Let’s imagine you’ve found a website that bears your trademarked branding and is domain squatting. You locate the infringement through brand intelligence, now what? Not all domain takedowns are the same. Some are a lot harder to get removed if it’s not a clear case of phishing or fraud. When dealing with trademark infringements, domain registrars (the organizations that sell domain names) generally try to avoid making the decision themselves to take down a site when a trademark infringement has been submitted to them.
In some cases, a registrar isn’t able to act on removing a domain that is infringing upon a trademark, and other takedown attempts such as a cease and desist order do not work. In that case, there is a procedure that can be invoked that gives a company the right to argue their case that their mark is being used unfairly.
Back in 1999, when the internet rules and regulations were being drawn up by ICANN (the organization responsible for coordinating the maintenance and procedures of namespaces of the Internet), one of the agreements that arose from this seminar was the adoption of a process called UDRP.
UDRP stands for Uniform Domain Name Resolution Policy, and was created to clear cases of bad-faith, abusive registration and use of domain names among trademark owners. In other words, it gives a company the power to dispute a domain name that they wish to challenge, and, if successful, have that offending domain name transferred or canceled.
Although it can be a lengthy process, it is a cheaper alternative to adversary disruption than taking legal action. The registrar hosting the offending domain name has to comply with the decision of the administrative panel if it is proven that the person or entity is acting in bad faith.
Three essential elements to a UDRP filing
The process of a UDRP dispute is appeals based, meaning that it is up to the company making the dispute to provide evidence that the domain name is infringing upon their trademark.
This is accomplished by having to prove three key elements:
- 1. Identical or Confusingly Similar
Is the company’s trademark and the registered domain name identical or confusingly similar?
A company that has a registered trademark, and a person or entity has registered a domain name that looks similar to that mark of that company, then this element is fairly easy to prove. For example, State Farm (statefarm.com) successfully disputed the domain name statefarmsinurance.com. Adding an “s” after “farm” and the word “insurance” to the domain name was clearly confusingly similar to State Farm’s own registered domain name and was subsequently transferred.
- 2. Infringer Does Not Have Rights
Does the person or entity have the rights or legitimate interest to use the domain name?
This element requires proof of prima facie, that is, a need to only present enough evidence to create a rebuttable presumption that the person or entity has no rights to the domain name in dispute. Once that’s been established, then the burden shifts to the person or entity that registered the disputed domain name.
- 3. Registered & Used In Bad Faith
Is the registered domain name being used in bad faith?
If the dispute can prove elements one and two, then the third element “bad faith” must also be demonstrated. The following list is not exhaustive, but any of the following circumstances are a few examples of bad faith:
- The person or entity acquired the domain primarily for the purpose of selling, renting, or transferring the domain back to the company or a competitor of the company for consideration in excess of the amount paid when obtaining the domain.
- The person or entity registered the domain to prevent the trademark owner from purchasing it and there has been a pattern of this type of conduct before.
- The person or entity registered the domain for the primary purpose of disrupting a competitor’s business.
- The person or entity’s use of the domain is for commercial gain and they intentionally attempted to attract internet users to its website or other online location while simultaneously creating a likelihood of confusion with the company’s mark.
UDRP process and timeframe
When all evidence has been collected and documented, the filing is done through a provider that ICANN has authorized to adjudicate on UDRP disputes. This is most commonly through the World Intellectual Property Organization (WIPO). With them, it’s possible to select up to five domain names for the same filing price, and also choose how many members are desired on the administrative panel; one or three.
Once the filing has been sent, it can then take approximately ten weeks for the decision to be made.
How can ZeroFox help?
If you have a protected and registered trademark and a person or entity has registered a domain name that is infringing on your brand, then you might have a good case for a UDRP filing. Zerofox can provide an assessment of your domains to see if they meet the established criteria for UDRP and assist you through the process. ZeroFox can also work with our Global Disruption Network to work to take down the malicious site or content.
To learn more about ways to protect your brand and domain online, download our 5 Step Guide to Brand Protection.