Domain Name Disputes

Enabling Trademark Owners to Succeed in Domain Name Disputes

Domain name disputes arise from abusive registrations of domain names and infringement. An example of this is the practice of cybersquatting. This occurs where a trademark owner's Mark is usurped and inserted into a domain name, not belonging to the Mark owner. Cybersquatters may offer to sell the domain name directly to the trademark owner, put the domain name up for auction, or maintain the domain name and use it to attract Internet users to their own site or business.

If you are involved in a domain name dispute or have questions about Internet law and cybersquatting, turn to our lawyers at the Law Offices of Joseph C. Messina in Mamaroneck, New York. We have extensive experience handling a wide range of intellectual property and trademark law issues for individuals and businesses. Contact our office today to further discuss your questions or concerns.

Filing a Complaint in Court

When a dispute involving a domain name occurs, there are two options. The first is to file a lawsuit in court pursuant to the Anticybersquatting Consumer Protection Act (ACPA). The advantage of using the courts is monetary damages will be available. The disadvantages include a potentially slow, long, and expensive process.

Filing a UDRP Complaint

The second option is to file a complaint pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP) with a resolution service provider, such as the World Intellectual Property Organization (WIPO) or the National Arbitration Forum (Forum). A list of such providers can be found at www.icann.org/udrp/approved-providers.htm. This alternative provides a trademark owner with a less-expensive option using an administrative procedure that produces a result in a short period of time (approximately 50-60 days from the date filed to the date decided). The domain name will either be cancelled, transferred, or sustained. A UDRP complaint can be filed against an international or domestic party.

In order to prevail in a UDRP proceeding, a trademark owner must demonstrate (all three of) the following elements:

  1. Ownership of a trademark (registered or unregistered) that is the same or confusingly similar to a third party's domain name; and
  2. That the domain name owner does not have any rights or legitimate interests in the domain name; and
  3. That the domain name was registered and used in bad faith

Stopping third parties from using your Mark in their domain name is critical as trademark owners have an ongoing obligation to police their Marks and to prevent others from infringing on their trademarks. The good news is that new federal laws and international arbitration procedures have made it simpler and cost effective to obtain infringing domain names and damages from cybersquatters.

Changes in the Landscape of the Internet

The Internet Corporation for Assigned Names and Numbers (ICANN) is introducing a new program for gTLDs (generic top-level domains). This means that you can register a more descriptive term than the .coms and .nets of the world. Registration began in January 2012. The strategy for registration varies from company to company. Some parties are registering their own brands such as .google, .apple or .microsoft, while others are looking for broader categories such as .cars, .fashion, or .toys. There are also geographic identifiers being registered along with community and industry group names. However, expansion of your brand’s marketing strategy will not come cheap. There is a fee of $185,000 charged by ICANN for each proposed gTLD and $25,000 annually for administration.

Of course, this opens the door to more opportunities for infringement. To combat some of the concerns, ICANN is opening a Trademark Clearinghouse. This will aid in protecting trademarks from infringement by new second level domain names that are seeking registration in the new gTLDs. The Trademark Clearinghouse will allow trademark owners to register their trademarks with its centralized database. You will be notified by ICANN if there is a conflict with a newly registered top level domain name. If a trademark owner believes there is an infringement from a second level domain name within a gTLD, it can challenge that infringement through ICANN’s current Uniform Domain Name Dispute Resolution Policy (UDRP). A change such as this was inevitable. It will complicate the Internet landscape a bit, but consumers will adapt quickly.

Get in touch with the Law Offices of Joseph C. Messina to set up a courtesy consultation to discuss a domain name issue. Contact our office by e-mail or call us at 914-381-2728 to set up a free consultation. We represent clients located in New York, Westchester County, Stamford, Connecticut, New Jersey and throughout the country.