DOMAIN NAME DISPUTES – WIPO & NATIONAL ARBITRATION FORUM UDRP DISPUTES
October 2021 Update - Antonelli vs. Vondran (torrentdefenders.com domain name at issue in WIPO dispute). Vondran WINS. Complainant found to have abused the proceeding process.
Whether your brand is on the line or you are facing a “trademark bully” we can fight for your rights in UDRP domain dispute arbitrations. When your trademark is being hijacked by a cybersquatter, we've got your back and we can help you in a UDRP domain name arbitration proceeding.
One of the biggest problems facing corporations today is internet domain name disputes which implicitly calls into question trademarks and brand building. With the global expansion of domain names (.TV, .YEAH, .ATTORNEY etc.), the internet universe is EXPLODING, and registrants of domain names (sometimes deemed cybersquatters) are battling it out against trademark owners over internet domain names. Some legal issues include:
1. Domain names dealing with company names that are federally registered trademarks (for example, trademarks that have been registered with the USPTO)
2. Domain names that incorporate trademarked company products (ex. product names that have trademarks, whether federally registered or common law trademark rights)
3. Domain names that incorporate company service marks (service marks can be registered as trademarks)
4. Domain names that incorporate corporate slogans that have been federally registered as a trademark or which has common law trademark rights.
5. Domain names that incorporate personal names and nicknames that are protected by trademark rights
They are the kinds of domain names that cybersquatters are purchasing with the hopes of selling them in bad faith to the owners of the trademark.
While you have to applaud the entrepreneurialism of those buying, registering, and selling the domain, you also have to look at the “bad faith aspects” of registering marks of the trademark owners in an attempt to hold the domain hostage and forcing you to buy these domain, often through the use of a “domain name broker” who will also want a commission to help you obtain the domain name which you feel you might be rightly entitled to as a matter of law.
Welcome to the world of domain name disputes and this is what usually triggers a domain name complaint and UDRP proceeding (which is basically on online arbitration to a WIPO domain name arbitrator, or in front of the National Arbitration Forum.
What you need to prove to get your domain from a cybersquatter through the UDRP complaint process.
The complainant in a UDRP domain name dispute needs to prove THREE THINGS:
1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
The party filing a UDRP arbitration with WIPO or National Arbitration Forum has the burden to show they have trademark rights. Trademark rights can be shown by:
(a) showing “common law” trademark rights – basically rights you have in using your trademark in commerce even though you don't have a federally registered trademark, or
(b) showing a valid federal trademark registration.
If the complainant owns a registered trademark then it satisfies the threshold requirement of having trademark rights. The only remaining question is whether the domain name is identical or confusingly similar to the complainant's trademark. F. Hoffmann-La Roche AG v. Relish Enterprises, WIPO Case No. D2007-1629.
2. The trademark holder needs to show that the domain name is registered by the cybersquatter who has no legitimate interest in the domain.
The Complainant bears the general burden of proof under paragraph 4(a)(ii) of the Policy, which burden shifts to the Respondent once Complainant makes a prima facie showing that the Respondent lacks rights or legitimate interests in the domain. See: Neusiedler Aktiengesellschaft v. Kulkarni, WIPO Case No. D2000-1769; see also Dow Jones & Company and Dow Jones LP v. The Hephzibah Intro-Net Project Limited, WIPO Case No. D2000-0704.
The Policy contains a non-exhaustive list of circumstances that may demonstrate when a respondent has rights or legitimate interests in the use of a domain name. The list includes:
(1) using the domain name in connection with a bona fide offering of goods and services;
(2) being commonly known by the domain name; or
(3) making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers. Policy, paragraphs 4(c)(i) – (iii). Accor v. Eren Atesmen, WIPO Case No. D2009-0701.
3. The complainant needs to show the domain name registrant registered and is being used the domain in bad faith.
The domain name arbitration panel may consider several different types of factors to consider whether or not there was bad faith in registering the domain name. For example, a complainant's strong trademark, respondent's lack of evidence of good faith use, and respondent's attempt to conceal its identity are indicators of bad faith. Telstra Corporation Limited v. Nuclear Marshmallows D2000-0003.
