What are Domain Names?

One of the brilliant structural features of the Internet is the domain name system, DNS. While the content currently available on the Internet is equally accessible simply by using numeric IP addresses, people use the domain names as shortcuts to remember and sort there countless resources.

While every resource has its own unique IP address, there may be several shortcuts that lead to the same IP address. For example, your browser requests the same file from the same IP address when you use mincovlaw.com or canadacopyrightlaw.com in your address bar.

Because the domain names generate recognition of the websites with which they are associated, they have become a very important asset. Indeed, nobody uses http://66.220.149.11 to check their Facebook, although it is exactly the IP address that the browser connects to when the user types http://facebook.com.

Business Value of Domain Names

The obvious value of domain names for the visibility of their websites and brands, coupled with the ease of their registration on the first-come-first-registered basis resulted in many bad faith registrations by unrelated parties of domain names confusingly similar to someone else’s trademarks. This activity received the term “cybersquatting”.

Trademark owners were noticeably upset when they realized that someone else has registered a domain name consisting of their trademark followed by “.COM”. When they tried to explain to the cybersquatters that registration of the domain name infringed their trademark rights, cybersquatters would suggest to settle the dispute by selling the domain name to the trademark owners.

The cybersquatters perfectly realized that in most cases, trademark owners would not find it reasonable to incur the expenses of a full-blown litigation to enforce their trademark rights against the bad faith registrants, and would prudently buy the domain names for a reasonable amount.

Many trademark owners were discouraged by the fact that the court practice in various jurisdictions varied and led to unexpected results.

When the number of domain name disputes was in the hundreds, it became clear that courts are not always the most appropriate venue to settle domain name disputes. Thus, in 1999 ICANN, the authority responsible for the domain name system (DNS), came up with a limited administrative procedure that was very simple, robust and relatively inexpensive, the Uniform Domain Name Resolution Policy, UDRP.

Administrative Procedures

UDRP allows trademark owners to enforce the transfer of domain names confusingly similar to their trademarks from those who have registered and used the domain names in bad faith.

The policy is very straightforward. In order to succeed, the complainant must prove that:

UDRP contains the following non-exhaustive list of circumstances evidencing registration and use of a domain name in bad faith:

UDRP has many advantages compared to traditional litigation:

It also has a few limitations:

UDRP deals with the following general top-level domains (gTLDs):

.AERO.ASIA.BIZ.CAT
.COM.COOP.INFO.JOBS
.MOBI.MUSEUM.NAME.NET
.ORG.PRO.TEL.TRAVEL

Many countries are also relying on variations of UDRP with respect to their national domains (ccTLDs).

A large number of these countries have delegated the dispute resolution to the domain name resolution providers that deal with the gTLDs. For example, disputes over French and Spanish national domain names under their respective national UDRP variations is are handled by WIPO Arbitration and Mediation Center.

.CA domain names and key differences between CDRP and UDRP

Canada also has its national domain name resolution policy, CDRP, that deals with .CA domain names.

It does not rely on the general domain name resolution providers and instead uses the Canadian Internet Registration Authority (CIRA) to handle these disputes.

While recently, CDRP has been revised to make it more similar to UDRP, there are still several key differences between UDRP and CDRP:

Court Action

While UDRP and CDRP offer great advantages over traditional litigation, sometimes court action can be a better option. This is the case when the claim extends beyond the mere transfer of a specific domain name, or when the claimant is seeking damages or a court order preventing the defendant from performing certain acts.

For example, if the trademark owner wishes to prevent posting of certain infringing content on a website under a particular domain name, UDRP will only go as far as to transfer the domain name, if it is confusingly similar to the complainant’s registered trademark. This would not prevent the defendant from using the same content by association with another website, or even no website at all, by simply using the same IP address. If the defendant persists, court action may be the only solution for the plaintiff to obtain an injunction to prohibit the defendant from using the infringing content.

Similarly, if the registration and use by the defendant of a domain name that is confusingly similar to the trademark of the complainant caused damage, then based on availability of evidence and the jurisdiction in which the defendant resides it may be better to file a court action, instead of administrative proceedings.

In most cases, however, a combination of the two procedures may be the best solution.

With UDRP / CDRP it be possible to resolve the domain name issue quickly and inexpensively. If the tribunal orders that the domain name be transferred to the complainant, then the complainant will be able to better assess the battlefield after the defendant has lost one of the infringement tools (the domain name).

This will normally have one of the two consequences: either the defendant will stop further infringing activities; or it will take further steps, making the intention to infringe upon the trademark owner’s rights even more apparent, which will be valuable evidence in court.

Each situation is different. If you believe that someone is unlawfully using your trademark in a domain name, you should consult a lawyer.

Schedule your free 15-minute case assessment phone call or send Andrei Mincov an email.

The information on this website is for general information purposes only. Nothing on this website should be taken as legal advice for any individual case or situation. This information is not intended to create, and its receipt or viewing does not constitute, a solicitor-client relationship.

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