" , according to the world panel view of the Intellectual Property Organization (WIPO) on selected UDRP issues.

The second element that needs to be demonstrated is that the respondent or owner of the disputed domain name has no rights or legitimate interests in relation to the domain name, while the third element is that the disputed title was maliciously registered.

This should raise an important question: why would a trademark owner want to use the UDRP administrative process against an infringing domain name instead of simply filing a trademark infringement lawsuit in which they only need to demonstrate the first of the three elements of the process?

The answer lies in several key advantages that UDRP proceedings have over trademark infringement proceedings.

Highway to Domain Justice Zone

UDRP procedures are far simpler: while legal proceedings are a cumbersome affair – with a review of documents, filing of evidence and expert opinions, court hearings, hearing of witnesses, and summation issues to consider – UDRP procedures consist merely of each party submitting their arguments and evidence immediately, on the basis of which the body assigned to the procedure makes its decision.

Second, UDRP litigation is significantly faster than its trademark infringement counterpart. The latter can take up to several years, while UDRP investigations are carried out under strict deadlines, resulting in a decision being made far less than two months after the complaint is filed.

Third, these methods are also significantly cheaper. The filing fees are only $ 1,500 for a one-person panel procedure (or $ 4,000 for a three-person panel), and since all of the legal work required comes down to creating a comprehensive document with all the arguments and evidence on it, it's only a fraction the legal fees required to conduct a full legal process.

UDRP procedures allow any party to appoint an attorney from anywhere in the world, eliminating the need for intermediaries and greatly expanding the variety of attorneys suitable for representation.

In addition, there are no travel expenses or lost work because the procedure is carried out remotely without oral hearings and cross-checks. In addition, the complainant can choose in which of the six ICANN qualified courts the proceedings will take place, and the parties can even choose the members of the panel who would hear the case. Beyond that, no further action needs to be taken to enforce decisions. ICANN will automatically cancel, transfer or change a domain name based on a decision made in a UDRP process.

Related: 4 Tips On How To Bring Your Stationary Store To The Online Realm

To UDRP or not to UDRP …

To the extent that UDRP proceedings are a cheaper alternative to trademark infringement proceedings in relation to domain names, they also have shortcomings that should be taken into account.

The only remedies that can be granted in the UDRP process are the deletion or transfer of the domain name to the complainant. Any damage suffered by the complainant is irrelevant to this procedure, so that compensation is out of the question. Likewise, an aspect of trademark infringement outside the scope of the domain name itself is not taken into account, so a granted remedy does not prevent the respondent from continuing to use a use that infringes the complainant's trademark outside of the disputed domain name.

Second, the UDRP process mentioned above requires proof of two additional requirements, in addition to the fact that the domain name is confusingly similar to the complainant's trademark.

While similarity speaks for itself, it is much more difficult to prove that the respondent has no rights or legitimate interests in relation to the domain name and that the contested domain name was maliciously registered.

In order to prove bad faith registration, the complainant must prove that the respondent acquired the domain name in order to trade it with the complainant or its competitor. This prevents the complainant from using the domain name and disrupts the respondent's competitor's business or attracts users by confusing them into believing that the domain name is associated with the complainant.

The guidelines of the UDRP provide respondents with a means of demonstrating that they have rights or legitimate interests in relation to their domain name, which proves the following: They used the domain name for a trustworthy range of goods or services before filing the complaint were generally known under the domain name, or whose use of the domain name is not commercial or fair, without the intention of commercial gain, misleading diversion of consumers or tarnishing the complainant's brand This means that a complainant should try to prove the opposite of all of these, since the successful demonstration of just one of them is enough for the complaint to be rejected.

A case study: I ​​am offering a UDRP administrative proceeding before the Czech Arbitration Court last year in which my company represented the respondent, a company called Futura Genetics, which owns the domain name www.futuragenetics.com. While the complainant, a company called Futura Gene (which also owns a trademark and a domain name that matches the company's name) alleged that the respondent's domain name was confusingly similar to their brand, we were able to show that the respondent had a legitimate right had a business interest in the domain and had it registered in good faith, which resulted in the panel's decision to reject the complaint and let our customers keep the online title.

Related: 8 Mistakes To Avoid When Naming Your Business

Indeed, many UDRP complaints are rejected because complainants failed to maliciously identify the respondent's lack of business interest in the domain name and its registration, which allows respondents to do so even in cases where the intentions behind the registration of the dispute, makes something cheap Domain names are questionable. On the other hand, there are circumstances (such as cyber squatting) in which UDRP techniques can offer a quick, affordable and efficient solution. It is important to set realistic expectations and to carefully choose the most suitable path for each situation.

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