Registering a domain name primarily to disrupt a competitor's business constitutes evidence of bad faith. In Bragg v. Condon (plasticdocshop.com, cosmeticdocshop.com) FA0092528, the respondent registered two domain names using a competitor's trademark soon after learning of the competitor's confidential business strategy; and in Easyjet Airline Company Ltd v. Steggles (easyjet.net) D2000-0024, the respondent's web site used the disputed domain name to link to two of the complainant's competitors.
A domain holder may act in bad faith if its primary intent was to sell the domain name to the trademark owner or one of its competitors for a price in excess of out-of-pocket expenses related to the name. See UDRP 4(b)(i). In addition, in Mondich v. Brown (americanvintage.com) D2000-0004, the Panel determined that simple failure to make good faith use of the domain name indicated that the respondent's primary intent was to sell.
These are just some factors that might be considered. There are others.
Do I have a right to skip the UDRP and sue for a federal trademark infringement?
Yes, but this will be much more time-consuming and costly. It is quicker and much less expensive to hire a UDRP law firm to file a domain name dispute arbitration than it is to pursue a federal trademark infringement action, or an ACPA lawsuit (Anti-Cybersquatting Consumer Protection Act).
What is the ACPA?
As articulated in DSPT Intern., Inc. v. Nahum (9th Cir. 2010) 624 F.3d 1213, 1218-19:
“The Anti–Cybersquatting Consumer Protection Act establishes civil liability for “cyberpiracy” where a plaintiff proves that:
(1) the defendant registered, trafficked in, or used a domain name;
(2) the domain name is identical or confusingly similar to a protected mark owned by the plaintiff; and
(3) the defendant acted “with bad faith intent to profit from that mark
the Anti-Cybersquatting Consumer Protection Act was enacted to eradicate the practice of cybersquatters registering several hundred domain names in an effort to sell them to the legitimate owners of the mark.” There are money damages available under this federal law, which is why it is important to always consider using this act to stop cybersquatters (there are no monetary damages or attorney fees awarded in a UDRP domain complaint).
Sample UDRP decision from National Arbitration Forum
Here is a decision from one decision involving the famous actress Cameron Diaz (one of my favorite actresses). You can see how the 3 factors are analyzed.
- Complainant makes the following assertions:
- The domain name that Respondent registered, <camerondiaz.com>, is identical to Complainant's CAMERON DIAZ mark.
- Respondent has no rights to or legitimate interests in the <camerondiaz.com> domain name.
- Respondent registered and used the <camerondiaz.com> domain name in bad faith.
- Respondent failed to submit a Response in this proceeding.
Complainant established common law rights in the CAMERON DIAZ mark.
Complainant established that the disputed <camerondiaz.com> domain name is identical to Complainant's CAMERON DIAZ mark.
Complainant established that Respondent has no rights to or legitimate interests in the domain name containing Complainant's protective mark.
Complainant established that Respondent has used the disputed domain name in an attempt to trade off the good will associated with the CAMERON DIAZ mark.
Complainant established that Respondent registered and used the disputed domain name in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
Given Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(e), 14(a) and 15(a) of the Rules and will draw such inferences as the Panel determines to be appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations and inferences set forth in the Complaint as true unless the evidence is clearly contradictory. See Vertical Solutions Mgmt., Inc. v. webnet-marketing, inc., FA 95095 (Nat. Arb. Forum July 31, 2000) (holding that the respondent's failure to respond allows all reasonable inferences of fact in the allegations of the complaint to be deemed true); see alsoTalk City, Inc. v. Robertson, D2000-0009 (WIPO Feb. 29, 2000) (“In the absence of a response, it is appropriate to accept as true all allegations of the Complaint.”).
