New York Trademark Attorney Blog
The Internet Corporation for Assigned Names and Numbers (“ICANN”) adopted The Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) to resolve any disputes that arise between parties over the registration and use of domain names. The Policy was adopted by all ICANN accredited registrars and is incorporated by reference into your Registration Agreement with your registrar.
Since the wake of the new generic top-level domains (gTLD) another system has been put into place to facilitate trademark owners in policing their brands, the Uniform Rapid Suspension System (URS). As technology continues to grow and evolve we strive to keep pace and the URS was designed to provide a quick and cost effective procedure for clear-cut infringing domain names. It was designed to complement the existing UDRP. See our web page entitled: Update On The New Generic Top Level Domain Name Program for details regarding the new program.
To be successful and obtain relief under ICANN a complainant must prove all of the following prongs:
(i) that the domain name is registered by the respondent and is identical or confusingly similar to a trademark or service mark in which the complainant has rights: and
(ii) that the respondent has no legitimate interest in the domain name: and
(iii) the domain name has been registered and used in bad faith.
Regarding the first prong, its purpose is essentially to demonstrate standing. Typically, if you own a federally registered trademark or if you can prove you have common law rights and have acquired secondary meaning you will have standing to bring a UDRP complaint if the mark you have rights in is confusingly similar to the domain name registered by the respondent. To compare the domain name and trademark, there is a visual and aural comparison. Panels have agreed that if the dominant feature of the mark is similar or identical then adding a subsidiary word to the dominant element will not typically obviate the confusion for the purposes of the first prong requirement. If the complainant is asserting common law rights, it must show the mark has become a distinctive identifier associated with the goods or services and that secondary meaning has developed.
If the domain name is registered before the trademark rights are acquired, this will not impact the conclusion regarding the confusingly similar determination. However, it may be challenging to prove the domain was registered in bad faith under the third prong of the UDRP criteria. It is important to keep in mind that panels generally disregard disclaimed matter in a mark for purposes of comparing similarities. Therefore, if the entire literal component is disclaimed leaving only a design element, absent a showing of acquired distinctiveness, the owner of the mark may lack relevant rights under the UDRP to file a complaint.
Regarding the second element, the complainant must make a prima facie case showing the respondent does not have any legitimate interests in using the domain. Then, the burden will shift and the respondent will need to show that (i) before any notice of this dispute, respondent used, or demonstrably prepared to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; (ii) respondent has been commonly known by the domain name, even if no trademark or service mark rights have been acquired; or (iii) respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert customers or to tarnish the trademark at issue. Panels have held that there is not a black and white rule for domain names that have been used only to post landing pages or pay per click links but use of this kind alone typically does not confer rights or legitimate interests arising from a bona fide offering of goods and services, especially if the advertised goods and services are competitive with the goods and services of the trademark owner.
In connection, with the third prong the most frequently asked question is if bad faith can be found if the domain holder registered the name before the mark owner registered its mark or acquired common law rights, and the answer is generally bad faith can not be found under those circumstances. The reasoning is that the domain holder could not have contemplated rights that did not exist at the time of the domain name registration. However, if the complainant can show that the respondent was aware of his use of the mark and the registration was to gain advantage based on the potential confusion between the domain name and any rights of the complainant, then bad faith may be found.
This has been found to occur with publicized mergers, employer/employee circumstances, or if the mark receives substantial media attention. Of course, bad faith can be proven in a variety of other manners such as registering and using the domain name for the purpose of selling or transferring the domain name to the complainant or to a competitor of the complainant, to disrupt the complainant’s business or by using the domain name you have intentionally attracted internet users to your website for commercial gain by creating a likelihood of confusion with the complainant’s mark. This is not an exhaustive list, but instead examples of ways bad faith can be demonstrated.
If you are pondering sending a cease and desist letter or if you have received a demand to transfer your domain name, please feel free to contact our office for a courtesy consultation.