Fighting Against A Trademark Bully – How to Handle UDRP

For young startups, prospective entrepreneurs, small companies and people, buying a good keyword domain has always been a scary thing because of the millions of trademarks out there, in hundreds of countries. The trademark holders watch keyword domain registrations and waste no time to pounce upon if they find even a remote chance of infringement. It costs just $1500 to file what is known as a Uniform Dispute Resolution Policy (UDRP) case by the company. More often than not, the domain owners don’t undertake the burden of hiring a lawyer and filing a response, thereby the complainant wins the UDRP easily.

UDRP proceeding is not like a federal case, it’s an arbitration case, you need not to present physically, just file online case and pay the fee for the number of arbitrators you want on your panel which varies from $1500-$6000 USD depending upon the number of disputed domains and the number of arbitrators you want on your panel. Any trademark bully or anyone who is claiming your domain need to meet some burden of proves, which are

1. They need to show valid and enforceable trademark rights.
2. They need to show and prove that you (the registrant) has a bad faith registration at the time of registration. And this evidence would not be an easy piece of cake for them to prove if you are using the domain in a right and ethical way. You can also register a domain and do nothing with it just for probable future use, you won’t be labelled as a squatter as it would be a hard time for the trademark owner to show the bad faith registration at the time of registration and the use.
3. They also need to prove that you have no legitimate right to use the domain.

Think about this now – a young entrepreneur likes the name “Hike.com” for a future venture on Hiking and acquires the name from the seller. A week later, he gets an email that UDRP proceedings have been initiated against him by Hike messenger, another company using the same brand name in a different niche. Hike messenger is a big business with millions of users and dollars and this entrepreneur now has to hire a lawyer and make sure to get good representation to defend the case and be able to keep the domain. 

This is where a proper knowledge of the law and policy comes into place. Any trademark owner can’t restrict you from registering and using a domain which you feel you are legitimate to use. Here are some of the legal defences by one of the famous attorney of the industry Steve Vondran.

1. You get 20 days time to produce your evidence and point to the panel to show you are using the domain legally and ethically.
2. Extraterritorial: This is one of the most important defence points and in most of the cases it is actually the truth that the trademark holder is from some other region and you are unable able to monitor and research on trademarks around the globe.
3. Fair Uses: If you are making the fair use of the domain you should be termed as a legitimate user and owner of the domain. You can even Register and use “Brand.sucks”  as per your first amendment right to fair use and raise your voice and speak your mind to criticise any famous brand or trademark which you feel they are not serving you to your level of satisfaction.
4. Parody: You can also you a similar domain to a trademark to make fun and parody on a brand.
5. No point of confusion: This is perhaps the best defence to fight a bully if you are a genuine user of the domain. The defence contests that your content and business is totally different from that of the trademark owner and offers to put up a disclaimer on the website to avoid any confusion.
6. Latches: This is basically if the trademark owner waited too long and now you have made your brand popular and now they wanted to squeeze the domain from you they you can use this defence tactics.
7. Prior Use: If you registered your domain name before the trademark was awarded, it will be a hard time for the trademark owner to prove their domain claim and win the case.

It is prudent for legitimate domain holders to hire good lawyers and file a good response to any UDRP cases. There are many attorneys who offer to provide affordable representation for such scenarios.

As a domainer or attorney, if you have any other valuable advice to share, please feel free to comment on the post below.

References:

  http://www.wipo.int/amc/en/domains/fees/
http://vondranlegal.com/
 https://www.icann.org/en/help/dndr/udrp/policy

Resources:
https://www.youtube.com/watch?v=bEefEZi6ziY
https://www.icann.org/resources/pages/help/dndr/udrp-en