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Protecting Your Good Name

By Usman Baporia | Feb. 2, 2009

News

Expert Advice

Feb. 2, 2009

Protecting Your Good Name

What to do when someone else is using your domain name.


Ever try to register an Internet domain name? The biggest problem is finding a good one that isn't taken. But what do you do if you discover that someone else is using your registered domain name, which may also be a protected trademark?

When the steam stops venting from your ears, you will realize there are remedies. Among them is federal litigation under the Lanham Act (15 U.S.C. §§ 1021-1157) or the Anticybersquatting Consumer Protection Act (ACPA 15 U.S.C. § 1125(d)).

Yes, ICANN
But there's another way that's cheaper and faster: arbitration under the Internet Corporation for Assigned Names and Numbers (ICANN) Uniform Dispute Resolution Policy (UDRP). ICANN is the international organization that oversees domain names. Every time someone registers a domain name, they enter into an agreement binding them to the UDRP and ICANN's arbitration procedure.

An ICANN arbitration is usually quick, simple, and cost-effective; the entire process usually takes less than three months. Although you can't recover damages, ICANN arbitration does not preclude litigation later on, and the filing fee - between $1,300 and $4,000 for a disputed domain - is much smaller than the investment required for a federal case.

There are five stages in an ICANN-UDRP arbitration: (1) a complaint is filed with an accredited ICANN-UDRP dispute resolution service provider; (2) the respondent files a response; (3) an administrative panel is appointed; (4) the panel issues a decision; and (5) if a domain name must be cancelled or transferred, the decision is implemented by a registrar (a company accredited by ICANN to sell domain names).

Before you file your complaint, be sure to identify the correct respondent; otherwise, your case could be dismissed. Try searching websites such as whois.net or networksolutions.com/whois.

ICANN's website lists four approved UDRP providers (icann.org/en/dndr/udrp/approved-providers.htm): the National Arbitration Forum (NAF), the World Intellectual Property Organization (WIPO), the Asian Domain Name Dispute Resolution Centre, and the Czech Arbitration Court.

You can search previous cases on each provider's website to determine which forum might be favorable to your client.

Necessary Evidence
You will need to support your claim with evidence of the following elements: (1) the respondent's domain name is identical or confusingly similar to your client's trademark or service mark; (2) the respondent has no rights or legitimate interests in the domain name at issue; and (3) the domain name has been registered by the respondent and is being used in bad faith.

Your evidence must be attached to the complaint. Generally, there is no reply brief or oral argument, so the evidence you provide is crucial.

There is no published guideline as to the burden of proof, and stare decisis does not apply. However, the various service providers strive to render consistent decisions, and some offer guidelines as to their positions on key issues. For example, the WIPO website contains a wealth of relevant decisional data, including overviews of issues such as whether the content of a website bears on the question of confusing similarity between domain names (the answer, generally, is no). (See wipo.int/amc/en/domains/search/overview/index.html.)

You may refer to prior panel decisions in your complaint, and you may rely on general American trademark law in making arguments.

It is essential that you allege each element specifically, provide supporting documentation for each one, and focus your arguments accordingly.

Evidence commonly submitted to ICANN panels includes advertisements, catalogues, invoices, newspaper and magazine articles, miscellaneous evidence of business reputation or goodwill, and documentation of your client's online presence.

Email Updates
Once you submit your complaint, a case manager will contact you. You will also receive a copy of the respondent's submission, updates as your case progresses, and the final decision-all via email. Though this procedure may sound informal, it is the route taken by many parties in domain-name disputes. In 2008, for example, WIPO alone administered more than 2,300 arbitration claims. Of those cases, approximately 1,100 resulted in a transfer of the domain name, and in only about 175 was relief denied.

In a world where litigation costs can run out of sight, it's good to know there are cost-effective alternatives.

Aaron Shechet and Leigh Chandler are the founders of Chandler & Shechet, a business-development law firm based in Los Angeles.

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Usman Baporia

Daily Journal Staff Writer

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