Most businesses, and many individuals, operate a website. However, you may not have realized when you registered your domain name that you agreed to abide by the terms of the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP is incorporated into the Registration Statement that you are required to accept when you register for most domain names. For example, if you registered a ".com," .net," or ".org" top-level domain with GoDaddy or Network Solutions, you are bound by the terms of the UDRP.
What does this mean for you?
This means that if someone feels that your domain name infringes on their trademark, they can file a complaint against you under the UDRP. If you want to attempt to keep your domain name registration, you will need to participate in that proceeding. The proceeding was designed to be less costly and less time consuming than litigation. However, receiving a UDRP complaint can be intimidating. And if a response is not filed by the deadline and in accordance with very specific rules, you may lose your domain name.
Here is a summary of the UDRP procedure.
The party that is complaining about your domain name (the complainant) will have filed a complaint with one of four accredited resolution service providers. The two most commonly used providers are the National Arbitration Forum and the World Intellectual Property Organization. It should be apparent from the complaint which provider was chosen. It should also be apparent from the complaint whether the complainant elected to have the dispute decided by a single-member panel or a three-member panel.
The complainant is required to send a copy of the complaint to you at the address identified in your whois information that is maintained by your domain name registrar (GoDaddy, Network Solutions, etc.). Therefore, it is very important to keep that information up to date. If you do not update your address (including your email address) and, as a result, do not receive a copy of the complaint, you may lose your domain name registration by default.
You have 20 calendar days from the formal commencement of the proceeding to prepare and file a response. You should review the complaint carefully and determine whether the complainant included the following required elements: (1) the manner in which your domain name was identical or confusingly similar to the complainant's trademark, (2) why you should be considered as having no rights or legitimate interest in the domain name, and (3) why the domain name should be considered as having been registered and used in bad faith. Your response must respond specifically to the statements and allegations contained in the complaint and should demonstrate the rights and legitimate interests that you have in your domain name. You should also submit any documentation or other evidence that is available and relevant to the dispute.
The UDRP rules and the provider rules should be reviewed carefully to determine the required format, word limit, page limit, etc. for the response. If the complainant chose a three-member panel or if the complainant chose a single-member panel, but you want a three-member panel to decide the dispute, you and the complainant should each identify three panelists from an approved provider's list of panelists to serve as one of the panelists.
Once your response is filed, the provider will appoint a panel. The panel will render a decision within 14 days. If the panel finds in favor of the complainant, it can order the cancellation or transfer of your domain name registration. If your domain name is cancelled, it becomes available for anyone in the public to register it. If you are ordered to transfer your domain name registration, you will need to transfer it to the complainant for their use. If the panel finds in your favor, you have the right to keep your domain name registration. The panel does not have the authority to render a monetary judgment. In the event that a legal proceeding is initiated during the UDRP proceeding with respect to your domain name, the panel has the discretion to either suspend or terminate the UDRP proceeding or proceed to a decision.
As one example of a recent domain name dispute proceeding, Tumblr (a popular website that allows people to post photos, quotes, music, and videos) filed a complaint against the registrant of the domain name Tublr.com claiming that the domain name infringed on its rights to the Tumblr trademark. The Tublr.com website redirected visitors to a site that was designed to collect personal information for the chance to win a prize. Although Tublr.com is substantially similar to Tumblr and was not being used for a legitimate operational website, the panel found that there was no evidence of trademark infringement. The registrant of Tublr.com was allowed to keep its domain name registration.
If you receive a domain name dispute complaint or believe that a domain name is infringing on your trademark, we advise you to seek legal counsel. The Law Offices of Marc J. Lane would be happy to help you. For further information, please contact Marc J. Lane in confidence via email at [email protected]marcjlane.com or via telephone at (312) 372-1040/ (800) 372-1040.
Cori A. Mathis is a Principal with The Law Offices of Marc J. Lane, a Professional Corporation. Ms. Mathis is a graduate of De Paul University College of Law (J.D.) and the University of Illinois (B.A.S.).
The Law Offices of Marc J. Lane, A Professional Corporation
180 North La Salle Street
Chicago, Illinois 60601-2701
Nationwide: (800) 372-1040
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Email: [email protected]