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Uniform Dispute Resolution Policy (UDRP)
The majority of disputes relating to domain names are brought under UDRP. The complaints are usually brought by the holder of a registered trade mark which is identical or very similar to the domain name in question. Disputes relating to the ownership of .com, .net, .org, .biz, info and .name top level domains as well as a considerable number of country code top level domains such as Sweden and Romania are subject to UDRP which will also govern disputes relating to .aero, .coop, .museum and .pro once they are available.
Under the policy, complaints are examined by independent panels and if the panel concludes that the complaint satisfies the requirements specified in the policy, it directs that the domain name should be cancelled or transferred to the complainant. If not, the complaint is rejected.
Requirements for a complaint to succeed
To succeed in a complaint, the complainant must prove that:
- the domain name is identical or confusingly similar to a trade mark in which the complainant has rights;
- the respondent holder has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith.
In order to keep hold of a domain name, the owner must counter the argument, usually raised by the trade mark holder, that it not only registered the domain name in good faith but is also using it in good faith. The complainant will usually argue that the owner of the domain name is seeking to trade off the goodwill in the trademark owned by the complainant.
It is common for more experienced speculators in domain names to develop some use of the domain names so as to be able to use that use as evidence of bona fide use. In such cases, the panel has to decide whether the use is genuine or not. Thus, in a series of "sucks" cases (cases where someone with a negative view about a company registers a domain name with the company's name followed by the suffix "sucks") where the registrant of each name was the same entity, the panel determined that the fact the registrant had set up various sites of the same nature (natwestsucks.com, directlinesucks.com, dixonssucks.com and standardcharteredsucks.com) was regarded as a significant indication that the use was not genuine.
Where the owner of such a domain name seeks to obtain substantial sums from the trade mark owner for transfer of the domain names, this is generally regarded as evidence of bad faith use i.e. that use was not based on a legitimate interest. This does not mean that the registration and use of a company's trade mark as part of a domain name in order to create a forum for genuinely held negative views will never be held as good faith usage. For example, in bridgestone-firestone.net, the owner of the domain name had been engaged for many years in a dispute about pension payments with his former employer, a company in the Bridgestone Firestone group. It was held that he had a right or legitimate interest in establishing a website criticising the complainant at this address.
The domain name has been registered and is being used in bad faith
The third requirement of a valid complaint is that the domain name has been registered and is being used in bad faith. It was confirmed in early cases such as worldwrestlingfederation.com, telstra.org and jeanettewinterson.com that bad faith registration and bad faith use are cumulative requirements, although bad faith use may be evidence of bad faith registration.
At the same time, it was held in telstra.org and subsequent cases, for example toshibastore.com and revlon.net, that 'use' can include passively holding a domain name. According to these cases, it is necessary to consider all the circumstances, for example the strength of the reputation of the trade mark, any explanation provided by the respondent for its registration and subsequent failure to activate the domain name, any concealment of the respondent's identity or provision of false contact details, and whether any legitimate use of the domain name by the respondent is plausible.
Specified circumstances
UDRP specifies various circumstances which, if found by the panel to be present, are evidence of registration and use in bad faith. These include:-
- circumstances indicating that the respondent registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring it to the complainant, or a competitor of the complainant, for a sum in excess of out-of-pocket costs; and
- the respondent registered the domain name primarily for the purpose of disrupting the business of a competitor; and
- by using the domain name, the respondent intentionally attempted to attractinternet users to its website by creating a likelihood of confusion with the owner of the trademark.
Conclusion
If you don't want to loose a domain name that you have registered, you not only have to use the name but also to do so in good faith.
© This article was written by Simon Halberstam, head of E-Commerce law at Sprecher Grier Halberstam LLP, Solicitors and author of Domain Names, a practical guide.
For further information contact Simon on 020 7544 5555 or by email to simonh@sghlaw.com. This article is copyright Sprecher Grier Halberstam LLP 2002 and should not be construed as legal advice or opinion in any specific facts or circumstances. The contents are intended for general information purposes only. You are urged to contact a suitably qualified lawyer for specific advice.
This article is copyright Sprecher Grier Halberstam LLP 2002 and should not be construed as legal advice or opinion in any specific facts or circumstances. The contents are intended for general information purposes only. You are urged to contact a suitably qualified lawyer for specific advice.
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