{"id":4308,"date":"2014-04-08T06:12:12","date_gmt":"2014-04-08T10:12:12","guid":{"rendered":"http:\/\/www.digitalbrandinsider.com\/?p=4308"},"modified":"2019-12-12T11:50:09","modified_gmt":"2019-12-12T16:50:09","slug":"tackling-domain-name-infringements","status":"publish","type":"post","link":"https:\/\/www.cscdbs.com\/blog\/tackling-domain-name-infringements\/","title":{"rendered":"Tackling domain name infringements"},"content":{"rendered":"

By Stina Pilotti<\/a> |<\/p>\n

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.<\/p>\n

In the third installment of her blog series on digital rights enforcement, Stina Pilotti, CSC\u2019s Head of Digital IP Advisory Services, looks at the options for enforcing your rights when domain name infringement happens to you.<\/p>\n

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The good news for brand holders faced with domains that infringe on their rights is that, much like with social media<\/a> and search<\/a>, there are clear, tried-and-tested steps you can take and centralized mechanisms for dealing with disputes.<\/p>\n

Step 1: Cease and Desist<\/strong>
\nBefore sending a cease and desist letter, it\u2019s 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.<\/p>\n

\"GavelComputer_200w\"<\/a>The sooner a brand owner sends a cease and desist letter, the sooner a registrant is \u201cput on notice.\u201d 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 \u201cbefore any notice was given to [the Registrant] of the dispute\u201d (Uniform Dispute Resolution Policy, 4.(c) (1)). It has been established that regarding the term \u201cdispute\u201d in this sentence, \u201c[it] is not equal to \u201cproceeding,\u201d nor to \u2018complainant’s action to initiate proceedings\u2019.\u201d Rather, \u201cdispute\u201d 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 \u201cput on notice\u201d 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.<\/p>\n

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.<\/p>\n

Step 2: Dispute<\/strong>
\nIf 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.<\/p>\n

There are three conditions that have to be fulfilled in order to be successful in a UDRP case:<\/p>\n