Internet Domain Name Disputes;
Fast Resolution Under the UDRP

Gary J. Nelson

The current Uniform Domain Name Dispute Resolution Policy ("UDRP") is proving to be a powerful and effective tool for trademark owners who wish to stop the incorporation of their trademarks into third party domain names. The UDRP process offers trademark owners a quick and relatively inexpensive way to protect their trademark portfolio. The average time from the filing of a UDRP complaint to an issued decision is approximately two to three months. When compared to the average duration of federal trademark litigation, e.g., two years, a UDRP domain name proceeding can be the ultimate fast track to justice for trademark owners.

The UDRP procedure is a mandatory arbitration for all disputes of domain names ending in ".com," ".net," ".org" and ".tv." Any person or entity that believes it has superior rights to a domain name can initiate a UDRP proceeding by filing a complaint with one of the four accredited institutions set up to handle domain name disputes. The domain name dispute is then assigned to an arbitration panel, which determines ownership on the merits, e.g., either forcing the transfer of the domain name to the party filing the complaint or affirming the original ownership.

A typical scenario occurs when a trademark owner discovers that a domain name identical to one of its trademarks has been registered by a third party. Other times, a trademark owner will discover that a variation of its trademark has been registered as a domain name. In either case, armed with a strong trademark claim, the trademark owner can often force the transfer of ownership of the contested domain name to itself.

More than 3,000 domain name disputes have been filed since the UDRP was established, and several patterns have emerged. For one filing a UDRP complaint, success most often occurs when one can prove the following:

1. the trademark that has been incorporated into a contested domain name is a "strong" mark,
2. the contested domain name is confusingly similar to the trademark,
3. the owner of the domain name has no rights or has no legitimate interest in the contested domain name, and
4. the contested domain name was registered, and is being used, in bad faith.

Trademark Rights

Owners of strong trademarks are in the best position to benefit from the filing of a UDRP complaint. Strong marks - those which are fanciful, coined words or phrases, or slightly suggestive - are more likely to be protected than weak, e.g., descriptive, trademarks. The easiest cases tend to involve trademarks that are famous. Examples of famous trademarks from UDRP cases CP&H is handling are "ROSE BOWL GAME," and "KIRK DOUGLAS."

For trademarks that are not quite so famous, a federal trademark registration issued prior to the date the owner of the domain name registered the disputed name is the next best thing. Indeed, in the context of a UDRP proceeding, a federal registration is all that is required to establish the presumption of strong trademark rights.

However, establishing common law trademark ownership in unregistered marks is also possible. Paul McCartney, Julia Roberts, Chuck Berry, and Yanni have all established trademark rights in their names, notwithstanding the absence of a federal trademark registration. In the context of a UDRP proceeding, even less famous citizens can establish ownership of trademark rights in their personal names. CP&H recently secured the transfer of the domain name "martyrodriguez.com" on behalf of Marty Rodriguez, one of Century 21's most successful real estate agents, by establishing that her name had become distinctive through the acquisition of secondary meaning, thereby qualifying for trademark protection.

Whether one's mark is famous or not-so-famous, there are many ways to prove ownership of rights in a trademark related to a domain name. Proving ownership of the mark is an essential prerequisite to initiating a successful UDRP procedure.

Confusing Similarity

The second element that must be established is that the contested domain name is confusingly similar to the trademark holder's trademark. If the contested domain name is identical to the trademark, the UDRP arbitration panel tends to assume that the mark and the domain name are confusingly similar. The same tendency also appears when a slight variation of the mark is used as the dominant portion of the domain name. An example of this is the BROADCOM trademark compared to the "broadcom2000.com" domain name.

It has been our experience that the majority of UDRP decisions do not focus on the "confusing similarity" issue. Rather, if one's trademark is at least the dominant portion of the contested domain name, one is likely to succeed in proving "confusing similarity." We note that this trend is at odds with a traditional trademark infringement action where "likelihood of confusion" is often the heart and soul of the entire case and turns on an analysis of the goods or services offered by the parties, the channels of trade through which they're sold, and other factors in addition to a comparison of the marks themselves.

No Rights Or Legitimate Interest

To succeed in a UDRP proceeding, one of the core elements a trademark owner must establish is that the holder of the domain name has no rights or legitimate interest in the contested domain name. While there are many ways to argue this point, a number of facts have proven to be particularly helpful in persuading the arbitration panel that the domain name owner is a mere intermeddler and/or cybersquatter. These include:

1. the domain name does not correspond to the name of the organization (or individual) listed as the owner of the domain name, and/or the owner is not generally referred to by the domain name,
2. the registered owner of the domain name is using another's trademark to divert Internet users to its own Web site where similar goods or services may be offered,
3. the willingness of the domain name owner to transfer ownership of the domain name, regardless of whether an attempt is being made to sell the domain name, and
4. the owner of the domain name is not using the domain name in connection with a bona fide offering of goods or services, as evidenced by the fact that the domain name is not linked to an active web site.

Bad Faith

Another core element that must be established for the trademark owner to wrest away control of the offending domain name is that the domain name owner registered, and is currently using, the contested domain name in bad faith. Several fact patterns have proven particularly successful. Actions taken by domain name owners that have been found to constitute bad faith include:

1. using another's trademark to divert Internet consumers to one's own web site where competing goods or services are offered,
2. classic trademark infringement of another's mark by using the actual trademark on the corresponding web site and not just as a domain name address,
3. knowledge by the domain name holder that another owns rights in the corresponding trademark, (for example, a former employee registering the corporate name of his/her former employer as a domain name, and registering domain names that correspond to a known competitor's trademarks),
4. attempting to sell a domain name to the owner of the corresponding trademark for an amount in excess of the domain name registration fees (the classic cybersquatter technique),
5. speculation in the domain name market place, as evidenced by registration of numerous third party trademarks as domain names, and
6. squatting on a well known trademark where one refrains from linking it to an active web site.

Although owning a trademark does not guarantee success in a UDRP proceeding, there is no doubt that the current UDRP arbitration procedure favors trademark owners and provides a quick and easy opportunity to wrestle domain names away from unscrupulous cybersquatters and others who speculate in the domain name market place.

Clients with questions regarding the current UDRP or other alternative solutions to domain name/trademark problems can contact Christie, Parker & Hale for further consultation.