Posted on Sep 15, 2010 in News | 0 comments

CONFLICTS BETWEEN TRADEMARKS AND DOMAIN NAMES

The Internet domain name register will effectively register any domain name for a web page address on the Internet that is not identical to a previously registered domain name. Unfortunately the domain name registration takes no account of the class of goods or services associated with the domain name. Therefore, many holders of U.S. trademark and service mark registrations unhappily find out that someone else has already registered their main trademark or service mark, followed by “.com” or “.org,” for example. Such conflicts may be resolved under the Uniform Domain Name Dispute Resolution Policy (UDRP) adopted by the Internet Corporation for Assigned Named and Numbers (ICANN)in a very quick arbitration-like proceeding, or in a United States District Court under the Anticybersquatting Consumer Protection Act of 1999 (ACPA).

Resolution under the UDRP is based upon a contractual obligation of a user of any domain name registered under one of ICANN’s approved providers. Under the UDRP, a registrant is required to submit to an administrative proceeding in the event of certain specified third party complaints. Remedies available through UDRP are limited to requiring the cancellation of the registrants domain name or the transfer of the registrant’s domain name to the complainant. The panels ruling is then enforced through the network of ICANN service providers. The complainant must show that he has rights in his mark, that the subject domain name is confusingly similar to his mark, that the domain name owner has no legitimate interests in the domain name, and that the domain name was registered and is being used in bad faith.

As an alternative or despite a final decision under UDRP, an aggrieved party may bring an action under ACPA in a Federal District Court. The District Court may hear claims brought under Section 43 (ACPA)of the Trademark Act, which imparts liability on a registrant who has a bad faith intent to profit from the use and registration of a domain name that is confusingly similar or identical to a distinctive or famous trademark or service mark. A court may order the forfeiture or cancellation of the domain name or transfer of the domain name to the owner of the mark if liability is proved. When a registrant is unavailable or unknown, a complainant may bring suit against the domain name itself. This procedure is known as an In Rem suit.

Both means of resolution have advantages and disadvantages that should be considered before a course of action is taken. Although resolution under UDRP may be more cost effective and more expediently resolved when compared to a lawsuit, a judge has much more discretion and the ACPA route has the distinct advantage of a single binding decision.