For disputes alleged to arise from abusive domain name registration the procedure put in place is the Uniform Doman Name Dispute Resolution Policy (UDRP). Before a transfer, suspension or cancellation of a domain name can be implemented by a Registrar, a resolution via agreement, arbitration or court action must be reached. The very first step for the affected brand or trade mark owner is filing a complaint to the World Intellectual Property Organisation (WIPO).

The proof required and costs involved in a dispute

There are three key aspects to bringing a complaint against an alleged cybersquatter: A trade mark or brand owner (the Complainant) must show that (1) that the domain name registered by the third party is identical or confusingly similar to a trade or service mark in which the Complainant has rights, (2) that the third party has no rights or legitimate interests in respect of the domain name, and (3) the domain name has been registered and used in bad faith. [1] These three elements will need to be evidenced. [2]

The cost of filing a complaint falls with the Complainant and can be in the range of $1500 to $5000 depending on the number of panel members and domain names disputed. The whole procedure is correspondence based and does not entails a hearing. It is also relatively fast as it could take as little as 2 months for a decision to be reached, implemented and published.

When concerned is the .uk Country Code Top Level Domain (ccTLD), a complaint is filed online to its official registry, NOMINET. A summary (without trial) judgement has a fee of £200 (excl. VAT). This is the case where no response is filed to the claim. When a response is filed, this would result in a full judgement, fee of £700 (excl. VAT). An appeal can be filed with a fee of £3000 (excl. VAT). More on this here.

Precaution & the Trade Mark Clearing House

In tackling online infringement of trade marks used in domain name registrations, The Internet Corporation for Assigned Names and Numbers (ICANN) has established the Trade Mark Clearing House (TMCH). In a collaboration between agencies such as Deloitte and IBM, a database of verified trade marks is composed and maintained. A trade mark owner however has to be proactive in registering their trade mark with the Trade Mark Clearing House annually with a fee of $150.

The benefits of having the registration are receiving notification of newly registered TLDs and a time period of priority to register the trade mark before anyone else. This is also known as the ‘sunrise period’ for new TLDs. The second layer of protection for the trade mark owner comes in the form of a warning notice for anyone else trying to register the trade mark as their own domain. If they nevertheless proceed with the registration, the trade mark owner will be notified and given the opportunity to take action.

Scope

While most cases are clear-cut, some pose scope for conflicting views. In a dispute over the truereligion.com [3] domain, the Complainant was a reputed clothing brand, while the Respondent was an individual bringing insight into the Islam religion. The Respondent registered this domain, a few years before the clothing label was formed and had used his website for his intended on registration purpose. Once the brand took off some years later, the Respondent’s website hits rocketed to 1000 per day, mainly with traffic seeking the brand’s clothing. The Respondent then decided to take advantage of that and used his website in a way that made him money through incorporating into his website pay-per-click ads that were linked with the Complainant. Having registered TRUE RELIGION as a trade marks, the Claimant saw this as an unfair exploitation of their ownership rights and on approach to buy the domain name, the Respondent provided a 6-digit figure, which was perceived as excessive.

This case concerned the third requirement of ‘bad faith registration and use’ more than any other. The Respondent had clearly registered and for a long period used the domain in good faith but his use turned to bad faith once the commercial advantages of the later registered TRUE RELIGION brand had become apparent. The panel at WIPO has had no choice but to interpret the requirement in its literal form and find that “the Respondent did not register the disputed domain name in bad faith and that the Complaint therefore must fail under the third element of the Policy”. More on this here.

Final Thoughts

In an evolving domain name system the tools used to tackle abusive registration are becoming sharper and increasingly effective. However, it is cases like that of truereligion.com that reveal the loopholes in the UDRP process. With a strong focus on E-commerce regulation, such opportunities for further development are likely to be welcomed and embraced with anticipation for both brand and trade mark owners.

 

[1] World Wrestling Federation Entertainment, Inc v. Michael Bosman, Case No. D99-0001.

[2] WIPO’s Views on the Three UDRP Required Elements. Please see here.

[3] Guru Denim Inc v Abu-Harb, Case No. D2013-1324.