Paragraph 4(a) of the Policy requires Complainant to prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical to or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
Identical to and/or Confusingly Similar
Registration of a trademark is not necessary to establish that Complainant has rights in the mark, provided Complainant can demonstrate common law rights through sufficient secondary meaning that attaches to the mark. See McCarthy on Trademarks and Unfair Competition, § 25:74.2 (4th ed. 2002) (The ICANN dispute resolution policy is “broad in scope” in that “the reference to a trademark or service mark ‘in which the complainant has rights' means that ownership of a registered mark is not required–unregistered or common law trademark or service mark rights will suffice” to support a domain name complaint under the Policy); see also Great Plains Metromall, LLC v. Creach, FA 97044 (Nat. Arb. Forum May 18, 2001) (“The Policy does not require that a trademark be registered by a governmental authority for such rights to exist.”).
Complainant claims common law rights in the CAMERON DIAZ mark because the mark is Complainant's name and Complainant contends that the name has acquired secondary meaning due to the fame and repute of Complainant as an actress. Complainant has appeared in more than 30 movies, beginning with The Mask in 1994. Prior to Respondent's registration of the <camerondiaz.com> domain name in 1996, Complainant appeared in The Mask, The Last Supper, She's the One, Feeling Minnesota, and Head Above Water. Absent evidence to the contrary, and recognizing Complainant's fame and repute as an actress, the Panel finds that pursuant to Policy ¶ 4(a)(i) Complainant established common law rights in the CAMERON DIAZ mark. See Roberts v. Boyd, D2000-0210 (WIPO May 29, 2000) (finding that trademark registration was not necessary and that the name “Julia Roberts” has sufficient secondary association with the complainant that common law trademark rights exist); see also James v. Demand Domains, FA 1106240 (Nat. Arb. Forum Dec. 27, 2007) (“The AMI JAMES mark has become distinct through Complainant's use and exposure of the mark in the marketplace and through use of the mark in connection with Complainant's television show, clothing line, and tattoo shop for over seventeen years.”).
Complainant asserts that the <camerondiaz.com> domain name is identical to Complainant's CAMERON DIAZ mark. The disputed domain name omits the space between the two words in the mark and adds the generic top-level domain “.com.” The Panel agrees; the <camerondiaz.com> domain name is identical to Complainant's CAMERON DIAZ mark pursuant to Policy ¶ 4(a)(i). See Diesel v. LMN, FA 804924 (Nat. Arb. Forum Nov. 7, 2006) (finding <vindiesel.com> to be identical to complainant's mark because “simply eliminat[ing] the space between terms and add[ing] the generic top-level domain (“gTLD”) ‘.com' … [is] insufficient to differentiate the disputed domain name from Complainant's VIN DIESEL mark under Policy ¶ 4(a)(i)”); see also Bond & Co. Jewelers, Inc. v. Tex. Int'l Prop. Assocs., FA 937650 (Nat. Arb. Forum Apr. 30, 2007) (finding that the elimination of spaces between terms and the addition of a gTLD do not establish distinctiveness from the complainant's mark under Policy ¶ 4(a)(i)).
Respondent did not submit a response in this case and therefore made no arguments under Policy ¶ 4(a)(i). Nonetheless, the Panel examined the record and found no evidence contrary to Complainant's allegations.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(i).
Rights to and Legitimate Interests:
After establishing its rights, Complainant asserts that it has not granted Respondent any license to use the CAMERON DIAZ mark. The WHOIS information associated with the disputed domain names lists Respondent as “Network Operations Center c/o Alberta Hot Rods.” The Panel has before it no evidence from Respondent or otherwise that suggests that Respondent has any rights to or legitimate interests in the mark or disputed domain name under Policy ¶ 4(c)(ii). See M. Shanken Commc'ns v. WORLDTRAVELERSONLINE.COM, FA 740335 (Nat. Arb. Forum Aug. 3, 2006) (finding that the respondent was not commonly known by the <cigaraficionada.com> domain name under Policy ¶ 4(c)(ii) based on the WHOIS information and other evidence in the record); see also RMO, Inc. v. Burbridge, FA 96949 (Nat. Arb. Forum May 16, 2001) (interpreting Policy ¶ 4(c)(ii) “to require a showing that one has been commonly known by the domain name prior to registration of the domain name to prevail”).
