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Posts from 2012-09-12

Domain Name Disputes

Domain Name Dispute Policies:

The best alternative to pursuing a domain name dispute through the courts is to take advantage of the domain name dispute policies that have been developed by the organizations that assign domain names. Disputes prior to December of 1999 were handled under the domain name dispute policy created by NSI.

Under this much maligned policy, NSI created a procedure under which a third-party can challenge the right of a domain name owner to use a particular domain name. If the challenge were successful, the domain name would be suspended. This policy only protected parties that had a nationally registered trademark identical to another party's second level domain name (i.e., Microsoft in "www.microsoft.com"). An owner of an unregistered trademark could not initiate an action under this policy, nor could an owner of a trademark that was confusingly similar (but not identical). If the date that the trademark was first registered predated the domain name registration, the domain name owner had to supply their own trademark registration for the second-level domain name. If the domain name owner could not provide such a trademark registration, NSI would suspend all use of the domain name. This is true even if the challenging party could not properly prove a claim of trademark infringement (see the BitLaw discussions on trademark infringement in general and trademark infringement on the Internet for more information).

This policy has now been replaced with a Uniform Domain Name Dispute Resolution Policy created by ICANN and used by all accredited registrars. Under this new policy, a trademark owner can initiate a relatively inexpensive administrative procedure to challenge the existing domain name. In order to prevail, the trademark owner must show:

  1. that the trademark owner owns a trademark (either registered or unregistered) that is the same or confusingly similar to the registered second level domain name;
  2. that the party that registered the domain name has no legitimate right or interest in the domain name; and
  3. that the domain name was registered and used in bad faith.

If the trademark owner successfully proves all three points in the administrative proceeding, then the domain name can either be cancelled or transferred to the prevailing trademark owner. If the trademark owner fails to prove one of these points, the administrative panel will not cancel nor transfer the domain name.

Among the ways that a domain name owner can prove a legitimate right or interest in a domain name is by showing:

  • use or preparations to use the domain name in connection with a bona fide offering of goods or services prior to any notice of the dispute;
  • that the domain name owner has been commonly known by the second level domain name; or
  • that the domain name owner is making legitimate noncommercial or fair use of the domain name, without intent of (i) commercial gain, (ii) misleadingly diverting consumers, or (iii) tarnishing the trademark at issue

A trademark owner can show that a domain name was registered and used in bad faith in a variety of ways, including by showing that the domain name owner:

  • registered the name primarily for the purpose of selling or transferring the domain name to the trademark owner or a competitor of the trademark owner for a price greater than out of pocket costs;
  • engaged in a pattern of registering trademarks of others to prevent the use of the domain name by the trademark owner;
  • registered the domain name primarily to disrupt the business of a competitor; or
  • is attempting to attract users to a web site for commercial gain by creating a likelihood of confusion with the trademark owner's trademark

Content of this article was from: http://www.bitlaw.com/internet/domain.html