How proprietors of trademarks can protect their rights and interests when there is a registered identical or similar to the trademark domain name? There are several ways by which the dispute can be resolved if there is a conflict between a trademark and a domain name.
- The fastest and most efficient way is reaching an agreement between the proprietor of the trademark and the owner of the domain name for redemption of the disputed domain name. In this case, the parties resolve the dispute without seeking the option to solve it in a judicial or administrative way. The goodwill of both sides is needed for reaching an agreement.
- The second way is the judicial resolution of the dispute, which in comparison with the other possible methods is a long and expensive process.
- The alternative of both methods is an administrative procedure, which in most cases is preferred by the parties in the resolution of such kind of disputes. The topic will be described in two separate articles due to its scope and importance. This article will describe the administrative procedure for resolution of disputes concerning domain names in the fields .com, .net, .org, .aero, .asia, .biz , .cat, .coop, .info, .jobs, .mobi, .museum, .name, .pro, .tel, .travel. A separate article will outline the procedure for resolving disputes between a proprietor of a trademark and an owner of a domain name in the field .eu.
In the first place the advantages of the administrative procedure for resolution of disputes concerning domain names in the fields .com, .net, .org, .aero, .asia, .biz , .cat, .coop, .info, .jobs, .mobi, .museum, .name, .pro, .tel, .travel will be outlined. The second part of the article will describe the administrative procedure itself.
Advantages of the procedure
The author of this article recommends proprietors of trademarks to take advantage of the administrative procedure for resolution of disputes concerning domain names because it takes much less time (about two months) compared to solving the dispute by a court. Another advantage is the submission of the documentation and evidence electronically as well as the low fees. The hearing of the parties and witnesses is usually not conducted, because in most cases the parties are located in different countries. This saves time and money. Furthermore, the disputes are resolved according to the Uniform Domain Name Dispute Resolution Policy, Rules for Uniform Domain Name Dispute Resolution Policy and the Supplemental Rules of the organization (the organization that resolves the dispute) by highly qualified, impartial and independent arbitrators included in the list of the respective organization.
The procedure
In 1999, the Internet Corporation for Assigned Names and Numbers (ICANN) adopted a Uniform Domain Name Dispute Resolution Policy as well as Rules for Uniform Domain Name Dispute Resolution Policy. Accordingly, а procedure was created for the protection of the rights of proprietors of trademarks against individuals who have registered identical or similar to those trademarks domain names. The Policy and the Rules have been adopted on the basis of recommendations made by the World Intellectual Property Organization (WIPO) and confirmed by all certified domain Registrars from the above-mentioned areas.
The following specially accredited organizations for alternative domain names dispute resolution resolve disputes: the World Intellectual Property Organization (WIPO); The National Arbitration Forum (NAF) – Minneapolis; the Asian Domain Name Dispute Resolution Center (ADNDRC) – Hong Kong; the Czech Arbitration Court (CAC) – Prague and the Arab Center for Dispute Resolution (ACDR) – Amman. Claimants are allowed to choose an organization that will resolve the dispute. Each organization adopts supplemental rules and resolves the disputes in accordance with the Uniform domain name dispute resolution policy, Rules for uniform domain name dispute resolution policy and the Supplemental Rules of the organization. Тhe administrative procedure is applicable to all top-level domain names listed above.
The complainant who files a claim against the proprietor of a domain name shall prove in the administrative proceeding the cumulative presence of the following three prerequisites:
– Why the domain name is identical or confusingly similar to the trademark in which the complainant has rights – Article 4 (а)(i) of the Uniform Domain Name Dispute Resolution Policy;
– Why the proprietor of the domain name has no rights or legitimate interests in respect of the domain name – -Article 4 (а)(ii) of the Uniform Domain Name Dispute Resolution Policy;
– Why it should be considered that the disputed domain name has been registered and is being used in bad faith – Article 4 (а)(iii) of the Uniform Domain Name Dispute Resolution Policy.
As regards the first ground concerning the identity or similarity with the trademark, the relevant dispute settlement organization will resolve each case individually where the general rules for trademarks will apply. In this line of thought, as similar or identical are two trademarks, the domain names will be similar or identical.
According to Article 4b of the Uniform Domain Name Dispute Resolution Policy, the domain name has been registered and is being used in bad faith:
– When it has been registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the proprietor of the trademark or service mark or to a competitor of that complainant, for a fee exceeding the documented costs directly attributable to the domain name.
– When it has been registered in order to prevent the proprietor of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the proprietor of the domain name has engaged in a pattern of such conduct; or
– When the domain name has been registered primarily for the purpose of disrupting the business of a competitor; or
– When by using the domain name, the proprietor of the domain name has intentionally attempted to attract, for commercial gain, Internet users to the website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the website or location or of a product or service on the website or location.
Once the claim has been prepared, it should be sent to the selected organization in the manner specified in the Supplemental Rules of the organization, which in turn examines whether the claim is regular. It is important to note that the claim and all other documents shall be sent electronically. If it meets all the requirements, the organization shall forward it to the defendant within three days after the complainant has paid the fee. If any deficiencies or irregularities are found in the application, the claimant has the right to remedy them within five days. The organization shall forward the claim and the supporting documentation to the defendant, who shall send a written response within twenty days from the commencement of the procedure. After receipt of the response, the organization should appoint a panel to resolve the dispute. The dispute could be solved by a single or three-member panel, who shall resolve the dispute based on the claim, the response and the supporting documentation in accordance with the Uniform Domain Name Dispute Resolution Policy, Rules for Uniform Domain Name Dispute Resolution Policy and the Supplemental Rules of the organization. The organization issues a written decision within 14 days. In the event that the decision is in favor of the complainant, then the consequences are a termination of the registration of the disputed domain name or a transfer of the disputed domain name to the complainant. If the claim is rejected, the defendant keeps the right on the domain. It is apparent from the above that this administrative procedure cannot lead to the imposition of fines. The decision shall be sent to the company that registered the domain, which is obliged to execute it. The dissatisfied party has the right to refer the dispute to the court within ten days. The Registrar of the domain name should be notified to stop enforcement of the decision until the resolution of the case by the court.
It is important to note that during the dispute, 15 days after completion of the procedure and during the legal dispute before the court concerning the domain name, no change may be done regarding the change of the proprietor of the domain. During the administrative procedure and 15 days after the completion of the procedure, the registrant with whom the domain name is registered cannot be changed.
This article describes the administrative procedure for domain name dispute resolution, which procedure is an alternative to the long and expensive judicial proceedings before the court.
If you are a proprietor of a trademark which is identical or similar to a later registered domain name and wish to defend your rights, you are recommended to consult a specialist in this area. The IP specialist in Bulgaria Krasimira Kadieva will gladly advise on possible ways of resolving disputes in case of a conflict between a trademark and a domain name.
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Legal Disclaimer: This material prepared by Krasimira Kadieva aims to describe the domain name dispute resolution procedure. It does not constitute a legal opinion and cannot be interpreted as individual consultation on any concrete facts or circumstances. The advice of an intellectual property specialist should be obtained for specific questions and situations. For more information on the above-mentioned issues and individual consultations, please contact Krasimira Kadieva at 00359 882 308 670 or make an inquiry using the contact form of this website. Krasimira Kadieva is a Bulgarian and European trademark and design attorney. She offers advice on possible ways for resolving domain name disputes, representation in the proceedings as well as preparation of all necessary documentation.