Dealing with Domain Name Disputes

David Malick
Art made of 'code' named Kryptos sits on the grounds of the C.I.A. Headquarters in Virginia. Original image from Carol M. Highsmith’s America, Library of Congress collection. Digitally enhanced by rawpixel.

What do you do when you discover that someone is using a domain name to confuse your customers, draw potential customers away from your website for their own commercial gain, or block you from creating a domain name based on your trademark or service mark? If your informal attempts to resolve the dispute are unsuccessful, you might consider filing a claim under the Uniform Domain-Name Dispute-Resolution Policy (often referred to as “UDRP”).

Broadly speaking, when someone obtains a domain name, the registration is subject to the Internet Corporation for Assigned Names and Numbers (“ICANN”) which has policies for how domain names should run. One of those policies is the UDRP.

You may bring a dispute under the UDRP if:

  • Someone’s domain name is identical or confusingly similar to a trademark or service mark you own;
  • Someone has no rights or legitimate interests in their domain name; and/or
  • Someone’s domain name is being used in bad faith.

    The bad-faith use of a domain name might involve:

    • Someone creating a domain name so that they might then sell, rent, or transfer the domain name to you—the owner of the trademark or service mark being used in the domain name (this is otherwise known as cybersquatting);
    • Someone has registered the domain name in order to prevent you, as the owner of the trademark/service mark, from using the mark in a domain name;
    • Someone has registered the domain name primarily for the purpose of disrupting your business; and/or
    • Someone has registered the domain name to intentionally attempt to attract, for commercial gain, Internet users by creating a likelihood of confusion with your mark as the source of your product or services.

    If you should prevail in your domain name dispute under the UDRP, the disputed domain name will either be cancelled, transferred to you, or changed. For a more detailed discussion of domain name disputes under the UDRP, see the following ICANN website: https://www.icann.org/resources/pages/policy-2012-02-25-en.

    If you would like to discuss a specific situation, please feel free to contact me at RichardsonClement PC: