Disagreements concerning domain names are becoming more commonplace due to businesses increasingly selling products online and uploading content. Thanks to court action and domain name policies, several remedies are available to resolve these disputes when simply reaching out to the domain name holder has no impact. Learn about domain name disputes, including how to effectively resolve them, and discover how an experienced Chicago intellectual property lawyer might aid companies with their trademark queries; call Sullivan & Carter, LLP today at (929) 724-7529 to book a consultation.

What Are Domain Names?

Domain names refer to Internet addresses that facilitate the finding and use of web pages and emails. They are typically associated with particular products or services. Domain names have different categories, as outlined below:

• Top-level domains: This part of the domain name follows the final dot in the address, such as “.com”, which indicates that a commercial entity owns the domain; other examples include “.org”, used by nonprofits, “.edu” for universities and colleges, “.gov”, employed by government institutions, and “.net” for Internet/network-related entities. Every country also has its own top-level domain, such as “.ca” for Canada, and newer generic top-level domains (gTLDs), such as “.web” and “.store”, are available for those wanting to highlight the nature of their organizations to visitors.
• Second-level domains: Most disputes involve these domains, which is the domain name component that starts directly before the top-level domain. These domains can be identical but cannot also have the same top-level domain.

How Does Domain Name Assignment Work?

Registering second-level domains to certain top-level domains involves making a request to the entity with the ability to allocate names for the top-level domains, such as the US Domain Registry for “.us” domains. To register “.net”, “.org”, and “.com” domains, domain name purchasers could buy names from accredited registrars listed by the nonprofit established to manage domain names, the Internet Corporation for Assigned Names and Numbers (ICANN). To avoid involvement in disputes, the registrars allocate names to the first individual or entity that requests them, provided they are available, without completing any prior checks.

What Is an Example of a Domain Name Dispute?

Domain disputes refer to legal complaints filed due to the alleged illegitimate and inappropriate usage or assigning of domain names, typically related to trademark law. A key reason why companies launch these complaints is due to the increasing realization that domain names are important for establishing an online presence. Businesses typically perform domain name searches before registering, and if someone else owns the domain, they can either select an alternative or launch a dispute to obtain the registration from the current owner.

These disputes usually transpire when a party acquires a domain that someone else thinks infringes their IP rights. One example of a domain dispute is the acquisition of “peta.org” by “People Eating Tasty Animals”; the charitable organization People for the Ethical Treatment of Animals successfully obtained a domain suspension and eventually the domain itself following litigation based on the organization’s prior trademark rights. While these disagreements can occur due to inadvertent domain name registration, many domain disputes entail abusive practices, as outlined below.

Cybersquatting

Cybersquatting transpires when a party obtains an identical or similar domain name to a brand or trademark to generate a profit. The aim here is to hold the domain to ransom and sell it to the brand/trademark owner for significantly more than what the domain is worth to improve the organization’s online presence and prevent reputational harm.

Gain an improved understanding of domain name disputes, and find out how a Chicago intellectual property lawyer can help those looking to register domain names and safeguard their IP. Contact Sullivan & Carter, LLP today to schedule a consultation.

Typosquatting

Typosquatting takes place as a result of registering domains with similar names to well-known brands with slightly changed spellings. Parties may adopt this tactic to steal web traffic due to users inadvertently typing in the wrong domain name.

Reverse Hijacking

This occurs when trademark owners attempt to hijack domain names by highlighting their trademark rights. Importantly, this occurs despite current domain name owners possessing valid reasons for having these registrations.

What Is the Domain Name Dispute Policy?

The main international domain name policy linked to resolving disputes is ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP), a quicker and less costly process compared to litigation. For domain disputes to succeed under UDRP, it is necessary to prove these points:

• The domain is confusingly similar or identical to a mark owned by the complainant.
• The registrant lacks legitimate interests or rights in the domain.
• The party with the domain name registration is using the domain in bad faith.

How Do I Resolve Domain Name Disputes?

The initial step to resolving domain disputes is to contact the domain holder to see if they will agree to stop using the domain, usually through issuing a cease and desist letter. If this does not work, other options are available, as listed below.

Consider Legal Remedies

The parties involved in domain disputes can seek a resolution through the courts, which can award domain name ownership and control, but this can be a slower and more expensive process compared to UDRP proceedings. Companies pursuing these legal remedies have to successfully argue that the court should transfer or cancel the domain registration, often relying on the stipulations in the Anticybersquatting Consumer Protection Act. According to this legislation, individuals can file against a party who uses their name as a domain to sell it for commercial gain; additionally, the act prevents businesses from acting in bad faith and registering domains that are confusingly similar or identical to a current trademark.

Initiate UDRP Proceedings

An effective alternative to litigation is to use a relevant domain dispute policy, with the main one being UDRP. Under UDRP, the IP owner can begin a cost-effective administrative process for challenging the current domain name, and if they meet the criteria listed above, the trademark owner can cancel the domain or obtain a domain name transfer. Current registrants can demonstrate a legitimate domain name interest or right by obtaining a reputation associated with the domain name, using or preparing to employ the domain concerning a genuine product or service offering before the dispute procedure begins, or legitimately using the domain in a noncommercial sense without intending to mislead consumers or harm the trademark.

IP owners can demonstrate the registrant is using the domain in bad faith by showing that the domain holder registers other domains containing trademarks to stop IP owners from using these domains or registers the domain primarily to transfer or sell the domain to the IP owner or their competitor for an inflated price. Alternatively, they can show the registrant obtained the domain to disrupt a competitor’s business operations or is trying to attract visitors to their website to benefit commercially through using a confusingly similar trademark to that of the trademark owner.

Speak to a Chicago Intellectual Property Lawyer Today

Registering a domain name can be a key element of an organization’s marketing and branding strategy that helps to attract consumers and develop brand recognition. Understanding how to resolve domain name disagreements can help businesses prevent damage to their reputation caused by parties looking to profit off a trademark’s recognition and goodwill through abusive domain name registrations. To continue this discussion, or to get assistance with domain name disputes or UDRP proceedings, consider reaching out to our team from Sullivan & Carter, LLP; call (929) 724-7529 today to speak to a seasoned Illinois intellectual property lawyer.