Use of Trademarks in Domain
Names & Domain Name Disputes
What Is a Domain Name?
• A domain name is the user-friendly form of an
Internet Protocol (IP) address that points an
Internet user’s computer to the website the user
wants to view
• Each IP address is a string of numbers
• The domain name is made of characters that
are easier to remember
• Example: inta.org is easier to remember than its
corresponding IP address, 64.244.180.150
Domain Name System (DNS)
• Basically, DNS is a global addressing
system
• DNS allows users to go to a specific website
by entering its corresponding domain name
• DNS locates and translates domain names
into IP addresses
Components of Domain Names
Second-level domain
www.inta.org
Top-level domain
Components of Domain Names:
Top-Level Domains
• Highest level in the DNS hierarchy
– Generic Top-Level Domains (gTLDs)
• Examples: .com, .net, .org
• Also, gTLDs for business or interest groups (e.g., .gov for the U.S.
government, etc.)
• NEW gTLDs (e.g., .brand, .community, .geographical area)
– Country-Code Top-Level Domains (ccTLDs)
• Examples: .au for Australia, .mx for Mexico
– Internationalized Domain Names (IDNs)
• Contain local language characters such as accents and may include
non-Latin scripts
• Examples: 香港 (Hong Kong), рф (Russian Federation)
Components of Domain Names:
Second-Level Domains
• Second-level domain names:
– Follows “www.” and precedes the top-level domain name
– Chosen by registrant
– Must be:
(1) unique term not previously used as a second-level
domain name, and
(2) registered
New gTLD Names
• Examples of new gTLD names:
– by brand (.amazon, .dunlop), music and arts community
(.theater, .band), cause (.eco, .charity),
geographic/cultural area (.nyc, .irish), etc.
• Companies and organizations will be able to create and
operate a registry business for the new gTLD
• The use of non-Latin characters (such as Cyrillic, Arabic,
Chinese, etc.) will also be allowed in gTLDs
• The initial application process closed on May 30, 2012
• The time period for a second round of applications has not
yet been established, but it will likely be at least a couple of
years after the close of the initial round of applications
New gTLD Names:
Trademark Owners’ Remedies
• The World Intellectual Property Organization
(WIPO) is the exclusive provider of dispute
resolution services for trademark-based “Legal
Rights Objections” for the new gTLDs
(More info: http://www.wipo.int/amc/en/domains/newgtld/)
Timeline for New gTLDs
For the most up-to-date information, see:
• http://www.inta.org/Advocacy/Pages/gTLDs.
aspx
• http://newgtlds.icann.org/en/applicants/agb
How Are Domain Names Registered?
• Internet Corporation for Assigned Names and Numbers
(ICANN) manages domain name system
(More info: http://www.icann.org/)
• ICANN-Accredited Registrars handle the actual registration
of gTLDs
• National Registry or Local Registrars handle the actual
registration of ccTLDs
Domain Name Disputes
Cybersquatting refers to when a party registers, without
permission, a domain name that is confusingly similar to a
third-party trademark with the intention of seeking to reap
some type of commercial or financial benefit, often in an
effort to block the trademark owner from using the domain
until the owner agrees to pay an exaggerated sum for the
domain.
Domain Name Disputes
• Typosquatting
• Domain Name Testing
Reactions to Cybersquatting
• Uniform Domain-Name Dispute-Resolution
Policy (UDRP):
http://www.icann.org/en/help/dndr/udrp
• Anticybersquatting Consumer Protection Act
1999 (ACPA):
http://www.law.cornell.edu/uscode/text/15/1125
Uniform Domain-Name Dispute-Resolution
Policy (UDRP)
• International arbitration process for resolution of domain
name disputes adopted by ICANN
• Incorporated into domain name registration agreements of
accredited registrars
– Also, registrants make certain representations regarding
their domain names (e.g., domain name registration will
not infringe third-party rights, etc.)
