Whether considering registration of a domain name, objecting to another party’s domain name, or receiving an objection concerning your domain name, the first step is to determine your rights. Baker and Rannells can assist you in such matters since domain names and trademark rights go hand- in- hand.
The final outcome of any domain name dispute may result in the cancellation or transfer of a domain name from one party or the other. If an amicable resolution is not reached, the parties have two options: arbitration or litigation.
Arbitration: Most arbitration is governed by the rules and regulations set forth in the Uniform Domain Dispute Resolution Policy (“UDRP”) developed by ICANN (Internet Corporation for Assigned Names and Numbers). When a person registers a domain name with any of the ICANN approved registrars, that person becomes contractually bound to the UDRP rules and regulations for arbitration. Arbitration is on a fast-track, it is geographically unlimited, and is a relatively inexpensive means of resolving ownership issues. There are only two remedies available in arbitration: cancellation or transfer of the domain name in issue.
Litigation: Litigation typically takes place in a federal court and it can be commenced before (in lieu of), during, or after arbitration. In litigation, a party is also free to bring a number of claims, e.g., trademark infringement, common law unfair competition and/or passing off, dilution claims, and/or a claim under the U.S. Anti-cybersquatting Consumer Protection Act.
To succeed, a party must establish each of the following elements:
- That the complained of domain name is identical or confusingly similar to the party’s domain name or trademark;
- That the alleged infringer has no legitimate rights in the domain name,
- That the domain name is being used and/or was registered in “bad faith.”