Many individuals, after registering a trademark, find that the corresponding domain names are not available for their use. This can be frustrating but due to the fact that trademark rights are limited to specific goods and services, multiple parties can have legitimate rights in the same mark, though for different goods/services. As such, multiple parties are often competing for the same domain names and have legitimate uses for these sites. Despite this, there are still many cases when a domain name, currently in use, can be transferred to another party.
There are many ways to try and secure these domain names. Traditional litigation, the Uniform Dispute Resolution Policy and Uniform Rapid Suspension can all be utilized to secure a domain name from a third party, or at least stop them from using it. This article will focus on using the UDRP to gain ownership rights.
One of the easiest and fastest ways to gain ownership of a domain name is by using the Uniform Dispute Resolution Policy . The UDRP is an arbitration system that occurs wholly online and it applies to the most common domains, such as those ending in .com,.net, and .org. If the UDRP does not cover your “ending”, known as a gTLD, don’t worry, many domains are covered under a process similar to the UDRP.
If you would like to successfully utilize the UDRP you will need to prove three elements. First, you must show that you have legitimate rights in the mark that is identical or confusing similar to the domain name. The easiest way to show your rights in a mark is to provide your registration with the USPTO. However, even those without a registration can show rights in the mark. Trademark rights arise through use and therefore proof that you were using the mark in commerce will suffice.
Whether your mark is the same or similar to the domain is much less black and white. When evaluating similarity focus on whether the marks sound alike or look alike. A translation of your mark into another language can even be deemed similar.
Next, you would need to show that the domain owner does not have legitimate rights in the domain name. An owner can gain legitimate rights in a mark, in much the same ways discussed above, namely registration or use in commerce. Another way an owner can establish is rights is being commonly known by the name or engaging in fair use.
Lastly, you will need to show the owner registered and used the domain name in bad faith. The UDRP sets forth some examples, though you can proffer any evidence that demonstrates bad faith. The most egregious violation may be owners who only occupy a domain in order to profit from its sale later on. These instances are often easy to spot as a visit to the domain name reveals an empty or “under construction” page. Additionally, owners who register a domain name to prevent another from using it and disrupting their business practices can be found to be acting in bad faith. Lastly, bad faith is committed when an owner attempts to use a confusingly similar mark to purposefully attract users to their site for commercial gain. Owners often do this by using a famous mark to lead web users to their site where they post paid advertisements. Owners of a site can also fall into this category when they lure web users to their site using a competitor’s mark, with hopes that the web user will simply buy their product or services instead.
If you are able to prove all three of the elements required under the UDRP you will then be able to have the domain name transferred to yourself or simply bar the other party from using it. As you can see, there are many factors that will be considered for each element but hopefully this piece will help you with evaluating whether you would be a candidate to use the UDRP. And remember, if you are not a candidate for UDRP, traditional litigation or Uniform Rapid Suspension may be the right option for you.
ELIZABETH URUSKYJ, is a New York native, Elizabeth moved to California to attend Santa Clara University, School of Law. At Santa Clara, Elizabeth distinguished herself earning an Honors Certificate of Specialization in Intellectual Property Law and placing first in a national technology licensing competition. She also served as Comments Editor on Santa Clara Law’s Journal of International Law. Since graduation, Elizabeth has worked both in general practice and with a local tech start-up.