• Only administrative alternative to going to courts
UDRP Service Providers
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World Intellectual Property Organization (WIPO)
National Arbitration Forum (NAF)
Asian Domain Name Dispute Resolution Centre
The Czech Arbitration Court Arbitration Center for Internet
Disputes
(More info: http://www.icann.org/en/help/dndr/udrp/providers)
UDRP: Applicable to the Following
• All ICANN-Accredited Registrars for
gTLDs: .aero, .asia, .biz, .cat, .com, .coop,
.info, .jobs, .mobi, .museum, .name, .net,
.org, .pro, .tel, .travel and .xxx
• Some ccTLDs, such as .au (Australia)
UDRP Rules
Proceedings are governed by:
• The Uniform Domain-Name DisputeResolution Policy (UDRP), AND
• Supplemental rules issued by the dispute
resolution service provider
UDRP Procedure:
WIPO Example
•
•
•
•
•
•
Complaint filed
Formal commencement
Response due (within 20 days)
1 or 3 panelist(s) appointed
Decision due to WIPO (within 14 days)
WIPO forwards decision to parties, ICANN and registrar
(within 3 days)
• Decision implemented by registrar
(More info: http://www.wipo.int/amc/en/domains/gtld/udrp/)
UDRP Policy
• Complaint requirements:
(a) Same or confusingly similar trademarks
(b) No legitimate interest in the domain name
(c) Bad faith registration and use of the domain
name
UDRP: Same or Confusingly Similar
Trademarks
• Domain name is identical or confusingly similar to a
trademark in which the complainant has rights
• Different panelists may have different views with regard to
trademark + terms (sucks, love, my, hate, …) (e.g.,
xyzsucks.com) (the content will generally determine the
relevance of the term)
• Different panelists may also have different views with
regard to “generic” trademarks (the content and
respondent’s rights will likely determine the outcome)
(More Info: http://www.wipo.int/amc/en/domains/search/overview2.0/index.html)
UDRP: No Legitimate Interests
• Registrant/respondent does not have any
rights or legitimate interests in the domain
name at issue
• Complainant must establish prima facie case
that respondent lacks rights
(More Info: http://www.wipo.int/amc/en/domains/search/overview2.0/index.html)
UDRP: Demonstrating Rights & Legitimate
Interests
• Use of (or demonstrable preparations to use)
the domain name in connection with a bona fide
offering of goods/services
• Commonly known by the domain name (even if
no trademark rights)
• Legitimate noncommercial or fair use (e.g., in
some cases, criticism and fan sites)
(More info: http://www.icann.org/en/help/dndr/udrp/policy)
UDRP: Bad Faith
• Registrant registered and is using the
domain name in bad faith
• Bad faith is determined at the time of
registration (not renewal)
• Offers to sell a domain name (even during
settlement discussions) can show bad faith
(More Info: http://www.wipo.int/amc/en/domains/search/overview2.0/index.html)
UDRP: Evidence of Registration and Use in
Bad Faith
• Registration of the domain name to:
– Sell, rent or transfer the domain name for
valuable consideration in excess of the out-ofpocket costs directly related to the domain name
– To prevent the owner of the trademark from
obtaining the domain name, or a pattern of such
conduct
– Disrupt business of a competitor
– Attract users to a website for commercial gain by
creating confusion with trademark owner’s mark
UDRP Remedies
• Cancellation of the domain name
• Transfer of the domain name to the
trademark owner
Other Jurisdictions
• Many countries have their own policies and procedures
• Examples:
Mexico —Domain Name Dispute Resolution Policy for .mx (LDRP):
http://www.registry.mx/jsf/static_content/domain/policies_second.jsf
Israel—Procedures for Alternative Dispute Resolution under the
.il ccTLD by Dispute Resolution Panels (IL-DRP):
http://www.isoc.org.il/domains/ildrp.html
(More Info: WIPO Arbitration & Mediation Center ccTLD Database:
http://www.wipo.int/amc/en/domains/cctld_db/)
Anticybersquatting Consumer Protection
Act (ACPA)
• United States law that provides trademark owners
with a civil remedy against cybersquatting
• Cybersquatting is defined as “registering,
trafficking in, or using a domain name with bad
faith intent to profit from the goodwill of a
trademark belonging to someone else”
• One portion of ACPA relates to famous individuals
ACPA Requirements
• The mark is valid
• The owner registered the domain name in
bad faith in order to profit from the mark
• The mark was distinctive when the domain
name was registered
• The domain name is identical or confusingly
similar to the mark
ACPA Remedies
• A court order requiring that the domain
name be transferred to the mark owner
• Monetary damages
Summary—UDRP vs. ACPA
ACPA
UDRP
Expensive
Inexpensive
Lengthy proceedings
Quick proceedings
Uncertain
Majority of decisions in favor of
complainant
Limited to the United States
Incorporated globally for certain
domains (e.g., .com)
Damages
Damages are not available
Recommendations to Trademark Owners
• Use watch services
• Proactively register a few basic variations of
your company name or brand name for
defensive purposes (also known as
defensive registrations)
INTA Resources
• Internet Topic Portal
• Domain Names Fact Sheet
• Differences Between Trademarks and Domain
Names Fact Sheet
• The UDRP: Alternative Dispute Resolution For
Domain Name Disputes Fact Sheet