Domain Name Disputes

The Uniform Domain Name Dispute Resolution Policy (UDRP, pronounced you-derp) provides a way for easy and expeditious resolution of conflicts relating to domain name usage. Per ICANN policy, anyone who registers a domain name must agree to be bound by UDRP. In fact, you can’t even register a domain name without agreeing to this policy. Rather than using a traditional judicial body to adjudicate domain name disputes, the UDRP rules sets forth a system for domain name dispute arbitration, which is cheaper and faster than relying upon the courts. This system of arbitration applies to all generic top-level domain names.

The UDRP was created in part to address the conflicts between domain names and trademarks. Many domain registrants were registering others’ trademarks as domain names, leaving the rightful owners with no way to control the way that their registered trademarks were being used on the internet. Trademark owners found themselves at the mercy of “cybersquatters” who, while having no intent to use the domain name themselves, registered urls for the purpose of extracting money for the domains from the trademark owners.

In order to prevail in a UDRP action, the complaining party must prove the following three things:

• The registered domain is identical or confusingly similar to a trademark owned by the complaining party;
• The responding party has no legitimate interest in the domain;
• The domain name was registered and used in bad faith.

The fact that a domain name was registered and then shortly thereafter offered for sale to the complaining party is considered evidence of “bad faith” according to UDRP rules, and has been cited as evidence of “bad faith” in UDRP decisions. American courts have ruled that registering a trademark owner’s trademark as a domain name is “use” under the trademark law, and therefore constitutes trademark infringement. However, with the advent of the UDRP rules, it is no longer necessary for trademark owners to sue in Federal court to stop a domain squatter from infringing their trademarks, as the UDRP rules provide a much easier, faster, and less expensive way to address these issues.