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I have the trade mark but not the domain name – what is my next step?

Written by Samuel O'Toole on 25 April 2019

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I have the trade mark but not the domain name – what is my next step?

The Uniform Domain Name Dispute Resolution Process

The Uniform Domain Name Dispute Resolution Process (UDRP) was first introduced in 1999, and is operated by the World Intellectual Property Organisation (WIPO), it seeks to provide a quick and efficient method of resolving generic top-level domain (gTLD) disputes and it does a good job. The UDRP provides that trade mark holders are able to have a confusingly similar domain name transferred to them.

The core gTLD domain names are .com, .info, .net and .org. However, the UDRP has also been adopted by a number by a number of county code domain name (such as .ch). The UDRP has not been adopted by Nominet who take care of the .uk domains (Nominet operate a service which is broadly similar to the UDRP).

The UDRP is implemented as part of every gTLD domain contract, for example when Lawdit purchased the ‘lawdit.com’ domain, we signed up to the UDRP. If a third party issued UDRP proceedings (if they wanted our domain) we would be bound to follow the UDRP.

How to win through UDRP

So you know what the UDRP is, but how do you win and get the domain transferred? The UDRP revolves a three-part test and the complainant (the entity who wants the domain name) has to meet each element. These elements are:

(i)                  the domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

(ii)                the respondent (the domain holder) has no rights or legitimate interests in respect of the domain name; and

(iii)               your domain name has been registered and is being used in bad faith

Each of these stages is judged on the civil standard of proof, that is on the balance of probabilities.

Test 1: complainant’s rights

This step can be relatively easy to meet. Generally speaking, if you have a registered trade mark you are on to a winner. For example, we have LAWDIT registered as a trade mark, if we were seeking to recover the lawdit.com domain name we would meet this test.

It should be noted that the trade mark does not have to be identical to the domain name, but at a minimum it must be confusingly similar. If you are stuck on this, let us know and we can help determine whether your trade mark is confusingly similar to your trade mark.

Test 2: respondent’s rights

If the respondent (the holder of the domain name) has a legitimate right or interest in the domain name, the UDRP complain will be destined to fail. If for example, the respondent is known by the domain name, is making fair use of the domain name or using the domain name in a bona fide offering of goods or services you may not be onto such a winner.

Quick tip: the use of a domain name to display advertising links generally does not quality as bona fide offering of goods or services. Again, if you are stuck let us know.

Test 3: bad faith

If you have met the above tests, the final hurdle will be to demonstrate bad faith. The UDRP sets out a number of instances where bad faith may be present, such as:

Circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant. The respondent registered the domain name in order to prevent the owner of the trade mark or service mark from reflecting the mark in a corresponding domain name. The respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor. By using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other online location, by creating a likelihood of confusion with the complainant's trade mark.

If one of the above circumstances sounds familiar, you may be onto a winner. Bad faith is a key concept in UDRP proceedings and there is a vast amount of previous decisions which give us some guidance as to bad faith. You can view previous decisions here (https://www.wipo.int/amc/en/domains/decisionsx/index.html), let us know if you would prefer for us to review the previous decisions for you.

Procedure

So you know the law, generally you know what you need to win, but how does the process work? The UDRP is a paper based procedure, this means no expensive court visits or expenses and you could potentially recover the domain name from the comfort of your own home.

The parties will each file a written document with WIPO, if they are the complainant they will identify the above tests and set out how they have been met. If the entity is responding to the UDRP complaint they will seek to set out how the above tests have not been met. WIPO provides guidance and a model complain and filing guidelines is available here (https://www.wipo.int/amc/en/domains/complainant/).

The UDRP sets out a time line of events, and it is relatively straight forward there is: the filing of the complaint, the filing of the response and the decision. Whilst this streamline process is efficient, it does make it difficult to raise new arguments once a document has been filed. It is advised that care is taken when drafting either a complaint or response as it should cover all bases. Quick tip: if the complaint is defective in some form, WIPO only allows a period of 5 days in which to remedy the deficiency so keep an eye on your emails and deadline.

Cases will be decided by either a single panellist or by three panellists, the choice between the two usually arises when the response is filed. The chosen panellist will then decide whether to uphold the complaint and transfer the domain to the complainant or reject the complaint, in which case the domain is not transferred.

If you want to recover a domain name, why not contact Lawdit whereby we will be more than happy to assist you in the UDRP process an at a low fixed fee.

If you'd like to know more about this article please send an email to Ellis Sweetenham quoting the article title and any questions you might have, alternatively call the office number on 02380 235 979 or send an enquiry through our contact form.

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