According to Complainant, Respondent is using the <camerondiaz.com> domain name to resolve to a website displaying links to third-party websites, including adult-oriented websites. The Panel finds that this is not a bona fide offering of goods or services under Policy ¶ 4(c)(i) and it is not a legitimate noncommercial or fair use under Policy ¶ 4(c)(iii). See Constellation Wines U.S., Inc. v. Tex. Int'l Prop. Assocs., FA 948436 (Nat. Arb. Forum May 8, 2007) (finding that the respondent had no rights or legitimate interests under Policy ¶¶ 4(c)(i) or 4(c)(iii) by using the disputed domain name to operate a website featuring links to goods and services unrelated to the complainant); see also Paws, Inc. v. Zuccarini, FA 125368 (Nat. Arb. Forum Nov. 15, 2002) (holding that the use of a domain name that is confusingly similar to an established mark to divert Internet users to an adult-oriented website “tarnishes Complainant's mark and does not evidence noncommercial or fair use of the domain name by a respondent”).
Respondent failed to submit a response in this case and therefore makes no arguments under Policy ¶ 4(a)(ii). The Panel examined the record and found no evidence from Respondent or otherwise to contradict Complainant's allegations.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(ii).\
Registration and Use in Bad Faith:
Complainant argues that Respondent has been the respondent in prior UDRP disputes wherein the disputed domain names in those cases were transferred to the respective complainants. See, e.g., Amber Smith v. Network Operations Center c/o Alberta Hot Rods, FA 371622 (Nat. Arb. Forum Jan. 13, 2005); see also H-D Michigan Inc. v Network Operations Center c/o Alberta Hot Rods, FA 671212 (Nat. Arb. Forum May 22, 2006). In keeping with ICANN Policy, the Panel finds that this evidence supports findings of a pattern of bad faith registration and use pursuant to Policy ¶ 4(b)(ii). See Westcoast Contempo Fashions Ltd. v. Manila Indus., Inc., FA 814312 (Nat. Arb. Forum Nov. 29, 2006) (finding bad faith registration and use pursuant to Policy ¶ 4(b)(ii) where the respondent had been subject to numerous UDRP proceedings where panels ordered the transfer of disputed domain names containing the trademarks of the complainants); see also Nat'l Abortion Fed'n v. Dom 4 Sale, Inc., FA 170643 (Nat. Arb. Forum Sept. 9, 2003) (finding bad faith pursuant to Policy ¶ 4(b)(ii) because the domain name prevented the complainant from reflecting its mark in a domain name and the respondent had several adverse decisions against it in previous UDRP proceedings, which established a pattern of cybersquatting).
According to Complainant, Respondent is using the <camerondiaz.com> domain name to link to third-party websites, some of which feature adult-oriented content. Such evidence supports an inference that Respondent is attempting to profit by hosting links on the resolving website. The Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(b)(iv). See Google Inc. v. Bassano, FA 232958 (Nat. Arb. Forum Mar. 8, 2004) (holding that the respondent's use of the <googlesex.info> domain name to intentionally attract Internet users to a website featuring adult-oriented content constituted bad faith registration and use under Policy ¶ 4(b)(iv)); see also Ass'n of Junior Leagues Int'l Inc. v. This Domain Name My Be For Sale, FA 857581 (Nat. Arb. Forum Jan. 4, 2007) (holding that the respondent's use of the disputed domain name to maintain a pay-per-click site displaying links unrelated to the complainant and to generate click-through revenue suggested bad faith registration and use under Policy ¶ 4(b)(iv)).
Complainant argues that by linking to adult-oriented websites Respondent is attempting to tarnish Complainant's CAMERON DIAZ mark. The Panel finds that Respondent registered and is using the disputed domain name in bad faith pursuant to Policy ¶ 4(a)(iii). See Wells Fargo & Co. v. Party Night Inc., FA 144647 (Nat. Arb. Forum Mar. 18, 2003) (finding that the respondent's tarnishing use of the disputed domain names to redirect Internet users to adult-oriented websites was evidence that the domain names were being used in bad faith); see also Six Continents Hotels, Inc. v. Nowak, D2003-0022 (WIPO Mar. 4, 2003) ( “[W]hatever the motivation of Respondent, the diversion of the domain name to a [adult-oriented] site is itself certainly consistent with the finding that the Domain Name was registered and is being used in bad faith.”).
