Domain Acquisition

For trademark owners, the digital world offers opportunities, but also challenges. 

One major hurdle can be domain squatters holding a domain that includes their trademark. 

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) serves as a method to obtain a domain in these situations.

Domain vs Trademark:

Domain: A domain is an internet address, essentially the name that users type into their browser to visit a website.

Trademark: A trademark is a sign capable of distinguishing the goods or services of one enterprise from those of other enterprises. It provides exclusive rights to the owner, preventing misuse by third parties.

While a domain indicates a website’s address, a trademark protects the brand identity. A domain can function as a trademark – if it’s used to identify a source of goods or services.

The UDRP Complaint Process:

1. Initiating a Complaint: Trademark owners can file a UDRP complaint if they believe a domain name infringes upon their rights. This can be due to identical or confusing similarities, a lack of legitimate interest from the current holder, or evident bad faith in the domain’s registration or use.
2. Response: Once notified, the domain registrant has 20 days to submit their defense.
3. Evaluation: A panel, either a single member or three-member based on preference, reviews the evidence from both sides.
4. Decision: The panel might order the domain’s transfer, its cancellation, or deny the complaint. Decisions typically come within 60 days from complaint submission.

What to Consider Before Filing a UDRP Complaint:

• Merits of the Case: Does the domain truly infringe upon your trademark? Misunderstandings can occur, and not every similarity indicates malicious intent.
• Cost Implications: UDRP complaints come with associated fees. Assess the domain’s value against potential expenses.
• Possible Outcomes: Even if you proceed with a UDRP complaint, winning isn’t guaranteed. Evaluate the strengths and weaknesses of your claim.

How Trademark Owners Can Use the UDRP:

• Protecting Your Brand: UDRP empowers trademark owners to challenge domain registrations that potentially damage their brand or lead to customer confusion.
• Bad Faith is Crucial: It’s not just about proving similarity; trademark owners must show the domain’s registration or use was in bad faith.
• Existing Trademarks Strengthen Your Claim: Having a registered trademark prior to the domain’s registration date bolsters your complaint’s credibility.

Alternatives to UDRP Complaints:

• Negotiations: Before resorting to UDRP, consider directly negotiating with the domain holder.
• Legal Routes: Depending on jurisdiction, trademark infringement lawsuits might be an option.
• Continuous Monitoring: Proactively monitor domain registrations to pre-emptively address potential infringements.

For trademark owners, UDRP provides a structured mechanism to tackle domain disputes.