Protecting domain names with trademarks

In a recent editorial by Internet Business Law Services, the organization reviewed the importance of protecting trademark based domain names. According to the article, there are two crucial documents drafted by Internet Corporation for Assigned Names and Numbers (ICANN) that protect domain name owners from trademark fraud.

The first document, “Uniform Domain Name Dispute Resolution Policy” (or Dispute Policy), serves as a dispute resolution tool to assist businesses in defending their domain names. The policy was implemented in 1999. The Dispute Policy protects registrars during trademark-based disputes and disputes arising from abusive registration of domain names (also known as cybersquatting). Top-level domain names with .com, .info, .org, .net, and .name are protected under the policy. It is imperative to note the terms of the Dispute Policy are automatically included within the registration agreement between the domain name holder and registrar. Per the Dispute Policy procedures, trademark-based disputes may be solved via arbitration, court action, or by agreement between the parties. Court action must be filed in a court with appropriate jurisdiction.

Overall, the ICANN Dispute Policy allows complainants to resolve specific controversies through administrative proceedings in front of an approved dispute-resolution service provider who is selected by the plaintiff. The complaint must be filed through an approved dispute resolution service provider. Resolution service providers can be found by visiting the ICANN web site.

According to the Dispute Policy, third parties must submit to the administrative proceedings when the plaintiff asserts one of the following to the service provider:

• The third party’s (respondent) domain name is identical or confusingly similar to the trademark or service mark in which the complainant has rights.
• The third party (respondent) has no rights or legitimate interest in respect of the domain name.
• The third party’s (respondent) domain name has been registered and is being used in bad faith.

It is the plaintiff’s responsibility to support his or her argument. The third party is not allowed to transfer the domain name in question during these administrative proceedings.

The second document provided by the ICANN to assist in protecting trademark rights is the “Rules for Uniform Domain Name Dispute Resolution.” Often referred to as “Dispute Rules,” these procedural rules are applicable to domain name controversies solved via the Dispute Policy. The rules were founded in 1999 and are the required rules for the ICANN administrative proceedings. The rules establish the requirements of the grievance; necessitate proper notice to third parties of grievances filed against them and provides examples of proper notice; and determines the requirements of the third party’s answer. The response must then be filed within 20 days of the beginning of the scheduled administrative proceedings. If this is not done, the panel will provide a default decision.