It’s finally time to start your website and/or expand your brick-and-mortar business to the internet. You’ve put in the time and effort of trademarking your business’s name, and now all that’s left is registering the domain through your preferred domain registrar (you can check a domain’s availability at 101domain.com). But, *gasp* you try to register your domain and find that it belongs to someone else. So what happened?
Every year, there are roughly 25 million new domains added to the 300 million already registered on the internet. So, clashes over domain names and trademarks are far more common than you might believe, especially since so many people are vying for popular words and common business names.
Sometimes, these domain-versus-trademark disputes happen purely by chance. For example, someone might have registered a domain without thinking about possible trademark infringement. However, there is also a chance that someone registered a domain in the name of your business hoping to extort money from you. These types of registers are known as “cybersquatting.” Cybersquatters register trademarked domain names without authorization to try to sell the domain name back to the company they stole it from at an inflated price.
The good news is, regardless of the reason behind the infringement, there are plenty of ways to resolve this problem. The most effective (and costly) option is going to court, but this should be your last option, as we will discuss later in the article. First, here are a few alternative options on how to handle these disputes, listed from the easiest (and cheapest) to the most time consuming (and expensive).
How to Resolve Domain Name Disputes
The easiest thing to do if you run into a domain name dispute is to reach out to the other party involved and see if they are aware of the trademark infringement. There is always a chance that they innocently registered the domain without knowledge of any trademark infringement. In other scenarios, the domain owner could have the same trademark in a different class or jurisdiction, in which case they are completely entitled to use it. You can always ask to buy the domain directly from them. Keep in mind, this is their domain and they can charge whatever they want for it, or even be unwilling to part with it. However, if the domain is infringing on your trademark, you have some legal protection of your name. We’ll get to that in the next point.
If reaching out doesn’t work, or if you simply don’t want to start there, the next step is to file a UDRP complaint. UDRP, or the Uniform Domain-Name Dispute Resolution Policy, works to help trademark holders reclaim domains infringing on their trademark.
If someone owns the domain that you are trying to use, and they won’t negotiate, you can file a UDRP complaint to prove that you have a right to the domain. Complaints are usually decided based on whether the registrant was holding the domain in “bad faith.” While bad faith has varying definitions, it basically means at least one of these things*:
- The registrant purchased the domain with the intent of selling it for an inflated fee with full knowledge of its trademark
- The registrant wanted to cause an inconvenience to your brand by purchasing the domain first
- The website exists with the intent to damage the reputation of your brand (think phishing websites or fraudulent sales)
- The registrant is using the site to attract consumers and cause confusion around your brand
*Side note: there is a case in which the registrant can prove that they purchased the domain name in “good faith” and can use this to push the decision in their favor. These types of cases usually occur when businesses have similar (or the same) name or if the domain owner is using the website for non-commercial reasons.
Your goal in filing a UDRP complaint is to prove that the current domain owner is indeed holding the account in bad faith. How you confirm this is up to you and based on your situation, but the more evidence you can provide against the opposing registrant, the better your case will be.
Once you have filed your complaint and paid the appropriate fees, an impartial and independent arbiter accredited by ICANN (the Internet Corporation for Assigned Names and Numbers) will judge the case. If your testimony stands up, then the domain name will be transferred to the trademark holder (you).
If it doesn’t go your way, then there is only one other thing you can do.
The chances are good that your UDRP complaint (if filed correctly and with enough evidence supporting it) will stand up, but if it doesn’t, then the only thing left for you to do is go to court. Going to court should be your last resort as attorneys are expensive, and the process can be agonizingly long. However, should you find yourself in this situation, then the same information you used to file your UDRP is a great place to start.
Start by gathering as much additional information as you can and then reach out to an attorney that specializes in domain disputes. It is essential to find an attorney with this specialty because they will have the legal background and knowhow to make your case as strong as possible. You will then work with this attorney to file a lawsuit against the registrant. From there, it will be between you, your lawyer, the registrant, and the judge as to whether or not you are successful in your case. This case will be a massive headache for everyone involved and will cost you a fair amount of money along the way; plus, there is no guarantee of your success. In reality, the only real winners in a domain name lawsuit are the lawyers involved. Definitely do everything in your power to avoid bringing your case to court.
As you can see, domain name disputes are complicated and can require a massive amount of time and effort. But, if handled correctly, they can result in you acquiring your trademarked domain name, that you are legally entitled to, without having to pay too much. To reiterate, the first step is reaching out and hoping that the registrant who owns the domain infringing on your trademark is doing so out of ignorance and is willing to negotiate with you and give it back. However, more likely than not, the registrant is fully aware of their position and is intending to profit off of you or defame your brand. In this case, take every possible measure to create a great UDRP complaint so that you can avoid court at all costs. (Really, we can’t emphasize enough how much you should want to avoid a court battle.)
A domain name dispute is tricky and will probably cost more than what you would initially pay for registering your domain. However, if you care about your business and your reputation online, then it is worth all the time and effort. The UDRP was created to protect and serve you and your business and keep malicious hands off of your domain and brand. So, take heart that should your name be in danger, there is a system in place to make sure that it stays in your deserving hands.