By Stina Pilotti |
Domain names are central to the identity of most businesses today. Good strategies for domain name protection and monitoring can significantly reduce the likelihood of your intellectual property being misused online. But when they do occur, domain infringements can have rapid, far-reaching, negative impacts.
In the third installment of her blog series on digital rights enforcement, Stina Pilotti, CSC’s Head of Digital IP Advisory Services, looks at the options for enforcing your rights when domain name infringement happens to you.
The good news for brand holders faced with domains that infringe on their rights is that, much like with social media and search, there are clear, tried-and-tested steps you can take and centralized mechanisms for dealing with disputes.
Step 1: Cease and Desist
Before sending a cease and desist letter, it’s important to check that the registrant does not have rights of their own. It is not enough that you have an older and more global right. If the registrant can show some legitimate interest in the name, they are likely to prevail.
The sooner a brand owner sends a cease and desist letter, the sooner a registrant is “put on notice.” This formal notice is an important marker in the dispute process. When determining whether a registrant has legitimate rights to a name, the critical moment from a UDRP (Uniform Dispute Resolution Procedure) perspective is what the use looked like “before any notice was given to [the Registrant] of the dispute” (Uniform Dispute Resolution Policy, 4.(c) (1)). It has been established that regarding the term “dispute” in this sentence, “[it] is not equal to “proceeding,” nor to ‘complainant’s action to initiate proceedings’.” Rather, “dispute” means the controversy between the parties. This means that the sooner the brand owner sends a cease and desist letter, the sooner the registrant is “put on notice” in the sense intended in the UDRP. Also, often, the registrant will willingly transfer an offending domain in response to a cease and desist letter. In our experience, carefully crafted approaches succeed in over 50% of cases, making cease and desist letters a very cost-effective mechanism for recovering domains.
Even if a registrant does not agree to transfer a domain, the correspondence following a cease and desist letter can provide useful evidence in favor of the complainant. A failure to reply can itself be considered an indication of bad-faith registration.
Step 2: Dispute
If cease and desist fails, dispute procedures offer a simple, expedient and cost-effective alternative to legal action for clear cases of cybersquatting. Many countries have implemented the UDRP, an out-of-court dispute resolution mechanism through which trademark owners can resolve cases of bad-faith registration and use of domain names like cybersquatting. Many countries have opted to create policies of their own, usually modeled after the UDRP but with some minor variations.
There are three conditions that have to be fulfilled in order to be successful in a UDRP case:
- The domain name is identical or confusingly similar to a trademark or service mark to which the complainant has rights
- The registrant has no rights or legitimate interests with respect to the domain name
- The domain name has been registered and is being used in bad faith
The URS (Uniform Rapid Suspension) system has been introduced as part of the new gTLD rights protection program. The URS is intended to be a lighter, quicker complement to the UDRP. Like the UDRP, it is intended for clear-cut cases of trademark abuse. The main difference between the URS and the UDRP is that while the UDRP allows for domain name transfer as a remedy, with the URS the domain name is never transferred; it remains the property of the owner although they are not allowed to have any online presence that uses it for the entire duration of its registration.
There is also a higher burden of proof put on the complainant in a URS. This underscores the intention of the URS—to be for clear-cut cases of infringement only. If there is any doubt about any of the requirements, the URS will be rejected. In general, our advice to clients is this: if you feel compelled to submit lengthy explanations about any of the requirements or excessive exhibits to prove something, then the URS is probably not the way to go.
Step 3: Acquisition
If there is no dispute-resolution procedure in place for a particular top-level domain (TLD) or if the registrant has rights, the only option may be to buy the domain name. Price is ultimately determined by the registrant but is influenced by several factors: the TLD, the number of characters in the string, whether it is generic, prior use and, most importantly, the registrant’s expectations. A potential pitfall of acquisition is that it may encourage more cybersquatting.
With these proven techniques and plenty of case law available, a well thought-out approach can help brand owners combat domain infringements quickly and cost-effectively.
For more information on CSC’s enforcement services or to request a complimentary consultation with an online enforcement specialist, please visit cscglobal.com.
Further reading: Online Brand Enforcement 2014 – this recent article in World Trademark Review explores one of the most urgent issues facing brands today: how do you protect your brand when its “digital footprint” is growing all the time?