An Overview of the ICANN Domain Name Dispute Resolution Process
- Apr 24 2018 |
- Category: Blog
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a system for the resolution of disputes regarding the registration of internet domain names. The UDRP was established by the Internet Corporation for Assigned Names and Numbers (ICANN). Below is an overview of the UDRP.
Upon the formation of ICANN, one of its first tasks was addressing the illegal use of trademarks as domain names. In order to address this issue, ICANN commissioned the United Nations World Intellectual Property Organization (WIPO) to produce a report on this topic. The report, which recommended the establishment of an administrative procedure to address abusive registrations, eventually led to the formation of the UDRP.
When a registrant picks a domain name, he or she must represent that registration of the name won’t infringe upon or violate the rights of any third party. In addition, registrants must agree to participate in a proceeding if any third party asserts a violation claim. In a UDRP proceeding, a complainant must establish the following three elements to succeed:
- The registrant doesn’t have any legitimate interests or rights in the domain name;
- The domain name is confusingly similar or identical to a service mark or trademark in which the complainant has rights; and
- The domain name has been registered and it is being used in bad faith.
In a UDRP proceeding, several factors are considered to assess bad faith, including:
- Whether the registrant of the domain registered it for the purpose of renting, selling, or otherwise transferring it to the complainant who is the owner of the service mark or trademark;
- Whether the registrant of the domain registered it to prevent the owner of the service mark or trademark from reflecting the mark in a corresponding domain name; and
- Whether the registrant of the domain name registered it primarily for the purpose of disrupting a competitor’s business; or
- Whether by using it, the registrant of the domain name purposefully attempted to attract, for commercial gain, web users to his or her website by creating a high likelihood of confusion with the complainant’s service mark or trademark.
ICANN Domain Name Dispute Resolution Attorneys
In the contemporary digital economy, conducting business online can be essential for achieving success in the marketplace. In helping our clients meet their business objectives, Carter DeLuca works with a wide range of businesses and individuals to establish, maintain, and protect their domain names and online trademark rights and copyrights. Our attorneys help to create and select distinctive domain names that can establish an online brand identity. Domain names are valuable assets that are protected by intellectual property rights. We have expertise in handling disputes under the UDRP and can provide you with trademark risk assessment as part of a comprehensive domain name portfolio development strategy. Please contact us for a consultation.