Cybersquatting: Trademark dilution, confusion, & brand protection
Is a competitor or third party operating a domain name that is identical or confusingly similar to your trademark? If so, they may be considered a “cybersquatter.” The Uniform Domain Name Dispute Resolution Policy (UDRP) (available here) provides trademark and brand owners with a quick and inexpensive mechanism to either recover or suspend an important domain name being held hostage or misused by a cybersquatter [1]. Pursuing a transfer or suspension of a confusingly similar or identical domain name is a powerful tool to prevent consumer confusion, brand dilution, and recover lost internet traffic – all of which results in immediate value, revenue generation, and brand recognition.
Contact us immediately if you believe you have a claim against a cybersquatter – we have a proven track record of success in bringing claims before the World Intellectual Property Organization and obtaining results.
How is the UDRP mandatory?
When a registrant chooses a domain name with a registry (such as GoDaddy), the registrant must “represent and warrant” that registering the domain name “will not infringe upon or otherwise violate the rights of any third party”, including brand owners and famous personalities and agrees to participate in the UDRP process should a third party assert rights to the domain name. The UDRP is mandatory for most generic Top Level Domains (gTLD) such as “.com”; the exception being certain country code Top Level Domains (ccTLD) such as “.ca” [2]
The UDRP Process
In order to succeed, the complainant in a UDRP proceeding must establish three elements:
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has intellectual property rights;
- The registrant does not have any rights or legitimate interests in the domain name; and
- The domain name has been registered and the domain name is being used in “bad faith“.
During the UDRP proceeding, the hearing panel will consider several non-exclusive factors to assess bad faith, such as:
- Whether the registrant registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark; or to a competitor of the complainant;
- Whether the registrant registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, if the domain name owner has engaged in a pattern of such conduct; and
- Whether the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
- Whether by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant’s website, by creating a likelihood of confusion with the complainant’s mark.
The goal of the UDRP process is to provide rights-holders with an effective and quick process for resolving domain-name disputes. The UDRP process is faster and far less expensive than a traditional court proceeding. A successful UDRP claim may be resolved in under 60 days.
Pursuing a UDRP complaint does not bar the complainant from seeking in parallel, or at a later date, damages for trademark infringement in the Federal Court of Canada, or its equivalent in the United States under the Anticybersquatting Consumer Protection Act.
[1] cy·ber·squat·ting
(noun) the practice of registering names, especially well-known company or brand names, as Internet domains, in the hope of reselling them at a profit.
[2] Canadian domain name disputes under the ccTLD “.ca” are arbitrated under the Canadian Domain-Name Dispute Resolution Policy (CDRP). For a quick run-down of the differences between the UDRP and the CDRP please click here.
Daniel Nashid
Barrister & Solicitor
416.892.2509
[email protected]