Respondent did not submit a response in this case and therefore makes no arguments under Policy ¶ 4(a)(iii). However, the Panel reviewed the submission and found no evidence from Respondent or otherwise to counter Complainant's allegations.
The Panel finds that Complainant satisfied the elements of ICANN Policy ¶ 4(a)(iii).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED
Accordingly, it is Ordered that the <camerondiaz.com> domain name be TRANSFERRED from Respondent to Complainant.
PODCAST: Listen to Attorney Steve® explain RDNH
Click for more information on Reverse Domain Name Hijacking Cases.
Will your domain name be LOCKED during a UDRP dispute with WIPO?
Yes. Per the ICANN domain dispute rules it says:
"220.127.116.11 In the event that a domain which is the subject of a UDRP dispute is deleted or expires during the course of the dispute, the complainant in the UDRP dispute will have the option to renew or restore the name under the same commercial terms as the registrant. If the complainant renews or restores the name, the name will be placed in Registrar HOLD and Registrar LOCK status, the WHOIS contact information for the registrant will be removed, and the WHOIS entry will indicate that the name is subject to dispute. If the complaint is terminated, or the UDRP dispute finds against the complainant, the name will be deleted within 45 days. The registrant retains the right under the existing redemption grace period provisions to recover the name at any time during the Redemption Grace Period, and retains the right to renew the name before it is deleted."
This can be disappointing for a Respondent who is facing a reverse domain name hijacker and the domain at dispute is about to expire. The domain gets locked and essentially registered in the name of the Complainant until the case is resolved. If you win, you get it back. If not, the complainant becomes the new registered owner.
What happens if a Trademark Bully files a UDRP action in Bad Faith?
Some trademark owners think that they can sue or bully anyone to prevent a similar use of their domain name that they allege may "cause consumer confusion." While this may be a legal right IF YOU HAVE A VALID TRADEMARK THAT PREDATES THE REGISTRATION OF THE OFFENDING DOMAIN, if the trademark is filed after the domain at issue was registered, and if the Complainant cannot establish common law trademark rights, the filing of a WIPO or NAF (National Arbitration Forum) lawsuit can be deemed in "bad faith" and may constitute an "abuse of the administrative proceeding." When this happens, the filer of the UDRP arbitration may be held liable in state or federal court for a wide variety of legal theories. The main causes of action to look at are:
- Reverse Domain Name Hijacking ("RDNH") - this can violate the ACPA law and lead to damages and attorney fees
- Tortious interference with the registrant's contract with their domain registrar (ex, GoDaddy, eNom, Tucows, Network Solutions, Wild West Domains, GHO internet, and others), or interference with prospective business advantage
- Wrongful institution of civil proceedings (similar to malicious prosecution as it may be called in some states)
- Aiding and abetting by a law firm, or a law firm partner, that filed a malicious lawsuit which is meritless and designed to harass, embarrass and.or annoy (especially a lawful competitor)
- Seeking cancellation of the trademark (if before the 5-year incontestability status takes effect).
More about the abusive filing of UDRP domain disputes can be found here.
Contact a Domain Name Dispute Attorney [UDRP]
When you feel that you may the victim of cybersquatting, user-squatting (person who is registering user names that infringe your trademarks) or typo-squatting (misspelling domains that capitalize on your trademark and divert traffic to the cyber-squatters website) you should contact an internet domain name lawyer. We can help you decide whether to file a federal lawsuit alleging trademark infringement or a violation of the ACPA or to simply move forward with the more efficient UDRP arbitration process.
We can help you prove the registrant of the domain name registered the domain in bad faith and for the sole purpose and with the intent to take advantage of your brand and trademarks. If the WIPO arbitration panel agrees, we can seek to order the registrar to transfer the domain back to you. If we decide to pursue federal trademark or ACPA litigation we will seek all monetary and equitable remedies available. We also defend UDRP and Federal Trademark actions.
Call our internet and IP attorney today at (877) 276-5084. We offer low flat rate fees for UDRP arbitration cases. We look forward to working with you.