If somebody registers a domain name that is identical or similar to your trademark, you might be able to claim the domain for yourself. However, it is more difficult than people often realise. Just because you have a trademark, doesn’t automatically mean that you can always claim corresponding domain names from their owners.
For generic top level domain names (such as .com and .org) there is something called Uniform Dispute Resolution Policy (UDRP). You probably did not read the fine print when you registered your domain name, but it says that you agree to UDRP if there is any dispute regarding your domain name.
The UDRP is a process created by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve disputes over domain names. It is an administrative process designed to provide an efficient and cost-effective way for trademark owners to challenge the registration and use of domain names that infringe on their trademarks.
Under the UDRP, a trademark owner can file a complaint with an approved dispute resolution service provider. If the complaint is successful, the domain name can be transferred to the trademark owner or cancelled. The UDRP process typically takes about 2-3 months and is less costly and more efficient than going through traditional legal channels.
So, what are the requirements for you to challenge a domain name registration?
You must demonstrate the following:
- The domain name is identical or confusingly similar to your trademark
- The domain name owner has no legitimate interest for the domain name
- The domain name has been registered and is used in bad faith
The most common assumption that trademark owners make is that if the domain name is identical to the trademark, especially if the trademark is highly distinctive (for example, an invented word), all other requirements can simply be assumed. If somebody registers an identical name, it must be bad faith. Case over. Well, not so fast. As a trademark owner, you must be able to demonstrate, for example, bad faith. Simply saying that the registration is made in bad faith won’t cut it.
Here are the requirements in more detail.
a) The domain name is identical or confusingly similar to your trademark
This requires in most cases that your trademark is registered. If it’s not, this will be a relatively difficult hurdle for you to pass.
The similarity between the trademark and domain name is not particularly difficult to establish. If the domain incorporates your trademark in its entirety or differs only slightly, this requirement is satisfied. This first requirement is merely a threshold requirement for the trademark owner’s standing to start the proceedings. If there is no connection between the trademark and the domain name, the case is dismissed.
This is usually a relatively easy hurdle to pass. It is not often that UDRP cases fail on this ground.
b) The domain name owner has no legitimate interest for the domain name
If the domain name owner has a trademark that corresponds to the domain name, he has a sufficient legitimate interest for the domain name. In addition, he can establish his interest for the domain name in other ways as well.
For example, if he has before the dispute made demonstrable preparations to use the domain name for a bona fide offering of goods and services, he has a legitimate interest for it. Also, if the owner is commonly known by that name (for example, the domain name corresponds to his name or nickname), he has a legitimate interest for it. Also, if he uses the domain name in a fair manner non-commercially, that could also legitimise it. This requires, however, that he is not misleading consumers to divert traffic or to tarnish the trademark owner’s reputation.
For example, having a domain name apple.com (assuming that it was not yet taken) for an information page regarding apples would be legitimate. Using the same domain name for selling electronics or having affiliate links to online e-commerce platforms would not.
If the domain name is used for non-commercial information purposes, it is very difficult to claim it. Also, if the owner is selling goods or services that have nothing to do with the trademark owner’s goods and services, and this has started before the dispute, it is also difficult to get the domain name from the owner.
c) The domain name has been registered and is used in bad faith
Bad faith means generally taking unfair advantage of the trademark or harming its reputation. Here are some scenarios that would indicate bad faith:
- the domain owner tries to sell the domain to the trademark owner for an excessive price
- the domain name owner has engaged in a pattern of registering domain names that correspond to trademarks
- the domain name owner has registered the domain to disrupt the business of a competitor
- the domain name owner is using the domain name to create a likelihood of confusion to the trademark and to divert traffic to his own website for commercial gain
Generally speaking, registering domain names for the purposes of reselling them is not automatically an indication of bad faith. It is particularly difficult to establish bad faith if the domain name is composed of a dictionary word.
The trademark owner bringing the complaint must prove bad faith. If the domain name owner is just sitting on the domain, not using it for anything, it is difficult to establish bad faith. If the domain name owner is using the domain, he could claim to have legitimate rights to it. Bad faith won’t be simply presumed, and many trademark owners fail to explain why and how the domain name is registered and used in bad faith.
It is a common mistake to think that just because the domain name is identical to the trademark, it must be registered in bad faith.
Also, it used to be relatively straightforward to establish if the domain name owner had engaged in a pattern of registering domain names that correspond to trademarks, but post-GDPR this is much harder.
Conclusion
Claiming a domain name that is similar or identical to your trademark is not an easy task, and it requires fulfilling certain requirements. The UDRP provides an administrative process for trademark owners to challenge the registration and use of domain names that infringe on their trademarks. The UDRP process can take about 2-3 months and is less costly and more efficient than going through traditional legal channels.
Companies often think that simply because they have a trademark, it is possible to take action when somebody else registers a domain name that is identical or similar to the trademark. This is often not the case, and in fact, the UDRP does not make it very difficult for the domain owner to establish he has a “legitimate interest” in the domain name. Conversely, establishing that the domain name was registered in bad faith is more challenging than most companies realise. It needs proof, an assertion is not sufficient.
Companies should also be aware that they generally have only one shot of getting the domain name. If they launch the UDRP process thinking that it will be a done deal, and lose it, there is no second chance (other than in very limited special cases). That’s why before filing a complaint under UDRP, it is important to evaluate the strength of your case and the evidence you have to support it. It is also highly recommendable to let an attorney familiar with the UDRP to handle the case.
