Tips and Pitfalls of Udrp Proceedings

• Jurisdiction: United States,Federal
• Author: Kristin B. Kosinski
• Publication year: 2019
• Citation: Vol. 44 No. 3

Tips and Pitfalls of UDRP Proceedings

Kristin B. Kosinski

Cislo & Thomas LLP

Trademark owners seeking domain names containing their marks or confusingly similar variants may have the option to acquire the domain via a Uniform Domain Name Dispute Resolution (UDRP) proceeding. Not all scenarios lend themselves to taking this type of action, and parties must carefully consider all applicable facts in view of the rules before proceeding.

What is a udrp proceeding?

An action under the UDRP is an administrative arbitration proceeding designed by ICANN for resolving domain name disputes. The goal in creating the UDRP was to protect trademark owners from true cybersquatters. It can be a cost-effective way to seek transfer or cancellation of one or more domains for small to mid-size businesses that are trademark owners, or large entities that face multiple cybersquatters on a yearly basis.

Domain name transfer or cancellation are the only two remedies available. A panel of one or three arbitrators renders a decision and an accredited registrar is required to implement the decision. Then, the losing party has ten days to file an appeal in court.

A complaint initiating the action can be filed with the dispute resolution centers at the FORUM or the World Intellectual Property Organization (WIPO) and must comply with the Uniform Domain Name Dispute Resolution Policy,¹ the Rules for the Uniform Domain Name Dispute Resolution Policy,² and the Supplemental Rules of the particular provider.³ The proceeding applies to generic top-level domains (gTLDs), the letters immediately following the dot at the end of a domain address, and some country code top-level domains (ccTLDs).⁴

For example, the UDRP applies to domains that end in .com, .net, and .org and some other recently introduced gTLDs. About 78 country codes are included in the UDRP; however, these do not include country codes such as Australia (.au), Canada (.ca), China (.ca), and the United Kingdom (.uk).⁵ Many countries not included in the UDRP maintain their own dispute resolution centers; therefore, trademark owners must consult with the applicable dispute resolution center in that country.

After the complaint is filed, the Registrant domain owner has an opportunity to respond; however, there is no option to take discovery and glean additional information from the Registrant. Also, no damages may be awarded. The UDRP may not be the best route if trademark owners seek more than transfer or cancellation of a domain.

How does it compare to the anti-cybersquatting protection act (acpa)?

Another option to combat cybersquatters is to bring a civil action under the ACPA;⁶ however, this can be costly and take much longer than a UDRP proceeding. Also, the mark at issue must be famous at the time the registrant registered a domain and thus an ACPA action is best suited for large entities seeking damages. A claim under the ACPA must show the mark is distinctive, the domain and the mark are confusingly similar, and the registration was made in bad faith.⁷

Similar to a UDRP proceeding, the court can order cancellation or transfer of the domain to the trademark owner.⁸ Actual damages and injunctive relief are also available. Actual damages may include the profits the domain name registrant made from use of the mark and losses sustained by the trademark owner as a result of the domain name registrant's actions, such as lost sales or reputational harm. Actual damages can be tripled if the acts are found to be willful. Alternatively, the court, in its discretion, may award the trademark owner statutory damages of between $1000 to $100,000 per domain.⁹

What other options are available to trademark owners?

Parties may contemplate bringing an action for trademark infringement; however, the domain must be used commercially in order to do so. The Trademark Act provides for civil liability where a person uses "in commerce any reproduction, counterfeit, copy, or colorable imitation of a registered mark in connection with the sale, offering for sale, distribution, or advertising of any goods or services on or in connection with which such use is likely to cause confusion, or to cause mistake or to deceive" without consent of the registrant.¹⁰ Note that this claim must be supported by facts showing that the mark was used in connection with a sale, offering for sale, distribution, or advertising of any goods or services.¹¹ The accused infringer must use the trademark in connection with a "commercial transaction in which the trademark is being used to confuse potential consumers."¹² An action for trademark infringement will not survive when a landing page of a domain simply displays a "page not found" message or other information that does not pertain to use in connection with a commercial transaction.

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Udrp: initial considerations

Prior to filing a UDRP complaint, a party should conduct an initial investigation to ascertain the facts that can support a claim. The investigation should include an analysis of how the landing pages at the domain appear and how the domain is used, the target audience of the domain and if it is in a different country than the trademark owner, a determination of who has priority, a determination of whether the landing pages purport to offer the same or similar goods and services as the mark owner, and whether the domain Registrant owns other domains.

Domain name data can be located from WhoIs databases; however, obtaining a complete picture of the facts can be difficult from WhoIs information alone because the data available is now limited due to the recent changes in privacy laws such as the GDPR.¹³ Under the GDPR, information that used to be publicly available, for example, the name of the Registrant and date of acquisition, is now omitted from WhoIs data.¹⁴

Nevertheless, WhoIs information should provide the date of creation of the domain in order to at least ascertain when the domain came about. This date can be compared with the mark owner's rights. If there is a question as to whether the domain owner acquired the domain after the date of creation, potential complainants can try to glean the information from a private investigation or can check Internet archived pages to see if the information displayed at the website has a distinct change in content that would indicate a change in ownership of the domain.¹⁵

The name of the domain registrant may be uncovered by content on the site or through a private investigation. Once the registrant's information is located, parties can try to ascertain other domains owned by the registrant using one of the Reverse WhoIs lookup databases available on the Internet.¹⁶

Also, trademark owners should consider the suffix of the domain and whether the domain has a country code (e.g., .ca, .cn) or a suffix other than .com, .net, .org or other gTLD. You must be sure that the UDRP provider you are filing with handles those types of domains.

Parties bringing an action based upon common law trademark rights must be able to fully support their rights with evidence of trademark use and the geographic area of use. A UDRP proceeding can be brought based upon common law rights, but a U.S. trademark registration or a registration in a particular country is best.

If the trademark owner maintains registered trademark rights or can establish common law rights, if it appears to have priority, if the domain includes the mark or a confusingly similar variant, and if the landing pages at the domain concern similar goods and services, a first step is to send a cease and desist letter with the ability to confirm receipt of the letter. Parties should document all further correspondence and...