Get Your Domain Name Back Cost Effectively Through the Uniform Dispute Resolution Policy

Whether you’re a small business owner or a mega billion multinational, the world wide web is your mutual doorstep. Use a domain name and web site wisely and your footprint is global—sales, information, advertising, content delivery, etc.—all flow from the basic and familiar “www.yournamehere.com”. The domain name is the 21st century property right, yet the legal means to defend it are mysterious to many. Have you built name recognition for your business? Have you registered a domain name that people recognize as an extension of your business’ goodwill? Has someone stolen your domain name or registered a domain name that is confusingly similar? Chances are that you have trademark rights in your business and domain names that need protection. For you, there is an alternative to litigation that is accessible and affordable.

For the Business Owner Looking to Quickly Defend His Business and His Domain Names, The Uniform Dispute Resolution Policy is the Answer

Providing business and domain name owners a tool to quickly and cost effectively defend their rights, the Uniform Domain Name Dispute Resolution Policy (the “Policy”) was adopted by the Internet Corporation for Assigned Names and Numbers (“ICANN”), a federally mandated body that oversees domain names worldwide. The Policy is built on tried and tested arbitration procedure and organizations. Rather than costly and time consuming litigation, a trademark holder can use the Policy to gain control over a domain name that has been registered in bad faith with the intent to profit commercially from that trademark.

Since its adoption in 1999, the Policy has made domain name dispute resolution dramatically more accessible. The Policy has several major advantages over going to court. The Policy is nearly universal, as all accredited domain named registrars have adopted the Policy for domain names ending in “.biz”, “.com”, “.coop”, “info”, “.museum”, “.name”, “.net” and “.org”. Disputes under the Policy are handled by panels or arbiters specializing in domain name disputes. In addition, disputes under the Policy are conducted entirely on paper or via the Internet, without the need for personal appearance or travel. Therefore, a complaint under the Policy can be processed within two months for much less than litigation and can address domain names registered in any part of the world. This means that since the attorney has much less burden, greater predictability, and bypasses an overloaded trial court, his workload and your fees are significantly reduced.

How do you file a Complaint Under the Policy?

The first step in the process is to file a complaint with a recognized arbitration association that handles disputes under the Policy. These include the World Intellectual Property Organization (“WIPO”), the National Arbitration Forum, and the Center for Dispute Resolution. After paying their one time fee (roughly in the range of $2,000.00 for 3 or fewer domain names under dispute), the complaint and supporting materials are submitted to an arbitration panel for review online.

What Do You Get?

Under the Policy, the winner can get the offending domain name cancelled or transferred. These remedies are efficient as transfers or cancellations are effected by the offending domain name’s Registrar, which must comply with a decision under the Policy. The Policy was designed to defend against those who register domain names in order to profit commercially from them by reselling or diverting traffic. Abusive registrants generally do not use the domain names to offer bona fide goods or services, but register with the sole intent of profiting from the transfer. In cases where a respondent has legitimate competing rights or interests in a domain name, the Policy is unlikely to provide relief, since bad faith will likely not be found. Also, if a business owner seeks damages for misuse of a domain name, legal action in the courts will be necessary. Decisions under the Policy may be appealed in court within 10 days after a final decision has been handed down. In the event that an appeal is taken, cancellation or transfer of the disputed domain name is postponed until that court renders a decision.

Good Legal Counsel Provides Compelling and Persuasive Complaints under the Policy

Good attorneys can skillfully present your case, your trademark rights, and the sequence of events in a compelling and persuasive complaint. Moreover, if the offending domain name holder responds (statistically a large percentage does not, simply defaulting due to the strength of the complaint), the attorney can skillfully deflect their comments. Complaints under the Policy must demonstrate:
(i) the domain name in dispute is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.

Wahab, Riveles & Medenica LLC is extremely experienced with the Uniform Dispute Policy and has saved its clients time, expense, and aggravation by securing stolen and confusingly similar domain names. Our clients have recognized the Policy as an indispensable tool. If you have similar problems we invite you to contact us with your questions about how the Policy and WRM can assist you.

© 2004 Wahab & Medenica LLC